Ex Parte RamonDownload PDFPatent Trial and Appeal BoardJan 23, 201713632464 (P.T.A.B. Jan. 23, 2017) 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. 13/632,464 10/01/2012 Xavier Ramon 7020-179 5075 84649 7590 01/25/2017 Symbus Law Group, LLC Cliff Hyra 11710 Plaza America Drive Suite 2000 Reston, VA 20190 EXAMINER WILEY, DANIEL J ART UNIT PAPER NUMBER 3679 NOTIFICATION DATE DELIVERY MODE 01/25/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing @ sy mbu s. com chyra @ symbus .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XAVIER RAMON Appeal 2015-000536 Application 13/632,4641 Technology Center 3600 Before JILL D. HILL, THOMAS F. SMEGAL, and JEFFREY A. STEPHENS, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Xavier Ramon (Appellant) seeks our review under 35U.S.C. § 134 of the Examiner’s final rejection under 35 U.S.C. § 103(a) of claims 1—5, 7, and 9 as unpatentable over Bright (US 3,921,960, iss. Nov. 25, 1975) and Korchak (US 2,844,910, iss. July 29, 1958); of claim 6 as unpatentable over Bright, Korchak, and Atkinson (US 2009/0266574 Al, pub. Oct. 29, 2009); of claim 8 as unpatentable over Bright, Korchak, and Smith (US 2005/0121658 Al, June 9, 2005); and of claim 10 as unpatentable over 1 According to Appellant, the real party in interest is BO PLAN BVBA. Appeal Br. 3. Appeal 2015-000536 Application 13/632,464 Bright, Korchak, and Venegas (US 5,312,089, iss. May 17, 1994). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, is reproduced below and illustrates the claimed subject matter, with disputed limitations emphasized. 1. A fence, comprising: at least two hollow fence posts, between which at least two crossbeams extend; wherein each crossbeam fits into an opening provided in one of the fence posts; a plate-shaped blocking element extending into a cavity of one of the fence posts which is provided to block the crossbeams against displacement; wherein the crossbeams are provided in their external circumference with at least one recess which lies within the hollow inner area of the fence post; wherein the plate-shaped blocking element is movable between a first position in which the crossbeams are movable into and out of the fence posts and a second position in which the crossbeams are blocked in place; wherein the aforementioned blocking element comprises at least two openings positioned at a distance from one another, which are each provided to block a crossbeam against displacement; wherein the aforementioned blocking element is provided between the aforementioned blocking element openings with one or more break lines, along which the blocking element is breakable into different separate blocking elements. 2 Appeal 2015-000536 Application 13/632,464 ANALYSIS Obviousness of Claims 1—5, 7, and 9 over Bright and Korchak We are persuaded by Appellant’s arguments that the Examiner fails to establish obviousness of claims 1—5, 7, and 9 over Bright and Korchak. See Appeal Br. 10-16; see also Reply Br. 1—5. The Examiner contends that the disclosure of Bright and Korchak are combinable to render claim 1 obvious. See Final Act. 4—7; Ans. 2—7. While not disputing the teachings of Bright, Appellant argues, inter alia, that “Korchak is non-analogous art and cannot render the present invention obvious because it is neither in the field of [Appellant’s] endeavor, nor reasonably pertinent to the particular problem with which the [Appellant] was concerned.” Appeal Br. 11. Appellant points out that “Korchak relates to a frozen confection handle (i.e. popsicle stick) that can be used to fabricate toy structures” that are “not in the field of [Appellant’s] endeavor (fencing),” and concludes that “[n]o inventor would ever think to look to Korchak for solutions to fencing problems” because “Korchak deals with popsicle sticks.” Id. (citing Korchak, col. 1,11. 15—18). Our reviewing court has provided two criteria useful in finding whether art is non-analogous: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). See also K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (citing 3 Appeal 2015-000536 Application 13/632,464 Innovention Toys, LLC v. MCA Entm % Inc., 637 F.3d 1314, 1321 (Fed.Cir.2011)). The Examiner considers Korchak to be reasonably pertinent to the problem faced by Appellant. See Ans. 2—5. However, Appellant correctly points out that “a reference not in the same field of endeavor as the claimed invention is analogous art only if it ‘is reasonably pertinent to the problem faced by the inventor. . . . and that “[wjhether Korchak is pertinent to the problems faced by Bright is irrelevant.” Reply Br. 1—2. We agree with Appellant that the problem faced by the inventor was “preserving the functionality of a fence after initial impact,” and that the Examiner does not challenge this statement of the problem or contend that Korchak is reasonably pertinent to this problem. See Id. at 3; see Specification, p. 3,11. 11-19. Based on the evidence before us, the Examiner has not demonstrated that Korchak is analogous art, and therefore has failed to establish that the claimed subject matter would have been obvious to one having ordinary skill in the art. Accordingly, we do not sustain the Examiner’s rejection of claims 1—5, 7, and 9 under 35 U.S.C. § 103(a) as unpatentable over Bright and Korchak. Obviousness of Claim 6 over Bright, Korchak, and Atkinson: of Claim 8 over Bright, Korchak, and Smith; and of Claim 10 over Bright, Korchak, and Venegas Regarding the referenced claims, each of the Examiner’s rejections is based on the same unsupported findings discussed above with respect to the disclosure of Korchak. See generally Final Act. 9-13; Ans. 8—9. The 4 Appeal 2015-000536 Application 13/632,464 addition of Atkinson, Smith or Venegas does not remedy the deficiencies of Korchak, as discussed supra. Accordingly, for similar reasons as discussed above for claim 1, we do not sustain the Examiner’s decision rejecting claim 6 over Bright, Korchak, and Atkinson, claim 8 over Bright, Korchak, and Smith, and claim 10 over Bright, Korchak, and Venegas. DECISION The Examiner’s prior art rejections are reversed. REVERSED 5 Copy with citationCopy as parenthetical citation