Ex Parte Schwartz

Patent Trial and Appeal Board

Oct 15, 2012

10798682 (P.T.A.B. Oct. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOEL A. SCHWARTZ
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Appeal 2010-008099
Application 10/798,682
Technology Center 3600
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Before NEAL E. ABRAMS, CHARLES N. GREENHUT,
and REMY J. VANOPHEM, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Joel A. Schwartz (Appellant) seeks our review under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1, 3-5, 7-9, 13-20, 22 and 23.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2010-008099
Application 10/798,682

2
THE INVENTION
The claimed invention is directed to a rigid insulation product.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A rigid insulation product for use in wood
frame construction, comprising a single unitary
insulating member formed of a single rigid cellular
insulating material having substantially uniform
rigidity, dimensioned to be mounted lengthwise on
a joist header and including a plurality of slots
extending width-wise into the single rigid
insulating material across one side of the member,
each slot being dimensioned to receive an end of a
floor joist, the member including a wall, at the
base of each slot, having a thickness of at least
about 0.375 inch and less than about 1.0 inch, and
the member having a thickness, in regions between
the slots, of from about 1.0 to about 3.0 inches.

THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Berdan, II1 US 6,042,911 Mar. 28, 2000
Charlson US 6,125,608 Oct. 3, 2000
Grinshpun US 6,226,943 B1 May 8, 2001

THE REJECTIONS

1 While Berdan, II is listed on page 2 of the Examiner’s Answer as a
reference relied upon, it was applied only against dependent claims 10 and
21 in the Final Rejection. However, these claims have been canceled (Br.
1), which has been acknowledged by the Examiner (Ans. 2).
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Application 10/798,682

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Claims 1, 3-5 and 7-9 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Grinshpun.
Claims 13-20, 22 and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Grinshpun in view of Charlson.

OPINION

Claims 1, 3-5 and 7-9 – Anticipation
Grinshpun

As illustrated in Fig. 2A, Grinshpun discloses an insulating polymer
foam sheet having a groove 13 for receiving a support member, such as the
wood studs of a wall. The combination is shown in Fig. 2B, wherein a
support member 20 is shown in place in the groove, which is described as
having a “size that will permit it to receive and tightly fit around the support
member” in such a manner that “there are no empty spaces . . . through
which air can travel unimpeded.” Col. 3, ll. 19-22. In furtherance of this
objective, Grinshpun teaches that “[a]t least the portion of the foam sheet
adjacent to the groove is compressible and resilient” which “permits the
foam to yield somewhat to permit the support member to be inserted tightly
into the groove” (Col. 3, ll. 51-55), and that although the entire foam sheet
can be of compressible and resilient material, it is only necessary that the
portions of the foam adjacent to the board be compressible, while other
portions of the foam sheet can be “more rigid.” Col. 4, ll. 6-10. The
Specification also includes a description of the characteristics of the
compressible and resilient portions of the foam sheet (Col. 5, ll. 24-65), and
the rigid portions (Col. 6, l. 67- Col. 7, ll. 1-10).
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Application 10/798,682

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It is the Examiner’s conclusion that all of the subject matter recited in
claim 1 is disclosed in Grinshpun. Ans. 3-4. With regard to the Appellant’s
independent claim 1, the Examiner has found, inter alia, that Grinshpun
discloses “[a] single unitary insulation member (foam sheet, Fig. 2A, 2B)
formed of a single rigid cellular insulating material (col. 4, lines 6-10).”
Ans. 3. In replying to the Appellant’s arguments, the Examiner focuses on
the rigidity limitation in the claim, noting first that while Grinshpun
discloses that at least portions of the foam sheet can be of compressible and
resilient material, other portions are described as being “more rigid,” from
which the Examiner’s concludes that all of the foam must have some
rigidity. Ans. 11. The Examiner goes on to argue that “applicant has failed
to provide any limiting definition of ‘rigid’ in his own specification,” and
since “[d]uring examination claims are given their broadest reasonable
interpretation consistent with the specification,” this limitation “is met by
any material having some amount of rigidity.” Ans. 11.
Early on in the Appeal Brief, the Appellant states that the properties
of the insulating member “will be the focus of the appeal of the rejection of
claim 1.” Ans. 3. Then, after pointing out in detail the differences between
the “compressible and resilient” portions and the “rigid” portions of the
insulating member as disclosed by Grinshpun (Br. 5), the Appellant argues
that Grinshpun does not expressly disclose a rigid foam sheet that has a
“uniform rigidity” or, in the language of claim 1, “a rigid insulation material
. . . having substantially uniform rigidity.” Br. 7.
There is no mention in the Answer of the Appellant’s argued
limitation of “substantially uniform rigidity,” much less a presentation of
evidence or attempt to refute the Appellant’s arguments on this point.
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Moreover, there is no explicit teaching in Grinshpun that the insulating
material disclosed in the patent meets this requirement. Thus, even
considering, arguendo, the Examiner to be correct in finding that the
Grinshpun insulation member qualifies as being “rigid” within the
parameters of the Appellant’s disclosure, the Appellant’s contention that
Grinshpun fails to disclose that the insulating member is formed of a
material “having substantially uniform rigidity” stands uncontroverted. This
being the case, Grinshpun fails to expressly disclose all of the elements
recited in claim 1.
Based upon the reasoning expressed above, the Examiner’s rejection
of independent claim 1 as being anticipated by Grinshpun is reversed. It
follows that the like rejection of claims 3-5 and 7-9, all of which depend
from claim 1, also is reversed.
Claims 13 20, 22 and 23 – Obviousness
Grinshpun In View Of Charlson
Independent claim 13 is directed to a rigid insulation product
comprising “a rigid cellular insulating material having substantially uniform
rigidity” and a wood member bonded to the insulating member. It is the
Examiner’s view that all of the subject matter recited in claim 13 is disclosed
by Grinshpun, in the same manner as with claim 1, except for a wood
member bonded to the insulating member. Ans. 7. However, the Examiner
has found that it would have been obvious to one of ordinary skill in the art
to modify Grinshpun by bonding a wood member to the insulation member,
in view of the teaching of Charlson (Ans. 7-8), because “[it] would be well
within reason to take a non-reinforced foam member and provide it with a
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Application 10/798,682

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reinforcing backing,” as “is taught by both Grinshpun . . . and Charlson”
(Ans. 12).
In setting forth the rejection of claim 13, the Examiner refers to the
rejection of claim 1 (“as set forth above”) to establish that Grinshpun
discloses a “rigid” insulating member. Ans. 7. As was the case with the
anticipation rejection of claim 1, the Examiner has not in this obviousness
rejection dealt with the requirement in independent claim 13 that the
insulating material is of “substantially uniform rigidity.” The addition of the
teachings of Charlson to those of Grinshpun do not overcome this
shortcoming, and therefore the rejection of claim 13 fails for the same
reasons as were advanced above with respect to independent claim 1. The
rejection of independent claim 13 is reversed, as is the rejection of
dependent claims 14-20, 22 and 23, which depend from claim 13.

DECISION
The decision of the Examiner to reject claims 1, 3-5 and 7-9 as being
anticipated by Grinshpun is reversed.
The decision of the Examiner to reject 13-20, 22 and 23 as being
unpatentable over Grinshpun in view of Charlson is reversed.

REVERSED

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