Ex Parte Wall

Patent Trial and Appeal Board

Oct 1, 2013

12068626 (P.T.A.B. Oct. 1, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HARLIN J. WALL
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Appeal 2011-011795
Application 12/068,626
Technology Center 3600
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Before: JAMES P. CALVE, WILLIAM A. CAPP and SCOTT A. DANIELS
Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-5 under 35 U.S.C. § 102(b) as anticipated by Leek (US
6,260,402, iss. Jul, 17, 2001). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION under 37
C.F.R. § 41.50(b).
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THE INVENTION
Appellant’s invention relates to building joist connectors. Spec. 7.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A joist and beam hanger for connecting transverse
members to a metal U-shaped edge beam having an open top to
permit the insertion of mechanical and utility distribution, said
joist and beam hanger comprising:
an upper horizontal component for extending over and
connecting upper edges of the edge beam; and
a vertical component for receiving an end of a transverse
member, said vertical component projecting downward from an
edge of the upper horizontal component and including a
perforated plate for permitting mechanical and utility
distribution to run from the interior of the edge beam through
said perforated plate and into the transverse member.

OPINION
Claim 1
The Examiner finds that Leek discloses all of the elements of claim 1.
Ans. 3-4. In particular, the Examiner finds that Leek has a perforated plate 3
for permitting mechanical and utility distribution as claimed. Id. The
Examiner considers that a U-shaped edge beam is not positively recited in
the claim, relegating claim language directed to the edge beam as mere
statements of intended use. Ans. 4.
Appellant traverses the Examiner’s rejection by arguing, in essence,
that the preamble’s recitation of an open-top U-shaped metal edge beam
should be treated as a positively recited claim limitation. App. Br. 4. The
Examiner responds that the preamble is merely a statement of intended use.
Ans. 5. In essence, the Examiner’s position is that the preamble does not
limit the scope of the claim. Id.
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A preamble limits the invention if it recites essential structure or is
“necessary to give life, meaning, and vitality” to the claim. Pitney Bowes
Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). A
preamble is not limiting “‘where a patentee defines a structurally complete
invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention.”’ Catalina Mktg. Int'l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Rowe v.
Dror, 112 F.3d 473, 478 (Fed Cir. 1997)). Similarly, “[i]f the body of the
claim sets out the complete invention, and the preamble is not necessary to
give ‘life, meaning, and vitality’ to the claim, ‘then the preamble is of no
significance to claim construction because it cannot be said to constitute or
explain a claim limitation.’” Bristol-Myers Squibb Co. v. Ben Venue Labs.,
Inc., 246 F.3d 1368, 1373 (Fed. Cir. 2001) (quoting Pitney Bowes, 182 F.3d
at 1305).
In the instant case, Appellant has defined a structurally complete
invention in the body of claim 1, which is directed to a joist and beam
hanger. The claimed joist and beam hanger would be structurally the same
whether mounted on a metal edge beam or a conventional wooden joist.
Mounting the claimed hanger on a metal beam amounts to no more than a
new use for old product . See In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997). We therefore afford no weight to the preamble of claim 1.
Appellant argues that Leek’s fastener openings 26 and 27 would not
be sufficient to connect the upper ends of a metal edge beam. App. Br. 5.
Thus, Appellant contends that Leek is not capable of performing the use for
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which the claimed invention is intended. App. Br. 5. We reiterate that
Appellant’s statement of intended use does not limit the scope of the claim.1
Appellant next argues that Leek lacks a perforated plate as claimed.
App. Br. 5. Appellant argues that, although Leek’s plate is perforated,
mechanical and utility distribution could not be run through the perforations.
Id. In response, the Examiner finds that utility wires can run through Leek’s
perforation. Ans. 5. The Examiner further states that the claim language
following “perforated plate,” - “for permitting mechanical utility
distribution . . .” amounts to a mere statement of intended use and is not
limiting. Id.
Leek’s element 22 is the largest circular opening on the back plate and
serves as a pilot hole for tooling. Leek, col. 10, ll. 8-14. We discern that
Appellant’s implied but unstated reason for contending that Leek’s
perforation would not have accommodated the passage of mechanical and/or
utility features relates to the apparent size of pilot hole 22. See Leek, figs.
13A and 13B. Under our precedent, however, it is well established that
patent drawings do not define the precise proportions of the elements and
may not be relied on to show particular sizes if the specification is
completely silent on the issue. Hockerson-Halberstadt, Inc. v. Avia Group
Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000), citing In re Wright, 569 F.2d
1124, 1127 (CCPA 1977). Thus, we are not persuaded that the Examiner

1 Apart from the foregoing consideration, which we consider
dispositive of the issue, Appellant provides no evidence to support this
argument and the argument is otherwise not persuasive. Leek is made of
sheet metal. Leek, col. 2, l. 66. Even if the claim required that the joist
hangar be affixed to a sheet metal edge beam (it does not), Appellant offers
no evidence or technical reasoning as to why Leek cannot be joined to other
metal components by well-known conventional means such as riveting,
sheet metal screws or welding.
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erred in finding that the openings on the back plate of Leek are capable of
accommodating utility wires. Ans. 5. The fact that the purpose of Leek’s
pilot hole was for guiding tooling does not negate the fact that it is an
opening that can allow other items to pass through, such as utility wires. “A
reference may be read for all that it teaches, including uses beyond its
primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012),
citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-421 (2007). A
person of ordinary skill in the art would understand that items, such as utility
wires, can be passed through a circular opening in a sheet metal plate.
“Common sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle.” KSR, 550 U.S. at 420. Appellant’s intended use for the plate
perforations is to allow utility items to pass through, however, such a new
use does not impart patentable novelty to an otherwise old and well known
invention. See In re Schreiber, 128 F.3d at 1477 (“It is well settled that the
recitation of a new intended use for an old product does not a make a claim
to that old product patentable”).
We sustain the Examiner’s rejection of claim 1.
Claim 4
Claim 4 depends from claims 1, 2 and 3, which collectively add the
following limitations:
wherein said vertical component includes side flanges
projecting from opposite vertical edges of said perforated plate
and a bottom flange projecting from a bottom edge of said
perforated plate and interconnecting lower edges of said side
flanges.
Clms. App’x., Claim 2.
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wherein each of said side flanges is positioned so as to be
perpendicular relative to the perforated plate, and at least one of
said side flanges includes a cutout portion.
Clms. App’x., Claim 3.
wherein the cutout portion is formed only in an intermediate
portion of said side flange to provide access for robotic welders
to connect the joist and beam hanger to the transverse member.
Clms. App’x., Claim 4.
The Examiner finds that Leek discloses all of the dependent
limitations in claims 2, 3 and 4. Ans. 4. In particular, the Examiner finds
that Leek Figure 13A element 125 satisfies the claim 4 limitation directed to
a cutout portion formed only in an intermediate portion of side flange 17.
Id.
Appellant traverses the rejection by arguing that Leek element 125 is
a “dimple” that is distinguishable from Appellant’s “cutout.” App. Br. 7. In
support of this contention, Appellant recites a dictionary definition of
“cutout” that suggests that cutouts are formed by cutting, which differs from
a dictionary definition of “dimple.” Id. Appellant also argues that claim 4
requires that the claimed intermediate portion “provide access for robotic
welders . . .” Id. Appellant argues that one of ordinary skill in the art would
recognize that Leek’s dimples would not provide access for robotic welders.
Id.
The Examiner responds that the claim merely recites a “cutout”
without further defining the structure of what constitutes a cutout. Ans. 5.
The Examiner considers Leek’s dimples to be a recession in the edge, which
satisfies a reasonably broad interpretation of “cutout.” Id.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
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re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.” In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
The word “cutout” appears only once in the Specification in the
following context:
The connectors (11) are provided with openings or perforations
for permitting mechanical and utility distribution to run from
the interior of the edge beam through the openings and into the
transverse member. Note that cutouts are provided in the sides
of the connectors to provide access for robotic welders to
connect the connectors to the transverse members.
Spec. 8. Appellant’s application does not otherwise define what a “cutout”
is or what height and width dimensions characterize the cutout vis-à-vis the
height and width dimensions of the upper and lower portions of the side of
the connectors. Moreover, Appellant’s application does not otherwise
describe or explain how the cutouts serve to provide access for robotic
welders, what dimensions of the cutouts are necessary to provide such
access, or even where the points of welding contact are made vis-à-vis the
connector and the transverse member.
Under the circumstances, we agree with the Examiner that a broad
interpretation of “cutout” is appropriate in this case. Ans. 5. Furthermore,
we also agree with the Examiner that the determination of patentability of
the claim is determined by the product itself, not its method of production.
The patentability of a product does not depend on its
method of production. [citation omitted]. If the product in a
product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though
the prior product was made by a different process.
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In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Therefore, we are not
persuaded by Appellant’s argument that Leek’s dimple does not correspond
to the claimed cutout just because the dimple is not formed by cutting. We
are otherwise not persuaded that the Examiner erred in finding that Leek
element 125 is a cutout. See also Leek, figs. 2, 3, 13A, 13B.
Next, Appellant argues that Leek’s dimple 125 does not provide
access for robotic welders as allegedly claimed. App. Br. 7. This argument
is unpersuasive for two reasons. First, the robotic welder limitation is a
statement of intended use, not a positively recited claim limitation. Second,
Appellant’s position regarding robotic welder access is mere attorney
argument that is not supported by evidence or technical reasoning. Based on
the record before us, we find that the Examiner correctly adduced a prima
facie case, thus shifting the burden to Appellant “to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” See Thorpe, 777 F.2d at 698. Appellant’s conclusory
attorney argument regarding robotic access is insufficient to carry the
Appellant’s burden to rebut the Examiner’s prima facie case.
Accordingly, we sustain the rejection of claim 4.
Claims 2, 3 and 5
Appellant does not argue for the separate patentability of claims 2, 3
and 5. Appellant has waived the right to argue these claims and we,
therefore, sustain the rejection of claims 2, 3 and 5. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
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New Ground of Rejection
Unpatentability of Claim 4 over Leek
While we agree with the Examiner that Leek anticipates claim 4, we
also conclude that claim 4 is unpatentable under 35 U.S.C. § 103(a) over
Leek for an additional reason not articulated in the Final Rejection or
Examiner’s Answer. Accordingly, we hereby designate a new ground of
rejection, pursuant to our authority under 37 C.F.R. § 41.50(b).
Leek discloses a sheet metal member with flanges. Leek, col 2, ll. 65-
66; fig 13A. The side profile of the member depicted in Figure 13A is wider
at the bottom portion than it is at either the intermediate portion or the upper
portion. However, it would have been obvious to a person of ordinary skill
in the art to increase the width of the upper portion, thereby making the
intermediate portion narrower than the upper and lower portions so as to
form a cutout only at the intermediate portion. Such would have involved
only a minor alteration in the geometric shape of the sheet metal blank as a
matter of design choice. It is well known that such blanks are cut from
larger sheets of metal. It would have been well within the capability of
someone of ordinary skill in the art to then fold the modified blank into the
claimed shape using conventional sheet metal machining techniques. A
person of ordinary skill in the art would have been motivated to do this to
increase the geometric size and shape of the upper portion of the member to
more easily receive and guide a joist or transverse member into position.
Apart from the foregoing, we adopt the Examiner’s findings with respect to
claim 4 set forth on page 4 of the Examiner’s Answer.
We, therefore, designate a NEW GROUND OF REJECTION of claim
4 under 35 U.S.C. § 103(a) as unpatentable over Leek.
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DECISION
The decision of the Examiner to reject claims 1-5 is affirmed.
We designate a NEW GROUND OF REJECTION of claim 4 under
35 U.S.C. § 103(b) as unpatentable over Leek.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejections,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejections are
overcome. If Appellants elect prosecution before the Examiner and this
does not result in allowance of the application, abandonment or a second
appeal, this case should be returned to the Patent Trial and Appeal Board for
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final action on the affirmed rejections, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)

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