Ex Parte Browne et al

Patent Trial and Appeal Board

Mar 31, 2015

11593292 (P.T.A.B. Mar. 31, 2015)

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.
11/593,292 11/06/2006 Frank Michael Browne 2759
7590 03/31/2015
POWELL LAW, PC
P. O. BOX 61485
HARRISBURG, PA 17106-1485
EXAMINER
MAESTRI, PATRICK J
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
03/31/2015 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 FRANK MICHAEL BROWNE and KYLE EDWARD SEWARD
____________

Appeal 2012-011500
Application 11/593,292
Technology Center 3600
____________

Before EDWARD A. BROWN, THOMAS F. SMEGAL, and
LEE L. STEPINA, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–4, 7–14, 22, 25, 27, 29–31, and 36. Appeal Br.
5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).

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CLAIMED SUBJECT MATTER1
Claims 1, 27, 29, and 36 are independent. Claim 1, reproduced below,
is illustrative of the subject matter on appeal:
1. A joint connector for connecting in a flat continuous
surface abutting edges of tapered drywall with a predefined
untapered thickness comprising:
a base;
a column projecting forward from said base a distance
less than an untapered thickness of said drywall; and
mud legs extending generally perpendicular to said
column forming pockets for receipt of edges of said drywall,
said mud legs having a surface in close proximity with a
tapered portion of said drywall edge:
whereby when the connector receives the tapered edges
of the drywall, the length of the column from the base to the
mud legs surface is less than said untapered thickness.

EVIDENCE
The Examiner relies upon the following evidence:
Dunlap US 2,850,404 Sept. 2, 1958
Amos US 4,020,611 May 3, 1977
Moore US 4,157,271 June 5, 1979
Funaki US 4,982,542 Jan. 8, 1991
Santa Cruz US 6,230,469 B1 May 15, 2001
Bifano US 6,298,609 B1 Oct. 9, 2001
Hoffmann, Sr. US 6,684,586 B1 Feb. 3, 2004
Wambaugh US 2006/0123730 A1 June 15, 2006

1 The Examiner’s Answer indicates that the amendment to claim 29 in
Appellants’ response filed November 8, 2010, does not comply with 37
C.F.R. § 1.121(c). Answer 6–7. Appellants then filed a response on
December 29, 2011, correcting the amendment to claim 29. The Advisory
Action dated August 13, 2012, indicates that the corrected amendment to
claim 29 has been entered. Advisory Act. 2.
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REJECTIONS
Appellants request review of the following rejections:
Claims 1, 27, 29, and 36 are rejected under 35 U.S.C. § 112, second
paragraph.
Claims 1, 2, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Funaki.
Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Funaki and Amos.
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Funaki and Bifano.
Claims 8, 11, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Funaki and Moore.
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Funaki and Santa Cruz.
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Funaki and Hoffmann, Sr.
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Funaki and Dunlap.
Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Funaki and Wambaugh.
Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Funaki, Moore, and Wambaugh.2

2 The heading of this rejection does not list Amos. Answer 15. However, it
is apparent from the Examiner’s statement of the rejection that Amos is
applied as prior art. See id. at 16. Accordingly, we treat this rejection as
based on the combination of Funaki, Moore, Amos, and Wambaugh.
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Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wambaugh.
Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wambaugh and Bifano.
Claim 31 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wambaugh and Santa Cruz.
Claim 36 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Moore, Wambaugh, and Bifano.

ANALYSIS
Rejection of claims 1, 27, 29, and 36 under
35 U.S.C. § 112, second paragraph3
The Examiner determines there is insufficient antecedent basis for
“said drywall,” as recited in the body of claims 1, 27, and 29, because the
drywall is not positively recited. Answer 5. The Examiner notes that the
preamble recites “edges of tapered drywall” and determines that it is unclear
if Appellants intend to claim the combination of drywall and the connector,
or just the connector. Id. at 19–20. The Examiner treats the claims as being
directed to the combination. Id. at 20.
In contrast, Appellants respond that “drywall” is not positively recited
in claims 1, 27, and 29 because it is not an element of the invention. Reply
Br. 2. We understand Appellants’ position to be that each of claims 1, 27,
and 29 is directed to a joint connector, not to a combination of a joint

3 The Examiner indicates that the rejection of claims 1 and 27 under 35
U.S.C. § 112, second paragraph, pertaining to the recitation of “the
untapered thickness of the drywall” has been withdrawn.
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connector and drywall. This position is consistent with the preambles of
claims 1, 27, 29. For example, claim 1 recites in the preamble, “[a] joint
connector for connecting in a flat continuous surface abutting edges of
tapered drywall with a predefined untampered thickness.” Emphasis added.
This preamble indicates the intended use of the joint connector.
As to claims 1, 27, and 29, we agree with Appellants that it is clear
“said drywall” refers to the “tapered drywall” recited in the preamble, and,
thus, that recitation of “said drywall” does not make these claims indefinite.
We also agree with Appellants that, in claim 36, it is clear “said drywall”
refers to “a flat continuous surface drywall” in the preamble.
The Examiner also finds that the meaning of “compliant non-drywall
bending contact” recited in claim 29 is unclear. Answer 5. Claim 29 recites
“a base having compliant non-drywall bending contact with a rear surface of
said drywall.”
Appellants respond that “compliant non-drywall bending contact”
means compliant contact that does not bend the drywall. Reply Br. 3–4. In
support, Appellants reference paragraph 22 of the Specification, which
describes in regard to Figure 8, “[t]he base 310 is curved thereby giving it
spring or compliant contact with a rear surface 311 of the drywall sheets 302
and 304. The spring force need not be strong enough to bend the drywall
sheets 302 and 304 from their normal position.”
We agree with the Examiner that the meaning of “compliant non-
drywall bending contact” in claim 29 is not clear. In this regard, the
meaning of the term “non-drywall” is unclear. We are also unable to
determine whether “compliant non-drywall bending contact” may mean
“compliant, non-drywall-bending contact,” or whether the limitation, “a base
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having . . . rear surface of said drywall,” may mean “a base having
compliant contact with a rear surface of the said drywall that does not bend
the drywall.”
Thus, we sustain the rejection of claim 29 under 35 U.S.C. § 112,
second paragraph. Claims 30 and 31 are also indefinite by depending from
claim 29. Because the Examiner does not indicate that claims 30 and 31 are
also rejected, we designate the rejection of claims 30 and 31 as a new ground
of rejection pursuant to 37 C.F.R. § 41.50(b) to provide Appellants with a
fair opportunity to react.
We do not sustain the rejection of claims 1, 27, and 36 under 35
U.S.C. § 112, second paragraph.
2. Obviousness of claims 1, 2, 13, and 14 over Funaki
Appellants present separate arguments for claims 1 and 14. Appeal
Br. 21–23. We select claims 1 and 14 to decide the appeal with respect to
this rejection, with claims 2 and 13 grouped with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Claims 1, 2, and 13
As noted above, the Examiner treats claim 1 as being directed to the
combination of the joint connector and drywall. Answer 20. As to claim 1,
the Examiner finds Funaki discloses a joint connector comprising base 14,
column 16, and mud legs 18 forming pockets for receipt of edges of drywall,
but does not disclose that mud legs 18 are in close proximity with tapered
edges of drywall sheets, “whereby when the connector receives the tapered
edges of the drywall, the length of the column from the base to the mud legs
surface is less than said untapered thickness,” as claimed. Answer 5–6. The
Examiner determines that it would have been obvious to use Funaki’s panel
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connector for tapered edge sheets of drywall to securely hold the drywall
panels in place during the installation process because tapered drywall is
well known in the art for making a smooth transition between adjacent
panels. Id. at 6.
Initially, we disagree with the Examiner’s interpretation of claim 1 as
being directed to the combination of the joint connector and tapered drywall.
Rather, we agree with Appellants that claim 1 is directed to the joint
connector. We construe claim 1 as reciting an intended use for the joint
connector—that is, “for connecting in a flat continuous surface abutting
edges of tapered drywall with a predefined untapered thickness.” As noted
above, the Examiner determines that it would have been obvious to use
Funaki’s joint connector for this intended use.
Appellants contend that Funaki’s joint connector is for exterior panels,
where there is no requirement to make the panels appear as a unitary or
continuous surface sheet of material as required in interior walls or ceilings.
Appeal Br. 22. As such, Appellants contend that it would not have been
obvious to use Funaki’s joint connector “for connecting in a flat continuous
surface abutting edges of tapered drywall with a predefined untapered
thickness,” as claimed.
Even if Funaki does not describe the use of the holding member for
connecting abutting edges of tapered drywall, as claimed, “[i]t is well settled
that the recitation of a new intended use for an old product does not make a
claim to that old product patentable.” See In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997) (citations omitted). Where the Patent and Trademark
Office has reason to believe that a claimed functional limitation is an
inherent characteristic of the prior art, the burden shifts to Appellants to
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show that the prior art does not possess that characteristic. See In re Best,
562 F.2d 1252, 1254–55 (CCPA 1977) (quoting In re Swinehart, 439 F.2d
210, 212–13 (CCPA 1971)).
Claim 1 defines the distance that the column projects forward from
the base, and the length of the column from the base to the mud legs, with
respect to the “untapered thickness” of the drywall. The recitation, “a
column projecting forward from said base a distance less than an untapered
thickness of said drywall,” does not specify this “distance.” Rather, whether
this “distance” is less than, equal to, or greater than the untampered
thickness, depends only on the particular drywall that is used with the joint
connector. In addition, even if Funaki does not disclose mud legs “having a
surface in close proximity with a tapered portion of said drywall edge,” or
that “when the connector receives the tapered edges of the drywall, the
length of the column from the base to the mud legs surface is less than said
untapered thickness,” Appellants do not present persuasive argument or
evidence to show that Funaki’s holding member is incapable of being used
with tapered drywall having an untampered thickness, as called for by claim
1.
In the Reply Brief, Appellants contend that the claimed connector and
Funaki’s holding member differ structurally. First, Appellants contend that
column member 16 of Funaki’s holding member 12 projects forward from
base 14 a distance equal to, or greater than, a thickness of associated panel
20. Reply Br. 5. However, as discussed above, in the recitation, “a column
projecting forward from said base a distance less than an untapered thickness
of said drywall,” the “distance” depends on the untapered thickness of the
drywall that the joint connector is used to connect.
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Second, Appellants contend, “in order to perform its primary function
of eliminating the need for joint tape, the [] connector [of the invention]
generally extends the length of the abutting intersection of the tapered edge
of the drywall sheets.” Reply Br. 5–6. However, claim 1 does not recite
such length dimension for the connector. It is well established that features
that do not appear in a claim cannot be relied upon for patentability. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982).
Third, Appellants contend that, in the invention, mud legs 36 have a
surface in close proximity with tapered portion 48 of the drywall, and that
the mud legs are “somewhat flexible” to achieve this close proximity. Reply
Br. 6. Appellants also contend that to achieve this close proximity, the mud
legs are fabricated from a polymeric material, cellulosic material, or
relatively thin metal material. Id. In contrast, Appellants contend that
Funaki’s device has thick and rigid mud legs, which would not provide for
close proximity with a tapered surface of drywall. Id.
We note, however, that claim 1 does not recite that the mud legs have
any particular flexibility or are made from any specific material. Thus,
Appellants’ contentions are not commensurate with the scope of claim 1.
We decline to import limitations of any particular embodiment into the
claim. See Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875
(Fed. Cir. 2004) (“[A] particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”).
In addition, Appellants’ contention that Funaki’s holding member 12
is incapable of being used with holding plate 18 “having a surface in close
proximity with a tapered portion of said drywall edge” represents mere
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attorney argument without supporting factual evidence. See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (explaining that arguments and
conclusions unsupported by factual evidence carry no evidentiary weight).
Thus, Appellants’ contention is unpersuasive.
Thus, Appellants do not persuasively show that the claimed joint
connector and Funaki’s holding member differ structurally.
Appellants also contend that there are functional differences between
the invention and Funaki’s connector. Reply Br. 6–7. In particular,
Appellants contend that the invention eliminates the need for joint tape
between abutting drywall panels. Id. Appellants also contend that the
invention reduces the number of layers of joint compound that must be
applied to provide a flat continuous surface between these panels, whereas,
in Funaki, the panels do not have such a flat continuous surface between
them. Id. at 7. However, none of these purported functional differences is
recited in the claim. Nor do Appellants identify any limitations recited in
claim 1 that provide these purported functional differences.
Appellants also contend that the invention has “compliant, non-
drywall bending flexibility.” Reply Br. 7. As claim 1 does not recite this
limitation, this contention is not commensurate with the scope of the claim.
Appellants also contend that Funaki’s “support member provides the
permanent connection of the building exterior and insulating panels to a
building structural member.” Reply Br. 7. This contention does not
establish that Funaki’s support member is incapable of providing the
claimed functional recitations of the joint connector.
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Appellants further contend that Funaki’s thick metal structure and
welding installation would damage drywall. Reply Br. 7. This contention is
not supported by evidence, and, thus, is not persuasive.
For the foregoing reasons, Appellants fail to persuasively show that
Funaki fails to disclose any structural limitation of the joint connector
recited in claim 1, or that Funaki’s holding member is incapable of being
used for the claimed intended use. In other words, we find that Funaki
anticipates claim 1, and, thus, renders the claimed joint connector
unpatentable. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (A
disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for anticipation is the epitome of
obviousness.).4
We sustain the rejection of claim 1, and dependent claims 2 and 3, as
unapatentable over Funaki. However, because our analysis differs from the
Examiner’s, we designate our affirmance of the Examiner’s rejection as a
new ground of rejection pursuant to 37 C.F.R. § 41.50(b) to provide
Appellants with a fair opportunity to react.
Claim 14
Claim 14, which depends from claim 1, recites that the connector is
translucent. The Examiner acknowledges that Funaki does not disclose this
limitation, but concludes that it would have been an obvious matter of design
choice to make Funaki’s connector translucent, because Appellants fail to

4 In the Reply Brief, Appellants provide comments pertaining to the
Examiner’s reference to Moore (see Answer 21). Reply Br. 7–8. The
Examiner does not state that Moore is applied as a reference in this rejection.
Moreover, we agree with the Examiner that Funaki renders the joint
connector recited in claim 1 unpatentable.
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“disclose[] that making the connector translucent solves any stated problems
or is for any particular purpose and it appears that the invention would
perform equally well with an opaque connector.” Answer 9.
Appellants explain that making the connector translucent facilitates
confirmation of an abutting relationship between the drywall and the
connector. Appeal Br. 23. The Examiner responds that “the choice of
materials and appearance would be arbitrary.” Answer 21.
A claimed modification to the prior art may be obvious if the claimed
structure performs the same function as in the prior art and it presents no
novel or unexpected result over the prior art. See In re Kuhle, 526 F.2d 553,
555 (CCPA 1975) (use of claimed feature solves no stated problem and
presents no unexpected result and “would be an obvious matter of design
choice within the skill of the art”). Here, however, Appellants explain that
the claimed translucent connector does address a problem—that is, allowing
the edges of drywall to be visible. In support, Appellants’ Specification
describes, “[i]n some applications, the connector 7 will be translucent to
allow the edges of the drywall to be visible.” See Spec. ¶ 6. This disclosure
supports Appellants’ contention. As the Examiner appears to disregard this
disclosure as well as Appellants’ associated contention, we do not sustain
the rejection of claim 14 over Funaki.
Obviousness of claims 3 and 4 over Funaki and Amos
Claim 3, which depends from claim 1, recites that “at least one of the
said mud legs has a slight interference with said tapered portion of said
drywall edge.” Claim 4, which depends from claim 3, recites that “said
interference of said mud leg with said tapered portion of said drywall edge
increases in a direction away from said column.” The Examiner relies on
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Amos for teaching the limitations of claims 3 and 4, referencing leg
elements 32 shown in Figure 2. Answer 9–10.
Appellants contend that Amos’ element 32 facilitates a cover that adds
a non-continuous surface seam to adjacent panels, and that Amos also does
not disclose the limitation, “a column projecting from said base a distance
less than an untapered thickness of said drywall,” as recited in claim 1.
Appeal Br. 23–24. The Examiner responds that Amos is relied upon in the
rejection to teach a connector having a friction-fit-type connection. Answer
21.
As discussed above, we agree with the Examiner that Funaki renders
the joint connector recited in claim 1 unpatentable. Appellants’ contentions
do not address the Examiner’s stated rejection for claims 3 and 4. Thus, we
sustain the rejection of claims 3 and 4 over Funaki and Amos. Because
claims 3 and 4 depend from claim 1, we designate our affirmance of the
rejection of claims 3 and 4 as a new ground of rejection pursuant to 37
C.F.R. § 41.50(b).
Obviousness of claim 7 over Funaki and Bifano
Claim 7 depends from claim 1 and recites that “at least one of the mud
legs has a textured surface to facilitate a bond with joint compound.” The
Examiner relies on Bifano for teaching this limitation, referencing
depressions 452 shown in Figure 12. Answer 10–11. Appellants contend
that neither Funaki nor Bifano discloses the limitation, “a column projecting
from said base a distance less than an untapered thickness of said drywall,”
as recited in claim 1. Appeal Br. 24.
Appellant’s contention is not persuasive for reasons discussed above.
Appellants’ contention also does not address the Examiner’s stated rejection
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for claim 7. Thus, we sustain the rejection of claim 7 over Funaki and
Bifano. Because claim 7 depends from claim 1, we designate our affirmance
of the rejection of claim 7 as a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
Obviousness of claims 8, 11, and 22 over Funaki and Moore
Claims 8, 11, and 22 each depend from claim 1. Appellants contend
that neither Funaki nor Bifano discloses the limitation, “a column projecting
from said base a distance less than an untapered thickness of said drywall,”
recited in claim 1. Appeal Br. 24. This contention is not persuasive in
regard to claims 8, 11, and 22 for reasons discussed above.
Further, claim 22 recites that “said connector has a tapered edge on
said base.” Figure 1A shows tapered edge 16 provided on base 10. See
Spec. ¶ 7. The Examiner finds that Moore discloses a tapered end on the
base, referencing spurs or whiskers 23 shown in Figure 5. Answer 12.
Appellants contend that the claims require the column to project forward
from the base, whereas Moore’s spline 22 projects rearward from mud legs.
Appeal Br. 25.
The Examiner responds that Moore discloses base 22, and the end of
the column and the tapered ends are item 23. Answer 22. The Examiner
also determines that it would have been obvious to taper the ends to allow
for easier assembly, adding that it is well known to taper or chamber sharp
edges “to allow for easier insertion of items like panels into openings.” Id.
Moore discloses “[s]purs or whiskers 23 on spline 22 [that] help hold
strip 20 in place.” Moore, col. 2, ll. 51–52. As to claim 22, it is not apparent
how Moore’s spurs 23 would allow for easier insertion of panels into
openings. Accordingly, the Examiner does not provide an adequate reason
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with a rational underpinning to combine the teachings of Funaki and Moore
to result in the connector recited in claim 22.
We sustain the rejection of claims 8 and 11 over Funaki and Moore.
Because claims 8 and 11 depend from claim 1, we designate our affirmance
of the rejection of claims 8 and 11 as a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
We do not sustain the rejection of claim 22 over Funaki and Moore.
Obviousness of claim 9 over Funaki and Santa Cruz;
Obviousness of claim 10 over Funaki and Hoffmann, Sr.; and
Obviousness of claim 12 over Funaki and Dunlap
For claims 9, 10, and 12, each depending from claim 1, Appellants
contend that Funaki and Santa Cruz, Hoffman, Sr., and Dunlap fail to
disclose the limitation, “a column projecting from said base a distance less
than an untapered thickness of said drywall,” recited in claim 1. Appeal Br.
25–26.
Appellant’s contention is not persuasive for reasons discussed above.
Appellants’ contention also does not address the Examiner’s stated
rejections for claims 9, 10, and 12. Thus, we sustain the rejections of these
claims for the same reasons as those for the rejection of claim 1. Because
claims 9, 10, and 12 depend from claim 1, for each respective rejection we
designate our affirmance as a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
Obviousness of claim 25 over Funaki and Wambaugh
Claim 25, which depends from claim 1, recites that “said mud leg has
a thickness substantially less thick than a thickness of said base.” The
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Examiner relies on Wambaugh for disclosure of this limitation. Answer 14
(citing Wambaugh, Fig. 1A).
Appellants contend that both Funaki and Wambaugh fail to disclose
the limitation, “a column projecting from said base a distance less than an
untapered thickness of said drywall,” recited in claim 1. Appeal Br. 27.
This contention is not persuasive for reasons discussed above. Appellants’
contention also does not address the Examiner’s stated rejection of claim 25.
Thus, we sustain the rejection of claim 25 for the same reasons as those for
claim 1. Because claim 25 depends from claim 1, we designate our
affirmance as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
Obviousness of claim 27 over Funaki, Moore, Amos, and Wambaugh
For reasons similar to those discussed above for claim 1, we construe
independent claim 27 as being directed to the joint connector, and as reciting
an intended use for the joint connector—that is, “for connecting in a flat
continuous surface abutting edges of tapered drywall with a predefined
untapered thickness.” The Examiner determines that it would have been
obvious to use Funaki’s joint connector for this intended use. Answer 15.
The Examiner determines that Funaki fails to disclose that the base of
the joint connector is “an extruded polymeric base.” The Examiner finds
that Moore discloses an extrusion, and concludes that it would have been
obvious to make Funaki’s joint connector from a polymeric material to
provide strength, light weight, and corrosion resistance. Answer 15. The
Examiner also determines that Funaki and Moore fail to disclose that the
mud legs have a surface in slight interference with a tapered portion of a
drywall edge. Id. The Examiner finds that Amos teaches this feature and
concludes that it would have been obvious to combine the interference
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characteristics taught by Amos with Funaki and Moore to provide a strong
connection between the drywall and connector. Id. at 16. The Examiner
also finds that Funaki, Moore, and Amos do not teach mud legs having a
thickness less than that of the base. Id. The Examiner finds that Wambaugh
teaches this thickness and concludes that it would have been obvious to
combine this feature with Funaki, Moore, and Amos, “to provide a
lightweight clip reinforced where it is fastened to the supporting structure.”
Id.
Appellants contend that Funaki, Moore, and Wambaugh fail to
disclose the limitation, “a column projecting from said base a distance less
than an untapered thickness of said drywall,” recited in claim 27. Appeal
Br. 27–28. This contention is not persuasive for reasons discussed above.
Appellants’ contentions regarding Wambaugh do not address the Examiner’s
stated reason for relying on Wambaugh. Id. at 28. Thus, we sustain the
rejection of claim 27 for the same reasons as those discussed for claim 1.
Because claim 27 depends from claim 1, we designate our affirmance as a
new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
Obviousness of claim 29 over Wambaugh
For reasons similar to those discussed above for claim 1, we construe
independent claim 29 as being directed to the joint connector, and as reciting
an intended use for the joint connector—that is, “for connecting in a flat
continuous surface abutting edges of tapered drywall.” The Examiner
determines that Wambaugh discloses all of the limitations of claim 29.
Answer 16–17. The Examiner finds that Wambaugh does not disclose that
the drywall edge clip is for use on tapered edge drywall, but concludes that it
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would have been obvious to use Funaki’s joint connector for this intended
use. Id. at 17.
Appellants contend that “Wambaugh provides a clip for panels that
are angled from one another and preferably support one another in an arch
relationship . . . .” Appeal Br. 29. However, as depicted in Figure 1A of
Wambaugh, an embodiment of the edge clip includes tabs 1, which, as
shown, can be parallel to cross member 3. See also Wambaugh, ¶¶ 8, 17.
Although Wambaugh discloses that tabs 1 can be bent, such as indicated by
arrows in Figure 1A, Wambaugh’s disclosure includes the non-bent
orientation of tabs 1 shown in Figure 1A. Appellants do not explain
persuasively why the edge clip of Wambaugh having a non-bent
configuration of the tabs is incapable of being used for the intended use
recited in claim 29. Accordingly, Appellants’ contention is not persuasive.
Appellants also contend that: Wambaugh’s tabs “do not provide a
function of reduction of the layers of joint compound that must be applied as
does Appellants mud legs (flaps)[]”; “the use of the Wambaugh clip as
previously explained concerning Claim 27 does not allow for the use of
fasteners or adhesives to connect the drywall panels to a structure adjacent
the connector as desired in Appellants' environment[]”; and “Wambaugh
does not relate to reducing or eliminating the need for joint tape and
reducing the required number of application layers of joint compound in
abutting panels of tapered edge dry wall.” Neither one of these contentions
apprises us of any structural limitations recited in claim 29 that are missing
in Wambaugh’s edge clip, or explains persuasively why Wambaugh’s edge
clip is incapable of being used for the intended use of the joint connector
recited in claim 29.
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Thus, Appellants fail to show persuasively that Wambaugh lacks any
structural limitation of the joint connector recited in claim 29, or that
Wambaugh’s edge clip is incapable of being used for the claimed intended
use. In other words, we find that Wambaugh anticipates claim 29, and, thus,
renders the claimed joint connector unpatentable. See In re Fracalossi, 681
F.2d at 794.
Thus, we sustain the rejection of claim 29 as unpatentable over
Wambaugh. Because our analysis for claim 29 differs from the Examiner’s,
we designate our affirmance of the rejection as a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b).
Obviousness of claim 30 over Wambaugh and Bifano; and
Obviousness of claim 31 over Wambaugh and Santa Cruz
Appellants rely on the dependency of claims 30 and 31 from claim 29
for patentability. Appeal Br. 29–30. Thus, we also sustain the rejection of
claim 30 as unpatentable over Wambaugh and Bifano, and the rejection of
claim 31 as unpatentable over Wambaugh and Santa Cruz, for similar
reasons as for claim 29. Because claims 30 and 31 depend from claim 29,
for both rejections, we designate our affirmance as a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b).
Obviousness of claim 36 over Moore, Wambaugh, and Bifano.
Independent claim 36 is directed to a method of constructing a flat
continuous surface drywall and supporting structure assembly. The claim
recites, inter alia, “joining said structural member with said sheets of
drywall with lateral fillets of an expanding adhesive that when applied and
cured connects the drywall and connector to the supporting structure.” The
Examiner finds that neither Moore nor Wambaugh teaches a structural
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member joined to sheets of drywall by lateral fillets of adhesive. Answer 19.
The Examiner determines that it would have been obvious to secure the
connector of Moore and Wambaugh with adhesive instead of a mechanical
fastener, as taught by Bifano, in order “to secure the connectors to the
support structure with minimal effort.” Id.
Appellants contend that each of Moore, Wambaugh, and Bifano fails
to disclose a structural member joined to sheets of drywall by lateral fillets
of adhesive. Appeal Br. 30. However, the Examiner correctly notes that this
contention does not address the stated rationale for using adhesive to join a
structural member to sheets of drywall in the combination of Moore,
Wambaugh, and Bifano. Answer 24. As Appellants do not apprise us of
any error in the Examiner’s findings or rationale, we sustain the rejection of
claim 36.

DECISION
We REVERSE the rejection of claims 1, 27, and 36, and AFFIRM the
rejection of claim 29, under 35 U.S.C. § 112, second paragraph.
We enter a NEW GROUND OF REJECTION of claims 30 and 31
under 35 U.S.C. § 112, second paragraph, pursuant to 37 C.F.R. § 41.50(b).
We AFFIRM the rejection of claims 1, 2, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Funaki and designate our affirmance as a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
We REVERSE the rejection of claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Funaki.
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We AFFIRM the rejection of claims 3 and 4 under 35 U.S.C. § 103(a)
as unpatentable over Funaki and Amos and designate our affirmance as a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
We AFFIRM the rejection of claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Funaki and Bifano and designate our affirmance as a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
We AFFIRM the rejection of claims 8 and 11 under 35 U.S.C.
§ 103(a) as unpatentable over Funaki and Moore and designate our
affirmance as a NEW GROUND OF REJECTION pursuant to 37 C.F.R.
§ 41.50(b).
We REVERSE the rejection of claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Funaki and Moore.
We AFFIRM the rejection of claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Funaki and Santa Cruz and designate our affirmance as a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
We AFFIRM the rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Funaki and Hoffmann, Sr. and designate our affirmance as
a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
We AFFIRM the rejection of claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Funaki and Dunlap and designate our affirmance as a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
We AFFIRM the rejection of claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Funaki and Wambaugh and designate our affirmance as a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
We AFFIRM the rejection of claim 27 under 35 U.S.C. § 103(a) as
unpatentable over Funaki, Moore, and Wambaugh and designate our
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affirmance as a NEW GROUND OF REJECTION pursuant to 37 C.F.R.
§ 41.50(b).
We AFFIRM the rejection of claim 29 under 35 U.S.C. § 103(a) as
unpatentable over Wambaugh and designate our affirmance as a NEW
GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
We AFFIRM the rejection of claim 30 under 35 U.S.C. § 103(a) as
unpatentable over Wambaugh and Bifano and designate our affirmance as a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
We AFFIRM the rejection of claim 31 under 35 U.S.C. § 103(a) as
unpatentable over Wambaugh and Santa Cruz and designate our affirmance
as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
We AFFIRM the rejection of claim 36 under 35 U.S.C. § 103(a) as
unpatentable over Moore, Wambaugh, and Bifano and designate our
affirmance as a NEW GROUND OF REJECTION pursuant to 37 C.F.R.
§ 41.50(b).
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides
“Appellant[s] may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains NEW GROUNDS OF REJECTION pursuant
to 37 C.F.R. § 41.50(b), which provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejections,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejections, including any timely request for rehearing
thereof.
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-IN-PART; 37 C.F.R. § 41.50(b)