Ex Parte Rodenhouse

Board of Patent Appeals and Interferences

Jun 15, 2012

10485613 (B.P.A.I. Jun. 15, 2012)

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.
10/485,613 01/28/2004 Robert H Rodenhouse ROD004 P302A 9849
277 7590 06/15/2012
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
GILBERT, WILLIAM V
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
06/15/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT H. RODENHOUSE
____________________

Appeal 2010-007525
Application 10/485,613
Technology Center 3600
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and
JOSIAH C. COCKS, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007525
Application 10/485,613

2
A. STATEMENT OF CASE
The Appellant appeals under 35 U.S.C. § 134 from a rejection of
claims 17-28, 30-35, and 40-56. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
References Relied on by the Examiner
Yang 4,619,094 Oct. 28, 1986
Gagnon 4,740,111 Apr. 26, 1988
Wiesenfeld et al. (“Wiesenfeld”) 5,054,146 Oct. 8, 1991
Bӧgel 5,066,181 Nov. 19, 1991
Peck 6,807,786 Oct. 26, 2004
The Rejections on Appeal
The Examiner rejected claims 17-28, 40, 41, and 50-55 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
The Examiner rejected claims 30 and 32 under 35 U.S.C. § 102(b) as
anticipated by Gagnon.
The Examiner rejected claims 17-21, 23-28, and 40-56 under
35 U.S.C. § 103(a) as unpatentable over Peck in view of Yang.
The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Peck in view of Yang as applied to claim 17 and further in
view of Bӧgel.
The Examiner rejected claims 31 and 33 under 35 U.S.C. § 103(a) as
unpatentable over Gagnon.
Appeal 2010-007525
Application 10/485,613

3
The Examiner rejected claims 34 and 35 under 35 U.S.C. § 103(a) as
unpatentable over Gagnon in view of Wiesenfeld.
The Invention
The claims are directed to methods for applying plaster-like materials
such as stucco, to a building structure, and for restoring/repairing plaster-like
materials on a building structure as well as fastener systems for use in the
above and other methods. (Spec. Para. [0002].)
Claims 17, 18, and 30, reproduced below, are illustrative of the
claimed subject matter (Appeal Brief, Claims Appendix 1-3):1

17. A method of restoring stucco on a building structure
comprising:
removing a portion of original stucco;

replacing removed original stucco with new stucco to a
thickness substantially matching that of any remaining original
stucco;

securing anchors to the building structure through the
original and new stucco;

applying a moisture barrier material over the original and
new stucco after the anchors are secured to the building
structure to provide a moisture barrier that is free of holes
formed by penetration of anchors;

attaching washers to the anchors; and

applying a new layer of stucco over the moisture barrier,
the washers, and the anchors.

1 Appeal Brief filed October 26, 2009, hereinafter “App. Br.” and “Claims
App’x,” respectively.
Appeal 2010-007525
Application 10/485,613

4
18. The method of claim 17 and further comprising:

hanging support mesh on the anchors, wherein the
washers are attached to the anchors after the support mesh is
hung so as to secure the support mesh to the building structure,
and wherein the new layer of stucco is applied over the support
mesh.

30. A fastening system for use in applying cladding to a
building structure, said fastening system comprising:

an integral anchor comprising:

a shaft portion having a first end terminating in a
tip and a second end opposite said first end, said shaft
portion configured for securing to a portion of the
building structure,

an integral collar extending radially outward from
said shaft portion at a distance from said second end, and

an upset stud shaft portion disposed between said
collar and said second end and extending from said collar
away from said tip; and

a washer having at least two retaining fingers for
gripping said upset stud shaft portion of said integral
anchor.

B. ISSUES
1. Did the Examiner correctly find that the Specification lacks
adequate written description for the claim feature “a moisture barrier that is
free of holes formed by penetration of anchors,” as recited in claim 17?
Appeal 2010-007525
Application 10/485,613

5
2. Did the Examiner correctly determine that Peck in view of
Yang discloses or renders obvious the method of restoring stucco recited in
claim 17?
3. Did the Examiner correctly determine that one with ordinary
skill in the art would have had adequate reason to modify Peck based on the
teachings of Yang in accounting for the feature: “washers are attached to the
anchors after the support mesh is hung,” as recited in claim 18?
4. Did the Examiner correctly find that Gagnon discloses the
“integral anchor,” as recited in claim 30?

C. ANALYSIS
Claim 17, Written Description
Claim 17 is an independent claim directed to a method of restoring
stucco on a building. The Examiner rejected claim 17 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Claim 17 includes the following limitation: “applying a moisture
barrier material over the original and new stucco after the anchors are
secured to the building structure to provide a moisture barrier that is free of
holes formed by penetration of anchors.” (App. Br., Claims App’x 1.) The
Examiner found that a “moisture barrier material” that provides a moisture
barrier “free of holes” is not described in the Specification. (Ans. 4.)
The Appellant argues that support for the language that the moisture
barrier is “free of holes formed by penetration of anchors” is found in the
present application in paragraphs [0045], [0058], and [0059] of the
Appellant’s Specification. (App. Br. 11.) The Appellant contends that the
Appeal 2010-007525
Application 10/485,613

6
specific language in the claims is not merely that it is free of holes, but that
“the moisture barrier is free of holes formed by penetration of anchors.”
(App. Br. 12) (emphasis in original). The Appellant submits that the
application is very clear that the anchors are attached to the building
structure prior to application of the moisture barrier material, and the
moisture barrier material is formed directly on the building structure and
around the anchors already secured to the building structure. (App. Br. 12.)
The Appellant argues, therefore, that the penetration of such anchors cannot
possibly cause holes in the moisture barrier because the moisture barrier
would not yet exist. (App. Br. 12.)
We agree with the Appellant that the disputed claim language is
supported by the Appellant’s disclosure. Although the term “free of holes”
does not appear in the specification, it is well settled that compliance with
the written description requirement does not require that the exact same
terms appearing in the claim must also appear in the description. See
Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000).
Rather, to satisfy the written description requirement, an applicant must
simply convey with reasonable clarity to those skilled in the art that he or
she was in possession of the claimed invention. Id. One shows “possession”
of the invention by describing the invention using such descriptive means as
words, structures, or figures that fully set forth the claimed invention. See
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Here, the Specification characterizes prior art methods as deficient
because, inter alia, anchors in the prior art were used after a moisture barrier
was applied, thus penetrating the moisture barrier, which would result in
“holes” in the moisture barrier. (Spec. Para. [0058].) The Specification
Appeal 2010-007525
Application 10/485,613

7
contrasts the prior art method of penetrating the moisture barrier with
anchors with the inventive method which provides for the application of
anchors prior to application of a moisture barrier. (Spec. Para. [0059].)
Thus, the Specification, while not using the term “free of holes,”
characterizes the invention by description of a method that would result in a
moisture barrier that is free of holes formed by penetration of anchors.
Accordingly, we do not sustain the Examiner’s written description
rejection of claim 17 under 35 U.S.C. § 112, first paragraph. Claims 18-28,
40, 41, and 50-55 were also rejected for the same reasons, and thus, we also
do not sustain the written description rejection of those claims.
Claim 17, Obviousness
The Examiner also rejected claim 17 as unpatentable over Peck in
view of Yang. The Examiner found that Peck discloses or otherwise renders
obvious the claimed method of restoring stucco on a building with the
exception that Peck does not expressly disclose applying the moisture barrier
after the anchors are secured to the structure to provide a moisture barrier
that is free of holes formed by the penetration of anchors. (Ans. 6.) The
Examiner found that Yang discloses a fastening system for applying a
moisture barrier that is free from holes formed by the anchor. (Id. at. 6-7.)
The Examiner concluded that it would have been obvious at the time the
invention was made to a person having ordinary skill in the art to use the
anchors in Yang with the system as claimed because using systems such as
the one in Yang are well known in the art for the prevention of unwanted
leaks through the moisture barrier. (Id. at 7.)
The Appellant argues that the rationale as to why one would have
considered replacing the anchors disclosed in Peck with the anchors
Appeal 2010-007525
Application 10/485,613

8
disclosed in Yang is improper. (App. Br. 24-26.) In this regard, the
Appellant contends that Yang is directed to non-analogous art because Yang
is not directed to the field of the Appellant’s endeavor, nor is Yang
reasonably pertinent to the particular problem with which the inventor was
concerned. (Id. at 24-25.) The Appellant submits that one skilled in the art
of stucco restoration would not have considered using a pre-formed rubber
membrane used for roofing, such as that disclosed in Yang. (Id. at 25.)
We are not persuaded by the Appellant’s arguments that Yang is
directed to non-analogous art. A reference is analogous art if it is either in
the field of the applicant’s endeavor or is reasonably pertinent to the
particular problem with which the inventor was concerned. In re Kahn, 441
F.3d 977, 987 (Fed. Cir. 2006). A reference is “reasonably pertinent” if it is
one which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem. In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Furthermore, the problem
examined is not limited to the specific problem solved by the invention but
can be the general problem that confronted the inventor before the invention
was made. In re Kahn, 441 F.3d at 988.
Here, while Yang is not specifically directed to stucco or plaster-like
applications, Yang is concerned with membrane barriers applied to building
structures for preventing leaks, i.e., moisture barriers. (Yang, col. 1, ll. 7-11;
2:12-15.) In this regard, the Appellant’s invention is generally concerned
with structural damage and deterioration of internal building components
caused by water intrusion and moisture entrapment. (Spec. Para. [0003].)
We find that Yang’s disclosure in connection with applying moisture
barriers to buildings would logically have commended itself to an inventor
Appeal 2010-007525
Application 10/485,613

9
seeking to protect building components from exposure to moisture.
Therefore, irrespective of whether Yang is in the same field of endeavor as
the Appellant’s invention, we find that Yang is reasonably pertinent to the
problem with which the Appellant was involved. Accordingly, the
Examiner appropriately relied on Yang in rejecting the claims.
The Appellant also argues that because the sidewalls of Yang’s knob
are tapered inward, the fasteners of Yang would be undesirable for use
where a liquid moisture barrier material is to be sprayed over the fastener as
it would be difficult to spray down the sides of the tapered walls on each
such fastener. (App. Br. 24.)
We are not persuaded by the Appellant’s argument. “[I]t is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review.” In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983). The relevant inquiry is whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
Here, Yang generally teaches that it was known in the art that it is
beneficial in certain circumstances to prevent penetration through the
moisture barrier. In particular, Yang discloses that (Yang, col. 1, ll. 29-34):
There are to two basic kinds of mechanical fasteners namely,
membrane penetrating and non-penetrating ones. Each of these types
of fasteners has a number of favorable features and each of them is
also subject to various drawbacks and disadvantages.

Yang further discloses “it is desirable to have a non-penetrating
system for certain applications to eliminate piercing the membrane.” (Id. at
col. 2, ll. 21-23.) Thus, Yang informs one of ordinary skill in the art that it
Appeal 2010-007525
Application 10/485,613

10
can be advantageous to prevent penetration of a moisture barrier. Such an
understanding is consistent with Peck, which discloses that “any number of
additional sealing components or materials may be utilized to ensure that
water does not leak into the framing structure and/or foundation.” (Peck,
col. 6, ll. 62-65.) Peck also discloses that “any suitable fastening
mechanism” may be used to attach sealing components intended to prevent
water intrusion. (Id. at col. 5, l. 66-col. 6, l. 5.) Although, Peck describes,
by way of example, “screws or nails” as suitable fastening mechanisms, i.e.,
penetrating type components, a skilled artisan would not, in our view, have
regarded Peck’s teachings as excluding the use of other types of known
fastening mechanisms, e.g., those of the non-penetrating variety.
Furthermore, Peck also teaches that “a water resistant membrane layer
514” may be affixed to the outer surface of an existing exterior wall system
500, which may itself consist of old sections of an existing wall system and
reconstructed sections of the wall system. (Id. at col. 7, ll. 21-25.) That is,
Peck conveys that a moisture barrier material may be applied over the
anchors or fasteners already present in original and reconstructed wall
sections.
Thus, the evidence as a whole supports a conclusion that it would
have been obvious to a person of ordinary skill in the art, who is also a
person of ordinary creativity, KSR Int’l Co., Teleflex Inc., 550 U.S. 398, 421
(2007), to incorporate anchors as a part of a building structure fastening
system which uses a moisture barrier in a manner that does not cause
penetration of the moisture barrier, i.e., a barrier that is free of holes formed
by penetration of any anchors. In other words, one with ordinary skill and
creativity in the art would reasonably have appreciated from the teachings of
Appeal 2010-007525
Application 10/485,613

11
the prior art that a viable approach when applying a moisture barrier which
is intended not to be penetrated, would have been to secure anchoring or
fastener components for new or reconstructed sections of a building
structure before placement of the moisture barrier. We, therefore, are not
persuaded of error in the Examiner’s ultimate determination that claim 17
would have obvious based on the teachings of the prior art. We sustain the
rejection.
Claims 20-27, 40, 41, 53, and 54 all ultimately depend on claim 17.
The Appellant argues claims 20-27, 40, 41, 53, and 54 collectively with
claim 17 and only contends that those dependent claims are patentable over
the prior art due to their dependency on claim 17. (App. Br. 26, 35.)
Because we agree with the Examiner that claim 17 would have been obvious
over the teachings of the prior art, we also sustain the rejection of claims 20,
21, 23-27, 40, 41, 53, and 54 over Peck and Yang and claim 22 over Peck,
Yang, and Bӧgel.
We recognize that our reasoning for affirming the Examiner’s
decision to reject the above-noted claims as obvious is based on an
expansion of the reasoning supplied by the Examiner. However, the
affirmance of a conclusion of obviousness based on prior art of record may
be made on another basis. See In re Baxter Travenol Labs, 952 F.2d 388,
391 (Fed. Cir. 1991). In light of the circumstances of this case, we exercise
our authority under 37 C.F.R. § 41.50(b) and designate our affirmance of the
above-noted rejections as constituting new grounds of rejection.
Claim 18
The Examiner also rejected claim 18 as unpatentable over Peck in
view of Yang. Claim 18 is dependent on claim 17 and includes a recitation
Appeal 2010-007525
Application 10/485,613

12
of “wherein the washers are attached to the anchors after the support mesh is
hung.” (App. Br., Claims App’x 1.) The Appellant argues claim 18
separately from claim 17.
The Examiner found that Peck discloses the limitations of claim 18,
but that the washer in Peck does not permit one of ordinary skill in the art to
attach the washer after the mesh is installed. (Ans. 7.) The Examiner found
that the washer in Yang permits one of ordinary skill to install a washer as
claimed. (Id. at 7.) The Examiner concluded that it would have been
obvious at the time the invention was made to a person having ordinary skill
in the art to provide a washer as claimed because the washer in Yang would
permit retention of the mesh. (Id.)
The Appellant argues that, in Peck, the mesh is hung on the anchor,
but is spaced a distance from the moisture barrier, which allows the stucco to
form under and around the mesh and to be better secured by the mesh.
(App. Br. 26.) The Appellant argues that if one of ordinary skill in the art
were to have utilized the fastening systems of Yang, the washers therein
would have pressed the mesh tightly against the moisture barrier, contrary to
the teachings of Peck. (App. Br. 26-27.)
We agree with the Appellant that the Examiner has not sufficiently
established that it would have been obvious to one of ordinary skill in the art
to attach washers to the anchors after the support mesh is hung. In this
regard, Peck discloses fasteners that are installed throughout the area being
restored to ensure that the reinforcing element (i.e. mesh) is held a uniform
distance away from the existing exterior wall surface. (Peck, col. 5, ll. 18-
22; see also col. 3, ll. 41-43.) It is not apparent what, if anything, constitutes
a mesh in Yang, and the reference does not provide guidance as to the
Appeal 2010-007525
Application 10/485,613

13
placement of a mesh. The Examiner has not shown that one of ordinary skill
in the art would have placed Peck’s reinforcing mesh flush against the
moisture barrier, contrary to the teachings of Peck, as would seemingly be
required if one was to use the anchors disclosed in Yang, as is urged by the
Examiner. While the Examiner correctly notes that the claims do not require
that the mesh be spaced at any particular distance from the structure or
moisture barrier (Ans. 21), Peck teaches that, when a mesh is involved, of
concern is creating such a distance. It is unclear, therefore, why a skilled
artisan would have modified Peck’s mesh and anchor configuration as a part
of its exterior wall restoration system based on the teachings of Yang to
arrive at the Appellant’s claimed invention. Accordingly, we do not sustain
the obviousness rejection of claim 18.
Claims 19 and 28 are ultimately dependent on, and thus include all the
limitations of, claim 18. We also do not sustain the rejection of those
dependent claims as unpatentable over Peck in view of Yang. Additionally,
because the Examiner relies on a similar analysis for the rejection of claims
42-52 and 55-56, we also do not sustain the Examiner’s obviousness
rejection of those claims.

Claim 30
The Examiner also rejected claim 30 under 35 U.S.C. § 102(b) as
anticipated by Gagnon. Claim 30 is an independent claim directed to a
fastening system for use in applying cladding to a building structure. (App.
Br., Claims App’x 2-3.)
Appeal 2010-007525
Application 10/485,613

14
The Examiner found that Gagnon discloses a fastening system
comprising an integral anchor as recited in claim 30, and a plate
corresponding to the integral collar of claim 30. (Ans. 4-5.)
The Appellant argues that to the extent that the Examiner views
Gagnon’s “integral collar” as corresponding to the required “plate,” the plate
in Gagnon is a separately formed element from Gagnon’s rock bolt, and thus
not integral with the rock bolt. (App. Br. 36.) The Appellant points out that
in the Advisory Action, the Examiner provided a definition of “integral” as
“formed as a unit with another part.” (App. Br. 37.) The Appellant argues,
however, that the term “unit” is defined as “a single thing.” (App. Br. 37.)
The Appellant argues that a nut and bolt are clearly not a single thing, nor
for that matter, is the plate and rock bolt in Gagnon. (App. Br. 37.)
Here, the dispute centers on the meaning of the claim term “integral.”
During examination, claim terms are given their broadest reasonable
interpretation consistent with the specification. In re Zletz, 893 F.2d 319,
321 (Fed. Cir. 1989). An applicant seeking a narrower construction must
either show why the broader construction is unreasonable or amend the
claim to state expressly the scope intended. In re Morris, 127 F.3d 1048,
1057 (Fed. Cir. 1997).
We note that the term “integral” appearing in claim 30 is similar to the
“integrally formed” terminology that was in dispute in In re Morris. In that
case, the court pointed to a line of precedential cases in which the term
“integral” was interpreted as not limited to a unitary construction and found
that the appellants’ specification did not include any express definition that
conflicted with the broad interpretation of “integral.” In re Morris, 127 F.3d
at 1055-1056. Here, in similar fashion and as the Examiner has concluded,
Appeal 2010-007525
Application 10/485,613

15
the Appellant’s Specification does not provide an explicit definition for
“integral” that would exclude treating integral to include an anchor that
operates as a single unit. We likewise interpret the integral limitation of
claim 30 as requiring only operation as a unit and not necessarily a structure
of a single unitary or homogenous construction. Thus, we reject the
Appellant’s argument that the teachings of Gagnon do not satisfy the integral
anchor of claim 30. Accordingly, we sustain the Examiner’s rejection of
claim 30, and for similar reasons we sustain the Examiner’s rejection of
claim 32, which is dependent on claim 30. Because the Appellant makes
essentially the same argument with respect to the anticipation rejection of
claims 31 and 33 and the obviousness rejection of claims 34 and 35, we also
sustain those rejections.
D. CONCLUSION
1. The Examiner did not correctly found that the Specification
lacks adequate written description for the claim feature “a moisture barrier
that is free of holes formed by penetration of anchors,” as recited in claim
17.
2. The Examiner correctly determined that the combined teachings
of Peck and Yang discloses or renders obvious the method of restoring
stucco recited in claim 17.
3. The Examiner did not correctly determine that one with
ordinary skill in the art would have had adequate reason to modify Peck
based on Yang in accounting for the feature: “washers are attached to the
anchors after the support mesh is hung,” as recited in claim 18.
4. The Examiner correctly found that Gagnon discloses the
“integral anchor,” as recited in claim 30.
Appeal 2010-007525
Application 10/485,613

16
E. ORDER
The rejection of claims 17-28, 40, 41, and 50-55 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is reversed.
The rejection of claims 30 and 32 under 35 U.S.C. § 102(b) as
anticipated by Gagnon is affirmed.
The rejection of claims 17, 20, 21, 23-27, 40, 41, 53, and 54 under
35 U.S.C. § 103(a) as unpatentable over Peck in view of Yang is affirmed.
For the reasons discussed infra, our affirmance of this rejection is designated
a new ground of rejection.
The rejection of claims 18, 19, 28, 42-52, 55-56 under
35 U.S.C. § 103(a) as unpatentable over Peck in view of Yang is reversed.
The rejection of claim 22 under 35 U.S.C. § 103(a) as unpatentable
over Peck in view of Yang as applied to claim 17 and further in view of
Bogel is affirmed. For reasons discussed infra, our affirmance of this
rejection is designated a new ground of rejection.
The rejection of claims 31 and 33 under 35 U.S.C. § 103(a) as
unpatentable over Gagnon is affirmed.
The rejection of claims 34 and 35 under 35 U.S.C. § 103(a) as
unpatentable over Gagnon in view of Wiesenfeld is affirmed.

This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). That section provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
Appeal 2010-007525
Application 10/485,613

17
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner….

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record….

TIME PERIOD FOR RESPONSE
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)(1).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)