Ex Parte Cavanagh

Patent Trial and Appeal Board

Jul 11, 2017

13663313 (P.T.A.B. Jul. 11, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/663,313 10/29/2012 John Cavanagh SNF13001USU 5638
95508 7590
One LLP
4000 MacArthur Blvd.
East Tower, Suite 500
Newport Beach, CA 92660
EXAMINER
KENNEDY, JOSHUA T
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
07/13/2017 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):
IPdocke ting @ onellp. com
onellpdocketing @ onellp. com
P AIRgroup @ onellp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN CAVANAGH
Appeal 2016-000207
Application 13/663,313
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Rejection of claims 1—16. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE.
1 Appellant identifies SnapFence LLC as the real party in interest. Appeal
Br. 3.
Appeal 2016-000207
Application 13/663,313
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A snap together fence system comprising:
(a) a hollow elongated member formed of extruded
plastic material and defining grooves on an external surface
thereof;
(b) a straight rail to post connector formed of injection
molded plastic material, said straight rail to post connector
including:
(1) a first generally U shaped member having
arms interconnected by a bight,
(2) a first adapter plug extending outwardly from
the bight of said first U shaped member and away from
the arms of said first U shaped member;
(c) a comer rail to post connector formed of injection
molded plastic material, said comer rail to post connector
including:
(1) a second generally U shaped member having
arms interconnected by a bight,
(2) a second adapter plug extending outwardly
from the bight of said second U shaped member, and
away from the arms of said second U shaped member,
and
(3) a third adapter plug extending outwardly
from an outer surface of one of the arms of said second U
shape member; and
(d) said hollow elongated member when forming a post
being adapted to receive said adapter plugs of the connectors
therein, and also being adapted to receive said adapter plugs on
said connectors therein to form rails, said arms on said
connectors being adapted to receive said elongated members
therebetween.
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Appeal 2016-000207
Application 13/663,313
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Schultz et al. US 4,951,925 Aug. 28, 1990
(“Schultz”)
Heins US 2002/0185640 Al Dec. 12, 2002
Cook et al. US 6,935,623 B2 Aug. 30, 2005
(“Cook”)
Tamez et al. US 2006/0202184 Al Sept. 14, 2006
(“Tamez”)
Froese US 7,398,961 B2 July 15,2008
The following rejections are before us for review:
1. Claims 1, 2, 4—7, 13, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Heins and Schultz.
2. Claims 3 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Heins, Schultz, and Cook.
3. Claims 8, 10, 11, and 14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Heins, Schultz, and Froese.
4. Claims 12 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Heins, Schultz, and Tamez.
ANALYSIS
Independent claim 1 includes the limitations:
(c) a comer rail to post connector formed of injection molded
plastic material, said comer rail to post connector including:
(1) a second generally U shaped member having arms
interconnected by a bight,
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Appeal 2016-000207
Application 13/663,313
(2) a second adapter plug extending outwardly from the
bight of said second U shaped member, and away from the
arms of said second U shaped member, and
(3) a third adapter plug extending outwardly from an
outer surface of one of the arms of said second U shape
member;
Appeal Br. 11, Claims Appendix.
The Examiner finds the above limitations disclosed in Figure 7 of
Schultz (Ans. 4—5, 10—12). At page 10 of the Answer, the Examiner
provides an annotated version of Figure 7 of Schultz showing the
Examiner’s findings for the above claim limitations. In particular, the
Examiner finds the claimed “arms interconnected by a bight” in sleeve 22,
and finds the claimed “second adapter plug” and “third adapter plug” in the
two pairs of flanges 24 projecting from adjacent walls of sleeve 22.
The Appellant disputes this finding. Appeal Br. 8—10; see also Reply
Br. 3.
We agree with the Appellant that the cited portions of Schultz do not
disclose the above limitations. We fail to see, and the Examiner has not
adequately explained, how sleeve 22 comprises “arms interconnected by a
bight.” Schultz discloses that sleeve 22 is “a hollow, vertical, post-receiving
sleeve 22, open on its upper and lower ends to slide over a post” and “has an
internal configuration matching that of the post, here shown to be
rectangular with four sidewalls” (Schultz col. 3,11. 10-14). The Examiner
has not explained why two of the four identical sidewalls of rectangular
sleeve 22 are equivalent to “arms,” or why a third sidewall is equivalent to a
“bight.” Consequently, we also do not see how Figure 7 of Schultz discloses
“a third adapter plug extending outwardly from an outer surface of one of
the arms” as required by claim 1. Flanges 24 extend directly from the walls
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Appeal 2016-000207
Application 13/663,313
of sleeve 22 (Schultz col. 3,11. 28—30) (“sleeve 22 has flange members 24
integrally extending from only one wall of the sleeve.”). Thus, flanges 24 of
Schultz do not extend “outwardly from an outer surface of one of the arms”
as required by claim 1.
Independent claims 6 and 16 contain a similar limitation as claim 1,
and the Examiner relies on the same deficient finding discussed above in
rejecting these claims under 35 U.S.C. § 103(a). See Ans. 2—5.
A prima facie case of obviousness has not been made out in the first
instance by a preponderance of the evidence. Accordingly, we reverse the
rejection of independent claims 6 and 16 for the same reasons. For the same
reasons, we also do not sustain the rejection of dependent claims 2—5 and 7—
15. Cf. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent
claims are nonobvious if the independent claims from which they depend are
nonob vious”).
CONCFUSION
The Appellant has shown that the Examiner erred in rejecting
claims 1—16 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejections under 35 U.S.C. § 103(a) are reversed.
REVERSED
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