Ex Parte Paetow et al

Patent Trial and Appeal Board

Aug 19, 2016

13623150 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/623, 150 09/20/2012
23280 7590 08/23/2016
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Mario Paetow
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.
5068.1110 8273
EXAMINER
IHEZIE, JOSHUA K
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
08/23/2016 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIO P AETOW and RUDOLF SEMLER
Appeal2014-007215
Application 13/623,150
Technology Center 3600
Before: LYNNE H. BROWNE, MICHELLE R. OSINSKI, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's Final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-007215
Application 13/623,150
CLAIMED SUBJECT MATTER
The claims are directed to a bracket for a firestop collar and use of the
bracket. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
A bracket for a firestop collar, comprising:
an anchor for anchoring the bracket to a substrate;
a pressure element intended to interact with the firestop
collar, the pressure element movable relative to the anchor; and
an expansion element made of intumescent material
arranged between the anchor and the pressure element.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hoffman
Monden
Messmer
US 5,970,670 Oct. 26, 1999
US 7,082,730 B2 Aug. 1, 2006
US 2008/0078841 Al Apr. 3, 2008
REJECTIONS
Claims 1---6, 8, 9, and 14--20 are rejected under 35 U.S.C. §102(b) as
anticipated by Messmer.
Claims 7, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Messmer and Monden.
Claims 12 and 13 are rejected under 35 U.S.C. §103(a) as
unpatentable over Messmer and Hoffman.
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Application 13/623,150
Claim 1
OPINION
Appellants argue that the rejection of claim 1 is in error because
Messmer does not have both an expansion element and a firestop collar. Id.
at 4. As noted above, claim 1 requires "a pressure element intended to
interact with the firestop collar." Id. at Claims App.
The Examiner responds: "the firestop collar is not positively claimed,"
thus "the prior art does not need to disclose a firestop collar in order to meet
the limitations of the claim." Answer 8. A recitation of intended use of the
claimed invention must result in a structural difference over the prior art in
order to overcome an anticipation rejection, and if a prior art structure is
capable of performing the intended use, then it meets the claim. See In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Here, Messmer's pressure
element is capable of interacting with a firestop collar. Thus, the Examiner
is correct that claim 1 does not distinguish structurally over the prior art. See
Final Act. 2, 7.
Next, Appellants argue that Messmer does not teach "the pressure
element movable relative to the anchor" as also required by claim 1. Appeal
Br. 4. The Examiner relies on tabs 64 of Messmer for this feature of the
claim. Final Act. 2. Appellants argue: "Once formed as part of the bracket,
the tabs 64 do not move - the intumescent material 16 does not move the
tabs 64 or wall 58- see [0032] and [0033] of Messmer. In fact, the tabs 64
are specifically manufactured to be non-movable with respect to wall 58."
Appeal Br. 4--5.
The Examiner responds that: "since the pressure elements of Messmer
are bendable [0023], they are not rigid, are made of resilient material, and
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Application 13/623,150
can be moved/pivotable/bendable by any external force strong enough to
bend/pivot it." Answer 9; see also Final Act. 7-8.
We find that claim 1 does not define how or by what means or to what
extent "the pressure element is movable." We also find that the Examiner
has shown that the tabs can be moved/bent. As claim 1 only requires that
"the pressure element is movable" the Examiner has shown that Messmer
anticipates this feature.
For these reasons, Appellants have not apprised us of error in the
Examiner's rejection. Therefore we affirm the rejection of claim 1 under 35
U.S.C. § 102(b) as anticipated by Messmer.
Claims 2 & 4
Similar to claim 1, Appellants argue that: "With further respect to
claims 2 and 4, the tabs 64 of the completed device clearly are not pivotable
with respect to the anchor. The pressure elements once bent no longer
move." Appeal Br. 5.
This argument relies on essentially the same reasoning we found
unpersuasive in connection with claim 1 with respect to the pressure element
being moveable. Appeal Br. 4. Therefore we affirm the rejection of claims
2 and 4 under 35 U.S.C. § 102(b) as anticipated by Messmer.
Claims 3, 5, 6, 8, 9, & 15
In connection with the rejection of claims 3, 5, 6, 8, 9, and 15,
Appellants rely on essentially the same arguments and reasoning we found
unpersuasive in connection with claim 1. Appeal Br. 4. Therefore we
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Application 13/623,150
affirm the rejection of claims 3, 5, 6, 8, 9, and 15 under 35 U.S.C. § 102(b)
as anticipated by Messmer.
Claim 14
Claim 14 is a method including "fastening a firestop collar using the
bracket as recited in claim 1." Appellants argue that "[e]lement 42 identified
by the Office Action is not a firestop collar but rather a tube exterior surface
and part of tube 36." Appeal Br. 5.
The Examiner disagrees stating that "the phrase 'firestop collar' is
open to its broadest interpretation" and that "the tube/collar of Messmer is
used in a firestop assembly; therefore it is considered a firestop collar."
Answer 9.
The United States Patent and Trademark Office gives claims their
broadest reasonable interpretation consistent with the Specification, reading
claim language in light of the Specification as it would be interpreted by one
of ordinary skill in the art. See In re Am. A cad. of Sci. Ctr., 3 6 7 F. 3 d 13 5 9,
1364 (Fed. Cir. 2004). The Specification describes the "firestop collar" as
"compris[ing] intumescent material that expands upon exposure to heat,
closing off the penetration as tightly as possible so as to prevent propagation
of the fire" and explains that "the term 'firestop collar' comprises every type
of wrapping of a pipe with intumescent material." Specification i-fi-1 3 & 7.
We determine that the Examiner's interpretation of "firestop collar" that
would extend to any tube or collar used in a firestop assembly is not
reasonable in this context. The Examiner's citation to tube 36 does not teach
a "firestop collar" within the broadest reasonable interpretation of the term
consistent with the Specification.
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Application 13/623,150
For this reason we do not sustain the rejection of claim 14 under 35
U.S.C. § 102(b) as anticipated by Messmer.
Claims 16 and 20
Claims 16 and 20 are independent claims similar to claim 1, and
include "the pressure element (being) movable relative to the anchor via
expansion of the expansion element." Appellants argue that "[t]here just is
no indication that expansion of the expansion element would bend the tabs at
all." Appeal Br. 6, 7.
In rejecting claims 16 and 20, the Examiner explains: "the pressure
element 64 is bendable i.e. not rigid, therefore it is capable of performing the
intended use." Final Act. 4, 5. Further, "the [E]xaminer reiterates that the
pressure elements are resilient/bendable, therefore they are capable of
performing the intended use since the applicant has not structurally
distinguished the pressure elements of the invention from that of Messmer."
Answer 9.
Though the finding that the tabs 64 are bendable is sufficient to
support the rejection of claim 1, claims 16 and 20 require more than mere
movability. Claims 16 and 20 require that the pressure element be movable
"via expansion of the expansion element." Appeal Br., Claims App. 3--4.
"[T]he examiner must provide some evidence or scientific reasoning
to establish the reasonableness of the examiner's belief that the functional
limitation is an inherent characteristic of the prior art" before the burden is
shifted to Applicants to disprove the inherency. Ex parte Skinner, 2
USPQ2d 1788, 1789 (BP AI 1986). Here, the Examiner has offered
insufficient findings to support the rejection of claims 16 and 20. In
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Application 13/623,150
particular, no findings are provided explaining how or why the tabs are
movable "via expansion of the expansion element." In other words,
although the Examiner has explained how Messmer discloses a pressure
element capable of moving relative to the anchor, the Examiner has not
adequately explained how the pressure element is inherently capable of
moving relative to the anchor via the expansion element.
For this reason we do not sustain the rejection of claim 16 and 20, 1
under 35 U.S.C. § 102(b) as anticipated by Messmer.
Claim 17-19
As claims 17-19 depend upon claim 16, we do not sustain the
rejection of claims 17-19 under 35 U.S.C. § 102(b) as anticipated by
Messmer for the same reasons.
Claim 7
Claim 7 depends from claim 1 and adds "wherein the pressure
element is a sheet metal tab provided with at least one hook for interacting
with the firestop collar." The Examiner relies on Monden for teachings of
the at least one hook. Final Act. 6.
Concerning claim 7 Appellants first argue: "[t]here simply is no
firestop collar in Messmer in the Office Action interpretation." Appeal Br.
7. As correctly noted by the Examiner and discussed supra, "the firestop
collar is not positively claimed" in claim 1. Final Act. 8. In addition, the
1 We also note that our analysis and discussion of the "firestop collar" in
claim 14 would likewise be relevant in any additional evaluation of claim
20.
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Application 13/623,150
phrase "interacting with" does not require the "at least one hook" have any
particular structure or location, thus this argument is not convincing. We
note that Messmer's pressure element as modified by Monden would include
a hook is capable of interacting with a firestop collar.
Appellants then argue that "the asserted motivation 'so that the
pressure element can rigidly engage the expansion element' does not support
modifying Messmer to provide a hook for interacting with a separate
'firestop collar."' Appeal Br. 7. This argument also fails. There is no
requirement that the Examiner's motivation to combine the references be the
same reasoning provided by Appellants' claims or Specification. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 ("In determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the [Appellants] controls."); see also In re Linter,
458 F.2d 1013, 1016 (CCPA 1972).) Moreover, Appellants have not
explained why the Examiner's reasoning to modify Messmer to provide a
hook (Final Act. 6) lacks rational underpinnings.
For these reasons, Appellants have not apprised us of error in the
Examiner's rejection of claim 7.
Claims 10 & 11
Claims 10 and 11 depend from claim 1. Appellants list claims 10 and
11 together with claim 7 in the Appeal Brief, but only argue features specific
of claim 7. As no additional arguments are presented, claims 10 and 11 fall
with claim 1. Therefore, we affirm the rejection of claims 10 and 11 under
35 U.S.C. § 103(a) as unpatentable over Messmer and Monden.
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Claim 12
Claim 12 depends indirectly from claim 1 and adds "wherein the
pocket is formed by a fabric strip." The Examiner relies on Hoffman for the
teachings of claim 12 stating:
It would be obvious to one having ordinary skill in the art at the
time of the invention to make the pocket of Messmer et al. of a
fabric strip as made obvious by Hoffman to contain the
intumescent material radially and axially and make sure it
expands and covers the opening and prevent fires from
spreading.
Final Act. 7.
Appellants argue that "there simply is no factual support or basis for
asserting that the fabric strip would in any way 'make sure [the intumescent
material] expands and covers the opening' as required by MPEP 2144- as
clearly stated in [0032] and [0033] of Messmer this already occurs." Appeal
Br. 7.
The Examiner responds: "iviessmer et al. does not disclose a means
for controlling the direction of expansion of the intumescent material both
axially and radially as shown in Hoffman [F]igs. 2-3, that is why Messmer et
al. is modified with the fabric strip of Hoffman to achieve this purpose."
Final Act. 8; see also Answer 10.
Appellants do not reply to the Examiner's further explanation and thus
have not apprised us of error in the Examiner's reasoning.
Appellants also argue that "the fabric strip would actually appear to
hinder the necessary action mentioned in Messmer." Appeal Br. 7. But, as
Appellants do not explain why this would be so we have not been apprised
of error in the rejection of claim 12. Therefore, we affirm the rejection of
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claim 12 under 35 U.S.C. §103(a) as unpatentable over Messmer and
Hoffman.
Claim 13
In connection with the rejection of claim 13, Appellants rely on
essentially the same arguments and reasoning we found unpersuasive in
connection with claim 12. Appeal Br. 7. Therefore, we affirm the rejection
of claim 13 under 35 U.S.C. § 103(a) as unpatentable over Messmer and
Hoffman.
DECISION
The Examiner's rejection of claims 1-13 and 15 is affirmed.
The Examiner's rejection of claims 14 and 16-20 is reversed.
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)(l )(iv).
AFFIRMED-IN-PART
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