Ex Parte Nestor et al

Patent Trial and Appeal Board

Mar 29, 2016

12819009 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/819,009 06/18/2010
8791 7590 03/30/2016
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
Dennis P. Nestor
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.
8303.POOlX 9057
EXAMINER
GARFT, CHRISTOPHER
ART UNIT PAPER NUMBER
3632
MAILDATE DELIVERY MODE
03/30/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS P. NESTOR and DAVID M. NESTOR1
Appeal2014-002058
Application 12/819,009
Technology Center 3600
Before PHILIP J. HOFFMANN, ROBERT L. KINDER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 3-12, and 14--17. Claims 2 and 13
have been cancelled. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify IF Designs, LLC, as the real party in interest. Br. 3.
Appeal2014-002058
Application 12/819,009
Appellants' Invention
Appellants' invention is directed to an apparatus for increasing the
number of utility slots in an awning tube utility track. Spec. i-f 3. The
apparatus works through insertion into an awning tube utility track. Br. 9
(citing Spec. i-f 17). The apparatus is designed to support various RV
accessories such as a shade or a lighting fixture. Id. (citing Spec. i-f 13).
Independent Claims on Appeal
Claims 1 and 9 are the independent claims on appeal. We select
independent claim 1 as illustrative. Claim 1 recites:
1. An apparatus comprising:
a track mount sized to be received by an awning tube
utility track, the track mount having a length;
a first utility track coupled with and parallel to the track
mount, the first utility track having a first inner diameter
orthogonal to the length of the track mount, and having a first
opening along the length of the track mount; and
a second utility track coupled with and parallel to the track
mount, the second utility track having a second inner diameter
orthogonal to the length of the track mount and different in value
from the first inner diameter, and having a second, different,
opening along the length of the track mount.
Br. 16 (Claims App'x).
Examiner's Rejection on Appeal
The following rejection is before us for review. Claims 1, 3-12, and
14--17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Adams
(US 6,328,459 Bl, iss. Dec. 11, 2001) and Taulbee (US 7,152,838 B2, iss.
Dec. 26, 2006). Final Act. 2 (mailed Feb. 22, 2013).
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Appeal2014-002058
Application 12/819,009
Claims 1 and 9
ANALYSIS
Central to the resolution of this appeal is the scope of the claim term
"opening" as used in claims 1 and 9. See Br. 16-18 ("a first opening along
the length of the track mount" and "a second, different, opening along the
length of the track mount"). We determine the scope of the claims in patent
applications not solely on the basis of the claim language, but upon giving
claims "their broadest reasonable interpretation consistent with the
specification" and "in light of the specification as it would be interpreted by
one of ordinary skill in the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004).
Appellants' Specification uses the term "opening" in reference to two
distinct types of openings. As depicted below in Figure 2A, "[e]ach utility
track 204 has an end opening 206 and a side opening 208." Spec. i-f 14.
_.-~-----------------------~.,} ..... __________________________ .. ,'i
Fig. 2A
Figure 2A illustrates an end-on view representing one embodiment of the
apparatus for increasing the number of utility slots in an awning tube utility
track. Id. i-f 14. Based on this disclosure, and similar disclosure discussing
Figure 7 (id. i-f 25), the term "opening" can represent either a side opening
(208) or an end opening (206). The end opening may be orthogonal to the
track mount in some embodiments. See id. i-f 25. Because claims 1 and 9 do
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Appeal2014-002058
Application 12/819,009
not differentiate between these types of openings, the broadest reasonable
interpretation of "opening" encompasses both types of openings - the side
opening and the end opening.
The Examiner makes two distinct findings related to the challenged
"opening" limitations. First, the Examiner finds that Adams teaches two
openings between the arms and the base portion of the holder. Final Act. 2-
4 ("the openings are established by the ends of the arms (11 and 12) and the
base portion and since the arms are separated from one another as shown in
Fig. 2, the openings are separate or different from one another"). Annotated
Figure 2 of Adams is reproduced below.
12········1
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/
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I \ '""\,_. .
8· -·' '--······,dl
FIG. 2 ~.
Annotated Figure 2 of Adams depicts a top plan view of the holder for
holding decorative lights and other objects with Examiner's annotations
showing two openings.
The Examiner makes an alternative finding that Adams also teaches
two end openings. Ans. 11-12. The Examiner defines the openings as the
areas (21 in Fig. 3 and 23 in Fig. 5) in which elements can be inserted, thus
extending along the length of the track mount as claimed. Id. at 11.
Annotated Figure 1 of Adams is reproduced below.
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Appeal2014-002058
Application 12/819,009
Annotated Figure 1 of Adams depicts a perspective view of the holder for
holding decorative lights and other objects with the Examiner's annotations
showing two end openings.
Appellants argue the claimed "first opening" and "second, different,
opening" of claims 1 and 9 are not taught by Adams. Appellants contend
that the term "opening" is a side opening (708) as depicted in Figure 7 of the
Specification. Br. 9. Based on this interpretation, Appellants contend that
each utility track of the Adams apparatus must have its own opening along
the length of the track mount coupled to the utility tracks. Id. Specifically,
Appellants contend that Adams does not have two distinct openings as
claimed because each cylindrical opening is accessed by the same single
external opening to the apparatus. Id. at 11 (citing Adams Fig. 1, Abstract).
In essence, Appellants argue that because one diameter space of Adams
opens up into the second diameter space, and not into the exterior, the
internal gap would not be considered an opening as claimed.
The Examiner has persuasively established that Adams teaches or
suggests "a first opening" and "a second, different, opening" as required by
claims 1 and 9. We believe each of the Examiner's finding are
independently supported. First, the Examiner has persuasively established
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Appeal2014-002058
Application 12/819,009
that Adams teaches two distinct side type openings. The claims do not
require that the openings be to an exterior or external portion of the
apparatus. Thus, we find Appellants' contentions unpersuasive.
Next, based on the broadest reasonable interpretation of "opening"
including an end opening, we agree the Examiner has also persuasively
established that Adams teaches two different end-type openings. See
Ans. 11-12. These openings extend through the open space surrounded by
arms (6 and 4 in Fig. 2) and would extend into and/or out of the page and
along the length of the track (8), as depicted in Figure 2. We agree with the
Examiner that these openings are different because they occupy different
defined spaces and because they are designed to support and hold devices
having different diameters. Ans. 12. Further, the areas found by the
Examiner to be openings are disclosed in Adams as "a generally cylindrical
opening having a first selected diameter" and "a second generally cylindrical
opening having a second selected diameter." Adams, col. 6, 11. 27-33. The
fact that Adams describes each of these two areas as distinct openings is
persuasive and further supports the Examiner's finding.
Appellants contend "Adams fails to disclose asymmetric apparatus (or
method of using an asymmetric apparatus) sized for, and capable of,
increasing the number of utility slots in an awning tube utility track."
Br. 11. Appellants also contend that the Adams apparatus is only designed
to hold one object at a time, and, therefore, it could not be used to increase
the number of utility slots in an awning tube utility track. Br. 11-12.
Appellants' arguments are not commensurate in scope with the claimed
invention. See In re Self, 671F.2d1344, 1348 (CCPA 1982) (limitations not
appearing in the claims cannot be relied upon for patentability). For
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Appeal2014-002058
Application 12/819,009
example, claims 1 and 9 do not require that the apparatus be used to support
multiple devices at once. Instead, the claims generally require only two
distinct utility tracks, each with a diameter and an opening. Regardless, we
also agree with the Examiner's finding "that the Adams device is capable of
supporting multiple objects at the same time due to the different diameters of
arms 4 and 6 as well as the resilient material of the device." Id. at 13. In
fact, Adams specifically states: "Moreover, two objects of different sizes
could be[ ]held simultaneously one in each arm." Adams, col. 5, 11. 63----67
("For example, a two inch pipe could be held in the smaller arm while a
four-inch pipe rests within the larger arm.").
Finally, Appellants argue neither apparatus of Adams nor Taulbee
could hold or support a screen room or sun shade, or be mounted to an RV
awning. Br. 13. We first agree with the Examiner that "the features upon
which applicant relies (i.e., the device being used to support a screen room
or sun shade) are not recited in the rejected claim(s)." Ans. 14. Second, as
pointed out by Appellants (Br. 9), the claimed invention contemplates sizing
the utility tracks to receive lighting fixtures including "rope lights" (Spec.
i-fi-f 13, 26). Adams likewise contemplates holding and mounting decorative
lights and other objects. Adams, Abstract. We thus find Appellants'
arguments unpersuasive.
We therefore sustain the Examiner's rejection of claims 1 and 9 over
Adams and Taulbee under 35 U.S.C. § 103(a).
Dependent claims
Claims 3-8, 10-12, and 14--17 likewise stand rejected under 35
U.S.C. § 103(a) based on Adams and Taulbee. Appellants do not separately
argue these claims with specificity. Br. 14. We therefore sustain the
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Appeal2014-002058
Application 12/819,009
Examiner's rejection of claims 3-8, 10-12, and 14--17 based on this ground
of rejection for the reasons set forth above.
DECISION
We AFFIRM the Examiner's decision in rejecting claims 1, 3-12, and
14--17.
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)(l )(iv).
AFFIRMED
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