Ex Parte Turner

Board of Patent Appeals and Interferences

Nov 2, 2010

10430747 (B.P.A.I. Nov. 2, 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.
10/430,747 05/06/2003 Mark Turner 1003.00001 3140
97510 7590 11/02/2010
The Law Office of James Baudino, PLLC
600 SIX FLAGS DRIVE
SUITE 400
ARLINGTON, TX 76011
EXAMINER
CHIN, PAUL T
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
11/02/2010 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 MARK TURNER
____________________

Appeal 2009-006439
Application 10/430,747
Technology Center 3600
____________________

Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, 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 2009-006439
Application 10/430,747

2
STATEMENT OF THE CASE
Mark Turner (Appellant) seeks our review under 35 U.S.C. § 134 of
the rejection of claims 1-8 and 15-21. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to retrieving objects from
within a wall or an enclosed structure (Spec. 1: para. [0004]).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A line retrieval system, comprising:
a housing adapted to be releasably coupled to an enclosure,
the housing comprising a plurality of magnets; and
a retrieval mechanism coupled to the housing and
actuatable to move at least one of the plurality of magnets from
an outer position within the housing to a medial position within
the housing to retrieve a line from within the enclosure through
an opening formed in the enclosure, the line coupled to an object
attracted to the magnets.

THE REJECTIONS
The following rejections2 by the Examiner are before us for review:
1. Claim 21 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.

2 The rejection of claims 9-14 as being anticipated by Clayborne and Joseph
as set forth in the non-final office action mailed March 12, 2007, has been
withdrawn (Rejection 2, 4) (Ans. 2).
Appeal 2009-006439
Application 10/430,747

3
2. Claims 1, 3-5, 7 and 8 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Clayborne (US 3,032,363, issued May 1, 1962).
3. Claims 1, 3-5, 7, 8, 153 and 17-21 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Joseph (US 4,076,242, issued Feb.
28, 1978).
4. Claims 1, 3, 5, 7 and 8 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Heath (US 2,970,003, issued Jan. 31, 1961).
5. Claims 2 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Clayborne in view of Mozelt (US 5,813,712, issued
Sep. 29, 1998).
6. Claims 2, 6 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Joseph in view of either Mozelt or Script (US
6,542,078 B2, issued Apr. 1, 2003).

ISSUES
The issues before us are: (1) whether the Examiner erred in
concluding that claim 21 is indefinite for failing to particularly point out and
distinctly claim Appellant’s invention (App. Br. 5); (2) whether the
Examiner erred in finding that Clayborne, Joseph and Heath are capable of
retrieving a line from within an enclosure, as called for in claim 1 (App. Br.
6, 10, 16); and (3) whether the Examiner erred in finding that Joseph
describes a first magnet disposed in a housing, as called for in claims 15 and
21 (App. Br. 14, 16).

3 The inclusion of claims 12-14 as being anticipated by Joseph (Ans. 3) is
deemed to be a typographical error since the rejection has been withdrawn
(See footnote 2, see also Ans. 5).
Appeal 2009-006439
Application 10/430,747

4

ANALYSIS
Rejection of claim 21 under 35 U.S.C. § 112, second paragraph
The Examiner concluded that the phrase “second magnet movable
past the first magnet” is confusing because the positions of the first and
second magnet are not clearly defined (Ans. 4, 9).
Appellant contends “[t]he specification clearly illustrates how the
second magnet 22 moves past the first magnet 20” (emphasis added) (App.
Br. 5). In support thereof, Appellant refers to paragraph [0026] included on
page 5 of the Specification (App. Br. 5-6). Appellant contends that Claim
21, when read in light of Appellant’s Specification, is not vague or indefinite
(App. Br. 6).
Claim 21 calls for, inter alia, “a second magnet movable past the first
magnet.”
Appellant’s Specification describes that as magnets 22 approach
magnets 20, the magnetic forces of magnets 22 repel magnets 20, wherein
magnets 20 are caused to move up guide slots 24, and that the movement of
the magnets 20 within guide slots 24 allows magnets 22 to move beneath
magnets 20 (Spec. 5: para. [0026]).
We find that Appellant’s Specification is clear as to how the second
magnet 22 moves past the first magnet 20. In re Johnson, 558 F.2d 1008,
1016 n.17 (CCPA 1977) (Merely that a claim is broad does not mean that it
is indefinite, that is, undue breadth is not indefiniteness.)
We reverse the rejection of claim 21 under 35 U.S.C. § 112.
Appeal 2009-006439
Application 10/430,747

5
Rejection of claims 1, 3-5, 7 and 8 over Clayborne; rejection of claims 1, 3-
5, 7, 8 over Joseph; and rejection of claims 1, 3, 5, 7 and 8 over Heath
Appellant contends that neither Clayborne, Joseph nor Heath is
capable of retrieving a line from within an enclosure, as called for in claim 1
(App. Br. 6, 10, 16).
The Examiner found that Clayborne, Joseph and Heath are capable of
retrieving a line from within an enclosure (Ans. 5-7, 9-11). The Examiner
found that the limitation “to retrieve a line” is a recitation of intended use,
and “[i]f the prior art structure is capable of performing the intended use,
then it meets the claim” (Ans. 9).
Claim 1 calls for, inter alia,
a retrieval mechanism coupled to the
housing and actuatable to move at least one of the
plurality of magnets from an outer position within
the housing to a medial position within the housing
to retrieve a line from within the enclosure through
an opening formed in the enclosure, the line
coupled to an object attracted to the magnets.
Clayborne describes a portable lifter for heavy articles, particularly
rail tie plates (col. 1. ll. 9-33). Clayborne describes that the lifter includes
magnets 38 that are movable from an attracting position to a raised releasing
position (col. 2, ll. 9-11 and col. 2, l. 70 through col. 3, l. 29). Clayborne’s
lifter is not described as being connected to a housing.
Joseph describes a game using a table having a boundary layer (col. 1,
ll. 5-16), a plenum 10 and a playing surface 22 (col. 2, ll. 25-55). Joseph
describes, regarding the embodiment of Figure 5, that the game includes a
puck controller (player) 12a, a puck 25a and magnets 62 and 64, wherein the
magnet 64 follows the movement of and rotates with the magnet 62 to move
puck controller 12a in a similar manner (col. 4, ll. 10-30, fig. 5). Joseph
Appeal 2009-006439
Application 10/430,747

6
describes, regarding the embodiment of Figure 6, that puck 25a is a magnet,
and depending on the proximity of magnet (puck) 25a and magnet 70 there
will or will not be a friction-like effect upon the puck 25a as the puck slides
over the magnet 70 (col. 4, ll. 31-63, fig. 6). Joseph shows in Figures 5 and
6 that puck controller (player) 12a, puck 25a, magnets 62, 64 and 70 are
located outside of the plenum 10. Since the magnets 62, 64 and 70 are
located outside of the plenum 10, the magnets are not movable within a
housing.
Heath describes a magnetic bingo marker remover. Heath describes
that the remover 10 is placed over the markers 12, wherein the markers 12
will be attracted to movable magnets 50 and lifted off of the board (col. 2, ll.
60-70). Thereafter, the thumb is pressed against the top end of button 62
causing the magnets 50 to rise up and the markers to be dropped in a deposit
area (col. 3, ll. 2-14). Heath’s magnetic bingo marker remover is not
described as being connected to a housing.
As set forth supra, neither Clayborne, Joseph nor Heath describe the
claimed retrieval mechanism for retrieving a line from within an enclosure
through an opening formed in the enclosure by moving magnets within a
housing.
The Examiner found that Clayborne, Joseph and Heath are capable of
retrieving a line from within the enclosure through an opening formed in the
enclosure.
We do not agree. The Examiner has provided no adequate
explanation how Clayborne, Joseph and Heath are capable of retrieving a
line from within the enclosure through an opening formed in the enclosure.
Thus, we find that the Examiner’s finding is conclusory. See Ex Parte Levy,
Appeal 2009-006439
Application 10/430,747

7
17 USPQ2d 1461, 1464 (BPAI 1990) (“In relying upon the theory of
inherency, the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”).
See also RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444
(Fed. Cir. 1984) (“Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of inherency, each and
every element of a claimed invention.”)
We reverse the rejection of claim 1 and claims 3-5, 7 and 8 which
depend therefrom over Clayborne; the rejection of claim 1 and claims 3-5, 7,
8 which depend therefrom over Joseph; and the rejection of claim 1 and
claims 3, 5, 7 and 8 which depend therefrom over Heath.

Rejection of claims 15 and 17-21 over Joseph
Appellant contends that Joseph does not describe a first magnet
disposed in a housing, as called for in claims 15 and 21 (App. Br. 14, 16).
The Examiner found that Joseph describes “a first magnet (62 or 72)
and a second magnet (62 or 72) disposed within a housing (10)” (emphasis
added) (Ans. 11). In support thereof, the Examiner references in Joseph,
column 5, lines 10-63 (id.).
Appellant contends that in Joseph, each and every magnet appears to
be located external to the plenum 10 (App. Br. 16).
Claims 15 and 21 call for, inter alia, a first magnet disposed within a
housing.
While the Examiner found that Joseph describes magnets 62 or 72, we
find that Joseph describes in column 4, lines 10-63 that elements 62, 64, 25a
and 70 are magnets and element 72 is a pivot point.
Appeal 2009-006439
Application 10/430,747

8
Further, Joseph shows in Figures 5 and 6 that magnets 62, 64, 25a and
70 are located outside of a housing, plenum 10. Thus, Joseph does not
describe a first magnet disposed in a housing.
We reverse the rejection of independent claims 15 and 21, and claims
17-20 which depend from claim 15, over Joseph.

Rejection of claims 2 and 6 over Clayborne and Mozelt; and rejection of
claims 2, 6 and 16 over Joseph and either Mozelt or Script
The Examiner has not relied on Mozelt for any teaching that would
remedy the deficiency in Clayborne. The Examiner has not relied on either
Mozelt or Script for any teaching that would remedy the deficiency in
Joseph (Ans. 8).
We reverse the rejection of claims 2 and 6 over Clayborne and
Mozelt; and the rejection of claims 2, 6 and 16 over Joseph and either
Mozelt or Script.

CONCLUSIONS
The Examiner has erred in concluding that claim 21 is indefinite for
failing to particularly point out and distinctly claim Appellant’s invention.
The Examiner has erred in finding that Clayborne, Joseph and Heath
are capable of retrieving a line from within an enclosure, as called for in
claim 1.
The Examiner has erred in finding that Joseph describes a first magnet
disposed in a housing, as called for in claims 15 and 21.

Appeal 2009-006439
Application 10/430,747

9
DECISION
The decision of the Examiner to reject claims 1-8 and 15-21 is
reversed.

REVERSED

mls

THE LAW OFFICE OF JAMES BAUDINO, PLLC
600 SIX FLAGS DRIVE
SUITE 400
ARLINGTON, TX 76011