Ex Parte Murrer

Patent Trial and Appeal BoardSep 23, 2012

11709440 (P.T.A.B. Sep. 23, 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. 11/709,440 02/21/2007 Andrew Murrer 545.123 3786 85444 7590 09/24/2012 Bay Area Technolgy Law Group PC 4089 Emery Street Emeryville, CA 94608 EXAMINER COLLINS, TIMOTHY D ART UNIT PAPER NUMBER 3644 MAIL DATE DELIVERY MODE 09/24/2012 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 ANDREW MURRER ____________________ Appeal 2010-005540 Application 11/709,440 Technology Center 3600 ____________________ Before: JOHN C. KERINS, WILLIAM V. SAINDON, and NEIL T. POWELL, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005540 Application 11/709,440 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A kit of' parts for the construction of pet furniture comprising a lower cap sized to define the base of said pet furniture, a plurality of side clips for removable insertion within said lower cap, said side clips substantially defining the height of said pet furniture when said pet furniture is constructed from said kit of parts, a plurality of structural side walls for removable engagement with said lower cap and said side clips, at least one of said structural side walls having an opening sized to enable a pet to enter and exit said pet furniture once assembled, an upper cap for removably engaging said side clips and structural side walls, lower support discs sized to be supported by and removable from said lower cap and upper support discs sized to be supported and removable from said upper cap. The Examiner relies upon the following prior art references: Hinton Schwartz US 5,148,768 US 6,808,074 B1 Sep. 22, 1992 Oct. 26, 2004 Ho US 2006/0243215 A1 Nov. 2, 2006 Omega Paw1 1 Omega Paw is the manufacturer of the Cozy Kingdom cat house depicted and described in the “Omega Paw” reference. The Examiner cites to the web archive: http://web.archive.org/web/20060217044632/http://omegapaw.com/CozyKi ngdom.html (Feb. 17, 2006) (last visited Dec. 1, 2008) Appeal 2010-005540 Application 11/709,440 3 The Examiner makes the following rejections under 35 U.S.C. § 103(a): I. Claims 1-4, 9, 13-16, and 21 as unpatentable over Omega Paw and Schwartz. II. Claims 5-8 and 17-20 as unpatentable over Omega Paw, Schwartz, and Ho. III. Claims 10-12 as unpatentable over Omega Paw, Schwartz, and Hinton. IV. Claims 22 and 23 as unpatentable over Omega Paw, Schwartz, Ho, and Hinton. SUMMARY OF DECISION We REVERSE. OPINION The Examiner’s rejections are predicated on a finding that the Omega Paw structure shows the claimed structure but “does not explicitly describe the assembly and removability of each component or the two support discs … [at the] top and bottom cap.” Ans. 3-4. The Examiner finds that Schwartz “features removable engagement between parts.” Ans. 4. The Examiner also makes findings that “any interactions between parts after assembly is irrelevant,” that the Cozy Kingdom has parts that are “removably engaged,” and further that “any assembly can be considered to be removably assembled with enough force or with the right tools.” Ans. 9. Appellant argues that Omega Paw does not disclose removability of the lower cap and that Schwartz discloses using adhesives and staplers to Appeal 2010-005540 Application 11/709,440 4 make the walls of the show case. App. Br. 7. Appellant adds that “no one wishing to modify Omega Paw would turn to Schwartz for any purpose.” Id. We review the Examiner’s rejection anew in light of Appellant’s arguments. Upon review, the Examiner’s rejection fails to adequately address the limitations of the independent claims requiring the removability of certain components. The Examiner’s reliance on Schwartz to teach removability is unsound because, as Appellant points out, Schwartz seeks to attach the various components of the show case using adhesives or nails. See, e.g., Schwartz, col. 4, l. 67 to col. 5, l. 5. Adhesives and nails are typically not considered to be removable fasteners, and the Examiner does not persuasively reason to the contrary. The Examiner’s statement that the “interactions between [the] parts after assembly is irrelevant” does not give appropriate weight to the limitations in the claims requiring the removable engagement of certain parts. Contrary to the Examiner’s position that “any assembly can be considered to be removably assembled,” a “removable assembly” is something different from an “assembly.” In other words, “removable” must be given appropriate weight. Simply stating that all connections between components are removable does not give appropriate weight to the limitation. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous). Lastly, the Examiner’s finding that the Cozy Kingdom has parts that are removably engaged does not have support in the Cozy Kingdom reference or in technical reasoning supplied by the Examiner. We do not sustain Rejection I in light of the above. Rejections II - IV contain the same deficiency and likewise are not sustained. Appeal 2010-005540 Application 11/709,440 5 DECISION We reverse the Examiner’s decision regarding claims 1-23. REVERSED hh