Ex Parte Sonderkaer

Patent Trial and Appeal Board

Mar 14, 2013

10513672 (P.T.A.B. Mar. 14, 2013)

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.
10/513,672 02/07/2005 Peter Sonderkaer IPB.014 6548
48234 7590 03/14/2013
MEREK, BLACKMON & VOORHEES, LLC
673 S. WASHINGTON ST
ALEXANDRIA, VA 22314
EXAMINER
CHAPMAN, JEANETTE E
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
03/14/2013 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 PETER SONDERKAER
____________________

Appeal 2011-000406
Application 10/513,672
Technology Center 3600
____________________

Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
BEVERLY M. BUNTING, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000406
Application 10/513,672
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-3, 5, and 6. Claim 4 has been indicated to
contain allowable subject matter. Ans. 2-3. We have jurisdiction under 35
U.S.C. § 6(b).

The Claimed Subject Matter
The claimed subject matter encompasses multi-paned windows. See,
e.g., figs. 1, 2. Claim 1, reproduced below, is illustrative.
1. A panel element comprising:
a frame made up of a number of frame members (2-
5;102;202;302;402),
a panel unit (6;106;206;306;406) including at least one pre-made
vacuum multi-layer pane (8;108;208;308;408) exposed to indoors and at
least one single-layer sheet element (7;107;207;307;407) exposed to
outdoors, the panel unit being connected to said frame members along a
circumferential edge portion,
characterized in that at least one spacing element
(12;112;212;312A;412) is placed between said at least one vacuum multi-
layer pane (8;108;208;308;408) and said at least one single-layer sheet
element (7;107;207;307;407), said at least one spacing element delimits a
space between said at least one vacuum multi-layer pane and said at least
one single-layer sheet element along a periphery of said at least one vacuum
multi-layer pane and said at least one single-layer sheet element, and said at
least one spacing element is connected to each frame member
(2;102;202;302;402).

References
The Examiner relies upon the following prior art references:
Biro
Pease
Misonou
US 4,689,933
US 5,834,124
US 6,830,791 B1
Sep. 1, 1987
Nov. 10, 1998
Dec. 14, 2004
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Rejections
I. Claims 1-3 and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Misonou and Biro. Ans. 4.
II. Claim 6 is rejected under § 103(a) as unpatentable over Misonou,
Biro, and Pease. Ans. 6.

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GROUND of REJECTION.

OPINION
The Examiner finds that Misonou describes a frame, panel unit, and at
least one spacing element. Ans. 4. Next, the Examiner finds that Biro
describes at least one spacing element connected to each frame member. Id.
The Examiner concludes that it would have been obvious to connect the
spacer to the frame (in Misonou) to create a better and more insulating
connection. Id. In explaining the rejection, the Examiner states that
although Misonou appears to disclose its spacing elements connected to the
frame, Biro shows “one of many ways the spacers may be connected to the
frame elements.”
1
Ans. 8.
Appellant’s arguments are, in large part, premised on an assumption
that a spacing element “connected to” a frame element requires direct
contact between the two. See, e.g., App. Br. 10, 12; Reply Br. 4-6. The
plain meaning of “connect” includes “to join, fasten, or link together

1
We take the Examiner’s statement as meaning that Biro shows the
arrangement in better detail, in part because Misonou’s frame is shown in
phantom.
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usu[ally] by means of something intervening,”
2
however. Appellant does
not provide a persuasive reason why we should adopt Appellant’s more
narrow interpretation. The spacing elements in Biro are fastened between
the frame elements and thus connected to the frame. Accordingly, we are
not apprised of error in the Examiner’s reading of a spacing element
“connected to” a frame element on the structure of Biro.
Appellant argues that Misonou does not disclose a frame. App. Br.
10, 13; Reply Br. 6-7. However, “it is proper to take into account not only
specific teachings of the references but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom.” In re Preda,
401 F.2d 825, 826 (CCPA 1968). One of ordinary skill in the art looking at
Misonou would certainly draw the inference that a frame is present to hold
the panes together, as the Examiner found. Ans. 8. In addition, the
Examiner cites to Biro for explicitly describing a set of panes held together
by a frame. Id. Accordingly, Appellant’s argument is unpersuasive and
ultimately not directed to the rejection, which is predicated on a combination
of teachings.
Appellant next argues that the Examiner does not state the
modification of Misonou that is obvious in view of Biro or provide a reason
with rational underpinning to support it. App. Br. 11-12; Reply Br. 6.
However, the Examiner states reasoning and underpinnings in support of
obviousness at pages 4, 8, and 9 of the Answer. In one passage, the
Examiner explains that Misonou appears to disclose spacers connected to the
frame and that Biro shows “one of many ways” the spacers can be connected

2
“connect” Webster’s Third New International Dictionary (1993) (available
at lionreference.chadwyck.com).
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to the frame. Ans. 8. In another, the Examiner explains that the proposed
modification would provide a better and more insulating connection. Ans. 4.
Indeed, if the spacers in Misonou were modified to include an “E” shaped
portion as shown in Biro, the panes would be further insulated from the
frame. In view of the Examiner’s explanations, Appellant’s arguments that
the Examiner does not state the modification or rational underpinnings are
unconvincing.
Appellant also argues that the Examiner is considering two
components of Biro (gasket member 182 and spacer 183) to together
comprise the spacing element of claim 1. Reply Br. 4-5. Appellant has not
cogently explained how Biro’s two-part configuration precludes the
Examiner’s proposed modification of Misonou, however. Accordingly,
Appellant’s argument does not apprise us of error in the Examiner’s
rejection.
Having reviewed both of Appellant’s briefs, we are not apprised of
error in the Examiner’s rejection of claim 1.
With respect to claim 2, Appellant argues that neither reference
describes a spacing element “constructed integrally with” a frame member.
Reply Br. 9. We agree. The Examiner’s position (Ans. 5) that the spacing
element is integral because it is a constituent part of the frame is erroneous.
Under the Examiner’s interpretation, every piece of an assembled device
would be “constructed integrally.” Something “constructed integrally with”
means that the construction itself is integral, not merely that it is a
constituent part. Because both Misonou and Biro appear to have the
sealing/spacing elements separate from the frame, we agree with Appellant
that they do not disclose a spacing element “constructed integrally with” a
frame member as required by claim 2.
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With respect to claim 3, Appellant relies on the unpersuasive
arguments set forth for claim 1. App. Br. 13-14. Because Appellant’s
arguments were unpersuasive there, they are likewise unpersuasive here.
With respect to claim 5, the Examiner found that Biro describes a
spacing element with a drying agent and that it would have been obvious to
modify Misonou with a spacer having a drying agent to ensure the space
between the panels remains dry. Ans. 5. Appellant argues that Biro teaches
a desiccant in a spacing member, not a sealing member, and that the
Examiner is proposing to modify Misonou’s sealing member. App. Br. 14-
15; Reply Br. 8. This argument is unpersuasive because, as the Examiner
explains (Ans. 15), this is not responsive to the rejection. Biro teaches using
a desiccant, and the Examiner proposes to incorporate this feature at the
same location in Misonou, i.e., next to the air space. It makes little sense to
put the desiccant in a location not exposed to the air between the panes (as
Appellant proposes). Accordingly, Appellant’s argument does not apprise
us of error in the Examiner’s rejection of claim 5.
With respect to claim 6, the Examiner found that Pease describes a
screening device 66 between a single layer and multi-layer pane. Ans. 6.
The Examiner concludes that it would have been obvious to modify the
structure of Misonou to include the screening device of Pease to provide a
decorative effect. Id. Appellant correctly points to several errors in the
Examiner’s fact findings with respect to Pease. App. Br. 18; Reply Br. 10-
11. However, Appellant does not point to the error in those portions of the
rejection that are actually relevant to the proposed modification (i.e., simply
locating a screen between panes). See Ans. 17 (“applicant has missed … the
main reason the Pease reference was cited”). Accordingly, we are not
apprised of error in the Examiner’s finding that Pease does in fact have a
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decorative screening device between panes and are not apprised of error in
the Examiner’s reasons for incorporating this teaching into the structure of
Misonou, as modified by Biro.
With respect to claims 3 and 4, pursuant to our authority under 37
C.F.R. § 41.50(b), we enter a new ground of rejection under 35 U.S.C.
§ 112, second paragraph, because these claims are indefinite. Notably, these
claims state that the spacing element is attached to the frame member by
“gluing, mechanical fixing or the like” (emphasis added). The primary
purpose of the definiteness requirement is to ensure that the claims are
written in such a way that they give notice to the public of the extent of the
legal protection afforded by the patent, so that interested members of the
public, e.g., competitors of the patent owner, can determine whether or not
they infringe. All Dental Prodx, LLC v. Advantage Dental Products, Inc.,
309 F.3d 774, 779-80 (Fed. Cir. 2002). This limitation, listing exemplary
ways to fall within its scope, does not provide such notice. Clearly, “gluing,
mechanical fixing or the like” is more narrow than “connected to” because
claim 3 depends from claim 1, and thus must further limit “connected to.”
See 35 U.S.C. § 112, fourth paragraph.
3
However, it is unclear how much
more narrow because, while gluing and mechanical fixing are two ways to
connect, it is not clear which other ways of connecting are not included in
“or the like.” The Specification is equally unhelpful. Accordingly, claims 3
and 4 are indefinite.

3
While claim 4 is an independent claim, we must construe similar terms
similarly.
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DECISION
We AFFIRM the Examiner’s decision regarding claims 1, 3, 5, and 6.
We REVERSE the Examiner’s decision regarding claim 2.
We ENTER a NEW GROUND of REJECTION for claims 3 and 4 as
indefinite.

FINALITY OF DECISION
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board.” In addition to affirming the
Examiner’s rejection of one or more claims, this decision contains a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b)
provides “[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that
Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner.…
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.…
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
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the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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-IN-PART; 37 C.F.R. § 41.50(b)

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