Ex Parte Lugo

Patent Trial and Appeal BoardSep 28, 2012

11472968 (P.T.A.B. Sep. 28, 2012)

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. 11/472,968 06/22/2006 Milagros Lugo MML 06090 6708 82357 7590 09/28/2012 James Ray & Associates Intellectual Property, LLC 4268 Northern Pike Rd Monroeville, PA 15146 EXAMINER FULTON, KRISTINA ROSE ART UNIT PAPER NUMBER 3674 MAIL DATE DELIVERY MODE 09/28/2012 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 MILAGROS LUGO ____________________ Appeal 2010-009301 Application 11/472,968 Technology Center 3600 ____________________ Before: KEN B. BARRETT, BENJAMIN D. M. WOOD, and RICHARD E. RICE, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009301 Application 11/472,968 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1, 2 and 4-10. Claim 3 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION The claims are directed to an apparatus for assisting in opening and closing the door latch on a trailer of a tractor trailer combination. Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. An apparatus for assisting in at least one of opening and closing a door latch attached to at least one door of a trailer, said apparatus comprising: (a) an elongated tubular member having each of a first predetermined length and a first predetermined shape; (b) a single elbow portion connected at a first end thereof to a predetermined end of said elenogated tubular type member; (c) an oval shaped substantially hollow portion having a second predetermined length connected at a first end thereof to a second end of said elbow portion for receiving an end of said door latch at a second end thereof; and (d) each of said elongated tubular member and said offset portion and said oval shaped substantially hollow portion are formed from a predetermined material. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ortega US 2007/0096473 A1 May 3, 2007 Appeal 2010-009301 Application 11/472,968 3 REJECTIONS Claims 1, 2 and 4-10 stand rejected under 35 U.S.C §102(e) as being anticipated by Ortega. Ans. 4. ANALYSIS Appellant argues claims 1, 2 and 4-10 as a group. We select claim 1 as representative, with the remaining claims in the group standing or falling with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 1 recites an apparatus comprising, inter alia, a “single elbow portion.” Appellant argues that Ortega’s apparatus has two elbow portions instead of the claimed single elbow portion. App. Br. 8. However, we agree with the Examiner (Final Rej. 3) that regardless of any additional elbows that Ortega’s apparatus may have, it still falls within the scope of claim 1 and its “single elbow” limitation. Appellant’s claims use the open-ended transition word “comprising” between the preamble and the main body of the claim, which signals that the claim is presumptively open-ended and does not exclude additional unrecited elements. Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005). While it is true that the open-ended nature of “comprising” is not unlimited, the Federal Circuit has held that even in the context of infringement litigation – where claim terms are not given their broadest reasonable interpretation – a claim that recites a specific number of elements will be limited to that number only when the addition of an element “eliminates an inherent feature of the claim.” SunTiger, Inc. v. Scientific research Funding Group, 189 F.3d 1327, 1336 (Fed. Cir. 1999). We have found nothing in the record that suggests Appeal 2010-009301 Application 11/472,968 4 that an additional elbow would eliminate an inherent feature of the claimed invention. For the reasons stated above, we sustain the Examiner’s rejection of the appealed claims as anticipated by Ortega. DECISION For the above reasons, the Examiner’s rejection of claims 1, 2 and 4- 10 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED mls