Ex Parte Lomske et al

Patent Trial and Appeal Board

Oct 29, 2013

12111262 (P.T.A.B. Oct. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEVEN G. LOMSKI and FRANCOIS J. CASTAING
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Appeal 2011-013243
Application 12/111,262
Technology Center 3600
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Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
JOHN W. MORRISON, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 32-50. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

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Claimed Subject Matter
The claimed subject matter relates to “pre-fabricated[,] . . . modular
deck, floor, and wall panel[s] which can be utilized with a sub-structure for
the construction of a deck or other flooring applications.” Spec. 1, ll. 4-6.
Claim 32, reproduced below, is illustrative of the appealed subject matter.
32. An outdoor modular panel for creating an outdoor walk,
deck or dock, said modular panel comprising:
a plurality of joists, each joist having a top portion and a
side portion;
a first member including a top surface, a bottom surface
and an outer periphery;
a one-piece homogenous second member integrally
attaching to said bottom surface adjacent to said outer
periphery, said second member having,
at least two reinforcing elements disposed below
said bottom surface of said first member;
at least two fixation elements disposed below said
outer periphery of said first member and having an
extended portion that extends below each reinforcing
element, said extended portion attaching directly without
any intervening part to said side portion of said joist,
each said fixation element laterally affixing and aligning
said modular panel to said side of a joist; and
a support flange integrally disposed about said outer
periphery of said first member and engaging said top portion of
said joist.

Rejections
The following Examiner’s rejections are before us for review:
I. claims 32-50 under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as obvious over Pettit (US
2004/0003551 A1, published Jan. 8, 2004);
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II. claims 39-42 and 45 under 35 U.S.C. § 103(a) as unpatentable
over Pettit and Peart (US 6,684,582 B2, issued Feb. 3, 2004);
III. claims 47 and 48 under 35 U.S.C. § 103(a) as unpatentable over
Pettit and Lin (US 2009/0266022 A1, published Oct. 29, 2009);
IV. claim 49 under 35 U.S.C. § 103(a) as unpatentable over Pettit,
Peart, and Winer (US 5,937,612, issued Aug. 17, 1999); and
V. claims 32, 33, and 43 under 35 U.S.C. § 103(a) as unpatentable
over Nehls (US 5,228, 252, issued Jul. 20, 1993) and Buchalter (US
6,637,161 B1, issued Oct. 28, 2003).

PRINCIPLES OF LAW
The language of a claim satisfies 35 U.S.C. § 112, second paragraph,
only if “one skilled in the art would understand the bounds of the claim
when read in light of the specification.” Exxon Research & Eng’g Co. v.
United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). “It is the applicants’
burden to precisely define the invention, not the PTO's. See 35 U.S.C.
§ 112, ¶ 2 . . . [T]his section puts the burden of precise claim drafting
squarely on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997).

OPINION
We do not sustain any of the Examiner’s rejections with respect to
claims 32-49. Pursuant to our authority under 37 C.F.R. § 41.50(b), we
enter A NEW GROUND OF REJECTION against claims 32-49 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which Appellants regard as
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the invention. We do not sustain the rejections of claims 32-49 under 35
U.S.C. § 102(b) as anticipated by Pettit, claims 39-42 and 45 under 35
U.S.C. § 103(a) as unpatentable over Pettit and Peart, claims 47 and 48
under 35 U.S.C. § 103(a) as unpatentable over Pettit and Lin, claim 49 under
35 U.S.C. § 103(a) as unpatentable over Pettit, Peart, and Winer, and claims
32, 33, and 43 under 35 U.S.C. § 103(a) as unpatentable over Nehls and
Buchalter, because the rejections necessarily are based on speculative
assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962).

Claims 32-49
The preambles of Appellants’ independent claims 32 and 33 are
directed to a modular panel; however, the body of each of the claims recites
“a plurality of joists, each joist having a top portion and a side portion.”
App. Br., Clms. App'x. In addition, the body of claim 32 also recites:
at least two fixation elements disposed below said outer
periphery of said first member and having an extended portion
that extends below each reinforcing element, said extended
portion attaching directly without any intervening part to said
side portion of said joist, each said fixation element laterally
affixing and aligning said modular panel to said side of a joist;
and a support flange integrally disposed about said outer
periphery of said first member and engaging said top portion of
said joist.
Id.
The body of claim 33 also recites:
at least two fixation elements aligning and affixing to and
directly contacting said joist, said fixation elements extending
substantially about a periphery of said outer periphery and
disposed below said outer periphery of said first member and
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having an extended portion that extends below said reinforcing
elements, said extended portion laterally attaching to said side
portion of said joist, and, a support flange integrally disposed
about said outer periphery of said first member and engaging
said top portion of said joist.
Id.
It is not clear whether Appellants’ claims 32 and 33 recite a modular
panel per se in accordance with the preambles of the claims, with intended
use language as to the panel’s attachment relationship with a joist of the
plurality of joists because the joist is not a part of the panel, or a
combination of a modular panel and a plurality of joists so that the
attachment relationship is positively recited (i.e., rather than just in intended
use language). As claims 32 and 33 are claims under examination that are
susceptible of more than one reasonable interpretation, claims 32 and 33 are
indefinite because the scopes of the claims differ significantly depending on
which of the reasonable interpretations one adopts. See Ex Parte Miyazaki,
89 USPQ2d 1207, 1211- 12 (BPAI 2008) (precedential).
Accordingly, we conclude that claims 32 and 33, and claims 34-49
dependent upon claim 33, are indefinite under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention.

Claim 50 and Anticipation based on Pettit
Independent claim 50 is directed to a method for creating an outdoor
walk, deck or dock having joists, . . . said method” including, inter alia, the
step of “driving an attachment laterally through said extended portion of said
fixation element outdoors into said joist to secure said first and second
portions to said joist.” App. Br., Clms. App’x.
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The Examiner finds that Pettit discloses “a method for creating . . . an
outdoor (paragraph 5) walk, deck (1) (Fig. 1) or dock having joists”
including, inter alia, the steps of:
attaching a one piece second member (central portion formed
by integrally molded plastic ribs 35, 41) . . . , said member
having at least two reinforcing elements (ribs 35, 41) . . . [and]
at least two fixation elements (34, 43) disposed below said
outer periphery of said first member and having an extended
portion that extends below each reinforcing elements (Fig[s]. 8,
9) and “d[r]iving an attachment (nails 63) laterally through said
extended portion (through slot 43) of said fixation member (34)
outdoors . . . into said joist to secure said first and second
portions to said joist.
Ans. 8-9 (citing Pettit, p. 1, para. [0005] and p. 3-4, para. [0054]).

Appellants argue that “claim 50 specifically requires that an
attachment is driven laterally through the extended portion”; however, in
Pettit, “the attachment peg is placed on the cap that sits on the joist without
being driven,” and “the support panel does not engage the top of the joist, it
sits on the cap.” App. Br. 6. In other words, Appellants argue that “Pettit
does not show driving an attachment laterally through said extended portion
of said fixation element outdoors into the joist . . . to secure said first and
second portions of said joist . . . as claimed in claim 50.” Id.
We are persuaded by Appellants’ argument, because the Examiner’s
finding that Pettit’s nail 63 constitutes the attachment that is driven through
the extended portion (Pettit’s slot 43) of the fixation element (Pettit’s side
member 34) is not supported by a preponderance of the evidence. As
illustrated in Pettit’s Figures 12 and 14, Pettit discloses that nails 63 are
driven into the joists 13 and 20, respectively, in order to install the channel
60 on the joists 13 and 20, respectively. See Pettit, p. 3-4, para. [0054].
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Pettit never discloses that its nails 63 are driven through the extended
portion (Pettit’s slot 43) of the fixation element (Pettit’s side member 34).
Instead, as shown in Figure 9, Pettit discloses that slots 43 slidingly receive
the pegs 23 and rib or gusset 24, as shown in Figures 5A and 6, in order to
support the panels (tiles 11) on the joists 13, 20. See Pettit, p. 2-3, para.
[0049]. Thus, we are persuaded of Examiner error by Appellants’ argument.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 50 under 35 U.S.C. § 102(b) as anticipated by Pettit.

Claim 50 and Obviousness based on Pettit
In the alternative, the Examiner concludes that “if desired, it would be
a matter of obvious design choice to eliminate members 12, 19 and attach
the extended portion directly to the wooden beam.” Ans. 9. The Examiner
explains that “[t]he method of using screws or nails to directly attach[] an
outdoor panel is well known in the art; for example, Pettit discloses a further
embodiment (Fig[s]. 24, 25) wherein the outdoor panel is attached directly to
the wooden beam.” Id. The Examiner further concludes that “[i]t would
have been obvious to one of ordinary skill in the art at the time the invention
was made to modify Pettit to use a screw or nail in the attaching slots, rather
than a cap and pin system, as such a modification would have simply been a
substitution for one known means of attaching tiles for another known
means.” Ans. 9-10.
Appellants argue that it would not have been obvious to one of
ordinary skill in the art to remove Pettit’s channels or caps 12, 19 to attach
the tiles 11 to the sides of the joist as suggested by the Examiner, because
Pettit states “since the channels 12 and 19 are essentially caps for the
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wooden joists, they tend to preserve them by preventing water from laying
on the tops of the joists which causes rot.” App. Br. 6 (citing Pettit, p. 2,
para. [0046]). In other words, Appellants argue that removing the channels
or caps 12, 19 from the tops and sides of the joist “may cause rot and ruin
the system thereby ruining the purpose of the apparatus.” Id.
The Examiner responds that “it would be a matter of obvious design
choice [to a person of ordinary skill in the art] to eliminate cap members 12,
19 and attach the extended portion directly to the wooden beam[s],” where
the particular feature of providing waterproofing was not desired. Ans. 17
(citing In re Kuhle, . . . [526 F.2d 553, 555 (]CCPA 1975) (use of claimed
feature solves no stated problem and presents not unexpected result and
“would be an obvious matter of design choice within the skill of the art”)
and In re Larson, 340 F.2d 965 . . . (CCPA 1965) (omission of additional
framework and axle which served to increase the cargo carrying capacity of
prior art mobile fluid carrying unit would have been obvious if this feature
was not desired).
Appellants reply that the Examiner has not shown “that it is well
known to attach panels to the sides of joists” for two reasons. Reply Br. 4.
First, because “flooring, such as planks, are usually attached directly to the
tops of the joists [as shown in Pettit’s Figures 24 and 25 pointed to by the
Examiner] and not directly to the sides” and second, because “Pettit does not
teach or show attaching the panels directly to the joists”; instead, “[o]nly the
Appellant[s’] disclosure” shows attaching the panels directly to the sides of
the joists. Id. Appellants further reply that the Examiner’s reliance on the
Kuhle and Larson case law is misplaced, because the present set of facts is
distinguishable in that “the cap of Pettit has more than one function and
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there is no teaching or showing that Pettit would remain functional after
removing the cap because the pins 23 on the side of the cap will no longer
exist for the placement of the panels.” Reply Br. 5.
More particularly, Appellants note that:
Pettit has slots in particular positions to allow for the easy
installation of the panels. Easy installation is no longer possible
after removal of the cap. Moreover, the cap was added to stop
the wood from disintegrating, which might allow for the use of
non-pressure treated, cheaper wood. This is not possible after
removing the cap. Finally, the cap of Pettit has to be desired to
attach the panels to the joist because the cap also has the pins.
Without the cap and the pins of Pettit, there would be no
attachment of the panels to the sides of the joist without the
teaching by the Appell[a]nts that the panel is to be attached to
the sides of the joist.
Id.
We are persuaded by Appellants’ arguments. The Examiner has
misapplied the Larson case law. In Larson, the predecessor to our reviewing
court stated that “[t]he added structure shown in the Le Clair et al. patent
serves a particular purpose in that is increases the cargo carrying capacity,”
and “[i]f this additional function is not desired, it would seem a matter of
obvious choice to eliminate it and the function it serves.” See Larson, 340
F.2d at 969. However, as pointed out by Appellants, Pettit’s channels or
caps 12, 19 serve two functions, i.e., waterproofing the tops and sides of the
joist and supporting the tiles 11. See Reply Br. 5. Thus, the Examiner’s
conclusion that it would have been an obvious matter of design choice to a
person of ordinary skill in the art to omit Pettit’s channels or caps 12, 19 and
the function the channels or caps 12, 19 serves is flawed, because the
function of supporting the tiles 11 is essential. Indeed, the Examiner
proposes to omit Pettit’s channels or caps 12, 19 because Pettit’s function of
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waterproofing may not be desired, but the Examiner acknowledges the
necessity of the supporting function by further modifying Pettit to drive
screws or nails through the slots 43 in order to meet claim 50’s driving step.
Thus, it would not have been obvious to one of ordinary skill in the art to
omit the channels or caps 12, 19 from Pettit’s joists in accordance with
Larson, because the tile 11 supporting function of the channels or caps 12,
19 is essential to Pettit’s invention.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 50 under 35 U.S.C. § 103(a) as unpatentable over Pettit.

DECISION
We REVERSE all of the Examiner’s rejections.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we ENTER A
NEW GROUND OF REJECTION against claims 32-49 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which Appellants regard as the
invention.

FINALITY OF DECISION
37 C.F.R. § 41.50(b) 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 ground 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 . . . .

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).

REVERSED; 37 C.F.R. § 41.50(b)

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