Ex Parte Anderson et al

Patent Trial and Appeal Board

Mar 12, 2018

15167271 (P.T.A.B. Mar. 12, 2018)

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.
15/167,271 05/27/2016 Winfield Scott Anderson JR. 7342-12-1/0314280 3062
30448 7590 03/14/2018
AKERMAN LLP
P.O. BOX 3188
WEST PALM BEACH, FL 33402-3188
EXAMINER
REDMAN, JERRY E
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
03/14/2018 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):
ip @ akerman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WINFIELD SCOTT ANDERSON JR.,
TOM LITTLE, and MICHAEL J. GRAHAM1
Appeal 2018-002125
Application 15/167,271
Technology Center 3600
Before STEFAN STAICOVIC, JAMES P. CALVE, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Winfield Scott Anderson Jr. et al. (Appellants) seek our review under
35 U.S.C. § 134(a) of the Examiner’s non-final decision rejecting claims 1—7
and 10-20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appeal Brief lists Smart Vent Products, Inc. as the real party in
interest. Appeal Br. 2.
Appeal 2018-002125
Application 15/167,271
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a flood vent and its connectors.
Spec. 11. Claim 1 is illustrative of the claims on appeal and is reproduced
below.
1. A flood vent, comprising:
a frame forming a fluid passageway through an opening
in a structure, the frame extending into the opening in the
structure in a first direction;
a door pivotally mounted to the frame in the fluid
passageway for allowing a fluid to flow through the fluid
passageway;
at least one connector positioned between an outer
perimeter of the frame and an inner perimeter of the opening,
each of the at least one connector being configured to apply
pressure to the inner perimeter of the opening in a second
direction that is at least generally orthogonal to the first
direction; and
an adhesive positioned between one or more railings of
the frame and the structure, wherein the adhesive is configured
to at least partially hold the frame within the opening in the
structure.
Appeal Br., Claims App. A-l.
REFERENCES RELIED ON BY THE EXAMINER
Sarazen
Anderson ’720
Shook
Anderson ’569
US 4,669,371
US 2003/0062720 A1
US 8,308,396 B2
US 9,353,569 B1
June 2, 1987
Apr. 3, 2003
Nov. 13, 2012
May 31, 2016
2
Appeal 2018-002125
Application 15/167,271
THE REJECTIONS ON APPEAL2
I. Claims 1—7 and 10-14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sarazen and Shook.
II. Claims 1—7 and 10—14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sarazen and Anderson ’720.
ANALYSIS
Rejection I; Sarazen and Shook
The Examiner finds that Sarazen discloses all the elements recited in
claim 1 except for “adhesive to mount the vent.” Non-Final Act. 6. The
Examiner relies on the teachings of Shook to remedy this deficiency, finding
“Shook discloses a flood vent having adhesive (column 4, lines 11-13) to
mount within an opening.” Id. The Examiner reasons that combining the
adhesive taught by Shook with the clips (mounting means) 10 of Sarazen
would have been obvious to a person of ordinary skill in the art because
adhesive is inexpensive and would provide a seal, and the use of adhesive in
combination with fasteners would provide redundancy. Id. at 6—7.
Additionally, the Examiner states, “[a]ll the claimed elements were known
in the prior art. . . and one of ordinary skill in the art could have combined
the elements as claimed, using known methods with no change in their
respective functions,” and “[sjuch a combination would have yielded
2 Claims 1—7 and 10—14 are rejected on the ground of non-statutory double­
patenting over claims 1—7 and 13 of Anderson ’569 and Shook as well as
over claims 1—7 and 13 of Anderson ’569 and Anderson ’720. Non-Final
Act. 4—5. Appellants indicate that these rejections are not appealed. Appeal
Br. 11. As Appellants represent that they will provide a terminal disclaimer
(see id.) we do not reach the rejections.
3
Appeal 2018-002125
Application 15/167,271
predictable results to one of ordinary skill in the art at the time the invention
was made, since the elements perform as expected and thus the results would
be expected.” Id. at 7. We reproduce Figure 1 of Sarazen below.
Figure 1 of Sarazen depicts ventilator 30 installed, via clips 10, in a
brick foundation of a building. Sarazen, 1:49—53, 3:5—8. The Examiner’s
proposed modification to Sarazen is to further attach ventilator 30 to the
building with adhesive. Non-Final Act. 6—7.
Appellants contend “the proposed combination of Sarazen and Shook
fails to disclose, teach, or suggest ‘at least one connector’ in combination
with ‘an adhesive positioned between one or more railings of the frame and
the structure, wherein the adhesive is configured to at least partially hold the
frame within the opening in the structure.’” Appeal Br. 12. In this regard,
4
Appeal 2018-002125
Application 15/167,271
Appellants assert that “according to Shook, the structure can be attached
using either ‘fasteners or adhesive,’ not both.” Id.
The Examiner responds (Ans. 3), and we agree, that Appellants’
contention on this point amounts to an attack on the references individually
and does not address the rejection, which relies on Sarazen to teach “at least
one connector” (fasteners) and on Shook to teach adhesive, and then sets
forth reasoning for combining these teachings (see Non-Final Act. 6—7).
Appellants’ assertion on page 3 (item 1) of the Reply Brief regarding
Shook’s teaching that either adhesive or fasteners can be used, again, fails to
address the rejection of claim 1. Moreover, although we appreciate that
Shook discloses in the alternative using either fasteners or adhesive, we note
that Shook does not criticize or discourage using both elements. “A
reference does not teach away ... if it merely expresses a general
preference for an alternative invention but does not ‘criticize, discredit, or
otherwise discourage’ investigation into the invention claimed.” DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009).
Appellants next assert that the proposed combination of Sarazen and
Shook would not have been obvious because “Sarazen specifically explains
that an ‘adhesive’ should not be used with the device of Sarazen.” See
Appeal Br. 13—15. Appellants argue that Sarazen discourages the
Examiner’s proposed combination of adhesive and fasteners because this
combination would “(1) require the use of tools, (2) increase the time for
installation, (3) increase the cost for installation, and (4) prevent the easy
removal of the system of Sarazen for replacement.” Id. at 13—14. In support
of this argument, Appellants quote Sarazen, column 1, lines 36-49, column
5
Appeal 2018-002125
Application 15/167,271
2, lines 4—7, column 3, lines 37-48, and Abstract. Id. at 14—15. Appellants
also argue “Sarazen tends to teach away from the limitations of Claim 1, as
Sarazen believes that such an ‘adhesive’ (e.g., mortar) requires the use of
tools and would cause various other problems to the system of Sarazen.” Id.
at 15 (citing MPEP § 2145(X)(D)(2).
In response, the Examiner finds that the use of adhesive, as proposed,
does not require the use of tools. Ans. 3.
Appellants reply that the Examiner has not provided sufficient
evidence (relating to the use of adhesive without tools) to support the
rejection and that Sarazen contradicts the Examiner’s finding that the use of
adhesive does not require tools, arguing that Sarazen “explains that ‘mortar’
(which is a type of adhesive) and other ‘conventional means of securement
involve the use of tools.’” Reply Br. 3^4 (citing Sarazen, 3:37-48).
The Examiner has the better position on this point. To the extent that
the use of mortar requires the use of tools, we do not agree that a person of
ordinary skill in the art would understand that the use of adhesive, per se,
requires the use of tools. Rather, a person of ordinary skill in the art would
have been able to choose an adhesive based on the needs of the specific
implementation (including an implementation in which the use of tools is to
be avoided). Although the Examiner did not find a reference that explicitly
discloses the use of adhesive without the use of tools, this does not render
deficient the Examiner’s modification. The obviousness analysis must be
made explicit, “[b]ut it need not seek out precise teachings directed to the
challenged claim’s specific subject matter, for a court can consider the
inferences and creative steps a person of ordinary skill in the art would
employ.” KSRInt’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting
6
Appeal 2018-002125
Application 15/167,271
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). It is well established that
an artisan must be presumed to know something about the art apart from
what the references disclose. See In re Jacoby, 309 F.2d 513,516 (CCPA
1962).
Even assuming, arguendo, that the Examiner’s proposed modification
to Sarazen would add the requirement to use tools to install Sarazen’s vent,
we must weigh this purported disadvantage against the Examiner’s
reasoning for using adhesive in the proposed combination of the teachings of
Sarazen and Shook. One of ordinary skill in the art may be motivated to
pursue the desirable properties taught by one reference, even if that means
foregoing the benefit taught by another reference. In re Urbanski, 809 F.3d
1237, 1244 (Fed. Cir. 2016); see also WinnerInt’lRoyalty Corp. v. Wang,
202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating
benefit comes at the expense of another benefit, however, should not nullify
its use as a basis to modify the disclosure of one reference with the teachings
of another. Instead, the benefits, both lost and gained, should be weighed
against one another.”). In the present case, we do not consider the potential
disadvantages alleged by Appellants regarding the use of tools, the time for
installation, cost of installation, and easy removal/replacement of Sarazen’s
vent (see Appeal Br. 13—15; see also Reply Br. 10) to outweigh the benefits
related to sealing and redundancy set forth by the Examiner (see Non-Final
Act. 7). Rather, we agree with the Examiner that the proposed modification
to Sarazen would be desirable despite the possibility of any perceived
disadvantages cited by Appellants. See In re Fulton, 391 F.3d 1195, 1200
(Fed. Cir. 2004) (“‘[T]he question is whether there is something in the prior
art as a whole to suggest the desirability, and thus the obviousness, of
7
Appeal 2018-002125
Application 15/167,271
making the combination, ’ not whether there is something in the prior art as a
whole to suggest that the combination is the most desirable combination
available.” (alteration in original)) For example, the Examiner finds that use
of adhesive would provide a continuous seal of the periphery to prevent
water, insects, and environmental effects from passing through gaps between
fasteners. Final Act. 7; Ans. 3.
Aside from asserting that Sarazen teaches away from the Examiner’s
proposed combination, Appellants attack the Examiner’s “sealing” rationale
because, Appellants assert, Sarazen allows water to pass through ventilator
30. Appeal Br. 16—17 (citing Sarazen, 3:30-36, Fig. 1). The Examiner
responds that the sealing effect would prevent insects from entering the
building. Ans. 3. Appellants’argument on this point is unavailing. We
agree that the use of adhesive would provide a beneficial sealing effect,
whether with respect to insects, or, as the Examiner states on page 7 of the
Non-Final Action, with respect to water seeping through gaps near the
fasteners.3 As such, the Examiner’s proposed modification still eliminates
the need for mortar, nails, screws, bolts, and the like used with prior art
ventilators that Shook seeks to avoid. Shook, 1:41—45, 3:37-48. Shook also
teaches that openings in buildings must be sized properly to achieve a good
fit for ventilators to avoid passage of insects, leaves, and the like. Id. at
1:18—35. Thus, the Examiner’s proposed modification strikes a balance
between Shook’s goal of optimizing ease of installation with the need to
provide a good fit and seal around a ventilator to prevent passage of insects,
and other undesirable things, which Shook also recognizes as desirable,
3 Sarazen appears to be concerned with opening and closing vent 30 to the
flow of air via shutter elements 37. See Sarazen, 3:9-30.
8
Appeal 2018-002125
Application 15/167,271
particularly where an opening in a building is not a standard size or does not
provide a tight seal and a desired fit. A skilled artisan could determine that
any additional cost or labor used to seal a vent with an adhesive would be
outweighed by the benefits of providing a continuous seal against passage of
air, insect, and other undesirable elements as well as a good, tight fit of the
ventilator in different size openings to prevent damage to a building.
Appellants’ additional arguments spanning pages 17 through 18 of the
Appeal Brief regarding a lack of evidence that: adhesive is inexpensive, the
use of multiple types of fasteners would be beneficial, and the proposed
combination of Sarazen and Shook would perform equally well with
adhesive do not apprise us of Examiner error in the determination that the
subject matter of claim 1 would have been obvious to the skilled artisan over
the combined teachings of Sarazen and Shook. “A person of ordinary skill
is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at
421. We have considered all of Appellants’ arguments in support of the
patentability of claim 1 over Sarazen and Shook, but determine the
Examiner has the better position. Accordingly, we sustain the Examiner’s
rejection of claim 1 as unpatentable over Sarazen and Shook. Appellants do
not present arguments for the patentability of dependent claims 2—7 and 10-
14 apart from claim 1. See Appeal. Br. 11—18. Therefore, for the purposes
of Rejection I, these claims fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Rejection II; Sarazen and Anderson ’720
In Rejection II, the Examiner again relies on Sarazen to teach the
majority of the features recited in claim 1, but relies on Anderson ’720 to
teach “a vent utilizing ‘adhesives, fasteners, a combination of both, or the
9
Appeal 2018-002125
Application 15/167,271
like’ (paragraph [0015]) to mount within an opening.” Non-Final Act. 8.
The Examiner reasons that modifying Sarazen to use both adhesive and
fasteners would provide “a more rigid and secure connection within the
opening.” Id. The Examiner also finds that the flood vent of Sarazen would
operate equally well when using adhesives, fasteners, or a combination of
both. Id. Additionally, the Examiner determines that the proposed
modification would provide beneficial sealing and the use of fasteners in
combination with adhesive would provide redundancy. Id. at 9. Further, the
Examiner finds that the proposed combination of Sarazen and Anderson
’720 would have been the use of known methods with no change in their
respective functions and yielding predictable results. Id.
Appellants contend that the Examiner’s proposed modification would
render Sarazen unsuitable for its intended purpose. See Appeal Br. 19-21
(citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)). In this regard,
Appellants state, “[t]he intended purpose of Sarazen is to provide a
ventilator that can be easily installed and easily removed for replacement
and cleaning.” Id. at 19. In support of this contention, Appellants quote
Sarazen, column 1, lines 26—30 and 36-41, column 3, lines 45—48, and
column 5, lines 25—34. Id. at 19-20.
In response, the Examiner finds that the proposed modification to
Sarazen does not result in a vent that is difficult to remove or that requires
the use of tools to install because some adhesives, such as “outdoor caulk”
do not require tools to apply and are easily removed. See Ans. 5 (“Outdoor
caulk ... is readily available in a squeeze tube with built-in nozzle, and can
be applied without tools, and, once dried, the bead of caulk can easily be
removed.”).
10
Appeal 2018-002125
Application 15/167,271
In reply, Appellants again contend Sarazen teaches away from the
proposed modification and that the Examiner provides no support for the
finding that the ventilator proposed by the Examiner would be easily
removable or that “outdoor caulk” can be applied without the use of tools.
Reply Br. 13—15. Appellants also contend that the Examiner fails to provide
evidentiary support for finding that caulk is prior art to the present
application or that it was readily available in a squeeze tube with a built-in
nozzle. Id. at 14. Appellants also contend that the Examiner “does not
explain how this newly relied-upon (and unidentified) ‘ [ojutdoor caulk’ is
configured ‘to at least partially hold the frame within the opening in the
structure,’ as is required by [independent [cjlaim 1.” Id.
Appellants’ arguments on this point are unavailing because the
intended purpose of the vent disclosed by Sarazen is to function as a vent,
and what Appellants contend is the intended purpose of Sarazen’s vent is
simply a benefit provided by Sarazen’s spring clip, not the intended purpose
of Sarazen’s vent. In this regard, Sarazen states:
A ventilator mounting spring clip constructed in
accordance with the present invention is economical to
manufacture, and allows easy installation and removal of a
ventilator into a ventilator opening of a foundation wall without
requiring modification to the wall bordering the ventilator
opening. The need is eliminated for preparing the ventilator
opening for receipt of conventional ventilator fastening devices
such as screws, pins, bolts or the like as are used with a ventilator,
exemplified by the disclosure in U.S. Pat. No. 4,493,456. In like
fashion, mortar or the like which is also conventionally employed
would not be needed. The present invention thus affords an
improved and economical means for the mounting of foundation
ventilators.
11
Appeal 2018-002125
Application 15/167,271
Sarazen, 1:36-49 (emphasis added). Thus, Sarazen’s inventive clip allows
certain benefits including the elimination of the need for mortar4 or the like,
but ease of removal is not the intended purpose of Sarazen’s vent.
Appellants’ reliance on In re Gordon is inapposite. In Gordon, the proposed
modification, to reverse the orientation of a prior art water/gas separator
having an inlet port and an outlet port at its top such that these ports would
be on the separator’s bottom, would not have been obvious because the
reference’s purpose of separating gasoline from water would not have been
achieved. Gordon, 733 F.2d at 902. Specifically, the prior art separator in
Gordon relied on the assistance of gravity, and reversing the orientation of
the separator would have trapped gasoline at the top of the separator and
allowed water to collect at the bottom. Id. In other words, the prior art
separator in Gordon, if modified as proposed, would no longer have
functioned as a separator. In contrast, the Examiner’s proposed modification
to the vent of Sarazen still would allow it to function as a vent, but with
some advantages exchanged for others. See Urbanski, 809 F.3d at 1244.
On pages 21 and 22 of the Appeal Brief, Appellants again contend
that Sarazen teaches the adhesive should not be used and that the Examiner’s
rationale(s) for modifying Sarazen are deficient. See also Reply Br. 16—18.
We agree with the Examiner’s position that adding adhesive to the vent of
Sarazen would provide a more rigid and secure connection, the vent of
Sarazen would operate equally well after the proposed modification, and
adding adhesive would provide beneficial sealing. See Non-Final Act. 8—9.
Appellants’ contention that clips 10 of Sarazen perform sealing against
4 We do not consider the removal of the need for mortar to mean that the use
of mortar (or adhesive) provides no benefit.
12
Appeal 2018-002125
Application 15/167,271
insects, and, therefore, no additional sealing is needed (Reply Br. 17—18) is
unavailing because the Examiner does not find that Sarazen provides no
sealing whatsoever or even that Sarazen needs further sealing (see Non-Final
Act. 8—9; see also Ans. 5—6). Rather, the Examiner proposes an
improvement to Sarazen’s vent, and we agree with the Examiner that using
adhesive in combination with Sarazen’s vent would improve sealing around
the perimeter of the vent (see Ans. 5—6), in addition to providing a more
secure connection.
DECISION
I. We affirm the rejection of claims 1—7 and 10—14 as
unpatentable over Sarazen and Shook.
II. We affirm the rejection of claims 1—7 and 10—14 as
unpatentable over Sarazen and Anderson ’720.
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)(l)(iv).
AFFIRMED
13