Ex Parte Egan

Board of Patent Appeals and Interferences

Feb 23, 2009

09633937 (B.P.A.I. Feb. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PATRICK EGAN
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Appeal 2008-3807
Application 09/633,937
Technology Center 3600
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Decided:1 February 23, 2009
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Before LINDA E. HORNER, JOHN C. KERINS and,
MICHAEL W. O'NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal No. 2008-3807
Appl. No. 09/633,937

STATEMENT OF THE CASE
Patrick Egan (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 24-56. Appellant cancelled claims
1-23. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
The Appellant’s claimed invention is a prefabricated wall panel.
Spec. 1:1-3. Claim 24, reproduced below, is representative of the subject
matter on appeal.
24. A pre-fabricated wall panel usable with a
door or window jamb with trim yet without jamb
furring, comprising:

a first, exterior facing sheet of generally
rigid material and having a first thickness and a
first sheet perimeter;

a second, interior facing sheet of generally
rigid material and having a second thickness and a
second sheet perimeter, said second sheet being
generally parallel to said first sheet and spaced
therefrom a strut thickness;

at least two framing struts being located
between said first sheet and said second sheet and
having said strut thickness to define a panel
volume between said first sheet, said second sheet,
and said framing struts;

a polymeric in-situ foam core located in and
substantially filling said panel volume;

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Appl. No. 09/633,937

said framing struts acting as at least part of a
dam to help contain said in-situ foam within said
panel volume;

an overall panel thickness including the sum
of said first thickness, said second thickness and
said strut thickness, said overall panel thickness
being between approximately 3 ¾ inches and 4 ¼
inches;

a jamb member adjacent at least one of said
struts, said jamb having a jamb thickness;

a sheet of drywall having a drywall
thickness and adjacent said interior facing sheet,
said drywall having an interior surface;

a trim piece; and,

wherein said jamb thickness is substantially
equal to the sum of said overall panel thickness
and said drywall thickness, such that said jamb is
substantially flush therewith for said trim piece to
be mounted flush across the jamb and drywall
without the use of furring.

THE REJECTIONS
The Examiner relies upon the following evidence:
Balla-Goddard US 5,743,056 Apr. 28, 1998
Porter US 5,771,645 Jun. 30, 1998

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The Appellant seeks our review of the following rejections:
1. The Examiner rejected claims 24-53 under 35 U.S.C. § 103(a) as
unpatentable over Balla-Goddard.
2. The Examiner rejected claims 54-56 under 35 U.S.C. § 103(a) as
unpatentable over Balla-Goddard and Porter.
ISSUES
The Examiner found it would have been an obvious design choice
based on desired use to modify the thickness of the panel of Balla-Goddard
to meet the range of thickness required by the claim. Ans. 4. Appellant
contends there was no reason to modify Balla-Goddard to result in a panel
having the claimed thickness range. App. Br. 8.
The issue before us is:
Has Appellant shown that the Examiner erred in determining that a
person of ordinary skill in the art would have been led to modify the panel of
Balla-Goddard to result in the claimed panel thickness range based on
obvious design choice?
PRINCIPLES OF LAW
A claimed modification to the prior art may be obvious if the claimed
structure performs the same function as in the prior art and it presents no
novel or unexpected result over the prior art. See In re Kuhle, 526 F.2d 553,
555 (CCPA 1975) (use of claimed feature solves no stated problem and
presents no unexpected result and “would be an obvious matter of design
choice within the skill of the art”). However, when the claimed structure
performs differently from the prior art, a finding of obvious design choice is
precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious
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design choice precluded when claimed structure and the function it performs
are different from the prior art).
ANALYSIS
Rejection of claims 24-53 under 35 U.S.C. § 103(a) as unpatentable over
Balla-Goddard
Independent claims 24, 44, and 53 recite a prefabricated building
component or wall panel comprising two sheets of rigid material sandwiched
in parallel around a polymeric in-situ foam core and framing struts. This
much is known in the prior art. Spec 1:10-13.
The Examiner found that Balla-Goddard discloses all the elements of
the claimed wall panel except for the overall panel thickness being between
3 ¾ to 4 ¼ inches, and determined that “[i]t would have been obvious to one
of ordinary skill in the art at the time the invention was made to choose the
desirable thickness of the panel…to accommodate the opening thickness is
considered as an obvious design choice based on desired use.” Ans. 4
(emphasis added). The Examiner further explained that “the claim would
have been obvious because a person of ordinary skill has a good reason to
pursue the known options within his or her technical grasp.” Ans. 6.
At first glance, Appellant’s claimed panel seems to have been an
obvious design choice as simply a minor modification to a conventional wall
panel thickness; however, on closer review, it is clear that Appellant’s
claimed panel functions differently from the prior art panel and that one
having ordinary skill in the art, based on the teachings of Balla-Goddard,
would not have been led to modify the overall panel thickness in the manner
claimed based simply on design choice.
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According to Appellant, prior art panels were built with struts of
standard 2 inch by 4 inch nominal lumber (with actual dimensions of 1 ½
inches by 3 ½ inches), giving the panel an overall thickness of
approximately 4 ½ inches, while the claimed panel has an overall thickness
of 3 ¾ to 4 ¼ inches (preferably 4 1/16 inches). Spec 1:10-16. When the
claimed panel is combined with a ½ inch thick piece of drywall, the overall
thickness of the panel becomes 4 9/16 inches. Spec. 6:18-22. Because many
standard window and door jambs are also 4 9/16 inches thick, this permits
these windows and doors to be mounted flush with the wall panel so that
trim is conveniently and cost effectively mounted across the jamb without
the need for furring strips. Spec 6:9 – 7:14; Figures 6, 7; App. Br. 6-7.
Appellant does not contest that Balla-Goddard discloses the panel of
claim 24, except to assert that Balla-Goddard does not disclose the overall
panel thickness being 3 ¾ to 4 ¼ inches. App. Br. 5-9. Balla-Goddard
discloses a panel with an overall thickness of 86 mm or approximately 3.386
inches. Balla-Goddard, col. 8, ll. 25-28; App. Br. 7. Balla-Goddard, like the
other prior art panel mentioned above, does not have an overall panel
thickness within the range of 3 ¾ to 4 ¼ inches. Also like the other prior art
mentioned above, Balla-Goddard’s panel does not function like the claimed
panel because Balla-Goddard’s overall panel thickness does not permit trim
to be conveniently and cost effectively mounted across the window and door
jambs without the need for furring strips.
Because Appellant’s claimed structure performs differently from the
prior art, a finding of obvious design choice is precluded. The Examiner’s
proffered reasons to modify the panel of Balla-Goddard are insufficient.
“[O]bvious design choice based on desired use” (Ans. 4) does not specify an
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intended use, and is precluded as a reason to modify because the claimed
structure performs differently from the prior art. Similarly, the pursuit of
“known options within his or her technical grasp” (Ans. 6) does not in any
way point to the particular thickness chosen by Appellant. We acknowledge
that “[w]hen there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S.
Ct. 1727, 1742 (2007). The Examiner’s rejection, however, fails to establish
a design need or market pressure known in the industry at the time of the
invention, and the rejection is not based on a combination of old elements, in
which it may have been obvious to try a particular combination from among
a finite number of identified, predictable solutions, as was the case before
the Court in KSR. As such, neither of the Examiner’s explanations provides
an adequate reason to modify the panel of Balla-Goddard in the manner
claimed.
Appellant contends the “conclusory assertion of ‘design choice’ is not
a reason why a person of ordinary skill in the art would have been motivated
to modify Balla-Goddard to include the claimed overall panel thickness.”
App. Br. 8. Based on a preponderance of the evidence before us, we agree
with Appellant. Given this, we cannot sustain the Examiner’s rejection of
independent claims 24, 44, and 53, or their dependent claims 25-43 and 45-
52.
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Rejection of claims 54-56 under 35 U.S.C. § 103(a) as unpatentable over
Balla-Goddard and Porter
Claims 54-56 each contain the requirement that the panel be between
3 ¾ and 4 ¼ inches, and each claim adds the limitation that the panel include
an electrical box. The Examiner found that it would have been obvious to a
person of ordinary skill in the art to combine Balla-Goddard with the
electrical box of Porter. Ans. 5. The rejection provides no further reason to
modify the panel of Balla-Goddard to meet the thickness required by the
claim. Here, as with the analysis of claim 24, supra, we cannot sustain the
Examiner’s rejection because the Examiner has not provided an adequate
reason to modify the panel of Balla-Goddard.
CONCLUSION
Appellant has shown the Examiner erred in determining that a person
of ordinary skill in the art would have had a reason to modify the panel of
Balla-Goddard to meet the thickness limitation of the claims.
DECISION
We reverse the Examiner’s decision to reject claims 24-56.
REVERSED

vsh

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