Golden Rule Fasteners, Inc.Download PDFPatent Trials and Appeals BoardMar 1, 20212021001905 (P.T.A.B. Mar. 1, 2021) Copy Citation 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. 90/014,257 02/04/2019 8534002 77700.00255 7082 20322 7590 03/01/2021 SNELL & WILMER L.L.P. (Main) 400 EAST VAN BUREN ONE ARIZONA CENTER PHOENIX, AZ 85004-2202 EXAMINER CLARKE, SARA SACHIE ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 03/01/2021 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 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. 14/856,534 09/16/2015 William Archie McDow JR. 77700.00155 6318 20322 7590 03/02/2021 SNELL & WILMER L.L.P. (Main) 400 EAST VAN BUREN ONE ARIZONA CENTER PHOENIX, AZ 85004-2202 EXAMINER CLARKE, SARA SACHIE ART UNIT PAPER NUMBER 3993 NOTIFICATION DATE DELIVERY MODE 03/02/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): IPDOCKET@swlaw.com chauff@swlaw.com dgiancaterin@swlaw.com PTOL-90A (Rev. 04/07) Appeal 2021-001905 Reexamination Control 90/014,257 Patent 8,534,002 B2 1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GOLDEN RULE FASTENERS, INC. Patent Owner and Appellant Appeal 2021-001905 Reexamination Control 90/014,257 Patent 8,534,002 B2 Technology Center 3900 Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and RAE LYNN P. GUEST, Administrative Patent Judges. Appeal 2021-001905 Reexamination Control 90/014,257 Patent 8,534,002 B2 2 SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(b) and 306, Golden Rule Fasteners, Inc. appeals from the final rejection of claims 1–4, 6–8, 10–18, and 20–25. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. CLAIMED SUBJECT MATTER The claims are directed to a roof flashing apparatus. Claim 1, reproduced below as amended, is the sole independent claim on appeal, and is illustrative of the claimed subject matter: 1. A roof flashing comprising: a collar having a collar top and a collar bottom; a base having a base top edge and a base bottom edge, the base having a first side with a length longer than a length of a second side opposite the first side, with the lengths measured from the base top edge to the base bottom edge, wherein the base top edge is coupled to the collar bottom and the base extends downwardly from the collar bottom to the base bottom edge; a foot coupled to the base bottom edge and extending outwardly from the base bottom edge to a foot edge, said foot extending outwardly at an angle with a front portion of the foot extending downwardly from the base and a back portion of the foot extending upwardly from the base, wherein the front portion of the foot includes a reinforcement material, wherein the foot is substantially rectangular, and wherein the back portion of the foot is configured to rest underneath a first shingle Appeal 2021-001905 Reexamination Control 90/014,257 Patent 8,534,002 B2 3 and the front portion of the foot is configured to rest on a top of a second shingle; and a longitudinal opening extending from the collar top to the foot edge, wherein the longitudinal opening is defined by a first edge member having a first flap extending away from the longitudinal opening, and a second edge member having a second flap extending away from the longitudinal opening, wherein the first edge member and the second edge member extend upwardly from the foot, wherein the first edge member includes a first clip groove and the second edge member includes a second clip groove, wherein the first clip groove and the second clip groove are configured to receive a clip to securely fasten the longitudinal opening, wherein the first clip groove forms a right angle with the first flap, and wherein the second clip groove forms a right angle with the second flap, wherein the longitudinal opening includes first, second, and third sections, wherein the first section of the longitudinal opening traverses a portion of the collar from the collar top to the collar bottom at a point where a collar bottom is coupled to the base top edge, wherein the second section of the longitudinal opening traverses a portion of the base from the collar bottom to the base bottom edge, the second section disposed at a second angle that is different than the first angle, wherein the third section of the longitudinal opening traverses a portion of the foot from the base bottom edge to the foot edge, the third section disposed at a third angle that is different than the first and second angles, wherein when the first and second edge members are pulled away from each other a width of the longitudinal opening increases to enable the roof flashing to be installable around a pipe which is not capable of receiving the roof flashing over a top thereof. Appeal 2021-001905 Reexamination Control 90/014,257 Patent 8,534,002 B2 4 Appeal Br. 16–17 (Claims App., underlining and bracketed text removed, italics added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Elwart US 3,731,952 May 8, 1973 Kifer US 4,526,407 July 2, 1985 Bodycomb US 5,414,964 May 16, 1995 Rodriguez US 5,588,267 Dec. 31, 1996 Chu US 2006/0179725 A1 Aug. 17, 2006 REJECTIONS 1. Claims 1–4, 6–8, 10–18, and 20–25 stand rejected under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 2. The Examiner also rejects various claims under pre-AIA 35 U.S.C. § 103(a) as follows: 2. Claims 1–4, 6–8, 10, 13–17, and 20–25 as unpatentable over Rodriguez in view of Chu. Final Act. 3. 3. Claims 1–4, 7, 8, 10, 13–18, and 20–22 as unpatentable over Kifer in view of Chu. Final Act. 5. 4. Claims 6 and 23–25 as unpatentable over Kifer in view of Chu and Hasty. Final Act. 8. 5. Claim 12 as unpatentable over Rodriguez or Kifer, in view of Chu and Elwart. Final Act. 8. 6. Claims 1, 10, and 11 as unpatentable over Kifer in view of Chu and Bodycomb. Final Act. 9. OPINION Rejection 1: Written Description Appeal 2021-001905 Reexamination Control 90/014,257 Patent 8,534,002 B2 5 The Examiner rejects all of the claims on appeal as failing to comply with the written description requirement, finding that the limitation “wherein the front portion of the foot includes a reinforcement material” lacks support in the original disclosure as to the recited “front portion.” Final Act. 2. The Appellant disagrees and notes that the Specification discloses that “‘in one embodiment, the foot 101 has embedded therein reinforcement material, such as a thin sheet of metal, molded within the elastomeric material forming the foot 101.’” Appeal Br. 6 (quoting Spec. col. 2, ll. 55–57). Based thereon, the Appellant asserts that “there is clear disclosure and support for a foot including a reinforcement material at any location therein.” Appeal Br. 6–7. The Appellant also points out that the claim “merely requires that reinforcement material is included in the front portion of the foot, [and] it does not require that the reinforcement material is included only or exclusively in the front portion of the foot.” Appeal Br. 7. The Appellant further argues that a person of ordinary skill in the art “reviewing the entirety of the specification would understand the need for reinforcement material specifically in the front portion of the foot” because the Specification discloses a roof flashing “for installation on a pitched, shingled roof, as seen in FIG. 6,” and further discloses the use of reinforcement material to “make[] the foot 101 more rigid to minimize or prevent lifting of the foot by wind, which may cause water infiltration.” Appeal Br. 7–8, quoting Spec. col., 4, ll. 30–35. According to the Appellant, “[t]o achieve that benefit, one skilled in the art would understand that reinforcement material in the foot would be most desirable in the front portion 115, as only portion 115 is exposed directly to the wind.” Appeal Br. 8. The Examiner disagrees and explains that “[t]he original disclosure does not provide a description of the location of the Appeal 2021-001905 Reexamination Control 90/014,257 Patent 8,534,002 B2 6 reinforcement material in the foot,” and as such, “the original disclosure only provides support for the genus (‘somewhere in the foot’), and not ‘any location,’ as argued by the appellant.” Ans. 3–4. According to the Examiner, because the Specification lacks “description of this particular species, or any species, the original description would not reasonably lead one of ordinary skill in the art to the particular species,” “whether it is the entire foot, the front portion, or the top, left corner.” Ans. 4–5. The Examiner also explains that “it does not follow that making the foot more rigid specifically in the front would prevent lifting of the foot by wind,” and instead that “making the foot more rigid in the middle would be desirable” for that purpose. Ans. 6. The Examiner further finds that “[i]n the absence of proper evidence, the attorney’s arguments regarding what one of ordinary skill would understand is given little weight.” Ans. 6. In our assessment, the Appellant has the better position. As to written description, the “test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). In that regard, the “test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. In addition, “one cannot disclose a forest in the original application, and then later pick a tree out of the forest and say ‘here is my invention.’ In order to satisfy the written description requirement, the blaze marks directing the skilled artisan to that tree must be in the originally filed disclosure.” Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1326-27 (Fed. Cir. 2000). The Examiner is correct that the Specification does not provide Appeal 2021-001905 Reexamination Control 90/014,257 Patent 8,534,002 B2 7 a specific location of the reinforcement. However, its disclosure with respect to providing reinforcement to minimize or prevent lifting of the foot by the wind is an important teaching. Spec. col. 4, ll. 33–35. In particular, the Specification divides the foot 101 into two parts, and identifies the parts as the front portion 115 and the back portion 116. Spec. col. 2, ll. 41–49; Fig. 1. Even if the Examiner is correct that “making the foot more rigid in the middle would be desirable” for preventing lifting of the foot by the wind as taught in the Specification (Ans. 6), it would be evident to one of ordinary skill in the art that to prevent such lifting, the reinforcement should be provided at the front edge of the exposed portion of the foot, which is on the front portion 115. Fig. 1; see also Appeal Br. 8 (“one skilled in the art would understand that . . . only portion 115 is exposed directly to the wind.”). Furthermore, even under the Examiner’s reasoning, in view of the Specification’s disclosure of the foot 101 having the front portion 115 and the back portion 116, providing reinforcement “in the middle” of the foot would encompass providing reinforcement in at least part of the front portion 115 of the foot, albeit, as well as at least part of the back portion 116. In that regard, as the Appellant notes, claim 1 does not preclude other areas of the foot also being reinforced, but instead, requires the front portion of the foot to have such reinforcement. We also find persuasive the Appellant’s argument that “[i]n the present case, the complexity of the claimed subject matter is low while the predictability of the technology would appear to be high” so that “the level of detail to satisfy the written description requirement to reasonably convey to an artisan should be reduced.” Reply Br. 3, citing Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (“the level of detail required to satisfy the written description requirement varies depending on the nature Appeal 2021-001905 Reexamination Control 90/014,257 Patent 8,534,002 B2 8 and scope of the claims and on the complexity and predictability of the relevant technology.”). Indeed, as the Appellant points out, “the total number of foot portions (forward and rearward) identified in the specification are limited.” Reply Br. 3. In other words, the forest of technology and features with respect to the invention disclosed is small. Accordingly, we agree with the Appellant that the teachings in the Specification reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter. The teachings in the Specification regarding the function of the reinforcement in minimizing lifting of the foot by the wind serves as a blaze mark that directs the skilled artisan to appreciate that the reinforcement is provided at least at the front portion of the foot as claimed. Thus, we reverse this written description rejection. Rejections 2–6: Prior Art Rejections The Examiner’s numerous prior art rejections listed above, of all of the appealed claims, are based on either Rodriguez or Kifer in view of Chu. These rejections rely on Chu for disclosing a foot with a reinforcement material, and a longitudinal opening defined by a first edge member and a second edge member, as claimed in independent claim 1. Final Act. 3 (citing Fig. 2); Final Act. 6 (citing Chu Fig. 2). The Examiner also finds that: With respect to the requirement that the first clip groove forms a right angle with the first flap, and wherein the second clip groove forms a right angle with the second flap, at least the clip groove (trench 181 shown in Figs. 1 and 2) of Chu clearly forms a right angle. Final Act. 4. The Examiner further determines that: To the extent that the other clip groove (trench 173) does not appear to form a right angle, it is noted that in the Appeal 2021-001905 Reexamination Control 90/014,257 Patent 8,534,002 B2 9 disclosure of the ’002 Patent and the remainder of the record, no criticality has been attributed to the angle of the clip groove. Thus, to have formed both clip grooves of Chu at right angles would have been obvious to one of ordinary skill in the art at the time of invention because no criticality has been attributed to said angle. Moreover, the results would have been predictable, i.e., clip grooves into which the clips fit. Final Act. 4. In that regard, the Examiner explains that “[s]ince the [A]ppellant does not mention right angles in the specification, does not otherwise provide any evidence of criticality, and none can be gleaned from the drawings, the change of shape of the clip groove would have been an obvious matter of design choice.” Ans. 8. The Appellant disputes the Examiner’s finding and conclusion with respect to Chu, and argues all of the claims and the prior art rejections together. See Appeal Br. 9 et seq. Thus, all of the claims rejected in Rejections 2–6 stand or fall together. The Appellant argues that: neither FIG. 1 [nor] 2 of Chu disclose or suggest any groove forming a right angle with a flap, and definitively do not disclose such a groove with the clarity required to anticipate the recited feature in the present claims. The angle from which FIGS. 1 and 2 are drawn is such that it would be impossible for one skilled in the art to determine any angle from the figures themselves. Appeal Br. 11. According to the Appellant, “zooming in on the top portion of the Chu flashing shows that the trench 181 appears to be slightly rounded and that protrusion 18 extends downwardly toward cone shaped portion 11.” Appeal Br. 11. The Appellant further argues that “[a]s the drawings of Chu do not define precise proportions and the specification is silent on the issue, it is improper to rely on the drawings of Chu for defining precise proportions.” Reply Br. 4, citing Ex Parte Frenk (Appeal 2009-005654 (BPAI 2009)(informative)(holding that pitches of two threaded portions in a Appeal 2021-001905 Reexamination Control 90/014,257 Patent 8,534,002 B2 10 prior art cannot be characterized as being substantially equal because the drawings are not described as being to scale)). We are not persuaded by the Appellant’s arguments. As the Examiner finds, the lower left portion of the second protrusion 18, which is the clearest and the unobscured view, illustrates that trench 181 “forms a right angle.” Final Act. 4; see Chu Figs. 1, 2; see also Appeal Br. 12 (bottom figure depicting an enlarged portion of Fig. 1 of Chu). As the Examiner points out, the drawings of Chu are not relied upon for specific dimensions, but rather, “for what they reasonably disclose and suggest to one of ordinary skill in the art.” Ans. 7; see also See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972); In re Aslanian, 590 F.2d 911, 914 (CCPA 1979). Ex Parte Frenk referenced by the Appellant is distinguishable in that the threads at issue in that appeal were two different threads on two different portions of a fastener having different shank diameters. Frenk 4. Under the facts presented in Frenk, it could not have reasonably been found that the two different threads had the same pitch without other supporting disclosure. Thus, the facts in this appeal as to trench 181 is not analogous to the two different threads in Frenk because, here, the Examiner’s finding that the skilled artisan would understand that Chu’s trench 181 forms a right angle is reasonably supported by the Figure. The Appellant further argues that “even if Chu did disclose that trench 181 had a right angle, which it does not, trench 173 does not form a right angle, and is clearly shown as curved in FIGS. 1 and 2 of Chu.” Appeal Br. 12. This argument is also unpersuasive. The Examiner determined that to any extent that trench 173 does not form a right angle, it would have been obvious to one of ordinary skill in the art to do so as a matter of design choice, considering that no criticality has been attributed to the right angle, and also that the Appeal 2021-001905 Reexamination Control 90/014,257 Patent 8,534,002 B2 11 result would have been predictable. Final Act. 4, Ans. 8. Based on the criticality language used in the rejection, the Appellant argues that: Ranges are not an issue in the present claim. Appellants are not aware of any body of law that would support a rejection of a claim limitation on the sole basis that there is no detailed explanation in the specification of why that limitation is critical to the invention. That is especially true where, as here, no prior art has been presented that teaches or suggest that specific limitation. Appeal Br. 13. This line of argument is also unpersuasive. As discussed above, Chu itself discloses the recited limitation, at least with respect to trench 181. In addition, as the Examiner responds, “design choice is not limited to ranges, as [A]ppellant alleges.” Ans. 8, citing In re Dailey, 357 F.2d 669, 672–73 (CCPA 1966) (determining a change in shape was obvious as a matter of design choice where an appellant did not show the shape was significant or beyond what was obvious to perform the same function); see also In re Chu, 66 F.3d 292, 298–99 (Fed. Cir. 1995) (“design choice” is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function). It cannot be reasonably disputed that trench 173 of Chu forms an angle and that the Examiner reasonably found that trench 181 forms a right angle. Thus, there is clear legal and factual support for the Examiner’s conclusion that even if a right angle is not explicitly illustrated or described in Chu for trench 173, selection of a right angle would have been an obvious design choice, considering the teaching of similar trench 181 being a right angle and the absence of any disclosure or showing by the Appellant in its disclosure that the recited right angle results in a different function or is somehow critical. Therefore, because the Appellant’s arguments are Appeal 2021-001905 Reexamination Control 90/014,257 Patent 8,534,002 B2 12 unpersuasive, we affirm Rejections 2–6. CONCLUSION The Examiner’s rejection of the claims on appeal is affirmed. More specifically, the written description rejection of the claims as set forth in Rejection 1 is reversed. However, the prior art rejections of the claims as set forth in Rejections 2–6 are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Ba sis Affirmed Reversed 1–4, 6–8, 10–18, 20–25 112 Written Description 1–4, 6–8, 10–18, 20–25 1–4, 6–8, 10, 13–17, 20–25 103(a) Rodriguez, Chu 1–4, 6–8, 10, 13–17, 20–25 1–4, 7, 8, 10, 13–18, 20–22 103(a) Kifer, Chu 1–4, 7, 8, 10, 13–18, 20–22 6, 23–25 103(a) Kifer, Chu, Hasty 6, 23–25 12 103(a) Rodriguez or Kifer, Chu, Elwart 12 1, 10, 11 103(a) Kifer, Chu, Bodycomb 1, 10, 11 Overall Outcome 1–4, 6–8, 10–18, 20–25 REquests for extensions of time Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). Appeal 2021-001905 Reexamination Control 90/014,257 Patent 8,534,002 B2 13 affirmed For Appellant: SNELL & WILMER L.L.P. (Main) 400 EAST VAN BUREN ONE ARIZONA CENTER PHOENIX, AZ 85004-2202 Copy with citationCopy as parenthetical citation