Mark Murphy

Patent Trials and Appeals BoardOct 18, 2021

2021000118 (P.T.A.B. Oct. 18, 2021)

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. 15/492,381 04/20/2017 Mark J. Murphy MMY-109 6299 27014 7590 10/18/2021 John R. Benefiel 25129 Dequindre Road Suite 8 Madison Heights, MI 48071 EXAMINER NORDMEYER, PATRICIA L ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 10/18/2021 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): jbenefiel@sbcglobal.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK J. MURPHY Appeal 2021-000118 Application 15/492,381 Technology Center 1700 Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and DEBRA L. DENNETT, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 15 and 16.2 Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 This Decision includes citations to the following documents: Specification filed April 20, 2017 (“Spec.”); Final Office Action entered October 9, 2019 (“Final Act.”); Appeal Brief filed April 3, 2020 (“Appeal Br.”); and Examiner’s Answer entered April 21, 2020 (“Ans.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appeal 2021-000118 Application 15/492,381 2 CLAIMED SUBJECT MATTER Appellant states the invention relates to a covering for boats or other large items, which is reusable. Spec. 1. Claim 15, reproduced below, is illustrative of the claimed subject matter (Appeal Br., Claims Appendix 7, paragraphing added for clarity): 15. A reusable cover for a watercraft having a hull with spaced apart sides and opposite ends, an upper structure located between said hull sides and projecting substantially above said hull, and elongated supports extending down from either side of a top of said upper structure to each end of said hull, said cover being formed by a series of overlapping strips of a flexible ultraviolet resistant sheet plastic, said series of overlapping strips extending along the length of said watercraft which are assembled together, each strip extending from one side of said hull to the other side and over any portions of said upper structure or said supports which are intervening, said overlapped strips each having an adhesive area covered by a peelable nonadhesive material, with each strip successively positioned over said watercraft overlapping a previously positioned strip, but with at least one initially positioned strip not overlapping a previously positioned strip, said initially positioned strip being held in a position extending over said watercraft hull, by an adhesive attachment, each successive overlapped strip bonded by said adhesive area to a next adjacent strip after a successive strip is positioned on said watercraft overlapping a previously installed strip by removing said non-adhesive covering while holding said strip in said overlapping position relative a previously installed strip and pressing said strip against said adhesive areas to bond each of said strips together, Appeal 2021-000118 Application 15/492,381 3 said watercraft cover comprised of said series of bonded together strips supported on said watercraft by resting on said upper portion and said supports; said cover so formed also having an attachment arrangement releasably attaching said cover to said hull, said cover able to be freely lifted from said watercraft after release of said attachment arrangement and folded up for storage; said cover thereafter able to be reused by unfolding said cover and placing said unfolded cover back on said watercraft so as to again be fitted to said hull, said supports, and said upper structure of said watercraft. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Bettoli US 3,300,927 Jan. 31, 1967 Zirkelbach et al. (“Zirkelbach”) US 8,875,646 B2 Nov. 4, 2014 Spellman US 8,950,416 B1 Feb. 10, 2015 Serlachius US 2014/0076472 A1 Mar. 20, 2014 Snyder et al. (“Snyder”) US 2016/0002914 A1 Jan. 7, 2016 REJECTIONS3 1. Claims 15 and 16 are rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 2–4. 3 Although in stating the rejections, the Examiner lists both pre-AIA and AIA versions of the statute, the Examiner makes clear in the Final Action that the instant application is being examined under the first to file Appeal 2021-000118 Application 15/492,381 4 2. Claim 15 is rejected under 35 U.S.C. § 103 as being unpatentable over Snyder, Bettoli, and Spellman. Final Act. 5– 7. 3. Claim 16 is rejected under 35 U.S.C. § 103 as being unpatentable over Snyder, Bettoli, Spellman, Zirkelbach, and Serlachius. Final Act. 7–8. OPINION Rejection 1 The Examiner’s Rejection In rejecting claim 15, the Examiner determined the claim is vague and indefinite, because the preamble is directed to a reusable cover having an intended use with a watercraft, but the body of the claim “contains multiple limitations directed towards the method of using the cover in combination with the watercraft while containing minimal limitations with regard to the physical structure of the cover.” Final Act. 3–4. The Examiner relied on a similar position for claim 16. Id. at 4. Appellant’s Arguments Appellant argues claim 15 is directed to a cover, and that claim 15 contains recitations that are essentially product-by-process limitations, which are not indefinite. Appeal Br. 2–4. provisions of the AIA. Final Act. 2. Thus, we reproduce only the AIA versions of the statutes in listing the rejections on appeal. Appeal 2021-000118 Application 15/492,381 5 Discussion During examination, “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014 (per curiam) (citing MPEP § 2173.05(e) (9th ed. Rev. 10.2019, rev. June 2020)). In this case, we are of the view that claims 15 and 16 are sufficiently clear. That is, claim 15 expressly recites “[a] reusable cover,” where the cover is “comprised of [a] series of bonded together strips” of “a flexible ultraviolet resistant sheet plastic.” Appeal Br. 7. The strips forming the cover are “overlapped strips” that are bonded to each other by “adhesive areas.” Id. The cover includes “an attachment arrangement” for releasable attachment and is capable of being “folded up for storage.” Id. Although as the Examiner points out, there are a number of recitations regarding a watercraft in claim 15, this does not change the fact that the claim recites a cover. In this regard, we understand that claim 15 recites a process of forming the cover as a watercraft cover, and that this informs the arrangement of overlapped strips. However, we are of the view that the number of limitations relating to the process and use of the cover with a watercraft relative to the number of limitations relating to the structure of the cover itself, does not, without more, raise an issue of indefiniteness for claim 15, absent any lack of clarity to the structure of the cover itself. In this regard, to the extent claim 15 defines the size of the cover, it does so relative to the size of the structure with which the cover is intended to be used in a general manner. Thus, although the scope of claim 15 may be broad, claim 15 is not indefinite as a result of the process used to form the cover. In re Miller, 441 F.2d 689, 693 (CCPA 1971) (“[B]readth is not to be equated Appeal 2021-000118 Application 15/492,381 6 with indefiniteness”); In re Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth is not indefiniteness.”) Because the Examiner sets forth a similar rationale for claim 16, which also depends from claim 15, our reasoning applies equally to the Examiner’s rejection of claim 16. Accordingly, we reverse the Examiner’s rejection of claims 15 and 16 as being indefinite. Rejection 2 The Examiner’s Rejection In rejecting claim 15, the Examiner found Snyder discloses a protective cover formed from overlapping strips of flexible plastic including adhesive areas that can be applied to a variety of surfaces. Final Act. 5–6, citing Snyder, Figs. 1–5, ¶¶ 18, 34. Regarding the language in claim 15 relating to a watercraft and watercraft structure, the Examiner found such language was intended use language, which did not result in a structural difference between the claims and the prior art. Id. The Examiner found Snyder fails to disclose an ultraviolet resistant plastic sheeting, the cover is able to be freely lifted after release of the attachment arrangement and folded up for storage, and the cover is able to be reused. Final Act. 6. The Examiner found Bettoli discloses a protective cover with a plurality of strips made of ultraviolet resistant plastic sheeting covering material for protecting a variety of surfaces. Id. at 7. The Examiner found Spellman discloses a cover that may folded and stored, unfolded and reinstalled, for the purpose of having a lightweight cover that Appeal 2021-000118 Application 15/492,381 7 is removable and securely protects an object from severe weather conditions. Id. The Examiner determined it would have been obvious to have used an ultraviolet resistant plastic sheeting covering material and to have provided removability to the cover in Snyder in order to cover and protect a variety of surfaces as taught by Bettoli and to have a lightweight cover that removably and securely protects an object from severe weather conditions as taught by Spellman. Final Act. 7. Appellant’s Arguments Appellant argues Snyder and Bettoli disclose coverings that are intended to be permanently attached to a building, and are not readily releasable. Appeal Br. 5. In particular, Appellant argues Snyder discloses adhesive tapes and staples are used to mechanically fasten the membrane disclosed therein to a building. Id. Appellant contends Bettoli discloses strips that are attached to a deck using roofing asphalt. Id. As a result, Appellant contends no one skilled in the art would consider attaching a removable watercraft cover using a permanent bond to mount a temporary watercraft cover to a watercraft. Id. Appellant argues Spellman uses a single sheet attached to a frame of a watercraft and not a plurality of overlapping strips engaged with features of a watercraft as set forth in claim 15. Id. Appellant contends that Spellman’s cover has no direct contact with the watercraft itself, but rather the cover is only in contact with the frame, which is much less convenient to use and would increase the cost of the cover. Id. at 5–6. As a result, Appellant contends Spellman teaches away from the cover set forth in claim 15. Id. at 6. Appeal 2021-000118 Application 15/492,381 8 Discussion We are not persuaded by Appellant’s arguments. At the outset, we emphasize that as discussed above, claim 15 recites a cover formed from overlapping strips of a flexible ultraviolet resistant sheet plastic bonded together, the cover further including an attachment arrangement. Snyder discloses a flexible sheet of spunbonded polypropylene fabric4 (12) with integrated adhesive tape (adhesive strips 22) that are used to join overlapping seams of sheets of the polypropylene fabric material. Snyder ¶¶ 34, 38; Figs. 1–5. Snyder discloses the use of steel staples as “temporary fasteners during installation.” Id. ¶ 38. Thus, Snyder itself discloses a cover that is similar to the cover recited in claim 15. Although Appellant contends that Snyder discloses coverings that are intended to be permanently attached to a building, as discussed above, Snyder discloses the use of staples as temporary fasteners, which do not prohibit the covering from being removed. Again, we emphasize that claim 15 is directed to a cover, and as such, Appellant’s arguments with respect to the intent of Snyder’s cover in comparison with the intent of the cover recited in claim 15 are not persuasive. 4 Snyder discloses the polypropylene sheet material may be WallShield® or WrapShieldTM. Snyder ¶ 37. Although the Examiner found Snyder does not disclose a UV resistant plastic sheeting, WallShield® and WrapShieldTM both appear to be UV resistant for 6 months (180 days). Id. ¶ 36; https://vaproshield.com/products/wall-wrb-ab/wrapshield; https://vaproshield.com/products/flashing/vaprobond/coverage/22- products/wallshield. Appeal 2021-000118 Application 15/492,381 9 In this regard, whether, as Appellant argues, Bettoli discloses its strips are permanently bonded to a deck using roofing asphalt is not relevant to the Examiner’s rejection as the Examiner relied on Bettoli for the ultraviolet plastic sheeting covering material used in overlapping covering strips to protect an object from weather conditions, and not for the means of attachment to the object. Final Act. 7. In addition, Appellant contends Spellman discloses a single sheet cover for a watercraft. Appeal Br. 5; Spellman, col. 3, ll. 56–65. The cover disclosed in Spellman appears to differ from the claimed cover in that Spellman’s cover is one piece rather than a series of strips assembled together via an adhesive. As the Examiner explained in the Answer, both Snyder and Bettoli disclose that it was known to use overlapping strips of flexible ultraviolet resistant sheet plastic attached together with adhesive areas in order to protect a surface. Ans. 16; Snyder ¶¶ 18, 34, 38; Figs. 1–5; Bettoli, col. 1, ll. 8–12, col. 6, ll. 4–15, Fig. 3. Thus, Appellant’s argument for distinguishing Spellman on this basis is not persuasive, as such bonded strips are well-known alternatives to single piece covers in protecting a variety of surfaces as evidenced by Snyder and Bettoli. Although Appellant additionally contends Spellman teaches away from the cover of claim 15 due to the presence of the adjustable frame in Spellman (Appeal Br. 5–6), Appellant does not specifically discuss how the presence of a frame structurally distinguishes claim 15, which is directed to a cover. Accordingly, we affirm the Examiner’s rejection of claim 15. Appeal 2021-000118 Application 15/492,381 10 Rejection 3 Claim 16 is the subject of Rejection 3. As indicated in the Appeal Brief, Appellant relies on the dependency of claim 16, as a basis for patentability. Appeal Br. 6. Accordingly, we affirm Rejection 3 for similar reasons as discussed above for Rejection 2. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 15, 16 112(b) Indefiniteness 15, 16 15 103 Snyder, Bettoli, Spellman 15 16 103 Snyder, Bettoli, Spellman, Zirkelbach, Serlachius 16 Overall Outcome 15, 16 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED