11209123 (B.P.A.I. Jun. 23, 2009)

Ex Parte Turner

Board of Patent Appeals and InterferencesJun 23, 2009

11209123 (B.P.A.I. Jun. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MARK TURNER ____________ Appeal 2009-001659 Application 11/209,123 Technology Center 3700 ____________ Decided:1 June 23, 2009 ____________ Before WILLIAM F. PATE III, STEVEN D.A. McCARTHY, and STEFAN STAICOVICI, Administrative Patent Judges. WILLIAM F. PATE III, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 CFR Â§ 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-001659 Application 11/209,123 2 STATEMENT OF CASE This is an appeal from the final rejection of claims 26-28. Claims 1-25 and 29-31 stand withdrawn from consideration. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§Â§ 134 and 6. The claimed subject matter is directed to a retrieval system for use in placing wiring or the like into a remote area inside of a structure. Claim 26, reproduced below, is further illustrative of the claimed subject matter. 26. A retrieval system, comprising: a first magnet locatable on a first side of a structure, the first magnet being radially magnetized, the first magnet magnetically couplable to a second magnet disposed on a second side of the structure opposite the first side, the first and second magnets movable relative to the structure to move an object coupled to one of the first and second magnets relative to the structure. REFERENCES The references of record relied upon by the Examiner as evidence of anticipation and obviousness are: Flowers US 4,527,775 Jul. 9, 1985 Perkins US 6,857,382 B2 Feb. 22, 2005 REJECTIONS Claims 26 and 27 stand rejected under 35 U.S.C. Â§ 102 as anticipated by Flowers. Claims 26-28 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Flowers in view of Perkins. Appeal 2009-001659 Application 11/209,123 3 OPINION We have carefully reviewed the rejections on appeal in light of the arguments of the Appellant and the Examiner. As a result of this review, we have reached the determination that the applied prior art does not establish the lack of novelty or the prima facie obviousness of the claims on appeal. Therefore the rejections on appeal are reversed. Our reasons follow. The following comprises our findings of fact as to the scope and content of the prior art and the differences between the prior art and the claimed subject mater. With respect to the Flowers patent, it is our finding that roller 38, emplaced into the structure, is referred to as a magnetic means in col. 2, ll. 62-63, as a magnetically responsive material in col. 4, ll. 11 and 12, and as magnetically responsive roller means in col. 4, ll. 38 and 39. Inasmuch as the magnetic tool 40 is an electromagnetic used to create the magnetic force, it is our finding that roller 38 is not a magnet as required by the claimed subject matter. The Flowers patent does not state that the roller 38 is magnetic and by referring to the roller as a magnetically responsive material or means, the patent conveys that the roller is a ferromagnetic material capable of being attracted by a magnet. Since independent claim 26 requires two magnets, one on either side of the claimed structure, we agree with Appellant that Flowers does not disclose a first magnet and a second magnet on opposite sides of a structure as required by claim 26. Therefore, claim 26 does not lack novelty over the Flowers patent. With respect to the rejection of claims 26-28 as unpatentable over Flowers in view of Perkins, we note that Perkins merely discloses a circular electromagnet 105, that is attracted to a ferrous strip or plate attached to a docking point. See col. 3, ll. 16-28. Since we have found that Flowers does Appeal 2009-001659 Application 11/209,123 4 not teach two magnets on either side of a structure, and Perkins merely teaches a circular electromagnet attracted to a ferrous plate mounted on a structure, the combined teachings of the prior art would not have made the subject matter of claim 26 prima facie obvious to one of ordinary skill. Neither reference discloses magnets on either side of a structure as required by claim 26. Therefore, the references do not establish the prima facie obviousness of claims 26-28. ORDER The rejection of claims 26 and 27 under 35 U.S.C. Â§ 102 is reversed. The rejection of claims 26-28 under 35 U.S.C. Â§ 103 is reversed. REVERSED Vsh MUNSCH, HARDT, KOPF & HARR, P.C. INTELLECTUAL PROPERTY DOCKET CLERK 3800 LINCOLN PLAZA 500N AKARD STREET DALLAS TX 75201