Ex Parte Martin

Patent Trial and Appeal BoardDec 21, 2012

11850571 (P.T.A.B. Dec. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GARRET MARTIN ____________________ Appeal 2010-011106 Application 11/850,571 Technology Center 3600 ____________________ Before: JOHN C. KERINS, BRETT C. MARTIN, and ANNETTE R. REIMERS, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011106 Application 11/850,571 2 STATEMENT OF CASE Garret Martin (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s claims are directed generally to a pocket door for a boat. Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. A sliding door assembly for a boat, the assembly comprising: a transom portion of a boat whereby the transom has an exterior portion having a first sliding door and whereby the transom has a housing, the exterior portion having an opening large enough for a person to walk through; the first sliding door slides into and out from the opening into the housing contained within the transom whereby the first sliding door has at least a detent; and a traveler and a guide provided to be used as a sliding mechanism, each positioned on one of the door and the housing, the traveler and guide cooperating and having tolerances that restrict side to side movement of a distal edge of the door under normal operating conditions to no more than 5 cm and further wherein the guide comprises a track and rollers, and the traveler comprises a foot disposed to travel between opposite rollers. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Dimmitt Gilchrist US 3,136,538 US 3,979,872 Jun. 9, 1964 Sep. 14, 1976 Appeal 2010-011106 Application 11/850,571 3 Obrecht Verbeek US 4,304,071 US 5,675,946 Dec. 8, 1981 Oct. 14, 1997 THE REJECTIONS ON APPEAL Claims 1-6, 8-14, and 16-18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dimmitt and Obrecht. Ans. 4. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Dimmitt, Obrecht, and Gilchrist. Ans. 5. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Dimmitt, Obrecht, and Verbeek. Ans. 5. ANALYSIS Rejection over Dimmitt and Obrecht Each of the Examiner’s rejections is based upon the finding that the term “transom” has a generalized meaning in the door art and that certain phrases in claim 1 do not carry patentable weight. The Examiner states that “the definition of a transom is not limited to ‘just a boat’ and Dimmitt et al. clearly disclose a transom” and submits support for this in the definition of transom as being “a horizontal crosspiece over a door or between a door and a window above it.” Ans. 6 (citing thefreedictionary.com). The Examiner further finds that the terms “‘for a boat’ and ‘of a boat’ are not considered positive recitations requiring boat structures.” Ans. 7. The Examiner’s finding regarding the term “transom” is not incorrect, but it is incomplete. Using the same source1, we note that there is a specific nautical definition of the term “transom,” which is actually quite different from the generalized definition cited by the Examiner: 1 http://www.thefreedictionary.com/transom (last visited Dec. 18, 2012). Appeal 2010-011106 Application 11/850,571 4 a. Any of several transverse beams affixed to the sternpost of a wooden ship and forming part of the stern. b. The aftermost transverse structural member in a steel ship, including the floor, frame, and beam assembly at the sternpost. c. The stern of a square-sterned boat when it is a structural member. Had Appellant simply recited a transom without reference to a boat, the Examiner might have reasonably given the term its broad interpretation in applying the cited art. Such is not the case here, however, because Appellant not only amended the preamble of the claim to refer to a boat, but also specifically clarified that the transom portion being claimed was “of a boat.” Given that there is a specific nautical definition for the term transom and that Appellant’s Specification goes so far as to define transom as “a transverse panel forming the aft end of a boat’s hull,” we do not find it proper to ignore Appellant’s clear intent to claim a door within the context of a boat transom. Spec. 1, l. 17. “All words in a claim must be considered in judging patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); see also MPEP 2143.03. As Appellant argues, “[n]owhere in Dimmitt et al. or Orbrecht et al. are any reference to either a boat or the transom portion of a boat.” App. Br. 6 (emphasis removed). Accordingly, we conclude that the Examiner erred in seemingly ignoring the phrases “of a boat” and “for a boat” in claim 1 and choosing to apply art that, while arguably related to door aspects of Appellant’s claims, does not address the “transom portion of a boat” aspect specifically recited in claim 1. As such we cannot sustain the Examiner’s rejection of claim 1. Because claims 2-6, 8-14, and 16-18 each depend from claim 1, we likewise cannot sustain the rejection of these claims. Appeal 2010-011106 Application 11/850,571 5 Rejections over Dimmitt and Obrecht in Combination with Either of Gilchrist or Verbeek Because neither of Gilchrist or Verbeek supplies the deficiencies of the rejection over Dimmitt and Obrecht relating to the boat aspects of claim 1, we cannot sustain the rejection of either of claims 7 or 15 for the same reasons as stated above with respect to claim 1. DECISION For the above reasons, we REVERSE the Examiner’s decision to reject claims 1-18. REVERSED mls