ECKHARDT, Bartley J.

Patent Trials and Appeals Board

Mar 24, 2020

15874423 - (D) (P.T.A.B. Mar. 24, 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.
15/874,423 01/18/2018 Bartley J. ECKHARDT 001458.00005 6993
155942 7590 03/24/2020
Saxton & Stump, LLC
280 Granite Run Drive, Suite 300
Lancaster, PA 17601
EXAMINER
KENNY, DANIEL J
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
03/24/2020 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 BARTLEY J. ECKHARDT
Appeal 2019-005129
Application 15/874,423
Technology Center 3600
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
JEREMY M. PLENZLER, Administrative Patent Judges.
GREENHUT, 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 7–13 and 17–19. See Final Act. 1. 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 Bartley J. Eckhardt.
Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a reinforcing plate for joist sistering. Claim
7, reproduced below, is illustrative of the claimed subject matter:
7. A joist or stud used to support a structure, the joist or stud
comprising:
a wood member having a first surface and an oppositely
facing second surface, end surfaces extend between the first
surface and the second surface, edge surfaces extend between the
first surface, the second surface, and the end surfaces;
a rigid reinforcing plate mounted to the first surface of the
wood member, the reinforcing plate comprising:
longitudinal edges positioned proximate to or adjacent to
the edge surfaces of the wood member;
preformed first openings spaced from the longitudinal
edges, the first openings allow for building materials to extend
therethrough;
preformed second openings provided proximate to edges
of the reinforcing plate, the second openings configured to allow
for attachment members to be inserted therethrough to attach the
reinforcing plate to the wood member;
the first openings are larger than the second opening;
the first openings are spaced along a longitudinal axis of
the reinforcing plate to allow sufficient material to be provided
across the length and width of the reinforcing plate wherein the
integrity and performance of the reinforcing plate is maintained
to allow the reinforcing plate to resist bending stresses applied to
the joist or stud without failure of the reinforcing plate or the joist
or stud;
wherein the longitudinal edges of the rigid reinforcing
plate do not cooperate or interfere with the edge surfaces of the
wood member;
wherein the reinforcing plate is mounted to the first
surface of the wood member to resist the bending stresses applied
to the joist or stud and to increase shearing resistance of the joist
or stud.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Rudd US 5,875,605 Mar. 2, 1999
Le Poire US 6,389,762 B2 May 21, 2002
Salazar US 2014/0260031 A1 Sep. 18, 2014
Old House Web http://www.oldhouseweb.com/
forums/viewtopic.php?f=4&t=18545
Nov. 24, 2008

REJECTIONS
Claims 7, 9–11, and 13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Old House Web and Salazar. Final Act. 2.
Claims 8, 17, and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Old House Web, Salazar and Le Poire. Final Act. 5.
Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over
Old House Web, Salazar and Rudd. Final Act. 6.
Claim 18 is rejected under 35 U.S.C. § 103 as being unpatentable over
Old House Web, Salazar, Le Poire and Rudd. Final Act. 6.
OPINION
Rejection 1
Claims 7, 9–11, and 13 are argued as a group. We select claim 7 as
representative. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner rejected claim 7, determining Old House Web
(“OHW”) satisfies all limitations of claim 7 except the limitation,
preformed first openings spaced from the longitudinal edges,
the first openings allow for building materials to extend
therethrough; the first openings are larger than the second
opening; the first openings are spaced along a longitudinal axis
of the reinforcing plate to allow sufficient material to be
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provided across the length and width of the reinforcing plate
wherein the integrity and performance of the reinforcing plate is
maintained to allow the reinforcing plate to resist bending
stresses applied to the joist or stud without failure of the
reinforcing plate or the joist or stud.
Final Act. 2–4.
The Examiner, citing openings 127, determined Salazar satisfies the
above limitation and that “[i]t would have been obvious to one having
ordinary skill in the art before the effective filing date of the claimed
invention to include openings in the OHW steel plate (and therefore the
wood beam also) as taught by Salazar to allow utilities to pass through the
beam.” Final Act. 4 (citing Salazar para. 344 discussing the embodiment
depicted in Figure 112).
Appellant argues that claim 7 includes the limitations of “the
preformed second opening on the edges of the reinforcing plate to attach the
plate to the wood member,” and “a first opening larger than the second
opening which allows for building materials such as electrical wiring,
plumbing, . . . to go through the plate,” which are not taught by OHW.
Appeal Br. 5. Appellant is arguing against the references individually. One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
The Examiner relies on the combined teachings of Salazar and OHW for the
rejection. Ans. 4; Final Act. 4. Appellant has not apprised us as to why the
Examiner’s findings with regard to Salazar are incorrect or based on an
unreasonably broad claim interpretation.
Appellant argues that OHW does not teach “the reinforcing plate
‘resist[s] bending stress applied to the joist or stud’” because OHW is
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concerned with a “localized area” and not concerned with “the entire length
of the stud.” Appeal Br. 5. We agree with the Examiner that “localized”
repair is not mentioned in OHW and that “sistering the entire joist is not
claimed.” Ans. 4. The Examiner also correctly determines that “any length
of steel sistering plate ‘would resist bending stress applied to the joist or
stud’” because the steel plate of OHW is shown to be constructed in the
same manner as the Appellant’s claimed steel plate. Ans. 4, Final Act. 2–3.
As the prior-art and claimed structures appear to be identical the burden to
produce evidence or reasoning to demonstrate why they would not be
expected to exhibit the same mechanical properties, such as resisting
bending stress, shifts to Appellant. See MPEP § 2112. Appellant has not
come forward with any technical reasoning or evidence to demonstrate why
a recitation involving the ability to “resist bending stress applied to the joist
or stud” would result in a structural difference between the subject matter
claimed and the combination proposed by the Examiner.
Appellant also argues that neither OHW nor Salazar teach “preformed
second openings provided proximate to edges of the reinforcing plate, the
second openings configured to allow for attachment members to be inserted
therethrough to attach the reinforcing plate to the wood member,” and “the
first openings are spaced along a longitudinal axis of the reinforcing plate
...” Appeal Br. 6. The Examiner correctly determines OHW teaches
“preformed second opening[s] provided proximate to edges of the
reinforcing plate, the second opening[s] configured to allow for attachment
members to be inserted therethrough to attach the reinforcing plate to the
wood member.” Final Act. 3. The Examiner also correctly determines OHW
does not expressly disclose, but Salazar teaches “the first openings are
spaced along a longitudinal axis of the reinforcing plate ...” Final Act. 3–4.
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The Examiner correctly determines “[i]t would have been obvious to one
having ordinary skill in the art before the effective filing date of the claimed
invention to include openings in the OHW steel plate (and therefore the
wood beam also) as taught by Salazar to allow utilities to pass through the
beam.” Final Act. 4. We are not apprised of Examiner error.

Motivations to combine or modify
Teaching Away
Appellant argues that OHW teaches away from combining with
Salazar because OHW teaches “[i]t is unlikely that there are utilities running
through the joist to be sistered. Otherwise, sistering would involve rerouting
of those utilities.” Appeal Br. 6. A prior art reference must be considered in
its entirety, i.e., as a whole, including portions that would lead away from
the claimed invention. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d
1540 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). However, “the
prior art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed….” In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). OHW is a forum where
different users provide thoughts or solutions on how to fix things around a
house. Often a first user will post a story with questions on a forum, and
then many users will join the conversation to offer solutions and provide
further discussion of similar topics within the forum. The teaching away
statement that Appellant cited is from a user “dfiler.” Ans. 5. The cited
rejection used by the Examiner is from user “cs.” Ans. 5. The cited
teaching of user “cs” does not have any teaching away statements. The
teaching of “dfiler” does not mention anything about “holes,” as Appellant
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suggests. Appeal Br. 6. The statement of “rerouting of those utilities” from
user “dfiler” does not criticize, discredit or otherwise discourage the solution
of “adding holes.” OHW as a whole, while including comments of different
users, is merely disclosing different alternatives to housing repairs. The
skilled artisan would be able to determine the need or lack thereof, for
routing utilities and choose and appropriate solution. The fact that some
degree of judgement and mechanical skill may be required to implement the
Examiner’s proposed combination does not, without more, demonstrate the
nonobviousness of that combination. Graham v. John Deere Co. of Kansas
City, 383 US 1, 10–12 (discussing Hotchkiss v. Greenwood, 11 How. 248
(1851)). Hence, the Examiner is correct that OHW as a whole does not
teach away. Ans. 5.

Changing the Principle of Operation of a Reference
Appellant argues that “the Examiner’s proposed combination of
references would require a substantial reconstruction and redesign of the
elements shown in the Old House Web as well as a change in the basic
principles under which the Old House Web was designed to operate.”
Appeal Br. 6–7. If the proposed modification or combination of the prior art
would change the principle of operation of the prior art invention being
modified, then the teachings of the references are not sufficient to render the
claims prima facie obvious. In re Ratti, 270 F.2d 810, 813 (CCPA 1959).
However, Appellant has not identified any principle operations of the OHW,
and how the proposed modification changes the principle operation of the
OHW. Appellant also has not explained why the proposed additional
openings would constitute a substantial reconstruction and redesign of the
steel plate of OHW. We agree with the Examiner that “Appellant’s steel
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member appears to actually have a greater number of such openings, which
would make the claimed invention less structurally sound compared to the
Old House Web structure.” Ans. 6. If the principle operation of the steel
plate were for enforcing structural integrity, adding additional holes to the
steel plate might provide a different level of structural integrity, but would
not change the fact such plate is still for enforcing structural integrity—the
principle operation of the steel plate.

Nonanalogous Art
Appellant argues that “there is absolutely no way that one of ordinary
skill in the art working with wood structures would ever turn and look to a
reference like Salazar for inspiration” and “[t]here would be no reason to
look to a structure which uses expandable polymeric materials with steel
plates such as Salazar when dealing with supporting wood members such as
Old House Web.” Appeal Br. 7. We regard Appellant to be arguing that
Salazar is nonanalogous art. A reference is analogous art to the claimed
invention if: (1) the reference is from the same field of endeavor as the
claimed invention (even if it addresses a different problem); or (2) the
reference is reasonably pertinent to the problem faced by the inventor (even
if it is not in the same field of endeavor as the claimed invention).
Similarities and differences in structure and function of the inventions
should be considered when determining the field of endeavor. See Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004). Appellant’s claimed subject matter is
in the field of “enhanc[ing] the structural integrity of the joists.” Spec. para.
1. Salazar also is for enhancing the structural integrity of a joist. Salazar
para. 212, 341. Hence, Salazar is similar in function as the claimed
invention. Spec. para. 27. The Examiner correctly finds that Salazar’s steel
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plate is of the similar structure as Appellant’s plate. Final Act. 4 (citing
Salazar, element 127, 113, and para. 344). The structure and function of
Salazar’s plate therefore demonstrates that Salazar is within the same field of
endeavor as the claimed invention. Additionally, Appellant identifies a
problem that “it may be difficult to properly drill through the reinforcing
plate 14 to accommodate the electrical wiring, plumbing, conduit or other
materials or devices.” Spec. para. 28. The holes in Salazar’s plate are
intended to “allow utilities to pass through the beam.” Final Act. 4 (citing
Salazar para. 344). Thus, Salazar, “because of the matter with which it
deals, logically would have commended itself to an inventor’s attention in
considering [this] problem.” See In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992). Hence, Salazar is also analogous art because it is relevant to the
particular problem with which the inventor was concerned.

Improper Hindsight
Appellant argues that “the Examiner improperly relied upon hindsight
to piece together Old House Web and Salazar without any motivation in the
references themselves to do so.” Appeal Br. 7. It must be recognized that
any judgment on obviousness is in a sense necessarily a reconstruction based
upon hindsight reasoning. But so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made, and does not include knowledge gleaned only
from the Appellant’s disclosure, such a reconstruction is proper. See In re
McLaughlin, 443 F.2d 1392 (CCPA 1971). Appellant has not identified any
particular knowledge that the Examiner used, which is gleaned only from
Appellant’s disclosure. When combining Salazar with OHW, the Examiner
has provided articulated reasoning supported by rationale underpinnings for
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the proposed combination: “allow[ing] utilities to pass through the beam.”
Final Act. 3–4 (citing Salazar para. 344); Ans. 7. Hence, the argument of
improper hindsight is unsupported. Additionally, the Court, in KSR
International Co. v. Teleflex Inc., 550 U.S. 398 (2007), rejected any rigid
requirement of a teaching or suggestion or motivation to combine known
elements to be found in the references in order to show obviousness.

Improper Use of Official Notice
Appellant argues that the Official Notice of “it is exceedingly old in
the art to use multiple opening/fasteners for holding strength” is improper.
Appeal Br. 7–8 (citing Final Act. 3). Mere reliance on common knowledge
does not, as Appellant seems to argue, render a rejection de facto flawed.
Appeal Br. 7–8. To adequately traverse such a finding, Appellant must
“specifically point out the supposed errors in the Examiner’s action, which
would include stating why the noticed fact is not considered to be common
knowledge or well-known in the art.” MPEP § 2144.03 (citing 37 C.F.R.
§ 1.111(b)). Appellant has not done this and indeed makes no allegation that
it would not have been common knowledge in the art to use multiple
fasteners to improve holding strength. Appeal Br. 7–8. In any case, the
Examiner also relies on the same figure of OHW, which shows the use of
multiple fastener-accommodating openings, for evidentiary support in
response to Appellant’s argument. Ans. 8.

Rejection 2
Appellant argues that
the Examiner fails to show how the references (or for that
reason the combination) teach the specific steps set forth in
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claim 17 of mounting a first rigid reinforcing plate to a wood
surface, mounting a second rigid reinforcing plate to a second
surface of the wood, aligning the preformed first mounting
openings with the preformed second mounting opening,
aligning the performed first conduct opening with the
preformed second conduit opening and inserting a conduit
through such openings.
Appeal Br. 9.
Under the principles of inherency, if a prior art device, in its normal
and usual operation, would necessarily perform the method claimed, then the
method claimed will be considered to be satisfied by the prior art device.
When the prior art device is the same field as a device described in the
specification for carrying out the claimed method, it can be assumed the
device will inherently perform the claimed process. In re King, 801 F.2d
1324 (Fed. Cir. 1986). The Examiner rejects the device claims 8 and 17 in
“a sufficiently articulate and informative manner as to meet the notice
requirement of 35 U.S.C. § 132.” See, e.g., In re Jung, 637 F.3d 1356, 1363
(Fed. Cir. 2011). Final Act. 5. It appears that in its normal and usual
operation, the prior-art device cited in the rejection of claim 8 would
perform the method of claim 17. Hence, the method claim 17 is considered
to be satisfied by the prior art combination cited by the Examiner in the
rejection of claim 8.
Appellant also argues that the Examiner fails to address “each step of
these specific limitations of the method claims 17 and 19,” and “show the
exact sequence of events or steps set forth in the method claims 17 and 19.”
Appeal Br. 9.
Though understanding the claim language may be aided by
explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the
claim. For example, a particular embodiment appearing in the
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written description may not be read into a claim when the claim
language is broader than the embodiment.

Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). The court, in Altriris, held that it was improper to read a specific
order of steps into method claims where, as a matter of logic or grammar,
the language of the method claims did not impose a specific order on the
performance of the method steps, and the specification did not directly or
implicitly require a particular order. Altiris Inc. v. Symantec Corp., 318 F.3d
1363, 1371 (Fed. Cir. 2003) (citing at MPEP 2111.01 (II)). Hence, the
Examiner correctly determines that “no sequence or order of the method
steps” is required. Ans. 9.

Nonanalogous Art
Appellant argues that the Examiner “pull[s] [the] Le Poire reference
out of the air to conclude without any rhyme or reason” that it would have
obvious to combine the teaching of Le Poire with OHW when rejecting
claims 8, 17, and 19. Appeal Br. 9. We regard Appellant to be arguing that
Le Poire is nonanalogous art. As discussed above, a reference is analogous
art to the claimed invention if: (1) the reference is from the same field of
endeavor as the claimed invention (even if it addresses a different problem);
or (2) the reference is reasonably pertinent to the problem faced by the
inventor (even if it is not in the same field of endeavor as the claimed
invention). Similarities and differences in structure and function of the
inventions should be considered when determining the field of endeavor.
See Bigio, 381 F.3d at 1325. Appellant’s claimed subject matter is in the
field of “enhanc[ing] the structural integrity of the joists.” Spec. para. 1. Le
Poire is for increasing the loads on the wood frame. Le Poire, col. 3 lines
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45–55 and col. 5 line 66–col. 6 line 1. Hence, Le Poire is similar in function
as the claimed invention. Spec. para. 27. The Examiner correctly finds that
the Le Poire’s steel plates are of the similar structure as Appellant’s plates.
Final Act. 4 (citing Le Poire, Figure 7, element 24). The structure and
function of Le Poire’s plates therefore demonstrate that Le Poire is within
the same field of endeavor as the claimed invention. Additionally, Appellant
identifies a problem that “due to the orthotropic properties of wood, some
species cannot be used efficiently in many applications and/or under
particular conditions,” and that “visual grading of structural lumber using as
criteria exterior wood appearance restricts the use of an important quantity
of slightly affected structural lumber to applications in which the stresses
involved are considerably lower.” Spec. para. 4. The side plates on both
sides of frame 22 in Le Poire are intended to provide “additional shear
strength” or “carry extreme loads.” Final Act. 5; Le Poire col. 5 line 66–col.
6 line 1. Hence, Le Poire is also analogous art because it is relevant to the
particular problem with which the inventor was concerned.

Improper Hindsight
Appellant argues that the Examiner uses “improper hindsight
reconstruction to supply deficiencies” when combining Le Poire to reject
claims 8, 17, and 19. Appeal Br. 9–10. Again, Appellant has not identified
any particular knowledge that the Examiner used, which is gleaned only
from Appellant’s disclosure. When combining Le Poire with OHW and
Salazar, the Examiner has provided articulated reasoning supported by
rationale underpinnings for the proposed combination: “for additional shear
strength.” Final Act. 5 (citing Le Poire Figure. 7). Hence, the argument of
improper hindsight is unsupported.
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Improper Use of Official Notice
Appellant argues that the Official Notice of “it is exceedingly old in
the art to insert [a] conduit through a utility opening and that it is
exceedingly old in the art to align holes in members to arrive at the final
[rejection]” is improper. Appeal Br. 9 (citing Final Act 6). Again, mere
reliance on common knowledge does not, as Appellant seems to argue,
render a rejection de facto flawed. Appeal Br. 9. To adequately traverse
such a finding, Appellant must “specifically point out the supposed errors in
the Examiner’s action, which would include stating why the noticed fact is
not considered to be common knowledge or well-known in the art.” MPEP
§ 2144.03 (citing 37 C.F.R. § 1.111(b)). Appellant has not done this and
indeed makes no allegation that it would not have been common knowledge
in the art to insert a conduit through utility openings for code compliance or
to align holes in members. Appeal Br. 9.

Rejection 3
Improper Hindsight
Appellant argues that the Examiner uses “improper hindsight
reconstruction to supply deficiencies” when combining Rudd to reject claim
12. Appeal Br. 10. Appellant has not identified any particular knowledge
that the Examiner used, which is gleaned only from Appellant’s disclosure.
When combining Rudd with OHW and Salazar, the Examiner has provided
articulated reasoning supported by rationale underpinnings for the proposed
combination: “for additional holding strength.” Final Act. 6 (citing Rudd
col. 2, lines 53–58). Hence, the argument of improper hindsight is
unsupported.
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Rejection 4
Appellant argues that “[t]he rejection is devoid of any reason” and
that “the Examiner cannot simply rely on unsubstantiated conclusions to
arrive at a finding of obviousness.” Appeal Br. 12. Again, if a prior-art
device, in its normal and usual operation, would necessarily perform the
method claimed, then the method claimed will be considered to be
anticipated by the prior art device. When the prior-art device is the same as
a device described in the specification for carrying out the claimed method,
it can be assumed the device will inherently perform the claimed process. In
re King, 801 F.2d 1324. The Examiner rejects the device claim 12 in “a
sufficiently articulate and informative manner as to meet the notice
requirement of 35 U.S.C. § 132.” See, e.g., In re Jung, 637 F.3d at 1363.
Final Act. 5. It appears that in its normal and usual operation, the prior-art
device cited in the rejection of claim 12 would perform the method of claim
18. Hence, the method claim 18 is considered to be met by the prior-art
combination cited by the Examiner in the rejection of claim 12.

CONCLUSION
The Examiner’s rejections are affirmed.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 9–11, 13 103 Old House Web,
Salazar
7, 9–11, 13
8, 17, 19 103 Old House Web,
Salazar, Le Poire
8, 17, 19
12 103 Old House Web,
Salazar, Rudd
12
18 103 Old House Web,
Salazar, Le Poire,
Rudd
18
Overall
Outcome
7–13, 17–19

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED