Ex Parte Tenute

Patent Trial and Appeal Board

Jan 17, 2013

11768492 (P.T.A.B. Jan. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEVEN J. TENUTE
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Appeal 2011-000035
Application 11/768,492
Technology Center 3600
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Before: WILLIAM V. SAINDON, SCOTT A. DANIELS, and JILL D.
HILL, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Steven J. Tenute (Appellant) appeals under 35 U.S.C. § 134 from a
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellant’s invention is directed to a rain gutter protection device
which prevents debris from infiltrating the gutter, and the gutter protection
device has a roof-matching coating on the upper surface. Spec. 1. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A rain gutter protecting device, comprising
a. an elongated, continuous body adapted to be affixed
proximate a roof and to extend outwardly from the roof
over a rain gutter secured along one edge of the roof, and
including an apertured trough oriented downwardly into
the rain gutter, said body having an upper surface, and
b. a roof-matching coating said upper surface of said
body, said coating comprising granules embedded in a
substrate secured to said body, said coating extending
into said trough, said granules slowing flow of water,
allowing higher flows of water into said trough, and
diverting flowing water to promote a more uniform flow
of water into said trough.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tenute
Neimann

US 5,457,916
US 7,119,135
Oct. 17, 1995
Oct. 10, 2006

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How Products Are Made: Volume 3- Shingle (2006) (found at:
http://www.madehow.com/Volume-3/Shingle.html) (hereafter “How
Products Are Made: Volume 3”).

REJECTIONS
The Examiner made the following rejections:
Claims 1-6 and 8-10 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Tenute in view of How Products Are Made. Ans. 3.
Claims 7 and 11 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Tenute, How Products Are Made, and Neimann. Ans. 7.

ANALYSIS
Claims 1-6 and 8-10 as unpatentable over Tenute in view of How Products
Are Made.
The Examiner found that Appellant’s claimed rain gutter protector
was disclosed in Appellant’s own prior patent (Tenute). Ans. 3. The
Examiner also found that Tenute specifically disclosed “[r]oofing material,
shown generally at 36, may then be applied over the main body 12 to at least
partially cover the protecting device 10, providing a more aesthetic
appearance to the invention.” Id. (citing Tenute, col. 3, ll. 44-47). The
Examiner determined that it would have been obvious to one of skill in the
art “to take the ‘partially covered’ device to be covered in the trough portion
in order to provide a uniform aesthetic appearance to the device.” Id. at 4.
The Examiner further determined that based on How Products are Made, one
of skill in the art would also have been motivated to modify the device “with
a roofing like coating and more specifically, one like a roofing shingle in
order to provide a more aesthetic appearance to the gutter protector.” Id.
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Appellant argues that it would not have been obvious to coat the entire
surface of the gutter protection device based on the partially overlapping
roofing material disclosed in Tenute in order to provide a uniform aesthetic
appearance to the device. App. Br. 3. Appellant also contends that the
Examiner’s reasoning for coating the entire upper surface of the gutter
protection device (including the trough 14) with a substrate coating secured
to the device and embedded granules in the coating, is based upon hindsight
taken from the teachings of Appellant’s present Application. Id (emphasis
added).
Appellant’s prior patent teaches the following application of the gutter
protection device 10 over the gutter 28:
Roofing material, shown generally at 36, may then be
applied over the main body 12 to at least partially cover the
protecting device 10, providing a more aesthetic appearance to
the invention. The roofing material 36 may extend as far as
desired along the main body 12, up to the edge region 14.
Tenute, col. 3, ll. 44-47. Figure 1 of Tenute discloses the partial overlapping
of roof material, e.g., the lower portion of a shingle, over a portion of the
body 12 of gutter protection device 10. What is not disclosed by Tenute is
securing of a substrate and embedded granules to, or on, an upper surface of
the body 12 of the device 10 as recited in Appellant’s claims 1 and 9. The
Examiner turns to How Products Are Made, which explains the structure and
manufacture of asphalt roofing shingles, and reasons that it would be
aesthetically pleasing to coat the entire upper surface of the gutter protection
device with “a roofing like coating.” Ans. 4. Tenute however already
indicates that it is aesthetically pleasing to overlay, or overlap, the main
body 12 of the gutter protection device 10 with the roofing material. For its
part, How Products Are Made merely explains the composite structure of
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asphalt shingles. Indeed, such shingles are already disclosed, generally
speaking, in Tenute as roofing material overlapping the gutter protection
device. With the known roofing material 36 as shown in Tenute’s Figure 1
overlapping the main body 12, (as it must) so that water is appropriately
directed over the intersection of the device 10 and the roof 22 into the trough
20 and gutter 28, and with the overlapping roofing material 36 hiding the
main body 12 of the gutter protector for purposes of aesthetic appearance,
we can discern no apparent reason why one of ordinary skill in the art would
have considered it obvious to coat the gutter protection device itself with
additional substrate and granules for reasons of aesthetic appearance. The
reasons proffered by the Examiner “that a shingle is a coating material since
shingles coat a roof” (Ans. 9) appears to be already accomplished by Tenute
where the shingles are “applied over the main body 12 to at least partially
cover the protecting device 10, providing a more aesthetic appearance to the
invention.” Tenute, col. 3, ll. 45-47. The Examiner has not provided any
evidence or offered any technical reasoning explaining that replacing the
overlapping roofing material with a coating secured directly on the upper
surface of the gutter protection device would provide an improved aesthetic
appearance to the gutter protection device beyond that already accomplished
by the overlapping roofing material which “may extend as far as desired
along the main body 12, up to the edge region 14.” Tenute, col. 3, ll. 47-48.
In other words, we fail to see how, in this case, “aesthetics” explains a
proposed modification of directly coating a material, instead of having the
existing aesthetic covering. Thus, the Examiner’s rejection is insufficient to
explain why a person having ordinary skill in the art would have considered
it obvious to replace the overlapping roofing material from Tenute with a
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coating directly on the upper surface of the gutter protection device as
claimed.
Accordingly, for the foregoing reasons, we cannot sustain the
rejection of independent claim 1 and its dependent claims 2-6 and 8.1
Independent claim 9 includes the same structure as recited in claim 1 and
therefore we also cannot sustain the obviousness rejection of claims 9 and
10.

Claims 7 and 11 as being unpatentable over Tenute in view of How Products
Are Made, and further in view of Neimann.
With respect to the rejections of dependent claims 7 and 11 under 35
U.S.C §103(a), Neimann is directed to a seed oil based coating for
application to building materials such as roofing, wood, metals and stucco.
The coating provides a desired amount of solar reflectivity to reduce heat
developed in the building materials and hence lowers the heat in the
building. Niemann, col. 1, ll. 5-30. Niemann’s disclosure relates
specifically to the chemical composition of such coatings and thus does not
remedy the deficiencies of Tenute and How Products Are Made, as
described above. Thus, we likewise cannot sustain the rejection of claims 7
and 11 over the combined teachings of Tenute, How Products Are Made and
Niemann.

1 Dependent claims subject to the same rejection are nonobvious under
section 103 if the independent claims from which they depend are
nonobvious. In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988).
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DECISION
For the above reasons, the Examiner’s rejection of claims 1-11 is
reversed.

REVERSED

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