Ex Parte Nelson et al

Patent Trial and Appeal Board

Oct 31, 2018

14055524 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/055,524 10/16/2013
34082 7590 11/02/2018
ZARLEY LAW FIRM P.L.C.
CAPITAL SQUARE
400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350
FIRST NAMED INVENTOR
Brett A. Nelson
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.
P07468US2 4714
EXAMINER
LAUX, JESSICA L
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
kconrad@zarleylaw.com
crasmussen@zarleylaw.com
emarty@zarleylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRETT A. NELSON, EUGENE G. SUKUP,
STEVEN E. SUKUP, BRADLEY A. POPPEN, and CHARLES E. SUKUP
Appeal 2018-001885
Application 14/055,524
Technology Center 3600
Before BRETT C. MARTIN, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 20, 22-25, and 27-29 under 35 U.S.C. § 103(a) as
unpatentable over Oakley (US 6,915,612 B2, iss. July 12, 2005) and of
claims 30 and 31 under 35 U.S.C. § 102( e) as anticipated by Robinson
(US 8,429,858 Bl, iss. Apr. 30, 2013). We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
1 Sukup Manufacturing Co., is the Applicant.
Appeal 2018-001885
Application 14/055,524
THE INVENTION
Appellants' invention relates to temporary/inexpensive dwellings.
Spec. ,r 1. Claim 20, reproduced below, is illustrative of the subject matter
on appeal.
20. A dwelling assembly, comprising:
a sidewall having at least one opening for a door disposed
there through;
a roof assembly secured to the sidewall and covering an
interior formed by the sidewall;
a plurality of ballast boxes surround and are secured to the
exterior of the sidewall;
each ballast box having a plate element that at least partially
forms a bottom of each of the plurality
of ballast boxes and engages a top surface of a ground
surface; and
materials positioned within the plurality of ballast boxes
that add weight to the dwelling assembly such that the dwelling
assembly is held to the ground and resists high winds.
Claim 20
OPINION
Unpatentability of Claims 20, 22-25, and 27-29
over Oakley
The Examiner finds that Oakley discloses the invention substantially
as claimed except for ballast boxes and a roof. Final Action 3. The
Examiner takes Official Notice that homes have ballast boxes and roofs and
then concludes that it would have been obvious to modify Oakley with
ballast boxes and a roof. Id. According to the Examiner, a person of
ordinary skill in the art would have done this to provide light to basement
level dwelling space and to protect occupants from inclement weather. Id.
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Appeal 2018-001885
Application 14/055,524
Appellants point out, correctly, that Oakley discloses nothing more
than a window well. Appeal Br. 3.
Having reviewed Oakley and the limitations of claim 20, we discern
no patentably obvious relationship between: (1) a window well that allows
light into a below ground window; and (2) an above ground dwelling that is
held in place by ballast boxes. Furthermore, we are not persuaded that a
person of ordinary skill in the art would have been motivated to add a "roof'
to a window well as such would block incoming light, defeating the whole
purpose of having a window and window well.
The Examiner's rejection of claim 20 is fraught with error and is not
sustained.
Claims 22-25 and 27-29
These claims depend, directly or indirectly, from claim 20. Claims
App. Their rejection suffers from the same infirmities that we have
identified above in connection with claim 20 and, thus, we do not sustain the
rejection of claims 22-25 and 27-29 over Oakley.
Anticipation of Claims 3 0 and 31
by Robinson
The Examiner finds that Robinson discloses all of the limitations of
claim 30. Final Action 5---6. In particular, the Examiner finds that
Robinson's base flap 24, taken in conjunction with sandbags 28 and or dirt
berms 28a, corresponds to Appellants' claimed ballast box. Id.
Appellants argue that base flaps, sandbags, and dirt berms are not
ballast "boxes" within the meaning of claim 30. Appeal Br. 4. In response,
the Examiner takes the position that Robinson's flap and sandbag
arrangement "acts and functions in the same manner as Appellants['] ballast
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Appeal 2018-001885
Application 14/055,524
box in that it holds and/or contains ballast material to aid in holding down
the structure against high winds." Ans. 4.
Determining whether claims are anticipated involves a two-step
analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The
first step involves construction of the claims of the patent at issue. Id.
"During examination, 'claims ... are to be given their broadest reasonable
interpretation consistent with the specification, and ... claim language should
be read in light of the specification as it would be interpreted by one of
ordinary skill in the art."' Id. (quoting In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004)). The second step of an anticipation
analysis involves comparing the claims to prior art. Id. A prior art reference
anticipates a patent claim under 35 U.S.C. § 102(b) ifit discloses every
claim limitation. Id.
Here, the Examiner essentially construes "ballast box" as broad
enough to encompass the flap and sandbag arrangement of Robinson
because the sandbag "acts and functions" like a box. Ans. 4. This is an
erroneous approach to claim construction. The English language contains
words that distinguish between containers that hold various materials. Thus,
in appropriate circumstances, a box is distinguishable from a bag, jar, bottle,
or kettle, etc. Robinson's flap/sandbag arrangement is not a "ballast box"
even under the broadest reasonable construction of the term. Thus, it does
not anticipate claim 30 or claim 31 that depends therefrom.
DECISION
The decision of the Examiner to reject claims 20, 22-25, and 27-31 is
reversed.
REVERSED
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