Ex Parte Nelson

Patent Trial and Appeal Board

Feb 27, 2019

14880038 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/880,038
22913 7590
Workman Nydegger
60 East South Temple
Suite 1000
10/09/2015
03/01/2019
Salt Lake City, UT 84111
FIRST NAMED INVENTOR
James Q. Nelson
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.
16801.12.1 6739
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES Q. NELSON
Appeal2018-003773 1
Application 14/880,038
Technology Center 1700
Before JEFFREY T. SMITH, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b ).
1 Appellant is the Applicant, Nelson and Nelson Enterprises, LLC., which is
also identified as the real party in interest. (App. Br. 3).
Appeal2018-003773
Application 14/880,03 8
Appellant's invention is generally directed to windshield wipers
having a reciprocating scrubbing wiper blade. (Spec. ,r 2). Claim 1
illustrates the subject matter on appeal and is reproduced below:
1. A windshield wiper comprising:
a support structure having a mounting bracket with a
passageway;
a scrubbing wiper assembly slidably attached to the support
structure through the mounting bracket, the scrubbing wiper
assembly having a central longitudinal axis extending in the
elongate direction between a first end and a spaced apart second
end, the scrubbing wiper assembly comprising:
a slider element retained within the passageway of the
mounting bracket;
and
a scrubbing wiper blade rigidly secured to the slider element;
and a motor mounted to the support structure, the motor
engaged with the slider element to reciprocally move the
scrubbing wiper assembly along the central longitudinal axis
and to impart a linear torque to the slider element.
The Examiner maintains the following rejection from the Final office
action for our review:
Claims 1-20 rejected under 35 U.S.C. § I02(b) as anticipated by
Nelson (US 2011/0197381 Al; Aug. 18, 2011).
The complete statement of the rejection on appeal appears in the Final
Office Action. (Final Act. 2--4).
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Appeal2018-003773
Application 14/880,03 8
OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal and each of Appellant's arguments, we are not
persuaded that Appellant has identified reversible error. Thus, we affirm the
Examiner's rejection for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Appellant does not separately argue any claim other than
independent claim 1. (See, e.g., Appeal Br. 12). We therefore limit our
discussion to claim 1. All remaining claims on appeal stand or fall with that
claim. 37 C.F.R. § 4I.37(c)(1)(iv)(2013).
Appellant argues Nelson does not anticipate claim 1 because:
None of the embodiments [ of Nelson] teach or suggest "a
support structure having a mounting bracket with a
passageway," "a scrubbing wiper assembly slidably attached to
the support structure through the mounting bracket," and "a
slider element retained within the passageway of the mounting
bracket," as recited in combination with the other limitations of
claim 1.
(App. Br. 9).
The embodiments described in Nelson disclose a mounting
bracket 168 that allows a reciprocating member 202 to be
inserted in passageway 178. Appellants wish to illustrate,
however, that Figure 56 of the current invention clearly shows
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Appeal2018-003773
Application 14/880,03 8
the presence of a slider element 1210 that Nelson does not have.
This slider element is included ( among other limitations) in
claim 1.
(App. Br. 11 ).
Appellant's arguments for patentability lack persuasive merit.
The Examiner found Nelson describes a windshield wiper that
anticipates the subject matter of claim 1 comprising a support structure 140
having a mounting bracket 168 with a passageway 178, a scrubbing wiper
assembly 142 slidably attached to the support structure 140 through the
mounting bracket 168 (Final Act 2-3; Nelson Fig. 3). Appellant's
arguments for patentability are premised on the wiper assembly depicted in
Nelson Figure 3 is not the same as the wiper assembly depicted in
Specification Figure 56 because Nelson does not have a slider element
equivalent to slider element 1210. (App. Br. 11-12). The Examiner
correctly noted that the subject matter of claim 1 is not limited to the
elements depicted in Specification Figure 56. (Ans. 5). Specifically, claim 1
does not specify an element that acts as an intermediary and separates the
wiper blade from the passageway in the mounting bracket. Appellant in the
principal brief has not identified other elements of claim 1 that are not
described by Nelson.
In the Reply Brief, Appellant first contends that Nelson's dual blade
system depicted in Figure 3 includes two separate and functionally distinct
units that are not the same as the present invention as shown in Figure 51.
(Reply Br. 2-3). Appellant also newly argues Nelson scrubbing element 142
is not equivalent to wiper blade 1250. (Reply Br. 4). These arguments were
newly presented in the Reply Brief but could have been presented in the
Appeal Brief. A new argument not timely presented in the Appeal Brief will
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Appeal2018-003773
Application 14/880,03 8
not be considered when filed in a Reply Brief, absent a showing of good
cause explaining why the argument could not have been presented in the
Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010)
(informative) ("the reply brief [is not] an opportunity to make arguments that
could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not."); compare also Optivus Tech., Inc. v.
Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument
raised for the first time in the Reply Brief is considered waived); see also 3 7
C.F .R. § 41.3 7 and § 41.41. Because the record contains no such showing,
we will not consider the new argument in the Reply Brief.
Accordingly, we affirm the 35 U.S.C. § 102(b) rejection of claims 1-
20 for the reasons given above and presented by the Examiner.
DECISION
The Examiner's prior art rejection of claims 1-20 is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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