Ex Parte Hoggan

Board of Patent Appeals and Interferences

Jun 21, 2012

10754156 (B.P.A.I. Jun. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/754,156 01/09/2004 Patrick R. Hoggan PHOGB 7510
7590 06/22/2012
Thompson E. Fehr
Goldenwest Corporate Center
Suite300
5025 Adams Avenue
Ogden, UT 84403
EXAMINER
FERGUSON, MICHAEL P
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
06/22/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PATRICK R. HOGGAN
____________________

Appeal 2010-007606
Application 10/754,156
Technology Center 3600
____________________

Before JOHN C. KERINS, CHARLES N. GREENHUT, and
PATRICK R. SCANLON, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Patrick R. Hoggan (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-98. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s invention is directed to a baluster having one or both ends
beveled. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An improved baluster having a perimeter, an
upper end with a cross-sectional shape, a lower
end with a cross-sectional shape, and a
longitudinal axis, wherein the improvement
comprises:
the baluster, near the lower end of the baluster,
being beveled, by indentation, at every point along
the perimeter of the baluster, thereby creating a
slanted surface adjacent to the lower end of the
baluster.
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1-3, 5, 6, 8-10, 12, 13, 15-18, 20, 21, 23-25, 27, 28, 30,
69-71, 73, 74, 76-78, 80, 81 and 83 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Matsushita (JP 54-13637, published February 1,
1979).
2. Claims 4, 7, 11, 14, 19, 22, 26, 29, 72, 75, 79 and 82 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Matsushita.
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3. Claims 31-68 and 84-98 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Matsushita in view of Erwin (US
5,626,331, issued May 6, 1997).

ISSUES
Did the Examiner err in finding that Matsushita discloses a baluster
having upper and lower beveled ends?
Did the Examiner err in finding that Matsushita discloses a beveled
baluster end in which an indentation forming a slanted surface varies around
the perimeter of the baluster at a given distance from the end of the baluster?
Did the Examiner err in finding that Matsushita discloses a beveled
baluster end in which the slanted surface is curved when viewed in a plane
containing the longitudinal axis of the baluster?
Did the Examiner err in concluding that it would have been obvious to
one skilled in the art at the time the invention was made to modify the
baluster of Matsushita so that the upper and lower ends have a square cross-
sectional shape?
Did the Examiner err in concluding that it would have been obvious to
one skilled in the art at the time the invention was made to modify the
baluster of Matsushita to be composed of polyvinyl chloride as taught by
Erwin?

ANALYSIS
1. Claims 1-3, 5, 6, 8-10, 12, 13, 15-18, 20, 21, 23-25, 27, 28, 30, 69-71,
73, 74, 76-78, 80, 81 and 83 --Anticipation--Matsushita
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The Examiner maintains that Matsushita discloses a baluster Z having
all of the features recited in independent claim 1, including a lower end that
is beveled by indentation at every point along the perimeter of the baluster,
thereby creating a slanted surface adjacent to the lower end of the baluster.
Ans. 3.
Appellant notes that the term “beveled,” as defined in paragraph
[0007] of the Specification, means “the perimeter of the baluster proceeds
increasingly more inward as such end of the baluster is approached.”
Appellant contends Matsushita fails to show a beveled end that satisfies this
definition, arguing that the perimeter of the Matsushita baluster proceeds
outward before proceeding inward as the end is approached. App. Br. 18.
Matsushita discloses inserting an end of the baluster Z into a hole 1 formed
in a cross rail Y. Pressure is then applied axially to the baluster to cause the
inserted end to deform such that a portion extends outside the original
diameter. The cross rail Y is captured between this extended portion 3 and a
flange 2 formed on the baluster Z. This is shown in Figure 3 of Matsushita.
Figure 2 shows the baluster Z prior to deformation.
The baluster Z as shown in Figure 2 clearly has an end that is beveled
in a manner that satisfies Appellant’s definition. Because claim 1 merely
recites a baluster, as opposed to the combination of a rail and a baluster
installed in the rail, the baluster structure of Figure 2 may properly be
considered in an anticipation analysis of claim 1. This is true even through
the baluster of Figure 2 is an intermediate structure as compared to the end
use structure of Figure 3. An intermediate structure that is both intended and
appreciated may properly be considered in an anticipation analysis. See e.g.,
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In re Mullin, 481 F.2d 1333, 1335-6, (CCPA 1973)(citing In re Herbert, 461
F.2d 1390, 1394 (CCPA 1972)). Moreover, to the extent Appellant’s
argument refers to the structure of Figure 3, claim 1 uses the open-ended
transitional phrase “comprising,” meaning that the claim does not exclude
additional, unrecited elements. See MPEP § 2111.03. Thus, the fact that the
baluster as shown in Figure 3 has a portion that extends outward is not
pertinent to whether Matsushita anticipates claim 1. The portion of the
baluster shown in Figure 3 immediately adjacent to the end is beveled in a
manner that also satisfies Appellant’s definition.
Appellant argues that if the baluster of Matsushita met the
requirements of claim 1, the slanted surface would fold under the baluster
when pressure was applied axially. We disagree with this assertion. As
noted above, we find that the baluster as shown in Figure 2 of Matsushita
does meet the requirements of claim 1. Appellant has provided no support
for the contention that the Matsushita baluster would not deform in the
manner described in the reference upon the application of axial pressure.
Indeed, the English translation of Matsushita provided by Appellant states,
in lines 9-13 of page 2:
Note that it is conceived that as the end Za is tapered off
more narrowly, the thickness is increased, resulting in the
thinner portion extending corresponding to it, which is
not in particular necessary.
This passage suggests that the tapered end Za is thinner at the upper
region where the deformation occurs and gets thicker as the outer end of the
baluster is approached. This is presumably to facilitate the desired
deformation.
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Appellant’s other arguments advanced with respect to claim 1 are also
unpersuasive. Appellant contends paragraphs [0010] and [0011] of the
Specification indicate that no portion of the baluster that enters the rail
should extend beyond the edges of the cavity, as is the case with the baluster
of Matsushita. App. Br. 19. Appellant also argues that the baluster of
Matsushita must be hollow while the baluster of claim 1 can be either hollow
or solid. App. Br. 20. Neither of these arguments is commensurate with the
scope of claim 1. Claim 1 does not preclude a portion of the baluster
extending beyond the edges of a rail cavity or a hollow baluster.
Lastly, Appellant speculates that Matsushita may have never become
a patent because it does not disclose vertical slits which Appellant alleges
would be necessary to permit the desired expansion of the baluster. App. Br.
20. Whether Matsushita ever became a patent is of no significance here
because the reference cited by the Examiner was a publication that qualifies
as prior art. If Appellant is suggesting the Matsushita reference is
inoperable, we note that when a reference anticipates all of the elements of
the claimed invention, the reference is presumed to be operable. See MPEP
§ 2121. Appellant has not provided sufficient facts to overcome this
presumption of operability. “As we said in In re Boe, 355 F.2d 961, 53
CCPA 1079 (1966), ‘All of the disclosures in a reference must be evaluated
for what they fairly teach one of ordinary skill in the art.’ The use of patents
as references is not limited to what the patentees describe as their own
inventions or to the problems with which they are concerned. They are part
of the literature of the art, relevant for all they contain.” In re Lemelson, 397
F.2d 1006, 1009 (CCPA 1968).
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For the reasons discussed above, we sustain the rejection of claim 1 as
being anticipated by Matsushita. We also sustain the rejection of claims 2, 3
and 5, which depend from claim 1 and for which Appellant does not advance
any separate arguments.
Appellant advances additional arguments for several of the other
claims that stand rejected as being anticipated by Matsushita. One such
argument is that nothing in Matsushita shows the baluster being beveled near
its upper end so as to create a slanted surface as recited in claims 16 and 69.
The Examiner finds that Matsushita discloses both the upper and lower ends
of the baluster are beveled, thereby creating slanted surfaces adjacent the
upper and lower ends. Ans. 3. While Figures 2-4 appear to depict the
connection between the lower end of the baluster Z to a cross rail Y, Figure
1 shows both the upper and lower ends of the balusters Z connected to the
upper and lower cross rails Y, respectively, albeit not in the same level of
detail used in Figures 2-4. Furthermore, Matsushita describes connecting
the balusters Z to the upper and lower rails Y in line 29 on page 1 of the
English translation. Therefore, we conclude that Matsushita intends for the
upper and lower ends of the balusters to be connected to the corresponding
rails in the same manner. We thus agree with the Examiner that Matsushita
discloses both ends of the balusters Z being beveled. As such, we sustain
the rejection of claims 16 and 69 as being anticipated by Matsushita. We
also sustain the rejection of claims 17, 18, 20, 70, 71 and 73, which depend
from claim 16 or 69 and for which Appellant does not advance any separate
arguments.
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Another argument advanced by Appellant is that Matsushita fails to
disclose that the indentation forming the slanted surface varies around the
perimeter of the baluster at a given distance from the corresponding end of
the baluster. This limitation is recited in claims 6, 13, 21, 28, 74 and 81.
The Examiner finds that Matsushita discloses this feature. In support
of this finding, the Examiner asserts that the tangential angle of the slanted
surface varies around the perimeter of the baluster and the diameter of the
slanted surface varies along the length of the baluster at any given distance
from a respective end of the baluster. Ans. 4-5. The first assertion fails
because the Examiner has not established that a varying tangential angle
necessarily means that the indentation forming the slanted surface also
varies. No connection between the tangential angle and the degree of
indentation is shown. The Examiner’s second contention also fails. We
disagree that a variance in diameter along the length of the baluster equates
to a variance at any given distance from the end of the baluster. The phrase
“along the length” is essentially opposite in meaning to “at a given distance
from the end.”
As such, we find the Examiner’s reasoning to be unpersuasive and
conclude that Matsushita does not disclose a baluster in which the
indentation forming the slanted surface varies around the perimeter at a
given distance from the corresponding end of the baluster. We are unable to
sustain the Examiner’s rejection of claims 6, 13, 21, 28, 74 and 81, and of
claims 8, 15, 23, 30, 76 and 83 depending therefrom, as being anticipated by
Matsushita.
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Appellant also argues that Matsushita does not disclose that the
slanted surface is curved when viewed in a plane containing the longitudinal
axis of the baluster. This limitation is recited in claims 9, 24 and 77.
The Examiner contends that the slanted surface of the Matsushita
baluster is “curved at a bend point in a plane extending along the
longitudinal axis.” Ans. 28. Figure 3 of Matsushita does show a curved
bend in the baluster Z adjacent to the flange 2. However, claims 9, 24 and
77 require that the slanted surface be curved, and we do not agree that the
bend is part of the slanted surface of Matsushita. Independent claims 1 and
69 require that the slanted surface is created by the baluster being beveled by
indentation. The bend in Figure 3 is not an indented portion of the baluster
and thus cannot be considered to be part of the slanted surface. The
Examiner further asserts that the slanted surface is curved in cross-section in
a plane intersecting the longitudinal axis. We find this statement to be
unpersuasive because a plane that intersects the longitudinal axis does not
“contain” the longitudinal axis as required by the claims. We interpret the
claim language “when viewed in a plane containing the longitudinal axis,”
as compared to, for example, “when viewed from a plane containing the
longitudinal axis,” to mean that it is the curvature and not the viewpoint that
resides in the plane containing the longitudinal axis. Accordingly, we
reverse the Examiner’s rejection of claims 9, 24 and 77, and of claims 10,
12, 25, 27, 78 and 80 depending therefrom, as being anticipated by
Matsushita.

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2. Claims 4, 7, 11, 14, 19, 22, 26, 29, 72, 75, 79 and 82--Obviousness--
Matsushita
Each of claims 4, 7, 11, 14, 19, 22, 26, 29, 72, 75, 79 and 82 recites
that the cross-sectional shape of the beveled end is square. The Examiner
maintains that it would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the baluster of Matsushita
to provide the upper and lower ends with a square cross-sectional shape.
Ans. 6-7. Appellant does not offer any arguments suggesting that it would
not have been obvious to have a square cross-sectional shape. App. Br. 23-
24. We agree with the Examiner, but moreover note that Matsushita
discloses that the balusters Z may be manufactured from square or round
pipes. We thus sustain the rejection of claims 4, 19 and 72. However, the
rejection of claims 7, 11, 14, 22, 26, 29, 75, 79 and 82 under 35 U.S.C. §
103 is reversed because these claims depend from claims found above to be
erroneously rejected.

3. Claims 31-68 and 84-98--Obviousness-- Matsushita/Erwin
Claims 31, 46, 61, 62 and 84 each recite that the baluster is composed
of polyvinyl chloride. The Examiner concedes that Matsushita does not
disclose a baluster composed of polyvinyl chloride and concludes that it
would have been obvious to one having ordinary skill in the art at the time
the invention was made to modify the baluster of Matsushita to be composed
of polyvinyl chloride as taught by Erwin. Ans. 9. Erwin discloses a spindle
or baluster 10 comprising a polyvinyl chloride (PVC) outer shell 11, a steel
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tubular reinforcing element 12, and polyurethane foam 13, 14. Erwin, col. 2,
ll. 60-67.
Appellant contends that Erwin teaches away from using a baluster
composed of polyvinyl chloride, but provides no support for this contention
other than citing the passage found in column 4, lines 5-12, of Erwin. App.
Br. 25. The Federal Circuit has held “[a] reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed.Cir.1994)). We see nothing in Erwin, particularly in the
passage cited by Appellant, which would discourage a person of ordinary
skill in the art from modifying the baluster of Matsushita to be composed of
polyvinyl chloride. Erwin clearly identifies PVC as a suitable material to
use in constructing balusters and notes that PVC has the beneficial
characteristic of being weather resistant. Erwin, col. 4, ll. 9-11. The passage
in Erwin relied on by Appellant simply states “typical” building code
requirements for strength “typically” are not met by producing a hollow
spindle of a similar shape out of PVC. However, we do not find this
statement to be sufficiently disparaging of PVC to discourage a person of
ordinary skill in the art from using PVC as a component of the baluster of
Matsushita. Accordingly, we find unpersuasive Appellant’s argument that
Erwin teaches away from the proposed combination.
We thus sustain the rejection of claims 31, 46, 61, 62 and 84, and
claims 32-35, 47-50 and 85-88, which depend from one of claims 31, 46 or
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84. The rejection of claims 36-45, 51-60 and 89-98, which also depend from
one of claims 31, 46 or 84, is reversed because these claims either recite
subject matter found above to be erroneously rejected or depend from a
claim that recites subject matter found above to be erroneously rejected.
Regarding independent claims 63-68, in addition to reciting a baluster
composed of polyvinyl chloride, each of these claims recites the indentation
forming the slanted surface varies around the perimeter of the baluster at a
given distance from the corresponding end of the baluster; the slanted
surface is curved when viewed in a plane containing the longitudinal axis of
the baluster; or both. Because we have determined that neither Matsushita
taken alone nor the combination of Matsushita and Erwin discloses these
features, the rejection of claims 63-68 is reversed.

CONCLUSIONS
The Examiner did not err in finding that Matsushita discloses a
baluster having upper and lower beveled ends.
The Examiner did err in finding that Matsushita discloses a beveled
baluster end in which an indentation forming a slanted surface varies around
the perimeter of the baluster at a given distance from the end of the baluster.
The Examiner did err in finding that Matsushita discloses a beveled
baluster end in which the slanted surface is curved when viewed in a plane
containing the longitudinal axis of the baluster.
The Examiner did not err in concluding that it would have been
obvious to one skilled in the art at the time the invention was made to
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modify the baluster of Matsushita so that the upper and lower ends have a
square cross-sectional shape.
The Examiner did not err in concluding that it would have been
obvious to one skilled in the art at the time the invention was made to
modify the baluster of Matsushita to be composed of polyvinyl chloride as
taught by Erwin.

DECISION
The Examiner’s rejection of claims 1-3, 5, 16-18, 20, 69-71 and 73
under 35 U.S.C. § 102(b) as being anticipated by Matsushita is affirmed.
The Examiner’s rejection of claims 6, 8-10, 12, 13, 15, 21, 23-25, 27,
28, 30, 74, 76-78, 80, 81 and 83 under 35 U.S.C. § 102(b) as being
anticipated by Matsushita is reversed.
The Examiner’s rejection of claims 4, 19 and 72 under 35 U.S.C.
§ 103(a) as being obvious over Matsushita is affirmed.
The Examiner’s rejection of claims 7, 11, 14, 22, 26, 29, 75, 79 and
82 under 35 U.S.C. § 103(a) as being obvious over Matsushita is reversed.
The Examiner’s rejection of claims 31-35, 46-50, 61, 62 and 84-88
under 35 U.S.C. § 103(a) as being obvious over Matsushita in view of Erwin
is affirmed.
The Examiner’s rejection of claims 36-45, 51-60, 63-68 and 89-98
under 35 U.S.C. § 103(a) as being obvious over Matsushita in view of Erwin
is reversed.
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) (2009).
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AFFIRMED-IN-PART

MP