Ex Parte Beavers et al

Patent Trial and Appeal Board

Aug 1, 2016

13421805 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/421,805 03/15/2012
7590 08/02/2016
James L. Beavers, Jr.
Global Building Systems, Inc.
201 N. Alarcon Street, Suite B
Prescott, AZ 86301
FIRST NAMED INVENTOR
James L. Beavers JR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2751.0005 CON2 1016
EXAMINER
CAJILIG, CHRISTINE T
ART UNIT PAPER NUMBER
3633
MAILDATE DELIVERY MODE
08/02/2016 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 JAMES L. BEAVERS, JR. and BRUCE B. SOLPER
Appeal2014-003648
Application 13/421,805 1
Technology Center 3600
Before PHILIP J. HOFFMANN, MATTHEWS. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-14 and 16-25. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Global Building
Systems, Inc. Appeal Br. 1.
Appeal2014-003648
Application 13/421,805
ILLUSTRATIVE CLAIM
1. A method of making a building panel, comprising:
providing a form including an outline of the building
panel;
forming a first support member including a head portion
connected to a stem portion, the stem portion comprising a first
surface and a second surface opposite the first surface;
forming a second support member including a head
portion connected to a stem portion, the stem portion
comprising a first surface and a second surface opposite the first
surface;
disposing the first support member within the form such
that the first support member contacts a first interior surface of
the form;
disposing the second support member within the form
such that the second support member contacts a second interior
surface of the form opposite the first interior surface and leaves
a discontinuity in thermal conduction between the first and
second support members;
filling the form with a semi-fluid insulating material, the
semi-fluid insulating material contacting the first and second
surfaces of the stem portion of the first and second support
members;
solidifying the semi-fluid insulating material to form an
insulating material around the first and second support
members and to provide the discontinuity in thermal conduction
between the first and second support members; and
removing the form from around the insulating material,
first support member, and second support member, wherein the
first and second support members form a flush surface with the
insulating material.
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Application 13/421,805
CITED REFERENCES
The Examiner relies upon the following references:
Barker us 3,353,315
Carlsson us 3,918,223
Slater us 4,641,468
Beliveau us 5,893,248
Roberts us 6,164,035
Winterfeld US 2002/0134043 Al
Peacock et al. US 2005/0217197 Al
(hereinafter "Peacock")
Brandes US 2005/0257494 Al
REJECTIONS
Nov. 21, 1967
Nov. 11, 1975
Feb. 10, 1987
Apr. 13, 1999
Dec. 26, 2000
Sept. 26, 2002
Oct. 6, 2005
Nov. 24, 2005
I. Claims 21, 23, and 24 are rejected under 35 U.S.C. § 102(b) as
anticipated by Beliveau.
IL Claims 1--4 and 6-11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Barker, Peacock, and Brandes.
III. Claims 5 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Barker, Peacock, Brandes, and Carlsson.
IV. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Barker, Peacock, Brandes, and Roberts.
V. Claims 14, 17, 18, and 20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Barker and Winterfeld.
VI. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Barker, Winterfeld, and Slater.
VII. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Barker, Winterfeld, and Carlsson.
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Application 13/421,805
VIII. Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Beliveau and Slater.
IX. Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Beliveau and Roberts.
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Office Action at pages 2-15 and the Answer at pages 2-8, except as stated
otherwise in the Analysis below. Additional findings of fact may appear in
the Analysis below.
ANALYSIS
The Appellants raise several issues, which are addressed below
(wherein the corresponding independent claims- or dependent claim(s), if
argued separately- are identified). As explained below, the Appellants'
arguments are not persuasive of error, such that the rejections are sustained.
1. Whether Brandes Discloses Support Members that
''form a flush surf ace"
(Independent Claim 1)
The Appellants (Appeal Br. 12-14) contend that the Examiner erred
in rejecting independent claim 1 as obvious, because Brandes allegedly does
not disclose support members that "form a flush surface with the insulating
material." In support of this argument, the Appellants rely upon the Figure 5
embodiment of Brandes. See id. at 12. Yet, the Final Office Action relies
upon the Figure 1 embodiment of Brandes, which shows a support member
having a head 15 that is flush with the outer surface of panel 90A. See Final
Action 4; see also Answer 3--4. Therefore, the Appellants' argument that
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Application 13/421,805
Brandes fails to disclose the claimed "flush surface" of claim 1 is not
persuasive.
2. Whether It Would Have Been Obvious to Modify
Barker's Support Member to Provide a "head portion"
(Independent Claims 1, 7, and 14)
The Appellants (Appeal Br. 12, 14, 19-23, 26-27) contend that the
Examiner erroneously determined that it would be obvious to modify
Barker's support member, to provide flanges (i.e., the "head portions"
recited in independent claims 1, 7, and 14) taught by Brandes (as to
independent claims 1 and 7 (Final Action 4--5)) and Winterfeld (as to
independent claim 14 (id. at 9-10)). According to the Appellants, adding a
head portion to Barker's support members (rendering them T-shaped) would
change Barker's principle of operation because the head portion would
undermine the ease of connection to other slabs, since the support members
"do not include the slots for accommodating the horizontal strips" (Appeal
Br. 14, 22, 27) and the head portions would not fit into the grooves in
Barker's slabs deployed in Barker's double-panel formation embodiment
(Appeal Br. 14, 22-23, 27).
The Appellants' arguments on this point are unpersuasive. As the
Examiner finds, modifying Barker's support members to provide a head
portion would not interfere with the operation of the single-panel
embodiment of Barker's Figures 1 and 2. Answer 4--5. In addition, because
Barker discloses embodiments in which support members do not extend
above the panel surface (such that the support members could not connect to
a confronting panel), it is clear that Barker does not demand the double-
panel embodiment exclusively. See Answer 5 (citing Barker, col. 2, 11. 70-
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Application 13/421,805
73). Also, although the Appellants contend that adding a head portion to
Barker's support members would preclude slots for accommodating
mutually perpendicular support members (Appeal Br. 14, 22, 27), the
Appellants provide no evidentiary support for such an assertion.
Moreover, "[ c ]ombining the teachings of references does not involve
an ability to combine their specific structures." In re Nievelt, 482 F.2d 965,
968 (CCP A 1973). A conclusion of obviousness does not tum on "whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference," but rather "what the combined teachings
of those references would have suggested to those of ordinary skill in the
art." In re Keller, 642 F.2d 413, 425 (CCPA 1981). Even if modifying
Barker to provide a support member with a head portion were to result in
disadvantages, as the Appellants contend, such alleged disadvantages are not
sufficient to overcome a prima facie case of obviousness. See Medichem,
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("[A] given
course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate motivation to combine."); see also Winner
Int'! Royalty 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.")
Insofar as the Appellants intend to argue that any of the Barker,
Brandes, and Winterfeld references teaches away from the claimed
limitation, such an argument would also be unpersuasive because the
Appellants do not argue that any of the references "'criticize[s], discredit[s],
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or otherwise discourage[s]' investigation into the invention claimed."
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed
Cir. 2004)).
3. Whether the Prior Art Teaches ''filling the form with a
semi-fluid insulating materiaI''
(Independent Claim 1)
As to independent claim 1, the Appellants contend (Appeal Br. 15)
that Peacock does not teach or suggest "filling the form with a semi-fluid
insulating material." Yet, the Appellants do not explain the basis for this
contention.
The Examiner understands the Appellants to argue that concrete (the
semi-fluid material shown in Peacock) is not an "insulating material"; in
response, the Examiner finds that concrete has insulating properties.
Answer 6.
Moreover, the Examiner states that the Final Office Action relied
upon Peacock for its teaching of pouring a semi-fluid material into a form to
create a panel (regardless of its role for insulation) and relied upon Barker's
disclosure of an "insulating material." Id.
In view of the foregoing, the Appellants' argument on this issue is not
persuasive.
4. Whether Peacock Teaches a Semi-Fluid Material that
Contacts Opposed Surfaces of a Support Member Stem
(Independent Claim 1)
The Appellants argue (Appeal Br. 15-16) that Peacock fails to show
semi-fluid material "contacting the first and second surfaces of the stem
portion of the first and second support members," wherein the second
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surface of the stem portion is "opposite the first surface," as recited in
independent claim 1. According to the Appellants, Peacock only shows the
semi-fluid material contacting the outer surface, but not the inner surface, of
clip 10. Appeal Br. 15 (citing Peacock, Figs. 9-11).
This argument is not persuasive of error, because the Final Office
Action does not rely upon Peacock to teach contact of the semi-fluid
material with opposing surfaces of the stem portion; rather, such feature is
the result of the combined teachings of Barker's support member having a
stem portion (as modified by Brandes to provide a head portion) embedded
in an insulating material and Peacock's pouring of a semi-fluid material. See
Final Action 3-5; see also Answer 6-7. The Appellants cannot show
nonobviousness by attacking Peacock individually, where the rejection, as to
the limitation at issue, is based upon a combination of Barker, Brandes, and
Peacock. See Keller, 642 F .2d at 426.
5. Whether it Would Have Been Obvious to Modify Barker
With the Wall Forming Technique of Peacock
(Independent Claims 1 and 7)
In rejecting independent claims 1 and 7, the Final Office Action
combines teachings of Barker, Brandes, and Peacock. Final Action 4--5.
The Appellants allege that the Examiner erroneously rejected
independent claims 1 and 7 because a person of ordinary skill in the art
would not consider modifying Barker with the wall forming technique of
Peacock, i.e., wherein a form is filled with a semi-fluid material. Appeal
Br. 17, 24. In support, the Appellants submit that Barker's support members
"necessarily project from the slabs," in order to connect to adjacent slabs, as
opposed to being "completely embedded within the slabs." Id. at 17, 24. In
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Application 13/421,805
addition, the Appellants submit that pouring a semi-fluid material around
support members of Barker "would add processing steps and cost without
benefit," pointing out that "Barker has already solved the problem of
structural support and fastening" for the slabs. Id. at 17, 24.
These arguments are not persuasive of error in the rejection of
independent claims 1 and 7. Even if combining the teachings of Barker and
Peacock would preclude support members from projecting out of the slabs,
as the Appellants contend, this presents no reason why the combination
might be improper, based upon the same reasons addressed above (in
Section 2 of the Analysis), as the Examiner explains (Answer 4--5, 7).2
In addition, the Appellants' arguments - to the effect that the
combination would add effort and cost without benefit and that "Barker has
already solved the problem" (Appeal Br. 17, 24)- fail to state a reason why
Barker may not be modified in view of Peacock. Whether the references
teach unclaimed features is not relevant to the question of whether the
references teach the identified limitations of claim 1. See In re Self, 671
F.2d 1344, 1348 (CCPA 1982) ("?vfany of appellant's arguments fail from
the outset because, as the solicitor has pointed out, they are not based on
limitations appearing in the claims. Thus, it is immaterial that Binckley is a
variable head device, while the claimed invention is contemplated to be a
constant head device, because appeHant's claims are not Hrnited to the
latter.")
2 The Examiner's Answer, at page 7, explicitly addresses the Appellants'
arguments on pages 16-17 of the Appeal Brief (regarding claim 1 ).
However, the Examiner's Answer does not refer to the discussion of the
identical issue on pages 23-24 of the Appeal Brief (regarding claim 7).
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Insofar as the Appellants intend to argue that either Barker or Peacock
teach away from the combination, such an argument would also be
unpersuasive because the Appellants do not argue that either reference
"'criticize [ s], discredit[ s], or otherwise discourage [ s]' investigation into the
invention claimed." DePuy Spine, Inc., 567 F.3d at 1327.
6. Whether Barker, Brandes, and Peacock Teach Support
Members Having a T, L, U, or Angled Shape
(Dependent Claim 3)
In regard to dependent claim 3, the Appellants (Appeal Br. 17-19)
dispute the Examiner's finding that Barker, in view of Peacock and Brandes
discloses forming support members having a T, L, U, or angled shape (Final
Action 5---6).
In response, the Examiner states that Brandes' Figure 1 discloses a U-
shaped support member and that Barker's support member (as modified by
Brandes, to provide a head portion), would form a T shape. Answer 7.
The Examiner has not explained how Brandes' Figure 1 discloses a U-
shaped support member; nevertheless, the Appellants' argument is not
persuasive, because the Examiner correctly finds that Barker's modified
support member would form a T shape. Accordingly, the Appellants'
argument regarding claim 3 is unpersuasive.
7. Whether Beliveau Teaches
Support Members ''forming a flush surf ace"
(Independent Claim 21)
The Appellants argue that the Examiner erred in rejecting independent
claim 21 and dependent claims 23 and 24 under 35 U.S.C. § 102(b)
(Rejection I) and in rejecting dependent claims 22 and 25 under 35 U.S.C.
§ 103(a) (Rejections VIII and IX) because Beliveau does not teach or
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suggest support members forming a "flush surface" with the insulating
material. Appeal Br. 29-30. In support, the Appellants contend that
Beliveau's framing member 18 includes slot 30, which is recessed from
surface 16 and therefore not "flush" therewith. Id. (citing Beliveau, Fig. 1,
col. 3, 11. 32-34).
To the contrary, the Examiner correctly finds that Beliveau discloses
that portions of support member 18 that flank slot 30 are flush with the outer
surface of panel 10 - indeed, this is recited explicitly in Beliveau. Answer
8 (citing Beliveau col. 2, 11. 63---65); see also Beliveau, col. 1, 11. 56-57,
col. 2, 1. 66-col. 3, 1. 1, col. 3, 11. 4--5, 8-10, 64---66, col. 4, 11. 7-8, 64---66,
col. 5, 11. 4--7, 53-55.
Accordingly, the Appellants' argument is not persuasive of error in
regard to the rejection of independent claim 21 or the claims that depend
therefrom.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-14 and 16-
25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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