Ex Parte Simmons

Board of Patent Appeals and Interferences

Jun 29, 2009

11243745 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT J. SIMMONS
____________________

Appeal 2009-002925
Application 11/243,745
Technology Center 3600
____________________

Decided:1 June 30, 2009
____________________

Before JAMESON LEE, SALLY G. LANE and MICHAEL P. TIERNEY,
Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Robert J.
Simmons, under 35 U.S.C. § 134(a) from a final rejection of claims 1-7.
Appellant requests reversal of the Examiner’s rejection of those claims. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

References Relied on by the Examiner
Lin 6,247,281 Jun. 19, 2001

The Rejections on Appeal
The Examiner rejected claims 1-7 under 35 U.S.C. § 102(b) as
anticipated by Lin. Claim 1 is the only independent claim. The Appellant
argues the patentability of claims 2-7 collectively with independent claim 1.

The Invention
The invention relates to a tongue and groove interface between a
plurality of building surface panels. (Spec. ¶¶ 0003-0005).2 Particularly, the
tongue and groove interface is designed to provide for in-plane movement
between panels, yet inhibit movement between panels in a direction normal
to the plane of the panels. (Id.).
Claim 1, is illustrative of the claimed invention and is reproduced
below:
1. A plural-story, external, building-surface panel system
securable to a structural building frame, each panel in said
system comprising

2 References to the specification are to U.S. Publication 2006/0075703.
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a generally planar panel body having elongate, unitary,
fixed-configuration, upper, lower and lateral edge-defining
structures,
elongate, laterally dimensionally fixed tongue structure
operatively associated with, and extending along, said upper
edge-defining structure generally in the plane of said body, and
elongate, laterally dimensionally fixed groove structure
operatively associated with, and extending along, said lower
edge-defining structure, fittingly compatible with said
tongue structure generally in the plane of said body,
vertically, and substantially coplanar, next-adjacent
panels being associated with one another, when positioned
appropriately relative to a building frame, in a manner of
unidirectional, normal to the planes of the panels, lateral
interlock with respect and relative to one another, with the
laterally dimensionally fixed groove structure in the upper panel
complementarily, and lateral load-transmissively, receiving the
laterally dimensionally fixed tongue structure in the lower panel
to permit (a) substantially unhindered relative in-plane motions
between the panels, and positively to inhibit (b) any lateral,
relative, inter-panel motion in a direction which is generally
normal to the planes of the panels.

(App. Br. Claims App’x 1).

B. ISSUE
1. Has Appellant demonstrated that the Examiner incorrectly determined
that Lin teaches a dimensionally fixed tongue and groove structure?
2. Has Appellant demonstrated that the Examiner incorrectly determined
that Lin teaches building frame panels having certain motion properties
when configured in a vertical manner relative to a building frame?
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C. FINDINGS OF FACT
1. Lin teaches a wall plank structure wherein opposite wall planks
(panels) are joined to one another using a projection (tongue) and recess
(groove) structure. (Lin, col. 2, ll. 36-39, Figs.4-6).
2. Lin Figures 4 and 6 are depicted below and show Lin’s tongue and
groove structure.

Lin Figures 4 and 6 are depicted above and show Lin’s tongue and
groove structure for the attachment of adjacent wall panels.
3. Lin Figures 4 and 5 depict two panels of Lin orientated vertically
above one another. (Id. at Figs.4-5).
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4. Lin teaches a plurality of panels formed by light metal sheets, PVC,
etc. (“sheets”) 1, 2 that are filled by a PU foaming agent 3. (Lin, col. 2, ll.
29-33).
5. Lin teaches that the PU foaming agent 3 serves to tightly associate the
sheets 1, 2 together so as to form a complete wall panel structure. (Id. at col.
2, ll. 47-49).
6. Lin Figures 4-6 depict the foam 3 as fully filling the space between
the sheets 1, 2. (Id. at Figs.4-6).
7. Lin Figures 5-6 depict that the respective tongue and groove of
adjoining panels are in direct contact with one another in a lateral direction
when the wall assembly is formed. (Id. at Figs.5-6).
8. Lin teaches optional adjoining layers 5 that may be omitted to allow
left and right side walls of the upper and lower panels to be directly
overlapped as shown in Figure 6. (Id. at col. 2, ll. 64-67).

D. PRINCIPLES OF LAW
A claim is anticipated “when each and every element as set forth in
the claim is found, either expressly or inherently described in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

E. ANALYSIS
The Examiner found that Lin teaches a structure meeting all of the
limitations of claims 1-7. (Ans. 3-4). Specifically, the Examiner found that
Lin teaches panels having a fixed dimension once manufacture is complete
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(solidification of the foaming agent). (Id. at 10). Moreover, the Examiner
found that Lin teaches a dimensionally fixed tongue and groove structure
that: (a) allows substantially unhindered relative in-plane motions between
the panels, and (b) inhibits any lateral relative inter-panel motion in a
direction generally normal to the planes of the panels. (Id. at 5, 7 and 10).
The Examiner further found that Lin Figures 4-5 teach the use of
substantially coplanar, vertically joined next-adjacent panels being
associated with one another, when positioned appropriately relative to a
building frame. (Id. at 5 and 8-12).
Appellant contends that the Examiner’s findings were improper.
Particularly, Appellant contends that Lin does not teach a tongue and groove
structure having fixed dimensions. (App. Br. 7-10). Appellant also
contends that Lin’s panels are connected side-by-side rather than vertically
as required by the claims. (App. Br. 9-10 and Reply Br. 1-2). Appellant
further contends that Lin’s panels fail to inhibit relative movement between
the panels in a normal direction. (App. Br. 7-8).

1. Lin teaches tongues and grooves having fixed dimensions

As discussed above, Appellant contends that Lin does not teach a
tongue and groove structure having fixed dimensions. (App. Br. 8-10).
Particularly, Appellant contends that Lin’s adjoining layer 5 does not allow
for panels having fixed dimensions. (Id. at 9-10). This contention is not
supported by the record. Although Lin teaches an adjoining layer 5, Lin
explicitly states that adjoining layer 5 may be omitted if desired. (Id. at col.
2, ll. 64-67). For example, Lin Figure 6 depicts a tongue and groove
connection between opposing panels where the adjoining layer 5 has been
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omitted. (Id. at Fig.6.) Furthermore Lin Figure 6 shows the respective
tongue and groove as being of a fixed dimension wherein the respective
parts (tongue of one panel, groove of another panel) are in direct contact
with one another. Accordingly, Appellant has not demonstrated that the
Examiner improperly determined that Lin teaches tongues and grooves of
fixed dimensions.

2. Vertical Panels

Appellant contends its claimed panels are joined vertically whereas
Lin’s panels are laterally joined in a side-by-side manner. (App. Br. 9 and
Reply Br. 1-2). Appellant’s contentions are unpersuasive. Appellant’s
claims do not require panels that are vertically associated with one another,
rather they require panels having certain properties when placed in a vertical
configuration. Further, Lin depicts the use of a plurality of panels that are
disposed in a vertical relationship with respect to one another where the
vertically configured panels would possess the claimed properties. These
issues are discussed in further detail below.

a. Appellant’s Claims Are Not Limited to Panels Connected
in a Vertical Configuration

Appellant’s claims are directed to a panel system. The system
comprises a panel having a fixed tongue and groove system. The claims
require that its panels have certain functional properties when the panels are:
vertically, and substantially coplanar, next-adjacent panels
being associated with one another, when positioned
appropriately relative to a building frame, in a manner of
unidirectional, normal to the planes of the panels, lateral
interlock with respect and relative to one another, with the
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laterally dimensionally fixed groove structure in the upper panel
complementarily, and lateral load-transmissively, receiving the
laterally dimensionally fixed tongue structure in the lower panel
to permit (a) substantially unhindered relative in-plane motions
between the panels, and positively to inhibit (b) any lateral,
relative, inter-panel motion in a direction which is generally
normal to the planes of the panels.

(App. Br. Claims App’x 1, emphasis added).
The claims do not require the panels necessarily be in a vertical
configuration, but “when” the panels are appropriately positioned they are
required to have specific functional properties. Thus, the claims do not
require that the panels be in a vertical configuration, but rather have
properties, such as unhindered relative in-plane motion, when placed in a
vertical configuration.

b. Lin’s Figures Teach Vertically Configured Panels

Appellant does not dispute that Lin Figures 4-5 depict vertically
configured panels, but instead contends that Lin does not depict “real-world”
vertical panels. (Reply Br. 1-2). As discussed above, Appellant’s claims do
not require a vertical configuration. Furthermore, Lin depicts what it depicts
and Appellant does not provide evidence to support its attorney argument
that one of ordinary skill in the art would fail to understand that Lin’s
vertical configuration has a practical “real-world” application having the
requisite motion properties. (App. Br, Evid. App’x, p. 4 (“NONE”)).

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3. Lin’s Panels Inhibit “Inter-Panel” Movement Normal to the
Plane of the Panels

Appellant contends that Lin’s panels do not inhibit relative movement
in a normal direction to the plane of the panels. (App. Br. 7-9). In particular
Appellant states that “there is a very high likelihood that a transverse load,
such as the wind load of the type mentioned above herein, will indeed
produce relative, transverse, i.e., cross-panel-plane, inter-panel motion
between next adjacent panels …” (App. Br. 8). Appellant however fails to
identify evidence of record to support its contention. (App. Br, Evid. App’x,
p. 4 (“NONE”)).
Lin Figures 5-6 depict adjoining panels connected via a tongue and
groove structure. Lin’s panels are in direct contact with one another in a
lateral direction when the wall assembly is formed. (Id. at Figs. 5-6). Thus,
when a perpendicular force is applied to one panel the applied perpendicular
force would be transmitted to the next adjacent panel. Accordingly,
Appellant has failed to demonstrate that Examiner incorrectly determined
that Lin’s adjacent panels would inhibit inter-panel movement in a direction
generally normal to the plane of the panels.

4. Lin’s Panels Allow for “In-Plane” Movement Between Panels

Appellant states that claim 1 requires relative in-plane motion and
prohibits motion normal to the planes of the panels. (App. Br. 11).
Appellant states that this feature provides “yet another reason why claim 1 is
allowable over the applied art.” (Id.). Appellant fails to explain why its
claimed panels, having the same structure as Lin, move in a manner different
than Lin’s panels. Accordingly, we hold that Appellant has not shown that
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the Examiner improperly determined that Lin allows for movement in an in-
plane motion.

F. CONCLUSION
1. Appellant has not demonstrated that the Examiner incorrectly
determined that Lin teaches a dimensionally fixed tongue and groove
structure.
2. Appellant has not demonstrated that the Examiner incorrectly
determined that Lin teaches building frame panels having certain motion
properties when configured in a vertical manner relative to a building frame.

G. ORDER
The rejection of claims 1-7 under 35 U.S.C. § 102(b) as anticipated by
Lin 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)(1)(iv).

AFFIRMED

KMF

Robert D. Varitz, P.C.
4915 SE 33RD Place
Portland, OR 97202