90014083 - (D) (P.T.A.B. Apr. 6, 2020)

ALFRED MILLER CONTRACTING COMPANY et al.

Patent Trials and Appeals BoardApr 6, 2020

90014083 - (D) (P.T.A.B. Apr. 6, 2020)

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. 90/014,083 02/08/2018 9140005 150651 1030 133739 7590 04/06/2020 Spencer Fane, LLP 5700 Granite Parkway Suite 650 Plano, TX 75024 EXAMINER GELLNER, JEFFREY L ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 04/06/2020 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. 90/014,129 04/25/2018 9140005 155935 9327 133739 7590 04/06/2020 Spencer Fane, LLP 5700 Granite Parkway Suite 650 Plano, TX 75024 EXAMINER GELLNER, JEFFREY L ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 04/06/2020 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex Parte ALFRED MILLER CONTRACTING COMPANY Patent Owner and Appellant ____________________ Appeal 2020-001609 Merged Reexamination Control Nos. 90/014,083 & 90/014,129 Patent US 9,140,005 B21 Technology Center 3900 ____________________ Before JEFFREY B. ROBERTSON, BRETT C. MARTIN, and JEREMY M. PLENZLER, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL 1 Issued to Philip Glen Miller on September 22, 2015. Appeal 2020-001609 Merged Reexamination Control Nos. 90/014,083 & 90/014,129 Patent US 9,140,005 B2 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellant’s claims are directed “generally to a corner bead for cementitious fireproofing of structural steel members.” Spec. col. 1, ll. 18–19. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A self-aligning corner bead for fireproofing a structural steel member along two adjoining surfaces, said corner bead comprising: a strip of welded wire fabric having a pre- determined width and being longitudinally aligned with said structural steel member, said strip being bent along its longitudinal axis thereby defining a first wing and a second wing, each wing forming an angle between approximately 90 degrees and 180 degrees; wherein the strip is only fastened to the structural steel member at one or more fastening positions of the first wing; wherein an outer edge of said second wing comprises a substrate positioned along said outer edge, said substrate operable to receive a fireproofing material; wherein said comer bead terminates at the outer edge of said second wing, said second wing being substantially planar; and wherein a second width of said second wing and said angle formed between the wings determine a uniform thickness of the fireproofing material of said structural steel member. Appeal 2020-001609 Merged Reexamination Control Nos. 90/014,083 & 90/014,129 Patent US 9,140,005 B2 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Burt Sacks US 2,127,806 US 2007/0119106 A1 Aug. 23, 1938 May 31, 2007 REJECTION The Examiner made the following rejection: Claims 1–19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Burt and Sacks. Ans. 4. ANALYSIS Obviousness Appellant argues claims 1–19 as a group. Appeal Br. 3–10. We select claim 1 as representative. Claims 2–19 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner’s rejection finds that Burt teaches all aspects of Appellant’s claim except that it does not teach the claimed “welded wire fabric, the member being a steel member, and the material being fireproofing material.” Ans. 5. The Examiner further finds that Sacks teaches these limitations, or equivalents thereof, such that the combination renders the claims unpatentable. Id. Appellant’s main argument with respect to the claims is that the references teach away from the proposed combination and/or would destroy the purpose of the invention in Burt. See, e.g., Reply Br. 5–9. Appeal 2020-001609 Merged Reexamination Control Nos. 90/014,083 & 90/014,129 Patent US 9,140,005 B2 4 According to Appellant, Burt “specifically discourages the use of his invention for straight corners and the use of straight and rigid structures for curved edges.” Reply Br. 5. Burt, however, does not discourage use of its device on straight edges, it merely acknowledges that prior art straight corner beads “may” be used up until the curve commences, at which point Burt’s invention would be employed. Burt 2, ll. 30–31. The Examiner is correct that the individual sections of Burt are straight, and therefore, if Burt’s invention were employed on a straight edge, it would follow the contour in the same manner it is capable of following a curved contour. Appellant also argues that “[t]here must be a suggestion to make the modification in the prior art” and that there is no such suggestion in Burt to use the device on straight edges. Reply Br. 6. Appellant’s argument is misplaced. The Examiner’s rejection merely points out that Burt is capable of being used on straight edges, which is correct, as noted above. The suggestion for the modification need only apply to the combination with Sacks, which has nothing to do with whether Burt itself is usable on straight edges. The combination, which the Examiner adequately supports, is merely to replace Burt’s solid strips with Sacks’ metal fabric. Appellant further argues that Sacks “is in direct contradiction to the laterally bent structure of Burt.” Reply Br. 6. Appellant again misplaces the argument here in that the only structural feature of Sacks being used by the Examiner is the metal fabric. It does not matter that Sacks is designed for straightness and rigidity because the Examiner is using the basic structure of Burt and modifying it with the metal fabric of Sacks. The device of the combination is designed to be configured as disclosed in Burt, not in Sacks. Appeal 2020-001609 Merged Reexamination Control Nos. 90/014,083 & 90/014,129 Patent US 9,140,005 B2 5 Lastly, Appellant argues that the Examiner’s combination would destroy the purpose of Burt. Reply Br. 7–8. Appellant does not, however, point out how the combination would destroy Burt’s purpose, but merely points out how features of Sacks’ device that are not incorporated by the Examiner would contradict Burt’s purpose, such as Sacks teaching of a straight and rigid bead. The Examiner’s combination still utilizes a series of flat strips on a flexible bead as taught in Burt, but merely replaces the solid sheet metal with Sacks’ metal fabric. The combination has all of the features of Burt’s original invention, including the ability to be used on curved surfaces, it merely has the added advantages of metal fabric that may allow, for example, the mesh itself to embed within the plaster of Burt, or the fireproofing material of the present invention. As to the Wohl Declaration, the Declaration itself merely mirrors Appellant’s arguments, but in declaration form. Nothing in the Declaration actually rebuts the Examiner’s rejection for the same reasons as stated above with respect to Appellant’s arguments. Accordingly, we sustain the Examiner’s rejection of claims 1–19. Appeal 2020-001609 Merged Reexamination Control Nos. 90/014,083 & 90/014,129 Patent US 9,140,005 B2 6 CONCLUSION The Examiner’s rejection of claims 1–19 is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–19 103 Burt, Sacks 1–19 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED rwk Appeal 2020-001609 Merged Reexamination Control Nos. 90/014,083 & 90/014,129 Patent US 9,140,005 B2 7 For APPELLANT: SPENCER FANE, LLP 5700 Granite Parkway Suite 650 Plano, TX 75024 For THIRD PARTY REQUESTER: LEWIS ROCA ROTHGERBER CHRISTIE LLP P.O Box 29001 Glendale, CA 91209-9001 Constantine Marantidis LEWIS ROCA ROTHGERBER CHRISTIE LLP PO Box 29001 Glendale, CA 91209-9001 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. 90/014,129 04/25/2018 9140005 155935 9327 133739 7590 04/06/2020 Spencer Fane, LLP 5700 Granite Parkway Suite 650 Plano, TX 75024 EXAMINER GELLNER, JEFFREY L ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 04/06/2020 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. 90/014,083 02/08/2018 9140005 150651 1030 133739 7590 04/06/2020 Spencer Fane, LLP 5700 Granite Parkway Suite 650 Plano, TX 75024 EXAMINER GELLNER, JEFFREY L ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 04/06/2020 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex Parte ALFRED MILLER CONTRACTING COMPANY Patent Owner and Appellant ____________________ Appeal 2020-001609 Merged Reexamination Control Nos. 90/014,083 & 90/014,129 Patent US 9,140,005 B21 Technology Center 3900 ____________________ Before JEFFREY B. ROBERTSON, BRETT C. MARTIN, and JEREMY M. PLENZLER, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL 1 Issued to Philip Glen Miller on September 22, 2015. Appeal 2020-001609 Merged Reexamination Control Nos. 90/014,083 & 90/014,129 Patent US 9,140,005 B2 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellant’s claims are directed “generally to a corner bead for cementitious fireproofing of structural steel members.” Spec. col. 1, ll. 18–19. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A self-aligning corner bead for fireproofing a structural steel member along two adjoining surfaces, said corner bead comprising: a strip of welded wire fabric having a pre- determined width and being longitudinally aligned with said structural steel member, said strip being bent along its longitudinal axis thereby defining a first wing and a second wing, each wing forming an angle between approximately 90 degrees and 180 degrees; wherein the strip is only fastened to the structural steel member at one or more fastening positions of the first wing; wherein an outer edge of said second wing comprises a substrate positioned along said outer edge, said substrate operable to receive a fireproofing material; wherein said comer bead terminates at the outer edge of said second wing, said second wing being substantially planar; and wherein a second width of said second wing and said angle formed between the wings determine a uniform thickness of the fireproofing material of said structural steel member. Appeal 2020-001609 Merged Reexamination Control Nos. 90/014,083 & 90/014,129 Patent US 9,140,005 B2 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Burt Sacks US 2,127,806 US 2007/0119106 A1 Aug. 23, 1938 May 31, 2007 REJECTION The Examiner made the following rejection: Claims 1–19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Burt and Sacks. Ans. 4. ANALYSIS Obviousness Appellant argues claims 1–19 as a group. Appeal Br. 3–10. We select claim 1 as representative. Claims 2–19 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner’s rejection finds that Burt teaches all aspects of Appellant’s claim except that it does not teach the claimed “welded wire fabric, the member being a steel member, and the material being fireproofing material.” Ans. 5. The Examiner further finds that Sacks teaches these limitations, or equivalents thereof, such that the combination renders the claims unpatentable. Id. Appellant’s main argument with respect to the claims is that the references teach away from the proposed combination and/or would destroy the purpose of the invention in Burt. See, e.g., Reply Br. 5–9. Appeal 2020-001609 Merged Reexamination Control Nos. 90/014,083 & 90/014,129 Patent US 9,140,005 B2 4 According to Appellant, Burt “specifically discourages the use of his invention for straight corners and the use of straight and rigid structures for curved edges.” Reply Br. 5. Burt, however, does not discourage use of its device on straight edges, it merely acknowledges that prior art straight corner beads “may” be used up until the curve commences, at which point Burt’s invention would be employed. Burt 2, ll. 30–31. The Examiner is correct that the individual sections of Burt are straight, and therefore, if Burt’s invention were employed on a straight edge, it would follow the contour in the same manner it is capable of following a curved contour. Appellant also argues that “[t]here must be a suggestion to make the modification in the prior art” and that there is no such suggestion in Burt to use the device on straight edges. Reply Br. 6. Appellant’s argument is misplaced. The Examiner’s rejection merely points out that Burt is capable of being used on straight edges, which is correct, as noted above. The suggestion for the modification need only apply to the combination with Sacks, which has nothing to do with whether Burt itself is usable on straight edges. The combination, which the Examiner adequately supports, is merely to replace Burt’s solid strips with Sacks’ metal fabric. Appellant further argues that Sacks “is in direct contradiction to the laterally bent structure of Burt.” Reply Br. 6. Appellant again misplaces the argument here in that the only structural feature of Sacks being used by the Examiner is the metal fabric. It does not matter that Sacks is designed for straightness and rigidity because the Examiner is using the basic structure of Burt and modifying it with the metal fabric of Sacks. The device of the combination is designed to be configured as disclosed in Burt, not in Sacks. Appeal 2020-001609 Merged Reexamination Control Nos. 90/014,083 & 90/014,129 Patent US 9,140,005 B2 5 Lastly, Appellant argues that the Examiner’s combination would destroy the purpose of Burt. Reply Br. 7–8. Appellant does not, however, point out how the combination would destroy Burt’s purpose, but merely points out how features of Sacks’ device that are not incorporated by the Examiner would contradict Burt’s purpose, such as Sacks teaching of a straight and rigid bead. The Examiner’s combination still utilizes a series of flat strips on a flexible bead as taught in Burt, but merely replaces the solid sheet metal with Sacks’ metal fabric. The combination has all of the features of Burt’s original invention, including the ability to be used on curved surfaces, it merely has the added advantages of metal fabric that may allow, for example, the mesh itself to embed within the plaster of Burt, or the fireproofing material of the present invention. As to the Wohl Declaration, the Declaration itself merely mirrors Appellant’s arguments, but in declaration form. Nothing in the Declaration actually rebuts the Examiner’s rejection for the same reasons as stated above with respect to Appellant’s arguments. Accordingly, we sustain the Examiner’s rejection of claims 1–19. Appeal 2020-001609 Merged Reexamination Control Nos. 90/014,083 & 90/014,129 Patent US 9,140,005 B2 6 CONCLUSION The Examiner’s rejection of claims 1–19 is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–19 103 Burt, Sacks 1–19 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED rwk Appeal 2020-001609 Merged Reexamination Control Nos. 90/014,083 & 90/014,129 Patent US 9,140,005 B2 7 For APPELLANT: SPENCER FANE, LLP 5700 Granite Parkway Suite 650 Plano, TX 75024 For THIRD PARTY REQUESTER: LEWIS ROCA ROTHGERBER CHRISTIE LLP P.O Box 29001 Glendale, CA 91209-9001 Constantine Marantidis LEWIS ROCA ROTHGERBER CHRISTIE LLP PO Box 29001 Glendale, CA 91209-9001