14741353 - (D) (P.T.A.B. Apr. 1, 2020)

LETHIN, Douglas T.

Patent Trials and Appeals BoardApr 1, 2020

14741353 - (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. 14/741,353 06/16/2015 Douglas T. LETHIN 030.P001CIP2 5468 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 2018-007295 Application 14/741,353 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 1–20, 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. Appeal 2018-007295 Application 14/741,353 2 CLAIMED SUBJECT MATTER The disclosed subject matter relates to “[a]dding additional roof like structures to existing roofs.” Spec. ¶ 3. Apparatus and system claims 1 and 11 (respectively) are independent. Claim 1 is illustrative of the claims on appeal and, is reproduced below. 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 perpendicular to each other; and a substantially rectangular 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 base is configured to penetrate through the existing roof proximate to the trailing edge of the elevated roof and to attach to a load bearing component of the structure, the load bearing component being a load bearing wall configured to support the existing roof substantially around a periphery of 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”). Appeal 2018-007295 Application 14/741,353 3 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 1–6 and 11–16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3–11, 13 and 14 of copending Application No. 13/399,263. Claims 1–20 are rejected under 35 U.S.C. § 103 as being unpatentable over Roof Extenda Bracket and Plaisted. Claims 1–3, 5–7, 11–13, and 15–17 are rejected under 35 U.S.C. § 103 as unpatentable over Shade Sail Anchor (Dunkinson) and Plaisted. ANALYSIS The provisional rejection of claims 1–6 and 11–16 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. 9. 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 1–20 as unpatentable over Roof Extenda Bracket and Plaisted Appellant argues all the claims (i.e., claims 1–20) together. See Appeal Br. 10–15. We select claim 1 for review, with claims 2–20 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2018-007295 Application 14/741,353 4 The Examiner relies on Roof Extenda Bracket for primarily disclosing the limitations of claim 1, but acknowledges that this reference “does 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 Roof Extenda Bracket. 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. 12. Appellant contends: It should be appreciated by those of ordinary skilled 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 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. Appeal 2018-007295 Application 14/741,353 5 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 itself is silent as to the size and configuration of the hole to be cut, only providing instructions to 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. 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. Hence, there is no indication that the device depicted in Roof Extenda Bracket is ill-suited for its intended purpose of securing a new roof over an existing roof, and also maintaining that interconnection during an uplifting load. Appeal 2018-007295 Application 14/741,353 6 The Examiner additionally addresses the L-shaped bracket depicted in Roof Extenda Bracket in view of the claim limitation, “a substantially rectangular type shaped base.” 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. Further, 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 addresses vertically aligned gusset plates 506, 620 (see Figs. 5, 6 of Appellant’s Specification) contending that a skilled person “would not interchange a gusset with an ‘L’ shaped bracket.” Reply Br. 5. However, Appellant’s focus on the vertical component of the Roof Extenda Bracket’s mounting bracket does not detract from its horizontal component qualifying as a “base,” as addressed by the Examiner. Additionally, 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. Again, this does not detract from Roof Extenda Bracket’s L-shaped bracket having a “base” as that term is employed. 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. However, Appellant does not identify where Appellant’s Specification explicitly defines “base,” or otherwise employs Appeal 2018-007295 Application 14/741,353 7 this term, in a manner inconsistent with the definition above. For example, Paragraph 23 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. ¶¶ 22, 27 (“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 Roof Extenda Bracket is not load bearing and as such, cannot be deemed a “base.” See Roof Extenda Bracket generally. Nor does Appellant explain how this bottom portion of the disclosed L-shaped bracket fails 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 Roof Extenda Bracket’s L-shaped bracket as the “base” when oriented as illustrated. 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 11; 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 12, 1996) and New Zealand Patent No. 312047 (granted September 7, 2000), both grant dates being significantly prior to Appellant’s filing date. Thus, Appeal 2018-007295 Application 14/741,353 8 Appellant’s contentions that Roof Extenda Bracket, and particularly the device disclosed therein, fails to qualify as prior art are not persuasive. 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. 14.2 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 finds that Roof Extenda Bracket discloses supporting “a trailing edge of the elevated roof over the existing roof.” Final Act. 5. Thus, whether or not Plaisted “describe[s] a ‘trailing edge’” as asserted by Appellant, this argument is moot in view of the redundant findings in the primary reference which is not contested. Appellant also 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. Accordingly, and based on the record presented, we are not persuaded of Examiner error by Appellant’s contentions. We sustain the Examiner’s 2 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 (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. 5. Appellant’s contention is not persuasive because the Examiner is referencing Plaisted, not Appellant’s “present application.” See Ans. 4–5. Appeal 2018-007295 Application 14/741,353 9 rejection of claims 1–20 as unpatentable over Roof Extenda Bracket and Plaisted. The rejection of claims 1–3, 5–7, 11–13, and 15–17 as unpatentable over Shade Sail Anchor (Dunkinson) and Plaisted Appellant argues claims 1–3, 5–7, 11–13 and 15–17 together. See Appeal Br. 16–19. We select claim 1 for review, with the remaining claims (i.e., claims 2, 3, 5–7, 11–13, and 15–17) standing or falling with claim 1. Appellant addresses Dunkinson contending that this reference discloses brackets that “are L shaped” and as such, “[i]t is unclear how Dunkinson would teach or suggest” the limitation “a substantially rectangular base . . . .” Appeal Br. 17; see also id. at 16. This contention is not persuasive for similar reasons discussed above regarding a similar bracket depicted in Roof Extenda Bracket. Regarding Plaisted, Appellant contends, “Plaisted does not teach or disclose anything about elevated roofs.” Appeal Br. 18. However, Plaisted was not relied on for such teachings, but instead for teaching “a bracket pivotally supporting a trailing edge.” Final Act. 9; see also Plaisted Figs. 7A, 7B. Appellant’s further discussions regarding Shade Sail Anchor, Dunkinson, and Plaisted (see Appeal Br. 18, 19) are further not persuasive of Examiner error. See, e.g., Ans. 5–6 (“The 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”). Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claims 1–3, 5–7, 11–13, and 15–17 as unpatentable over Shade Sail Anchor (Dunkinson) and Plaisted. Appeal 2018-007295 Application 14/741,353 10 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 11–16 Provisional Obviousness-type Double Patenting3 1–20 103 Roof Extenda Bracket, Plaisted 1–20 1–3, 5–7, 11–13, 15– 17 103 Shade Sail Anchor (Dunkinson), Plaisted 1–3, 5–7, 11– 13, 15–17 Overall Outcome 1–20 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 3 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).