Ex Parte Simmons

Patent Trial and Appeal Board

Oct 30, 2013

11655516 (P.T.A.B. Oct. 30, 2013)

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.
11/655,516 01/18/2007 Robert J. Simmons J-BSIM.1002BD 9235
56703 7590 10/30/2013
JON M. DICKINSON, P.C.
8015 S.E. 31st Ave
PORTLAND, OR 97202
EXAMINER
FONSECA, JESSIE T
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
10/30/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT J. SIMMONS
____________________

Appeal 2011-013335
Application 11/655,516
Technology Center 3600
____________________

Before: EDWARD A. BROWN, CHARLES N. GREENHUT, and
PATRICK R. SCANLON, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013335
Application 11/655,516
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2, and 6. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a method of fabricating a building frame
structure. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of installing an elongate, structural I-beam
between, and in direct frictional engagement with, a pair of
nominally in-place, previously installed structural building-
frame elements which, before such I-beam installing, are spaced
apart by a substantially correct lateral distance, and where the I-
beam includes a generally planar, upright, unitary central web
joined to upper and lower flanges, said method comprising
establishing for each of such two spaced elements a
joined anchor point in the form of (a) a pair of spaced,
substantially parallel-planar, upright plate components which
are spaced apart in a manner creating an upright, generally
planar, straight-down vertically accessible, open-topped I-
beam-web receiving zone having a lateral width structured for
freely, and directly contactively frictionally, receiving the
opposite sides of the thickness of such an I-beam's unitary,
central web, and (b) a spanning device extending between such
plate components at a location which is below the open top of
the receiving zone,
preparing each of the opposite ends of such an I-beam's
unitary central web (a) through removing like portions of the I-
beam's upper and lower flanges, to produce, at each end, a
flange-free, unitary, web end extension which extends beyond
remaining, non-removed portions of the flanges, thus to
configure each web end extension to be vertically, completely
clear so as to permit downward insertion of it freely[, ]relative
to any potentially interfering flange structure, into a created
receiving zone and through the open top of that zone, with an
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Application 11/655,516
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inserted web end extension being free to be adjusted vertically
within the receiving zone without any flange interference, and
(b), through removal of a lower portion of each created web end
extension, to produce in the extension a downwardly facing
hook designed to catch and seat downwardly by gravity against
a spanning device of the type mentioned, said hook producing
resulting in a hook which is fully homogenous, integrated, and
unitary in the central web in the I-beam,
vertically lowering a prepared-web-end I-beam to cause
its prepared web end extensions to be inserted into the receiving
zones associated with the established anchoring points
associated with the two spaced building-frame elements, with
the hooks in the prepared web end extensions catching and
becoming seated on the spanning devices associated with such
anchor points, and without requiring any appreciable increasing
of the pre-lowering lateral spacing between the building-frame
elements, and
by said vertically lowering, (a) causing the lowered I-
beam to become attached and interconnected by gravity to the
spaced building-frame elements, and (b) creating a condition of
gravity-stabilized, correctly spatially organized interlock of the
lowered I-beam and the interconnected, spaced building-frame
elements.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Holcomb
Rensch
Nolle
U.S. 2,872,750
U.S. 3,706,169
FR 2471461
Feb. 10, 1959
Dec. 19, 1972
Jun. 19, 1981

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REJECTION
Claims 1, 2, and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nolle1, Rensch, and Holcomb. Ans. 3.

OPINION
We agree with the Examiner that Nolle discloses the basic method
claimed, but without the flange-removal steps, provision of a hook and
spanning device, and, arguably, frictional engagement. Ans. 4-5. These
differences of Nolle are pointed out by Appellant (App. Br. 20), but this is
not a point of contention.
We also agree with the Examiner’s findings and conclusions
regarding Rensch. Rensch demonstrates that the technique of removing
flanging to create flange-free I-beam portions was known in the art. It is this
technique the Examiner proposes that it would have been obvious to apply to
arrive at the structure of Nolle. Appellant’s arguments concerning
modification to Rensch’s structure with Holcomb’s teachings (App. Br. 18-
19) and Appellant’s argument concerning modification of Holcomb’s
structure with Rensch’s teachings (App. Br. 20) are irrelevant to the
rejection set forth by the Examiner. Whereas the Examiner clarifies the
Office’s position that no proposal was ever made to modify the structure of
Rensch (Ans. 11), Appellant responds with a complete mischaracterization
of the Examiner’s position by stating that the Examiner has not proposed
that it would have been obvious to modify any of the prior art methods to
account for the differences between the prior art and the claimed subject
matter. See Reply Br. 1-2. This is clearly not the case.

1 References to Nolle are to the English-language translation entered May
24, 2011.
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We also agree with the Examiner’s findings and legal conclusions
regarding Holcomb. Holcomb demonstrates that the technique of providing a
hooking element to cooperate with a spanning element when assembling a
structural framework was known in the art. Appellant’s argument
concerning analogousness, noting Holcomb’s beams are likely to be more
compressible due to their bifurcated nature and Holcomb’s sign is
lightweight and temporary, hinges upon form and scale. We cannot agree
with Appellant that Holcomb’s framework assembly technique would have
been overlooked or disregarded by the skilled artisan simply by virtue of
being used to assemble a structure that employs elements that are less strong
and less rigid since those design considerations are not critical to Holcomb’s
application. One skilled in the art would have the mechanical skill to
understand that changes to form, materials, or dimensions could be made to
arrive at the strength and rigidity desired for the particular application. See,
e.g., Powers-Kennedy Contracting Corp. v. Concrete Mixing & Conveying
Co., 282 US 175, 185-7 (1930). Thus, we must disagree with Appellant that
Holcomb would not have commended itself to an inventor’s attention when
considering problems related to structural framework assembly. See, e.g., In
re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
Lastly, we turn to the issue regarding frictional engagement. At first
the Examiner appears to indicate that such a technique is taught by Rensch.
Ans. 6. Presumably, this is because there does not appear to be any gap
between the elements in Rensch’s figures, thereby necessarily creating
friction. Rensch’s Specification, however, is silent on the issue. See, e.g.,
Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 956
(Fed. Cir. 2000) (“[I]t is well established that patent drawings do not define
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Application 11/655,516
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the precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.”).
The Examiner additionally cites Nolle’s shims or wedges 6 regarding
the frictional engagement technique. Ans. 6. The English-language word that
best describes these elements is the subject of much debate. App. Br. 17;
Reply Br. 3. What these elements are called is much less relevant than
Nolle’s passage regarding their use:
Depending on the cross section of these beams and,
consequently, the thickness of their web, one can insert on
either side of the latter some variable thickness wedges in order
to fill the space remaining between two parallel flanges and the
web of the beam
(Nolle, p. 3). Nolle recognizes, as the skilled artisan would, that the relative
dimensions of the beam web 5 and the receiving flanges 1 may be variable.
Such variation will produce either a gap, contact, or interference between the
web and flanges. The structure referenced by numeral 6 is intended to be
used only if such a gap exists. If, on the other hand, contact or interference
exists, even if only in a slight amount, it would necessarily produce friction
when fitting the web 5 and flanges 1 together as is required by the claim.
Since this arrangement would be the consequence of mere changes in
proportion, we cannot agree with Appellant that such a difference amounts
to nonobvious invention absent some new and unexpected result. See, e.g.,
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); Powers-Kennedy Co.
v. Concrete Co., supra. There being no evidence of such of record, we must
agree with the Examiner’s conclusion.

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DECISION
The Examiner’s rejection 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)(1)(iv).

AFFIRMED

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