Ex Parte Brown et al

Patent Trial and Appeal Board

Mar 31, 2016

13665733 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/665,733 10/31/2012
23363 7590 04/04/2016
Lewis Roca Rothgerber Christie LLP
POBOX29001
Glendale, CA 91209-9001
FIRST NAMED INVENTOR
Martin Brown
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
70989/G558 8306
EXAMINER
GUTMAN, HILARY L
ART UNIT PAPER NUMBER
3612
NOTIFICATION DATE DELIVERY MODE
04/04/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
pair_cph@firsttofile.com
pto@lrrc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN BROWN, NESHAN MARKARIAN,
JOHN BATH, and GAHR, LLC
Appeal2014-003070
Application 13/665,733
Technology Center 3600
Before LINDA E. HORNER, ANNETTE R. REIMERS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Martin Brown et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to reject under 35 U.S.C. § 102(b): (1) claims
1---6 as anticipated by DE '069 (DE 202 07 069 Ul; pub. Aug. 29, 2002)2;
1 The Examiner has withdrawn the rejection of claims 1---6 as anticipated by
Odoi (US 6,620,365 Bl; iss. Sept. 16, 2003). See Ans. 4 (mailed Nov. 15,
2013).
2 The Examiner and Appellants refer to this document as "DE '069," and we
do likewise for consistency. We do not find an English language translation
of this document in the electronic record of this application. The Manual of
Patent Examining Procedure (MPEP) instructs examiners that "[i]f a
Appeal2014-003070
Application 13/665,733
and (2) claims 1---6 as anticipated by Orth (US 5,320,400; iss. June 14, 1994).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "the incorporation of a metal
ring between the soft top material [of a soft auto top] and the glass window
for proper bonding." Spec. i12; Figs. 2, 3, 4.
Claim 1, the sole independent claim, is representative of the claimed
subject matter and recites:
1. A convertible top comprising:
an outer soft top having a window opening;
a preformed ring positioned around the window opening
such that an edge portion of the soft top at the window opening
wraps around at least a portion of the ring and is secured thereto;
and
a glass window having an exterior surface secured to the
ring and the edge portion of the soft top wrapped around the ring
at the window opening.
document being relied upon by the examiner in support of a rejection is in a
language other than English, a translation must be obtained so that the record
is clear as to the precise facts the examiner is rely upon in support of the
rejection." MPEP § 1207.02 (discussing the contents required in an
Examiner's Answer). Because we have no English language translation of
this reference, our review is constrained to the subject matter that we can
discern depicted in the figures. We do not attempt to review the German text
of the document in this appeal.
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Appeal2014-003070
Application 13/665,733
Claims 1-6
ANALYSIS
Anticipation by DE '069
Independent claim 1 recites, in relevant part, "a preformed ring
positioned around the window opening." Appeal Br. 9, Claims App. The
Examiner finds "bar 6 of DE [']069 to be an equivalent to Appellants' ring
[18] because it surrounds the window [is "positioned around the window
opening"] (as best seen in Figure 1)." See Ans. 5; see also Final Act. 2.
We disagree with the Examiner's findings for the following reasons.
First, as correctly pointed out by Appellants, Figure 1 of DE '069 "does
not. .. illustrate ... bar 6." See Reply Br. 23; see also DE '069, Fig. 1.
Second, based on the record before us, we cannot determine whether bar 6 is
"positioned around [the] window opening" in the soft top. See DE '069, Fig.
2 (showing a cross-section taken only at line II-II of Fig. 1); see also Appeal
Br. 7; id. at 9, Claims App.; Reply 2; supra note 2 (noting the lack of a
translation of DE '069).
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claim 1 and its dependent claims 2---6 as
anticipated by DE '069.
3 Appellants also contend that "bar 6 [of DE '069] is not secured to an exterior
surface of the glass window as claimed." See Reply Br. 2. We are not
persuaded by this argument. Claim 1 merely recites "a glass window having
an exterior surface secured to the ring." See Appeal Br. 9, Claims App.
(emphasis added). Claim 1 does not require that the exterior surface of the
glass window be directly secured to the ring. See id. We agree with the
Examiner that the exterior surface of the glass window is secured to the ring
(bar 6) via adhesive 8. See Final Act. 2; see also Ans. 5---6; DE '069, Fig. 2.
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Appeal2014-003070
Application 13/665,733
Claims 1-6
Anticipation by Orth
Independent claim 1 recites, in relevant part, "a glass window having
an exterior surface secured to ... the edge portion of the soft top wrapped
around the ring at the window opening." Appeal Br. 9, Claims App. The
Examiner finds that Orth discloses "a glass window 1 and an auto soft top 6
[wherein], an edge portion of the soft top 6 at the window opening is
wrapped around at least a portion of the ring at the window opening and
secured thereto." Final Act. 2-3.
Appellants contend that Orth fails to disclose "an exterior surface of
the window secured to ... the edge portion of the soft top at the window
opening wrapped around the ring." Appeal Br. 8; see also Reply Br. 3.
Appellants' argument is persuasive. Orth discloses: "A bearing
frame 5 covers the retaining frame 3 adjacent to a gap between the end
surfaces of the rear window 1 and the hood cover 6." Orth, col. 2, 1. 67- col.
3, 1. 2 (emphasis added); see also Appeal Br. 8. Based on Orth's disclosure,
we agree with Appellants that "[t]he edge portion of the soft top [6 of Orth]
is not secured to an exterior surface of the glass window [ 1] at all." Reply
Br. 3.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claim 1 and its dependent claims 2---6 as
anticipated by Orth.
DECISION
We REVERSE the decision of the Examiner to reject claims 1---6.
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Appeal2014-003070
Application 13/665,733
REVERSED
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