11039710 (B.P.A.I. Nov. 8, 2010)

Ex Parte Thompson et al

Board of Patent Appeals and InterferencesNov 8, 2010

11039710 (B.P.A.I. Nov. 8, 2010)

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. 11/039,710 01/18/2005 Spencer J. Thompson SPARK-44937 6433 26252 7590 11/09/2010 KELLY LOWRY & KELLEY, LLP 6320 CANOGA AVENUE SUITE 1650 WOODLAND HILLS, CA 91367 EXAMINER SMITH, KIMBERLY S ART UNIT PAPER NUMBER 3644 MAIL DATE DELIVERY MODE 11/09/2010 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 SPENCER J. THOMPSON and KEN EDLAUER ____________________ Appeal 2009-008405 Application 11/039,710 Technology Center 3600 ____________________ Before LINDA E. HORNER, JENNIFER D. BAHR, and FRED A. SILVERBERG, Administrative Patent Judges. SILVERBERG, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-008405 Application 11/039,710 2 STATEMENT OF THE CASE Spencer J. Thompson and Ken Edlauer (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b) (2002). We REVERSE. THE INVENTION Appellants’ claimed invention is directed to a leash assembly having an adjustable length leash strap (Spec. 1: para. [0002]). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A leash assembly, comprising: a housing including a hand grip; a leash including a first end, a second end defining a leash handle, and an intermediate section extendable and retractable through the housing; controlling means for allowing travel of the leash in a first direction through the housing in response to pulling on the leash handle, and for simultaneously preventing travel of the leash in an opposite second direction through the housing; and means for selectively disengaging the controlling means. THE REJECTION The following rejection by the Examiner is before us for review: Claims 1-20 are rejected under 35 U.S.C. § 102(b) as being anticipated by Pak (US 4,562,792, issued Jan. 7, 1986). Appeal 2009-008405 Application 11/039,710 3 ISSUE The issue before us is whether the Examiner erred in finding that Pak describes a cam-lock for allowing travel of the leash in a first direction through the housing in response to pulling on the leash handle while simultaneously preventing travel of the leash in an opposite second direction through the housing, as called for in independent claims 1, 8, 13 and 16 (App. Br. 13). ANALYSIS Claims 1, 82 and 13 call for, inter alia, a controlling means for allowing travel of the leash in a first direction through the housing in response to pulling on the leash handle while simultaneously preventing travel of the leash in an opposite second direction through the housing. Claim 16 calls for, inter alia, a cam-lock for allowing travel of the leash in a first direction through the housing in response to pulling on the leash handle while simultaneously preventing travel of the leash in an opposite second direction through the housing. Appellants contend that “[t]he structure associated with the controlling means comprises a cam-lock 28 which is spring loaded and rotatable about a pivot point 30” (emphasis added) (App. Br. 6). “[T]he ‘broadest reasonable interpretation’ that an examiner may give means-plus-function language is that statutorily mandated in paragraph six. Accordingly, the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability 2 Claims 8 and 13 further call for the controlling means to include “a spring- biased cam-lock for automatically engaging the intermediate section of the leash.” Appeal 2009-008405 Application 11/039,710 4 determination.” In re Donaldson Co., 16 F.3d 1189, 1194-95 (Fed. Cir. 1994) (en banc). The plain and unambiguous meaning of [35 U.S.C. § 112] paragraph six is that one construing means- plus-function language in a claim must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure. Id. at 1193. “The first step in the construction of a means-plus-function claim element is to identify the particular claimed function. The second step in the analysis is to look to the specification and identify the corresponding structure for that function.” (Citations omitted). Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). We find that (1) the language of claim 1 invokes 35 U.S.C.§ 112, sixth paragraph for the phrase “controlling means”, (2) the recited function is “for allowing travel of the leash in a first direction through the housing in response to pulling on the leash handle, and for simultaneously preventing travel of the leash in an opposite section direction through the housing,” and (3) Appellants have supplied the structure corresponding to the recited function, cam-lock 28. Accordingly, the phrase “controlling means,” as called for in independent claim 1 will be construed as encompassing “a cam- lock” or its equivalents in our analysis. Despite the use of “means for” language, claims 8 and 13 do not invoke 35 U.S.C. § 112, sixth paragraph, because these claims further recite sufficient structure within the claims themselves to perform entirely the recited function. In particular, claims 8 and 13 call for the controlling means to be a cam-lock. “[W]here a claim Appeal 2009-008405 Application 11/039,710 5 recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the claim is not in means-plus-function format” even if the claim uses the term “means.” Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420, 1427-28 (Fed. Cir. 1997). Claim 16 also calls for a “cam-lock.” Appellants contend that “[a] cam is a specific mechanical construct having a specific shape understood by persons having ordinary skill in the art” (App. Br. 11). Appellants contend that Pak does not describe a cam or cam-lock (App. Br. 11). The Examiner found that Pak describes a cam 5 that provides means for allowing travel of the leash in a first direction while preventing travel in a second direction (Ans. 3), wherein cam 5 “clearly discloses a cylindrical shape” (Ans. 4). Appellants contend that a dictionary definition of the word “cam” was proffered by the Examiner in an Office action mailed August 17, 2007 [Office action 4], wherein the word “cam” was defined as “a disk or cylinder having an irregular form such that its motion, usually rotary, gives to a part or parts in contact with it a specific rocking or reciprocating motion” (App. Br. 11).3 Appellants contend that Pak’s element 5 is a rotating lever, which does not meet the Examiner’s proffered definition of the word “cam.” Appellants have not contested the Examiner’s proffered dictionary definition of the word “cam.” Accordingly, we will use that definition in our analysis. 3 Appellants have submitted a copy of the definition of the word “cam” proffered by the Examiner (App. Br., Evidence Appendix). Appeal 2009-008405 Application 11/039,710 6 Pak describes a leash 2 that passes through a housing 1, which has a rotating lever 5, wherein the rotating lever has an end 8 and a part 13 (col. 2, ll. 9-32, col. 2, l. 56-col. 3, l. 2, and fig. 2). In Pak’s Figure 2, rotating lever 5 is not shown as being a disk or a cylinder of irregular form. Therefore, Pak’s rotating lever 5 is not a cam. Accordingly, it follows that Pak’s rotating lever 5 is also not a cam-lock, as called for in independent claims 8, 13 and 16. The Examiner has not made any findings or articulated any reasoning establishing that Pak’s rotating lever 5 is an equivalent to a cam-lock, so as to satisfy the “controlling means” limitation of claim 1. We reverse the rejection of independent claims 1, 8, 13 and 16, and claims 2-7, 9-12, 14, 15 and 17-20 which, respectively, depend therefrom. CONCLUSION The Examiner has erred in finding that Pak describes a cam-lock for allowing travel of the leash in a first direction through the housing in response to pulling on the leash handle while simultaneously preventing travel of the leash in an opposite second direction through the housing, as called for in independent claims 1, 8, 13 and 16. DECISION The decision of the Examiner to reject claims 1-20 is reversed. REVERSED Appeal 2009-008405 Application 11/039,710 7 mls KELLY LOWRY & KELLEY, LLP 6320 CANOGA AVENUE SUITE 1650 WOODLAND HILLS, CA 91367