Ex parte MORRIS et al.

Board of Patent Appeals and Interferences

Jul 23, 1998

08127005 (B.P.A.I. Jul. 23, 1998)

Application for patent filed September 24, 1993.1
1
Paper No. 16
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte RICHARD J. MORRIS
______________
Appeal No. 96-3771
Application 08/127,0051
_______________
ON BRIEF
_______________
Before COHEN, MEISTER and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Richard J. Morris (the appellant) appeals from the final
rejection of claims 2-5 and 11. Claims 6-10, the only other
claims remaining in the application, have been indicated as
being allowable subject to the requirement that they be
Appeal No. 96-3771
Application 08/127,005
The examiner’s answer failed to include a listing of the2
prior art being relied on as expressly required by the Manual
of Patent Examining Procedure (MPEP) § 1208 (6th ed., Rev. 3,
Jul. 1997). Although the final rejection (to which the answer
refers for a statement of the rejection) sets forth the ground
of rejection as Waggoner in view of Smith, there are two
patents to “Smith” of record, thus leaving doubt as to which
“Smith” patent is being relied on. The appellant, however, on
page 2 of the supplemental brief under the heading of “ISSUES”
states that the principal issue on appeal is whether the
claims on appeal are unpatentable over “U.S. Patent No.
5,022,146 to Waggoner in view of U.S. Patent No. 3,185,070 to
Smith,” and the examiner on page 2 of the answer states that
“[t]he appellant’s statement of the issues in the brief is
correct.” Accordingly, we presume that the “Smith” reference
being relied on is Patent No. 3,185,070.
2
rewritten to include all the subject matter of the claims from
which they depend.
We AFFIRM.
The appellant’s invention pertains to the combination of
an air deflector and a roof ventilator system. Independent
claim 5 is further illustrative of the appealed subject
matter, a copy of which may be found in the appendix to the
supplemental brief.
The references relied on by the examiner are:2
Smith 3,185,070 May 25, 1965
Appeal No. 96-3771
Application 08/127,005
3
Waggoner 5,022,314 Jun. 11, 1991
Claims 2-5 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Waggoner in view of Smith.
Appeal No. 96-3771
Application 08/127,005
In passing, we note that page 4 of the supplemental3
brief refers to a rejection of “claims 1-19 under § 102(b) and
§ 103 based upon Brown ’549, Orr ’760, Radencic ’582 and
Butzmer ’572.” We observe, however, no such rejection is
before us for consideration.
4
The examiner’s rejection is explained on page 2 of the
final rejection. The arguments of the appellant and examiner
in support of their respective positions may be found on pages
3-5 of the supplemental brief and pages 3-5 answer.3
OPINION
As a preliminary matter, we base our interpretation of
the appealed subject matter upon the following interpretation
of the terminology appearing in the claims. In line 1 of
claim 5 we interpret “[a]n air deflector and roof ventilator
system” to be --a roof ventilator system-- inasmuch as line 2
of this claim further recites that the system comprises “an
air deflector and a roof ventilator” (emphasis ours).
Similarly, in line 1 of claims 2-4 and 11 we interpret “[t]he
air deflector” to be --the roof ventilator system--.
Appeal No. 96-3771
Application 08/127,005
5
Next, we note that the appellant has not separately
argued the patentability of dependent claims 2-4 and 11.
Accordingly, these claims will stand or fall with
representative claim 5.
37 CFR § 1.192(c)(7).
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions
advanced by the appellant in the supplemental brief and by the
examiner in the answer. This review leads us to conclude that
the prior art relied on by the examiner establishes the
obviousness of representative claim 5 within the meaning of 35
U.S.C. § 103. Accordingly, we will sustain the above noted
rejection.
According to the examiner:
[i]t would have been obvious to one skilled in the
art to provide Waggoner’s air deflector with a leg
member extending an acute angle of less that 90E or
approximately 75E from the base member to deflect air
upwardly, and a lip member extending at an obtuse
angle of approximately 135E from the leg member
thereof to deflect air outwardly at the tops of the
air deflector member, and to secure the leg member
at a distance from the exterior edge of the vent
part to keep the air deflector in place as taught by
Smith.
Appeal No. 96-3771
Application 08/127,005
6
As for the limitation on lines 24-30 of claim 5
of the instant application, the examiner takes the
position that the air deflector of Waggoner is
inherently freely adjustable by sliding the air
deflector to the desired position with respect to
the
vent part (58) and it is obvious to one skilled in
the art that the air deflector of Waggoner would be
secured in place at the desired location once the
ventilator is installed on the roof. [Final
rejection, page 3.]
The main thrust of the appellant’s position is that the
base support member of Waggoner cannot be considered
adjustable in the manner claimed. In support of this position
the supplemental brief states that:
Applicant does not believe that support member 56 is
inherently adjustable since the “mating” function
described would not allow the adjustability claimed
by the Examiner while still performing the function
discussed in the quoted language. Claim 5 is
therefore believed allowable over the prior art.
The components of Waggoner ’146 [sic, ’314] are
not adjustable by installers in the field because
the roof ventilator is fabricated as a single unit.
A person of ordinary skill would not consider that
Waggoner ’314 teaches or suggests an adjustable air
deflector. The patent does not talk about
adjustability and it implies that the air deflector
is integral with the roof ventilator. [page 4.]
We are unpersuaded by the appellant’s arguments.
Appeal No. 96-3771
Application 08/127,005
7
Initially we note that all of the disclosures in a reference
must be evaluated for what they fairly teach one having
ordinary skill in the art (In re Boe, 355 F.2d 961, 965, 148
USPQ 507, 510 (CCPA 1966)) and, in evaluating such a referenc-
e, it is proper to take
into account not only the specific teachings of the references
but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom (In re Preda, 401
F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968)). Moreover, the
issue of obviousness is not only determined by what the
references expressly state but also is determined by what they
would fairly suggest to those of ordinary skill in the art.
See, e.g., In re Delisle, 406 F.2d 1386, 1389, 160 USPQ 806,
808-09 (CCPA 1969) and In re Bozek, 416 F.2d 1385, 1390, 163
USPQ 545, 549-50 (CCPA 1969).
Here, the only embodiment of Waggoner wherein the base
member, leg member and ventilating member are stated (and
illustrated) to be of a single or one-piece construction is
Appeal No. 96-3771
Application 08/127,005
Waggoner states that “the ridge cap ventilator 504
comprises support members 56, ventilating members 58, a cover
member 60 and a filter 62”(column 4, lines 51-53).
8
the alternative embodiment of Figs. 12-15 (see column 5, lines
39
et seq.). The examiner, however, has relied on the embodiment
of Figs. 8-10 and in this embodiment the ventilator system,
including the (1) base member 56 and attached leg member 66
(collectively an air deflector), (2) ventilator member 58,
(3) filter 62, and (4) top panel 62, are clearly depicted in
Fig. 10 as separate members (as distinguished from the above-
noted arrangement in the embodiment of Figs. 12-15 wherein the
base member and attached leg member, ventilator member and top
panel are clearly depicted as being of one-piece
construction). Moreover, Waggoner expressly states that the
“ridge cap ventilator may be a single unit or an assembly of4
several pieces”(column 2, lines 11 and 12; emphasis outs;
footnote added). In our view, the arrangement depicted by
Waggoner in Fig. 10, in conjunction with the above-quoted
portion of column 2, teaches (or at least fairly suggests)
that the air deflector (i.e, base member 56 and attached leg
Appeal No. 96-3771
Application 08/127,005
9
66), ventilator 58 and top panel or cover member 60 are formed
of separate pieces which are subsequently installed on the
roof. As the examiner has noted, when these separate pieces
are assembled on the roof, the air deflector of Waggoner is of
necessity “adjusted” in the claimed manner.
As to Waggoner’s use of the terminology “mating,” the
artisan would reasonably infer that Waggoner is simply
referring to the roof ridge ventilator 50 in its assembled
state, i.e., once the separate pieces are assembled together
and fastened to
a roof (just as the appellant’s separate pieces are assembled
together and fastened to a roof).
Insofar as the limitations of representative claim 5 are
concerned, the examiner has apparently additionally relied on
Smith for a teaching of securing the leg member 66 of Waggoner
at a spaced distance from the exterior edge of the ventilator
member 58. This feature, however, is clearly taught by
Waggoner in Fig. 8. In any event, the appellant has presented
no arguments as to why the examiner’s proposed combination of
Waggoner and Smith might be in error.
In view of the foregoing, we will sustain the rejection
Appeal No. 96-3771
Application 08/127,005
10
of claims 2-5 and 11 under 35 U.S.C. § 103.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
JAMES M. MEISTER ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )

Philip G. Alden
LARKIN, HOFFMAN, DALY, LINDGREN, LTD.
1500 Norwest Financial Center
7900 Xerxes Avenues South
Bloomington, MN 55431
Appeal No. 96-3771
Application 08/127,005
11
JMM/cam