Ex parte BEHLING

Board of Patent Appeals and Interferences

Mar 30, 1998

08324108 (B.P.A.I. Mar. 30, 1998)

Application for patent filed October 14, 1994.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte THOMAS C. BEHLING
________________
Appeal No. 97-0381
Application 08/324,1081
________________
ON BRIEF
________________
Before STAAB, McQUADE and NASE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 12 through
17. Claims 1 through 11, the only other claims pending in the
application, stand withdrawn from consideration pursuant to 37
CFR § 1.142(b) as being directed to a non-elected invention.
Appeal No. 97-0381
Application 08/324,108
The language employed by the appellant to define the2
“attaching” step in claim 12 is obviously garbled and is
deserving of correction in the event of further prosecution
before the examiner.
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The subject matter on appeal relates to a method of
manufacturing a pre-fabricated building wall. Claim 12 is
illustrative and reads as follows:
12. A method of manufacturing a wall for a manufactured
building, said method comprising:
providing a rectangular frame having opposite plate members
and studs extending between said plate members;
applying glue to said studs and said plate members;
placing wallboard in contact with said glue applied to said
studs and plate members;
attaching a rigid rail to said studs to overly and in
contact with the wallboard to urge said wallboard against said
studs as said glue cures; and 2
removing the rail when said glue has set.
The references relied upon by the examiner as evidence of
obviousness are:
Dawdy 4,069,640 Jan. 24, 1978
Kuhr 4,757,663 Jul. 19, 1988
Appeal No. 97-0381
Application 08/324,108
This ground of rejection was applied to claims 13 and 143
for the first time in the examiner’s answer (Paper No. 8). The
rejection of claims 13 and 14 which had been set forth in the
final rejection (Paper No. 5) has been withdrawn by the examiner
(see page 5 in the answer).
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Claims 12 through 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kuhr in view of Dawdy.3
Reference is made to the appellant’s main and reply briefs
(Paper Nos. 7 and 9) and to the examiner’s answer (Paper No. 8)
for the respective positions of the appellant and the examiner
with regard to the merits of this rejection.
Kuhr discloses a method of manufacturing a building wall or
partition 60. With reference to Figure 6, Kuhr states that
the partition 60 is built by connecting the floor
runner 61 and the ceiling runner 62 with the end studs
63 and the intermediate studs 64, and attaching the
wallboard 66 to the resulting framework. . . . The
wallboard 66 may be attached to the studs 63 and 64 and
to the runners 61 and 62 by the screws 68 or an
adhesive [column 3, lines 11 through 25].
As implicitly conceded by the examiner (see pages 3 and 4 in
the answer), Kuhr does not teach and would not have suggested a
wall manufacturing method having the rigid rail attaching and
removing steps specified in appealed claim 12. Indeed, Kuhr does
not disclose any such “bracing” steps.
Appeal No. 97-0381
Application 08/324,108
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Dawdy discloses a wall manufacturing method wherein
wallboard 14 is adhered to a stud 12 by adhesive beads 30. As
described by Dawdy,
the wallboards 14 are placed against the adhesive beads
30 in the manner known in the art. The wallboard is
temporarily braced to hold it firmly against the
adhesive bead[s], while adhesive develops a strong
bond, all in accordance with the methods known in the
art. After the adhesive has set, any temporary bracing
is removed, and the wallboard 14 remains adhered to the
stud 12 [column 2, lines 3 through 10].
According to the examiner,
it would be [sic, would have been] obvious to one of
ordinary skill in the art at the time the invention was
made to provide the method of Khur [sic, Kuhr] with the
[bracing] steps of Dawdy to ensure a rigid attachment
of the wallboard to the studs and plate members. It is
[sic, would have been] also obvious to one of ordinary
skill in the art that the bracing means could be of any
form to ensure said glue is set properly on several
wallboards to a frame. The specific device used is a
matter [of] choice [answer, pages 3 and 4].
Rejections based on 35 U.S.C. § 103 must rest on a factual
basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78
(CCPA 1967). In making such a rejection, the examiner has the
initial duty of supplying the requisite factual basis and may
not, because of doubts that the invention is patentable, resort
to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in the factual basis. Id.
Appeal No. 97-0381
Application 08/324,108
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In the present case, the combined teachings of Kuhr and
Dawdy do not provide the factual basis necessary to support a
conclusion that the subject matter recited in claim 12 would have
been obvious within the meaning of 35 U.S.C. § 103. As noted
above, Kuhr does not teach and would not have suggested a wall
manufacturing method having the rigid rail attaching and removing
steps recited in appealed claim 12. Arguably, Dawdy’s rather
broad teaching of temporarily bracing a wallboard to a stud until
the adhesive therebetween sets and then removing the bracing
would have suggested the addition of similar steps to Kuhr’s
method. There is nothing in the combined teachings of these
references, however, which would have suggested the addition to
Kuhr’s method of the specific “bracing” steps required by claim
12, to wit: “attaching a rigid rail to said studs to overly and
in contact with the wallboard to urge said wallboard against said
studs as said glue cures; and removing the rail when said glue
has set.” The examiner’s conclusion that these particular
limitations would have been obvious matters of choice is based,
not on fact, but on speculation, unfounded assumptions and a
hindsight reconstruction of the appellant’s invention.
Appeal No. 97-0381
Application 08/324,108
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In this light, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of independent claim 12 or of claims 13 through
17 which depend therefrom.
The decision of the examiner is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-0381
Application 08/324,108
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Baker and Daniels
205 West Jefferson Boulevard
Suite 250
South Bend, IN 46601