Ex Parte Dixon et al

Patent Trial and Appeal Board

Jul 28, 2017

13562966 (P.T.A.B. Jul. 28, 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.
13/562,966 07/31/2012 Wayne E. Dixon BOL016 3514
71136 7590 08/01/2017
Maldjian Law Group LLC
106 Apple Street
Suite 200N
Tinton Falls, NJ 07724
EXAMINER
FERGUSON, MICHAEL P
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
j maldj ian @ mlgiplaw. com
mlgdocketing @ mlgiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYNE E. DIXON and DOUGLAS G. WRIGHT1
Appeal 2016-000379
Application 13/562,966
Technology Center 3600
Before LYNNE H. BROWNE, ERIC C. JESCHKE, and
GORDON D. KINDER, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Wayne E. Dixon and Douglas G. Wright (“Appellants”) seek review
under 35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final
Office Action dated December 1, 2014 (“Final Act.”), and as further
explained in the Advisory Action dated February 9, 2015 (Adv. Act.),
rejecting claim 15 under 35 U.S.C. § 103(a) as unpatentable over
1 This caption reflects the inventors listed on the various Application
Data Sheets filed (one filed on August 22, 2012, and three filed on
September 12, 2016). The Specification, filed July 31, 2012, lists a different
group of inventors. See Spec. 1 (listing Yves Barrette, Sylvain Bellemare,
Scott Williford, and Wayne Dixon).
Appeal 2016-000379
Application 13/562,966
Montemayor (US 2012/0090140 Al, published Apr. 19, 2012) and Rowley
(US 2011/0001104, published Jan. 6, 2011).2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
BACKGROUND
The disclosed subject matter “relates to a picket fence system
including singular blow-molded pickets.” Spec. 11. Claim 15, the sole
claim on appeal, is reproduced below, with emphasis added:
15. A plastic fence structure, comprising:
a pair of spaced apart posts;
a first plastic rail spanning between the posts
at a first elevation, the first plastic rail having a
plurality of spaced apart picket receiving apertures
extending vertically therethrough;
a second plastic rail spanning between the
posts at a second elevation lower than the first
elevation, the second plastic rail having a plurality
of spaced apart picket receiving apertures extending
vertically therethrough and vertically aligned with
the picket receiving apertures of the first plastic rail;
a plurality of pickets, each picket being of
one-piece blow-molded construction and extending
vertically through and tightly received by a pair of
aligned picket receiving apertures of the first and
second plastic rails, each picket having formed on a
face thereof a first fixed bulge located so as to rest
on a lower rim of the picket receiving aperture of
the first plastic rail which receives the picket, and a
second fixed bulge located so as to rest on a lower
2 Appellants identify Barrette Outdoor Living, Inc. as the real party in
interest. Appeal Br. 2.
2
Appeal 2016-000379
Application 13/562,966
rim of the picket receiving aperture of the second
plastic rail which receives the picket, wherein the
first and second fixed bulges each cooperate with
the lower rim of the aperture they rest on so that the
first and second plastic rails each provide load
bearing support of the picket.
DISCUSSION
Claim 15 recites “a plurality of pickets, each picket being of one-piece
blow-molded construction” and recites “each picket having formed on a face
thereof a first fixed bulge . . . and a second fixed bulge.” Appeal Br. 12
(Claims App.). As to the limitations at issue, the Examiner identified
elements 210 in Montemayor as the “pickets” and elements LR2 as the “first
fixed bulge” and “second fixed bulge.” Final Act. 2—3 (citing Montemayor
Figs. 10A— 1 IB, 112). The Examiner stated, however, that Montemayor
“disclose[s] a fence structure wherein the first and second bulges of the
pickets are cut-out, instead of being formed by blow-molding.” Id. at 3.
The Examiner then stated, “Applicant is reminded that process limitations
are given little patentable weight in product claims since the patentability
determination of product-by-process claims is based on the product itself,
even though such claims are limited and defined by the process.” Id. (citing
MPEP § 2113). The Examiner also stated, “[accordingly, the process
limitations of the pickets being formed by blow-molding are given little
patentable weight; all that is required of claim 15 is that the pickets are
capable of being formed by blow-molding.” Id. at 4. Moreover, the
Examiner stated:
Nonetheless, Rowley et al. teach a fence structure
comprising plastic pickets comprising locking elements formed
by either being cut-out or being formed by blow-molding; both
3
Appeal 2016-000379
Application 13/562,966
manufacturing processes providing for the pickets 110 having
the structurally same locking elements 405 (Figures 4—5B;
paragraph [0032]). Inasmuch as the references disclose cutting
and blow-molding as art recognized equivalent processes for
forming locking elements on a picket, it would have been
obvious to one of ordinary skill in the exercise art to substitute
one for the other. In re Fout, 675 F.2d297, 301, 213 USPQ 532,
536 (CCPA 1982).
Id?
First, Appellants contend that “[t]he Examiner did not consider the
blow molded limitation, asserting that the picket and the tabs could have
been formed by blow molding.” Appeal Br. 9 (citing Final Act. 2—3 and
Adv. Act.). Appellants argue that “[t]he Examiner’s position that the
locking tabs of Montemayor are capable of being made by blow molding is
insufficient as [a] basis for rejecting claim 15.” Id. at 10; see also Reply Br.
1 (“In making the rejection, the Examiner asserts that the locking tabs of
Montemayor are capable of being made by blow molding.” (citing Ans. 7)).
Although page 2 of the Final Action does include a finding that
Montemayor teaches “a plurality of pickets 210, each picket being of one-
piece construction capable of being formed by blow-molding,” that finding
did not serve as the entire basis for the rejection as to the limitations at issue.
Rather, as discussed in the Answer (Ans. 5—6), the Examiner did consider
the limitations at issue, setting forth two alternative bases to address them.
As the first basis, the Examiner stated that “the process limitations of
the pickets being formed by blow-molding are given little patentable weight;
all that is required of claim 15 is that the pickets are capable of being
3 The Examiner also relied on Rowley to address limitations requiring
that the first and second rails be made of plastic. See Final Act. 3.
Appellants do not present arguments regarding these limitations.
4
Appeal 2016-000379
Application 13/562,966
formed by blow-molding.” Final Act. 4; see also Ans. 5 (stating that “such
recitation is a product-by-process limitation which is given little patentable
weight in product claims since the patentability determination of product-by­
process claims is based on the product itself’).
As the second basis, the Examiner relied on paragraph 32 of Rowley
as teaching “cutting and blow-molding as art recognized equivalent
processes for forming locking elements on a picket” (Final Act. 4) and
therefore, proposed modifying the fence structure of Montemayor “such that
the pickets each comprise first and second bulges formed by blow-molding’’’
(Ans. 5). See also id. at 9 (stating that Rowley “was cited and applied to
teach the equivalence of forming locking tabs by either cutting or blow­
molding”); Rowley 132 (“Locking element 405 may be constructed or
configured as part of the fence slat 110, or may be added or created
separately. . . . The locking mechanism 405 may be punched out from the
flap through the use of die tools, or may not actually be punched out, but
may instead be formed to appear as though it was punched out. This may be
accomplished through the use of injection or blow-molding used to construct
the fence slat 110.”). Because Appellants’ argument does not address the
rejection as articulated, we are not apprised of error.
Second, Appellants argue that “[t]he locking tabs [of Montemayor]
are structurally and functionally different from the claimed bulges and
would have to be modified or reconfigured in the manner of the claimed
bulges.” Appeal Br. 10 (citing In re Giannelli, 739 F.3d 1375, 1380 (Fed.
Cir. 2014)); see also Reply Br. 2 (arguing that “the locking tabs are
structurally and functionally different from the claimed bulges, and are
therefore not equivalent structures”). Appellants state, “[f]or example, the
5
Appeal 2016-000379
Application 13/562,966
bulges of the blow molded pickets have no moving parts and can be passed
either direction through the aperture without manipulation, requiring only a
sufficient force in the desired direction of travel” and state that “[t]his
facilitates easy installation and removal.” Appeal Br. 11. Appellants also
state that “[t]he bulges are substantially immune from breakage and virtually
last forever.” Id. According to Appellants, “[t]o the contrary, the tabs of the
cited structure are not intended to be withdrawn” and “have to be
individually pressed and manipulated to be installed and, if force were
applied in the manner described for the bulges, the tabs would easily break.”
Id. Moreover, Appellants state that “the bulges can be passed back out of
the rail aperture by pulling or pushing on the picket” and “[t]hus, the blow-
molded pickets may be readily removed from rails without damage to the
picket or the rail” {id. at 10-11) whereas “the cited tab structure is not
removable from the rail” {id. at 11 (citing Montemayor | 67)).
We are not apprised of error because Appellants have not identified
any structural or functional limitations recited in claim 15 that would not be
satisfied by the proposed modification of the prior art. See Ans. 9 (“The
claim recite[s] absolutely no structure or function of the bulges that is not
taught in the references cited.”). The alleged structural or functional
requirements of the “first fixed bulge” and “second fixed bulge” asserted by
Appellants (as set forth above) are not recited in claim 15. See Ans. 7
(stating that Appellants “ha[ve] never claimed any limitation at all regarding
the pickets being removable or able to be passed back out of the rail without
damage”), 9 (addressing an argument from page 11 of the Appeal Brief by
stating “Examiner notes that the claim includes no limitations related to
6
Appeal 2016-000379
Application 13/562,966
these features”); see also In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(rejecting arguments “not based on limitations appearing in the claims”).
Further, as noted by the Examiner, claim 15 does not recite a “fixed
bump” but rather recites a “first fixed bulge” and a “second fixed bulge.”
See Appeal Br. 10 (arguing that “the bulges are fixed bumps or bulges on the
surface of the pickets [formed] during the molding process”); Ans. 7 (stating
that “such arguments regarding the . . . bulges being fixed bumps ... are not
commensurate with the scope of the claim” and that “Appellants] ha[ve]
never claimed a ‘fixed bump’ in the claim — only a fixed bulge”).
As to the term “bulge,” the Examiner provides two definitions that,
according to the Examiner, are the “usual and common meaning”: (1) “[a]
protruding part; an outward curve or swelling” and (2) “[a] part that
protrudes or extends outward: jut, knob, knot, overhang, projection,
protrusion, protuberance.” Ans. 7 (citing The American Heritage
Dictionary of the English Language (5th ed.) and The American Heritage
Roget’s Thesaurus, both available at http:www.thefreedictionary.com).
Appellants do not address these definitions or propose a construction of
“bulge.”
During examination, claims are given their broadest reasonable
interpretation consistent with the specification, reading the claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). We construe
“bulge” as a part that protrudes or extends outward. This construction is
consistent with the Specification, which, as to “bulge,” only discloses
examples in which “each of the interference members of the plurality of
interference members includes a bulge” and “[e]ach bulge includes at least
7
Appeal 2016-000379
Application 13/562,966
one sloped edge.” Spec. 110. Appellants have not identified error in the
Examiner’s implicit finding that the identified structures (i.e., tabs LR2 in
Montemayor formed using the blow-molding process of Rowley) satisfy the
claim language at issue under this construction of “bulge.” See Ans. 7.
Because Appellants have not shown error in either basis set forth by
the Examiner to address the limitations at issue, we sustain the rejection of
claim 15 under both bases.
DECISION
We affirm the decision to reject claim 15 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
8