Ex Parte Bullinger

Patent Trial and Appeal Board

Sep 10, 2014

10697788 (P.T.A.B. Sep. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL J. BULLINGER
____________________

Appeal 2012-006589
Application 10/697,788
Technology Center 3600
____________________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael J. Bullinger (“Appellant”) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 8–25, 28, and 29. Appeal Br. 4.
Claims 1–7, 26, and 27 have been cancelled. Id. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2012-006589
Application 10/697,788

2
CLAIMED SUBJECT MATTER
The Appellant’s invention is directed to a gutter and cover system.
Spec. 1. Independent claims 8 and 10 are illustrative and are reproduced
below with emphasis on the relevant claim limitations.
8. A seamless gutter and cover system comprising:
a gutter formed from a first coil of material having a front
face, a bottom and a rear portion extending upward to a top
segment;
a cover formed from a second coil of material, wherein
the cover extends over the gutter and has a debris separation
portion extending above the front face of the gutter, and a lip
portion extending upward and wrapping over the top segment
of the gutter,
wherein the lip portion and the top segment of the gutter
are continuously pressed and fixed together along their entire
length to form an integral gutter and cover assembly.

10. A seamless gutter and cover system comprising:
a gutter formed from a first coil of material having a front
face, a bottom and a rear portion extending upward to a top
segment;
a cover formed from a second coil of material, wherein
the cover extends over the gutter and has a debris separation
portion extending above the front face of the gutter, and a lip
portion extending upward and wrapping over the top segment
of the gutter;
wherein the top segment of the gutter and the flange
portion of the cover are continuously crimped together along
their entire length to interlock the top segment of the gutter with
the flange portion of the cover.

Appeal 2012-006589
Application 10/697,788

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THE REJECTIONS
The Examiner has rejected (see Answer 4–9):
(i) claims 8, 11, and 13–21 under 35 U.S.C. § 102(b) as being
anticipated by Knudson (US 5,845,435, issued Dec. 8, 1998);
(ii) claim 10 under 35 U.S.C. § 103(a) as being unpatentable over
Knudson in view of Middleby (US 4,263,756, issued Apr. 28, 1981);
(iii) claim 12 under 35 U.S.C. § 103(a) as being unpatentable over
Knudson in view of Wade (US 5,729,931, issued Mar. 24, 1998) and further
in view of Richard (US 6,732,477 B1, issued May 11, 2004); and
(iv) claims 9, 22–25, 28, and 29 under 35 U.S.C. § 103(a) as being
unpatentable over Knudson in view of Beam (US 4,604,837, issued Aug. 12,
1986).
ANALYSIS
Claims 8, 11, and 13–21 as Anticipated by Knudson
The Appellant presents separate arguments for independent claim 8
and dependent claims 17–21. Appeal Br. 8–11. We select claims 8 and 17
for review with claims 11 and 13–16 standing or falling with claim 8 and
claims 18–21 standing or falling with claim 17. See 37 C.F.R. §
41.37(c)(1)(iv).
Claim 8
The Examiner found that Knudson discloses a seamless gutter and
cover system comprising a gutter 96 and a cover (shield) 99.1 Answer 4 and
5. The Examiner further found that gutter 96 and cover 99 are “continuously
pressed, and fixed together along their entire length to form an integral
gutter and cover assembly” through lip portion (hook) 99a and top segment

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Appeal 2012-006589
Application 10/697,788

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determining the ordinary and customary meaning as viewed by a person of
ordinary skill in the art. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343,
1348 (Fed. Cir. 2010).
“Press” is defined as “to move by applying pressure” and “integral” is
defined as “formed of constituent parts; united.” The Free Dictionary,
http://www.thefreedictionary.com/press (last visited Aug. 19, 2014).
From these definitions, we find that an ordinary and customary meaning of a
cover and a gutter “pressed together” to form an “integral gutter and cover
assembly” merely means that some pressure is applied to unite the gutter
together with the cover. We also find that, broadly defined, these definitions
do not mean that the cover cannot be removed from the gutter once they are
“pressed together” to form an “integral gutter and cover assembly,” as
proposed by the Appellant. See Appeal Br. 9 and 10.
Such an interpretation is also consistent with the Appellant’s
Specification, which references “pressed together,” as follows:
The lip portion 114 is configured to slide over the upper end of
the rear wall 117. These are pressed together and aligned by a
guide roller 1030 and a pair of opposed guide rolls 1032. A
press roll 1034 presses the lip portion 114 downward onto the
upper end of the rear wall 117. An opposed punch roll and die
roll 1036 and 1038 crimp and interlock the cover portion to the
gutter portion to create an interlocked gutter and cover system
110.
Spec. 8, line 27– Spec. 9, line 3; see also Spec., Fig. 10 (emphasis added).

As described in the Specification, the step of the lip portion and top
segment of the gutter being “pressed together” occurs before the gutter and
cover are crimped and interlocked with one another via punch and die roll
1036 and 1038. See id. Because the “press[ing] together” of the lip portion
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and top segment of the gutter is described as a separate operation preceding
the interlocking of the gutter and cover attained by the crimping together of
the two components, we find that the Specification supports the
interpretation that the claims do not exclude a cover that can be removed
from a gutter after the gutter and cover are “pressed together.” In this
regard, we note that claim 8 does not recite that the gutter and cover are
“crimped” or otherwise “interlocked” with one another. See Appeal Br.,
Claims App.
Accordingly, we agree with the Examiner that Knudson’s “lip
portion” 99a and “top segment” 98a of gutter 96 “are continuously pressed
and fixed together along their entire length to form an integral gutter and
cover assembly,” as recited in claim 8. See Answer 4 and 5 and Appeal Br.,
Claims App.
We also note that the Appellant argues that Knudson teaches away
from the subject matter of claims rejected as being anticipated. Appeal Br.
9. Since teaching away is irrelevant to anticipation, the argument is not
probative of any error with respect to the rejection of claim 8 as being
anticipated by Knudson. See Seachange Intern., Inc. v. C-COR, Inc. 413
F.3d 1361, 1380 (Fed. Cir. 2005).
For these reasons, we are not apprised of error in the rejection of
claim 8. Therefore, we sustain the rejection of claim 8, as well as of claims
11 and 13–16, which fall with claim 8, under 35 U.S.C. § 102(b) as being
anticipated by Knudson.
Claim 17
The Appellant also states that Knudson fails to teach or suggest “the
integral gutter and cover system as discussed above with regard to claim 8,
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and further comprising the support member of such an integral system.”
Appeal Br. 11. In support of this position, the Appellant asserts that “[t]he
present invention as recited in claims 17-21 provides for an integrally
connected gutter and cover assembly with support members that are slid into
position.” Id. The argument is not commensurate in scope with the subject
matter of claims 17-21, in that none of these claims calls for or requires
support members that are slid into position.
To the extent that the Appellant is simply arguing that Knudson fails
to disclose any internal support member, the Patent Rules require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements are not
found in the prior art. 37 C.F.R. § 41.37(c)(1)(iv); see also In re Lovin 652
F.3d 1349, 1357 (Fed. Cir. 2011). We find that the Appellant’s conclusory
statement does not point out, with any specificity, missing findings or
inadequate reasoning in the Examiner’s proposed rejection. In any event, we
agree with the Examiner that Knudson’s fastening support device 131 can be
properly construed as the “internal support member,” as recited in claim 17.
See Answer 5 and 6.
For these reasons, we are not apprised of error in the rejection of
claim 17. Therefore, we sustain the rejection of claim 17, as well as of
claims 18–21, which fall with claim 17, under 35 U.S.C. § 102(b) as being
anticipated by Knudson.
Claim 10 as Unpatentable over Knudson in view of Middleby
The Examiner found that “Knudson does not show the [gutter and
cover being] continuously crimped together to interlock the [gutter and
cover,]” but determined that “[i]t would have been obvious to one having
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ordinary skill in the art at the time of the invention to modify Knudson’s
structure” to crimp the two attached structures, as taught by Middleby, to
“enable the secured fastening of the structures together.” See Answer 7.
The Appellant contends, inter alia, that Knudson teaches away from
an integral gutter and cover assembly because Knudson teaches a cover that
is removable from the gutter assembly.2 Appeal Br. 9 and 10.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference . . . would be led in a direction divergent
from the path that was taken by the applicant.” In re Haruna, 249 F.3d
1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc.,
192 F.3d 1353, 1360 (Fed. Cir. 1999)). Furthermore, if the proposed
modification would render the prior art invention being modified
unsatisfactory for its intended purpose, then there is no suggestion or
motivation to make the proposed modification. In re Gordon, 733 F.2d 900,
902 (Fed. Cir. 1984).
We find that modifying Knudson’s removable shield 99 so that it is
crimped and interlocked with gutter 96 would render shield 99
unsatisfactory for its intended purpose, which is to be removable and
“readily attached to and detached from the gutter.” Knudson col. 1, ll. 49–
52.
Therefore, we do not sustain the rejection of claim 10 under 35 U.S.C.
§ 103(a) as unpatentable over Knudson in view of Middleby.

2 Although the “teaching away” argument was presented by the Appellant in
the prior anticipation rejection portion of the Appeal Brief, we consider them
here, as this argument is relevant to the obviousness analysis.
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Claim 12 as Unpatentable over Knudson in view of Wade and Richard
The Appellant does not make any substantive arguments directed
specifically to limitations present in claim 12, but rather relies on the
arguments presented supra with respect to the anticipation rejection of
independent claim 8, from which claim 12 depends. Appeal Br. 13.
Accordingly, for the same reasons as expressed above, we likewise sustain
the rejection of claim 12.
Claim 9 as Unpatentable over Knudson in view of Beam
The Appellant does not make any substantive arguments directed
specifically to limitations present in claim 9, but rather relies on the
arguments presented supra with respect to the anticipation rejection of
independent claim 8, from which claim 9 depends. Id. at 13 and 14.
Accordingly, for the same reasons as expressed above, we likewise sustain
the rejection of claim 9.
Claims 22, 24, 28, and 29 as Unpatentable over Knudson in view of Beam
The Appellant does not make any substantive arguments directed
specifically to limitations present in claims 22, 24, 28, or 29, but rather relies
on the arguments presented supra with respect to Knudson’s failure to
disclose “the lip portion and top segment pressed together along their length
to form an integral gutter and cover assembly.” Id. at 15. Accordingly, for
the same reasons as expressed above, we likewise sustain the rejection of
claims 22, 24, 28, and 29.
Claims 23 and 25 as Unpatentable over Knudson in view of Beam
The Appellant does not make any substantive arguments directed
specifically to limitations present in claims 23 or 25, but rather relies on the
arguments presented supra with respect to the unpatentable rejection of
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independent claim 22, from which claims 23 and 25 depend. Id. at 15.
Accordingly, for the same reasons as expressed above, we likewise sustain
the rejection of claims 23 and 25.
SUMMARY
The Examiner’s decision to reject claims 8, 11, and 13–21 under 35
U.S.C. § 102(b) as anticipated by Knudson is affirmed.
The Examiner’s decision to reject claim 10 under 35 U.S.C. § 103(a)
as unpatentable over Knudson in view of Middleby is reversed.
The Examiner’s decision to reject claim 12 under 35 U.S.C. § 103(a)
as unpatentable over Knudson in view of Wade and Richard is affirmed.
The Examiner’s decision to reject claims 9, 22–25, 28, and 29 under
35 U.S.C. § 103(a) as unpatentable over Knudson in view of Beam is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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