Ex Parte GEY

Patent Trial and Appeal Board

Sep 28, 2018

13618160 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/618,160 09/14/2012
23872 7590 10/01/2018
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
FIRST NAMED INVENTOR
Michael GEY
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.
74276 5652
EXAMINER
TROY, DANIEL J
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
10/01/2018 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 MICHAEL GEY
Appeal2017-000015
Application 13/618, 160
Technology Center 3600
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Gey (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's decision to reject claims 1, 3-15, and 17-22. Claim 2 and 16
have been canceled. An Oral Hearing in accordance with 37 C.F.R. § 41.47
was held on August 23, 2018. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2017-000015
Application 13/618,160
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "a housing for devices with at
least one module, which is to be protected against penetration of liquids, and
with at least one cover arranged on the top side of the housing." Spec. ,r 2,
Figs. 1, 4, 6. Claims 1, 15, and 21 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A device housing for devices with at least one module,
which is to be protected against penetration of liquids, the device
housing comprising:
a housing with a top side opening having an edge area
comprising at least one mounting groove, said housing
comprising a first wall and a second wall, at least said first wall
and said second wall defining said mounting groove, wherein at
least one outlet is provided for each said mounting groove
through which penetrated liquid is guided out of the housing;
a cover arranged on the top side of the housing closing the
opening in a closed position, the cover having an outer edge area
comprising a collar which protrudes downwards when the cover
is in the closed position and having a drip edge arranged below
the collar when the cover is in the closed position, such that a
liquid dripping from the drip edge falls into the mounting groove,
wherein the cover has another collar to provide two collars
arranged at a distance to one another, each of said two collars
protruding downwards into the mounting groove, said collar and
said another collar being directly connected to the same cover,
wherein at least a portion of each of said two collars is located
between said first wall and said second wall.
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Application 13/618,160
REJECTIONS 1
I. Claims 1, 3-14, 21, and 22 stand rejected under 35 U.S.C. § 112,
second paragraph, for indefiniteness.
II. Claims 1, 5-7, 12, 21, and 22 stand rejected under 35 U.S.C.
§ I02(b) as anticipated by Leong (US 4,381,063, issued Apr. 26,
1983).
III. Claims 8 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Leong and Robinson (US 7,086,409 B2, issued Aug. 8, 2006).
IV. Claims 13 and 14 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Leong and Mucci (US 2010/0163568 Al,
published July 1, 2010).
V. Claims 3, 4, and 9-11 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Leong and Frey (US 2012/0035447 Al,
published Feb. 9, 2012).
VI. Claim 15 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Leong and Stafford (US 2011/0154889 Al, published June
30, 2011).
VII. Claims 17 and 18 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Leong, Stafford, and Frey.
1 The Final Office Action also includes objections to the drawings and claims.
Final Office Action 2-4 (hereinafter "Final Act.") (dated July 27, 2015). The
Examiner's objection(s) to the drawings and claims are not appealable
matters, but rather are petitionable matters, and thus, are not within the
jurisdiction of the Board. See 37 C.F.R. § 1.181; see also In re Berger, 279
F.3d 975, 984 (Fed. Cir. 2002); In re Mindick, 371 F.2d 892, 894 (CCPA
1967).
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Application 13/618,160
VIII. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Leong, Stafford, and Robinson.
IX. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Leong, Stafford, and Mucci.
ANALYSIS
Indefiniteness
Claims 1 and 6-14
The Examiner determines that "[ c ]laim 1 recites the limitation 'the
same cover' in line 13. There is insufficient antecedent basis for this
limitation in the claim." Final Act. 4. In particular, the Examiner
determines that "the claimed 'same cover' in line 13 does not follow the
previous[] consistency in language for the claimed 'cover' and creates
ambiguity as to whether or not another cover is being introduced." Ans. 2. 2
As an initial matter, we agree with Appellant that "[t]he phrase 'the
same cover' ... avoid[ s] any ambiguity [ such that if] Appellant had included
the phrase 'g_ same cover[,]' such a phrase would create ambiguity since it
could be interpreted that a second cover is present." Reply Br. 2 (emphases
added). 3 We further agree with Appellant that claim 1 "recite[s] a cover and
... the collars are connected to the same cover [i.e., 'the single cover']" and
that a skilled artisan "would understand from [ claim 1] that the collars are
connected to the same structure, i.e. the cover that is previously recited in
the claims." Reply Br. 2; see also Appeal Br. 12-13.4 As such, we agree
2 Examiner's Answer (hereinafter "Ans.") (dated July 20, 2016).
3 Reply Brief (hereinafter "Reply Br.") ( filed Sept. 19, 2016).
4 Appeal Brief (hereinafter "Appeal Br.") (filed Dec. 28, 2015).
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Application 13/618,160
with Appellant that "the phrase 'the same cover' is not ambiguous as the
phrase clearly sets forth that two collars are connected to the same cover
structure." Reply Br. 2; see also Appeal Br. 12-13.
Accordingly, we do not sustain the Examiner's rejection of claims 1
and 6-14 for indefiniteness.
Claims 3 and 4
The Examiner determines that the limitation "wherein a gap is formed
between an outside of said housing and of one of said two collars and the
housing has a gap width" of claim 3 is indefinite. Final Act. 4; see also
Ans. 2-3. According to the Examiner, "[t]he limitation fails to adequately
specify the metes and bounds of the claimed housing, as the limitation does
not provide what are the two structures that define the gap, or how the
housing having a gap width relates to the gap." Id. at 4-5; see also Ans. 2-
3. The Examiner further determines that "'an outside of the housing' does
not describe any structure for defining one side of the gap, as the outside of
the housing appears to be describing free space" and that the limitation "has
a gap width" is unclear, "as it cannot be clearly discerned what the full
limitation is claiming regarding the gap." Id. at 5; see also Ans. 2-3.
Appellant contends that "[ c ]laim 3 clearly provides that the housing has
a gap that is formed between the outside of the housing and one of the
collars" and that"[ c ]laim 3 proceeds to recite that one wall and one collar
define the gap." Reply Br. 3; see also Appeal Br. 13.
Here, we agree with Appellant that the "outside of [the] housing" of
claim 3 "refers to a particular structure of the housing, such as an outer
surface of the housing" and that a skilled artisan would understand claim 3
to "specif[y] the location of the gap," i.e., "the gap 'is formed' between an
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Application 13/618,160
outside of the housing and a collar" and to "further specif[y] the specific
structure that defines the gap," i.e., one of the first or second walls of the
housing and one of the two collars define the gap. Reply Br. 3; see also
Appeal Br. 13; id. at 42-43, Claims App. We further agree with Appellant
that claim 3 "provides that the gap width of the gap of the housing is such
that liquid does not adhere to the housing." Appeal Br. 13; id. at 42, Claims
App.
Accordingly, we do not sustain the Examiner's rejection of claims 3
and 4 for indefiniteness.
Claims 5-7
The Examiner determines that "[ t ]he claims, in light of the disclosure,
do not provide a clear distinction between the ["outermost edge" and the
"drip edge"], so it is unclear as to whether the outermost edge and the drip
edge of the cover are the same element," or whether "Appellant is
introducing a new and entirely separate element in claim 5." Ans. 3; see
also Final Act. 5.
Claim 1, from which claim 5 depends, recites that the cover has (1)
"an outer edge area comprising a collar which protrudes downwards when
the cover is in the closed position"; and (2) "a drip edge arranged below the
collar [i.e., the first collar] when the cover is in the closed position, such that
a liquid dripping from the drip edge falls into the mounting groove." Appeal
42, Claims App. Claim 5 further defines the outer edge area of claim 1 as
"comprising an outermost edge of said cover, said one collar [i.e., the first
collar] being located between said outermost edge and said another collar
[i.e., the second collar]." Id. at 43, Claims App.
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Application 13/618,160
In this case, we agree with Appellant that a skilled artisan would
understand claim 5 to "require[] an outermost edge of [the outer edge area of
the] cover" and to require the first collar to be located between the outermost
edge of the outer edge area of the cover and the second collar. See Reply Br.
3-4; see also Appeal Br. 13-14; id. at 43, Claims App.
Accordingly, we do not sustain the Examiner's rejection of claims 5-7
for indefiniteness.
Claims 21 and 22
Similar to claim 1, claim 21 recites "the same cover." Appeal Br. 42,
47, Claims App. As discussed above, "the phrase 'the same cover' is not
ambiguous as the phrase clearly sets forth that two collars are connected to
the same cover structure." Reply Br. 2; see also Appeal Br. 14. Claim 21
further recites that the cover has "an outer edge area that comprises an outer
edge" and that each of the first and second collars of the cover "hav[ e] a drip
edge." Appeal Br. 47, Claims App. We agree with Appellant that claim 21
"provides a clear distinction between the drip edge [ of each of the first and
second collars] and the outermost edge [of the outer edge area] of the
cover." Appeal Br. 14; see also id. at 47, Claims App.; Reply Br. 5; Final
Act. 5; Ans. 3--4.
Accordingly, we do not sustain the Examiner's rejection of claims 21
and 22 for indefiniteness.
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Application 13/618,160
Anticipation
Claims 1, 5-7, 12, 21, and 22
Independent claim 1 is directed to a device housing including a cover
having two collars, both of which are "directly connected to the same
cover." Appeal Br. 42, Claims App. The Examiner finds that (1) Leong
teaches a device housing 110 that includes "a cover (assembly of cover
portions 112, 113)," having "a collar (cover portion 112 has flanges 154,
156, 157, 160)" and "another collar (cover portion 113 has flanges 154, 156,
159, 160)"; and (2) the two collars are "directly connected to the cover."
Final Act. 6-7; see also Leong, Figs. 7, 8. Here, the Examiner interprets
"the claimed 'cover"' "to be defined in the prior art of Leong as the
assembly of cover portions 112 and 113." Ans. 4; see also Final Act. 7
("[T]he Examiner notes that the cover is defined as the assembly of the
cover portions 112, 113."); Leong, Figs. 7, 8.
Appellant contends that "Leong does not provide any teaching
or suggestion as to two collars that are directly connected to the same
cover," as recited in claim 1. Appeal Br. 15; see also Reply Br. 6-8. In
particular, Appellant contends that "Leong clearly discloses two covers with
each of the two covers having a single flange structure." Id.; see also Reply
Br. 6-8
Leong discloses that:
Another example of a weatherproof cover assembly
according to the present invention is shown in FIG. 7. The
weatherproof cover assembly includes a housing 110 and
a two-cover arrangement including a left cover 112 and a
right cover 113. The covers 112, 113, which can be
independently opened and closed, are pivotally attached to
the housing 110 and to each other.
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Application 13/618,160
Leong, 5:36-42 (emphases added), Fig. 7; see also id. 2:55-57 ("FIG. 7 is a
perspective view of a two-cover weatherproof cover assembly according to
the present invention.") ( emphasis added).
As an initial matter, Appellant correctly points out that (1) the
Examiner's rejection "is an anticipation rejection and not an obviousness
rejection"; and (2) "[a]nticipation requires that all of the claim elements and
their limitations are shown in a single prior art reference." Reply Br. 6; See
Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,631 (Fed. Cir.
1987) (To anticipate a claim, a reference must disclose, expressly or
inherently, every element of the claim). In this case, we agree with
Appellant that "Figures 7 and 8 of Leong do not disclose the 'cover portions'
of a single cover," as determined by the Examiner. Reply Br. 7; see also
Ans. 4. Rather, "Figures 7 and 8 of Leong clearly disclose two separate
covers" (i.e., "left cover 112" and "right cover 113") that "are not part of a
single cover as claimed" but "are [two] separate and independently movably
covers." Reply Br. 7-8. We further agree with Appellant that the Examiner
fails to provide sufficient evidence or technical reasoning to establish that
"Leong impliedly or inherently discloses two collars directly connected to
the same cover as claimed." Reply Br. 7; see also Final Act., generally;
Ans., generally.
Independent claim 21 is directed to a device housing and includes
language directed to a cover having two collars, both of which are "directly
connected to the same cover." Appeal Br. 47, Claims App. The Examiner
relies on the same unsupported findings in Leong discussed above. See
Final Act. 6, 8-9. As such, the Examiner's findings with respect to Leong
are deficient for claim 21 as well.
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Application 13/618,160
For these reasons, we do not sustain the Examiner's rejection of
independent claims 1 and 21, as well as dependent claims, 5-7, 12, and 22 as
anticipated by Leong.
Obviousness
Claims 3, 4, 8-11, 13, and 14
The Examiner's obviousness rejections of claims 3, 4, 8-11, 13, and
14 are each based on the same unsupported findings to Leong discussed
above with respect to independent claim 1. See Final Act. 11-14. The
Examiner does not rely on Frey, Robinson, or Mucci to remedy the
deficiencies of Leong. Accordingly, for reasons similar to those discussed
above for claim 1, we do not sustain the Examiner's obviousness rejections
of claims 3, 4, 8-11, 13, and 14.
Claim 15
Independent claim 15 is directed to a medical device housing
including a cover having a collar and "another collar to provide two collars
arranged at a distance to one another." Appeal Br. 45, Claims App. The
Examiner finds that Leong teaches a device housing 110 that includes "a
removable cover (cover portions 112, 113)," having "a collar (cover portion
112 has flanges 154, 156, 157, 160)" and "another collar (cover portion 113
has flanges 154, 156, 159, 160) to provide two collars arranged at a distance
to one another." Final Act. 14--15; see also Leong, Figs. 7, 8. 5
5 The Examiner relies on Stafford for disclosing "a medical device housing."
See Final Act. 14--15.
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Application 13/618,160
Similar to that discussed above for claims 1 and 21, we agree with
Appellant that "Figures 7 and 8 of Leong do not disclose the 'cover portions'
of a single cover," as determined by the Examiner. Reply Br. 14--15; see
also Ans. 4, 9. Rather, "Figures 7 and 8 of Leong clearly disclose two
separate covers" (i.e., "left cover 112" and "right cover 113") that "are not
part of a single cover as claimed" but "are [two] separate and independently
movably covers." Reply Br. 15-16. As such, we agree with Appellant that
"[t]here is no teaching or suggestion in Leong as to a cover having two
collars arranged at a distance to one another," as called for in claim 15.
Appeal Br. 32-33.
For these reasons, we do not sustain the Examiner's rejection of
independent claim 15 as unpatentable over Leong and Stafford.
Claims 17-20
The Examiner's obviousness rejections of claims 17-20 are each
based on the same unsupported findings to Leong discussed above with
respect to independent claim 15. See Final Act. 16-18. The Examiner does
not rely on Frey, Robinson, or Mucci to remedy the deficiencies of Leong
and Stafford. Accordingly, for reasons similar to those discussed above for
claim 15, we do not sustain the Examiner's obviousness rejections of claims
17-20.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 3-15,
and 17-22.
REVERSED
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