Ex Parte Costello et al

Patent Trial and Appeal Board

Jul 24, 2013

12186084 (P.T.A.B. Jul. 24, 2013)

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.
12/186,084 08/05/2008 Philip G. Costello BGEE 200050US02 1518
27885 7590 07/24/2013
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
PUROL, DAVID M
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
07/24/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PHILIP G. COSTELLO, MEHIEDDINE RABABEH,
CHARLES K. ROGERS and RONALD D. STEBBEDS JR.
____________________

Appeal 2011-006826
Application 12/186,084
Technology Center 3600
____________________

Before EDWARD A. BROWN, LYNNE H. BROWNE, and
ANNETTE R. REIMERS, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006826
Application 12/186,084

2
STATEMENT OF THE CASE
Philip G. Costello et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s rejection of claims 86, 89, 94-102, 105-110, and 112-
116. App. Br. 2. Claims 1-85, 87, 88, 90-93, 103, 104, and 111 have been
cancelled. Id. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We reverse.

CLAIMED SUBJECT MATTER
The invention relates to “a device for creating an angular biasing force
and especially such a device for use with a security shade covering the cargo
area of a motor vehicle to prevent viewing into the cargo area.” See Spec. 1,
ll. 4-6. Claim 86 is representative of the appealed subject matter and reads:
86. A device for creating an angular
biasing force for a roller tube of a shade, said roller
tube designed to be connected to the shade, said
device comprising a plurality of force units
positioned inside of a cavity of said roller tube,
each of said force units including a housing and a
torsion spring, said housing of a plurality of said
force units at least partially encircling said torsion
spring, at least one of said force units secured to a
fixed structure of a vehicle such that at least a
portion of said force unit does not rotate relative to
said fixed structure, said torsion spring in each of
said force units designed to exert a biasing force
between said fixed structure and said roller tube,
each of said torsion springs having a first inner end
and a second outer end, said second outer end
connected to said housing of said force unit, said
housing of at least one of said force units
connected or interconnected to said roller tube so
that the torsion biasing force of at least one of said
torsion springs is in a direction from said fix [sic]
Appeal 2011-006826
Application 12/186,084

3
structure to said roller tube, said cavity of said
roller tube including an inner surface designed to
engage an outer surface of said housing of at least
one of said force units, at least one of said force
units in said roller tube not connected to said roller
tube so that said force unit can independently
rotate relative to said roller tube, said roller tube
including a fastener designed to facilitate in
securing said roller tube to said housing of at least
one of said force units, said housing of a plurality
of adjacently positioned force units are connected
together, said housing of at least one of said force
units includes a housing slot, said second end of at
least one of said torsion springs in postionable [sic]
in said housing slot to enable said torsion spring to
be connected to said housing, at least one of said
force units include a nose, said nose connected to
said first inner end of said torsion spring of an
adjacently positioned force unit so as to
interconnect to at least one of said torsion springs
of said force unit to said torsion springs of said
adjacently positioned force unit.

REJECTIONS1
1. Claims 86, 89, 94-102, 105-108, and 115 are rejected under 35
U.S.C. § 103(a) as unpatentable over Knapp (US 102,409; iss. Apr. 26,
1870) and Wieczorek (US 5,464,052; iss. Nov. 7, 1995).

1 The Examiner’s Answer also indicates that claims 86, 89, 94-102, 105-110,
and 112-116 are rejected under the ground of non-statutory double patenting
over claims 1, 2, 4-6, 13, 14, 16-18, 86-96, 101, 102, 105, 107, 108, 111-
123, 125, and 126 of co-pending U.S. Application No. 11/023,180, now U.S.
Patent No. 7,717,156. Appellants filed a Terminal Disclaimer on August 16,
2010, which was disapproved on September 15, 2010. Appellants then filed
a second Terminal Disclaimer on January 5, 2011, which was approved on
March, 21, 2011. In view of this approval, we decline to decide the appeal
as to this rejection.
Appeal 2011-006826
Application 12/186,084

4
2. Claims 109, 110, and 112 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Knapp, Wieczorek, and Schlecht (US 6,279,639 B1;
iss. Aug. 28, 2001).
ANALYSIS
Claims 86, 89, 94-102, 105-108, and 115 - Knapp and Wieczorek

The Examiner found that Knapp discloses a device for creating an
angular biasing force including a roller tube (case or barrel B), and a
plurality of force units comprising housings (cup-shaped holders d)
encircling torsion springs (coils a, b, c) and having a nose (projecting hub j).
Ans. 3 (see also Knapp, p. 1, col. 1, 41 – col. 2, l. 19; figs. 1, 3). The
Examiner found that Knapp does not disclose how the springs are connected
to the nose or housing. Id. The Examiner also found that Wieczorek
discloses a device for creating an angular biasing force comprising a flat
spring 450 having a first end 456 received in a slot 460 of a shaft (axle 462)
and a second end (fixed end 454) received in a recessed slot of a housing.
Id. (citing Wieczorek, col. 6, ll. 59-62; figs. 10-12). The Examiner
concluded that it would have been obvious to one of ordinary skill in the art
to incorporate the teachings of Wieczorek into Knapp’s device to provide a
biasing force. Id. at 3-4.
Claim 86 recites the limitation “at least one of said force units secured
to a fixed structure of a vehicle such that at least a portion of said force unit
does not rotate relative to said fixed structure.” Emphasis added. In
response to Appellants’ contention that Knapp does not disclose this
limitation (App. Br. 10-11), the Examiner stated “Knapp discloses that the
first spring a is secured at its inner end to the shaft D which responds [sic] to
the claimed fixed structure” (Ans. 6). The Examiner also stated that
Appeal 2011-006826
Application 12/186,084

5
Wieczorek discloses it is well-known “to use a roller shade in the
environment of a vehicle fixed structure.” Id. In response, Appellants
contend that shaft D rotates and that bracket E is the fixed structure. Reply
Br. 3.
Appellants do not direct us to a definition of the term “fixed structure”
in the Specification. We note, however, that Appellants’ Specification
describes “fixed structure B, which is in practice an automobile sidewall of a
cargo area.” See Spec. 5, ll. 4-6; figs. 1-4. An ordinary meaning of “fixed”
is “securely placed or fastened: stationary.” See Merriam-Webster’s
Collegiate Dictionary (11th ed. 2003). In view of the Specification, we
construe the claim limitation, “a fixed structure of a vehicle,” as a structure
of a vehicle that is fixed relative to the vehicle. Applying the ordinary
meaning of “fixed,” the fixed structure of the vehicle is a structure that is
securely placed or fastened, stationary, relative to the vehicle.
Knapp discloses that “[t]he shaft D of the spring projects from the
barrel B, and is coupled at o, Fig. 1, to a shaft or tube, H, extending through
the bracket E, and provided with a knob or head, G, to turn it by.” See
Knapp, p. 2, col. 2, ll. 9-13. As such, shaft D to which first spring a is
secured is rotated by turning knob G. Even if Knapp’s curtain fixture were
used in a vehicle, shaft D still would not be a “fixed” structure of the
vehicle. Rather, the shaft D would be rotatable to allow functioning of the
fixture. Accordingly, the Examiner did not make a finding supported by a
preponderance of the evidence that Knapp discloses the limitation “at least
one of said force units secured to a fixed structure of a vehicle such that at
least a portion of said force unit does not rotate relative to said fixed
structure.”
Appeal 2011-006826
Application 12/186,084

6
Claim 86 also recites the limitation “said roller tube including a
fastener designed to facilitate in securing said roller tube to said housing of
at least one of said force units.” Emphasis added. In response to
Appellants’ contention that Knapp does not disclose this limitation (App. Br.
10), the Examiner stated “Knapp discloses that the spring c at its outer end
projects through the periphery of its holder and is attached to the inner
periphery of the case or barrel B” (Ans. 6 (emphasis added)). Appellants
contend that “the disclosure of spring C engaging the inner surface of
[b]arrel B does not disclose or teach a roller tube having a fastener designed
to secure to the housing of a force unit.” Reply Br. 3.
Appellants’ contentions are persuasive. Knapp discloses that spring c
projects through its holder. See Knapp, p. 1, col. 2, ll. 10-15. While the
attachment of the outer end of spring c to the inner periphery of the case or
barrel B may facilitate in securing spring c to case or barrel B, the Examiner
did not adequately explain how this attachment facilitates in securing the
case or barrel B to a cup-shaped holder d. Accordingly, the Examiner did
not make a finding supported by a preponderance of the evidence that Knapp
discloses the limitation “said roller tube including a fastener designed to
facilitate in securing said roller tube to said housing of at least one of said
force units.” Emphasis added.
The Examiner states that Wieczorek also discloses the use of
fasteners. Ans. 4. However, the Examiner’s application of Wieczorek does
not provide a rationale for modifying Knapp to include the claimed
limitation. Thus, we do not sustain the rejection of claim 86, and its
dependent claims 89, 94-102, 105-108, and 115.

Appeal 2011-006826
Application 12/186,084

7
Claims 109, 110, and 112 – Knapp, Wieczorek, and Schlecht

Claims 109 and 110 depend directly or ultimately from claim 86 and
both recite the limitation “said housing of at least one of said force units
includes a boss designed to be at least partially positioned in a recess of said
housing.” The Examiner relied on Schlecht for teachings in regard to this
limitation. Ans. 4. The Examiner’s application of Schlecht to the rejection
of claims 109 and 110 does not cure the deficiencies of the rejection of claim
86, as discussed supra. Accordingly, we do not sustain the rejection of
claims 109 and 110, and claim 112, which is dependent from claim 110.

DECISION
The Examiner's rejections of claims 86, 89, 94-102, 105-110, 112, and
115 are REVERSED.

REVERSED

Klh