Ex Parte Libby et al

Patent Trial and Appeal Board

Mar 30, 2018

14340003 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/340,003 07/24/2014
26158 7590 04/03/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
James B. Libby
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.
A202 10320US.C2 3993
EXAMINER
GILBERT, WILLIAM V
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES B. LIBBY and DAVID PLUMMER
Appeal2017-006695
Application 14/340,003 1
Technology Center 3600
Before MICHAEL L. HOELTER, BRETT C. MARTIN, and
PAUL J. KORNICZKY, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is Andersen Corporation. App. Br. 2.
Appeal2017-006695
Application 14/340,003
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-21 and 23-27. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
THE INVENTION
Appellants' claims are directed generally to "a fenestration system
that includes an array of individual standardized window units and an array
of architectural accessories selectively attachable to the standardized
window units." Spec. 1, 1. 20-2, 1. 1. Claim 22 was previously canceled.
App. Br. 2. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A modular fenestration system comprising:
a collection of individual functional window units
including a plurality of functional window units having different
configurations with the functional window units of at least some
of the different configurations having a plurality of different
sizes, the individual functional window units each comprising a
frame having a frame perimeter;
a common mulling system comprising a coupling
mechanism configured to establish a predetermined common
spacing between the frame of one functional window unit of the
collection and the frame of another functional window unit of the
collection attached by the coupling mechanism;
the functional window units of the collection being
configured such that, when combined to form a compound
functional unit, the resulting compound functional unit exhibits
a predetermined set of common physical features regardless of
which functional window units of the collection are selected to
form the compound functional unit;
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Application 14/340,003
a plurality of architecturally distinct exterior trim units
configured to be selectively attached at least to some of the
individual functional window units and to compound functional
units formed therefrom;
a common attachment mechanism for attaching exterior
trim units to the functional window units and to compound
functional units formed therefrom;
a plurality of architecturally distinct grille units each
configured to be secured to at least some of the individual
functional window units;
a common attachment mechanism for attaching selected
grill units of the plurality of grill units to functional window
units; and
a plurality of architecturally distinct hardware units
configured to be selectively secured to at least some of the
individual functional window units.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Strobl
Folsom
us 5, 125,207
US 2003/0126812 Al
REJECTIONS
The Examiner made the following rejections:
June 30, 1992
July 10, 2003
Claims 1-3, 5-10, and 19-23 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Folsom. Ans. 3.
Claims 4 and 11-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Folsom. Ans. 10.
Claims 24--29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Folsom and Strobl. Ans. 14.
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Application 14/340,003
ANALYSIS
The Examiner finds that all elements of claims 1 and 21, the sole
independent claims at issue, are taught by Folsom. See, e.g., Ans. 3-5.
Appellants argue that the "Examiner has made a number of factual errors in
concluding that Folsom discloses each and every element set forth in claim
1." Reply Br. 5. Specifically, Appellants argue, inter alia, that the
Examiner erred in finding Folsom's sash frame "to be a stand-alone or
individual functional window unit" while the Examiner identifies Folsom's
"main frame" as the claimed mulling system. See, e.g., Reply Br. 4, Final
Act. 4. Appellants argue that Folsom actually teaches "the main frames of
two individual non-opening casement window units that are attached back-
to-back with dog bone couplers." Id.
We must determine, then, what constitutes a "functional window unit"
and therefore, whether the Examiner is pointing to a portion of the functional
window unit or an element that can properly be considered a "common
mulling system." As Appellants point out, what the Examiner has identified
as a "functional window unit" as claimed is actually a sash and sash frame.
Id. We agree with Appellants that the prior art recognizes that "the
individual casement window unit includes the main frame that surrounds and
supports the sash frame/glass unit" and that "[a]t no point is the sash frame
considered, by itself, to be a stand-alone or individual functional window
unit." Id. These terms are consistently understood by those of ordinary skill
in this art as acknowledged both in the prior art at issue as well as
Appellants' disclosure. Id. ("the skilled artisan comes to the table with
knowledge and an understanding of what is meant by certain terms
commonly used in the art of window making" and "explicit examples of
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Application 14/340,003
[certain] terms are illustrated in FIGS. 1-3 and clarify the intended meanings
of the claim terms"). We simply do not agree that a sash and sash frame
alone can be considered a functional window unit as the Examiner has done.
See Ans. 16-17. Further, what the Examiner has identified as the common
mulling system is actually the main frame in Folsom. Final Act. 4, 6. It is,
thus, part of the "functional window unit" and, therefore, cannot be
considered a separate "common mulling system" as interpreted by the
Examiner.
We also agree that the Examiner has erred in construing the term
"exterior trim unit." According to the Examiner, "'exterior' is a relative
term of art, and Appellants do not claim the system in an installed position,
nor do Appellants provide a reference point with which to consider
'exterior."' Ans. 17. The Examiner does not appear to dispute that
Appellants are correct in pointing out that what the Examiner has identified
as an "exterior trim unit" would actually be on the interior side of the
window when installed. The Examiner only argues that because the claims
do not require reference to an installed window, the terms "exterior" and
"interior" essentially can be ignored. Id. We agree with Appellants,
however, that one of ordinary skill in this art would understand "exterior" as
utilized in the claim to refer to a side of the window that is intended to be on
the outside, whether or not the window is actually installed. Thus, the
user/interior side of the window is distinct from the outside/exterior side of
the window and the Examiner has pointed to elements as allegedly meeting
"exterior trim units" that one skilled in the art would understand are actually
on the interior side of the window.
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We also agree that, given the proper definition of "functional window
unit" to include both the sash frame and the main frame, even if the
Examiner had properly identified an exterior side of the window, the
portions surrounded by box C (Ans. 5) "are actually portions of the
integrally-formed pultruded main frame sections, and thus are not selectively
attachable or detachable to the individual or compound functional units" as
claimed. Reply Br. 9. In other words, being an integral part of the frame,
element C as identified by the Examiner cannot be the claimed "exterior trim
unit" because it is not selectively attachable or detachable.
For the above reasons, we do not sustain the Examiner's rejection of
claim 1 or the claims dependent therefrom. Claim 21 contains similar
language regarding "functional window units" and thus, likewise, what the
Examiner has identified as a common mulling system is actually part of the
functional window unit of claim 21 as well. As such, we do not sustain the
rejection of claim 21 or any claims dependent therefrom. Strobl does not
cure the above-noted deficiency and so, the rejection over Folsom and Strobl
is also reversed.
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 1-21 and 23-27.
REVERSED
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