Ex Parte Cursetjee et al

Patent Trial and Appeal Board

Jul 12, 2018

12589475 (P.T.A.B. Jul. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/589,475 10/22/2009
86245 7590 07/16/2018
Schwegman Lundberg & Woessner/NORTEK
P.O. Box 2938
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Zareer Cursetjee
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.
5985.003US 1 4390
EXAMINER
PROBST, SAMANTHA A
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
07/16/2018 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):
USPTO@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZAREER CURSETJEE, KEVIN SCHREIBER, and
DAVID L. BAUGH
Appeal2017-001827
Application 12/589,475
Technology Center 3700
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 1-11 and 15-
25, which are all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b ).
For the reasons explained below, we do not find error in the
rejections. Accordingly, we AFFIRM.
1 The real party in interest is identified as Nortek Air Solutions, LLC.
Appeal Br. 2.
Appeal2017-001827
Application 12/589,475
Claimed Subject Matter
Claims 1 and 15 are the independent claims on appeal, and are
reproduced below.
1. A modular unit configured for use in a ceiling, the modular
unit comprising:
a plenum having walls defining a perimeter of material;
a rail connected to and supporting each of the walls of the
plenum;
a grid of supports attached to the plenum, the supports
defining a suspended ceiling; and
a truss separate from the grid of supports and attached to
the rail, the truss configured to support ceiling-mounted
equipment and transmit the load of the ceiling-mounted
equipment to the rail.
15. A modular unit configured for use in a ceiling, the modular
unit comprising:
a plenum having a perimeter of material formed into a
rectangular box;
a grid of supports attached to the perimeter of the plenum,
the supports defining a suspended ceiling suspended from the
perimeter of the plenum; and
an apparatus mount attached to at least one of the supports,
wherein an apparatus is configured to be hung from the apparatus
mount.
Rejections
I. Claims 1-11, 15, 16, and 20-25 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Panelli (US 6,132,309, issued Oct.
17, 2000) and Beaver (US 7,125,332 B2, issued Oct. 24, 2006). Final Act.
2-6.
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II. Claims 17-19 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Panelli, Beaver, and Grantham (US 7,944,692 B2,
issued May 17, 2011). Final Act. 6-7.
Claims 1-11 and 21-25
DISCUSSION
Rejection I
Appellants argue claims 1-11 and 21-25 as a group. Appeal Br. 9-
14. We select claim 1 as representative. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants argue the Examiner fails to show Panelli and Beaver teach
"a rail connected to and supporting each of the walls of the plenum" and "a
truss separate from the grid of supports and attached to the rail," as recited in
claim 1. Appeal Br. 10.
Regarding the claimed rail, Appellants argue the Examiner improperly
interprets part of the frame of plenum 1 in Panelli to be the rail of claim 1.
Appeal Br. 12-13. Appellants contend that what the Examiner points to as
the rails are the side walls of Panelli' s plenum, "and thus those portions are
not a rail that supports the walls of the plenum." Reply Br. 2 (discussing
Ans. 10-11).2 Appellants contend the frame "may support other
components of the plenum 1 in Panelli, such as demising panels 4 and cover
plates 49; but those portions are still the walls of the plenum, not a rail that
supports the walls of the plenum." Id.
We agree with the Examiner that Panelli' s frame is a "rail connected
to and supporting each of the walls of the plenum," as recited in claim 1.
2 Citations to the Examiner's Answer ("Ans.") are to the Answer dated
October 7, 2016.
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Application 12/589,475
Final Act. 2; Ans. 10-11. The Examiner finds "[a] panel 4 ... is in all the
side wall openings and is supported by the rails of 1." Ans. 11 (annotated
Figure). We understand Appellants are not challenging this finding, but
rather arguing that the frame must also be considered the "walls," and thus
cannot be the claimed "rail." Panelli's demising panels 4 are reasonably
considered the walls of Panelli' s plenum 1. 3 It is evident from Figure 3 of
Panelli that the sides of the plenum are primarily enclosed by demising
panels 4, rather than the narrow frame that supports these panels. Although
Panelli' s frame may cover some surface area of the sides, the frame is more
readily understood to be a structural support frame supporting the walls,
rather than the walls themselves, given the difference in surface area
coverage.
Regarding the claimed truss, Appellants argue the Final Action fails to
show that Beaver has a grid of supports and, therefore, has not shown that
Beaver teaches a truss separate from a grid of supports. Appeal Br. 12.
Appellants also contend the Final Action is unclear because it "makes
repeated references to the duct and plenum 10 of Beaver without delineating
specific elements of Beaver that are equivalent to a truss separate from a grid
of supports." Id. (footnote omitted). In addition, Appellants assert "it is not
clear how the truss in modified Panelli would attach to the side walls of the
plenum that the Examiner is interpreting as the rails." Reply Br. 2.
The Examiner finds Panelli teaches a grid of supports and a rail, but
does not teach "a truss separate from the grid of supports and attached to the
3 We understand the term "walls" in claim 1 to refer specifically to the four
vertically-oriented side walls shown in Figure 1 of the Specification, rather
than all six sides of the plenum. See Spec. ,r 17 (referring to wall 15, four of
which form the perimeter 14 of the plenum).
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Application 12/589,475
rail," as recited in claim 1. Final Act. 2, 4. The Examiner finds Beaver
teaches trusses 54 and 56, which are shown in Figures 7 and 8 of Beaver and
support damper 10. Final Act. 4. The Examiner's rejection involves
modifying Beaver by replacing its duct and plenum 10 with the duct and
plenum 1 of Panelli. Id. at 4--5 ( discussing "combination where the duct and
plenum 1 of Panelli would be at the duct and plenum 10 of Beaver" and "the
truss would be attached to the rails" ( capitalization altered)). The Examiner
finds one of skill in the art would have combined the teachings of Panelli
and Beaver in this way "in order to provide adequate support for heavier
equipment and additional barrier in case of a fire." Id. at 6. The Examiner
finds that combining the teachings of Panelli and Beaver in this way results
in Beaver's truss being separate from the grid of supports in Panelli
(Panelli's ceiling grid 39). Id. at 4.
In light of the Examiner's rejection and the evidence supporting it,
Appellants' arguments regarding the claimed truss do not inform us of error
in the rejection. The Examiner indicates expressly in the Answer that "only
Panelli is used in the rejection to teach the grid of supports." Ans. 11
( capitalization altered). Thus, Appellants' argument that the Final Action
fails to show that Beaver teaches a grid of supports does not inform us of
error in the rejection. Appeal Br. 12.
We also disagree with Appellants that it is unclear which teachings of
Beaver and Panelli are relied on as the claimed truss separate from a grid of
supports. Appellants do not persuasively challenge the Examiner's findings,
discussed above, that Beaver teaches trusses 54 and 56 are connected to a
plenum, and Panelli teaches that its plenum has a grid of supports. We agree
with the Examiner that replacing Beaver's plenum 10 with the plenum of
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Application 12/589,475
Panelli would result in the rails of Panelli' s plenum being attached to the
truss. Final Act. 4--5. The specific details of how the truss is attached to the
rails are not within the scope of claim 1, and Appellants do not explain why
such a modification would not have been within the level of ordinary skill in
the art.
Appellants argue in the Reply Brief that the Answer "is the first time
the Examiner has stated that only Panelli is used in the rejection to teach the
grid of supports." Reply Br. 2. Although the Examiner did not include such
a statement in the Final Action, the content of the statement is evident from
the rejection. In the Final Action, the Examiner finds Panelli teaches a grid
of supports and makes no such finding with regard to Beaver, but does
explain that, in combination, Beaver's truss is separate from Panelli's grid of
supports. Final Act. 2, 4. Thus, the Examiner's Answer does not alter the
rejection. Nonetheless, we consider Appellants' arguments made in the
Reply Brief that the Examiner relies on impermissible hindsight in
combining the teachings of Panelli and Beaver.
"Appellants assert there is no teaching or suggestion from Beaver to
modify the design of Panelli to have a truss separate from a grid of
supports." Reply Br. 4. The reason for modifying a reference need not be
taught explicitly within that or another reference. Ball Aerosol & Specialty
Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)
("[T]he analysis that 'should be made explicit' refers not to the teachings in
the prior art of a motivation to combine, but to the court's analysis."
(quoting KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)).
Appellants' argument, which does not address the reasoning set forth by the
Examiner, does not inform us of error in the rejection on that basis.
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Application 12/589,475
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of representative
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Panelli and Beaver.
Thus, we sustain the rejection of claim 1, and, for the same reasons, the
rejection of claims 2-11 and 21-25, which are not argued separately.
Claims 15, 16, and 20
Appellants argue claims 15, 16, and 20 as a group. Appeal Br. 14--17.
We select claim 15 as representative. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants argue "[t]he Examiner is relying on Beaver as disclosing
the element (i.e. apparatus configured to be hung from the apparatus mount)
held to be missing form [sic] Panelli." Appeal Br. 15. Appellants contend
"Beaver does not disclose an apparatus configured to be hung from an
apparatus mount that is attached to at least one of the supports in a grid of
supports, as recited in claim 15." Id. In particular, Appellants argue
"dampers 10 and 72 in Beaver are mounted to trusses, not to a grid of
supports," and that, as argued for claim 1, "Beaver does not disclose a grid
of supports attached to a perimeter of a plenum." Id. at 16-17.
"The test for obviousness is not ... that the claimed invention must be
expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA
1981 ). "[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references." Id. at 426. Despite acknowledging the Examiner's reliance on
the combined teachings of Panelli and Beaver in rejecting claim 15, see
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Appeal Br. 14--15, Appellants' arguments attack Beaver individually, and do
not inform us of error in the rejection.
The Examiner relies on Panelli's ceiling grid 39 as teaching a grid of
supports. Final Act. 3; see Panelli Fig. 3, col. 7, 11. 13-19. Appellants
acknowledge that "the Examiner interprets blank panels 8 in Panelli as the
apparatus mount of claim 15 and the material handling system 63 in Panelli
as the apparatus of claim 15." Appeal Br. 14; see Final Act. 3, 5.
Appellants do not persuasively challenge these findings. Panelli does not,
however, show how an apparatus such as Panelli's material handling system
63 would be mounted to ceiling grid 39. See Panelli Fig. 2. Thus, the
Examiner finds Panelli does not teach an apparatus is configured to be hung
from the apparatus mount. Final Act. 4. The Examiner finds "[a]n
apparatus (such as 63 of [Panelli] in combination with the duct and plenum 1
of [Panelli] in place of the duct and plenum of 10 in [Beaver]) is configured
to be hung from the apparatus mount (mount of 10, the way 84, 86, and 88
are)" in Beaver. Id. at 5.
Similar to the rejection as expressed by the Examiner, "Appellants[']
understanding is that the Examiner is concluding that material handling
system 63 of Panelli can be hung from an apparatus mount in Panelli the
way that elements 84, 86 and 88 are hung from damper 10 in Beaver."
Appeal Br. 15. Because Panelli' s mount is attached to the grid of supports,
combining the teachings of Panelli and Beaver in this way results in "an
apparatus mount attached to at least one of the supports, wherein an
apparatus is configured to be hung from the apparatus mount," as recited in
claim 15. Beaver need not teach a grid of supports for the combination of
teachings to suggest the claimed limitations.
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Appellants also argue "Beaver expressly teaches mounting the damper
without hanging," and on this basis assert that Beaver does not teach an
apparatus that can be hung from an apparatus mount. Appeal Br. 1 7 ( citing
Beaver col. 2, 11. 3---6). We note, however, that the Examiner refers to, for
example, the manner that Beaver's grille 86 is mounted to damper 10, not to
the manner in which the damper is attached to the plenum. See Final Act. 5
("An apparatus (such as 63 of [Panelli] in combination with the duct and
plenum 1 of [Panelli] in place of the duct and plenum of 10 in [Beaver]) is
configured to be hung from the apparatus mount (mount of 10, the way 84,
86, and 88 are).").
Regarding grille 86, Appellants state:
Given the teaching in Beaver of mounting the damper without
hanging, and the disclosure of the grille 86 mounted to the
damper 72, Appellants respectfully assert that it is not reasonable
to interpret the grille 86 as an apparatus configured to be hung
from an apparatus mount.
Appeal Br. 17. Appellants' position appears to be that Beaver's grille 86
cannot be considered to be "hung" from the damper because Beaver states
that it is mounted to it. In light of claim 15 's use of the broad term
"apparatus mount," and the lack of persuasive explanation from Appellants
as to why Beaver's grille 86 is not hung from the damper when it is mounted
to it, we are not informed of error in the rejection of claim 15 on this basis.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of representative
claim 15 under 35 U.S.C. § 103(a) as unpatentable over Panelli and Beaver.
Thus, we sustain the rejection of claim 15, and, for the same reasons, the
rejection of claims 16 and 20, which are not argued separately.
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Re} ection II
For the rejection of claims 17-19, which depend from claim 15,
Appellants argue Grantham does not cure the deficiencies argued in support
of claim 15. Appeal Br. 18. Thus, for the same reasons discussed above for
claim 15, we sustain the rejection of claims 17-19 under 35 U.S.C. § 103(a)
as unpatentable over Panelli, Beaver, and Grantham.
DECISION
We affirm the Examiner's rejections of claims 1-11 and 15-25.
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)(l )(iv).
AFFIRMED
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