Ex Parte Staser et al

Patent Trial and Appeal BoardApr 19, 2016

12783332 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121783,332 05/19/2010 Brian H. Staser 23413 7590 04/21/2016 CANTOR COLBURN LLP 20 Church Street 22nd Floor Hartford, CT 06103 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 ATTORNEY DOCKET NO. CONFIRMATION NO. ICS-027 6470 EXAMINER REDMAN, JERRY E ART UNIT PAPER NUMBER 3634 NOTIFICATION DATE DELIVERY MODE 04/21/2016 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN H. STASER and CHRISTOPHER L. FAILLE Appeal2014-000693 Application 12/783,332 Technology Center 3600 Before: CHARLES N. GREENHUT, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON i\.PPEi\L STATEMENT OF CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. The claims are directed to a carrier supported pull-cup. Claim 1, reproduced below, is illustrative of the claimed subject matter: Claiml. A door bracket for mounting guide rails of a window lift assembly, the bracket comprising: a lateral support portion, the lateral support portion defining an opening for receipt of a pull cup therein; Appeal2014-000693 Application 12/783,332 a pair of structural arm members extending away from the lateral support portion, wherein the pair of structural arm members are integrally molded with the lateral support portion; and a bottom mount extending between the pair of structural arm members. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Staser Nakajima US 7 ,246,465 B2 US 8,065,837 B2 REJECTION July 24, 2007 Nov. 29, 2011 In the Final Rejection, the Examiner relied on Staser, Nakajima, and Figure 1 of Appellants' disclosure, which the Examiner determined depicted admitted prior art. Final Act. 3-5. In the Examiner's Answer, the Examiner indicated the Examiner no longer was relying on any aspect of Appellants' disclosure as a basis to reject the claims. Ans. 4. The Examiner did not make any alternate findings or provide any reasoning to substitute for the aspects of the rejection in the Final Office Action for which the Examiner relied on Appellants' disclosure. Whether we consider as before us the rejection as set for in the Final Office Action or the rejection as set forth in the Answer does not change the outcome of this appeal. OPINION The independent claims before us, claims 1 and 19, respectively recite a "lateral support portion" or "lateral support wall portions," "defining an opening for receipt of a pull cup therein." The Examiner, for the first time in 2 Appeal2014-000693 Application 12/783,332 the Answer, identifies the specific structure in Nakajima that the Examiner regards as satisfying this limitation-the openings in supporting projections 5A---C and boss portion 9. Ans. 7 (annotating Nakajima Figure 6). First, because the Specification (p. 1) draws an express distinction between "pull grips," like those ofNakajima, and "pull cups" as recited in claims 1 and 19; and second, because there is no indication that any of the openings pointed to by the Examiner could function to "for receipt a pull cup therein" (emphasis added); none of the openings in supporting projections 5A---C or in boss portion 9 are reasonably regarded as "an opening for receipt of a pull cup therein." As the Examiner's rejection is predicated on an unreasonable claim construction, we do not sustain it. Normally objections regarding drawings and matters of form are outside our jurisdiction. However, where Examiner's objections "relate, at least indirectly, to matters involving the rejection of claims" (In re Hengehold, 440 F.2d 1395, 1404 (CCPA 1971)), are "determinative of the rejection," or "require[] the exercise of technical skill and legal judgment in order to evaluate the facts presented, interpret the requirements of [United States Code Title 35 and United States Code of Federal Regulations Title 3 7] and weigh the facts against those requirements ... [, an Examiner's decision may be] an 'adverse decision' as to be properly reviewable by the Board of Appeals under 35 U.S.C. Â§ [6] 1." In re Searles, 422 F.2d 431, 434-- 435 (CCPA 1970). As best as we can understand, regarding the Examiner's objection for "referring to two elements with a single numeral" (Final Act. 2), the 1 Formerly Â§ 7 3 Appeal2014-000693 Application 12/783,332 Examiner is objecting to the use of alternative nomenclature to describe a particular element, e.g., "bottom mount or support portion 14" and "lateral mount or lateral support portion 16." As the term "bottom mount" is used in the claims, the understanding of this phrase and the corresponding structure in the Specification relates to the rejections before us for review. We are unaware of any legal or regulatory requirement prohibiting describing a particular element using alternative nomenclature and therefore reverse this objection. As Appellants sought review of a rejection relying on an alleged admission of prior art, the Examiner's requirement to label Figure 1 as prior art also relates to a rejection. MPEP Â§ 2129 (citations omitted) states: A statement by an applicant in the specification or made during prosecution identifying the work of another as "prior art" is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. However, even if labeled as "prior art," the work of the same inventive entity may not be considered prior art against the claims unless it falls under one of the statutory categories. The language in the Specification, "FIG. 1 illustrates a bracket 10 for a bottom mounted pull cup while FIGS. 2-5 illustrate a bracket 12 in accordance with an exemplary 25 embodiment of the present invention" may suggest that Appellants do not consider the subject matter depicted in Figure 1 to be exemplary of the claimed invention. However, without more, this does not necessarily mean that Appellants acknowledge that the subject matter illustrated in Figure 1 constitutes "prior art" in accordance with the standards discussed above. Accordingly, we also reverse this objection. 4 Appeal2014-000693 Application 12/783,332 DECISION The Examiner's rejection and objections are reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). REVERSED 5