Ex Parte Helbing

Board of Patent Appeals and Interferences

Oct 20, 2009

11124945 (B.P.A.I. Oct. 20, 2009)

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.
11/124,945 05/09/2005 Orlin H. Helbing 9633.18814 1819
26308 7590 10/20/2009
RYAN KROMHOLZ & MANION, S.C.
POST OFFICE BOX 26618
MILWAUKEE, WI 53226
EXAMINER
PRICE, RICHARD THOMAS JR
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
10/20/2009 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ORLIN H. HELBING
__________

Appeal 2009-008895
Application 11/124,945
Technology Center 3600
__________

Decided: October 20, 2009
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and STEPHEN WALSH,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
apparatus for helping a hunter to gut an animal. The Examiner has rejected
the claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm in part.
Appeal 2009-008895
Application 11/124,945

2
STATEMENT OF THE CASE
The Specification discloses an apparatus that allows “an animal, such
as a deer or other game, [to] be laid on its back and eviscerated easily and
efficiently by an individual person” (Spec. 2: 12-14). An embodiment is
shown in Figure 2, reproduced below:

Figure 2 shows a perspective view of the disclosed apparatus, with a
deer held in position for evisceration (id. at 2: 19-20).
Claims 2-11, 13-16, and 18-20 are pending and on appeal. Claims 4,
9, 13, and 16 are representative and read as follows:
4. A portable apparatus for eviscerating an animal, said apparatus
comprising:
a base being arranged for placement on a relatively horizontal surface
when said apparatus is in an operable arrangement, said base further
comprises a first base section and a second base section, said first and said
second section pivotally connected to one another;
Appeal 2009-008895
Application 11/124,945

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a first upright section;
a second upright section;
means for supporting said first and said second upright sections, said
supporting means located on said base;
said first and said second upright sections being spaced apart when
supported by said base; and
a cross-sectional area defined by said base and said upright sections,
said cross-sectional area being sufficient to receive said animal in a
lengthwise prone position.

9. The apparatus according to claim 4 further compris[ing] means
for adjusting the height of said upright sections.

13. The apparatus according to claim 4 wherein said support means
are removably secured to said base.

16. A portable apparatus for eviscerating an animal on a relatively
horizontal surface, said apparatus comprising:
a base being arranged for placement on said relatively horizontal
surface when said apparatus is in an operable arrangement;
a first upright section being removably connected to said base;
a second upright section being removably connected to said base;
a cross-sectional area defined by said base and said first and said
second upright sections when said first and said upright sections are
connected to said base;
a strap removably connected to said first and said second upright
sections, said strap providing means for retaining said animal in a prone
position within said cross-sectional area; and
means for removably securing said base to said relatively horizontal
surface.
Appeal 2009-008895
Application 11/124,945

4
ANTICIPATION
Issue
The Examiner has rejected claims 2-11, 13-16, and 18-20 under 35
U.S.C. § 102(b) as anticipated by Fanuzzi1 (Ans. 3). The Examiner finds
that Fanuzzi discloses an apparatus that
includes a base 10, said base including first and second sections
20 which are pivotally connected to one another. A first and
second upright section 30 are pivotally and removably attached
to respective base sections. As seen in the Figures, the first and
second upright sections are spaced apart when supported by the
base. . . . Regarding claim 16, a strap 130 is removably
connected to said first and second upright sections.
(Ans. 3-4.)
Appellant contends that Fanuzzi discloses a massage table that does
not have the claimed structure when in “an operable arrangement” as recited
in the claims (Appeal Br. 6) and that lacks the cross-sectional area required
by the claims because the truss suspension system of Fanuzzi’s table “would
prevent the underside of the table 10 of [sic] receiving anything, much less
an animal, regardless of the size of the animal” (id.).
Appellant also contends that Fanuzzi’s apparatus does not include a
means for adjusting the height of its supporting legs (Reply Br. 2) or the
support means recited in claims 2, 3, 13, 14, and 18 (id. at 3). With regard to
claim 16, Appellant contends that Fanuzzi’s apparatus does not include a
removable strap, removable upright sections, or means for securing the base
to a horizontal surface, as required by the claim (Appeal Br. 7).

1 Fanuzzi, U.S. Patent 6,182,578 B1, issued Feb. 6, 2001.
Appeal 2009-008895
Application 11/124,945

5
The issues presented in this appeal are:
(1) Did the Examiner err in finding that Fanuzzi’s table includes all
of the structural limitations, including a cross-sectional area “sufficient to
receive [an] animal in a lengthwise prone position,” required by claim 4?
(2) Did the Examiner err in finding that Fanuzzi’s table includes
“means for adjusting the height of [the] upright sections,” as required by
claim 9? and
(3) Did the Examiner err in finding that Fanuzzi’s table includes
removable upright sections or removable support means for the upright
sections, as required by claims 2, 3, 13, 14, 16, and 18-20?
Findings of Fact
1. The Specification states that the “support means 26 may take any
form that will allow the upright sections to be connected and supported by
the base 12. For instance, the support means 26 could comprise . . . a hinge
or pivot or any other device that will allow the upright sections 14, 16 to be
locked in an upright section with respect to the base 12” (Spec. 4: 2-9).
2. Fanuzzi discloses “a portable folding treatment table 10 [that]
comprises two rectangular flat table top sections 20 . . . connected by hinges
or hinge members attached to the bottom surface” (Fanuzzi, col. 2, ll. 32-
37).
3. Fanuzzi discloses that its table is “for use in massage or other body
work such as the chiropractic arts” (id. at col. 1, ll. 53-54).
4. In Fanuzzi’s table, “[a]t the outer corners 34 and 35 of each section
20 a pair of support legs 30 is attached at the top of the support legs 31 [sic]
by hinge or a first pivot means” (id. at col. 2, ll. 42-45).
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Application 11/124,945

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5. Fanuzzi discloses that “[p]referably the support legs 30 are
adjustable for height” (id. at col. 2, ll. 45-46).
6. Fanuzzi’s Figure 3 is reproduced below:

Figure 3 shows an end view of Fanuzzi’s table (id. at col. 2, l. 23),
illustrating the “x-frame and support cable design” (id. at col. 1, l. 59): Each
of the top sections 20 is supported by an x-frame made up of four struts
(labelled 72, 78, and 79 in Figure 3) that meet in a hinged center portion that
has “a locking mechanism that keeps the x-frame in a single plane” (id. at
col. 2, ll. 49-56).
7. Fanuzzi discloses that “[i]n a preferred embodiment, the locking
mechanism is a pair of flexible, non-stretchable cables 130” (id. at col. 2, ll.
56-58).
Principles of Law
“[I]n an ex parte proceeding to obtain a patent, . . . the Patent Office
has the initial burden of coming forward with some sort of evidence tending
to disprove novelty.” In re Wilder, 429 F.2d 447, 450 (CCPA 1970).
Appeal 2009-008895
Application 11/124,945

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“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987).
“[T]he patentability of apparatus or composition claims depends on
the claimed structure, not on the use or purpose of that structure.” Catalina
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002).
“It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Analysis
Fanuzzi discloses a table that comprises a base (table top) comprising
two sections pivotally connected to each other with hinges (FF 2). Fanuzzi’s
table also comprises legs, which meet the claim limitation of “upright
sections” when the table is oriented so that the top is on the ground. The
legs of Fanuzzi’s table are attached to the table top by hinges (FF 4), which
are encompassed by the “means for supporting” recited in claim 4 (FF 1).
Finally, the base and legs define a cross sectional area that is sufficient to
receive at least some animals (e.g., fox, rabbit, squirrel) in a lengthwise
prone position. Fanuzzi therefore meets all the structural limitations of
claim 4.
Fanuzzi also discloses that the legs of its table are adjustable for
height (FF 4) and therefore meets the additional limitation of claim 9.
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Application 11/124,945

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Appellant argues that “Fanuzzi describes a massage table, and not a
portable device for eviscerating an animal” (Appeal Br. 6). Appellant argues
that if Fanuzzi’s table were inverted, as required to meet the claim
limitations, it would not be in “an operable arrangement,” as required by the
claims (id.).
This argument is not persuasive. Recitations of intended use are not
claim limitations unless they limit the structure of the claimed device.
Whether an apparatus is a “massage table” or a “device for eviscerating an
animal” depends only on what it is intended to be used for. Likewise, what
is an “operable arrangement” depends on the intended use of the claimed
apparatus: Whether a device is intended to be used legs-down or legs-up
does not change the structure of the device.
Appellant also argues that Fanuzzi does not show the cross-sectional
area required by the claims, because “the truss system would prevent the
underside of the table 10 of [sic] receiving anything, much less an animal,
regardless of the size of the animal” (Appeal Br. 6).
This argument is also unpersuasive. Fanuzzi’s Figure 3, an end view
of the disclosed table, shows a triangular area formed by the table top and
cables 130 (or struts 78, 79). Since Fanuzzi discloses that its table is
intended for treatment of human patients (FF 3), the table top must be wide
enough to allow a human patient to lie on it. Therefore, it is reasonable to
conclude that the triangular area, which is almost as wide as the table top, is
large enough to accommodate, for example, a dead squirrel. That is enough
to meet the disputed limitation.
Appeal 2009-008895
Application 11/124,945

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Appellant also argues that the legs of Fanuzzi’s table are not
removable, as required by claim 16 (Appeal Br. 7), and that Fanuzzi’s table
does not include the support means recited in claims 2, 3, 13, 14, and 18
(Reply Br. 3).
This argument is persuasive. The Examiner finds that Fanuzzi’s table
includes “first and second upright section[s] 30 . . . pivotally and removably
attached to respective base sections” (Ans. 3) but points to no disclosure in
Fanuzzi that supports the finding that the legs of Fanuzzi’s table are
removable. Fanuzzi discloses that the legs of its table are attached to the
table top “by hinge or a first pivot means” (FF 4). Fanuzzi does not
characterize the legs as removable and the Examiner has provided no basis
on which to conclude that removability is an inherent property of Fanuzzi’s
legs. Appellant has persuasively shown that the Examiner erred in finding
that Fanuzzi’s table includes removable legs or removable support means for
the legs.
Conclusions of Law
The Examiner did not err in finding that Fanuzzi’s table includes all of
the structural limitations, including a cross-sectional area “sufficient to
receive [an] animal in a lengthwise prone position,” required by claim 4.
The Examiner did not err in finding that Fanuzzi’s table includes
“means for adjusting the height of [the] upright sections,” as required by
claim 9.
The Examiner erred in finding that Fanuzzi’s table includes
removable upright sections or removable support means for the upright
sections, as required by claims 2, 3, 13, 14, 16, and 18-20.
Appeal 2009-008895
Application 11/124,945

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SUMMARY
We affirm the rejection of claims 4 and 9 as anticipated by Fanuzzi.
Claims 5-8, 10, 11 and 15 fall with claim 4 because they were not separately
argued. 37 C.F.R. § 41.37(c)(1)(vii).
We reverse the rejection of claims 2, 3, 13, 14, 16, and 18-20 because
the Examiner has not shown that Fanuzzi expressly or inherently discloses
that the legs or support members of its table are removable.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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RYAN KROMHOLZ & MANION, S.C.
POST OFFICE BOX 26618
MILWAUKEE WI 53226