Ex Parte Onchuck

Patent Trial and Appeal Board

Jun 9, 2016

12902313 (P.T.A.B. Jun. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/902,313 10/12/2010
164 7590 06/13/2016
KINNEY & LANGE, P.A.
THE KINNEY & LANGE BUILDING
312 SOUTH THIRD STREET
MINNEAPOLIS, MN 55415-1002
FIRST NAMED INVENTOR
Dean Onchuck
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.
0166.12-0002 1860
EXAMINER
SIL VER, DAVID
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
06/13/2016 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):
uspatdocket@kinney.com
smkomarec@kinney.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEAN ONCHUCK
Appeal2014-009766
Application 12/902,313
Technology Center 2100
Before JASON V. MORGAN, MELISSA A. HAAPALA, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-3, 19, and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-009766
Application 12/902,313
THE INVENTION
Appellant's invention "is a method for laying out a [house] dormer."
Abst. Exemplary independent claim 1 is reproduced below.
1. A method of forming a dormer template to underlay
dormer trusses that support a dormer projecting outward from a
main roof, the dormer trusses comprising a gable truss and a
plurality of valley trusses, the method comprising:
receiving a plurality of dormer inputs from a user;
processing the dormer inputs to generate a dimensional profile
for the dormer template, including first and second side piece
dimensions and a plurality of valley truss locations relative to the
gable truss, and to generate a dimensional profile of the valley
trusses for placement on the dormer template at the valley truss
locations; and
constructing the dormer template according to the generated
dimensional profile.
REFERENCES AND REJECTIONS
Claims 19 and 21 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Lancaster (Lancaster County Barns, "Victorian Shed; Kit
Assembly Instructions"). 1 Final Act. 3-4.
Claims 1-3, 19, and 21 stand rejected under 35 U.S.C. § 103(a) as
obvious over Thomas (Craig R. Thomas, Avatech Tricks: Creating Dormer
1 We have reviewed the Lancaster reference contained within Appellant's
file wrapper. Lancaster is also available at http://www.lancasterbams.com/
acatalog/Assemblylnstructions-Tl-1 l&Vinyl.pdf (last visited June 6, 2016).
2
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Application 12/902,313
Roofs in Revit Building, Jan. 12, 2006),2 official notice, and Lancaster. Final
Act. 4-6.
ANTICIPATION REJECTION
The Examiner finds Lancaster discloses "a dormer template
comprising first and second side pieces around a perimeter of an outline of
the dormer and cross pieces marking locations of each of the plurality of
dormer trusses, including valley truss locations relative to the gable truss,"
as recited in claim 19. Specifically, the Examiner finds that Lancaster's
dormer "panels themselves function as a template, since they will be
joined[.] [T]he instruction manual itself similarly performs this function."
Final Act. 4; see also Ans. 6.
Appellant argues "Lancaster ... does not disclose at least the side
pieces and cross pieces of the dormer template as explicitly recited in claim
19." App. Br. 6. Appellant further argues "[ n Jo physical dormer template is
provided[.] In order to reject a claim under 35 U.S.C. 102 as being
anticipated, each and every element as set forth in the claim must be
found[.]" Reply Br. 3; see also App. Br. 5 ("There is no disclosure ... by
Lancaster of a dormer template[.]"). 3
2 We have reviewed the Thomas reference contained within Appellant's file
wrapper. Thomas is also available at http://www.cadalyst.com/aec/avatech-
tricks-creating-dormer-roofs-revit-building-8859 (last visited June 6, 2016).
3 Appellant interprets the Advisory Action (Jan. 27, 2014) as applying both
Lancaster and Thomas to the anticipation rejection of claim 19. App. Br.
4-5. We interpret the Advisory Action's comments, addressing Lancaster
and Thomas, as directed to the obviousness rejection of claim 19. And, in
any event, the anticipation rejection of claim 19 cites only Lancaster. Final
Act. 3-4.
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Application 12/902,313
We agree with Appellant that Lancaster does not disclose a dormer
template with the side pieces and cross pieces marking locations of the
appropriate trusses as recited in claim 19. Although the Examiner finds that
Lancaster's side panels have dimensions, this does not provide sufficient
support for the finding that these panels also include cross pieces marking
locations for the dormer trusses recited in claim 19. We also do not agree
that Lancaster's instruction manual discloses the appropriate pieces recited
in claim 19. Accordingly, we do not sustain the anticipation rejection of
independent claim 19 and depending claim 21.
OBVIOUSNESS REJECTION
The Examiner rejects claims 1-3, 19, and 21 as obvious over Thomas,
Official Notice, and Lancaster. Final Act. 4-5. In particular, the Examiner
finds Thomas teaches receiving dormer inputs from a user and modeling of
the dormer. Ans. 9. The Examiner further finds Lancaster teaches the
inherent features and dimensions of a dormer. Final Act. 5; Ans. 9. The
Examiner takes Official Notice that constructing a dormer template from a
dimensional profile is well known. Final Act. 5.
Appellant argues:
[T]he proposed combination of Thomas with Official Notice and
Lancaster does not disclose or suggest all of the elements of
claim 1, since Thomas was relied on for the disclosure of
generating dimensional profiles of valley trusses (and does not
disclose or suggest these elements of the claims). There is also
no evidence on the record of employing a template underlaying
dormer trusses of a dormer, as recited in claim 1, and it is not
proper to contend that this limitation is satisfied by virtue of a
general statement that it is beneficial to perform modeling prior
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Application 12/902,313
to manufacturing. Lancaster does not remedy the deficiencies of
Thomas.
App. Br. 8.
In reply to the Examiner's response, Appellant adds:
[T]he Examiner contended that '"processing the dormer inputs'
could be a worker at Home Depot determining based on his or
her knowledge using a pencil to draw a sketch of the potential
dormer." The Examiner then simply stated that "the construction
step is self-explanatory." However, these arguments do not
provide a disclosure or suggestion in any prior art of record for
processing dormer inputs to generate a dimensional profile for f!
dormer template to underlay dormer trusses that support a
dormer, and constructing the dormer template according to the
generated dimensional profile. That is, no prior art of record
discloses a dormer template that underlays dormer trusses.
Reply Br. 4.
Appellant's arguments do not rebut the Examiner's finding that a
dimensional profile of a dormer is inherently disclosed by the dormer (and
its components) itself as evidenced by Lancaster and Thomas. See Ans. 9
("[T]he modeling and user input for the dormer are provided by the
[Thomas] reference, while the Lancaster reference discloses the inherent
features of the dormer."). Appellant has not argued, or presented persuasive
evidence or reasoning showing, a skilled artisan with knowledge of the
dormer could not generate a dimensional profile of that dormer.
Further, Appellant's arguments do not rebut the Examiner's finding
that a skilled artisan could construct a template from a dimensional profile of
a dormer, e.g., generate a pattern or sketch of the roof cutout and include
indicators for placement of the valley trusses. The Examiner's official
notice asserts that generating a template from known dimensional
requirements was within the skill in the art and that such a template could be
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Application 12/902,313
sketched by one of skill the art. Ans. 3-4, and 6-8; see also Final Act. 5.
Appellant has not argued otherwise, much less presented evidence or
reasoning showing otherwise. And, Appellant cannot challenge official
notice by, as here, merely noting the applied prior art fails to establish the
noticed fact. See, e.g., In re Boon, 439 F.2d 724, 728 ("[A] challenge to
judicial notice ... creates a reasonable doubt regarding the circumstances
justifying the judicial notice.").
Finally, Appellant's argument that the Examiner's findings do not
teach a template to underlay dormer trusses is unpersuasive. As explained
above, the Examiner's official notice asserts it was known for one of
ordinary skill with knowledge of a dormer's dimensions to construct or
sketch a template for the dormer. Ans. 8. Appellant's Specification
describes dormer templates as being formed from paper or fabric, just as a
sketch would, and being used as an underlay onto which the dormer trusses
could be placed. See Spec. 22: 1-16. Thus, Appellant has not sufficiently
rebutted the Examiner's findings.
Appellant has not shown the Examiner erred in finding claim 1 's
invention obvious over Thomas, official notice, and Lancaster. Accordingly,
we sustain the obviousness rejection of representative claim 1. We also
sustain the rejection of claims 2, 3, and 19, for which no arguments for
separate patentability were presented.
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Application 12/902,313
DECISION
The Examiner's rejection of claims 19 and 21under35 U.S.C.
§ 102(b) is reversed.
The Examiner's rejection of claims 1-3, 19, and 21under35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § l.136(a)(l)(iv).
AFFIRMED
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