Ex Parte Proffitt

Patent Trial and Appeal Board

Nov 25, 2013

11873022 (P.T.A.B. Nov. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RAY A. PROFFITT, JR.
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Appeal 2012-002067
Application 11/873,022
Technology Center 3600
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Before JOHN C. KERINS, SCOTT A. DANIELS and NEIL T. POWELL,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ray A. Proffitt, Jr. (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Examiner’s final rejection of claims 1, 3-5, 7 and 8. Claims
2, 6, and 9-12 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2012-002067
Application 11/873,022

2

THE INVENTION
Appellant’s invention is directed to a tensionable hold down clip
system for a stud wall assembly. Independent claim 1, reproduced below, is
representative of the claimed subject matter:
1. A stud wall assembly structure comprising:

an elongate tensionable member;

a metal stud including an aperture therethrough for
passage of the tensionable member; and

a hold down structure attached to the metal stud,
the hold down structure comprising a base portion,
a leg portion having a length orthogonal to the
base portion, a reinforcing flange attached to the
leg portion and base portion, a connecting bolt
disposed in a slotted aperture in the base portion,
wherein the hold down structure contains a
plurality of bolt holes for attaching the leg portion
to the metal stud; and a mount on the leg portion
configured for adjustably connecting the
tensionable member to the hold-down structure,
the mount comprising an elongate slot that extends
from a back-side of the leg portion to an opposite
front-side of the leg portion and having its length
oriented substantially aligned with the length axis
of the leg portion, and including a surrounding and
at least partially convex surface, wherein the slot
and the convexity of the surface enables
adjustment of the orientation of the tensionable
member.

THE REJECTION
Appellant appeals from the rejection of claims 1, 3-5, 7 and 8 under
35 U.S.C. § 103(a) as being unpatentable over diGirolamo (US 6,892,504
Appeal 2012-002067
Application 11/873,022

3
B1, issued May 17, 2005) in view of Gilb (US 4,192,118, issued Mar. 11,
1980) and Soule (US 2,126,511, issued Aug. 9, 1938).

ANALYSIS
The Examiner takes the position that a combination of the teachings
of diGirolamo and Gilb discloses all limitations appearing in claim 1, with
the exception that the elongated slot in diGirolamo is not on a convex mount
surface. Appellant does not take issue with the Examiner’s proposed
combination of the teachings of diGirolamo and Gilb. Appeal Br. 9-13. The
Examiner further relies on Soule as teaching a tension member mount
having a convex surface1, and concludes that it would have therefore been
obvious to “modify the connector of diGirolamo to have a convex mount
portion as described by Soule . . . to permit the tension member to be
positioned at any desired angle thereby avoiding undesired kinks or strains
in the tension member by providing optimal alignment.” Ans. 6-7.
Appellant initially, and understandably, believed that the Examiner’s
rejection was based on a finding that Soule discloses both a mount having a
convex surface and an elongate slot on the mount. Appellant noted that
Soule discloses perforations 20 provided at specific locations, and that such
perforations do not permit any adjustability of the orientation of a tensioning
member passing therethrough, as required of the claimed elongated slot.
Appeal Br. 12-13. In response to the Examiner’s clarification (see fn. 1) that
diGirolamo was cited as disclosing the claimed elongated slot (Ans. 7),

1 While the grounds for rejection make mention of the provision of a slot 20
in the Soule mount, the Examiner, in the Response to Argument section of
the Answer, expressly states that “[t]he office is not relying on Soule for the
teaching of a slot.” Ans. 6-7.
Appeal 2012-002067
Application 11/873,022

4
Appellant points out that the slot 110 in diGirolamo is not provided for the
purpose of allowing for the adjustment of the orientation of a tensionable
member, given that diGirolamo includes a stop 112 at a fixed orientation
through which a tensionable member is to extend. Reply Br. 3. Appellant
correctly notes that neither the diGirolamo structure nor the Soule structure
enables an adjustment of the orientation of a tensionable member. Id.
While the Examiner states that the reason to combine the teachings is
to avoid undesired kinks or strains in the tensionable member (Ans. 7)2, the
Examiner fails to explain how modifying the vertical plate 106 of the
diGirolamo structure, in which slot 110 is present, to a convex shape would
predictably achieve that goal. This is particularly the case, given the
disclosure in diGirolamo that stop 112, through which the tensionable
member is to extend and provides a fixed orientation for the tensionable
member, is “secured to the vertical plate 106 about the opening.”
diGirolamo, col. 6, ll. 24-32. The Examiner simply does not address what
role, if any, stop 112 would play in the proposed combination and does not
explain how the resulting structure would allow for adjustability of the
orientation of the tensionable members.
The rejection of claims 1, 3-5, 7 and 8 as being unpatentable over
diGirolamo, Gilb and Soule is not sustained.

2 Appellant’s Specification is the only place where we were able to find
explicit disclosure of the desire to avoid kinking of the tensionable members.
See, e.g., Spec., p. 10, para. [0033].
Appeal 2012-002067
Application 11/873,022

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DECISION
The decision of the Examiner to reject claims 1, 3-5, 7 and 8 under 35
U.S.C. § 103(a) is reversed.

REVERSED

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