Ex Parte Hoggan

Patent Trial and Appeal Board

Mar 25, 2013

11214705 (P.T.A.B. Mar. 25, 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.
11/214,705 08/29/2005 Patrick R. Hoggan PHOGSW 4178
7590 03/25/2013
Thompson E. Fehr
Goldenwest Corporate Center
Suite 300
5025 Adams Avenue
Ogden, UT 84403
EXAMINER
MACARTHUR, VICTOR L
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
03/25/2013 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 PATRICK R. HOGGAN
____________

Appeal 2011-001229
Application 11/214,705
Technology Center 3600
____________

Before GAY ANN SPAHN, BENJAMIN D.M. WOOD, and
JOHN W. MORRISON, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Patrick R. Hoggan (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-3, 11-13, 21-24, 32-34, and
42. The Examiner withdrew claims 4-10, 14-20, 25-31, and 35-41 from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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Application 11/214,705

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The Claimed Subject Matter
The claimed subject matter relates to “slats which are inserted into
chain link fences in order to increase privacy.” Spec. 2, para. [0001].
Claims 1 and 22 are the independent claims on appeal. Claim 1, reproduced
below, is illustrative of the appealed subject matter.
1. A single-wall slat, which comprises:
an elongate body having a face, a back, a first side, a
second side, a thickness, and a longitudinal axis, said elongate
body being constructed of plastic.

The Rejections
The following Examiner’s rejections are before us for review:
I. claims 1-3 and 22-24 are rejected under 35 U.S.C. § 102(b) as
anticipated by Tochner (US 3,712,590, issued Jan. 23, 1973); and
II. claims 11-13, 21, 32-34, and 42 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tochner and McLaughlan (US Re. 36,085,
reissued Feb. 9, 1999).

OPINION
Rejection I – Anticipation based on Tochner
Independent claim 1 and dependent claim 3
Appellant argues claims 1 and 3 as a group and we select independent
claim 1 as the representative claim. See App. Br. 4-8; see also 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Claim 3 falls with claim 1.
The Examiner finds that Tochner discloses a single-wall slat 17. Ans.
4 (citing Tochner, Fig. 5). Appellant argues that the slat of Tochner is not a
single-wall slat because Tochner’s slat is not planar as is Appellant’s slat.
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App. Br. 5. In essence, Appellant is arguing that in Tochner, the slat 11 is
made up of planar portion 17 and legs 18 so that the entire slat 11 is not
planar, whereas in Appellant’s Figures 2, 3, and 5, the slat is planar because
the strips 6 and the wings 8 “are accessories to the slat and do not,
themselves, constitute a portion of the basic single-wall slat.” App. Br. 8.
The Examiner responds that “[t]he term ‘planar’ is not recited in the
claims,” and “[l]imitations cannot be read into the claims from the written
description or drawings.” Ans. 10.
We agree with the Examiner that the claims do not recite “planar,”
and it is well established that limitations not appearing in the claims cannot
be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982); see also Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may
be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”). Thus, we do not accept Appellant’s invitation to
read the word “planar” into claim 1.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claim 3 dependent thereon, under 35 U.S.C. § 102(b) as
anticipated by Tochner.
Dependent claim 2
Claim 2 depends from claim 1 and calls for “one or more strips placed
on the face of said body along substantially the entire length of said body.”
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The Examiner finds that Tochner discloses “one or more strips 18
placed on the face . . . along substantially the entire length of the body 17.”
Ans. 4.
Appellant argues that Tochner “consider[s] element 18 to be a portion
of the basic slat and, consequently, that the slat is not a single-wall slat.”
App. Br. 9. Appellant also argues that in the present Application, the strips
6 are intended to increase the stiffness of the slat to facilitate its insertion
into the fence, but “[h]aving a strip so thick that it extends across ‘the
narrow channel dimensions’ of the fence as explained in lines 7 through 11
of column 2 of Tochner . . . would contravene this goal of facilitating
insertion of the slat into the fence” such that “ the legs 18 of Tochner . . .
cannot be the strips of the present Application.” Id.
We are not persuaded by Appellant’s arguments. First, Appellant has
not shown the term “single-wall slat” is a term of art having a special
meaning in the industry. Therefore, it does not follow that Tochner’s legs 18
must not be a part of the basic slat in order to constitute a single-wall slat.
Whether or not Tochner’s legs 18 form a part of the basic slat 11, we
consider Tochner to disclose a single-wall slat. Second, we find Appellant’s
argument that Tochner’s legs 11 extending across the narrow channel
dimensions would contravene the present Application’s goal of increasing
stiffness of the slat to aid in insertion of the slat into the fence to be
speculative. Tochner specifically discloses its slat 11 to be made of an
extruded, cellular plastic in order to have some “give” to provide the
necessary snug fit to retain the slat in place. Tochner, col. 4, ll. 29-34. It is
believed that this “give” would also allow for easy installation of the slat
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Application 11/214,705

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into the existing chain link fence “merely by pressing the slat downward into
the channel 13.” Id.
Accordingly, we sustain the Examiner’s rejection of claim 2 under 35
U.S.C. § 102(b) as anticipated by Tochner.
Independent claim 22 and dependent claims 23 and 24
Independent claim 22 is directed to a single-wall slat identical to
claim 1, except that the elongate body is constructed of a composite material
instead of plastic.
The Examiner finds that Tochner discloses a single-wall slat
including, inter alia, an elongated body 17 constructed of composite
material. Ans. 4 (citing Tochner, col. 3, ll. 17-24). Appellant argues that
Tochner does “not me[e]t the understanding held by one of ordinary skill in
the art for ‘composite material.’” App. Br. 8-9.
We agree with Appellant. According to the American Composites
Manufacturers Association (ACMA)1, “[c]omposites are two or more
materials with markedly different physical or chemical properties –
categorized as ‘matrix’ or ‘reinforcement’ – combined in a way that they act
in concert, yet remain separate and distinct at some level because they don’t
fully merge or dissolve into one another.” Thus, Tochner’s slat 11 made of
polymer plastic such that “cellular or ‘foam’ structures may be achieved by
blowing polymer plastic during the extrusion process” does not constitute a
composite material because there are not two or more materials with
markedly different physical or chemical properties.

1 “What are composites?” accessed at http://www.acmanet.org/composites/
what-are-composites (last visited March 10, 2013).
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Accordingly, we do not sustain the Examiner’s rejection of
independent claim 22, and claims 23 and 24 dependent thereon, under 35
U.S.C. § 102(b) as anticipated by Tochner. See App. Br. 10 (incorporating
the arguments for independent claim 22 into arguments for claim 23).
Rejection II – Obviousness based on Tochner and McLaughlan
Dependent claims 32-34 and 42
The Examiner’s rejection of claims 32-34 and 42 relies on the
erroneous finding that Tochner discloses a single-wall slat having an
elongated body constructed of a composite material. Ans. 5-10. The
Examiner has not found that McLaughlan cures the deficiencies of Tochner.
Appellant incorporates their arguments for claim 22 into their arguments for
claims 32-34 and 42. App. Br. 14. Accordingly, for the same reasons as
discussed supra with respect to claim 22, we do not sustain the Examiner’s
rejection of claims 32-34 and 42 under 35 U.S.C. § 103(a) as unpatentable
over Tochner and McLaughlan.
Dependent claims 11, 13, and 21
Claims 11 and 21 depend from claim 1 and claim 13 depends from
claim 11. Appellant relies on the arguments made for independent claim 1
as discussed supra. App. Br. 14. As we were not persuaded by Appellant’s
arguments against claim 1 for the reasons discussed supra, we sustain the
Examiner’s rejection of claims 11, 13, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Tochner and McLaughlan.
Dependent claim 12
Claim 12 depends from claim 11 and recites that “one or more strips
placed on the face of said body along substantially the entire length of said
body.”
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The Examiner finds that the single-wall slat of Tochner, as modified
by McLaughlan to have a thickness in the range of .020ʺ to .25ʺ, also has
“one or more strips 18 placed on the face . . . along substantially the entire
length of the body 17.” Ans. 5-7.
Appellant argues that “the slat of the present application and the slat
of McLaughlan . . . are not directed toward solving the same problem” and
therefore, “it would have been unlikely that one of ordinary skill in the field
would have looked to McLaughlan to reduce the thickness of the device of
Tochner.” App. Br. 12-13. More particularly, Appellant argues that
“McLaughlan is simply an example of bending the slat about at least three
longitudinal axes to create one or more structural ribs in order to increase
rigidity and permit a thinner slat.” Appellant also argues that “[t]he problem
to be solved by the present invention was to create a planar slat, meaning a
thin slat, without such bending” so that “to use the bends of McLaughlan
would, consequently, not create a slat having the limitations of claim 12.”
App. Br. 13.
Appellant appears to be arguing that McLaughlan is non-analogous
art. The analogous-art test requires that the Board show that a reference is
either in the field of the applicant’s endeavor or is reasonably pertinent to the
problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed.
Cir. 1992). In the instant case, both the Tochner and McLaughlan references
are in the field of Appellant’s endeavor, namely, slats for chain link fences.
Thus, we are not persuaded by Appellant’s argument that the Examiner
erred.
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Application 11/214,705

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Accordingly, we sustain the Examiner’s rejection of claim 12 under
35 U.S.C. § 103(a) as unpatentable over Tochner and McLaughlan.

DECISION
We affirm the Examiner’s decision to reject claims 1-3, 11-13, and 21.
We reverse the Examiner’s decision to reject claims 22-24, 32-34, and
42.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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