Ex Parte Pietruczynik et al

Patent Trial and Appeal Board

Jul 31, 2014

12685800 (P.T.A.B. Jul. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER B. PIETRUCZYNIK, KENNETH D. BOSLER,
THOMAS GILBERT, MARK SUCHYNA, and MARK DUNMIRE
____________

Appeal 2012-005021
Application 12/685,8001
Technology Center 3600
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Before JENNIFER D. BAHR, EDWARD A. BROWN, and
BRANDON J. WARNER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1–14. Appeal Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 The real party in interest is CertainTeed Corporation. Appeal Br. 1.
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Application 12/685,800

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Claimed Subject Matter
Claim 1, reproduced below, is the sole independent claim:
1. A building product comprising:
a unitary extrudate having a first lateral side and a second
lateral side;
the unitary extrudate having unitary ribs on the lateral
sides of the unitary extrudate;
the lateral sides of the unitary extrudate having a
continuous length pattern of embossed surface topography
features simulating randomly shaped surface texture features
occurring in natural materials;
the first lateral side and the second lateral side of the
unitary extrudate being pivotally joined by a unitary hinge at a
first location; and
the first lateral side and the second lateral side having
respective lengthwise edges that interengage at a melt bonded
lengthwise joint at a second location.

Rejections
Appellants request review of the following rejections under 35 U.S.C.
§ 103(a):
I. Claims 1–3 and 6 stand rejected over Irvine (US 5,881,508,
issued Mar. 16, 1999) and Konings (US 5,152,034, issued Oct. 6, 1992).
II. Claims 4 and 5 stand rejected over Irvine, Konings, and
Douglas (US 2004/0134162 A1, published July 15, 2004).
III. Claim 7 stands rejected over Irvine, Konings, and Heath (US
5,694,728, issued Dec. 9, 1997).
IV. Claim 8 stands rejected over Irvine, Konings, and Sigel (US
6,572,932 B2, issued June 3, 2003).
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V. Claims 9 and 12 stand rejected over Irvine, Konings, and Hills
(US 6,752,941 B2, issued June 22, 2004).
VI. Claim 10 stands rejected over Irvine, Konings, Sigel, and
Andres (US 5,553,427, issued Sep. 10, 1996).
VII. Claim 11 stands rejected over Irvine, Konings, Heath, and Hills.
VIII. Claims 13 and 14 stand rejected over Irvine, Konings, and
Andres.

ANALYSIS
Rejection I
As to claim 1, the Examiner finds that Irvine discloses an extrudate
comprising first lateral side 5 and second lateral side 5′, but does not
disclose that these sides are “pivotally joined by a unitary hinge at a first
location,” as claimed. Ans. 5.
The Examiner finds that Konings discloses “an extruded closure
device . . . includ[ing] a central hinge portion 4 for pivoting sides 2 and 3.”
Ans. 5 (citing Konings, Abstract; Figs. 1, 2). The Examiner concludes that it
would have been obvious to modify a first location of Irvine’s extrudate to
include a unitary hinge for pivoting, as taught by Konings, “in order to
facilitate the assembly of the lateral sides.” Id.
The Examiner also finds that the combination of Irvine and Konings
does not disclose that lengthwise edges of the first and second lateral sides
are interengaged at a melt bonded lengthwise joint at a second location,
which is “opposite [the] side of the first location.” Ans. 6 (citing Irvine,
Fig. 3). The Examiner determines the claim limitation of melt bonding a
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lengthwise joint is drawn to the process of forming the product, and states
that because claim 1 is an apparatus claim, the prior art only needs to show
the final product. Id. The Examiner finds that Konings teaches the claimed
“lengthwise bonded joint.” Id. The Examiner does not, however, indicate
where this “lengthwise bonded joint” is located in Konings’ device. The
Examiner also concludes that it would have been obvious “to further bond
the edges together in order to prevent separation.” Id.
Appellants contend that the recitation of “respective lengthwise edges
that interengage at a melt bonded lengthwise joint at a second location” in
claim 1 is a structural limitation. Appeal Br. 4. We note that Appellants’
Specification describes that “the opposite side edges 166, 169 of a simulated
board 160 or 160’ are heated at least to its heat deflection temperature,
alternatively, at least to its vicat softening point temperature, sized and
straightened in the calibration dies 40, for example, to obtain accurate
dimensions and to melt bond the joint 166.” Spec. ¶ 53; see also Figs. 14,
14A. The Specification describes “the vicat softening point temperature” as
the softening temperature at which resin begins to melt and “measurable
softening of the thermoplastic occurs when heated.” Spec. ¶ 63. The
Specification also describes that “[t]he product 160, 160’ preferably includes
a . . . melt bond joint 166 used to . . . retain the hollow profile into a closed
structure, as well as a preferred hinge element 169 which allows the first and
second shell portions or lateral sides of the structure to be pivoted or rotated
about the hinge 169 . . . .” Spec. ¶ 79 (emphasis added). Accordingly, we
understand that the claimed “melt bonded lengthwise joint” is produced by
heating sufficient to melt bond the joint between the interengaged first and
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second lateral sides in a “closed structure.” Thus, we agree with Appellants
that “a melt bonded lengthwise joint” is a structural limitation.
The Examiner correctly indicates that the prior art only needs to show
the final product resulting from the process for a product-by-process claim.
Ans. 6. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“even though
product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself”) (citations
omitted).
Figure 3 of Irvine relied on by the Examiner depicts first decking
extrusion 5 and second decking extrusion 5′ mated together and interlocked
by locking elements 17, 30 to form an elongate deck plank. See Irvine, col.
7, ll. 21–35; see also Irvine, Fig. 2.
Konings discloses bag closure device 1 including left wing portion 2
and right wing portion 3 interconnected by central hinge portion 4, foot
portions 5, 6, hook portions 7, 8, and hooks 9, 10. Konings, col. 3, ll. 53–62;
Fig. 1. In use, a bag is interposed between hooked portions 5, 6 and hooks 9,
10 are interlocked. Id. at col. 3, ll. 62–68. Bag closure device 1 can be re-
opened and re-closed. Id. at col. 3, l. 68–col. 4, l. 5.
Appellants correctly contend that Konings’ bag closure device is
structured for closing, re-opening, and re-closing operations. Appeal Br. 4.
Appellants also correctly contend that Konings does not disclose a “melt
bonded” joint. Id. at 5.
In response, the Examiner states that “[a]lthough Konings fails to
disclose a ‘melt bonded’ joint, the cross-section of Konings et al., regardless
of how it was formed would look and function the same as the cross section
of Konings et al[.] formed by a melt-bonded joint.” Ans. 16. However,
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claim 1 requires both “a unitary hinge at a first location” and “a melt bonded
lengthwise joint at a second location.” The Examiner does not find that
Irvine’s deck plank includes either of these two claimed features. Ans. 5–6.
The Examiner relies on Konings for disclosure of a unitary hinge (central
hinge portion 4). Id. at 5; see also id. at 16 (“Konings et al. shows the final
product of a lengthwise unitary hinge.”). However, the Examiner also
appears to find that Konings’ central hinge portion 4 can be considered to be
a “melt-bonded joint.” Ans. 16. Even if Konings’ central hinge portion 4
has the same structure as required by the claimed “melt bonded lengthwise
joint,” modifying Irvine’s deck plank shown in Figure 3 to include Konings’
central hinge portion 4 at a first location would not result in the claimed
building product, because the central hinge portion 4 could not be both a
unitary hinge at a first location and a “a melt bonded lengthwise joint” at a
different second location of the deck plank, as the claim requires.
Regarding the Examiner’s determination that it would have been
obvious “to further bond the edges together in order to prevent separation”
(Ans. 6), the Examiner does not, however, explicitly state where the edges of
the first and second lateral sides are bonded together in the combination of
Irvine and Konings.
In addition, we agree with Appellants that the Examiner has not
established a prima facie case of obviousness. Appeal Br. 5. Firstly, the
Examiner does not explain how incorporating Konings’ central hinge portion
4 in Irvine would “facilitate the assembly of the lateral sides,” because Irvine
already facilitates assembly. As discussed above, Irvine discloses that first
decking extrusion 5 and second decking extrusion 5′ already include
interlocking locking elements 17, 30 for assembly.
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Secondly, Appellants correctly point out that the purpose of Konings’
central hinge portion 4 in the bag closure device is to allow the device to be
re-opened and re-closed to seal bags. Appeal Br. 4; Reply Br. 4-7. The
hinge does not prevent the device from being opened, as we understand the
claimed “melt bonded lengthwise joint” to require. Appellants contend that
such selective sealing of the edges of a bag with Konings’ device is not
relevant to the claimed invention. Reply Br. 4-5. Whereas Konings
discloses that the central hinge portion allows the bag closure device to be
re-opened and re-closed for use with bags, if the Examiner’s combination of
Irvine and Konings incorporates two of Konings’ hinges in the Irvine
structure, this would result in preventing the structure from being opened.
The Examiner does not provide an adequate reason having rational
underpinnings for combining the teachings of Irvine and Konings to result in
a building product including both “a unitary hinge at a first location” and “a
melt bonded lengthwise joint at a second location,” as recited in claim 1.
Thus, we do not sustain the rejection of claim 1, or claims 2, 3, and 6.
Rejections II–VIII
The Examiner’s application of Douglas for the rejection of claims 4
and 5 (Ans. 7–8), Heath for the rejection of claim 7 (id. at 8–9), Sigel for the
rejection of claim 8 (id. at 9–10), Hills for the rejection of claims 9 and 12
(id. at 10–11), Sigel and Andres for the rejection of claim 10 (id. at 11–13),
Heath and Hills for the rejection of claim 11 (id. at 13–14), or Andres for the
rejection of claims 13 and 14 (id. at 14–15) does not cure the deficiencies of
the Examiner’s rejection of claim 1, as discussed above. Thus, we also do
not sustain the rejections of claims 4, 5, and 7–14.

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DECISION
We reverse the rejections of claims 1–14.

REVERSED

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