11648084 (B.P.A.I. Jan. 31, 2012)

Ex Parte Liung Huang

Board of Patent Appeals and InterferencesJan 31, 2012

11648084 (B.P.A.I. Jan. 31, 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. 11/648,084 12/29/2006 Sunny en Liung Huang 7472 3309 7590 02/01/2012 Paul M. Denk Suite 170 763 S. New Ballas Rd. St. Louis, MO 63141 EXAMINER PUROL, DAVID M ART UNIT PAPER NUMBER 3634 MAIL DATE DELIVERY MODE 02/01/2012 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 SUNNY EN LIUNG HUANG ____________ Appeal 2010-010916 Application 11/648,084 Technology Center 3600 ____________ Before LINDA E. HORNER, STEFAN STAICOVICI, and MICHAEL C. ASTORINO, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL STATEMENT OF THE CASE Sunny En Liung Huang (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claim 1 under 35 U.S.C. § 102(e) as anticipated by Zheng ‘510 (US 6,357,510 B1; iss. Mar. 19, 2002).1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The Examiner withdrew a rejection of claim 1 under 35 U.S.C. § 102(b) as Appeal 2010-010916 Application 11/648,084 2 THE INVENTION Appellant’s claimed invention relates generally to collapsible shades designed to fit in a window of an automobile. Spec. 2. Claim 1, reproduced below, is the sole claim on appeal. 1. A collapsible shade for use in compressing against the window structure of a vehicle after installation, comprising: at least one material portion having an outer edge defining a perimeter boundary; at least one compressible member attached to the outer edge of the at least one material portion and extending beyond the perimeter boundary of the at least one material portion; wherein said at least one compressible member comprises a first and a second opposed end attached to the outer edge of the at least one material portion; wherein said compressible member forms at least one arc separate from the material portion between the first and second opposed ends when attached to the outer edge of the material portion, said arc disposed for compressing and conforming against the perimeter of the window structure of a vehicle when installed; wherein said at least one compressible member has an open configuration associated with an open state of said shade, and a collapsed configuration associated with a collapsed state of said shade; whereby said shade and its compressible member are reversibly twisted into a compact and overlapping collapsed configuration of reduced size to facilitate its storage during non- usage; and wherein said at least one compressible member in said open configuration is adapted to transfer compressive and expansive anticipated by Bruhl (US 2,596,836, iss. May 13, 1952). Ans. 2-3. Appeal 2010-010916 Application 11/648,084 3 forces to said outer edge of said material portion, to maintain said material portion in an open and stretched condition. OPINION Appellant argues that Zheng ‘510 does not describe “how its support frame 20 can be compressed against any window, much less an automobile window frame, or, for that matter, to hold its material portion in place, and to function as a shade or sun screen, when installed.” Br. 10. The Examiner, at pages 3 through 5 of the Answer, adequately responded to Appellant’s argument, and we adopt this response as the basis of our decision affirming the rejection. We also note that Zheng ‘510 describes “[y]et another example of a collapsible object includes collapsible sunshields, such as illustrated in U.S. Pat. No. 4,815,784 (Zheng)” that has “two interconnected panels that span the width of the [automobile] windscreen.” Col. 1, ll. 59-62. Zheng ‘784 is directed to an “automobile sunshield” that is collapsible. Zheng ‘784, col. 2, l. 22. This prior art disclosure in Zheng ‘510, in combination with the disclosure noted by the Examiner in column 3, lines 9-15 that Zheng ‘510’s frame members can be used to support one or more removable panel pieces to provide a collapsible support frame structure for sunshields, supports the determination of anticipation of claim 1 by Zheng ‘510. Appellant further argues that “there is no proof by the examiner under § 102(e) that Zheng [‘510] was published, or granted, on an application filed before applicant’s invention herein” because “while Zheng [‘510] was filed during April, 1999, . . . the current application claims priority back to a Appeal 2010-010916 Application 11/648,084 4 provisional application as early as October, 1998.” Br. 10. The current application indeed claims priority back through a lengthy series of continuing applications, including both continuation and continuation-in-part applications, to provisional application 60/104,703, filed October 19, 1998. We agree with the Examiner that Zheng ‘510 is prior art to the claimed invention under 35 U.S.C. § 102(e) because the ‘703 provisional application does not describe2 the subject matter of claim 1. Ans. 4-5. For example, the ‘703 provisional application does not describe “at least one compressible member attached to the outer edge of the at least one material portion and extending beyond the perimeter boundary of the at least one material portion” as called for in claim 1. Rather, the ‘703 provisional application describes a fan-shaped sun shade that is retained against the interior of an automobile windshield by suction cups or other fastening means. See, e.g., ‘703 provisional application at 5, ll. 3-16 and 8, ll. 15-22; figs. 1-5. DECISION The decision of the Examiner to reject claim 1 is AFFIRMED. 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 nlk 2 To be entitled to priority under 35 U.S.C. § 119(e), the invention must be “disclosed in the manner provided by the first paragraph of [35 U.S.C. §] 112 . . . in a provisional application filed under [35 U.S.C. §] 111(b).” 35 U.S.C. § 119(e)(1).