Ex Parte Willert

Patent Trial and Appeal Board

Jul 16, 2013

11495059 (P.T.A.B. Jul. 16, 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.
11/495,059 07/28/2006 Wayne Willert 205-11 4827
24336 7590 07/16/2013
TUTUNJIAN & BITETTO, P.C.
425 Broadhollow Road, Suite 302
Melville, NY 11747
EXAMINER
FIGUEROA, ADRIANA
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
07/16/2013 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 WAYNE WILLERT
____________

Appeal 2011-001580
Application 11/495,059
Technology Center 3600
____________

Before JOHN C. KERINS, WILLIAM A. CAPP, and JILL D. HILL,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001580
Application 11/495,059

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STATEMENT OF THE CASE
Wayne Willert (Appellant) appeals under 35 U.S.C. § 134 from a final
rejection of claims 1-4.1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER

The claimed subject matter relates to “a system for attaching gutter
protection systems to roofs where the gutter protection system cannot be slid
up under the first layer or more of roofing shingles.” Spec., para. [0001].
Claim 1 represents the subject matter on appeal and is reproduced below.
1. A device for connecting a gutter
protection system to a roof, the roof having at least
two adjacent roof shingles, the device comprising:
a roof clip having a flat portion and a tab
portion substantially perpendicularly disposed with
respect to said flat portion, said tab portion
extending upward through a keyway formed
between the at least two adjacent roof shingles and
forming a notch aligned with the keyway for
receiving an upper end of the gutter protection
system.

EVIDENCE
The Examiner relies on the following evidence:

Wisniewski US 2,495,303 Jan. 24, 1950
Donlin US 2004/0159062 A1 Aug. 19, 2004

1 Pending independent claim 6 was indicated as allowed in the Final
Rejection dated December 28, 2009. Pending claim 5 was objected to in the
Final Rejection, and indicated as containing allowable subject matter on
page 7 of the Examiner’s Answer.
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Application 11/495,059

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REJECTIONS
Claims 1-4 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Wisniewski and Donlin. Ans. 3.

ANALYSIS
Claims 1-5, 7-10, 12, and 13
The Examiner finds that Wisniewski discloses a device having a clip
with a flat portion 17, a tab portion 14, 16 that is perpendicular to the flat
portion 17, the tab portion 14, 16 extending between adjacent members 10
and forming a notch (that the Examiner labels as n in annotated figures on
pages 5 and 6 of the Answer) receiving an upper end of another member 12.
Ans. 3-4. The Examiner finds that Wisniewski does not disclose its device
being used in a roof having at least two adjacent shingles, but finds that
Donlin teaches a device having at least two adjacent shingles that can be
applied to roofs or walls. Ans. 4 (citing Donlin, fig. 2, para. [0001]). The
Examiner concludes that it would have been obvious to one having ordinary
skill in the art, at the time of the invention, to apply Wisniewski’s device on
a roof, because “Donlin teaches that shingles and siding panels are
assembled in the same manner, i.e., an overlapping fashion.” Ans. 4.
Appellant argues that Wisniewski and Donlin fail to teach “[a] device
for connecting a gutter protection system to a roof, the roof having at least
two adjacent roof shingles,” as recited in the preamble of claim 1, and that
the preamble should be given patentable weight because it gives “life,
meaning, and vitality” to the claim by explaining what the claimed
connection can be used to connect, and because “[w]hen limitations in the
body of the claim rely upon and derive antecedent basis from the
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Application 11/495,059

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preamble, then the preamble may act as a necessary component of the
claimed invention.” App. Br. 9-10. Appellant explains that recitation of
the gutter protection system and the at least two adjacent roof shingles in the
body of the claim rely on the preamble. App. Br. 10.
The Examiner responds that Donlin teaches a roof with adjacent roof
shingles, and that although the gutter protection system is recited in the
claim, it is not positively recited within the body of the claim. Ans. 8. The
Examiner appears to be taking the position that recitation of the gutter
protection system within the body of claim 1 is functional rather than
structural, and therefore is not a limitation in the body of the claim that relies
upon and derives antecedent basis from the preamble such that the preamble
acts as a necessary component of the claimed invention that deserves
patentable weight.
Regardless of whether functional language deriving antecedent basis
from the preamble meets the definition of a limitation requiring that the
preamble be given patentable weight, the prior art must contain structure that
is capable of performing the claimed function of “connecting a gutter
protection system to a roof.” See In re Mott, 557 F.2d 266, 269, (CCPA
1977.
The Examiner finds that Wisniewski’s tab portion (14, 16) is capable
of being secured to the upper end of shingle 12, and that shingle 12 can be
considered a “gutter protection system” because Appellant has not disclosed
any structural features of the gutter protection system and shingles can be
considered gutter protection systems because they are often positioned above
gutters. Ans. 4-9. We disagree with the Examiner’s finding that
Wisniewski’s siding member 12 is a gutter protection system. Location of
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Application 11/495,059

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shingles above a gutter does not render Wisniewski’s siding member 12 or
Donlin’s roof shingles a gutter protection system. The prior art therefore
does not disclose structure that is capable of performing the claimed function
of “connecting a gutter protection system to a roof.”
For the reasons set forth above, we do not sustain the rejection of
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Wisniewski and
Donlin. Because claims 2-4 depend from claim 1, we do not sustain the
rejection of claims 2-4 over Wisniewski and Donlin for the same reasons.
DECISION
We REVERSE the rejection of claims 1-4 under 35 U.S.C. § 103(a) as
unpatentable over Wisniewski and Donlin.

REVERSED

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