Ex Parte EllisonDownload PDFPatent Trial and Appeal BoardNov 20, 201211207073 (P.T.A.B. Nov. 20, 2012) Copy Citation 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. 11/207,073 08/18/2005 Mary Lynn Ellison MLE 05106 7378 82357 7590 11/21/2012 James Ray & Associates Intellectual Property, LLC 4268 Northern Pike Rd Monroeville, PA 15146 EXAMINER KWIECINSKI, RYAN D ART UNIT PAPER NUMBER 3635 MAIL DATE DELIVERY MODE 11/21/2012 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 MARY LYNN ELLISON ____________ Appeal 2010-005345 Application 11/207,073 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, MICHAEL L. HOELTER, and SCOTT A. DANIELS, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005345 Application 11/207,073 2 STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1-17. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. REJECTIONS The following Examiner’s rejections are before us for review: claims 1, 2, 5, 6, and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable over Rome (US 4,941,716, iss. Jul. 17, 1990) and Bercheux (US 3,631,629, iss. Jan. 4, 1972); claims 3, 4, 7, and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Rome, Bercheux, and Kaiserwerth (US 3,691,688, iss. Sept. 19, 1972); claims 10-12 and 16 are rejected under 35 U.S.C. 103(a) as unpatentable over Birdling (US 4,962,615, iss. Oct. 16, 1990) and Rome; claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Birdling, Rome, and Kaiserwerth; 1 claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over Birdling, Rome, and Bercheux; and claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over Birdling, Rome, and Harary (US 6,429,961 B1, iss. Aug. 6, 2002). 1 The preamble of the rejection for claims 13 and 14 is incorrect. See Ans. 7, Final Off. Act. 6. However, the Examiner later correctly identifies the ground of rejection for claims 13 and 14 as unpatentable over Birdling, Rome, and Kaiserwerth in the body of the rejection. Ans. 8, Final Off. Act. 6. Appeal 2010-005345 Application 11/207,073 3 CLAIMED SUBJECT MATTER Claims 1, 6, and 10 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A window system for installing at least one window which enables easy cleaning and substantially eliminates the need for frames surrounding the pane, said window system comprising: (a) at least one pane of glass having each of a predetermined width, height and thickness for at least partially covering an opening formed in a wall of a structure; (b) at least two hinges disposed along said predetermined height of said at least one pane of glass on a predetermined side thereof, a first one of said at least two hinges being secured to said predetermined side closely adjacent one end thereof and a second one of said at least two hinges being secured to said predetermined side closely adjacent a radially opposed end thereof; (c) at least one magnet secured to one of said at least one pane of glass on an opposite side of said at least two hinges and such opening formed in such structure; and (d) at least one metallic member disposed on an opposite one of said at least one pane of glass and such opening formed in such structure for maintaining said at least one pane of glass in a closed position. OPINION Obviousness over Rome and Bercheux After quoting the Examiner’s rejection of claims 1, 2, 5, 6, and 9, the Appellant argues the claims as a group. Br. 8-13 (citing Final Off. Act. 2-5). We select claim 1 as the representative claim and claims 2, 5, 6, and 9 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Rome discloses the window system as recited in claim 1, except that Rome does not disclose “at least two hinges,” as recited in claim 1, which is disclosed by Bercheux. See Ans. 4-5, Bercheux Appeal 2010-005345 Application 11/207,073 4 fig. 9. The Examiner concludes that “[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to have used multiple conventional hinges secured to the pane of Rome . . . in order to allow the door to swing freely as a conventional window. Using multiple hinges will have the same functionality of one large hinge and will also prevent the whole door from being changed if maintenance to a hinge is necessary.” Ans. 7; see also Rome col. 3, ll. 54-56 and fig. 7, hinge 60. The Appellant contends that Rome’s cabinet does not correspond to the window assembly as called for by claim 1 because “light is not transmitted to the interior of the structure in which the cabinet is mounted as is in the case of a window.” See Br. 13. The Appellant’s contention is not persuasive because as the Examiner explains “Rome discloses a glass pane (50) that is hinged to a cabinet structure” and that “light is transmitted from outside of the cabinet through the glass pane, into the cabinet.” Ans. 13. The Appellant also offers a definition of the term “window” as “an opening esp. in a wall of a building for admission of light and air that is usu. closed by casements or sashes containing transparent material (as glass) and capable of being opened and shut.” Br. 12 (citing Webster’s Dictionary) (emphasis added). For the purposes of this appeal only, assuming arguendo we accept the Appellant’s proposed definition to be within the broadest reasonable interpretation of the term “window” the Examiner explains how Rome’s device reads on the definition. Ans. 13. With the understanding that emphasized portions of the definition are not requirements of the definition of a window, supra, the Examiner explains that Rome includes an opening for admitting light and air into its cabinet, contains a transparent material (glass pane 50), and is capable of being opened and shut. See Id. Appeal 2010-005345 Application 11/207,073 5 Thus, the Examiner’s rejection of claims 1, 2, 5, 6, and 9 as unpatentable over Rome and Bercheux is sustained. Obviousness over Rome, Bercheux, and Kaiserwerth The Appellant quotes the Examiner’s rejection of claims 3, 4, 7, and 8, and argues the claims as a group. Br. 13-16 (citing Final Off. Act. 6-7). We select claim 3 as the representative claim and claims 4, 7, and 8 stand or fall with claim 3. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Rome, as modified by Bercheux, does not, but that Kaiserwerth does disclose “at least one magnet is secured to said at least one pane of glass.” Ans. 8 (citing Kaiserwerth col. 4, ll. 32-35). The Examiner concludes that “[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to have secured the magnets to the glass pane of Rome's window assembly as taught by Kaiserwerth because the reversal of the magnet and the metallic striker plate would result in the same functionality of the door.” Id. In addition to relying on the unpersuasive arguments discussed above, the Appellant contends that since the Examiner used three different prior art references for this ground of rejection it does seem that combining the teaching of the references would have been very obvious. See Br. 15-16. The Examiner’s correctly responds that “reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention.” Ans. 14 (citing In re Gorman, 933 F.2d 982 (Fed. Cir. 1991)). Thus, the Examiner’s rejection of claims 3, 4, 7, and 8 as unpatentable over Rome and Bercheux is sustained. Appeal 2010-005345 Application 11/207,073 6 Obviousness over Birdling and Rome Turning to independent claim 10, the Examiner finds that Birdling’s Figure 8 depicts a window system including a center pane of glass 174 and a pair of panes of glass 172 and 176. Ans. 9, Birdling col. 2, l. 37. The Examiner also finds that hinges 118 and 152, and hinges 124 and 146 correspond to “at least two hinges disposed on each of said pair of panes along said second predetermined height and said third predetermined height on each of said pair of panes on a predetermined side on an outer periphery thereof” (emphasis added), as recited in claim 10. Ans. 10. Birdling’s hinges are mounted on the frame of the center pane of glass 174 and the frame of each pane of the pair of panes of glass 172, 176. For example, hinges 124 and 146 for glass pane 176 “are mounted on the edges of the upper frame member 121 and style frame member 142 to . . . frame members 122 and 148.” Birdling col. 5, ll. 12-15. In view of the Examiner’s findings it is clear that the Examiner construes “outer periphery thereof,” as recited in claim 10, as “an outer periphery of each of the individual panes.” Ans. 14 (emphasis omitted). However, “outer periphery thereof,” refers to the outer periphery of said pair of panes not to each of the individual panes. See Br. 19. As such, the Appellant’s contention that hinges 118 and 152, and hinges 124 and 146, are disposed closely adjacent to the center pane of glass 174 on an inner periphery of said pair of panes, and not the outer periphery of said pair of panes is persuasive. See Id. The Examiner’s additional findings and reasoning under this ground of rejection, particularly concerning the modification of Birdling’s bay window in view of Rome’s magnet and opposing metallic member to Appeal 2010-005345 Application 11/207,073 7 maintain a window in a closed position (Ans. 10), does not remedy the Examiner’s unsubstantiated finding that Birdling discloses the “at least two hinges” as recited in claim 10. Thus, the Examiner’s rejection of claim 10, and claims 11, 12, and 16 which depend therefrom, as unpatentable over Birdling and Rome is not sustained. Obviousness over Birdling and Rome, and either Kaiserwerth, Bercheux, or Harary The remaining rejections based on Birdling and Rome in combination with Kaiserwerth, Bercheux, or Harary rely on the unsubstantiated finding that Birdling discloses the “at least two hinges” as recited in claim 10. As such, we cannot sustain the rejections under 35 U.S.C. § 103(a) of: claims 13 and 14 as unpatentable over Birdling, Rome, and Kaiserwerth; claim 15 as unpatentable over Birdling, Rome, and Bercheux; and, claim 17 as unpatentable over Birdling, Rome, and Harary. DECISION We AFFIRM the rejections of claims 1-9. We REVERSE the rejections of claims 10-17. 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)(1)(iv). AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation