Ex Parte Miles et al

Board of Patent Appeals and Interferences

Jan 27, 2012

11153681 (B.P.A.I. Jan. 27, 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.
11/153,681 06/16/2005 Martin Miles 248P2 2623
24320 7590 01/30/2012
Smiths IP
Suite #330
1508 West Broadway
Vancouver, BC V6JIW8
CANADA
EXAMINER
BASICHAS, ALFRED
ART UNIT PAPER NUMBER
3743
MAIL DATE DELIVERY MODE
01/30/2012 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 MARTIN MILES, GARRY MILES, BYRON BOOK,
and JOHN STEVENS
____________________

Appeal 2010-000959
Application 11/153,681
Technology Center 3700
____________________

Before: LINDA E. HORNER, STEVEN D.A. McCARTHY, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000959
Application 11/153,681
2
STATEMENT OF CASE
Appellants seek review of the Examiner’s rejection of claims 2-29
under 35 U.S.C. § 103(a) as being unpatentable over Henriques
(US 4,230,092; iss. Oct. 28, 1980) and Petersen (US 4,913,131; iss. Apr. 3,
1990). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellants’ claimed invention relates to gas inserts designed to be
retrofitted into fireplaces. Spec. 1, l. 1. Independent claim 2, reproduced
below, is representative of the claimed subject matter (emphasis added):
2. A gas fireplace insert assembly, comprising:
a firebox having a base a top and at least one wall, said at
least one wall extending between said top and said base such
that said base, said top and said at least one wall define a front-
opening firebox;
legs adapted to be removably secured to said base;
said at least one wall has a rear portion and side portions
having a dark color and a contrasting light color, said light
color extending downward from a demarcation between said
dark and said light colors to said base; and
said demarcation being continuous across said rear and
said side portions.

CONTENTIONS AND ISSUES
Independent claims 2 and 16 call for “legs adapted to be removably
secured” to the base, and similarly, independent claim 10 calls for “legs
adapted to be removably attached” to the firebox base.
The Examiner interpreted that legs “adapted to” be removably secured
or attached as called for in claims 2, 10, and 16, “is not a positive limitation
Appeal 2010-000959
Application 11/153,681
3
but only requires the ability to so perform.” Ans. 4; see also Ans. 3. Based
on this claim construction, the Examiner found that “the legs 76 of
Henriques are capable of being removed, even if it requires a blow torch.”
Ans. 4.
Appellants argue that the claim language “legs adapted to be
removably secured to said base” imposes a structural imitation or capability
that the legs themselves must be capable of being removed from the insert.
Reply Br. 5.
An issue presented by this appeal is whether Henriques’s legs 76,
which are removable by blow torch, correspond to legs adapted to be
removably secured or removably attached to the base as called for in
independent claims 2, 10, and 16.
The Examiner found that the top portion of Henriques’s decorative
grill 90 corresponds to a guide plate as called for in independent claim 14.
Ans. 3, 5. Appellants argue that Henrique’s decorative grating 90 is not a
guide plate as claimed because it is not attached to the top panel. App. Br.
15; Reply Br. 6.
Another issue raised by this appeal is whether Henriques discloses a
guide plate as called for in independent claim 14.

ANALYSIS
Claims 2-13 and 16-29
Under the Examiner’s interpretation, because it is possible to remove
anything using a blow torch, every means of attaching or securing two parts
is removable. This interpretation is incorrect because it would effectively
expunge the word “removably” from the claim language. See Stumbo v.
Appeal 2010-000959
Application 11/153,681
4
Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing
claim constructions that render phrases in claims superfluous).
The Specification does not provide a definition for the terms
“removably secured” or “removably attached.” An ordinary meaning of
removable is “that can be removed or taken away,” and an ordinary meaning
of “secure” is “to fix or attach (something) so as not to become loose, give
way, fall off, or come apart.”1 Consistent with these ordinary meanings, the
Specification describes removable legs as attached by screws.2 Spec. 13, ll.
17-25 (describing legs 100 and 102 as releasably secured to base rim 20 of
insert 12 by screws 116); figs. 6-8.
An artisan would interpret that removably secured or attached legs are
those that they may be removed in the ordinary sense of the word, such as by
unscrewing a screw. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1365
(Fed. Cir. 1999) (interpreting that rivets and laminate permanently affix
while, in contrast, screws are removable). Consequently, removal by means
such as a blow torch is not within the scope of claims 2, 10, and 16. Id. at
1365 (“claim construction is firmly anchored in reality by the understanding
of those of ordinary skill in the art”).
As such, we cannot sustain the rejection of independent claims 2, 10,
and 16, and their respective dependent claims 3-9, 11-13, and 17-29.

1 “Removable,” adj., def. 1; “secure,” v. trans., def. 5a, OXFORD ENGLISH
DICTIONARY (1989).
2 The Specification also describes that the removably secured legs of the
firebox insert “allow the insert to be installed and then raised off the floor in
the fireplace hearth such that the passageway outlet may be higher than the
bottom edge of the lintel or smoke curtain, before securing the legs to the
insert.” Spec. 4:11-14.
Appeal 2010-000959
Application 11/153,681
5
Claims 14 and 15
This rejection is deficient because it does not identify a top panel, and
it does not find that Henriques’s guide plate (decorative grill 90) is attached
to a top panel, as called for in claim 14. Ans. 3-6.3 Further, because
Henriques’s top (intermediate connector section 132) 4 is located within
secondary air flow 98 rather than primary convected air flow 96, Henriques
does not disclose a top panel that is in a spaced relationship with the top
(intermediate connector section 132) to form an outlet for the heat exchange
passageway (primary convected air flow 96) as called for in claim 14. See
Henriques, col. 11, l. 66 – col. 12, l. 20; fig. 7; see also Ans. 3, 5. Because
Henriques does not disclose a top panel, Henriques does not disclose a guide
plate (decorative grill 90) attached to a top panel as called for in claim 14.
As such, we cannot sustain the rejection of independent claim 14 and
its dependent claim 15.

CONCLUSIONS
Henriques’s legs 76, which are removable by blow torch, do not
correspond to legs adapted to be removably secured or attached to the base
in independent claims 2, 10, and 16.
Henriques does not disclose a guide plate as called for in independent
claim 14.

3 The Examiner relied on Peterson to modify Henriques’s decorative grill 90
to be removable; however, Peterson was not relied upon to specify what the
decorative grill is attached to. Ans. 3.
4 The Examiner initially relied upon Henriques’s flue pipe 78 as the claimed
top, but then the Examiner changed the rationale to rely on intermediate
connector section 132 as the claimed top. Ans. 3, 5.
Appeal 2010-000959
Application 11/153,681
6
DECISION
We reverse the Examiner’s decision to reject 2-29.

REVERSED

nlk