Ex Parte Ayers et al

Patent Trial and Appeal Board

Apr 29, 2013

10514699 (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHARLES WILLIAM JACK AYERS
and RONALD JOHN PICKERSGILL
____________________

Appeal 2011-001109
Application 10/514,699
Technology Center 3600
____________________

Before: CHARLES N. GREENHUT, BRETT C. MARTIN, and
NEIL A. SMITH, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Charles William Jack Ayers and Ronald John Pickersgill (Appellants)
appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 42-
47, 49-73, and 84. Claims 1-41, 48, 74-76, and 81-83 are cancelled and
claims 77-80 are allowed and are not before us on appeal. App. Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants’ invention is directed generally to “a spacer device for use
in a cavity wall of a building structure to inhibit water penetration into the
building.” Spec. 1, ll. 6-7. Claims 42, 43, and 84 are independent. Claim
42, reproduced below, with emphasis added, is illustrative of the claimed
subject matter:
42. A cavity wall spacer device which
determines a separation of building elements of
two leaves of a vertically extending wall during
construction, comprising a support body having a
plurality of spaced projections extending
horizontally therefrom and vertically spaced apart
from each other, and, in use, across a cavity
between said two leaves, each projection having
means for preventing or at least inhibiting transfer
of moisture at least in one direction from one end
of the projection to the other.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wedi
Baldwin
Laska
Brunson
DE 7907495
GB 2097037 A
US 5,860,259
US 6,684,579 B2
Nov. 22, 1979
Oct. 27, 1982
Jan. 19, 1999
Feb. 3, 2004

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
Claims 42-45, 47, 49-55, 57, 58, 63-65, and 68-72 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Wedi. Ans. 4.
Claims 42-47, 49-65, 68-73, and 84 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Laska and Baldwin. Ans. 7.
Claims 66 and 67 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Laska, Baldwin, and Brunson. Ans. 3.

ANALYSIS
Anticipation by Wedi
Appellants argue claims 42-45, 47, 49-55, 57, 58, 63-65, and 68-72 as
a group. App. Br. 6. We select claim 42 as the representative claim, and
claims 43-45, 47, 49-55, 57, 58, 63-65, and 68-72 will stand or fall with
claim 42. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Wedi discloses a device having all of the
structural limitations recited in claim 42 that is “capable of use as a wall
cavity spacer and capable of determining a separation of building elements
of two walls of a vertically extending cavity wall during construction.” Ans.
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4-5. The Examiner further states that the remainder of claim 42 relating to
its specific use as a spacer between wall sections amounts to an intended use
and that it “need only be shown that the structure is capable of being
employed as stated.” Ans. 6. We agree.
Our reviewing court has held that a statement of intended use in an
apparatus claim cannot distinguish over a prior art apparatus that discloses
all the recited structural limitations and is capable of performing the recited
function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We
also note that “[a]n intended use or purpose usually will not limit the scope
of the claim because such statements usually do no more than define a
context in which the invention operates.” See Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003). Although “[s]uch statements often . . . appear in the claim’s
preamble,” a statement of intended use or purpose can appear elsewhere in a
claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).
Appellants argue that,
[s]ince claims 42 and 43 positively recite that the projections
extend horizontally and are vertically spaced from each other,
and since that structure is not shown in the German patent, that
should be sufficient to overcome the Patent Examiner's
rejection
App. Br. 7. This argument is not persuasive because, although depicted
horizontally in the figures and “preferably” designed for such an orientation,
as stated by the Examiner and expressly disclosed by Wedi,
[u]sage possibilities can also be considered in vertical
installations, e.g. for foundation drainage, in basement walls
and similar purpose[s]
Wedi 5:6-8; Ans. 4-5, 12.
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With respect to hump 4 that the Examiner points to as meeting the
recitation relating to inhibiting transfer of moisture, Appellants merely argue
that “hump 4 has absolutely nothing to do with the prevention of the transfer
of moisture as positively recited in claims 42 and 43.” While this may be
true with respect to Wedi’s disclosed use, it does not address the Examiner’s
assertion that Wedi’s bead 4 is the same or equivalent structure, which
would perform the same function, as Appellants’ ridge or rib 16 when used
vertically as a wall spacer as recited in the claims.
We agree with the Examiner that all of the recited structural elements
are present. Ans. 4-5; see also Ans. 12. As the Examiner states, “when the
device of Wedi is vertically oriented, water that moves horizontally across
the projections stops at the bulbous bead [4], falls to the bottom of the bead,
and then drips down the bead into the cavity formed by the Wedi device.”
Ans. 12. We agree with the Examiner that “the ‘hump’, or ‘bead’, as it is
referred to in the translation (page 6. line 8), acts essentially identically to [,
and is therefore the same as, or at least equivalent to,] the rib, 16, of
[Appellants’] invention, when the device of Wedi is oriented vertically.”
Ans. 12. Appellants’ argument that Wedi’s bead 4 cannot inhibit moisture
transfer again stems from the incorrect notion that Wedi’s device, as
disclosed and as applied by the Examiner, is horizontal. See App. Br. 8.
The factual basis for Appellants’ argument that “hump 4 is merely
provided to enable variation between the level of the ground and the upper
tiles by enabling the cones 3 to deform slightly if needed” and that “[u]pon
such deformation, a hump 4 is formed on the cone” is unclear. App. Br. 7.
In any case, this argument again goes to the disclosed use in Wedi, not the
Examiner’s explanation as to how Wedi discloses each and every structural
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and functional element of the claim. See App. Br. 8. Appellants provide no
persuasive argument against the Examiner’s finding as to what Wedi’s
disclosed structure is capable of in the context of wall spacers and
Appellants’ various arguments as to the disclosed use of the device in Wedi
are essentially inapposite to the issue. Appellants’ argument regarding Wedi
allegedly teaching away also addresses Wedi’s disclosed use, not the
Examiner’s proposed use of Wedi’s structure as a wall spacer. Id. Further,
teaching away is irrelevant to the issue of whether Wedi anticipates. See
Seachange Intern., Inc. v. C-COR, Inc. 413 F.3d 1361, 1380 (Fed. Cir.
2005).
Accordingly, we sustain the Examiner’s rejection of claims 42-45, 47,
49-55, 57, 58, 63-65, and 68-72 as anticipated by Wedi.
Obviousness over Laska and Baldwin
Appellants argue claims 42-47, 49-65, 68-73, and 84 as a group. App.
Br. 8. We again select claim 42 as the representative claim, and claims 43-
47, 49-65, 68-73, and 84 will stand or fall with claim 42. 37 C.F.R.
§ 41.37(c)(1)(vii).
The Examiner finds, and we agree, that Laska discloses all of the
structural limitations of claim 42, but “[e]ach projection does not have
means of preventing or at least inhibiting transfer of moisture in at least one
direction from one end of the projection to the other.” Ans. 7. The
Examiner also correctly finds that “Baldwin discloses a device with means
(20) of preventing or at least inhibiting transfer of moisture at least in one
direction from one end of the projection to the other.” Id. The Examiner
then concludes that it would have been obvious “to combine the familiar
separation device of Laska with the means of Baldwin because it does no
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more than yield predictable results of promoting drippage of water down the
projections.” Ans. 8.
Appellants argue that there “is absolutely no reason or motivation,
other than hindsight, to provide such a moisture trap as taught by Baldwin
on the cones in the drainage section 14 of Laska” because “such moisture
traps would interfere with the free flow of water along the Laska cones in
the drainage section 14.” App. Br. 9. First, we disagree that there is no
motivation, or that such would be hindsight, given that Baldwin is a wall tie
that bridges a gap between two leaves, just as Appellants’ spacer does, and
Baldwin specifically teaches the desirability of “a moisture trap or drip
promoter” on such a tie for exactly the purpose disclosed by Appellants.
Baldwin 1, ll. 5-6. Further, we disagree that this runs counter to Laska
because as the Examiner states, Laska “ensures the proper construction of
[a] drainage wall system by providing a porous drainage path in both vertical
and horizontal direction[s].” Ans. 13 (citing Laska col. 4, ll. 19-20). “In
other words, the drip promoter on the Laska modified by Baldwin device
simply speeds the movement of water down the cavity by allowing it to
accumulate on the drip promoter and then drop freely down the cavity.” Id.
We agree. Accordingly, we do not find Appellants’ arguments persuasive
and sustain the Examiner’s rejection of claims 42-47, 49-65, 68-73, and 84.
Obviousness over Laska, Baldwin, and Brunson
Claim 66, which is subject to this rejection, depends from claim 63,
which depends from claim 42. Claim 67, also subject to this rejection,
depends from claim 66. Appellants restate their argument with respect to the
combination of Laska and Baldwin, which we reject supra. Reply Br. 1-2.
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Specifically, with respect to the limitations in claims 66 and 67
relating to a heat insulating layer, Appellants argue that “the Brunson patent
merely discloses a drainage mat system which encourages the flow of
moisture, not inhibits it as defined in claims 66 and 67.” Reply Br. 3.
Regardless of the specific moisture conduction in Brunson, we understand
the Examiner to apply Brunson as teaching the known use of an insulating
layer next to a spacer similar to that disclosed in Laska, which the Examiner
then modifies with Baldwin. As the Examiner states, and we agree,
combining “the familiar separation device of Laska with the insulation of
Brunson...does no more than yield predictable results of reducing heat
transfer.” Ans. 3. Seeing as the insulating layer of both Brunson and
Appellants’ claims does not interact with the water path in the spacer, but is
merely a layer abutting the spacer, we do not see how the specifics of the
water flow within the spacer affect the applicability of Brunson as argued by
Appellants. Accordingly, we do not find Appellants’ arguments persuasive
and sustain the Examiner’s rejection of claims 66 and 67.

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 42-47, 49-73, and 84.
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

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