Lethin, Douglas T.

Patent Trials and Appeals Board

Apr 1, 2020

13399263 - (D) (P.T.A.B. Apr. 1, 2020)

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.
13/399,263 02/17/2012 Douglas T. Lethin 030.P001 2652
65638 7590 04/01/2020
OMIKRON IP LAW GROUP
5895 Jean Road
LAKE OSWEGO, OR 97035
EXAMINER
MATTEI, BRIAN DAVID
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
04/01/2020 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):
ROBERT.CHANG@OMIKRONLAW.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUGLAS T. LETHIN

Appeal 2018-006254
Application 13/399,263
Technology Center 3600
____________

Before MICHAEL L. HOELTER, BRANDON J. WARNER, and
LISA M. GUIJT, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–11, 13, and 14, which constitute all
the claims pending in this application. Appellant’s counsel presented oral
argument on March 17, 2020. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Sage
Bracket Solutions, LLC.” Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The disclosed subject matter relates to “[a]dding additional roof like
structures to existing roofs.” Spec. ¶ 2. Apparatus and system claims 1 and
8 (respectively) are independent. Claim 1 is illustrative of the claims on
appeal and is reproduced below (emphasis added).
1. An apparatus for providing an elevated roof over an
existing roof of a structure, the apparatus comprising:
a substantially vertical member;
a bracket coupled to a first end of the substantially
vertical member, the bracket configured to support a support
beam in a substantially perpendicular orientation relative to the
substantially vertical member and to pivotally support a trailing
edge of the elevated roof over the existing roof, the support
beam and the trailing edge of the elevated roof being
substantially parallel to each other and both being substantially
parallel to a leading edge of the existing roof; and
a substantially rectangular type shaped base coupled to a
second end of the substantially vertical member, the second end
being at an opposite end of the substantially vertical member
from the first end, wherein the substantially rectangular type
shaped base is configured to penetrate through the existing roof
proximate to the leading edge[2] to attach to a load bearing

2 Originally filed claim 1 includes this italicized language (i.e., “proximate
to the leading edge”). However, in an Amendment dated June 23, 2014,
which accompanied a request for continued examination, this phrase was
amended to read “proximate to the trailing edge.” In a subsequent
Amendment dated February 25, 2015, this phrase was (and we believe
inadvertently) again changed to read “proximate to the leading edge.” Such
language remained unaltered in the Amendment dated May 10, 2016 (which
also accompanied a request for continued examination) and an Amendment
dated December 21, 2016. Hence, this language is also presently found in
claim 1 and is replicated in the Appeal Brief dated February 17, 2018.
Because we are tasked with construing claims consistent with Appellant’s
Specification, we understand that the recited phrase “proximate to the
leading edge” is a typographical error, and instead, we understand the phrase
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Application 13/399,263

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component of the structure, the load bearing component being a
load bearing wall configured to support the existing roof.
EVIDENCE
Name Reference Date
Plaisted et al.
(“Plaisted”)
US 2008/0121273 A1 May 29, 2008
Dunkinson AU 2006200720 A1 September 6,
2007
Roof Extenda Bracket available at
http://web.archive.org/web/20110218155734/http://www.roofextenda.com.a
u/ss/shadesaiIbrochure.pdf (listed on form PTO-892, Notice of References
Cited dated November 9, 2015) (“Roof Extenda Bracket”).
Shade Sail Anchor available at
http://web.archive.org/web/20110218155337/http://www.roofextenda.com.a
u/re/reb-brochure.pdf (listed on form PTO-892, Notice of References Cited
dated November 9, 2015) (“Shade Sail Anchor”).
REJECTIONS
Claims 1, 3–11, 13, and 14 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1–6 and
11–16 of copending Application No. 14/741,353.
Claims 1, 3–11, 13, and 14 are rejected under 35 U.S.C. § 103 as
being unpatentable over Roof Extenda Bracket and/or Shade Sail Anchor
and/or Dunkinson in view of Plaisted.

to rightfully (and logically) be “proximate to the trailing edge.” Appellant
confirmed same at the above noted oral hearing. See also Orthokinetics, Inc.
v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (“A
decision on whether a claim is invalid under § 112, 2d ¶, requires a
determination of whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification.”).
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ANALYSIS
The provisional rejection of claims 1, 3–11, 13, and 14
on the ground of nonstatutory double patenting
Appellant does not submit a terminal disclaimer as this rejection is, at
present, a provisional rejection because the referenced co-pending
application has yet to issue. Thus, Appellant requests “that this provisional
rejection be held in abeyance until such time as claims have been allowed.”
Appeal Br. 8. Because of the provisional nature of this undisputed rejection,
our review of it would be moot, and we do not reach it on this appeal.

The rejection of claims 1, 3–11, 13, and 14 as unpatentable over Roof
Extenda Bracket and/or Shade Sail Anchor and/or Dunkinson in view of
Plaisted
Appellant argues all the claims (i.e., claims 1, 3–11, 13, and 14)
together. See Appeal Br. 9–17. We select claim 1 for review, with claims
3–11, 13, and 14 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner relies on “Roof Extenda Bracket and/or Shade Sail
Anchor and/or Dunkinson” for primarily disclosing the limitations of claim
1, but acknowledges that these references “do not specifically disclose the
bracket pivotally supporting a trailing edge of the elevated roof.” Final Act.
5. The Examiner relies on Plaisted for teaching “a bracket pivotally
supporting a trailing edge” and provides a reason for Plaisted’s combination
with these primary references. Final Act. 5.
Addressing Roof Extenda Bracket, Appellant notes its disclosure of
“an L-shaped bracket” mounted underneath a roof, and replicates an image
disclosing same. Appeal Br. 11–12. Appellant contends:
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It should be appreciated by those of ordinary skill[ in] the
relevant art, that cutting a hole having a large enough shape to
accommodate the rectangular base of the claimed subject matter
would be considered counter intuitive at best because cutting a
large hole in a sound roof would not be advised by most if not
all people working in this type of industry. Because of this
counter intuitive nature of cutting a large hole in a sound roof,
Roof Extenda Bracket only shows a small round hole
approximate [the] size of the tube and not a large hole that
would extend beyond the tube. “Who would cut such a large
hole into a perfectly good roof”?

Appeal Br. 14; see also Reply Br. 5 (“the Roof Extenda Bracket clearly
shows a small single round hole to be drilled,” which is not suitable for the
recited “substantially rectangular base”).
Although a device may be extremely useful in its relevant field, when
tasked with addressing the appeal before us, we have been instructed that
“the name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998). Hence, we confine ourselves to the recited claim language
(and interpretations thereof as guided by our reviewing court) and contrast
such language with the cited art.
Regarding the size of the hole in the roof as addressed by Appellant
above, the Examiner notes, “Appellant is not claiming the size of the hole
but merely that the bracket is configured to penetrate through the roof.”
Ans. 4. Indeed, claim 1 recites a base “configured to penetrate through the
existing roof,” and is silent as to how big or small, or what shape, such
penetration is to be. Moreover, even the “substantially rectangular” base
recited in the claim is just given a shape, but nothing is recited about any
particular size for the element. Roof Extenda Bracket is also silent as to the
size and configuration of the hole to be cut, only providing instructions to
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remove roofing material sufficient “to achieve opening.” Roof Extenda
Bracket, middle column; see also Ans. 4. Thus, to answer Appellant’s
question above, a skilled person would penetrate the roof with an opening
sized at least large enough for insertion of the bracket through the roof and
also to accommodate subsequent connection of that bracket to the “rafter”
and “existing wall,” as described and illustrated in Roof Extenda Bracket.3
Roof Extenda Bracket, middle column.
Furthermore, Roof Extenda Bracket illustrates wind passing
underneath the added roof thereby illustrating the application of an uplifting
force upon this added roof and its supporting bracket. See Roof Extenda
Bracket, middle column. There is no indication that this bracket would fail
to resist such forces, or otherwise permit the vertical “threaded rod” to
separate from the mounting bracket. See Roof Extenda Bracket, generally.
The same ability to resist separation due to an upward force is also implicit
in Shade Sail Anchor. Dunkinson, on the other hand, explicitly teaches a
welded connection between mounting bracket 12 and vertical pole 16. See
Dunkinson 5:7–8. Hence, there is no indication that any of Roof Extenda
Bracket, Shade Sail Anchor, or Dunkinson are ill-suited for their intended
purpose of securing a new roof over an existing roof, and also maintaining
that interconnection during an uplifting load.
The Examiner additionally addresses the L-shaped bracket depicted in
Roof Extenda Bracket in view of the claim limitation, “a substantially

3 Both Shade Sail Anchor and Dunkinson also discuss/illustrate existing roof
penetrations. See Shade Sail Anchor, middle column; Dunkinson Fig. 2.
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rectangular type shaped base.”4 See Ans. 4. The Examiner makes two
findings. First, the Examiner notes Appellant’s use of the open-ended
phrase “comprising,” and thus, determines that Roof Extenda Bracket’s
corresponding “base” “could be considered to only be the horizontal
segment of the ‘L.’” Ans. 4. In other words, “[t]he vertical segment would
then be considered to be part of the ‘substantially vertical member’” as
recited. Ans. 4. Additionally, the Examiner references “the Merriam-
Webster dictionary,” which defines “base” “as ‘the bottom of something
considered as its support.’” Ans. 5. The Examiner finds that this “is
precisely the function of” the horizontal component of the L-shaped bracket,
i.e., “it is the bottom and acts as the support.” Ans. 5. Appellant argues, “the
claimed subject matter is a rectangular base and not part of an ‘L’ shaped
bracket.” Reply Br. 5. In other words, as per Appellant, a skilled person
“would not consider an ‘L’ shaped bracket to be [] analogous to a
rectangular base.”5 Reply Br. 5. Additionally, Appellant contends, “[t]he
Examiner’s reliance upon the dictionary for plain meaning in interpreting the
claim term ‘base’ is inappropriate because the specification is clear about the
scope and content of a claim term.” Reply Br. 6.
Regarding Appellant’s latter argument first (i.e., the Examiner’s
proffered definition “is inappropriate because the specification is clear”),

4 Both Shade Sail Anchor and Dunkinson also disclose/illustrate an
L-shaped bracket. See Shade Sail Anchor; Dunkinson 5:9, Figs. 1, 2.
Dunkinson further teaches that either one or a pair of such brackets may be
employed. See Dunkinson 6:20–23.
5 For example, Appellant asks, “would one go into a hardware store and ask
for an ‘L’ shaped bracket when the person was looking for a rectangular
base?” Reply Br. 6.
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Appellant does not identify where Appellant’s Specification explicitly
defines “base,” or otherwise employs this term, in a manner inconsistent
with the definition above. For example, Paragraph 22 of Appellant’s
Specification states, “[t]he base plate 208 may be attached to the component
212, which may be a load bearing component as previously described.” See
also Spec. ¶¶ 21, 26 (“to facilitate attachment of the base 208 to the
component 212”). Appellant does not explain how the bottom (horizontal)
portion of the L-shaped bracket disclosed in the various references is not
load bearing and also cannot be deemed a “base.” See Roof Extenda
Bracket, Shade Sail Anchor, and Dunkinson, generally. Nor does Appellant
explain how the bottom portions of these disclosed L-shaped brackets fail to
be “substantially rectangular” as recited. In other words, Appellant does not
explain how those skilled in the art would fail to recognize the horizontal
bottom portion of the L-shaped bracket as the “base” when oriented as
illustrated in the references. Accordingly, we are not persuaded of Examiner
error on this point.
Appellant also contends, “Roof Extenda Bracket does not qualify as
prior art because the Examiner has not met the burden of providing the
appropriate dates for publication.” Appeal Br. 13; see also id. at 10, Reply
Br. 3, 4. In response, the Examiner explains that a link was provided where
such brochure was “found on the website via the Wayback Machine in order
to provide the date at which” the brochure was available to the public. Ans.
3. The Examiner also provided a link which shows the bracket was
“available on their website as early as 9/12/2010” (before Appellant’s filing
date of February 17, 2012). Ans. 3. Furthermore, it is noted that Roof
Extenda Bracket references both Australian Patent No. 707335 (granted July
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12, 1996) and New Zealand Patent No. 312047 (granted September 7, 2000),
both grant dates being significantly prior to Appellant’s filing date. Thus,
Appellant’s contentions that Roof Extenda Bracket, and particularly the
device disclosed therein, fails to qualify as prior art are not persuasive.
Appellant also discusses the Shade Sail Anchor brochure (see Appeal
Br. 14, Reply Br. 7) and Dunkinson (see Appeal Br. 16), but the arguments
presented with respect to these references are redundant to those already
discussed above regarding Roof Extenda Bracket, and are not persuasive of
Examiner error for similar reasons. It is further noted that the Shade Sail
Anchor brochure states “Patent Applied For 200620072.” Shade Sail
Anchor, third column. Dunkinson bears this exact same application number,
which was made public on September 6, 2007. See also Ans. 3.
Addressing the secondary reference to Plaisted, it is to be noted that
the Examiner relied on this reference for teaching “a bracket pivotally
supporting a trailing edge.” Final Act. 5. Appellant contends “nowhere
does Plaisted describe a ‘trailing edge.’” Appeal Br. 15.6 However, while
this exact term may not be employed in Plaisted, this reference clearly
teaches the support of opposite edges (i.e., leading and trailing edges) of a
solar panel above an existing roof. See, e.g., Plaisted Abstract, Figs. 7A, 7B,
Additionally, the Examiner has found that the primary references of Roof

6 Appellant acknowledges the Examiner’s reliance on “Figure 5a” and
“pivoting connection at 550 [with strut member 510 at] the ‘trailing edge.’”
Reply Br. 5–6 (referencing Ans. 5). However, “[A]ppellant is not too sure
what figure 5a and reference numbers 550 and 510 the Examiner referenced
because the present application does not have a figure 5a or references 550
or 510.” Reply Br. 6. To be clear, the Examiner is referencing Plaisted, not
Appellant’s “present application.” See Ans. 4–5.

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Extenda Bracket, Shade Sail Anchor, and Dunkinson each disclose
supporting “a trailing edge of the elevated roof over the existing roof.” Final
Act. 4. Thus, whether or not Plaisted also “describe[s] a ‘trailing edge’” as
asserted by Appellant, this argument is moot in view of such findings in the
primary references.
Appellant further argues that Plaisted does not disclose a base that is
configured to penetrate an existing roof as recited. Appeal Br. 15.
However, Plaisted was not relied on for such teachings, but instead for
disclosing a pivotal support bracket as noted above. To be clear, the
Examiner finds “[t]he bracket of the Shade Sail Anchor and Dunkinson
bracket is fully configured to penetrate through an opening [in] a roof”
(noting “that Appellant is not claiming the size of the hole”) and, in fact,
“that is exactly how it is to be installed.” Ans. 5–6.
Accordingly, and based on the record presented, we are not persuaded
of Examiner error by Appellant’s contentions. We sustain the Examiner’s
rejection of claims 1, 3–11, 13, and 14 as unpatentable over Roof Extenda
Bracket and/or Shade Sail Anchor and/or Dunkinson in view of Plaisted.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–11, 13,
14
Provisional
Obviousness-type
Double Patenting7

7 As explained above, we do not reach this rejection per Ex parte Moncla,
Appeal No. 2009-006448 (PTAB June 22, 2010) (holding that it is
premature to address a provisional rejection) (designated precedential).
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Application 13/399,263

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–11, 13,
14
103 Roof Extenda
Bracket and/or
Shade Sail Anchor
and/or Dunkinson
in view of Plaisted
1, 3–11, 13, 14
Overall
Outcome
1, 3–11, 13, 14
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED