Ex Parte Ealer

Patent Trial and Appeal Board

Jul 24, 2013

12419404 (P.T.A.B. Jul. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte JAMES EDWARD EALER, SR.
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Appeal 2011-004948
Application 12/419,404
Technology Center 3600
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Before: JENNIFER D. BAHR, HYUN J. JUNG, and ADAM V. FLOYD,
Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
James Edward Ealer, Sr. (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-5, 7, 10-12, 14-19, 22, and
23 under 35 U.S.C. § 103(a) as unpatentable over Ealer ‘381 (US 4,907,381,
iss. Mar. 13, 1990), Ealer ‘240 (US 5,893,240, iss. Apr. 13, 1999), and
Meckstroth (US 6,412,228 B1, iss. Jul. 2, 2002). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 11, reproduced below, is illustrative of the claimed subject
matter.
11. A gutter cover adapted for covering a gutter and preventing
debris from falling into the gutter, the gutter having front, back
and bottom walls and a flange projecting rearwardly from the
front wall and spaced above the bottom wall of the gutter, the
flange extending substantially continuously along the entire
length of the gutter, the gutter cover having:
a generally flat central portion;
a front edge margin integrally formed with the central
portion and bent relative to the central portion to form a
forwardly opening channel generally V-shaped in transverse
section extending substantially continuously along the entire
length of the cover for receiving the gutter flange therein, and
a rear edge margin formed integrally with the central
portion bent at an obtuse angle with respect to the central
portion,
said rear edge margin terminating in a rear edge adapted
for engagement with a gutter hanger, and
wherein said front edge margin has an upper bend and a
lower bend forming said forwardly opening channel, said
lower bend having a radius of at least 1/8 in.

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OPINION
Appellant relies on the same arguments in contesting the rejection of
all of claims 1-5, 7, 10-12, 14-19, 22, and 23. Thus, we select claim 11 as
representative of the group to decide the appeal.
The issue raised in this appeal is whether it would have been obvious
to a person having ordinary skill in the art to modify the gutter screen of
Ealer ‘381 to provide a bent rear margin as taught by Ealer ‘240 and to
provide a radius of at least 1/8 inch on the lower bend forming V-shaped
channel 35, as proposed by the Examiner. Ans. 5, 7; App. Br. 6-8; Reply
Br. 1-3.
In particular, Appellant argues that the Examiner offers no evidence
that modifying the gutter screen of Ealer ‘381 by providing a bent rear
margin would provide greater vertical strength as asserted by the Examiner,
and that in fact the proposed modification would lead to a configuration that
is less resistant to vertical loads. Reply Br. 1. Appellant also argues that the
cover of Ealer ‘381 has a back edge that is strong, not weak, against vertical
loading. Reply Br. 1 (citing Ealer ‘381, col. 3, ll. 36-38, which states, “[t]he
arched configuration of the screen also increases the load-bearing capability
of the screen”).
Appellant’s argument that providing a bent rear margin would lead to
a configuration that is less resistant to vertical loads is premised on the
assumption that this feature would cause the central portion of the gutter
screen to assume a generally flat configuration. Id. However, as evidenced
by figures 1, 4, and 7 of Ealer ‘240, for example, it is possible to maintain an
arched central portion even with a bent rear margin. See also Ealer ‘240,
col. 5, ll. 4-6 (describing the embodiment of figure 1 as having an “arcuate”
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configuration). Further, while Appellant’s claim 11 recites “a generally flat
central portion,” claim 11 does not require the central portion to maintain a
generally flat configuration when received in the gutter.
The Examiner reasoned that it would have been obvious to provide a
rear edge margin bent at an obtuse angle between about 90 and about 120
degrees with respect to the central region as taught by Ealer ‘240 “to form a
strong supporting leg that is able to withstand vertical loads for the screen at
the rear end” and that such modification would enhance the cover of Ealer
‘381 by increasing the strength of the back portion of the cover. Ans. 5, 7.
The Examiner’s reasoning has a rational underpinning, as the bent rear edge
margin will assume a more steeply vertically sloped orientation than the rear
edge margin as depicted in figure 1 of Ealer ‘381.
Appellant also argues that a person of ordinary skill in the art would
not have had a reason to increase the radius of the lower bend of Ealer ‘381
to at least 1/8 inch. Reply Br. 2. This argument is not convincing, as the
Examiner articulated a reason for such a modification. See Ans. 5 (stating,
“having the lower bend with a radius of at least 1/8 inch would have been
obvious to one having ordinary skill in the art as it would provide proper
capturing and overlapping of the flange with the V-shape channel”). The
Examiner added that a person having ordinary skill in the art “would have
found it to be an obvious matter of engineering design choice to choose a
particular value for the radius as long as it provides the needed function of
capturing the gutter flange.” Id. Appellant does not specifically address the
Examiner’s proffered reason for the modification.
Appellant argues that the claimed bend radius of at least 1/8 inch
performs “an unexpected dual function,” namely, providing the bend needed
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to attach the front of the cover to the gutter and decreasing the distance D2
to less than the flex distance required to install the “Step-Down Back” (i.e.,
the bent rear edge margin). Reply Br. 2. Moreover, Appellant cites to his
Declaration1 stating Appellant’s belief that a person of ordinary skill in the
art would have concluded that the V-shaped channel feature (i.e., the “EZ-
Lock” design) and the bent rear edge margin (i.e., the “Step-Down Back”
design) could not be used in the same gutter cover. App. Br. 6-7.
The Ealer Declaration states that Appellant did not combine the EZ-
Lock feature and the Step-Down Back feature at the time of filing the Ealer
‘240 patent because the Step-Down Back feature limited the distance D1 to
which the cover can be flexed in a rearward direction during installation to
less than the distance D2 required to use the EZ-Lock feature. Ealer Decl.,
para. 4. Thus, Appellant declares that at that time he did not think the Step-
Down Back and EZ-Lock were compatible and states his belief that a person
of ordinary skill in the art would have arrived at the same conclusion. Id.
Appellant further declares that he later discovered that these two features
could be combined if a relatively large radius were used, instead of the sharp
bend used in the Ealer ‘381 patent. Id. at para. 5. Specifically, Appellant
states that increasing the bend radius substantially to 1/8 inch reduced the
distance D4 required to use the EZ-Lock feature to less than the distance D5
of rearward flex permitted by the Step-Down Back. Id.
Appellant’s suggestion that the bend radius of at least 1/8 inch is
critical in permitting the V-shaped channel feature and the bent rear edge
margin feature to be combined in the same cover appears somewhat

1 “RULE 132 DECLARATION OF JAMES E. EALER, SR.” (hereinafter
“Ealer Declaration”), dated March 18, 2010. Evidence App’x.
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incongruous with the disclosure in the present Specification of a bend radius
ranging from about 1/16 inch to 5/8 inch. Spec., para. [0061]. Moreover, in
any event, in making determinations of obviousness, the question is not
whether the combination was obvious to the applicant but whether it was
obvious to a person with ordinary skill in the art. KSR Int'l Co. v. Teleflex,
Inc., 550 U.S. 398, 420 (2007). Increasing the lower bend radius clearly
widens the base of the channel, thus ostensibly reducing the depth of the
channel required to accommodate receipt and capture of the gutter flange.
The fact that it might not have initially occurred to Appellant that increasing
the lower bend radius forming the V-shaped channel would facilitate receipt
of the gutter flange, thereby requiring a shorter flex distance, does not mean
that a person of ordinary skill in the art would not have appreciated this
significance of the bend radius. An expert’s opinion on the legal conclusion
of obviousness is neither necessary nor controlling. Avia Group Int’l, Inc. v.
L.A. Gear, Inc., 853 F.2d 1557, 1564 (Fed. Cir. 1988). Furthermore,
obviousness is an objective standard based on a hypothetical person of
ordinary skill in the art. Appellant’s subjective impression of obviousness or
whether he ever considered combining the V-shaped channel feature and the
bent rear edge margin feature is immaterial to the obviousness
determination. See, e.g., Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d
448, 454 (Fed. Cir. 1985.)
Having weighed all of the evidence, including both the evidence
provided by the Examiner and the evidence of nonobviousness provided by
Appellant, we conclude that the Examiner did not err in determining that the
evidence of obviousness outweighs the evidence of nonobviousness of the
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subject matter of claim 11. Thus, we sustain the rejection of claim 11 and of
claims 1-5, 7, 10, 12, 14-19, 22, and 23, which fall with claim 11.
DECISION
The Examiner’s decision rejecting claims 1-5, 7, 10-12, 14-19, 22,
and 23 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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