Ex Parte 7478467 et al

Patent Trial and Appeal Board

Jun 30, 2015

95002197 (P.T.A.B. Jun. 30, 2015)

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.
95/002,197 09/14/2012 7478467 88408.000013 2693
9961 7590 06/30/2015
Beck & Thomas, P.C.
SUITE 100
1575 McFARLAND ROAD
PITTSBURGH, PA 15216-1808
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/30/2015 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
____________________

GRAY METAL PRODUCTS, INC., GRAY METAL SOUTH,
INC., and SNAP RITE MANUFACTURING, INC.
Requester

v.

DUCTMATE INDUSTRIES, INC.
Patent Owner
____________________

Appeal 2014-007488
Reexamination Control 95/002,197
Patent US 7,478,467 B21
Technology Center 3900
____________________
Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued to Gudenburr et al. on January 20, 2009 (hereinafter referred to as
the '467 patent).
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STATEMENT OF THE CASE
Appellant/Patent Owner appeals under 35 U.S.C. §§ 134(b) and
315(a) from the Examiner’s rejections of claims 1-10. We have jurisdiction
under 35 U.S.C. §§ 134(c) and 315(b). We AFFIRM-IN-PART.
We are informed that the present case is involved in litigation in U.S.
District Court for the Western District of PA, Civil Action No. 2:12-cv-
1440-AJS. App. Br. 3. The present reexamination is also related to two
other presently pending reexaminations: Reexamination Control 95/002,296
of US Patent No. 8,151,430 and Reexamination Control 95/002,119 of US
Patent No. 7,770,034. Id.

THE INVENTION
The Patent Owner's invention is directed generally to a method for
manufacturing a self-locking sheet metal duct with a sealant. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for manufacturing a circular sheet metal
duct comprising:
a. providing sheet metal;
b. providing a snap lock mechanism on the sheet metal;
c. inserting a reusable liquid applied gasketing sealant
into the snap lock mechanism; and
d. forming the sheet metal into the shape of a circular
duct.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kachi et al. JP 61-293570 Dec. 24, 1986
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Lockformer Co., PRODUCT CATALOG, November 1989.
("Lockformer").
Polymer Adhesives Sealant Systems, Inc., AIR-TITE 444: WATER
BASED PUMPABLE SEAM SEALANT, April 2005.2 ("Air-Tite 444").
Sheet Metal Connectors, Inc., SPECIFICATIONS FOR RECTANGULAR
DUCT AND FITTINGS, March 2004. ("SMC").
Georgia Power, TECHNICAL INFORMATION HANDBOOK (2002).
("Georgia Power").
Streimer Sheet Metal Works, Inc., http://web.archive.org/web/200301
09185519/http://www.streimer.com/streimer_html/ssmw_fabriduct.htm,
January 2003. ("Fabriduct").
Cleats Manufacturing Co.,
http://web.archive.org/web/20010815145705/http://www.cleatsmfg.com/Pag
es/Ductwork.html, August 2001. ("Cleats").

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lockformer and Air-Tite 444. RAN 7.
2. Claims 1-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kachi, Air-Tite 444, and Georgia Power. RAN 8.
3. Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fabriduct, Air-Tite 444, and Georgia Power. RAN 9.

2 This publication date is accepted as set forth in the original Request for
Reexamination, p. 8.
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4. Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over SMC, Air-Tite 444, and Georgia Power. RAN 10.
5. Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cleats, Air-Tite 444, and Georgia Power. RAN 11.

ANALYSIS
Findings of Fact
FF1 – Lockformer teaches using a duplex machine to form snap lock
edges onto a sheet of sheet metal. Lockformer 7.
FF2 – Lockformer specifically discloses that its duplex machines are
"for volume production of snap locks for either round or square duct." Id.
FF3 – Lockformer discloses inserting sealant into snap lock joints via
a cold sealant unit. Lockformer 27.
FF4 – Lockformer discloses that its "cold sealant units can be fitted to
all Lockformer roll forming machines and are available with one to four gun
systems." Id.
FF5 – Air-Tite 444 discloses a sealant that "[w]ill not string when
applying," "cures to a flexible, gummy consistency," "will remain
permanently soft and gummy without drying out, cracking, or hardening,"
allows for assembly of ducts "up to 12 months from the application date" of
the sealant, and "will not separate or flow in high temperature applications."
Air-Tite 444.
Rejection of claims 1-7 over Lockformer and Air-Tite 444
According to the Examiner, "LOCKFORMER teaches all claimed
features [of claims 1-6] except for the sealant being 'reusable'." RAN 7.
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The Examiner then finds that Air-Tite 444 teaches a reusable sealant due, in
part, to the teaching that Air-Tite 444 discloses that "the seam can be
assembled after the sealant has solidified." Id. at 8; see also FF5. The
Examiner then states that "it would have been obvious to one of ordinary
skill in the roll-formed metal seam art to associate 'reusable' sealant with the
LOCKFORMER snap lock mechanism, in order to enable seam assembly
and sealing long after fabrication." RAN 8. We see no error in the
Examiner's formulation of this rejection and findings of fact and conclude
that the Examiner has established a prima facie case of obviousness for
claims 1-7.3
The Patent Owner argues that FF4 is incorrect because the
Lockformer document as a whole teaches that the statement that the sealant
units can be fitted to all roll forming machines
in context does not mean that it can be used with all roll
forming machines in the catalog, but rather rectangular roll
forming machines. There are many roll forming machines in
the catalog to which the cold sealant units could not and would
not be fitted, the circular duct seam forming machines being
one of them.
App. Br. 15. The Patent Owner also submits a Declaration of Ryan Scheel
stating that "[t]he Cold Sealant System shown on page 27 of the 1989
Lockformer Catalog was not intended to be used with, was not marketed for
use with and was not used with circular ductwork." Scheel Dec. 8(b)(vi).

3 The Patent Owner does not separately argue any of the dependent claims,
but merely relies on the overall deficiency of the combination for this
rejection. Accordingly, claims 2-7 stand or fall with claim 1.
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Nowithstanding that the claims do not recite any machinery at all to
perform the method,4 we still do not reach the same conclusion regarding
Lockformer as does the Patent Owner based on the evidence submitted.
Taken on its face, Lockformer clearly states that its sealant systems are
usable with all roll-forming machines. Mr. Scheel does not dispute this, but
only states that, in his opinion, Lockformer did not intend for them to be
used as such. Thus, all Patent Owner has shown is that Lockformer
allegedly did not intend for them to be used as such, despite the literature
specifically saying that they could be so used. We further consider this to be
attacking the reference individually rather than considering the rejection as a
whole. We see no persuasive evidence that one of ordinary skill in the art
would understand that the sealant systems disclosed in Lockformer are
physically incompatible with round duct forming systems. Taken on its
face, Lockformer appears to teach the capability to use its equipment to form
round ducts.

4 While not being the basis for our decision, we note that there is nothing in
the claims that even requires use of machinery to form the claimed duct, so
machine compatibility is not dispositive here. Claim 1 requires only
"providing sheet metal," "providing a snap lock," "inserting a reusable liquid
applied gasketing sealant into the snap lock," and "forming the sheet metal
into the shape of a circular duct." There appears to be no argument that
Lockformer does not provide snap lock mechanisms usable in round ducts
via the duplex machine (see Lockformer 7), and so these claims could be
met simply by taking the sheet metal off of the Lockformer duplex machine
after the snap locks have been formed, applying sealant by hand, and then
forming the sheet metal into a round shape (if not already in that shape) and
locking in place also by hand.

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Regarding Air-Tite 444, the Patent Owner asserts an overly narrow
interpretation to reach the conclusion that it does not teach what the
Examiner finds that it teaches. First, the Patent Owner asserts that the
statement in Air-Tite 44 that one should "fill the female seam" teaches away
from use with circular ductwork and would be applicable only to rectangular
ductwork. App. Br. 17. We note that Lockformer, though specifically only
teaching sealant used with seams for rectangular ducts,5 does not show
sealant beads that "fill the seam," but rather shows a small bead of sealant
similar in size and shape as that shown in the '467 patent. See, e.g.,
Lockformer 27. Accordingly, even for rectangular seams, the prior art does
not teach the necessity of filling the seams.
Further, filling the seam does not necessarily require filling the seam
to a full amount, but is consistent with a direction that one of skill in the art
would understand as instructing application of enough sealant as needed for
the particular situation/installation. The Examiner also notes that Air-Tite
444 also specifically discloses in its usage information the use of a 3 mm
bead that yields 1500 meters of sealant (see Air-Tite 444, "Technical
Specifications") and that such a bead would "not mandate a 'completely'
filled or 'over' filled restriction." RAN 16-17. As a whole, the Patent Owner
asserts an overly narrow interpretation of Air-Tite 444 and also merely
attacks this reference individually without taking its teaching as a whole in
context with the rest of the prior art. All the Examiner is using this reference
for is to teach that the Prior Art already contained examples of sealant that

5 Although Lockformer teaches using sealant in rectangular duct seams,
many of these seams are identical or nearly identical, at least on the side
receiving sealant, to those used in round ducts.
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were "reusable" and that one of skill in the art would understand how to
apply such sealant in the context of making a snap-lock round duct. We see
no persuasive evidence to suggest that this conclusion by the Examiner is
incorrect and, thus, conclude that the Examiner properly established a prima
facie case of obviousness.
Secondary Consideration Evidence
The Patent Owner also asserts various secondary considerations of
nonobviousness and submits numerous declarations in support. We have
considered all of the evidence as a whole, but do not agree that it is
sufficient to overcome the Examiner's prima facie case of obviousness. We
agree with the Examiner's response to these arguments (RAN 21-25) and
adopt them as our own, but further expound on the response infra.
The Patent Owner's main assertion is that there was a long-felt need
for round ductwork having a reusable, sealed, snap-lock mechanism. App.
Br. 26.
Establishing long-felt need requires objective evidence that an
art recognized problem existed in the art for a long period of
time without solution. The relevance of long-felt need and the
failure of others to the issue of obviousness depends on several
factors. First, the need must have been a persistent one that was
recognized by those of ordinary skill in the art. In re
Gershon, 372 F.2d 535, 539, 152 USPQ 602, 605 (CCPA
1967).
MPEP § 716.04. The Patent Owner's own statement regarding this assertion
shows its deficient nature, "[i]f it was obvious to apply [sealing technology]
to snap locking circular duct, it would have been done many years ago."
App. Br. 26. This statement fails to account for the requirement to show not
only that something had not been done, but also that those of skill in the art
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recognized the need and had failed to achieve it. It may be just as likely that
the reason that no one thought to use sealant on circular ducts is that the
existing solutions (tape and painted-on sealant) were sufficient. Indeed, the
Scheel Declaration submitted by the Patent Owner itself states that “[r]ound
circular duct was [in 1989] typically used for ‘branch’ or ‘trunk’ runs off of
the primary/main rectangular ducts where leakage was not a predominant
concern.” Scheel Dec. 8(b)(x). Regardless, all the Patent Owner has shown
is that there had been a passage of time, but has not shown there was
actually a need or that there was any failure of others to address the need.
Regarding commercial success, we agree with the Examiner that the
Patent Owner has failed to show a proper nexus between the alleged
commercial success and the claimed invention. RAN 24. As the Examiner
points out, Smith's Declaration acknowledges the deficiencies of comparing
Ductmate's success with its most relevant market, HVAC competitors, and
the overall comparison to the Commercial Building market is insufficient as
a comparison. Id. Further, the Smith Declaration merely states that "sales
revenue for round pipe increased by 37.33 % from 2005-2008." Smith Dec.
¶ 3.d. The Smith Declaration, however, also states that "Ductmate
introduced the claimed sealed round pipe into the market in August of
2006." Smith Dec. ¶ 5.a. Regardless of the difficulty of comparison to the
most relevant market, Ductmate certainly possessed the sales information
with respect to its own products to provide more detailed year over year
breakdowns. The 37.33% increase includes more than a year and a half of
time (out of four years) when the claimed product was not even sold and so
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we cannot determine how much of that increase relates to the claimed
product and how much does not.
The Patent Owner also points to the Spectralytics, Inc. v. Cordis
Corp., 649 F.3d 1336 (Fed. Cir. 2011), to suggest that a competitor's
advertisement could be sufficient to establish the requisite nexus. See App.
Br. 28-29. Again, the evidence must be taken as a whole and the Federal
Circuit in Spectralytics merely found that the advertising information at
issue, when taken with the rest of the "substantial evidence," was sufficient
for the factfinder to have concluded that the combination was not obvious.
Spectralytics, 649 F.3d at 1344. We have considered the Gray Metal South
advertisement, but in this case, when taken with the rest of the evidence, do
not find the evidence as a whole to be sufficient to demonstrate that the
Examiner erred in rejecting the claims.
In summation and as stated supra, we have considered all of the
evidence Patent Owner has submitted in its totality, but do not deem it
persuasive enough to demonstrate that the Examiner erred in rejecting the
claims.
Rejection of Claims 1-10 over Kachi, Air-Tite 444, and Georgia Power
Because we have already sustained the Examiner's rejection of claims
1-7 over Lockformer and Air-Tite 444, we will deal here only with claims 8-
10. The Patent Owner argues that Kachi teaches only rectangular duct locks
and does not teach the type of snap locks used in round ductwork. App. Br.
18-19. The Requester does not appear to disagree with this argument and
merely relies on Georgia Power to allegedly show that round duct and
rectangular duct are equivalent. See, e.g., Resp. Br. 23. The Examiner
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points to the discussion of Lockformer as supporting the round/rectangular
equivalency (RAN 18), but Lockformer is not used in this rejection and we
fail to see the parallel application of the Examiner's statements with regard
to Kachi. We note that Lockformer specifically discloses the use of its
equipment with both round and rectangular ducts, while we are persuaded
that nothing in Kachi teaches round duct snap locks and the Examiner's only
finding in this rejection regarding round ducts is in reference to Georgia
Power.
As the Patent Owner points out, however, Georgia Power merely
teaches a conversion calculation between round and rectangular ducts
relating to air flow. App. Br. 20. All this shows is that one may replace a
certain size rectangular duct with a round duct of a particular diameter to
meet the same air flow needs. Such a conversion has no relation to the type
of seam used in the ductwork and because we agree that Kachi teaches only
rectangular ductwork, we see no finding that would support using Kachi on
snap locks used in round ductwork. Accordingly, we do not sustain the
Examiner's rejection of claims 8-10 over Kachi.
Remaining Rejections
The remaining rejections deal only with claims 1-7, which are
encompassed by our affirmance of the Examiner's rejection over Lockformer
and Air-Tite 444. Accordingly, we will not reach the remaining rejections.

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1-7 as unpatentable over Lockformer and Air-Tite 444. We
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REVERSE the Examiner's decision to reject claims 8-10 as unpatentable
over Kachi, Air-Tite 444, and Georgia Power.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).
In accordance with 37 C.F.R. § 41.79(a)(1), the "[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a)." A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)–(d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding "commenced" on or after November
2, 2002 may not be taken "until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board." 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008). In the event neither party
files a request for rehearing within the time provided in 37 C.F.R. § 41.79,
and this decision becomes final and appealable under 37 C.F.R. § 41.81, a
party seeking judicial review must timely serve notice on the Director of the
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United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and
1.983.

AFFIRMED-IN-PART

peb

PATENT OWNER:

BECK & THOMAS, P.C.
Suite 100
1575 Mcfarland Road
Pittsburgh, PA 15216-1808

THIRD PARTY REQUESTOR:
Stephen B. Salai, Esq.
HARTER SECREST & EMERY LLP
1600 Bausch & Lomb Place
Rochester, NY 14604-2711