Ex Parte Wheatley et al

Patent Trial and Appeal Board

Jun 30, 2016

12212151 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/212,151 09/17/2008
27572 7590 07/05/2016
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
FIRST NAMED INVENTOR
Donald E. Wheatley
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.
8454-000004/US 9803
EXAMINER
ADAMOS, THEODORE V
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
07/05/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD E. WHEATLEY and TODD JACKSON
Appeal2014-004773
Application 12/212, 151 1
Technology Center 3600
Before: JOHN C. KERINS, STEFAN STAICOVICI, and
LEE L. STEPINA, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Donald E. Wheatley and Todd Jackson (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner's Final decision rejecting claims 6-
15 and 17-20. 2 We have jurisdiction under 35 U.S.C. § 6(b).
According to Appellants, the real party in interest is Fortress
Stabilization Systems. Appeal Br. 2 (filed Nov. 15, 2013).
2 Claims 1-5 were canceled by Appellants in the After-Final
Amendment filed on Sept. 9, 2013, which was approved by the Examiner in
the Advisory Action (mailed Sept. 23, 2013). Claim 16 was canceled in a
Supplemental After-Final Amendment filed with the Appeal Brief that was
also approved by the Examiner in the Advisory Action (mailed Nov. 22,
2013).
Appeal2014-004773
Application 12/212,151
SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellants' invention "relates to a system and method for wall
reinforcement including an anchor system for coupling walls and support
members." Spec. i-f 2.
Claims 6, 11, and 20 are independent. Claims 6 and 11 are illustrative
of the claimed invention and read as follows:
6. A structure, comprising:
a wall;
a support member supported on top of said wall and
disposed above said wall;
a bracket having a base portion secured directly to said
support member by a plurality of fasteners at a location above
said wall and a strap support portion connected to said base
portion; and
a strap having a length dimension and a width dimension,
said length dimension being greater than said width dimension,
said strap including first and second end portions along said
length dimension and an intermediate portion disposed between
said first and second end portions along said length dimension,
said intermediate portion being directly engaged with said strap
support portion, at least one of said first and second end
portions being secured to said wall by an adhesive.
11. A method of reinforcing a wall structure, comprising:
securing a bracket directly to a support member that is
supported on top of said wall structure at a location above said
wall structure;
attaching a fabric strap to said bracket; and
adhering said fabric strap directly to said wall structure.
2
Appeal2014-004773
Application 12/212,151
THE REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 11-13, 19, and 20 under 35 U.S.C.
§ 102(b) as being anticipated by, or in the alternative, under 35 U.S.C.
§ 103(a) as being unpatentable over Morton (US 6,418,684 Bl, iss. Jul. 16,
2002).
II. The Examiner rejected claims 6-9, 14, 17, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Morton and Oliver (US 6,725,613 B2,
iss. Apr. 27, 2004).
III. The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as being
unpatentable over Morton, Oliver, and Swallow (US 5,820,958, iss. Oct. 13,
1998).
IV. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as being
unpatentable over Morton and Swallow.
ANALYSIS
Rejection I
Appellants have not presented separate arguments for the patentability
of claims 12, 13, and 19 apart from claim 11. Appeal Br. 8. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 11 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 12, 13, and 19 standing or falling with claim 11. Moreover,
Appellants present essentially the same arguments for independent claims 11
and 20. See id. at 6-9; see also Reply Br. 3---6. As such, the following
analysis applies equally to independent claims 11 and 20.
3
Appeal2014-004773
Application 12/212,151
The Examiner finds that iviorton discloses a wall (concrete blocks B);
a support member (wooden blocks between joists 304) on top of the wall; a
bracket (300) having a base portion secured directly to the support member;
and an elongated fabric strap (221, 223, and 225) attached to a strap support
portion of the bracket and directly secured to the wall by an adhesive. See
Final Act. 3-6 (citing Morton, col. 8, 11. 6-25; col. 17, 11. 8-14, and 61---67;
Figs. 1, 15, 16, 20, and 21). The Examiner's position is that if using
Morton's fabric straps 221, 223, and 225 of Figure 16 in place of Morton's
plate 302 in Figure 20 is not anticipatory,
it would have been obvious to a person of ordinary skill in the art
at the time the invention was made to have used the teachings of
figure 20 of Morton and substituted the reinforcing plate #302
with an elongated fabric strap, as taught in figure 16 of Morton,
in order to use reinforcing members which are easier to transport
to the job site.
Id. at 4, 6.
It is wen settled that "there is no anticipation 'uniess an of the same
elements are found in exactly the same situation and united in the same way .
. . in a single prior art reference[.]"' Perkin-Elmer Corp. v. Computervision
Corp., 732 F.2d 888, 894 (Fed. Cir. 1984). Here, we agree with Appellants
that Morton's "connector 300 is only disclosed in combination with a rigid
reinforcing plate 302 in order to secure the upper end of a rigid plate 302
against the wall," and that Morton does not expressly disclose the use of
"bracket 300 with a fabric strap that is adhered to the wall." Appeal Br. 8, 9.
As such, Morton fails to teach all of the limitations of claims 11 and 20,
arranged or combined in the same way as recited in the claims, and thus is
not anticipatory.
4
Appeal2014-004773
Application 12/212,151
However, although iviorton is not anticipatory, we do not agree with
Appellants that "the combination as claimed ... would not have been
obvious to a person of ordinary skill in the art," because "there is no
suggestion in Morton for using the fabric straps as disclosed in figure 16
with the connector shown in figure 20" as "connector 300 is only shown in
combination with a rigid reinforcing plate 302." Reply Br. 5; see also
Appeal Br. 8. Appellants also contend that "[t]here is no suggestion in
Morton '684 for use of a bracket 300 with a fabric strap that is adhered to
the wall." Appeal Br. 8.
Although we appreciate Appellants' arguments that Morton's
connector 300 is disclosed in connection with fabric straps 221, 223, and
225, as per Figure 16, or with rigid (pre-cured) reinforcing plate 302, as per
Figure 20, nonetheless, the Examiner is correct in that Morton specifically
discloses another embodiment where the pre-cured rigid plates 302 are
replaced with in situ composite (fabric) reinforcing members ("combining
reinforcing fibers with uncured polymer"). See Ans. 12-13; see also
Morton, col. 10, 11. 39-47. The Examiner is also correct in finding that for
the in situ embodiment, "uncured polymer can [] serve to form the polymer
matrix upon curing and to adhere the composite reinforcing member to the
wall." Ans. 12; see also Morton, col. 10, 11. 44--47. As Morton's connector
(bracket) 300 is mounted to seat against rigid (pre-cured) plate 302, as per
Figures 20 and 21, when using Morton's in situ composite (fabric)
reinforcing member, connector (bracket) 300 would likewise be mounted to
seat against the composite (fabric) reinforcing member because upon curing
of the polymer, the composite (fabric) reinforcing member becomes rigid
and adheres to the wall. Accordingly, we do not agree with Appellants'
5
Appeal2014-004773
Application 12/212,151
pos1t10n that "the use of a fabric strap would not provide any rigidity for the
connector 300 to provide any backing function" (see Reply Br. 5), because
upon curing, the polymer of the composite (fabric) reinforcing member
become rigid. See Reply Br. 5. Therefore, connector 300 would provide the
same backing function for the cured composite (fabric) reinforcing member
of Morton's in situ embodiment as it does for the embodiment using rigid
(pre-cured) plate 302.
In conclusion, because Appellants provide no persuasive reason why a
person of ordinary skill in the art would not have used Morton's bracket 300
with an in situ formed fabric strap, as taught by Morton's in situ
embodiment, Appellants do not apprise us of error in the Examiner's
conclusion of obviousness. Therefore, for the foregoing reasons, we sustain
the rejection of claims 11 and 20 as being unpatentable over Morton.
Claims 12, 13, and 19 fall with claim 11.
Rejection II
Claims 6-9, 17, and 18
Appellants have not presented arguments for the patentability of
claims 7-9, 17, and 18 apart from claim 6. See Appeal Br. 10---11.
Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 6
as the representative claim to decide the appeal of the rejection of these
claims, with claims 7-9, 17, and 18 standing or falling with claim 6.
The Examiner finds that Morton discloses most of the structure of
claim 6 including a wall (concrete blocks B); a support member (joists #304
and wooden blocks); a bracket (300); a strap (221, 223, and 225) having a
length dimension, a width dimension, first and second end portions, and an
6
Appeal2014-004773
Application 12/212,151
intermediate portion; and at least one of the first and second end portions
being secured to the wall by an adhesive (220, 222, and 224). Final Act. 7-8
(citing Morton, col. 8, 11. 10-13; Figs. 16, 20, and 21). The Examiner relies
on Oliver for disclosing a bracket having strap support portion 20 with an
elongate aperture 44 such that strap 50 can be looped through aperture 44 in
order for an intermediate portion of the strap 50 to be received within and
engage aperture 44 of strap support portion 20. Id. 8-9. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time the invention was made to use a bracket with an elongate
aperture within the strap support portion, as taught by Oliver, in the structure
of Morton, so that "an intermediate portion of the strap of Morton is
received within and directly engages the aperture of the strap support portion
in order to provide a stronger connection between the floor joist of the
structure and the strap." Final Act 9. The Examiner also concludes that
because
the brackets of Morton and Oliver are both used to attach a
reinforcing strap to a support member of a structure [and] it
would have been obvious to one of ordinary skill in the art to
substitute one bracket for the other to achieve the predictable
result of securing a reinforcing strap to a support member.
Id. (citing KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398 (2007)).
Appellants assert that Morton does not use "bracket 300 with a fabric
strap that is adhered to the wall." Appeal Br. 11; see also Reply Br. 7-8.
Appellants also assert that Oliver's "fabric strap 50 is not adhesively secured
to a wall structure, as claimed," and thus, "neither Morton nor Oliver
disclose or suggest a fabric strap that is attached to a bracket that is attached
to a support member supported on top of and disposed above a wall and with
7
Appeal2014-004773
Application 12/212,151
the strap secured to the wall by an adhesive, as claimed." Id. Appellants
further argue that, moreover, Oliver's strap 50 and bracket assembly 20 "is
designed to anchor a manufactured home to the ground" and that Oliver's
strap and bracket assembly is not used for "reinforcing a wall structure, in
the manner as disclosed in Morton." Id.
We are not persuaded by Appellants' arguments because, as discussed
supra in Rejection I, the Examiner relies upon Morton's in situ embodiment
in which bracket (connector) 300 of Morton is secured to floor joist 304,
supported on top and disposed above a wall, and mounted to seat against in
situ composite (fabric) reinforcing member, which becomes rigid and
adheres to the wall when the polymer is cured. See Ans. 12-13; see also
Morton, col. 8, 11. 9-10; col. 10, 11. 39-47; Figs. 20, 21. Furthermore, as also
discussed above in Rejection I, Appellants provide no persuasive reason why
a person of ordinary skill in the art would not have used a bracket with an in
situ formed fabric strap. Moreover, as the Examiner correctly recognizes,
claim 6 does not even require afabric strap. See Ans. at 13.
As to Oliver, because the Examiner does not rely on Oliver "to
support a teaching of adhesively securing a fabric strap to a wall structure,"
the Examiner need not remark as to whether Oliver also discloses this
feature. Id. at 14.
Furthermore, merely because Oliver's strap and bracket assembly is
not used for reinforcing a wall structure, as disclosed in Morton, but for
anchoring a manufactured house to the ground, is not persuasive in itself
because Appellants' argument does not show error in the rejection. "The
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation, or by overemphasis on the
8
Appeal2014-004773
Application 12/212,151
importance of published articles and the explicit content of issued patents."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, the
relevant inquiry is whether the Examiner has set forth "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (cited with
approval in KSR, 550 U.S. at 418). In this case, the Examiner relies on
Oliver as teaching "an alternative connector which could be used to connect
the reinforcing members of Morton to a surrounding structure." Ans. 14.
Given that Morton discloses that alternate connectors can be used, the
Examiner has a sound basis for finding that Oliver's bracket assembly 20
would have been a suitable substitute for Morton's connector (bracket) 300.
See Morton, col. 8, 11. 19--25. More specifically, as discussed supra in
Rejection I, Morton discloses connector 300 secured to floor joist 304, i.e.,
support structure, and mounted to seat against Morton's in situ composite
(fabric) reinforcing member strap. See Morton, col. 10, 11. 39--47. Oliver
discloses bracket assembly 20 secured to a support structure, i.e., lower
support frame 72, and mounted to strap 50. Compare Morton, Fig. 20 with
Oliver, Fig. 2. Accordingly, modifying Morton to replace connector 300
with Olivier's bracket assembly 20, as the Examiner proposes, is nothing
more than the substitution of one element for another known in the field to
yield the predictable result of providing a connection between the support
structure of Morton, i.e., floor joist 304, and the in situ composite (fabric)
reinforcing member strap, as the in situ composite (fabric) reinforcing
member strap is looped through aperture 44 of Oliver's bracket assembly 20
rather than being seated against Morton's connector 300. Appellants
provide no persuasive reason why a person of ordinary skill in the art would
9
Appeal2014-004773
Application 12/212,151
not have implemented such a substitution. Neither do Appellants provide
any persuasive reason why the results of the substitution would have been
unpredictable. Thus, the Examiner is correct in concluding that the
substitution would have been obvious.
As such, for the foregoing reasons, we sustain the Examiner's
rejection under 35 U.S.C. § 103(a) of claim 6 as unpatentable over Morton
and Oliver. Claims 7-9, 17, and 18 fall with claim 6.
Claim 14
Appellants do not set forth any arguments for the patentability of
claim 14 apart from claim and 11. Appeal Br. 11. Thus, for the same
reasons discussed supra for claim 11, we sustain the rejection under 35
U.S.C. § 103(a) of claim 14 as unpatentable over Morton and Oliver.
Re} ections III and IV
Appellants do not set forth any arguments for the patentability of
claims 10 and 15 apart from claims 6 and 11. Appeal Br. 12. Thus, for the
same reasons discussed supra, we sustain the rejections under 35 U.S.C.
§ 103(a) ofclaim 10 as unpatentable over Morton, Oliver, and Swallow, and
of claim 15 as unpatentable over Morton and Swallow.
SUMMARY
The decision of the Examiner to reject claims 11-13, 19, and 20 as
being anticipated by Morton is reversed.
The decision of the Examiner to reject claims 11-13, 19, and 20 as
being unpatentable over Morton is affirmed.
10
Appeal2014-004773
Application 12/212,151
The decision of the Examiner to reject claims 6-9, 14, 17, and 18 as
being unpatentable over Morton and Oliver is affirmed.
The decision of the Examiner to reject claim 10 as being unpatentable
over Morton, Oliver, and Swallow is affirmed.
The decision of the Examiner to reject claim 15 as being unpatentable
over Morton and Swallow 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)(l )(iv).
AFFIRMED
11