Ex Parte Smith

Patent Trial and Appeal Board

Dec 31, 2018

14613942 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/613,942 02/04/2015
30743 7590 12/31/2018
W&CIP
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
FIRST NAMED INVENTOR
Rodney I. Smith
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
04050056AA 8913
EXAMINER
SADLON, JOSEPH
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
12/31/2018 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 RODNEY I. SMITH
Appeal2017-002808
Application 14/613,942
Technology Center 3600
Before STEFAN STAICOVICI, LYNNE H. BROWNE, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rodney I. Smith ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's decision to reject under 35 U.S.C. § 103(a): (1) claims 1, 4,
5, and 7-11 as unpatentable over Rubio (US 7,681,368 Bl, issued Mar. 23,
2010), Ritter (US 6,272,805 Bl, issued Aug. 14, 2001), and Farrier (US
2,691,433, issued Oct. 12, 1954); and (2) claim 6 as unpatentable over
Rubio, Ritter, Farrier, and Ackley (US 2,150,898, issued Mar. 21, 1939).
Appellant presents additional evidence in the Declaration of inventor
Rodney I. Smith ("Smith Declaration") filed under 3 7 C.F .R. § 1.132 on
Appeal2017-002808
Application 14/613,942
February 26, 2016. 1 Claims 2 and 3 have been canceled. An Oral Hearing
in accordance with 37 C.F.R. § 41.47 was held on November 6, 2018. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a prefabricated building panel.
See Spec. 1:5, Figs. 1, 2.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. A prefabricated building panel, comprising:
a concrete slab having a thickness equal to or less than 2
inches;
a plurality of stainless steel anchors permanently
imbedded in said concrete slab;
framing including a plurality of studs or beams
permanently secured to said concrete slab by said plurality of
stainless steel anchors for structural reinforcement, said plurality
of stainless steel anchors maintaining a spacing between said
concrete slab and said framing of at least 2.0 inches; and
a continuous insulation which fills said spacing between
said concrete slab and said framing of at least 2.0 inches and
extends between the webs of adjacent studs or beams of said
framing so that a total insulation thickness is greater than the size
of said spacing, wherein said continuous insulation supplies
weight bearing support to the prefabricated building panel.
1 See Appeal Brief 27, Evidence App. ("Appeal Br."), filed Sept. 13, 2016.
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Application 14/613,942
ANALYSIS
Obviousness over Rubio, Ritter, and Farrier
Claims 1, 4, and 7-11
Appellant does not offer arguments in favor of dependent claims 4
and 7-11 separate from those presented for independent claim 1. See
Appeal Br. 14--20. We select claim 1 as the representative claim, and claims
4 and 7-11 stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). We
address claim 5 separately below.
Appellant contends a skilled artisan "would not be instructed by a
Rubio/Ritter combination or a Rubio/Ritter/Farrier combination to have a
prefabricated-building panel with an insulation-filled gap of at least 2.0
inches between a concrete slab and framing." Reply Br. 1; see also Appeal
Br. 14--17.2 In particular, Appellant contends "Ritter does not disclose a
'framing including a plurality of studs or beams'. There are no studs or
beams employed or employable in Ritter's building element." Appeal Br. 16
( emphasis omitted); see also Reply Br. 1 ("Ritter discloses several different
embodiments of wall panels not one of which includes framing of studs or
beams."). Thus, Appellant concludes "Ritter cannot possibly disclose 'a
spacing between [a] concrete slab and [a] framing [including a plurality of
studs or beams]' in contrast to [Appellant's] claim 1." Appeal Br. 16
( emphasis omitted); see also Reply Br. 1-2.
In this case, the Examiner is not relying on Ritter for these concepts.
Thus, Appellant's argument is not directed to the rejection as set forth by the
Examiner. The rejection is based on the combined teachings of Rubio,
2 Reply Brief ("Reply Br."), filed Dec. 27, 2016.
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Application 14/613,942
Ritter, and Farrier. In the Answer, the Examiner clarifies (1) "the primary
reference of Rubio essentially teaches the structure of the building panel of
the invention-namely the prefabricated building panel comprising a concrete
slab secured by a plurality of studs to a plurality of anchors to enclose in a
space defined therebetween a continuous insulation which fills said space";
(2) "Ritter was not relied upon to teach a plurality of beams. The primary
reference of Rubio teaches such beams"; and (3) Ritter discloses "known
spacing between an insulative core and a concrete outer panel." See Ans. 9,
13-14. 3 The Examiner looks to Ritter for disclosing "[t]he distances
[ spacing] from the insulating body 8 to the wire grid mats 1, 2 are ... freely
selectable" (see Ritter, 6: 13-15) and finds that Ritter's disclosure of "freely
selectable" spacing would include a spacing of "at least 2.0 inches," which
"would be within the skill of a person having ordinary skill in the art." See
Non-Final Act. 4; see also Ans. 13-14. 4 The Examiner concludes as "Ritter
makes clear that the claimed dimensions are known" and as "Rubio
anticipates the framing, and the concrete and the foam," it would have been
obvious to a skilled artisan "to modify the spacing of Rubio by adopting the
spacing as taught by Ritter." See Ans. 14.
Appellant counters that the "free selection" of insulation-to-wire-grid-
mat distance of Ritter has nothing to do with the Appellant's claims.
Appellant contends "Ritter describe[s] the distance between an insulating
body and a wire grid mat that is concrete-filled." Reply Br. 3; see also id. at
4 ("Ritter describes a distance between an insulating body 7 and a wire grid
mat. The distance disclosed by Ritter is filled with concrete. The distance
3 Examiner's Answer ("Ans."), dated Oct. 24, 2016.
4 Non-Final Office Action ("Non-Final Act."), dated Mar. 14, 2016.
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Application 14/613,942
disclosed by Ritter is not a spacing between a concrete slab and framing.").
In contrast, according to Appellant, the "claimed 'gap' is not a concrete-
filled distance. Rather, [Appellant] claims an insulation-filled gap of at
least 2.0 inches." Id. at 3. Appellant further contends the insulation-filled
gap of the subject invention "is between a concrete slab and framing,
whereas Ritter's concrete-filled distance is between insulation and a wire
grid mat" and "[i]n no way does a concrete-filled distance between
insulation and a wire grid mat suggest to [ a skilled artisan] an insulation-
filled gap of at least 2.0 inches between a concrete slab and framing," as
claimed. Reply Br. 3.
Again, Appellant's arguments are not directed to the rejection as set
forth by the Examiner. Further, Appellant's arguments are against Ritter
individually, where the rejection is based on the combination of Rubio,
Ritter, and Farrier. See Ans. 14. To the extent Appellant is arguing the
references must be capable of bodily incorporation in order to combine their
teachings, 5 the test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of a
primary reference. In re Keller, 642 F.2d 413,425 (CCPA 1981). "Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art." Id.
In this case, the Examiner relies on the teachings of Rubio for
disclosing a concrete slab 24, framing 22, a continuous insulation 20, and
5 See e.g., Reply Br. 1-2 ("[B]ased on the universal use of wire grid mats in
Ritter and the absolute nonexistence of framing of Ritter, a Rubio/Ritter
combination would arguably lead [a skilled artisan] to eliminate the framing
in Rubio and attempt using a wire grid mat and a second concrete layer
instead.").
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Application 14/613,942
spacing between the concrete slab and the framing. See Non-Final Act. 3;
see also Rubio, Fig. 2. The Examiner relies on the teachings of Ritter
merely to establish that the claimed "spacing" dimensions are known and
"freely selectable" according to Ritter's teachings. See Non-Final Act. 4;
see also Ans. 9, 13-14; Ritter, 6: 12-15. The Examiner takes the position
that Ritter's disclosure of "freely selectable" spacing would include the
claimed "spacing" dimensions, which "would be within the skill of a person
having ordinary skill in the art." See Non-Final Act. 4; see also Ans. 9, 13-
14; Ritter, 6:12-15. The Examiner relies on the teachings of Farrier for
disclosing "an insulating panel to provide structural, 'weight bearing."' See
Non-Final Act. 4--5; see also Ans. 13. That the combination of Rubio,
Ritter, and Farrier may teach additional structure does not prevent the
Examiner from relying on each reference for limited purposes. Appellant
does not provide persuasive evidence or argument apprising us of error in
the Examiner's proposed reasoning for the combined teachings of Rubio,
Ritter, and Farrier. 6
Appellant contends that the Examiner "has given insufficient weight"
to the Smith Declaration. See Appeal Br. 16-18 (emphasis omitted). In
particular, Appellant contends "[t]he Examiner has not presented any
evidence which substantiates the claim that [it] is known to modify the
spacing between a slab and frame specifically to achieve a desired level of
6 Although we agree with Appellant that the Examiner has not established a
prima facie case of obviousness for elongation of anchors in a prefabricated
building panel (see Reply Br. 4; see also Ans. 9-13), as discussed above,
Appellant does not provide persuasive evidence or argument apprising us of
error in the Examiner's proposed reasoning for the combined teachings of
Rubio, Ritter, and Farrier.
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Application 14/613,942
insulation because doing so would increase the R value of the assembly."
Appeal Br. 17-18; see also Smith Declaration ,r 8.
In response to Appellant's contention, the Examiner states:
[I]t is obvious to anyone familiar with insulation that increasing
the size of insulative material -be it air, water, concrete, wood,
or expanded foam- increases the amount of insulative material
which can interact with a heated or cooled substrate (see for
example US 8844230 B2 to Harkins; US 7281561 B2 to
Anderson et al.; US 8726598 B2 to Harding; US 7631878 Bl to
Orlowski et al.; and US 4446664 A to Harkins).
Ans. 15. Appellant does not apprise us of Examiner error. See Reply Br. 5.
Appellant contends the Examiner has not shown "any" consideration
of the objective evidence presented in the Smith Declaration, which
"demonstrated unexpected results." See Appeal Br. 18-20 (emphasis
omitted). In particular, Appellant contends data provided in the Smith
Declaration "show[ s] the results of two separate sample building panels
tested in accordance with ... an internationally recognized standard ... for
the thermal performance measurements of large-scale building assemblies,"
wherein one sample building panel had a substantially lower overall heat
transfer coefficient (U-value) over another sample building panel. Id. at 18-
19; see also Smith Declaration ,r,r 11-14, Table.
Claim 1 recites nothing about recognized standards, thermal
performance measurements, or an overall heat transfer coefficient (U-value ).
Appeal Br. 25, Claims App.; see also id. at 18-19. Thus, Appellant's
argument is not commensurate in scope with the claims. See In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (Limitations not appearing in the claims
cannot be relied upon for patentability).
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Appellant contends the unexpected result of a substantially lower U-
value of one sample building panel over another sample building panel "is
attributed not merely to an increase in foam thickness, but to the increase in
the spacing between the concrete slab and framing studs." Appeal Br. 19;
see also Smith Declaration ,r,r 10-14, Table. In other words, Appellant
acknowledges that "an increase in foam thickness" also contributes to the
unexpected result of one sample building panel having a substantially lower
U-value over another sample building panel. Thus, Appellant has not shown
that "increas[ing] the spacing between the concrete slab and framing studs"
alone contributes to the unexpected result of a substantially lower U-value of
one sample building panel over another sample building panel.
Appellant contends "[ n Jo prior art or other evidence furnished by the
Examiner shows the criticality of the spacing between the concrete slab and
the framing and its sizing ... Only [Appellant] has shown this discovery and
arrived at a spacing size of 'at least 2.0 inches'." Appeal Br. 19--20.
However, in this case, Appellant has not shown criticality of a spacing
size of "at least 2.0 inches." The Specification describes no particular
criticality to the spacing between the concrete slab and the framing, and, in
fact, describes spacing of "0.5 inch to 3 inches," "at least 1.5 inches," "at
least 2.0 inches," and "at least 2.5 inches or more." See Spec. 4:24--27.
Thus, we do not discern that a spacing between the concrete slab and the
framing of "at least 2.0 inches" is critical.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Rubio, Ritter, and Farrier. Accordingly, we sustain the Examiner's rejection
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of claim 1. We further sustain the rejection of claims 4 and 7-11, which fall
with claim 1.
Claim 5
Appellant contends the recitation of a concrete slab thickness of
"between 1.5 and 2 inches" in claim 5 "would not be obvious to one of
ordinary skill in the art as it would not be expected by one of ordinary skill
to be of sufficient strength when combined with a large spacing of at least
2.0 inches between the concrete slab and framing." Appeal Br. 22.
According to Appellant, "the claimed invention would perform differently
than the prior art device on account of different dimensions" (Appeal Br. 21
( emphasis omitted)) and "[ t ]wo important performance characteristics
affected by dimensions are structural integrity and thermal insulation.
However, the performance characteristics of a prefabricated building panel
only emerge from the combination of the constituent parts" (Id. ( citing
Spec. 2:11-14)).
Here, Appellant acknowledges Rubio discloses that "[t]he thickness of
the concrete may vary with the wall specifications." Id.; see also Rubio,
4:23-24. In addition, the Examiner points out that Ritter discloses "the
thickness of the insulating body is ... 'freely selectable' and 'lies for
example in the range from 20 to 200mm' ... and ... the thickness of the
inner or outer concrete layers is ... 'for example from 20 to 200mm' ." Ans.
14 (citing Ritter, 6: 12, 7:60-8: 15). The Examiner also points out that 20 to
200mm is "equivalent to .78 inches and 7.8 inches," which includes the
claimed range of "between 1.5 and 2 inches." See id.
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Given that Rubio discloses concrete thickness that may vary and
Ritter discloses concrete thickness that is "freely selectable" and within the
claimed range, it stands to reason a skilled artisan would look to the
teachings of Ritter to modify the concrete slab thickness of Rubio.
Appellant does not provide persuasive evidence or argument to the contrary.
In addition, as discussed above, the Examiner looks to the teachings of
Farrier for the "weight bearing support" limitation of claim 1, from which
claim 5 depends. See Non-Final Act. 4--5; see also Ans. 13. Appellant does
not address the Examiner's proposed modification of Rubio and Ritter in
view of the teachings of Farrier. See Appeal Br. 20. Thus, Appellant does
not apprise us of Examiner error.
Appellant contends "Rubio is not faced with a prefabricated building
panel in which the concrete slab is spaced apart from the framing by at least
2.0 inches." Appeal Br. 22. However, as discussed above, the Examiner
relies on the teachings of Ritter for disclosing the claimed "spacing"
dimensions and proposes modifying the spacing between the concrete slab
and the framing of Rubio based on the teachings of Ritter. Appellant does
not provide persuasive evidence or argument apprising us of error in the
Examiner's proposed reasoning for the combined teachings of Rubio and
Ritter.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting dependent claim 5 as unpatentable over
Rubio, Ritter, and Farrier. Accordingly, we sustain the Examiner's rejection
of claim 5.
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Obviousness over Rubio, Ritter, Farrier, and Ackley
Claim 6
Appellant contends Ackley fails to make up for the deficiencies of
Rubio and Ritter. See Appeal Br. 20.
As we find no deficiencies in the Examiner's rejection of independent
claim 1 as unpatentable over Rubio, Ritter, and Farrier for the reasons
discussed above, we likewise sustain the Examiner's rejection of dependent
claim 6 as unpatentable over Rubio, Ritter, Farrier, and Ackley.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 4, 5, and
7-11 as unpatentable over Rubio, Ritter, and Farrier.
We AFFIRM the decision of the Examiner to reject claim 6 as
unpatentable over Rubio, Ritter, Farrier, and Ackley.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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