Ex Parte 7434362 et al

Patent Trials and Appeals Board

Jul 10, 2014

95001706 - (D) (P.T.A.B. Jul. 10, 2014)

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.
95/001,706 08/09/2011 7434362 0210D-400002 3630
23911 7590 07/10/2014
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
CLARKE, SARA SACHIE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/10/2014 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
____________________

JAC-RACK, INC.
Requester

v.

UNIRAC, INC.1
Patent Owner, Appellant
____________________

Appeal 2014-006375
Inter partes Reexamination Control 95/001,706
Patent US 7,434,362 B22
Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Unirac, Inc. is the Patent Owner and the real party in interest (Appeal Brief
of Patent Owner (hereinafter "App. Br.") 1).
2 Patent US 7,434,362 B2 (hereinafter "the '362 patent") issued October 14,
2008 to Liebendorfer.
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STATEMENT OF THE CASE
Claims 1-23 of the '362 patent are subject to reexamination (Right of
Appeal Notice3 PTOL-2066). Claims 1, 2, 8, 11, 12 and 14 stand rejected
while the remaining claims stand confirmed (id.; RAN 6, 9). The Patent
Owner appeals under 35 U.S.C. §§ 134(b) and 315 from the Examiner's
rejections (App. Br. 1, 2) relying on its Appeal Brief and Rebuttal Brief. We
have jurisdiction under 35 U.S.C. §§ 134(b) and 315.
We are informed that the '362 patent is related to U.S. Patent No.
7,260,918 which is the subject of Reexamination Control No. 95/001,727
also appealed to the Board (App. Br. 1, 2). A decision in this related appeal
has not been rendered by the Board (id.).
We AFFIRM.

The '362 patent is directed to a system for removably and adjustably
mounting a device such as photovoltaic module on a surface such as a roof
(Abstract). Figure 11 of the '362 patent is reproduced below.

3 Hereinafter "RAN." The Examiner's Answer incorporates the RAN by
reference. Hence we cite to the RAN herein.
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Figure 11 reproduced above shows a perspective view of clamp 34b
formed with leg 58 having base 60, descending member 62 extending
therefrom, and ascending member 64 also extending therefrom (col. 5, ll. 13-
14; col. 6, ll. 23-29). Clamp 34b also includes means 66 for connecting base
60 to a rail (col. 6, ll. 29-31).
Representative independent claims 1 and 2 read as follows (Claims
App'x, italics added):
1. (Original) A system for removably and adjustably mounting
a photovoltaic module or other flat panel on a surface,
comprising:
a rail formed with at least two tracks,
wherein the rail is formed with a body having a proximal
end, a distal end, and a hollow chamber there between;
and further wherein the rail is removably mountable on a
footing grid,
and further wherein the at least two tracks include a
channel extending the length of the rail,
and further wherein the channel in the at least two tracks
is formed with a slot extending the length of the rail, wherein
the slot in one of the at least two tracks is formed at
substantially a right angle to the slot in any other of the at least
two tracks;
a plurality of keepers on which to mount the rail;
and one or more clamps for connecting the system to the
surface, wherein the one or more clamps is formed with a leg
having a base, a descending member monolithically extending
from the base, and an ascending member monolithically
extending from the base in a direction substantially opposite the
direction of the descending member.

2. (Original) An apparatus for positioning a photovoltaic
module or other flat panel on a surface, comprising:
a footing grid, wherein the footing grid includes at least
one keeper;
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at least one dual track rail removably mountable on the
footing grid,
and further wherein the footing grid comprises means for
variably positioning the at least one dual track rail on the at
least one keeper; and
one or more clamps variably positionable on the dual
track rail and footing grid for demountably securing the module
to the footing grid,
and further wherein the at least one dual track rail
includes a body having a proximal end, a distal end, a hollow
chamber between the proximal end and distal end, opposing
sides, and opposing shoulders.

The Examiner rejects the various claims based on the following prior
art references:4
1. Claims 1 and 14 under 35 U.S.C. § 102(b) as anticipated by
Masami.5
2. Claims 1 and 14 under 35 U.S.C. § 103(a) as obvious over
Masami in view of Hisatoyo.6
3. Claims 1, 2, 8, 11, 12 and 14 under 35 U.S.C. § 102(b) as
anticipated by Nobuyuki.7
4. Claims 1, 2, 11, 12, and 14 under 35 U.S.C. § 102(b) as
anticipated by Masao.8

4 Each of the prior art references are Japanese Patent Publications, and thus,
all citations are to the English translations of record.
5 Japanese Patent Publication No. H11-013238 A.
6 Japanese Patent Publication No. H07-153984 A.
7 Japanese Patent Publication No. H09-250219 A.
8 Japanese Patent Publication No. H11-324259 A.
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ISSUES
The following issues have been raised in the present appeal.
1. Whether the Examiner erred in finding that the "frame side
covers" disclosed in Masami, Nobuyuki and Masao satisfy the
limitation reciting "clamps."
2. Whether the Examiner erred in finding that Nobuyuki and
Masao disclose "one or more clamps variably positionable on the dual
track rail and footing grid" as recited in claim 2.
3. Whether the Examiner erred in concluding that it would have
been obvious to substitute the frame side cover of Masami with the
clamp of Hisatoyo.

ANALYSIS
With respect to the rejections, the Examiner incorporates by reference
the Requester's detailed explanation of the pertinence and manner of
applying the prior art as set forth in the Request (RAN 2, 5-7, 9; see also
Request 35-41, 49-61, 72-76, 89-103, 104-117). The Patent Owner
disagrees with the Examiner for reasons set forth in its briefs. Only those
arguments made by the Patent Owner have been considered and any
arguments not made are deemed to be waived. See 37 C.F.R.
§ 41.67(c)(1)(vii).

Issue 1
The disclosures of Masami, Nobuyuki and Masao are similar and the
Examiner's anticipation rejections of the claims on appeal are based on the
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fact finding that the side frame covers disclosed in these references satisfy
the recited "clamp" limitation (RAN 2, 6-7, 9; see also Request 35-41, 49-
52, 89-103, 104-117). As such, the Patent Owner states that "a fundamental
issue in this reexamination proceeding and the Examiner's rejections is
whether a cover of a side of a frame of a solar cell module is a clamp."
(App. Br. 6). The Patent Owner states that because Rejections 1, 3 and 4 are
based on the same finding that "frame side covers of these references are
clamps," its arguments with respect to Masami apply equally to Nobuyuki
and Masao (App. Br. 6). Hence, we address these anticipation rejections
together, noting any pertinent distinctions.
The Examiner initially observes that no special meaning of the term
"clamp" is provided in the '362 patent, and thus, its plain meaning as defined
by various dictionaries applies (RAN 1). The Examiner finds that the frame
side cover of the prior art meets the structural requirements of the clamp
recited in the claims, irrespective of the function of Masami's frame side
cover (RAN 3). The Patent Owner asserts that "none of the frame side
covers of these references are clamps" because "these frame side covers
cover the frame of the solar cell module." (App. Br. 6-7). According to the
Patent Owner, similarity in the cross sectional shape is inadequate to
establish that the covers are clamps and that "to be a 'clamp', the clamp must
clamp something." (App. Br. 7-8).
This dispute between the Examiner and the Patent Owner is not
dispositive. In particular, the Examiner also found that that even if the term
"clamp" is interpreted as requiring the function of a clamp, the frame side
cover as shown in Masami, Nobuyuki and Masao "is a clamp because it
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secures (or joins) various parts together" such as lower framework 12 and
horizontal frame 5 in Masami (RAN 3). Hence, the position of the Examiner
is that "even if the claim required the function of a clamp [], Masami's frame
side cover is capable of and actually is shown performing said function."
(Id. at 5). We agree with the Examiner's finding.
In particular, frame side cover 22 of Masami engages the hook-like
engagement part 12a provided on drag flask 12, and the lower portion of
frame side cover 22 is provided with a similar engagement part which
engages frame 5 (Masami ¶ 19; Fig. 2). Similar structures are evident in
Nobuyuki and Masao (see Nobuyuki, Figs. 8, 9; Masao, Figs. 4, 16, 17).
The fact that the frame side covers of the applied prior art perform an
additional covering function does not detract from the fact that they also
perform a clamping function to secure a solar cell module.
The Patent Owner disputes the Examiner's finding and asserts that the
frame side covers of these references do not perform a clamping function,
referring to "Examiner's Annotated Figure 2 of Masami," and the "Patentee's
Annotated Figure 2 of Masami" which are reproduced below:
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(App. Br. 10).
"Examiner's Annotated Figure 2 of Masami" above shows frame side
cover 22 with portions thereof annotated as "base," "descending member"
and "ascending member." "Patentee's Annotated Figure 2 of Masami"
shows frame side cover 22 but with portions corresponding to the "base" and
"descending member" in the Examiner's annotated figure removed.
Based on the above annotated figures, the Patent Owner argues that
the base and the descending member of frame side cover 22 do not function
to clamp parts together because these portions can be removed from the
frame side cover, but the components drag flask 12 and horizontal frame 5
will remain held together (id. at 9-10). According to the Patent Owner, the
base and the descending member merely perform the function of covering
the side frame (id.).
The Patent Owner's argument is unpersuasive. Frame side covers of
the cited prior art references are monolithic, unitary structures (see Masami,
Fig. 2; Nobuyuki, Figs. 8, 9; Masao, Figs. 4, 16, 17). As noted, the fact that
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the frame side covers function as covers does not detract from the fact that
they also function as clamps to secure a solar cell module. Contrary to the
assertions of the Patent Owner, the base and descending member of the
frame side cover support the ascending member in its position shown in
Figure 2 of Masami so that the bolt can be tightened to secure the lower
framework 12 and horizontal frame 5 in a manner similar to the base and
descending member of clamp 34b of the '362 patent.9 Moreover, we agree
with the Examiner that "even using the patent owner's version of Fig. 2, at
least the ascending member of the frame side cover 22 is used to hold the
lower framework (drag flask 12) to the horizontal frame 5. Thus, the frame
side cover 22 is used to hold the two parts together." (RAN 4).
The Patent Owner asserts that "in these claims, the structure of the
base, the descending member, and the ascending member all contribute to
the clamp being able to perform the function of the clamp of pressing or
compressing two parts together so as to hold the two parts together." (App.

9 While not relied upon in our decision, we observe that if the frame side
cover is devoid of its base and descending member, it does not appear that
the frame side cover could be retained in position illustrated by the Patent
Owner in its modified Figure 2 of Masami. As more clearly illustrated and
explained in Nobuyuki, the device includes electric conduction washer 43
which is held up against the frame side cover component via rubber washer
44 (see Nobuyuki ¶ 43; Figs. 8, 9). The Patent Owner's argument requires
acceptance of an unlikely scenario wherein the frame side cover is secured
in place relative to the bolt merely by the rubber washer 44. Moreover, we
also observe that Masao differs from Masami and Nobuyuki and further
undermines the Patent Owner's argument in that the device of Masao does
not even include electric conduction washer 43 or a rubber washer 44 (see
Masao Figs. 4, 17). Without the base and descending member, the frame
side cover of Masao would pivot and not be in the configuration shown in
the Patent Owner's modified Figure 2.
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Br. 10). However, for the reasons discussed above, we disagree with the
assertion that the base and the ascending member of the prior art do not
contribute to the clamping function, and again observe that nothing in the
claims precludes performance of additional function such as covering
function.
The Patent Owner further points out that the Examiner noted that
Nobuyuki uses hardware (bolt 42) to connect the keeper 37 to the rail 21 (id.
at 11). Based on the bolt 42 of Nobuyuki, the Patent Owner argues that the
frame side cover 41 of Nobuyuki and the frame side covers of Masami and
Masao (which also use bolts) do not perform a clamping function (id. at 11-
12). This argument is unpersuasive. As noted by the Examiner (RAN 5), it
cannot be disputed that clamp 34b in the '362 patent also requires a threaded
fastener that extends through the hole 66 and an engaging threaded nut in
order for the clamp 34b to function (see Fig. 8). Without such a fastener and
a nut, the clamp 34b would not clamp anything. Thus, in the same manner
that the invention of the '362 patent uses a threaded fastener and a nut to
secure the clamp 34b, the devices in the prior art references use the disclosed
bolt to secure the frame side cover that function as a clamp and a cover.

Issue 2
Independent claim 2 recites "one or more clamps variably positionable
on the dual track rail and footing grid for demountably securing the module
to the footing grid." In rejecting this claim as anticipated by Nobuyuki and
Masao, the Examiner relies on the disclosed frame side covers of these prior
art references (RAN 6, 9; see, e.g., Request 95-98).
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The Patent Owner asserts that the Examiner erred in interpreting this
limitation so as to be satisfied by the frame side covers of the prior art that
connect to both a rail and a keeper (App. Br. 18). The Patent Owner asserts
Examiner's claim construction requires "that the clamp must connect
to/engage both the rail and the keeper" and argues that the Examiner's
interpretation is improper because "there is no disclosure in the specification
or drawings of the '362 patent that can support this construction." (Id.).
Specifically, the Patent Owner argues that "[a]s can be seen, in Patentee's
invention, the clamp does not connect to/engage both the rail and the keeper;
the clamp only connects to/engages the rail." (Id. citing col. 6, ll. 54-57; Fig.
1). Thus, the Patent Owner concludes that the recited variable positioning
"does not require, and cannot require, that the clamp connects to/engages
both the rail and the keeper." (Id. at 18-19).
The Patent Owner's arguments are unpersuasive and misdirected. The
Examiner did not construe claim 2 to "require[] that the clamp must connect
to/engages both the rail and the keeper," but rather, stated that "[a]s written,
the claim unambiguously requires that the clamp is capable of being variably
positioned on the dual track rail and footing grid." (RAN 8). Whereas the
Examiner adopted the position of the Requester as set forth in its Request,
the portion of the Request cited by the Patent Owner (App. Br. 18) merely
states the unremarkable fact that in Nobuyuki, the clamp connects to both
rail and keeper (Request 97). Claim 2 also specifically recites that the dual
track rail is mounted on a footing grid which includes at least one keeper
(see also col. 2, ll. 3-9; col. 6, ll. 1-6; Fig. 1). If the position of the clamp is
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adjusted on the dual track rail, its position relative to the footing grid is also
adjusted because the dual track rail is mounted on the footing grid.
Furthermore, the Patent Owner's argument that the recited variable
positioning "does not require, and cannot require, that the clamp connects
to/engages both the rail and the keeper" misses the point. Setting aside the
fact that the claims do not recite connection or engagement, the issue is not
that the language of claim 2 does not "require" the clamp to connect or
engage both the rail and the keeper because it clearly does not recite such an
arrangement. Rather, the question is whether the language of claim 2
precludes or excludes such an arrangement from satisfying the language of
the claim. There is no language in claim 2 that precludes or excludes such
an arrangement.
The Patent Owner's reliance on its specific implementation disclosed
in the '362 patent in support of its argument that "the clamp does not connect
to/engage both the rail and the keeper; the clamp only connects to/engages
the rail" (App. Br. 18) is unavailing as it imports limitations from the written
description into the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982) (features not appearing in the claims cannot be relied upon for
patentability); see also Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) ("Though understanding the claim language
may be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.").
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Issue 3
Claims 1 and 14 alternatively stand rejected as obvious over Masami
in view of Hisatoyo, the Examiner incorporating by reference portions of the
Request (RAN 5; Request 52-61, 72-76). Hisatoyo discloses a solar cell
module 2 that is secured via dummy support 19 (i.e., a clamp), and cover 3a
(Hisatoyo Abstract, ¶¶ 14-15; Figs. 1, 3). The Examiner concludes that it
would have been obvious and a mere substitution to use clamp 19 of
Hisatoyo for that of Masami in order to reduce costs and because Hisatoyo's
clamps are more versatile and easier to use (RAN 5; Request 52-61).
The Patent Owner asserts that there would have been no reason to
substitute Hisatoyo's dummy support 19 for the frame 5 and frame side
cover 22 of Masami because it could not have served the purpose of
covering a side of a frame which is the purpose of Masami's frame side
cover (App. Br. 14, 16). In this regard, the Patent Owner asserts that "[s]uch
a substitution would render Masami unsatisfactory for its intended purpose
and change its principle of operation since it would no longer have a frame
and a frame side cover." (App. Br. 14).
However, whereas Masami's frame side cover 22 performs an
additional covering function, as discussed supra, it nonetheless performs the
clamping function like the support 19 of Hisatoyo (see also Action Closing
Prosecution (hereinafter "ACP") 5). Moreover, as noted by the Examiner,
Hisatoyo also provides a cover 3b, which functions to cover the frame
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(Hisatoyo, Abstract; ¶ 15).10 Correspondingly, we agree with the Examiner
that claims 1 and 14 are also obvious in view of Masami and Hisatoyo, the
claimed invention substituting one clamp for another known in the art. See
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("when a patent
claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result."). The Examiner has relied on
a reason with rational underpinnings sufficient to support the conclusion of
obviousness. Id. at 418.

The Patent Owner does not submit any arguments directed to any
other claims on appeal including those directed to dependent claims 8, 11,
and 12 that ultimately depend from independent claim 2. Hence, in view of
the above, we find no error in the Examiner's rejections and affirm the same.

CONCLUSION
Rejections 1-4 are AFFIRMED.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. In the event neither party
files a request for rehearing within the time provided in 37 C.F.R. § 41.79,

10 Whereas the Patent Owner asserts that the Examiner prematurely closed
prosecution in view of newly relying on Hisatoyo's cover 3b in the Action
Closing Prosecution (App. Br. 15-16), we observe that such issues are not
appealable to the Board, but instead, must be petitioned to the Director.
Indeed, the Patent Owner informs us that it has filed such a petition on
August 24, 2012 (App. Br. 15).
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and this decision becomes final and appealable under 37 C.F.R. § 41.81, a
party seeking judicial review must timely serve notice on the Director of the
United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and
1.983.

AFFIRMED

Third Party Requester:

Mark D. Elchuk
HARNESS DICKEY & PIERCE, P.L.C.
P.O. Box 828
Bloomfield Hills, MI 48303

Patent Owner:

CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
Washington, DC 20044-4300