Ex Parte Grau

Patent Trials and Appeals Board

Apr 30, 2019

14828120 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/828,120 08/17/2015
88360 7590 05/02/2019
Richards Patent Law P.C.
233 S. Wacker Dr., 84th Floor
Chicago, IL 60606
FIRST NAMED INVENTOR
William Grau
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1064-003 4949
EXAMINER
KENNY, DANIEL J
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
05/02/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@richardspatentlaw.com
eofficeaction@appcoll.com
robin@richardspatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM GRAU1
Appeal2018-006433
Application 14/828, 120
Technology Center 3600
Before STEFAN STAICOVICI, BRETT C. MARTIN, and JILL D. HILL,
Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies William Grau as the real party in interest. Br. 3.
Appeal2018-006433
Application 14/828, 120
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 19-24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant's claims are directed generally "to an interlocking siding
design that provides an external profile through which there are no
perforations exposed after installation." Spec. ,r 2. Claim 19, the only
independent claim and reproduced below, is illustrative of the claimed
subject matter:
19. An interlocking panel system for siding comprising:
a first interlocking panel comprising:
a first front face;
a first rear face;
a first top edge, wherein the first top edge includes
a first top front edge that extends above a first top rear
edge, wherein the first top front edge is adjacent to the first
front face, wherein the first top rear edge is adjacent to the
first rear face, wherein a width of the first top edge is
equivalent to the sum of a width of the first top front edge
and a width of the first top rear edge; and
a first lower edge, wherein the first lower edge
includes a first bottom front edge that extends below a first
bottom middle edge and a first bottom rear edge, further
wherein the first bottom rear edge extends below the first
bottom middle edge, wherein the first bottom front edge is
adjacent to the first front face, wherein the first bottom rear
edge is adjacent to the first rear face, wherein the first
bottom front edge is perpendicular to the first front face,
wherein the first bottom middle edge is located at a
centerline of the first lower edge, wherein a width of the
first lower edge is equivalent to the sum of a width of the
first bottom front edge, a width of the first bottom middle
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Application 14/828, 120
edge, and a width of the first bottom rear edge, wherein
the first bottom middle edge is the same width as the first
top front edge and the first bottom rear edge is the same
width as the first top rear edge; and
a first fastener notch located in the first front face
below the first top front edge and the first top rear edge;
and
a second interlocking panel comprising:
a second front face;
a second rear face;
a second top edge, wherein the second top edge
includes a second top front edge that extends above a
second top rear edge, wherein the second top front edge is
adjacent to the second front face, wherein the second top
rear edge is adjacent to the second rear face, wherein a
width of the second top edge is equivalent to the sum of a
width of the second top front edge and a width of the
second top rear edge;
a second lower edge, wherein the second lower edge
includes a second bottom front edge that extends below a
second bottom middle edge and a second bottom rear
edge, further wherein the second bottom rear edge extends
below the second bottom middle edge, wherein the second
bottom front edge is adjacent to the second front face,
wherein the second bottom rear edge is adjacent to the
second rear face, wherein the second bottom front edge is
perpendicular to the second front face, wherein the second
bottom middle edge is located at a centerline of the second
lower edge, wherein a width of the second lower edge is
equivalent to the sum of a width of the second bottom front
edge, a width of the second bottom middle edge, and a
width of the second bottom rear edge, wherein the second
bottom middle edge is the same width as the second top
front edge and the second bottom rear edge is the same
width as the second top rear edge; and
a second fastener notch located in the second front
face below the second top front edge and the second top
rear edge;
wherein, when assembled, the first bottom front
edge of the first interlocking panel is located below the
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Appeal2018-006433
Application 14/828, 120
second fastener notch of the second interlocking panel
such that a fastener located within the second fastener
notch is covered by the first bottom front edge of the first
interlocking panel.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Shull
Black
Swanson
Wilson
us 492,736
US 2003/0056458 Al
US 7,712,277 B2
US 8,091,313 B2
REJECTIONS
The Examiner made the following rejections:
Feb.28, 1893
Mar. 27, 2003
May 11, 2010
Jan. 10,2012
Claims 19 and 22-24 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Shull, Black, and Swanson. Final. Act. 2.
Claims 20 and 21 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Shull, Black, Swanson, and Wilson. Final Act. 5.
ANALYSIS
First, regarding the content of the prior art, Appellant does not
meaningfully explain why the variously recited elements are not met by the
Examiner's combination, but instead discusses each reference applied by the
Examiner individually. See Br. 6-7. Merely reciting the language of the
claims and asserting that the prior art reference or combination does not
disclose or teach each claim limitation is insufficient. See 3 7 C.F .R. §
4I.37(c)(l)(iv) ("A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.");
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Application 14/828, 120
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art."). Accordingly, we are not apprised of error in the Examiner's
findings regarding the scope and content of the prior art.
The only other argument presented by Appellant is to state that one of
skill in the art would not combine Shull and Black as proposed by the
Examiner because doing so would "undermine[] the water barrier effect of
the tongue and groove system of the Shull system." Br. 8. We agree with
the Examiner, however, that the opposite is true and that "the Shull system
would definitely benefit from the notch and nail positioning of the Black
system because Shull teaches that the nail is driven through the part of the
siding face that is exposed to the weather, ... thus exposing the nail head."
Ans. 3 ( citing Schull, Figs. 3-5).
The Examiner is correct that the resulting panel of Shull, as modified
by Black, "includes the nailing configuration taught by Black, in which the
nail head is not exposed to the weather because it is protected by the
overlying panel," wherein "fastener notch 10120 [of Black] receives the nail
head, and the notch and nail are covered by the overlying panel." Id (citing
Black, Figs. 5, 7). We further agree with the Examiner that "if the applicant
is saying that by placing the fastener notch in the claimed location of Shull' s
panel would weaken the interface, then the examiner contends that the panel
system of the current invention would also have a weakened interface." Id.
Accordingly, we are not apprised of error in the Examiner's rationale for
making the combination.
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DECISION
For the above reasons, we AFFIRM the Examiner's decision to reject
claims 19-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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