Ex Parte Tickner

Patent Trial and Appeal BoardSep 27, 2012

11339363 (P.T.A.B. Sep. 27, 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. 11/339,363 01/25/2006 Jerold Tickner 13682.105163 6281 20786 7590 09/27/2012 KING & SPALDING 1180 PEACHTREE STREET , NE ATLANTA, GA 30309-3521 EXAMINER GRAMLING, SEAN P ART UNIT PAPER NUMBER 2875 MAIL DATE DELIVERY MODE 09/27/2012 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 JEROLD TICKNER ____________________ Appeal 2010-005371 Application 11/339,363 Technology Center 2800 ____________________ Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals from the Examiner’s rejection of claims 1-12, 32, 35, and 37-39. Claims 13-31, 33, 34, 36, and 40-44 have been canceled. (Br. 5.) We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2010-005371 Application 11/339,363 2 Representative Claim 1. A lighting apparatus, comprising: a door; a chassis coupling member extending along a length of the door, wherein the chassis coupling member comprises an arcuate distal end comprising a first end and a second end, the first end abutting the chassis coupling member and the second end comprising a terminating point; a coupling channel defined by the chassis coupling member; and a stop member extending from the terminating point of the second end of the arcuate distal end in a substantially orthogonal direction. Rejections on Appeal 1. The Examiner rejects claims 1-3, 5-12, 32, 35, and 37-39 under 35 U.S.C. § 102(b) as being anticipated by U.S. Patent No. 3,663,990, issued May 23, 1972 (“Shane”). 2. The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Shane. ISSUE Does the Examiner err in finding that Shane discloses “a chassis coupling member . . . wherein the chassis coupling member comprises an arcuate distal end comprising a first end and a second end, the first end abutting the chassis coupling member and the second end comprising a terminating point” as recited in Appellant’s claim 1 Appeal 2010-005371 Application 11/339,363 3 (and the commensurate limitations of claims 32 and 35) and “a stop member extending from the terminating point of the second end of the arcuate distal end in a substantially orthogonal direction” as recited in Appellant’s claim 1? ANALYSIS We agree with Appellant that portions of Shane identified by the Examiner do not explicitly disclose the disputed features of claim 1 (Br. 12- 16) or claim 32 (Br. 16-18). Specifically, we agree with Appellant that Shane fails to disclose the recited arcuate distal end comprising first and second ends – that is the first end abutting the chassis coupling member and the second end comprising a terminating point (Br. 12-16). Claim 1 also requires “a stop member extending from the terminating point of the second end of the arcuate distal end in a substantially orthogonal direction” (claim 1). Therefore, the “second end” must terminate (define an end point) and also define an orthogonal protrusion – the “stop member.” As pointed out by the Examiner, Shane describes an arcuate distal end (Fig. 3, element 40), one end of which abuts (abutting – i.e., joining/touching/bordering) a chassis coupling member (flared edge (Fig. 6, element 34) comprising the straight back portion (Fig. 3, element 36)) and the other end comprising a terminating point (see Fig. 3; Ans. 3, 9-10). Also, Shane describes a stop member (Fig. 3, element 38) extending from one end of the arcuate distal end (Ans. 3-4, 9-10). We, however, cannot agree with the Examiner’s interpretation of Shane, which follows: Appeal 2010-005371 Application 11/339,363 4 [T]he first end of the arcuate distal end 40 (the first end being designated by Examiner as the free end of arcuate distal end 40 which is farthest from stop member 38, see particularly Figure 4) is “abutting” the chassis coupling member because it abuts a part of the chassis coupling member, specifically the arcuate distal end 40 . . . . (Ans. 9.) Finally, Examiner submits that the second end of the arcuate distal end 40 (the second end being designated by Examiner as the end of arcuate distal end 40 which is adjacent stop member 38) comprises a terminating point (the terminating point is immediately before the point where stop member 38 protrudes, see particularly Figure 3). Therefore Shane clearly discloses a stop member 38 extending from the terminating point of the second end of the arcuate distal end in a substantially orthogonal direction (see Figures 3-5). (Ans. 10.) In particular, we view as unreasonable the Examiner’s interpretation that: (1) “the first end of the arcuate distal end . . . being . . . the free end of arcuate distal end 40 which is farthest from stop member 38 . . . is ‘abutting’ the chassis coupling member because it [is] a part of the chassis coupling member” (Ans. 9 (emphasis added)) and (2) “the second end of the arcuate distal end 40 . . . being . . . the end of arcuate distal end 40 which is adjacent stop member 38 . . . comprises a terminating point [which] is immediately before the point where stop member 38 protrudes” (Ans. 10 (emphasis added)). We find a structural portion abutting or joining another structural portion, as recited in the claim, is demonstrably distinguishable from two structural portions integrated with each other, as the Examiner apparently suggests – that is, the free end of element 40, which the Examiner submits as abutting the chassis coupling member (the straight back portion (Shane, Fig. 3, element 36)), is actually the farthest point from the rest of the chassis Appeal 2010-005371 Application 11/339,363 5 coupling member/straight back portion. We also find that we cannot determine where Shane’s chassis coupling member/straight back portion and arcuate distal end, as interpreted by the Examiner, end or begin – in other words, the area designated by the Examiner as a terminating point does not terminate anything. Consequently, we are constrained by the record before us to conclude that Shane fails to disclose the recited features of Appellant’s claim 1, and the rejection of claim 1 fails to establish a prima facie case of anticipation. Appellant’s independent claims 32 and 35 include limitations of commensurate limitations, and dependent claims 2-12 depend on and stand with claim 1. Accordingly, we reverse the Examiner’s anticipation rejection of claims 1-3, 5-12, 32, 35, and 37-39. Appellant’s claim 4, rejected under 35 U.S.C. § 103, also depends on and stands with claim 1. Accordingly, we also reverse the Examiner’s obviousness rejection of claim 4. CONCLUSION OF LAW Appellant has shown that the Examiner erred in rejecting claims 1-3, 5-12, 32, 35, and 37-39 under 35 U.S.C. § 102(b) and claim 4 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner’s rejections of claims 1-12, 32, 35, and 37- 39. REVERSED peb