Ex Parte Ramon

Patent Trial and Appeal Board

Jan 23, 2017

13632464 (P.T.A.B. Jan. 23, 2017)

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.
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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
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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
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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
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