Ex Parte Linford et al

Board of Patent Appeals and Interferences

May 1, 2012

10847640 (B.P.A.I. May. 1, 2012)

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.
10/847,640 05/17/2004 Paul M. Linford 1004.2.4 2462
7590 05/01/2012
BRIAN C. KUNZLER
8 EAST BROADWAY
SUITE 600
SALT LAKE CITY, UT 84111
EXAMINER
SAFAVI, MICHAEL
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
05/01/2012 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 PAUL M. LINFORD and DUANE M. LINFORD
____________________

Appeal 2010-003221
Application 10/847,640
Technology Center 3600
____________________

Before: STEVEN D.A. McCARTHY, EDWARD A. BROWN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003221
Application 10/847,640
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 5-7, 10, and 21. We have jurisdiction under 35
U.S.C. § 6(b). Claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. An apparatus to define at least a portion of a window
opening within a plurality of concrete forms, the apparatus
comprising:
a window buck panel having a panel body comprising an
upper surface configured to receive a frame member and a
lower surface configured to interface with concrete;
a plurality of support members coupling the upper and
lower surfaces, the window buck panel configured to be secured
between a plurality of concrete forms;
a concrete retention barrier extending laterally away from
the panel and through a plane defining a lateral edge of the
panel, the concrete retention barrier configured to contact at
least one of the plurality of concrete forms under pressure and
to prevent concrete intrusion between the panel body and the at
least one concrete form; and
wherein the concrete retention barrier is attached
proximal to a distal end of a leg coupled to and extending
downward from the panel body, the leg configured to flex at a
point between a proximal end and the distal end such that the
concrete retention barrier is a lowest point of contact when the
panel body contacts a planar surface under pressure.

References
The Examiner relies upon the following prior art references:
Albris
Bowls
Hagglund
Platt
US 2,766,372
US 5,557,893
US Des. 396,308
US 6,698,726 B2
Oct. 9, 1956
Sep. 24, 1996
Jul. 21, 1998
Mar. 2, 2004
Appeal 2010-003221
Application 10/847,640
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Rejections
I. Claims 1, 5-7, 10, and 21 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Ans. 3.
II. Claims 1, 5-7, 10, and 21 are rejected under § 112, second paragraph,
as indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention. Ans. 4.
III. Claims 1, 5-7, 10, and 21 are rejected under §§102(b) or 102(a) as
anticipated by Hagglund. Ans. 5.
IV. Claims 1, 5-7, 10, and 21 are rejected under § 103(a) as unpatentable
over Hagglund in view of any of Albris, Bowls, and Platt. Ans. 6.

SUMMARY OF DECISION
We REVERSE.

OPINION
Rejections I & II – 35 U.S.C. § 112
Claim 1 specifies that a leg of the window buck panel is “configured
to flex at a point between a proximal end and the distal end.” The Examiner
found that written description support for this limitation is not “clear and
complete” and also that this limitation “is not understood” (i.e., indefinite)
because the Specification is not “clear and complete.” Ans. 3-4.
Appellants argue that the Specification describes this limitation at
paragraphs [0033]-[0034]. App. Br. 6. The Specification at paragraphs 33
and 34 states, in relevant part (with emphasis added):
legs 208 … include a point of attachment 212
(proximal end) that defines the intersection where
the interior and exterior surfaces 204 … meet the
interior and exterior legs 208. … In the preferred
embodiment, the interior leg 208 includes a
concrete retention flange 214. In the depicted
Appeal 2010-003221
Application 10/847,640
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embodiment, the concrete retention flange 214 is
shown at the distal end of the interior leg 208. …
The interior leg 208 may flex or bend at the
point of attachment 212 due to external forces,
such as the direct contact pressure exerted by one
of the concrete forms 104. Alternatively, the
interior leg 208 may flex or bend between the
point of attachment 212 and the concrete
retention flange 214.

Appellants argue that this passage reasonably conveys possession of a
leg that flexes between a proximal end (the point of attachment 212) and a
distal end (at the retention flange 214). App. Br. 6-7. The Examiner
acknowledges this portion of the Specification but states that
such description is an alternative to the elected
Figure 2 embodiment described at lines 8-9 on
page 9 of the specification … [and] at best
generally, if not ambiguously, presents an
alternative embodiment with no clear description
as to how such an alternative embodiment is
configured particularly with respect to the elected
embodiment of Fig. 2.[1]

Ans. 7-8.
The test for sufficient written description, however, is “whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336,

1 The Examiner’s Requirement for Restriction/Election mailed Oct. 6, 2005
identifies originally filed claims 1-13, 14-17, and 18-20 as drawn towards
three inventions. The Examiner further identified figures 2, 4, and 5 as
species, with claim 1 generic. Appellants elected group I (claims 1-13) and
the species of figure 2. Response to Election/Restriction received Feb. 21,
2006.
Appeal 2010-003221
Application 10/847,640
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1351 (Fed. Cir. 2010). The examiner has the initial burden of presenting
evidence or reasons why persons skilled in the art would not recognize in
appellant's specification disclosure a description of the invention defined by
the claims. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976).
It is clear that Appellants disclose an interior leg that flexes between
the distal and proximal ends. Spec. [0033]-[0034]. The Examiner’s inquiry
into whether the claimed invention is a different embodiment to another
described in the Specification does not illuminate how one of ordinary skill
in the art would understand the disclosure. The Examiner has not explained
how the disclosure is lacking, such that one of ordinary skill in the art would
not recognize the invention claimed in view of this disclosure. Therefore,
the Examiner has not met the initial burden for showing lack of written
description. We do not sustain the Examiner’s written description rejection.
With respect to the indefiniteness rejection, the Examiner states that
“it is not understood as to what is being defined by [the claimed flexible
leg].” Ans. 4. However, the Examiner does not explain why one of ordinary
skill in the art would not understand what is defined by the claimed flexible
leg. The leg is configured to flex at a point between two other points (212,
214); both of these points are clearly disclosed in the Specification (see, e.g.,
para. [0033], fig. 2). With this in mind, the Examiner has not cogently
explained how one of ordinary skill in the art would not understand the
claim limitations. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806
F.2d 1565, 1576 (Fed. Cir. 1986) (the test for definiteness under 35 U.S.C. §
112, second paragraph, is whether “those skilled in the art would understand
what is claimed when the claim is read in light of the specification”)
(citations omitted). Accordingly, we do not sustain the Examiner’s
indefiniteness rejection.
Appeal 2010-003221
Application 10/847,640
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Rejection III – 35 U.S.C. § 102
Claim 1 requires, in relevant part, a window buck panel having a leg
configured to flex at a point between a proximal end and a distal end. The
Examiner found that Hagglund describes a leg “coupled to and extending
downward from the panel body, the leg is configured to flex as along the
point of attachment to the body.” Ans. 5. Appellants argue that Hagglund
does not teach the flexible leg as claimed. App. Br. 8. “[W]hen the PTO
shows sound basis for believing that the products of the applicant and the
prior art are the same, the applicant has the burden of showing that they are
not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (citing In re King,
801 F.2d 1324, 1327 (Fed. Cir. 1986) and In re Ludtke, 441 F.2d 660, 664
(CCPA 1971)). In this case, however, the Examiner has not shown a sound
basis to shift the burden to Appellants.
Hagglund describes an ornamental design for a rail component. There
is no discussion of the structure, materials, or function of the rail. The
Examiner states “any element or material of metal, polymer or wood would
be able to flex to any particular degree given the shape shown by
Hagglund.” Ans. 8. However, even if so, the Examiner has not set forth a
sound basis to find that the leg in Hagglund is necessarily configured to flex
between the proximal and distal ends (at the proximal end is not between the
proximal and distal ends). See also Spec. [0034] (contrasting flexing at vs.
flexing between). Accordingly, we cannot sustain the Examiner’s
anticipation rejection, which lacks this required finding.

Appeal 2010-003221
Application 10/847,640
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Rejection IV - 35 U.S.C. § 103
As an alternative to the anticipation rejection discussed above, the
Examiner rejects each of the claims as obvious in view of Hagglund and
“any of” Albris, Bowls, and Platt. Ans. 6-7. However, even assuming the
obviousness of making the rail of Hagglund plastic (as purportedly
suggested by Albris, Bowls, and Platt), the Examiner makes no findings or
conclusions with respect to the leg flexing between the proximal and distal
ends. Accordingly, the Examiner’s rejection does not allow a conclusion
that the subject matter of claims 1, 5-7, 10, and 21 are obvious.

DECISION
We reverse the Examiner’s decision regarding claims 1, 5-7, 10, and
21.

REVERSED

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