Ex Parte Hedman

Board of Patent Appeals and Interferences

May 14, 2012

11122579 (B.P.A.I. May. 14, 2012)

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.
11/122,579 05/04/2005 David E. Hedman ETHERM-47252 6450
26252 7590 05/14/2012
KELLY LOWRY & KELLEY, LLP
6320 CANOGA AVENUE
SUITE 1650
WOODLAND HILLS, CA 91367
EXAMINER
GRAVINI, STEPHEN MICHAEL
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
05/14/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID E. HEDMAN
____________

Appeal 2009-015184
Application 11/122,579
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015184
Application 11/122,579

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STATEMENT OF THE CASE
David E. Hedman (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 32-36, 38, 39, 56-58, and 60-74.
Claims 1-31, 37, 40-55, and 59 have been cancelled. We have jurisdiction
over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a method for removing moisture from
building materials of a partially constructed building by heating ambient air
within the partially constructed building and removing the heated air from
the building. Spec., para. [0029].
Claim 32 is illustrative of the claimed invention and reads as follows:
32. A method for removing moisture from building materials of a
partially constructed building, comprising the steps of:
providing a partially constructed building at least partially
framed with wooden members having a moisture content greater than
that of kiln-dried wood framing members, and having an unfinished
interior;
positioning at least one wireless probe within the partially
constructed building;
heating ambient air within the partially constructed building to
cause moisture from the building materials to migrate into the heated
ambient air; and
venting the heated air from the building.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Smith US 5,155,924 Oct. 20, 1992
Jansen US 5,960,556 Oct. 5, 1999
Hedman US 6,327,812 B1 Dec. 11, 2001
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Application 11/122,579

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The following rejections are before us for review:
The Examiner rejected claims 32 and 56 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner rejected claims 32 and 56 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
The Examiner rejected claims 32-36, 38, 39, 63-65, 67, 69, 71, and 73
under 35 U.S.C. § 103(a) as unpatentable over Smith and Hedman.
The Examiner rejected claims 56-58, 60-62, 66, 68, 70, 72, and 74
under 35 U.S.C. § 103(a) as unpatentable over Jansen and Hedman.

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Examiner’s Restriction of Claim 75
Appellant seeks our review of the Examiner’s final decision requiring
restriction of claim 75 as being directed to an invention that is independent
or distinct from the invention originally claimed. App. Br. 10-11. The
Examiner’s final decision requiring restriction of claim 75 is a petitionable
matter. See Ans. 3, Manual of Patent Examining Procedure (MPEP)
§§ 1002.02(c)(2) and 1201. As such, the objection is not within the
jurisdiction of the Board. In re Mindick, 371 F.2d 892, 894 (CCPA 1967).

The written description rejection
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Application 11/122,579

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The Examiner found that the “newly claimed feature of ‘partially
framed wooden members having a moisture content greater than that of kiln-
dried wood framing members and having an unfinished interior’ is construed
as new matter because it is not found in the originally filed application.”
Ans. 5.
Although we agree with the Examiner that the recited limitation in
dispute does not appear in the Specification, this does not end our inquiry.
While there is no in haec verba requirement, newly added claim limitations
must be supported in the specification through express, implicit, or inherent
disclosure. The factual inquiry we apply is whether the Specification
conveys with reasonable clarity to those skilled in the art that, as of the filing
date sought, applicant was in possession of the invention as now claimed.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
At the outset, we appreciate that Appellant’s disclosure does not
specifically recite the moisture content of kiln-dried wood. However,
independent claims 32 and 56 merely require that the wooden members of a
partially constructed building have “a moisture content greater than that of
kiln-dried wood framing members.” App. Br., Claims Appendix. Emphasis
added.
In this case, Appellant’s disclosure describes heating framing “green”
lumber of a partially constructed building to reduce its moisture content
from a range exceeding 25%-30% to less than 15% so as to replace the more
expensive kiln-dried wood framing members (wood that has been previously
dried in a kiln for 24-48 hours at temperatures of 170◦-240 ◦F). Spec., paras.
[0077]-[0080]. See also, Reply Br. 2-5. Hence, in order to replace the more
expensive kiln-dried wood framing members, which have already been
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Application 11/122,579

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heated to reduce their moisture content, and since Appellant’s framing
“green” lumber is also heated to reduce its moisture content, we find that
Appellant’s framing “green” lumber must have “a moisture content greater
than that of kiln-dried wood framing members.” Otherwise, if Appellant’s
framing “green” lumber has a moisture content equal to or less than that of
kiln-dried wood framing members, Appellant’s described method for
removing moisture would have no purpose.
Thus, we agree with Appellant that the disclosure in the application as
originally filed reasonably supports the limitation of a partially constructed
building “at least partially framed with wooden members having a moisture
content greater than that of kiln-dried wood framing members, and having
an unfinished interior.”
Therefore, we shall not sustain the rejection of claims 32 and 56 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.

The indefiniteness rejection
The Examiner found that the “newly claimed ‘partially framed
wooden members having a moisture content greater than that of kiln-dried
wood framing members and having an unfinished interior’ is not recited with
enough specificity to describe the degree of ‘moisture content greater than
that of kiln-dried wood framing.” Ans. 5.
The Examiner appears to require that the claims specify exactly the
moisture content of kiln-dried wood framing. However, by not specifying
the moisture content of kiln-dried wood framing, the claims are merely
broad, not indefinite. See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA
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Application 11/122,579

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1977) (breadth is not indefiniteness). The test for definiteness under 35
U.S.C. § 112, second paragraph, is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted).
In this case, Appellant’s Specification describes “green” framing
lumber as framing lumber that has a moisture content exceeding 25%-30%.
Spec., para. [0079]. See also, Reply Br. 4. Appellant’s Specification further
describes kiln-dried wood as wood that has been previously dried in a kiln
for 24-48 hours at temperatures of 170◦-240 ◦F. Spec., para. [0015]. See
also, Reply Br. 3. Hence, since Appellant’s Specification describes the
moisture content of the starting material, i.e., “green” framing lumber, and
the kiln-heating process parameters, i.e., heating time and temperature, we
find that a person of ordinary skill in the art would readily be able to
ascertain what is the moisture content of kiln-dried wood framing members.
As such, “a moisture content greater than that of kiln-dried wood framing
members” is clear and no further detail is necessary to know the metes and
bounds of the claims. Thus, we conclude that the claim language, when read
in light of the Specification, is not indefinite.
Accordingly, the indefiniteness rejection of claims 32 and 56 under 35
U.S.C. § 112, second paragraph, likewise cannot be sustained.

The obviousness rejections
Each of independent claims 32 and 56 requires a step of “providing a
partially constructed building … having an unfinished interior.” App. Br.,
Claims Appendix.
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Application 11/122,579

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Pointing to column 1, lines 6-23 and column 2, lines 10-18 of Smith
and column 2, lines 28-57 of Jansen, the Examiner found that each of Smith
and Jansen discloses the above noted limitation. Ans. 6 and 8. According to
the Examiner, because Smith discloses cutting a hole in a floor or wall, “the
presence of the hole renders the building partially constructed because the
interior is not finished until the hole is closed.” Ans. 13. Similarly, with
respect to Jansen, the Examiner takes the position that “[w]hen a hole exists
in a wall,” as in Jansen, “the building is not fully constructed and has an
unfinished interior, as claimed.” Ans. 14.
In response, Appellant argues that Smith’s drying method is “directed
to use in a fully constructed building having a finished interior.” App. Br.
15-16. According to Appellant, although Smith discloses cutting a hole in
the floor or wall, nonetheless, “the Smith system and process is directed to
remediation of water damage of a fully constructed building which has
drywall, paint, finished flooring and the like.” Reply Br. 9. Regarding
Jansen, Appellant notes that because the method of Jansen requires drilling
holes in the exterior stucco surface or the interior wall, “the Jansen
methodology is directed to a process used in association with a completely
constructed and finished building.” Reply Br. 10. See also, App. Br. 21-22.
Claims are construed with an eye toward giving effect to all terms in
the claim. Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
The term “building” is typically understood to mean “a usu. roofed and
walled structure built for permanent1 use (as for a dwelling).” MERRIAM

1 An ordinary and customary meaning of the term “permanent” is
“continuing or enduring without fundamental or marked change.” MERRIAM
WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997).
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Application 11/122,579

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WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). Appellant’s
Specification describes a “partially2 constructed building” as having wooden
framing structures installed, “but before drywall, paint, carpeting and the
like are installed.” Spec., para. [0075]. Hence, consistent with Appellant’s
Specification, we find that an ordinary and customary meaning of the phrase
“partially constructed building” is that of a building constructed to some
extent (in some degree), that is, a structure that cannot be used continuously
without a fundamental or marked change.
The Examiner’s interpretation of the phrase “partially constructed
building” as covering a completed (finished) building with mere holes that
need to be repaired, in effect renders meaningless, or superfluous, the phrase
“partially constructed.” Although we appreciate that the building of Smith
includes a hole in the floor or wall, and the building of Jansen includes holes
in the interior wall or the exterior stucco surface, nonetheless, both buildings
are built for permanent use. Providing a hole in the floor or wall of Smith’s
building of approximately ⅛ inch to ¼ inch (see Smith, col. 3, l. 5) does not
make Smith’s building unusable (continuously without a fundamental or
marked change), that is, a “partially constructed building,” as called for by
independent claim 32. Similarly, providing holes for nozzles 35 and 37 of
Jansen that can be filled by merely applying joint compound or finish coat
stucco (see Jansen, col. 5, ll. 6-9), respectively, do not make Jansen’s
building unusable (continuously without a fundamental or marked change),
that is, a “partially constructed building,” as called for by independent claim
56. We thus conclude that the Examiner’s claim construction is flawed.

2 An ordinary and customary meaning of the term “partially” is “to
some extent : in some degree.” Id. .
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Application 11/122,579

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Thus, neither Smith nor Jansen discloses a step of “providing a
partially constructed building … having an unfinished interior,” as called for
by each of independent claims 32 and 56. The addition of Hedman does not
remedy the deficiencies of either Smith or Jansen as described above.
Accordingly, the rejections of independent claims 32 and 56, and their
respective dependent claims 33-36, 38, 39, 57, 58, and 60-74, under 35
U.S.C. § 103(a) as unpatentable over Smith and Hedman, and Jansen and
Hedman, respectively, cannot be sustained. See In re Fine, 837 F.2d 1071,
1076 (Fed. Cir. 1988).

SUMMARY
The Examiner’s decision to reject claims 32 and 56 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement is reversed.
The Examiner’s decision to reject claims 32 and 56 under 35 U.S.C.
§ 112, second paragraph, as being indefinite is reversed.
The Examiner’s decision to reject claims 32-36, 38, 39, 63-65, 67, 69,
71, and 73 under 35 U.S.C. § 103(a) as unpatentable over Smith and
Hedman is reversed.
The Examiner’s decision to reject claims 56-58, 60-62, 66, 68, 70, 72,
and 74 under 35 U.S.C. § 103(a) as unpatentable over Jansen and Hedman is
reversed.

REVERSED

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