GOLDEN RULE FASTENERS, INC. (ASSIGNEE) et al.

Patent Trials and Appeals Board

Mar 1, 2021

2021001852 (P.T.A.B. Mar. 1, 2021)

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.
90/014,256 02/04/2019 8464475 77700.00455 4795
20322 7590 03/01/2021
SNELL & WILMER L.L.P. (Main)
400 EAST VAN BUREN
ONE ARIZONA CENTER
PHOENIX, AZ 85004-2202
EXAMINER
CLARKE, SARA SACHIE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/01/2021 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)
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UNITED STATES PATENT AND TRADEMARK
OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte
GOLDEN RULE FASTENERS, INC.
Patent Owner and Appellant
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Technology Center 3900
Before
JEFFREY B. ROBERTSON, DANIEL S. SONG, and RAE LYNN P.
GUEST,
Administrative Patent Judges.
SONG,
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Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(b) and 306, Golden Rule
Fasteners, Inc. appeals from the final rejection of claims 8–12. We
have jurisdiction under 35 U.S.C. § 6(b).
We
reverse.
CLAIMED SUBJECT MATTER
The claims on appeal are directed to a pipe flashing apparatus.
Claim 8, reproduced below in its amended form during this
reexamiantion, is the sole independent claim on appeal:
8. A roof flashing comprising:
a collar, the collar having a conical shape with an
apex and a bottom edge;
a base, the base having a top edge and a bottom
edge, the top edge of the base coupled to the bottom
edge of the collar;
a foot coupled to the bottom edge of the base and
extending outwardly from the bottom edge of the base;
and
a longitudinal opening extending from the apex of
the collar to an edge of the foot, wherein the longitudinal
opening includes first, second, and third sections, wherein
the first section of the longitudinal opening traverses a
portion of the collar from the apex to the bottom edge of
the collar at a point where the bottom edge of the collar is
coupled to the top edge of the base, wherein the second
section of the longitudinal opening traverses a portion of
the base from the top edge of the base to the bottom
edge of the base at a point where the bottom edge of the
base is coupled to the foot, wherein the third section of
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the longitudinal opening traverses a portion of the foot
from the point where the bottom edge of the base is
coupled to the foot to the edge of the foot, wherein the
longitudinal opening has first and second edges such that
when the first and second edges are pulled away from
each other a width of the longitudinal opening increases
to enable the roof flashing to be installable around a pipe
which is not capable of receiving the roof flashing over a
top thereof, and wherein the foot is associated with a
reinforcement material;
wherein the base has a first height between the top
edge and the bottom edge at a first point along the
circumference of the base, the first point corresponding to
the location of the second section of the longitudinal
opening,
wherein the base has a second height between the
top edge and the bottom edge at a second point on the
opposite side of the circumference from the first point,
and
wherein the first height is greater than the second
height.
Appeal Br. 25–26 (Claims App.) (underlining removed, italics added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bropson US 1,282,535 Oct. 22, 1918
Pedersen US 5,176,408 Jan. 5, 1993
Schalle AU-A-44223/93 Feb. 3, 1994
REJECTIONS
1. Claims 8 and 10–12 are rejected under 35 U.S.C. §
103(a) (pre-AIA) as unpatentable Schalle in view of Bropson. Final
Act. 4.
2. Claim 9 is rejected under 35 U.S.C. § 103(a) (pre-
AIA) as unpatentable over Schalle in view of Bropson and Pedersen.
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Final Act. 6.
3. Claims 8–10 are provisionally rejected on the
ground of non-statutory double patenting as unpatentable over claim
3 of co-pending Reexamination No. 90/014,255 in view of Pederson.
Final Act. 8.
OPINION
Rejections 1 and 2: Claims 8–12
The Examiner rejects claims 8 and 10–12 are rejected under 35
U.S.C. § 103(a) (pre-AIA) as unpatentable Schalle in view of
Bropson, and rejects claim 9 in further view of Pendersen. Final Act.
4, 6. The Appellant argues all of the claims rejected under Rejections
1 and 2 together, relying on dependency on claim 8 for patentability
of claims 9–12, and further asserting that as to claim 9, Pedersen
does not remedy the deficiencies of the combination of Schalle and
Bropson. Appeal Br. 14. Therefore, we select independent claim 8
as representative, and claims 9–12 stand or fall with claim 8. See
generally, 37 C.F.R. § 41.37(c)(1)(iv).
As to independent claim 8, the Examiner finds that Schalle
discloses a roof flashing substantially as claimed, “except for the
provision of different heights being associated with the base.” Final
Act. 4. The Examiner relies on Bropson for disclosing an analogous
roof flashing wherein “the base exhibits different heights to provide
the sloping roof accommodation, as depicted in Figs. 1 and 2.” Final
Act. 5 (citing Bropson ll. 17–23; Figs. 1, 2).
Based on the above findings, the Examiner concludes that:
it would have been obvious to one of ordinary skill in the
roof flashing art to associate different base heights, as
taught in Bropson, with the base of the Schalle flashing, in
order to better accommodate differently sloped roofs . . .
[and] to orient the Schalle flashing relative to a sloped
roof such that the longitudinal opening is facing in the
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down-slope direction, because this orientation is logical
when considering, for example, an exposure of the
opening to a potential flow of water down the roof.
Final Act. 5.
The Appellant disagrees and argues that the rejection fails to
“establish[] a reason that would have prompted a person of ordinary
skill in the art to combine the elements to arrive at the claimed
invention,” and asserts that the rejection relies on impermissible
hindsight. Appeal Br. 9–10. The Appellant also argues that the
suggested modification to flashing of Schalle renders it inoperable for
its intended purpose. Appeal Br. 9. The Appellant further relies on
three declarations of Mr. William McDow, Jr., Mr. Randy
Berkstresser, and Lynn Connor, in support of patentability, asserting
that these declarations establish commercial success and copying, so
as to demonstrate non-obviousness of the claimed invention. Appeal
Br. 9 (“evidence of secondary considerations weighs strongly against
a finding of obviousness.”); Appeal Br. 16–22.
Having reviewed the record, we do not find persuasive, the
Appellant’s arguments attacking the prima facie case of obviousness
for the reasons discussed infra. Nonetheless, we ultimately agree
that in view of the totality of the record, including the secondary
considerations evidence, non-obviousness of the invention of claim 8
has been sufficiently shown.
In re Kahn, 441 F.3d 977, 985–86 (Fed. Cir. 2006) (“To reject claims
in an application under section 103, an examiner must show an
unrebutted prima facie case of obviousness . . . . On appeal to the
Board, an applicant can overcome a rejection by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie
case with evidence of secondary indicia of nonobviousness.”).
As to the prima facie case, the Appellant points out that Schalle
discloses a rubber flashing having “circumferentially extending steps
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discloses a rubber flashing having “circumferentially extending steps
16, and/or ribs or ridges 17,” such that it would be flexible upon
installation. Appeal Br. 11–12 (citing Schalle p. 9, ll. 1–3, 35–37, Fig.
3; quoting Schalle p. 10, ll. 17–19). The Appellant further points out
that Schalle discloses that the steps “‘enhance flexibility of the sealing
sleeve [9] so as to accommodate any misalignment between the
sealing end 12 and the base member 2 upon installation.’” Appeal
Br. 11–12 (quoting Schalle p. 10, ll. 11–22); see also Schalle, Figs. 1,
3. Accordingly, the Appellant argues that “Schalle already teaches a
solution that accommodates sloped roofs” when installed such that a
person of ordinary skill in the art would “have had no reason to seek a
solution that would allow Schalle to be installed on a sloped roof.”
Appeal Br. 12.
The Appellant further points out that “Bropson does not identify
any problem or deficiency with installing flexible rubber flashings on
sloped roofs,” and does not “teach or suggest that its flashing would
better accommodate installation on a sloped roof than would a
flexible rubber flashing such as that disclosed in Schalle.” Appeal Br.
12. Thus, the Appellant argues that the rejection’s “alleged reason
for combining Schalle and Bropson and its identification of the
problem to be solved is not provided or support by the cited prior art,
but rather is pulled directly from the teachings of the ’475 patent
itself,” i.e., based on impermissible hindsight. Appeal Br. 12.
We are not persuaded by the Appellant’s arguments. We first
note that Schalle does not actually disclose accommodation of roofs
of different pitches as asserted by the Appellant, but instead,
discloses accommodation of misalignment. Schalle p. 10, ll. 19–22;
see also Ans. 8 (“To be clear, Schalle does not teach that the
flexibility of its flashing accommodates installation on a sloped roof.”).
As the Examiner points out, “Bropson specifically discloses that his
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flashing is configured for installation on roofs with different pitches.”
Ans. 4. Indeed, Bropson specifically discloses that its “flashing is of
that type which accommodates itself to roofs having different angles.”
Bropson, ll. 17–23; see also id. at Figs. 1, 2. Hence, we generally
agree with the Examiner’s assessment that in view of Figures 1 and 2
of Bropson that illustrate a base having two different heights, and
Bropson’s disclosure that its flashing with such construction
accommodates roofs having different angles, it would have been
evident to one of ordinary skill in the art that application of Bropson to
Schalle would have allowed for “better accomodat[ion of] differently
sloped roofs.” Final Act. 5; see also Ans. 8, 10. In that regard, we
also agree with the Examiner that because the motivation taught in
Bropson was relied upon to establish a reason to modify Schalle,
“impermissible hindsight has been avoided.” Ans. 8; see also Ans. 7
(“Bropson’s teaching of a motivation to make the combination avoids
impermissible hindsight.”).
To be clear, we do agree with the Appellant that in view of the
disclosure in Schalle as to flexibility and the material being rubber,
that one of ordinary skill in the art would have recognized that the
flashing of Schalle could be used in pitched roofs. However, it cannot
be reasonably disputed that a person of ordinary skill in the art knows
that pitches of roofs vary, and misalignments of a flashing during
installation also vary. Indeed, Bropson evinces this very fact in its
figures. Compare Bropson Fig. 1 with Fig. 2. Accordingly, it would
likewise be recognized by a person of ordinary skill that it may be
beneficial to incorporate a base having two heights for application to
a steeply pitched roof so as to avoid significant “misalignment” or
deformation of the generally conically shaped flashing of Schalle.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“[a] person of
ordinary skill is also a person of ordinary creativity, not an
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automaton.”); In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (A
skilled artisan must be presumed to know something about the art
apart from what the references expressly disclose). As such, the
Appellant’s arguments based on the assertion that Schalle, by its
disclosure of accommodating misalignment, obviates the Examiner’s
articulated reasoning and/or the teachings of Bropson as to
accommodating pitched roofs, are not persuasive.
The Appellant responds that the Examiner’s proffered reason
for combining Schalle and Bropson “lacks a rational underpinning,”
pointing out that “Bropson states in clear terms that the use of a body
having a top circular opening and a bottom elliptical opening is the
feature that permits accommodating different roof angles.” Reply Br.
3, 4. Thus, the Appellant implies that such accommodation of
different roof angles in Bropson is not attributable to the different
heights of the base. Thus, the Appellant argues that because
“Schalle already incorporates the feature of Bropson that permits use
of the Bropson device on roofs having different angles, there is no
rational basis to make the combination as proposed by the
Examiner.” Reply Br. 4.
These arguments are again unpersuasive for reasons similar to
those already discussed. As the Appellant notes, Bropson discloses
a bottom elliptical opening, this bottom elliptical opening allows for
different positioning of the pipe relative to the planar surface of the
base. Compare Bropson Fig. 1 with Fig. 2. However, the elliptical
shape of Bropson is inconsequential because as the Appellant also
correctly notes, “the offset between the top opening and bottom
opening is of no particular consequence so long as the bottom
opening is longer or wider than the top opening.” Reply Br. 4. Of
course, it would be evident to one of ordinary skill in the art that such
larger bottom opening, whether elliptical or circular, would allow for
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some accommodation of differently pitched roofs. However, as
discussed above, it would also be evident to one of ordinary skill the
benefit of incorporating a base having two heights for application to
steeply pitched roofs. In that regard, we emphasize the fact that even
with the elliptical opening that allows for some accommodation of
differently pitched roofs, the flashing of Bropson also provides
different heights as to its base. Bropson Figs. 1, 2. This clearly
establishes that providing a bottom opening that is longer or wider
than the top opening to allow for variation in pitch of the roof, does
not obviate the applicability of providing a base that has different
heights to a person of ordinary skill in the art. Bropson Figs. 1, 2.
The Appellant further argues that the integrally formed flashing
of Schalle “would be easier to manufacture and install than the multi-
piece Bropson device,” and that a person of ordinary skill “would not
have looked to the antiquated, multi-piece Bropson flashing.” Appeal
Br. 12–14; see also Appeal Br. 13. However, the Appellant appears
to be analyzing the prior art references separately and/or requiring
bodily incorporation of Bropson into Schalle, rather than considering
Bropson for all that it teaches to one of ordinary skill. In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Nonobviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of
references.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test
for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what
the combined teachings of the references would have suggested to
those of ordinary skill in the art”). As the Examiner points out, the
rejection “relie[s] on Bropson only for its teaching of the particular
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shape of its [base] and its teaching of a motivation for using said
shape.” Ans. 8.
The Appellant further argues that “the proposed modification of
Schalle would result in a product that would not work for the intended
purpose” because the resultant flashing would “require packing ring
18 of Bropson,” which would prevent the flashing from Schalle from
being installable when the flashing cannot be installed through the top
of the pipe. Appeal Br. 9, 14 (citing Schalle col. 2, l. 32–col. 3, l. 15).
However, the Appellant again argues the references separately
and relies on bodily incorporation of the Bropson’s ring into Schalle.
As the Examiner explained, the rejection “did not rely on Bropson’s
metal ring 18 to make the combination. The metal ring would not be
required to prevent leaking since Bropson was relied on only for its
teaching of the [base’s] shape.” See Ans. 10.
Therefore, in view of the above we are not persuaded as to any
deficiency in the Examiner’s presentation of the prima facie case of
obviousness. However, as discussed infra, we ultimately agree that
in view of the secondary considerations evidence as set forth in
declarations of Mr. McDow, Mr. Berkstresser, and Lynn Connor, non-
obviousness of the invention of claim 8 has been sufficiently
established. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
1538–39 (Fed. Cir. 1983) (objective evidence of secondary
considerations must be considered in making an obviousness
decision); see also Ex parte Thompson, Appeal 2011-011620 (PTAB
2014) (informative) (assessing whether a claimed invention would
have been obvious requires considering objective evidence of non-
obviousness, and weighing appropriately the prior art-based evidence
in conjunction with the objective evidence).
The Appellant asserts that the evidence shows that the claimed
invention has enjoyed significant commercial success and that this
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success is directly attributable to the claimed features, namely, the
combination of the longitudinal opening and a base having the
different heights in a single flashing. Appeal Br. 16–17. The
Appellant points to sales of “approximately 478,000 flashings[] since
2009 that embody all limitations of pending claims 8-12,” which
resulted in “approximately $7,500,000 in revenue.” Appeal Br. 17.
Mr. McDow also testifies that the revenue from the sales of the
Appellant’s flashings in 2018 was more than $1,324,000, and year-to-
date revenue in 2019 has been $1,374,000. Decl. of McDow ¶ 14.
The Appellant also informs us that “[r]ecently, Home Depot
began selling the subject [Appellant’s] flashing products that embody
and are coextensive with each and every limitation of claims 8-12.”
Appeal Br. 17; Exh. 4. Mr. McDow also testifies that the Appellant’s
flashings “have been widely adopted as the industry standard retrofit
flashing for pitched, shingled roofs across the United States,” and that
Golden Rule Fasteners has distributed these flashings “to hundreds
of unique stores or wholesalers around the United States, including
sales to stores and wholesalers in forty-seven (47) states.” Decl. of
McDow ¶ 13.
The Examiner assesses this sales evidence stating that
“without further evidence it cannot be determined whether the
reported sales were a significant share of the market. For this
reason, it cannot be determined whether said products were in fact
commercially successful.” Ans. 10 (citing MPEP §716.03(b)).
Indeed, Mr. McDow merely states that “[t]he desirability of the Golden
Rule flashings is also shown by the sales numbers, which are
significant in an industry of our size.” Decl. of McDow ¶ 15. The lack
of detailed evidence as to the size of the market and the Appellant’s
share of such market, does somewhat diminish the probative value of
the proffered sales and revenue information in establishing
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commercial success. See In re Huang, 100 F.3d 135, 140 (Fed. Cir.
1996) (a very weak showing of commercial success, if any, is shown
where there is no indication of whether the number of units sold
represents a substantial quantity in the relevant market). That said,
although the evidence fails to establish the quantity sold relative to
the relevant market, we cannot readily dismiss as insubstantial, the
$ 7.5M in total revenue realized and the more recent annual revenues
exceeding $ 1.3M per year. Accordingly, we find the size of this
revenue does show at least some level of commercial success, and
find the evidence as to the geography of sales, including to Home
Depot, indicates some level of acceptance in the market.
The Examiner also states that sufficient nexus has not been
shown because “[i]n this case, since the declarant has not identified
any claim features, which allegedly gave rise to commercial success,
it cannot be determined if there is a nexus between the claimed
invention and any alleged commercial success.” Ans. 11. See,
generally, Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324,
1332 (Fed. Cir. 2019) (“the evidence of secondary considerations
must have a ‘nexus’ to the claims, i.e., there must be ‘a legally and
factually sufficient connection’ between the evidence and the
patented invention.”) (Emphasis omitted). In particular, the Examiner
states that declarant Mr. McDow “does not state which feature(s)
prompted said customers to prefer Golden Rule’s flashings. Perhaps
they preferred said flashings due to the collar having a conical shape,
or a lower cost. If this were the case, then there would be no nexus.”
Ans. 11 (citing Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312
(Fed. Cir. 2006) (“[I]f the commercial success is due to an unclaimed
feature of the device, the commercial success is irrelevant. . . . So
too if the feature that creates the commercial success was known in
the prior art, the success is not pertinent.”)).
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We generally do not agree with the Examiner’s evaluation as to
nexus between the claimed invention and the Appellant’s products
sold. First, in contrast to the Examiner’s assertion, Mr. McDow did
declare that the claimed features of the different heights and
longitudinal opening drove the “commercial adoption and success” of
the Appellant’s flashings. Decl. of McDow ¶¶ 9–11.
In addition, the evidence indicates that both of the Appellant’s
products at least embody all limitations of independent claim 8. See
Decl. of McDow ¶¶ 7 (including photographs of the Appellant’s
products that are substantially the same as the flashing shown in
Figures 1 and 3 of the subject reexamined patent), 9, 12; see also
Appeal Br. Exh. 5; Decl. of Berkstresser ¶¶ 15, 16, 18, 19; Decl. of
Connor ¶¶ 5, 7, 9. In that regard, commercial success of a product is
presumed to be due to the patented invention if the product is the
invention disclosed and claimed in the patent. PPC Broadband, Inc.
v. Corning Optical Commc'ns RF, LLC, 815 F.3d 734, 747 (Fed. Cir.
2016); see also In re Glatt Air Techniques, Inc., 630 F.3d 1026, 1030
(Fed. Cir. 2011) (“Commercial success evidence should be
considered ‘so long as what was sold was within the scope of the
claims.’”).
In addition, the evidence from third parties tends to support the
assertion that the sales of the Appellant’s flashings is at least partially
due to the recited features claimed. Decl. of Berkstresser ¶¶ 15
(“The technical design features of the Golden Rule flashings provide
numerous benefits that have driven their commercial adoption . . . the
fact that the collar is designed for a pitched roof, with a lower height
at a side opposite the longitudinal opening, prevents the bunching or
cupping that can occur when an un-pitched flashing is used on a
pitched shingle roof.” ), 18 (“The Golden Rule flashings also include a
longitudinal opening that allows them to be retrofitted.”), 20
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(discussing disadvantage of prior art flashings); Decl. of Connor ¶¶ 8
(“Based on customer feedback I and my company have received,
customer demand for the Golden Rule flashings is driven by the
combination of these two key features, specifically 1) the longitudinal
opening and 2) a base having a first height . . . [and] a second
height.”), 10 (“Customers routinely tell me that the Golden Rule
flashings install easier and achieve better results than both 1) pitched
flashings with no preformed longitudinal opening (due to cutting and
sealing issues) and 2) unpitched flashings with a longitudinal opening
(due to bunching issues).”).
In that regard, we note that the subject matter of the
reexamined patent and the commercially sold flashings are not
complex devices having multiple sub-assemblies that provide
separate and distinct functions. Although there may be additional
features in the commercially sold products, there is no indication in
the record before us that such additional features played an
appreciable role in the sales of the Appellant’s flashings. Fox
Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1374 (Fed. Cir. 2019)
(“[I]f the unclaimed features amount to nothing more than additional
insignificant features, presuming nexus may nevertheless be
appropriate. Put differently, the degree of correspondence between a
product and a patent claim falls along a spectrum.”). We are not
inclined to disregard testimonial evidence asserting that recited
features in the claims, namely the base having a longitudinal opening
and a pitch (two different heights), are the reasons for customer
demand, in favor of the possible, but hypothetical, reasons set forth
by the Examiner.
However, the Examiner is correct that the record lacks
evidence as to pricing (the cost) of the Appellant’s products, which
could have contributed to the alleged commercial success. We do
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agree with the Examiner that such lack of pricing evidence diminishes
the nexus between the commercial success evidence, and the
features of the claimed invention.
The Examiner also objects to Mr. Berkstresser’s testimony that
“[t]he commercial success of the Golden Rule flashings is driven by
the combination of these two key features . . . 1) the longitudinal
opening and 2) a base having a first height . . . [and] a second
height.” Decl. of Berkstresser ¶ 19; Ans. 11. The Examiner is correct
that “[s]ince it appears that Mr. Berkstresser is a singular purchaser of
these flashings, it is unclear how he can opine as to all purchasers.”
Ans. 11. Although Mr. Berkstresser can speak for himself, he cannot
speak for all purchasers, and his testimony is weighed accordingly.
The Examiner further objects to the testimony of Lynn Connor
as to customer demand, stating that “it appears that the declarant is
describing [his/]her perception of the reasons for customer demand
based on feedback that [he/]she and [his/]her company received.”
Ans. 12. The Examiner points out that “[t]here is no information
relating to how much feedback was received, no copies of actual
customer feedback (e.g., a letter), and no information as to how Ms.
Connor came to her conclusion,” and as such, finds this testimonial
evidence “with respect to nexus is considered to be weak.” Ans. 12.
Although the Examiner is correct that further detail as to the received
feedback would have been more helpful, that does not preclude
giving some weight to Lynn Connor’s testimony because it is not
based on her perception alone, but is “[b]ased on customer feedback
I and my company have received.” Decl. of Connor ¶ 8.
As discussed above, there are some deficiencies in the
proffered evidence seeking to establish commercial success.
Although the proffered commercial success evidence could have
been more fully developed and more detailed, the evidence
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nonetheless tends to show that the noted flashings of the Appellant
enjoyed some level of commercial success. In addition, in our
assessment, nexus has been sufficiently established between the
commercial success and the claimed invention.
The Appellant further relies on evidence of copying in support
of non-obviousness, asserting that “Aztec Washer Company Inc.
(‘Aztec’) copied Appellants’ roof flashings and for nearly a decade
has been selling roof flashings that incorporate all limitations of at
least currently pending claims 8 and 10-12.” Appeal Br. 20. In
support of the assertion, Mr. McDow submits what is purported to be
a photograph of the allegedly copying product, and describes the
features thereof. Decl. of McDow ¶¶ 16–18; see also Appeal Br. 20,
Exh. 6. The Appellant argues that copying of the its roof flashing “is
apparent from the photographs on [Requester’s] website offering the
following products for sale.” Appeal Br. 20. Indeed, the photograph
of the flashing alleged to be a copy shows a flashing that is
substantially the same as the Appellant’s flashing except for what
appears to be a lighter colored layer on the edge portion of the foot.
See Decl. of McDow ¶ 16; Appeal Br. 20, Exh. 6.
In further support of copying, the Appellant also asserts that “a
representative of Petitioner Aztec expressly told Appellants in 2009
that Petitioner was going to copy Appellants’ flashing.” Appeal Br. 22.
In particular, Mr. McDow testifies that at the Metalcon trade show in
2009, “an Aztec employee stopped by Golden Rule’s booth and took
a picture of the Golden Rule flashings,” and told “us” “something to
the effect of: ‘. . . we are going to copy it.’” Decl. of McDow ¶ 20.
However, Appellant has not submitted any corroborating evidence of
the trade show, that his father and brother were present, or that the
alleged Aztec employee in question was in fact present. Thus, this
testimony of Mr. McDow is entitled to little, if any, probative value.
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Patent 8,464,475 B2
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Mr. McDow also testifies that Aztec used the Appellant’s image
of its installed product in Aztec’s sales brochure. Decl. of McDow
¶ 21. Although it is plausible that the photographic image in the
upper right-hand corner of Aztec’s sales brochure could be a
cropped/modified version of the Appellant’s photograph, (see Decl. of
McDow Exhs. B, C), Appellant has not made of record its actual
advertisement containing the photograph in the relevant time period,
or provide an explanation as to how Aztec could have obtained the
photograph allegedly cropped/modified. Thus, the probative value of
this evidence is diminished.
As to the assertion of copying, the Examiner states that “the
declarant did not address whether the copying may be attributable to
other factors such as a lack of concern for patent property.” Ans. 12.
The Examiner also states that “declarant also did not address
whether the alleged copying party expended great effort to develop
its own solution and then copied Golden Rule’s flashing.” Ans. 12
(citing MPEP § 716.06). We find these positions of the Examiner
unreasonable because it is not apparent how the Appellant could
address such aspects that are only known by the alleged copier. Of
course, evidence uncovered during an inter partes proceeding may
be used by the Appellant to address these aspects, but this is an ex
parte proceeding. However, in view of the deficiencies in the
proffered evidence seeking to establish copying noted above, we
cannot say the evidence is sufficient to conclusively show the
Appellant’s flashing was copied.
The Examiner summarizes that “the prima facie case of
obviousness is fairly strong” and that the evidence of secondary
considerations is entitled to little weight. Hence, the Examiner
concludes that “[w]eighing the rebuttal evidence and the [A]ppellant’s
arguments as a whole against the prima facie case of obviousness,
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Patent 8,464,475 B2
18
said evidence and arguments are not sufficient to outweigh the
evidence of obviousness.” Ans. 13.
We disagree with the Examiner’s ultimate conclusion. Despite
the deficiencies in the proffered secondary considerations of
evidence of commercial success, when such evidence is considered
in their totality and given the appropriate weight that it is entitled, we
conclude that the Appellant has adequately shown that the invention
of independent claim 8 is not obvious over the teachings of Schalle
and Bropson. Therefore, we reverse the rejections of independent
claim 8, and claims 9–12 depending therefrom.
Rejection 3: Provisional Double Patenting
The Examiner also provisionally rejects claims 8–10 on the
ground of nonstatutory double patenting as unpatentable over claim 3
of co-pending Reexamination No. 90/014,255 and in view of
Pederson. Final Act. 8. The Appellant submits arguments seeking
reversal of this provisional rejection. Appeal Br. 22–23.
We do not reach this provisional rejection, and leave it to the
Examiner to determine at the time when any claims of this application
are otherwise in condition for allowance whether the obviousness-
type double patenting rejection remains proper. See Ex parte
Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential); see also
Ex parte Jerg, Appeal No. 2011-000044, 2012 WL 1375142 at *3
(BPAI 2012) (informative) (“Panels have the flexibility to reach or not
reach provisional obviousness-type double-patenting rejections.”).
CONCLUSION
The Examiner’s statutory rejections are reversed. More
specifically,
1. The rejection of claims 8 and 10–12 under 35
Appeal 2021-001852
Reexamination Control 90/014,256
Patent 8,464,475 B2
19
U.S.C. § 103(a) (pre-AIA) as unpatentable Schalle in view of Bropson
is reversed.
2. The rejection of claim 9 under 35 U.S.C. § 103(a)
(pre-AIA) as unpatentable over Schalle in view of Bropson and
Pedersen is reversed.
3. We decline to reach the provisional rejection of
claims 8–10 on the ground of non-statutory double patenting.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Ba
sis
Affirmed Reversed
8, 10–12 103(a) Schalle, Bropson 8, 10–12
9 103(a) Schalle,
Bropson,
Pedersen
9
8–10 Provisional
Obviousness-
type Double
Patenting
Overall
Outcome
8–12
reversed
For Appellant:
SNELL & WILMER L.L.P. (Main)
400 EAST VAN BUREN
ONE ARIZONA CENTER
PHOENIX, AZ 85004-2202