Grieco, James R.

Patent Trials and Appeals Board

Dec 19, 2019

15085773 - (D) (P.T.A.B. Dec. 19, 2019)

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.
15/085,773 03/30/2016 James R. Grieco 014.9073C1 4825
15846 7590 12/19/2019
LKGLOBAL (GD-Gulfstream)
7010 East Cochise Road
Scottsdale, AZ 85253
EXAMINER
WALRAED-SULLIVAN, KYLE
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
12/19/2019 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):
gulfstream@lkglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES R. GRIECO
__________

Appeal 2019-003486
Application 15/085,773
Technology Center 3600
____________

Before BRADLEY B. BAYAT, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

James R. Grieco (Appellant) 1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting claims 1–17 and 20, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies “Gulfstream Aerospace Corporation” as the
real party in interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s “invention generally relates to structural components and
more particularly relates to a web component suitable for use with a snap-fit
assembly.” Spec. ¶ 2. Claims 1 and 20 are the only independent claims
pending on appeal. Claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. A web component suitable for use with a snap-fit assembly,
the web component comprising:
a unitary sheet metal member having a periphery, a first
side and a second side, the sheet metal member including a
plurality of protrusions integral with the sheet metal member,
the plurality of protrusions extending from a first surface of the
first side and from a second surface of the second side, the
plurality of protrusions disposed in a region proximate a portion
of the periphery and inset from the portion of the periphery, the
sheet metal member further including a plurality of depressions
extending into the first surface and into the second surface, the
plurality of depressions being disposed in the region, the
plurality of depressions being aligned with the plurality of
protrusions, each depression of the plurality of depressions
being spaced apart from each protrusion of the plurality of
protrusions along the first side and the second side, the sheet
metal member having a central region located within the
periphery, the region forming an outer border of the central
region, the central region being free of protrusions and
depressions,
wherein the central region comprises a majority portion
of the unitary sheet metal member.

Appeal Br. 15 (Claims Appendix).

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Laven et al. (“Laven”) US 5,442,885 Aug. 22, 1995
Pham US 2004/0140165 A1 July 22, 2004
Kunichi et al. (“Kunichi”) US 2009/0314892 A1 Dec. 24, 2009
Williams US 2011/0147522 A1 June 23, 2011

REJECTIONS
The following rejections are before us for review:
I. Claims 1–10 and 13–17 are rejected under 35 U.S.C. § 103 as
unpatentable over Pham and Williams.
II. Claims 11 and 12 are rejected under 35 U.S.C. § 103 as unpatentable
over Pham, Williams, and Kunichi.
III. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable over
Pham, Williams, and Laven.
OPINION
Rejection I
We are persuaded by Appellant’s argument that Williams, on which
the Examiner relies, fails to disclose a “plurality of protrusions extending . . .
from a second surface of the second side” of the sheet metal member.
Appeal Br. 10; Reply Br. 2–3.
In rejecting claim 1, the Examiner acknowledges that the primary
reference Pham does not disclose this disputed limitation. See Final Act. 3
(Pham “fails to disclose the protrusions protruding from the second side”).
To cure this deficiency, the Examiner finds Williams discloses a planar rib
web 10 that corresponds to the second side of the claimed sheet metal
member, including “protrusions protruding from the second side (18 [sic,
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11]2 projects each way)” corresponding to the claimed plurality of
protrusions extending from a second surface of the second side of the sheet
metal member. Id.
Appellant argues that Williams does not teach a plurality of
protrusions protruding from the second surface of the second side of the
sheet metal member, as proffered by the Examiner, because “[t]he upper rib
feet 11 and lower rib feet 12 illustrated in Williams are not surrounded by
the surface of Williams’ rib.” Appeal Br. 10. Appellant asserts that “[t]he
dictionary defines the term ‘protrude’ as meaning to jut out from the
surrounding surface.” Id. (citing https://www.merriam-webster.com/
dictionary/protrude). According to Appellant, “[d]efinitionally, something
cannot protrude from a surface if it is adjacent to that surface . . . [because]
from the language of the claim itself, the protrusion must protrude from the
surface of the second side of the sheet metal member.” Id. (“This limitation
cannot be met by a structure that is positioned next to the surface.”).
“Because Williams’ upper rib feet 11 and lower rib feet 12 are attached to
the edge of Williams’ rib, [Appellant asserts that] they cannot protrude from
the surface of Williams’ rib.” Id.
Responding to Appellant’s argument, the Examiner states:
This argument is not found persuasive. First, Appellant’s
application provides no definition for the term, “protrude,” or as
further claimed, “protrusions” or “protruding.” Second, the
argued definition of “protrude” by Appellant is not the only
definition. Merriam-Webster also defines the terms, “protrude”

2 The Examiner mistakenly points to bolt holes 18 as the claimed
protrusions, but in response to Appellant’s argument in the Answer the
Examiner acknowledges that rib feet 11 and 12 correspond to those
protrusions. See Answer 6.
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and “protruding” as “to stick out” and “to cause to project.”
The Oxford English online dictionary defines “protrude” as to
“extend beyond or above a surface.” Even if 11 and 12 of
Williams are disposed adjacent to the first or second surface of
the rib, each clearly “sticks out,” “projects,” and “extends
beyond or above” the first and second surface of the rib. 11 and
12 of Williams satisfy all three conventional definitions of the
phrase “protrude.” Third, nothing in Appellant’s claim
language requires any sort of contact solely with the first and
second surface, nor does it require the protrusions disposed
only on the first and second surface, nor does it require that the
protrusion cannot be placed on a side edge adjacent the first and
second surface. As 11 and 12 of Williams are disposed on a
side edge, forming an “L” shape with the first and second
surface, each of 11 and 12 clearly makes contact with the first
and second surface of the rib. Each of 11 and 12 of Williams
clearly sticks out, projects, and extends beyond or above the
first and second surface, and thus, constitutes a protrusion
protruding from the first and second surfaces.
Answer 5–6.
We are persuaded of Examiner error.
As our reviewing court has emphasized, “[c]laims must be
‘interpreted with an eye toward giving effect to all terms in the claim.’”
Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249,
1257 (Fed. Cir. 2010) (quoting Bicon, Inc. v. Straumann Co., 441 F.3d 945,
950 (Fed.Cir.2006)). See also In re Power Integrations, Inc., 884 F.3d 1370,
1376 (Fed. Cir. 2018) (explaining that a “problem with the board’s claim
construction is that it renders claim language meaningless.”); In re Danly,
263 F.2d 844, 847 (CCPA 1959) (“limit[ing] the claims to a construction in
which a connection with a source of alternating current is actually made,”
even though “not positively recite[d],” because “any other interpretation
would render the [claimed] expression virtually meaningless”).
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Here, claim 1 requires the plurality of protrusions extending “from a
second surface of the second side” of the sheet metal member. See Claim 1
supra. The plain meaning of the term “surface” is “the outer face, outside,
or exterior boundary of a thing.”3 This plain meaning is consistent with the
meaning Appellant states the claim term is intended to have, as well as
Appellant’s disclosure. See, e.g., Spec., Fig. 4, (showing protrusions 48
extending from the surface of the second side), ¶ 36 (“plurality of
protrusions 48 protrude from a surface of second side”). The difficulty with
the Examiner’s finding is the exclusive focus on the term “protrusion” rather
than the limitation as a whole, which requires the plurality of protrusions
extending from a second surface, i.e., projecting from the outer face of a
second side. We agree with Appellant that “[t]he claim does not recite that
the protrusions protrude from a first side and from a second side of the sheet
metal member. Rather, the claim recites that the protrusions protrude from
the surface of the first side and from the surface of the second side.”
Reply Br. 2. As clearly stated by Appellant:
[The claim] describes the point of origin of the protrusions -
they must protrude from the surface itself. Not next to the
surface. Not near the surface. Not in the vicinity of the surface.
Not proximate the surface. Not adjacent to the surface. They
must protrude from the surface. Williams’s rib feet 11 and 12
are attached to the edge of rib 6. Therefore, rib feet 11 and 12
are adjacent to the first and second surfaces of Williams’s first
and second sides. Because they are adjacent to the first and
second sides, they do not protrude from the surface of the first
side or from the surface of the second side as required by the
express language of the rejected claims.

3 https://www.dictionary.com/browse/surface (last visited Dec. 5, 2019).
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Id. at 2–3.
The Examiner’s interpretation of the claim language appears not to
account for the term “from the surface,” which is inconsistent with the plain
meaning of the claim language and Appellant’s corresponding disclosure in
the Specification discussed above. This is evident from the rejection of
record, because the Examiner’s corresponding finding leaves out the claim
term “surface.” See Final Act. 4 (“the protrusions protruding from the
second side”). Williams describes rib feet 11 and 12 as “extending from”
the edge of the rib web, not its surface. See Williams ¶ 25. Indeed, the
Examiner concedes that rib feet “11 and 12 of Williams are disposed on a
side edge, forming an ‘L’ shape with the first and second surface” (see
supra), but improperly equates contact between those structures with
Williams’s rib as satisfying the contested claim limitation. See Answer 5
(“[E]ach of 11 and 12 clearly makes contact with the first and second surface
of the rib.”). Although the Examiner is correct that rib feet 11 and 12 are
adjacent to and connected to Williams’s rib web, but the claim does not
require that the protrusions merely make contact with the second side;
rather, the claim requires the protrusions extending from a second surface of
the second side. In other words, the Examiner’s finding in Williams is based
on an erroneous interpretation of the claim language, which appears to be
focused on the term “protrude” in a vacuum instead of each of the claim
elements as positioned and recited within the context of the claim as a
whole.
In view of the forgoing, we do not sustain the rejection of independent
claim 1. For the same reasons, we also do not sustain the rejection of
dependent claims 2–10 and 13–17. Cf. In re Fritch, 972 F.2d 1260, 1266
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(Fed. Cir. 1992) (“dependent claims are nonobvious if the independent
claims from which they depend are nonobvious”).

Rejection II
Rejection of dependent claims 11 and 12 relies on the same deficient
finding in Williams discussed above, which the additional reference to
Kunichi fails to remedy. See Final Act. 7. As such, we do not sustain the
rejection of claims 11 and 12.
Rejection III
Independent claim 20 contains a similar limitation as claim 1 (Appeal
Br. 18–19 (Claims Appendix)). For the same reasons discussed above with
respect to the obviousness rejection of independent claim 1, we do not
sustain the rejection of claim 20 because the Examiner relies on the same
erroneous findings as claim 1. See Final Act. 8–9.

CONCLUSION
The Examiner’s rejections of claims 1–17 and 20 under 35 U.S.C.
§ 103 are reversed.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–10, 13–17 103 Pham,
Williams
1–10, 13–17
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11, 12 103 Pham,
Williams,
Kunichi
11, 12
20 103 Pham,
Williams,
Laven
20
Overall
Outcome
1–17, 20

REVERSED