Ex Parte Miller

Patent Trial and Appeal Board

Feb 28, 2017

12972618 (P.T.A.B. Feb. 28, 2017)

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.
12/972,618 12/20/2010 Gary F. Miller DPC-47384 1258
89462 7590 03/02/2017
Pearne Rr frnrHnn T T P
EXAMINER
1801 East Ninth Street AHMAD, CHARISSA L
Suite 1200
Cleveland, OH 44114-3108 ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
dpeterlin @ pearne .com
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY F. MILLER
Appeal 2015-005495
Application 12/972,618
Technology Center 3600
Before STEFAN STAICOVICI, JAMES P. CALVE, and
BRANDON J. WARNER, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1—6. Appeal Br. 9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-005495
Application 12/972,618
CLAIMED SUBJECT MATTER
Claims 1 and 6 are independent. Claim 1 is reproduced below.
1. A fire resistant building construction comprising a
plurality of elongated steel channel joists supporting a roof deck
or floor and a dry wall ceiling, the joists being of like
construction and having a C-shaped cross-section with a web
and flanges at opposite longitudinal edges of the web and
extending perpendicularly to the web, the width of the web
representing the depth of the joist, the joist being regularly
spaced from and parallel to one another, the joists being
oriented with their webs in a vertical plane such that upper and
lower ones of said flanges are determined, the roof deck or floor
being on or adjacent the upper one of said flanges and the
drywall ceiling being fixed on the lower one of said flanges,
fiber insulation batts disposed in cavities between the joists, the
batts having a width substantially the same as the spacing
between the joists and a thickness less than the depth of the
joist, a series of anchoring elements spaced along the lengths of
the joists in a mid-area of the webs, and steel wires suspended
between anchoring elements of adjacent joists, the wires
serving to support the insulation batts above a plane of the
lower flanges, whereby an air space is maintained between the
insulation batts and drywall ceiling, and said air space is
effective to prolong the ability of the drywall to withstand
exposure to a fire occurring below the drywall.
REJECTIONS
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Spencer (US 6,729,094 Bl, iss. May 4, 2004), Alderman ’806 (US
4,075,806, iss. Feb. 28, 1978), and Alderman ’914 (US 3,559,914, iss. Feb.
2, 1971).
Claims 2—6 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Spencer, Alderman ’806, Alderman ’914, and Offutt (US 2,009,512, iss. July
30, 1935).
2
Appeal 2015-005495
Application 12/972,618
ANALYSIS
Claim 1 as unpatentable over Spencer,
Alderman ’806, and Alderman ’914
The principal issue for resolution of this appeal, as set forth in the
briefs of Appellant, is whether a skilled artisan would have been motivated
to use the anchoring elements of Alderman ’806 and Alderman ’914 to space
the insulation disclosed in Spencer above the drywall, as claimed. Appeal
Br. 7—8; Reply Br. 3—5. Appellant argues that none of the prior art teaches
“to create an air space above the drywall and below the insulation.” Appeal
Br. 8 ; see Reply Br. 3^4. Appellant also argues that the prior art does not
teach that the provision of an air space by supporting insulation batts above
drywall would improve the fire resistance of the drywall, or that an air space
reduces transfer of heat. Appeal Br. 8; Reply Br. 4.
Appellant’s arguments are not persuasive because the motivation to
modify a prior art reference to arrive at the claimed invention need not be
the same motivation as an inventor had or be directed to the same problem
that an inventor tried to solve. See Alcon Research, Ltd. v. Apotex Inc., 687
F.3d 1362, 1368—69 (Fed. Cir. 2012). The Examiner has provided reasons
for modifying the teachings of Spencer with teachings of Alderman ’806 and
Alderman ’914 that are supported by rational underpinnings, and Appellant
has not persuaded us of error in those reasons. The Examiner relied on the
express teachings of Spencer to place insulation 31 in cavities between joists
(studs 13) and make the thickness of batts 31 less than the depth of joists 13,
as claimed. Final Act. 2—3 (citing Spencer, 6:30-36); Ans. 2. This finding
is supported by a preponderance of evidence, and Appellant has not apprised
us of error in that finding of the Examiner or teaching of Spencer.
3
Appeal 2015-005495
Application 12/972,618
Effectively, this teaching of Spencer presents a skilled artisan with
finite options for placement of the space when the insulation does not fill the
area between the upper the roof deck and lower drywall ceiling. The space
may be placed between insulation 31 and a lower interior wall board 30 that
forms a ceiling of a room. The space may be placed between insulation 31
and an upper concrete slab 11 /insulating panel 12 that may form an exterior
roof or floor of an upper room. Finally, the space may be placed on either
side of insulation 31 so that insulation 31 floats in space between the two
substrates that are above and below insulation 31.
The Examiner relied on express teachings of Alderman ’806 to place
insulation 30, 31 against the upper roof deck (hard sheet roofing 55) so there
would be a space below the insulation and above bottom flange 15 of purlin
12 (the joist). Final Act. 3; Ans. 2—3. Among the reasons proffered by the
Examiner are teachings in Alderman ’806 to place insulation 30, 31 directly
against upper sheet roofing 55 “to prevent heat transfer from the roof/floor
to the building below and heat loss from the building through the roof/floor
above (Column 5, lines 24-41).” Ans. 3. The Examiner’s reason for placing
the insulation directly against the upper roofing 55 is supported by a rational
underpinning in that Alderman ’806 teaches that this structure (without any
space between insulation 30, 31 and the upper sheet roofing 55) minimizes
the heat transfer through the roof structure and prevents heat from a hot roof
from transferring downwardly from the hard roofing material to an area
below the roof such as a room. Alderman ’806, 2:24—26, 5:32—41. This
arrangement forms an air space below insulation 30 and above lower flange
15 of joist 12. Id. at Fig. 2. Modifying Spencer with this teaching creates a
space between insulation 30 and interior wall board 30, as claimed.
4
Appeal 2015-005495
Application 12/972,618
The Examiner found that using less insulation leaves an air space as
claimed and minimizes the insulation needed for a building. Ans. 3. This
finding is supported by rational underpinnings of cost efficiencies and the
teachings of Spencer and Alderman ’806 that insulation thickness depends
on the amount of insulation needed for a building (Spencer, 6:32—37) and
fills the space between support straps 24, 29 and upper roofing material 55
(Alderman ’806, 3:54-4:2, Fig. 2). This arrangement results in an air space
below insulation 30 and above interior wall board 30 in Spencer, as claimed.
Appellant’s arguments regarding the air space below insulation 30, 31
and support straps 24, 29 of Alderman ’806 is not persuasive because the
Examiner proposes to modify Spencer with teachings of Alderman ’806 to
place Spencer’s insulation 31 against upper panel/slab 11, 22 and leave an
air space between insulation 31 and drywall ceiling 30, as claimed, to reduce
heat transfer through upper concrete slab, as taught by Alderman ’806.1
Final Act. 3; Ans. 2, 3. The Examiner reasoned that this modification of
Spencer would yield the claimed construction and prolong the ability of the
drywall to withstand exposure to fire due to the presence of the claimed air
space and also the natural resistance of drywall to fire. Ans. 2. Appellant’s
arguments about the air space below Alderman ’806’s insulation does not
address the rejection articulated by the Examiner or persuade us of error in
the Examiner’s reasoning that placing Spencer’s insulation 31 against upper
slab 11 yields the claimed air space. See Reply Br. 3^4.
1 The Examiner’s reliance on Alderman ’914 to teach the use of steel wires
55 for supporting insulation 19 as an obvious substitution for the insulation
supports 24, 29 of Alderman ’806 in the modified construction of Spencer in
view of Alderman ‘806 is supported by rational underpinning and, in any
case, is not challenged by Appellant.
5
Appeal 2015-005495
Application 12/972,618
Effectively, Appellant has claimed a new use for an old product. “It 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. In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997). The prior art has all of the claimed features as
discussed above and, therefore, the Examiner had a sound basis for finding
that it has the capability to prolong the ability of the drywall to withstand
exposure to a fire occurring below the drywall as recited in claim 1. As a
result, the burden shifts to Appellant to show that the prior art does not have
this capability inherently. Id. at 1478. Appellant has not met that burden.
Thus, we sustain the rejection of claim 1.
Claims 2—6 as unpatentable over Spencer,
Alderman ’806, Alderman ’914, and Offutt
Regarding independent claim 6, Appellant’s argument that the
Examiner’s reliance on Offutt does not overcome the shortcomings of
Spencer, Alderman ’806 and Alderman ’914 as to claim 1 (Appeal Br. 8) is
not persuasive in view of our affirmance of the rejection of claim 1 for the
reasons discussed above. Appellant does not present arguments for the
rejection of claims 2—5, which depend from claim 1. Appeal Br. 7—9. Thus,
we sustain the rejection of those claims as well.
DECISION
We affirm the rejections of claims 1—6.
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
6