Ex Parte Bevilacqua

Board of Patent Appeals and Interferences

Apr 20, 2010

10839198 (B.P.A.I. Apr. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH BEVILACQUA
____________________

Appeal 2008-001890
Application 10/839,198
Technology Center 3600
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Decided: April 21, 2010
____________________

Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Joseph Bevilacqua (Appellant) seeks our review under 35 U.S.C.
§ 134 of the non-final rejection1 of claims 1-16 and 18-21. Claims 1-25 are

1 The claims on appeal have been twice rejected. As such, we have
jurisdiction to address the case on the merits. Ex parte Lemoine, 46
USPQ2d 1432, 1434 (Bd. Pat. App. & Int. 1995).
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pending. Claim 17 is allowed. We have jurisdiction over the appealed
claims under 35 U.S.C. § 6(b) (2002).
The Notice of Appeal does not specifically list which claims are
appealed. Page 2 of the Appeal Brief states that “[c]laims 1-16 and 18-21
are being appealed.” Hence, it is clear that Appellant does not intend to
appeal the rejection of claims 22-25. Consistent with the holding of BPAI
precedential opinion Ex Parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI
2008), we DISMISS the appeal as to claims 22-25.2

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to a self-flushing pipe for
use with a building drainage pipe (gutter) system (Spec. 1:14-16).
Claims 1 and 6, reproduced below, are representative of the subject
matter on appeal.
1. A device for use in removing debris from a
gutter that is attached to a structure, the gutter
having a length and an open top for use in
receiving water from the structure, the device
comprising:
a cover member that substantially covers the
open top of the gutter to limit the debris that can
enter the gutter, the cover member having a top
and a bottom, the top having a water flow surface

2 Upon return of the application to the Examiner, we suggest that the
Examiner cancel claims 22-25. See MANUAL OF PATENT EXAMINING
PROCEDURE § 1214.05 (8th ed., Rev. 7, Jul. 2008).
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for use in guiding water from the structure into the
open top of the gutter;
a tube for use in removing debris from the
gutter, the tube extending substantially the length
of the gutter, the tube having a plurality of holes
for use in communicating a cleaning fluid from the
tube into the gutter;
attaching means for attaching the tube to the
bottom of the cover member; and,
fastening means for fastening the cover
member to the structure.

6. The device of claim 1 wherein the fastening
means comprises:
a fastening member having first and second
legs, the first leg adapted to be attached to the
cover member and the second leg adapted to be
fastened to the structure.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Spachmann US 1,991,427 Feb. 19, 1935
Beckerer US 3,313,009 Apr. 11, 1967
Sterzel US 4,634,312 Jan. 6, 1987
Demartini US 6,098,345 Aug. 8, 2000
Bahroos US 6,672,012 B2 Jan. 6, 2004
Brochu US 2004/0187394 A1 Sep. 30, 2004
Neumann US 2004/0244302 A1 Dec. 9, 2004

The following rejections by the Examiner are before us for review:
1. Claims 1-5, 12, 13, 20 and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bahroos in view of Sterzel and Beckerer.
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2. Claims 6, 7, 9-11 and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bahroos in view of Sterzel and Beckerer, and
further in view of Brochu.
3. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bahroos in view of Sterzel and Beckerer, and further in view of
Demartini.
4. Claims 15, 16 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bahroos in view of Sterzel and Beckerer, and
further in view of Neumann.
5. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bahroos in view of Sterzel, Beckerer and Brochu, and further in
view of Spachmann.
ISSUE
The issue before us is whether the Examiner erred in concluding that
the combined teachings of Bahroos, Sterzel and Beckerer, or the combined
teachings of Bahroos, Sterzel, Beckerer and Brochu would have led a person
having ordinary skill in the art to a “fastening means for fastening a cover
member,” as called for in claims 1 and 6 (App. Br. 10).

ANALYSIS
Rejection of claims 1-5, 12, 13, 20 and 21 over Bahroos, Sterzel and
Beckerer; and claims 6, 7, 9-11 and 19 over Bahroos, Sterzel, Beckerer and
Brochu
Appellant contends that the combined teachings of Bahroos, Sterzel
and Beckerer, or of Bahroos, Sterzel, Beckerer and Brochu, would not have
led a person having ordinary skill in the art to a “fastening means for
fastening a cover member,” the fastening means having certain structural
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features of corresponding structure disclosed in the Specification and recited
in more detail in claim 6 (App. Br. 10).
Appellant contends that:
The claims under appeal have two means
plus function claim elements. . . .
The second means plus function claim
element is "fastening means for fastening the cover
member to the structure." Specific optional
structures that may be used for the fastening means
350 are described beginning on page 18, line 24
and extend through page 20, line 3. The fastening
means 350 may include the use of a fastening
member 352 that may be L shaped (see Figure 11)
having first and second legs 354, 356. One leg
may attach to the cover member 260 and the other
leg may attach to the structure 210. The
attachment to the structure 210 in one
embodiment, does not contact the roof material. In
another embodiment, the attachment to the cover
member 260 may include a groove 358. In yet
another embodiment, one or more teeth 360 may
be used to increase the interference fit between the
cover member 260 and the groove 358. In still
another embodiment, the fastening means 350 may
include one or more connectors 380 which may be
conventional (nails, screws, rivets, and the like).
The legs of the L shaped member may be angled,
at angle A1, anywhere between 0 and 90 degrees.
(App. Br. 3-4) (Emphasis added)
The Examiner found that, in regards to claim 1, Bahroos describes a
fastening means for fastening a cover member to a structure (Ans. 4). The
Examiner found that, in regards to claim 6, Bahroos, as modified by Sterzel
and Beckerer, describes all of the features of the claimed invention with the
exception of “a fastening member having first and second legs, the first leg
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adapted to be attached to the cover member and the second leg adapted to be
fastened to the structure.” (Ans. 6-7). In particular, the Examiner found that
Brochu describes a cover member 44 attached to a structure by a fastening
member 30 having first and second legs (Ans. 7). The Examiner concluded
that it would have been obvious to a person having ordinary skill in the art to
modify Bahroos, as modified by Sterzel and Beckerer, with the addition of
the fastening means of Brochu (Ans. 7-8).
Claim 1 calls for, inter alia, “A device for use in removing debris
from a gutter that is attached to a structure, . . . the device comprising . . .
fastening means for fastening the cover member to the structure.”
Claim 6 calls for “wherein the fastening means comprises: a fastening
member having first and second legs, the first leg adapted to be attached to
the cover member and the second leg adapted to be fastened to the
structure.”
We conclude that since both claims 1 and 6 contain the language
“fastening means,” both recitations of “fastening means” are presumed to be
subject to interpretation consistent with the requirement of the sixth
paragraph of § 112. Neither the Appellant nor the Examiner point to any
structure recited in claim 1 or claim 6 which might rebut this presumption.
See Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir.
2000). In fact, Appellant has stated that the claim language “fastening
means” is a means plus function claim element (App. Br. 3-4).
“[T]he ‘broadest reasonable interpretation’ that an examiner may give
means-plus-function language is that statutorily mandated in paragraph six.
Accordingly, the PTO may not disregard the structure disclosed in the
specification corresponding to such language when rendering a patentability
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determination.” In re Donaldson Co., 16 F.3d 1189, 1194-95 (Fed. Cir.
1994).
“The plain and unambiguous meaning of [35 U.S.C. § 112] paragraph
six is that one construing means-plus-function language in a claim must look
to the specification and interpret that language in light of the corresponding
structure, material, or acts described therein, and equivalents thereof, to the
extent that the specification provides such disclosure.” Id. at 1193.
“The first step in the construction of a means-plus-function claim
element is to identify the particular claimed function. The second step in the
analysis is to look to the specification and identify the corresponding
structure for that function.” (Citations omitted). Med. Instrumentation &
Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).
The structure, that is, the elements described in Appellant’s
specification that correspond to “the fastening means” is the fastening
member 352 having a first leg 354 adapted to be attached to a cover member
260 and a second leg 356 adapted to be fastened to the structure 210 (Spec.
18:26-27).
We agree with the Examiner that Bahroos does not describe a
fastening member having a first leg and a second leg, wherein the second leg
is adapted to be fastened to the same structure that the gutter is attached to
(Ans. 6-7) (See cls. 1 and 6).
Brochu describes a gutter 10 attached to roof, a first (mounting)
member 30, a second member 44, and a pair of clip members 66 secured to
the underside of first member 30 to mount the first member on the shroud 26
surrounding a nail 24 (p. 2, paras. [0022]-[0025] and [0028]; and figs. 1-4).
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Brochu does not describe a fastening member having first and second
legs, wherein the second leg is adapted to, that is, is capable of being
attached to same structure, the roof, that the gutter is attached to, as called
for in claim 1. Brochu’s first member 30 does not perform the identical
function of fastening the cover member to the structure. As such, Brochu
does not cure the deficiency in Bahroos.
The Examiner has not relied on Sterzel or Beckerer for any teaching
that would remedy the deficiency in Bahroos (Ans. 5-6). The Examiner
provides no reasoning adequate to show that the combined teachings of
Bahroos, Sterzel and Beckerer, or of Bahroos, Sterzel, Beckerer and Brochu,
would have provided one of ordinary skill in the art reason to fasten a cover
member to a structure by means of a structural element identical or
equivalent to the structure described in the Appellant’s Specification.
Therefore, we reverse the rejection of claim 1 over Bahroos, Sterzel
and Beckerer. Likewise, we reverse the rejection of claims 2-5, 12, 13, 20
and 21.
We also reverse the rejection of claim 6 over Bahroos, Sterzel,
Beckerer and Brochu. Likewise, we reverse the rejection of claims 7, 9-11
and 19.

Rejection of claim 14 over Bahroos, Sterzel, Beckerer and Demartini; claims
15, 16 and 18 over Bahroos, Sterzel, Beckerer and Neumann; and claim 8
over Bahroos, Sterzel, Beckerer, Brochu and Spachmann
The Examiner has not relied on Demartini, Neumann or Spachmann
for any teaching that would remedy the deficiency in the combined teachings
of Bahroos, Sterzel and Beckerer or in the combined teachings of Bahroos,
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Sterzel, Beckerer and Brochu (Ans. 8-11). We thus also reverse the
rejection of claims 8, 14-16 and 18.

CONCLUSION
The Examiner has erred in concluding that the combined teachings of
Bahroos, Sterzel and Beckerer, or the combined teachings of Bahroos,
Sterzel, Beckerer and Brochu would have led a person having ordinary skill
in the art to a “fastening means for fastening a cover member,” as called for
in claims 1 and 6.

DECISION
The appeal is dismissed as to claims 22-25.
The decision of the Examiner to reject claims 1-16 and 18-21 is
reversed.

REVERSED

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