Ex Parte Hormay et al

Patent Trials and Appeals Board

Apr 30, 2019

14596164 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/596,164 01/13/2015
94468 7590 05/02/2019
DISNEY ENTERPRISES INC.
c/o Patent Ingenuity, P.C.
9701 Wilshire Blvd., Suite 1000
Beverly Hills, CA 90212
FIRST NAMED INVENTOR
Zsolt Hormay
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.
DISNEY-0820-US 8445
EXAMINER
COX, STEPHANIE A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
ssimpson@patentingenuity.com
patents@patentingenuity.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZSOL T HORMA Y and STEVEN PORTER
Appeal2018-005073
Application 14/596, 164
Technology Center 1700
Before TERRY J. OWENS, CATHERINE Q. TIMM, and
JENNIFER R. GUPTA, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant (Disney Enterprises, Inc.) appeals under
35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-20. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The claims are to a coated wire mesh artificial foliage pattern and a
method for making it. Claim 1 is illustrative:
1. An apparatus comprising:
a wire mesh that is shaped according to an artificial
foliage pattern and is coated with a coating to match a
Appeal2018-005073
Application 14/596, 164
characteristic of the artificial foliage pattern, the coating filling
in spaces between the wire mesh to produce a translucent
structure in the spaces that filters light.
The References
Do You Remember ... Dip-A-Flower (Mar. 25, 2013),
http://midlifecrisishawaii.com/memories/do-you-remember-dip-a-flower
(hereinafter Dip).
About wate,jets (2013),
https://web.archive.org/web/20130122180714/http://waterjets.org/index.php
?option=com_c ... (hereinafter Waterjets).
Craft Wire & Jewelry Wire - Copper Wire, Aluminum Wire (2014),
http://www.craftwire.org (hereinafter Craft Wire).
The Rejections
The claims stand rejected as follows: claims 1-5, 8, 10-15, 18, and 20
under 35 U.S.C. § 102(a)(l) or, in the alternative, under 35 U.S.C. § 103(a)
over Dip, claims 6, 9, 16, and 19 under 35 U.S.C. § 103(a) over Dip in view
of Craft Wire, and claims 7 and 17 under 35 U.S.C. § 103(a) over Dip in
view ofWaterjets.
OPINION
We reverse the rejections. We need address only the independent
claims (1 and 11 ).
"Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference." Corning Glass Works v. Sumitomo Elec. US.A., Inc.,
868 F.2d 1251, 1255-56 (Fed. Cir. 1989).
Dip twists a wire into a flower shape and dips it into a liquid to form a
film within the flower shape (p. 2).
2
Appeal2018-005073
Application 14/596, 164
The Examiner states that Dip' s "wire is shaped in the form of a flower
having overlapping parts which are considered to provide a mesh" (Ans. 3).
"'[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification."' In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
The Examiner does not establish that the broadest reasonable
interpretation of the Appellant's claim term "mesh," consistent with the
Specification, includes a wire shaped in the form of a flower. See Final
Act. 3. The relevant ordinary meaning of "mesh" is "a woven, knit, or
knotted material of open texture with evenly spaced holes." 1 The
Appellant's disclosure that "[t]he structural mesh 100 has overlapping wires
and open spaces between the overlapping wires" (Spec. ,r 14) and illustration
of a mesh (Fig. 1) are consistent with that definition. The Examiner's
meaning of "mesh," therefore, is unreasonably broad in view of the
Appellant's Specification.
The Examiner apparently finds that there is a mesh within Dip' s
flower shapes (p. 2) (Ans. 6).
As shown by the Appellant (Reply Br. 3), the background behind
Dip' s flower shapes does not appear to be a mesh.
The Examiner concludes that "the clams are directed to the concept of
coating a wire structure with a material that forms a translucent structure.
DIP discloses such general concept as seen from the figures and description"
(Ans. 7).
1 Merriam-Webster's Collegiate Dictionary 778 (11th ed. 2003).
3
Appeal2018-005073
Application 14/596, 164
The Appellant's claims do not claim the concept asserted by the
Examiner but, rather, require a wire mesh shaped according to an artificial
foliage pattern. The Examiner does not establish that Dip discloses that
limitation or would have suggested it to one of ordinary skill in the art.
Accordingly, we reverse the rejections.
DECISION
The rejections of claims 1-5, 8, 10-15, 18, and 20 under
35 U.S.C. § 102(a)(l) or, in the alternative, under 35 U.S.C. § 103(a) over
Dip, claims 6, 9, 16, and 19 under 35 U.S.C. § 103(a) over Dip in view of
Craft Wire, and claims 7 and 17 under 35 U.S.C. § 103(a) over Dip in view
of Waterjets are reversed.
The Examiner's decision is reversed.
REVERSED
4