Ex Parte Anderson

Patent Trial and Appeal Board

Jan 4, 2013

10633694 (P.T.A.B. Jan. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEFFREY A. ANDERSON
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Appeal 2010-009626
Application 10/633,694
Technology Center 3600
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Before STEVEN D. A. McCARTHY, MICHAEL L. HOELTER and
SCOTT A. DANIELS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1, 3-15, 44, 54, 55, 60 and 61. Br. 1. Claims 2, 16-26,
31, 35, 45-48, 52 and 59 have been canceled while claims 27-30, 32-34, 36-
43, 49-51, 53 and 56-58 have been withdrawn. Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.

CLAIMED SUBJECT MATTER
The disclosed subject matter is directed to “building materials, and
more particularly to a metal framing member for structural and non-
structural building applications.” Spec. 1:5-6. Independent claim 1 is
illustrative of the claims on appeal and is reproduced below:
1. A metal framing member comprising: a formed metal sheet
having a length and including a web region including a plurality
of expanded web slots including voids and metal web elements
and extending along a portion of the length, wherein the region
includes a plurality of reinforcements proximate to the web
slots and confined to the web elements and exclusive to the web
voids, each expanded web slot has a length to width ratio of 2:1
or greater, and the ratio of the distance between adjacent slots
prior to expansion to a width of the formed metal sheet prior to
expansion is 1:8 or greater.

REFERENCES RELIED ON BY THE EXAMINER
Bodnar US 5,527,625 Jun. 18, 1996
Sucato US 5,605,024 Feb. 25, 1997
Ekerholm US 6,205,740 B1 Mar. 27, 2001

THE REJECTIONS ON APPEAL
1. Claims 1, 3-15, 44, 54 and 55 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Ans. 4.
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2. Claim 61 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellant regards as the invention.
Ans. 3.
3. Claims 1, 3-5, 9, 11-14, 54 and 55 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sucato. Ans. 5.
4. Claims 6-8 and 10 are rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Sucato and Ekerholm. Ans. 7.
5. Claims 15, 44, 60 and 61 are rejected under 35 U.S.C. § 103 (a) as
being unpatentable over Sucato and Bodnar. Ans. 8.

ANALYSIS
The rejection of claims 1, 3-15, 44 and 54-55 as failing to comply with the
written description requirement
Each of these claims include the limitation of “the ratio of the
distance between adjacent slots prior to expansion to a width of the formed
metal sheet prior to expansion is 1:8 or greater.” This limitation was added
by amendment filed Nov. 9, 2006 and is rejected by the Examiner, as it was
at the time of the amendment, “because it introduces new matter into the
disclosure” and that the added material “is not supported by the original
disclosure.” Ans. 4, see also Final Rejection dated Feb. 7, 2007.
Presently, Appellant contends that this limitation “is supported by
Figures 1 and 6 of the specification” and that this can be confirmed by
measuring directly from Figure 6. Br. 5. Our reviewing court in Hockerson-
Halberstadt, Inc. v. Avia Group Int’l. Inc., 222 F.3d. 951, 956 (2000)
provided instruction that “it is well established that patent drawings do not
define the precise proportions of the elements and may not be relied on to
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show particular sizes if the specification is completely silent on the issue.”
Here, there is no indication that any of Appellant’s submitted drawings are
to scale and they are silent as to the dimension or distance between adjacent
slots. In such case, we agree with the Examiner that “arguments based on
measurement of the drawing features are of little value.” Ans. 11.
Appellant contends that MPEP 2163.02 provides for the use of “such
descriptive means as words, structures, figures, diagrams, and
formulas,” and particularly “disclosure of drawings” to show that applicant
was in possession of the claimed invention. Br. 6. The Examiner does not
dispute that the drawings illustrate the expansion of a framing member; what
is disputed by the Examiner, however, is any disclosure by Appellant that
prior to expansion, there is a ratio of the distance between adjacent slots to a
width of the metal sheet that is 1:8 or greater. Ans. 11.
For the sake of completeness, and while not presently argued by
Appellant (and as such deemed abandoned by the Examiner), the Examiner
references Appellant’s prior reliance on Page 6 of the Specification to
overcome this written description rejection. Ans. 10, 11. The Examiner
states that the recitation of percentages on Page 6 of Appellant’s
Specification1 fails to provide support for the claimed ratio. Ans. 11. The
pertinent portion from the Specification is directed to expansion ranges and
we agree with the Examiner that these ranges do not provide support for the
claim limitation of a ratio, prior to expansion, involving a distance between
adjacent slots and the width of the metal sheet. Ans. 11. Accordingly, and
based on the record presented, we affirm the Examiner’s rejection of claims

1 “The expansion can extend a dimension by a factor of 10% to 300%, 20%
to 250%, or 50% to 100%.” Spec. 6:25-26.
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1, 3-15, 44, 54 and 55 as failing to comply with the written description
requirement.

The rejection of claim 61 as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which Appellant regards as the invention
Regarding independent claim 61, the Examiner has identified the
majority of this claim2 as not having a clear meaning. Ans. 3-4. The
Examiner also questions where this claim language finds support in the
Specification (Ans. 4) but the Examiner does not make a formal § 112, first
paragraph written description rejection and instead relies on this claim
language being indefinite under § 112, second paragraph. Ans. 3. In reply,
Appellant recites claim 61 without deviation and addresses where support
for this claim limitation can be found in the Specification and drawings. Br.
4. The Examiner thereafter focuses attention on a more specific portion of
claim 61 stating that neither the specification, original claims or the
drawings “illustrate such structure,” again seemingly addressing a written
description rejection rather than the asserted indefinite rejection. Ans. 12.
Our reviewing court has provided instruction that when addressing
issues of claim indefiniteness, “what we have asked is that the claims be
amenable to construction, however difficult that task may be.” Exxon

2 The Examiner identifies “"a plurality of reinforcements exclusively in the
web elements and two flanges, each flange extending from the web region,
and from two, three or five columns of web slots extending along a portion
of the length in the web region or at least one of the flanges; wherein the
formed metal sheet further includes a closing region extending between the
flanges to form a substantially tubular structure” as perhaps indefinite. Ans.
3-4.

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Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir.
2001).3 After reviewing the Specification and drawings and understanding
that expandable regions (and hence slots) can be in both the web and flange
regions of the framing member (e.g. Fig. 5), and that there are
reinforcements associated with the web elements of the expandable regions
(e.g. Figs. 3), we are not of the same opinion as the Examiner. We do not
agree that one skilled in the art would find claim 61 to be unclear and, to the
contrary, would instead find that this claim is amenable to construction.
Accordingly, we reverse the Examiner’s rejection of claim 61 as being
indefinite.

The rejection of claims 1, 3-5, 9, 11-14 and 54-55
as being unpatentable over Sucato
Each of these claims include the limitation that the “expanded web
slot has a length to width ratio of 2:1 or greater.” The Examiner relies on
Sucato for teaching the respective limitations of each of these claims and
specifically finds that each of Sucato’s “expanded web slot has a length to
width ratio of about 2:1 or greater as shown in figure.” Ans. 5. There is no
indication that any of Sucato’s figures are drawn to scale and we again refer
to the instructions provided by our reviewing court in Hockerson-
Halberstadt, 222 F.3d at 956, supra, regarding the scaling of drawings.
Here, the Examiner does not indicate, other than by reference to Sucato’s

3 We note the Examiner does not cite to the holding of Ex parte Miyazaki, 89
USPQ2d 1207 (BPAI 2008) (precedential) holding that if a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring an applicant to more precisely define the metes and
bounds of the invention by holding the claim unpatentable under 35 U.S.C. §
112, second paragraph, as indefinite.
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drawing, where Sucato expressly discloses the claimed ratio pertaining to the
length and width of an expanded slot.
The Examiner also states that “Applicant has not shown the criticality
and relevancy” of the claimed 2:1 ratio or that a different ratio would “cause
the framing member to not function as intended or to function unfavorably.”
Ans. 5. These statements by the Examiner shifting the burden to Applicant,
along with the knowledge that drawings may not be scaled to show
particular sizes, does not lead us to conclude that the Examiner has initially
demonstrated a prima facie case of obviousness. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967) (the examiner has the initial duty of
supplying the requisite factual basis and may not, because of doubts that the
invention is patentable, resort to speculation, unfounded assumptions, or
hindsight reconstruction to supply deficiencies in the factual basis). Here,
the Examiner relies on improper scaling of drawings and states that one
skilled in the art would have appreciated providing the proper ratio without
supplying any other explanation or rationale with respect to this claimed
ratio. Ans. 5.
The Examiner further states that “there is no support in the
specification for the ratios” and refers the reader back to the written
description rejection, (Ans. 14) but the ratio rejected by the Examiner based
on a lack of written description is not this claimed 2:1 ratio.
Accordingly, and based on the record presented, the obviousness
rejection stated by the Examiner cannot be sustained due to a lack of
articulated reasoning with rational underpinning to support the legal
conclusion of obviousness. We reverse the rejection of claims 1, 3-5, 9, 11-
14, 54 and 55 being unpatentable over Sucato.
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The rejection of claims 6-8 and 10
as being unpatentable over Sucato and Ekerholm
The Examiner relies on Ekerholm for disclosing “a framing member
with flanges having expandable regions 2 and 3” (italics added). Ans. 8.
Appellant addresses the deficiency of Sucato discussed supra and contends
that “[s]uch a defect is not remedied by Ekerholm either.” Br. 9. We agree
with Appellant that Ekerholm does not cure the deficiency of Sucato
regarding the claimed 2:1 ratio. Accordingly, we reverse the rejection of
claims 6-8 and 10 as being unpatentable over Sucato and Ekerholm.

The rejection of claims 15, 44, 60 and 61
as being unpatentable over Sucato and Bodnar
Each of claims 15 and 44 depend from claim 1 and as such, include
the 2:1 ratio limitation discussed supra. Each of independent claims 60 and
61 lack this 2:1 ratio limitation.
The Examiner finds that Bodnar teaches “additional reinforcements
94/96/98” and combines these teachings with Sucato to reject claims 15, 44,
60 and 61. Ans. 8. Appellant does not dispute these teachings.
Instead, with respect to claims 15 and 44, Appellant contends that the
defect discussed supra with respect to Sucato is not remedied by Bodnar.
Br. 10. For the reasons previously discussed, we reverse the Examiner’s
rejection of claims 15 and 44 as being obvious over Sucato and Bodnar.
With respect to claims 60 and 61, Appellant contends that Sucato
requires “a pair of channels” and “two members” in contrast to the limitation
of “a metal framing member.” Br. 11. While Sucato discusses two U-
shaped channels, Sucato also teaches such channels being “interconnected
by a novel mesh connector” which is expandable. Sucato Abstract, 4:24-25
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and Figs. 20 and 21. Hence, Appellant’s attempt to distinguish Sucato based
on multiple channels is not persuasive. Appellant further attempts to
distinguish Bodnar for not teaching a closing region, but the Examiner did
not rely on Bodnar for teaching a closing region; instead the Examiner relied
on Sucato for this. Ans. 9-10. Appellant does not persuade us that the
Examiner’s reliance on Sucato’s teaching of a closing region is in error.
Accordingly, we sustain the Examiner’s rejection of claims 60 and 61 as
being obvious over Sucato and Bodnar.

DECISION
1. The rejection of claims 1, 3-15, 44, 54 and 55 as failing to comply
with the written description requirement of 35 U.S.C. § 112, first paragraph
is affirmed.
2. The rejection of claim 61 as being indefinite under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention is reversed.
3. The rejection of claims 1, 3-5, 9, 11-14, 54 and 55 as being
unpatentable under 35 U.S.C. § 103(a) over Sucato is reversed.
4. The rejection of claims 6-8 and 10 as being unpatentable under 35
U.S.C. § 103 (a) over Sucato and Ekerholm is reversed.
5. The rejection of claims 15 and 44 as being unpatentable under 35
U.S.C. § 103 (a) over Sucato and Bodnar is reversed.
6. The rejection of claims 60 and 61 as being unpatentable under 35
U.S.C. § 103 (a) over Sucato and Bodnar is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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AFFIRMED

MP