Ex Parte Powers et al

Patent Trial and Appeal Board

Oct 31, 2016

13438324 (P.T.A.B. Oct. 31, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/438,324 04/03/2012 John Powers III 5021-AID 2476
29370 7590 11/02/2016
RORFRTA PARSONS
EXAMINER
15615 North 71st Street HIJAZ, OMAR F
Suite 106
Scottsdale, AZ 85254 ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
rp@pgpct.com
ms@pgpct.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN POWERS III and EDWARD SUCATO
Appeal 2014-009900
Application 13/438,324
Technology Center 3600
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Powers III and Edward Sucato (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1,5,8,
12, 14, and 19—22.1 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Claims 2—4, 6, 7, 9-11, 13, and 15—18 are cancelled. Appeal Br. 2
(filed March 31, 2014).
Appeal 2014-009900
Application 13/438,324
THE INVENTION
Appellants’ invention relates to metal studs for the building industry.
Claims 1, 12, and 19 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A metal stud comprising:
first and second spaced apart metal panels each having
first and second longitudinal edges turned to provide support
along a longitudinal axis thereof; and
an angular metal coupling element positioned between
the first and second spaced apart metal panels and bent to
periodically and alternately contact the first and second spaced
apart metal panels at contact points, maintaining the first and
second spaced apart metal panels in a spaced apart parallel
relationship, the angular metal coupling element being fixed to
the first and second spaced apart metal panels at the contact
points wherein the angular metal coupling element is a single
continuous piece of wire having a gauge of approximately .200
inches or less.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 5, 8, 12, 14, and 19-22 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement;
(ii) claims 1, 12, 21, and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Braden (US 2,136,071, issued Nov. 8, 1938) and Holtz
(US 4,549,381, issued Oct. 29, 1985);
(iii) claims 5,8, and 14 under 35 U.S.C. § 103(a) as being
unpatentable over Braden, Holtz, and Davis (US 2,180,317, issued Nov. 14,
1939); and
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(iv) claims 19 and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Braden, Howchin (US 2008/0110126 Al, published May
15, 2008), and Holtz.
ANALYSIS
Claims 1, 5, 8, 12, 14, and 19—22—35 U.S.C. § 112, first paragraph—Written
Description
Each of independent claims 1, 12, and 19 requires, inter alia, that the
angular metal coupling element is a single continuous piece of wire having a
gauge of approximately .200 inches or less.
The Examiner finds that “the range ‘0.200 inches or less’ was not
originally disclosed in the specification,” and that the disclosed range of
“‘0.100 to 0.200 thick’ . . . limits the minimum [gauge] to 0.100 inches.”
Final Act. 2—3.
Appellants assert that the range of 0.100 to 0.200 inches is only
exemplary, and that “.200 inches or less is disclosed, because .100 inches is
in fact less than .200 inches.” Appeal Br. 10.
The Examiner responds that although “0.100 inches is in fact less than
0.200 inches,” other values such as 0.05 inches, are less than 0.200 inches,
and are also less 0.100 inches, and therefore fall outside of the disclosed
wire gauges. Ans. 2.
Appellants reply that the Specification as filed included at least one
claim that recited that “‘the single continuous piece of metal forming the
angular metal coupling element is formed of heavy gauge wire,’” which
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Application 13/438,324
does not include a range and thus, “[a]ny heavy gauge wire is covered,”
including wires of “0.05 inches or even thinner.” Reply Br. 2.
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir.
1991). Although we appreciate that Appellants’ disclosure that “coupling
element 30 is a single continuous length of some relatively heavy gauge wire
or metal rod (e.g. .100” to .200” thick)” is exemplary (Specification 10—11),
Appellants use this same range to describe the gauge of coupling element 60.
See Spec. 14. As such, we believe that it is reasonable to infer that, had
Appellants been in possession of a claimed wire having a gauge less than
0.100” thick, this would have been described using examples other than
those previously set forth. Appellants have not directed our attention to any
such description. Moreover, because Appellants do not provide evidence
that one of ordinary skill in the art would understand that the term “heavy
gauge wire” would include thinner gauges such as the 0.05 inch example
given by the Examiner, the mere recitation of “heavy gauge wire” in the
original claims does not provide support for the claimed range of “0.200
inches or less.” In view of this, we agree with the Examiner that the
Specification does not describe the claimed invention in sufficient detail that
one skilled in the art could reasonably conclude that the inventor had
possession thereof.
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Application 13/438,324
Accordingly, we sustain the rejection of claims 1,5,8, 12, 14, and
19-22 under 35 USC § 112, first paragraph, as failing to meet the written
description requirement.
Claims 1, 12, 21, and 22—Obviousness—Braden/Holtz
Appellants argue claims 1, 12, 21, and 22 as a group. We take claim 1
as representative and the remaining claims in the group stand or fall with
claim 1.
Appellants assert that “the term ‘metal stud’ in the preamble provides
a defining aspect of the invention, namely that those characteristics
necessary for a ‘stud’ are provided as opposed to a ‘joist,’” and that “a ‘stud’
is a structure with completely different characteristics tha[n] a ‘joist.’”
Appeal Br. 11—12. In view of this, Appellants argue that the claimed stud
“is not a truss, because the wire is of a gauge insufficient to provide
transverse strength, and is simply provided to hold the metal panels in a
parallel spaced apart relationship,” and that because “Braden specifically
teaches a truss structure for use as a joist, which requires transverse
strength,” Braden cannot be used as a basis to reject the claims. Id. at 13.
The Examiner responds that Appellants’ Specification discloses that
the term “studs,” is used in the application to be inclusive of studs, purlins,
joists, beams, rafters, etc., or any other framing or support component. Ans.
3 (citing Spec. 1,11. 11—16). The Examiner concludes that “since the
structural component (truss) of primary reference Braden meets the
structural limitations of what would constitute a ‘stud’, the rejection stands.”
Id.
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Appellants reply that “the inclusion of wire as the angular metal
coupling element, clearly signifies the claimed apparatus is a true stud (not
the generic stud),” and that “the claimed structure is a stud and would not
operate as a joist.” Reply Br. 4.
As noted above, the Examiner correctly points out that Appellants
expressly disclose that the term “stud” encompasses any framing or support
component. Spec. 1,11. 11—16. Appellants do not direct our attention to any
portion of the Specification that distinguishes between a generic stud and a
true stud. Accordingly, we are not apprised of Examiner error as to this
point.
Appellants also assert that Holtz does not disclose the diameter of web
11 and, “nothing in Holtz teaches the size of the wire claimed in claim 1.”
Appeal Br. 14.
The Examiner responds to this argument by pointing out that
“common engineering design utilizes load, length of span, material used etc.
to determine the gage of a structure such as a wire,” and that “ranges in the
gauge of a wire or bar involve only routine skill in the art.” Ans. 4.
Appellants reply that nothing in “Holtz even remotely suggests to one
of ordinary skill in the art the use of a relatively light coupling element or
web to produce a stud rather than a floor or roof joist.” Reply Br. 5.
Holtz discloses a diameter for web 11 as being one inch. Holtz, col. 5,
11. 21—22. Although we appreciate that such diameter is outside the recited
range, the Examiner’s position is that one of ordinary skill in the art would
be able to modify the web of Holtz based on the load intended to be placed
on the joist. See Ans. 4; see also Final Act. 5. Appellants do not adequately
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explain why such a load calculation would be beyond the abilities of one of
ordinary skill. Cf. Holtz col. 5,11. 22—25. Appellants do not adequately
explain why one of ordinary skill in the art would not use the disclosure of
Holtz to produce a joist having a relatively light coupling element or web.
Appellants further argue that because the diameter of the web is not
suggested, “one of ordinary skill in the art would not look to a truss to
determine the materials and strengths needed to build a stud because of the
different considerations needed for each,” and “there is nothing to suggest or
motivate one skilled of ordinary skill in the art to make the combination
anyway.” Appeal Br. 15. Appellants assert that the present Specification
“concerns . . . studs requiring longitudinal support and ha[s] little or no
connection to joists where the lateral support is imperative.” Reply Br. 6.
As discussed above, one of ordinary skill in the building industry
would select the material and strength of such material based on the
requirements of the building structure, and Appellants have not adequately
explained why the selection of a specific building material would be beyond
the abilities of one of ordinary skill. See Braden 1, col. 2,11. 26—30; see also
Holtz, col. 5,11. 22—25. Appellants neither point to any lack of rational
underpinnings supporting the Examiner’s combination, nor provide any
evidence that the claimed invention achieves unexpected or surprising
results over that which was known in the art.
Appellants then argue that “Braden specifically teaches away from the
use of round bar stock as taught by Holtz since Braden specifically teaches
the use of flat material in which a channel is formed to provide greater
strength,” and in view of this, “the combination of references does not teach
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the present invention as claimed, and would be an improper combination in
any event.” Appeal Br. 15; see also Reply Br. 7.
A reference may be said to teach away from a combination when it
criticizes, discredits or otherwise discourages the proposed modification.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). Appellants’ arguments fail to show that
Braden criticizes, discredits, or discourages using a shape other than a flat
material with a channel as an angular metal coupling agent. Moreover,
although we appreciate that the preferred embodiment of Braden uses a
strengthening channel (see Braden 1, col. 2,11. 52—53), Braden discloses that
“numerous selective adjustments . . . may be made in the forms and fitting
relations of the various truss beam members of my invention, depending
upon what kind of bracing would be desired.” Braden 1, col. 2,11. 26—30.
As such, we do not understand Braden to be limited to a single embodiment
of a flat material.
In view of the above, we are not apprised of Examiner error in the
rejection of claim 1 and of claim 12 depending therefrom, as well as claim
21 and claim 22 depending therefrom, as being unpatentable over Braden in
view of Holtz. The rejection is sustained as to those claims.
Claims 5, 8, and 14—Obviousness—Braden/Holtz/Davis
Appellants present no additional arguments directed to the separate
patentability of any of claims 5, 8, and 14. Appeal Br. 16. For the reasons
set forth above in the analysis directed to the combination of Braden in view
of Holtz, the rejection of claims 5, 8, and 14 as being unpatentable over
Braden in view of Holtz and Davis is sustained.
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Claims 19 and 20—Obviousness—Braden/Howchin/Holtz
Independent claim 19 is directed to a method of fabricating a stud.
Appellants’ arguments traversing this rejection are, for the most part, the
same as those advanced with respect to the rejection of claim 1 as
unpatentable over Braden and Holtz, namely, that a stud is different than a
truss, and that the references do not suggest the combination. Appeal Br.
17—21. Those arguments are not persuasive for the reasons set forth in the
analysis of claim 1. For the reasons discussed supra in the analysis directed
to the combination of Braden in view of Holtz, the rejection of claims 19 and
20 as being unpatentable over Braden in view of Howchin and Holtz is
sustained.
DECISION
The rejection of claims 1, 5, 8, 12, 14, and 19-22 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement is affirmed.
The rejection of claims 1, 12, 21, and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Braden in view of Holtz is affirmed.
The rejection of claims 5,8, and 14 under 35 U.S.C. § 103(a) as being
unpatentable over Braden in view of Holtz and Davis is affirmed.
The rejection of claims 19 and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Braden in view of Howchin and Holtz is affirmed.
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
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