Ex Parte Berridge

Patent Trial and Appeal Board

Dec 1, 2014

11978883 (P.T.A.B. Dec. 1, 2014)

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.
11/978,883 10/30/2007 Jack A. Berridge B-0150.01 8937
7590 12/01/2014
LAW OFFICES OF CHRISTOPHER L. MAKAY
1634 Milam Building
115 East Travis Street
San Antonio, TX 78205
EXAMINER
ADAMOS, THEODORE V
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
12/01/2014 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 JACK A. BERRIDGE
____________

Appeal 2012-010765
Application 11/978,883
Technology Center 3600
____________

Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and
LEE L. STEPINA, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jack A. Berridge (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims 5, 13,
18, 20–28, 31, 32, 34, and 35 as unpatentable over Horton (US 5,596,859;
iss. Jan. 28, 1997) and Parsons (US 2,058,386; iss. Oct. 20, 1936); (2) claims
5, 6, 11, and 12 as unpatentable over Horton, Parsons, and Brady (US
7,178,304 B2; iss. Feb. 20, 2007); and (3) claim 7 as unpatentable over
Horton, Parsons, and Sedlmeier (US 5,927,041; iss. July 27, 1999). Claims
1–4, 8–10, 14–17, 19, 29, 30, 33, and 36–44 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to “a modular building system
including steel components that [may be] configured quickly and easily into
a structure.” Spec. 1; Figs. 4, 9.1 Claims 18 and 28 are independent.
Claim 18 is representative of the claimed subject matter and recites:
18. A steel space-frame construction system, comprising:
a channel;
a plurality of studs each comprising a first side, a
second side, and a cross-member therebetween, whereby
a first end of each stud resides within the channel; and
a block, comprising:
a cross-member having a width substantially
the same as the widths of the cross-members for
each stud and a length that provides a
predetermined fixed spacing between each stud,
a first side extending from the cross-member
and running along the length of the cross-member,
the first side including a first tab at a first end and
a second tab at a second end,
a second side extending from the cross-
member and running along the length of the cross-
member, the second side including a first tab at a
first end and a second tab at a second end,
wherein at least one block is secured
between each of the plurality of studs when the
first and second tabs of the first side are
respectively secured to the first sides of each stud
and the first and second tabs of the second side are
respectively secured to the second sides of each
stud, and
further wherein the at least one block is
secured between each stud such that the cross-
member of the block resides substantially

1 Appellant’s Specification does not provide line or paragraph numbering.
Accordingly, reference is made to the page number.
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transverse relative to the cross-members of the
studs, thereby laterally stabilizing the studs and
providing a predetermined fixed spacing between
the studs.

ANALYSIS

Obviousness over Horton and Parsons
Claim 18

Independent claim 18 calls for a steel space-frame construction
system including, among other things, a plurality of studs, each stud having
a cross-member, and at least one block having a cross-member “wherein the
at least one block is secured between each stud such that the cross-member
of the block resides substantially transverse relative to the cross-members of
the studs, thereby laterally stabilizing the studs and providing a
predetermined fixed spacing between the studs.” Br. Claims App. 2.
The Examiner finds that Horton discloses (1) “a plurality of studs
(#10; figure 8) each comprising . . . a cross-member (#16) therebetween”;
and (2) “a block (#28; figure 8), comprising a cross-member (#41) having . .
. a length that provides a predetermined fixed spacing between each stud (the
block #28 is made to predetermined lengths to be used for window framing,
such as for window frames with a 16 inch spacing).” Ans. 5 (citing Horton,
col. 4, ll. 58–61, Fig. 8). The Examiner further finds that Horton discloses
wherein at least one block is secured between each
stud (a block is depicted in figure 8 to be
positioned between the two studs #10; col. 5 [ll.]
1-6) such that the cross-member of the block
resides substantially transverse relative to the
cross-members of the studs and the first and
second tabs of the first side are respectively
secured to the first sides of the first and second
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studs and the first and second tabs of the second
side are respectively secured to the second sides of
the first and second studs (see figure 8) thereby
laterally stabilizing the studs (the block #28 is
capable of laterally stabilizing the stud).
Id. at 6.
Appellant contends that “Horton does not disclose a block secured
between each of a plurality of studs to laterally stabilize the studs and set the
studs at a predetermined fixed spacing thereby creating a space frame.” Br.
8. Specifically, Appellant contends that
Horton discloses only that a metal stud beam 28
can be made to lengths in multiples of the
horizontal distance between adjacent vertical studs
for the purpose of creating window framing.
Horton in his disclosure is completely silent
regarding the number and positioning of the metal
stud beams 28. Moreover, Horton provides
absolutely no objective discussion in his disclosure
that a metal stud beam 28 be located between each
adjacent vertical stud 10. There simply is
nothing in Horton that discloses, teaches, or
suggests window framing formed from the metal
stud beams 28 be used structurally as a block
between each and every adjacent vertical stud 10
for the purpose of providing a predetermined fixed
spacing between each stud as well as [to] laterally
stabilize the studs.
Id. at 9 (emphasis added).
Appellant’s arguments are not persuasive because they are not
commensurate in scope with claim 18. At the outset, claim 18 does not call
for a metal stud beam to be located (1) between each adjacent vertical stud;
or (2) between each and every adjacent vertical stud. See id.; see also Br.
Claims App. 2. Limitations not appearing in the claims cannot be relied
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upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Claim 18 merely calls for “a plurality of studs” and “at least one block is
secured between each of the plurality of studs.” See Br. Claims App. 2; see
also Ans. 13. We agree with the Examiner that Horton discloses a frame
that has as much structure as is called for by claim 18. See Ans. 5–6, 13.
Moreover, we note that Appellant acknowledges that “Horton discloses a
block secured between each stud.” Br. 9.
Further, it is well established that claims directed to an apparatus must
be distinguished from the prior art in terms of structure rather than function.
See, e.g., In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997). In order
to satisfy the functional limitations in an apparatus claim, the prior art
apparatus must be capable of performing the claimed function. Id. at 1478.
Horton discloses that
[i]n FIG. 8 there is shown the same connection as
in FIG. 7 with the addition of a horizontal metal
beam member 28, which may be used as a part of
the framing for a window or the like. In this
instance there is used a metal stud beam of exactly
the same features as those shown in stud 10 of
FIGS. 1–2 except that the metal stud beam 28 is
shorter than the usual 8–12 foot lengths. Shorter
beams can be made to lengths that will be used for
window framing, e.g., in multiples of the
horizontal distance between adjacent vertical studs,
e.g., multiples of 16-inch spacings. Attachments
of horizontal beam 28 to vertical stud 10 are made
through tabs 39 and 40 on the end of horizontal
beam 28 and groups 27 of small pre-punched
holes, as shown in side walls 17 of FIG. 7. It may
be seen that patterns of small holes in groups 27
can be standardized with hole patterns in tabs 39
so that there will be alignment of holes to receive a
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connecting screw or bolt-and-nut. With spacings
of groups 27 every 4 inches, it is likely that a
window frame support can be made of horizontal
stud beam 28 which would automatically be level
by attachment of beam 28 at each end to the
comparable group 27 of small holes on two
horizontally spaced studs 10.

Horton, col. 4, l. 52 – col. 5, l. 6, Figs. 1, 2, 7, 8; see also Ans. 5–6, 13.
Thus, the Examiner’s finding that the metal stud beams (blocks) 28 of
Horton are capable of providing predetermined fixed spacing (length)
between adjacent vertical studs 10 is supported by a preponderance of the
evidence. See Ans. 5, 13. Appellant has not provided any persuasive
evidence or argument to the contrary.2 The Examiner’s finding that the
metal stud beams (blocks) 28 of Horton are capable of laterally stabilizing
studs 10 is similarly supported by a preponderance of the evidence. See
Ans. 6. Appellant has not provided any persuasive evidence or argument to
establish that Horton’s metal stud beams (blocks) 28 are incapable of
laterally stabilizing studs 10. See Br., generally.
Appellant contends that Horton teaches away from the claimed
invention. Specifically, Appellant contends that
the Examiner has not explained why it would be
obvious to place a metal stud beam 28 between
each and every adjacent vertical stud 10 when one
of ordinary skill in the art following the ordinary
and customary building practices related to

2 The Specification describes that “[t]he blocks 13 will connect to the studs
10 . . . and allow the studs 10 to be placed at predetermined intervals. . . . It
should be understood that the studs 10, the blocks 13, the channels 16, and
the top cap 17 may be configured into and to include spaces for windows
and doors.” Spec. 16 (emphasis added).
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window framing would not. It is clearly
understood by one of ordinary skill in the art that
windows placed in at least a portion of a wall
formed by studs 10 would be aesthetically spaced
apart creating a situation where adjacent studs 10
would not include metal stud beams 28
therebetween. Furthermore, the Examiner has not
explained why it would be obvious provide the
metal stud beams 28 in lengths predetermined to
provide a fixed spacing between each adjacent
vertical stud 10 when Horton discloses exactly the
opposite. Horton specifically discloses that the
metal stud beams 28 are sized to multiples of the
horizontal distance between adjacent vertical studs.
As such, Horton specifically desires that the metal
stud beams 28 be longer than any two directly
adjacent studs 10, which means that Horton in
actuality teaches away from [Appellant’s] block
that is specifically sized to provide a fixed
predetermined spacing between each and every
adjacent vertical stud.
Br. 10–11.
Appellant’s arguments are not persuasive. At the outset, Appellant’s
contention that windows placed in at least a portion of a wall formed by
studs 10 would be aesthetically spaced apart creating a situation where
adjacent studs 10 would not include metal stud beams 28 therebetween
amounts to unsupported attorney argument, and thus, is entitled to little, if
any, weight. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)
(Arguments and conclusions unsupported by factual evidence carry no
evidentiary weight.). In addition, as discussed above, claim 18 does not call
for a beam (block) between each and every adjacent vertical stud. See Br.
Claims App. 2. Further, it is well established that a teaching away requires a
reference to actually criticize, discredit, or otherwise discourage the claimed
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solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“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”). Here,
Horton in no way criticizes, discredits, or otherwise discourages the use of a
horizontal beam (block) to provide a predetermined fixed spacing between
adjacent studs. Horton discloses that
[t]he wall stud may be made in a variety of
lengths, i.e., from one transverse end 19 to the
other transverse end 19, in the same manner as
wooden beams. Such lengths might generally
include 6, 8, 10, 12, 14, 16, 18, 20, 22 and 24 feet.
. . . There are needs for shorter lengths for
specialty purposes, as will be discussed . . . in
connection with FIG. 8.

Horton, col. 2, ll. 38–46 (emphasis added), Fig. 1. Horton further discloses
that in figure 8
there is used a metal stud beam of exactly the same
features as those shown in stud 10 of FIGS. 1–2
except that the metal stud beam 28 is shorter than
the usual 8–12 foot lengths. Shorter beams can be
made to lengths that will be used for window
framing.

Id. at col. 4, ll. 55–59 (emphasis added), Fig. 8. Thus, Horton’s disclosure
does not support Appellant’s contention that “Horton specifically desires
that the metal stud beams 28 be longer than any two directly adjacent studs
10.” See Br. 11. Further even assuming arguendo that the metal stud beams
(blocks) 28 of Horton were longer than the adjacent studs 10, as proposed by
Appellant, the metal stud beams (blocks) 28 would still be capable of
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providing a predetermined fixed spacing between the adjacent studs 10. As
such, the disclosure of Horton does not teach away from Appellant’s
claimed invention.
Appellant contends that
combining Horton in view of Parsons using the
actual supported disclosure of those references
produces nothing more than at least a portion of a
wall with window framing, which is not
Applicant’s steel space-frame construction system
created by securing a block between each of a
plurality of studs to provide a predetermined fixed
spacing between the studs as well as laterally
stabilize the studs.
Br. 10.
Appellant’s argument is not persuasive. As discussed above, the
Examiner correctly finds that the metal stud beams (blocks) 28 of Horton are
capable of providing predetermined fixed spacing (length) between adjacent
vertical studs 10. See Ans. 5, 13. The Examiner relies on Parsons merely
for the disclosure of each stud residing within a channel Id. at 6. Further,
the Examiner articulates adequate reasoning based on rational underpinnings
as to why one of ordinary skill in the art would have been led to make the
proposed modification of replacing the bottom wooden sill #12 of Horton
with the metal channel sill of Parsons, namely “in order to strengthen the
frame by using metal and also to strengthen the connection between the
studs and the channels using the grooves within the channel, as taught in
Parsons.” Id. at 6–7. Appellant does not contest the Examiner’s findings
regarding Parsons or the Examiner’s stated reasons for combining Horton
and Parsons. See Br., generally. As such, Appellant has not apprised us of
Examiner error.
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Accordingly, for the foregoing reasons, the Examiner’s rejection of
independent claim 18 as unpatentable over Horton and Parsons is sustained.

Claim 5
Claim 5 depends from claim 18 and calls for “the first side and the
second side of each stud [to] include a recess.” Br. Claims App. 1.
Appellant contends that “the sides of Horton’s studs and Parsons’ beams are
flat and do not include a recess.” Br. 7.
Appellant’s argument is not persuasive. First, the Examiner relies on
Horton for disclosure of the first and second sides of each stud including a
recess. See Ans. 7, 14. Second, the Examiner finds that (1) the term “recess
is highly well known in the art to be defined as an indentation or a small
hollow”; and (2) “the small holes [13, 27] . . . provided upon the sides of the
studs [of Horton] meet the definition of a recess since they are considered
small hollows.” Appellant does not contest the Examiner’s findings. See
Br. 7; see also id., generally. As such, Appellant has not apprised us of
Examiner error. Moreover, the Specification describes that “[a] stud
includes a first side, a second side, and a cross-member therebetween. The
first side and the second side each include a recess adapted to receive at least
one fastener therein.” Spec. 4. The small holes 13, 27 of Horton are adapted
to receive at least one fastener therein. See Horton, col. 1, ll. 33–36 (“The
bottom and side walls [of the stud] are hole-punched with spaced identical
patterns of small holes adapted to receive nails or screws therethrough.”).
Thus, the Examiner correctly finds that each of the small holes 13, 27
provided on the sides of the studs 10 of Horton constitute “a recess,” as
claimed.

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Accordingly, for the foregoing reasons, the Examiner’s rejection of
dependent claim 5 as unpatentable over Horton and Parsons is sustained.

Claims 13, 20, 24
Appellant contends that dependent claims 13, 20, and 24 are
patentable over Horton and Parsons based upon their dependency from claim
18 and Appellant’s contentions regarding claim 18. See Br. 7, 11–12.
Appellant has not apprised us of Examiner error regarding claims 13, 20,
and 24. As we find no deficiency in the Examiner’s rejection of independent
claim 18, for the reasons discussed above, we likewise sustain the
Examiner’s rejection of dependent claims 13, 20, and 24 as unpatentable
over Horton and Parsons.

Claims 21 and 26
Appellant presents the same arguments for dependent claims 21 and
26. See Br. 11–13. Specifically, Appellant contends that
the combination of Horton in view of Parsons does
not in any way disclose, teach, or suggest a block
secured between each of the plurality of studs to
laterally stabilize the studs and set the studs at a
predetermined fixed spacing thereby creating a
space frame. Accordingly, Applicant respectfully
contends the combination of Horton in view of
Parsons cannot disclose a second block secured
between each stud since that combination does not
disclose a first block secured between each stud.
Id.
Appellant’s argument is not persuasive. At the outset, as discussed
above, the Examiner correctly finds that the metal stud beams (blocks) 28 of
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Horton are capable of (1) providing predetermined fixed spacing (length)
between adjacent vertical studs 10; and (2) laterally stabilizing studs 10. See
Ans. 5–6, 13. In addition, a reference disclosure is not limited to only its
preferred embodiments, but is available for all that it discloses and suggests
to one of ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA
1976). Here, the Examiner finds that
Horton . . . in view of Parsons disclose[s] the
claimed invention except for a second block
secured between each stud. However, it would
have been obvious . . . to have included a second
block between the studs of the frame of Horton . . .
in view of Parsons, in order to provide more
strength between adjacent studs.

Ans. 7. The Examiner’s findings and conclusions are based on rational
underpinnings. Appellant has not apprised us of error regarding the
Examiner’s findings or conclusions.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
dependent claims 21 and 26 as unpatentable over Horton and Parsons is
sustained.

Claim 22
Applicant contends that “the Examiner has failed to sufficiently
explain why one of ordinary skill in the art would extend the studs when
such extension is not contemplated by either Horton or Parsons.” Br. 12.
Appellant’s argument is not persuasive. Although the Examiner
asserts that it would require only routine skill for a person of ordinary skill
in the art to extend the studs to create a second level (see Ans. 8; see also Br.
11–12), the Examiner also finds that “the positioning of the first and second
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blocks between each stud would separate the studs into three levels, a level
between the bottom channel and the first block, a level between the first and
second blocks and a level between the second block and the top channel.”
See Ans. 8. Appellant has not provided any evidence or argument sufficient
to show that the proposed modification would have been beyond the level of
ordinary skill in the art. Neither has Appellant provided any persuasive
evidence or argument sufficient to show that the proposed modification
would have been more than a predictable use of the prior art elements
according to their established functions. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). “If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417.
Moreover, in response to Appellant’s argument, the Examiner finds
and concludes that
St. Regis Paper Co. v. Bemis Co. teaches that
duplication of the essential working parts of a
device, i.e. the studs and blocks of [Horton], only
involves routine skill in the art, where additional
studs and blocks within the invention of [Horton]
would provide a larger, stronger space frame
capable of supporting multiple windows. In re
Japikse teaches that rearranging parts of an
invention only involves routine skill in the art,
where rearranging a second block of [Horton] such
that the stud extends above the block would be
well within the routine skill in the art and allow the
spacer frame to be built to certain specifications
for each unique application of the invention of
[Horton]. Further, KSR states that known work in
one field of endeavor may prompt variations of it
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for use in either the same field or a different one
based on design incentives or other market forces
if the variations would have been predictable to
one of ordinary skill in the art, where one of
ordinary skill in the art would include additional
studs and blocks of the invention of [Horton] as a
design incentive to create a predictable larger,
stronger space frame capable of supporting
multiple windows and also to arrange a second
block of the invention of [Horton] such that a stud
extends above the block would provide a design
incentive which provides additional strength to a
window disposed between adjacent studs as well
as provides a space frame with a height that meets
certain specifications for a specific application of
the invention.

Ans. 15 (citing KSR Int’l Co., 550 U.S. at 398). The Examiner’s findings
and conclusions are based on rational underpinnings. Appellant has not
apprised us of error regarding the Examiner’s findings or conclusions.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
dependent claim 21 as unpatentable over Horton and Parsons is sustained.

Claims 23 and 25
Appellant presents the same arguments for dependent claims 23 and
25. See Br. 12. Specifically, Appellant contends that “the combination of
Horton in view of Parsons does not in any way disclose, teach, or suggest a
block secured between each of the plurality of studs[.] Horton in view of
Parsons cannot disclose, teach, or suggest shortening a block to create
different size space-frame.” See id.

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Appellant’s argument is not persuasive. At the outset, as discussed
above, the Examiner correctly finds that the metal stud beams (blocks) 28 of
Horton are capable of providing predetermined fixed spacing (length)
between adjacent vertical studs 10. See Ans. 5, 13. As further discussed
above, Horton discloses that the metal stud beams (blocks) 28 “can be made
to lengths” for window framing. See Horton, col. 4, ll. 57–59. As such, the
Examiner’s further finding that Horton contemplates shortening the metal
stud beams (blocks) 28 to create different sized frames is correct. See Ans.
8.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
dependent claims 23 and 25 as unpatentable over Horton and Parsons is
sustained.

Claim 27
Applicant contends that
the Examiner asserts that it would require only
routine skill for a person of ordinary skill in the art
to connect additional studs to the plurality of studs.
. . . the Examiner has failed to sufficiently explain
why one of ordinary skill in the art would
introduce additional studs when such introduction
is not contemplated by either Horton or Parsons.
Br. 13.
Appellant’s argument is not persuasive. At the outset, we disagree
with Appellant that the Examiner merely asserted that it would require only
routine skill for a person of ordinary skill in the art to connect additional
studs to the plurality of studs. To the contrary, the Examiner relied on
Parsons for disclosure of this feature. See Ans. 8. The Examiner correctly
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finds that “Parsons clearly shows additional studs directly connected to a
plurality of studs such that the two studs are attached back-to-back to one
another.” See Ans. 16; see also id. at 8. We agree with the Examiner that
modifying Horton to include a stud directly connected to any one of the
plurality of studs, as taught by Parsons, would provide additional strength.
See id. at 8.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
dependent claim 27 as unpatentable over Horton and Parsons is sustained.

Claim 28
Appellant contends that
[t]he combination of Horton in view of Parsons
does not in any way disclose, teach, or suggest a
block secured between each of a first, second, and
third studs to laterally stabilize the studs and set
the studs at a predetermined fixed spacing thereby
creating a space frame. The combination of
Horton in view of Parson accordingly does not
render claim 28 obvious because that combination
does not disclose a first block between first and
second studs and a second block between second
and third studs so as to establish a prima facie case
that claim 28 is obvious over Horton in view of
Parsons.
Br. 13–14.
Appellant’s argument is not persuasive. First, as discussed above in
reference to independent claim 18, the Examiner correctly finds that the
metal stud beams (blocks) 28 of Horton are capable of (1) providing
predetermined fixed spacing (length) between adjacent vertical studs 10; and
(2) laterally stabilizing studs 10. See Ans. 5–6, 13. Further, a reference
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disclosure is not limited to only its preferred embodiments, but is available
for all that it discloses and suggests to one of ordinary skill in the art. Here,
the Examiner finds that “it would have been obvious . . . to have included
additional blocks and studs connected to one another to finish the frame of
Horton . . . in view of Parsons, in order to provide a frame with multiple
adjacent windows or to strengthen the frame.” Id. at 9. Appellant has not
provided any evidence or argument sufficient to show that the proposed
modification would have been beyond the level of ordinary skill in the art.
Neither has Appellant provided any persuasive evidence or argument
sufficient to show that the proposed modification would have been more
than a predictable use of the prior art elements according to their established
functions.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
independent claim 28 as unpatentable over Horton and Parsons is sustained.

Claims 31, 32, and 35
Appellant presents the same arguments for dependent claims 31, 32,
and 35. See Br. 14. Specifically, Appellant contends that “Horton in view
of Parsons simply does not in any way disclose, teach, or suggest a block
secured between each stud to laterally stabilize the studs and set the studs at
a predetermined fixed spacing thereby creating a space frame.” See id.
For reasons discussed above in reference to independent claims 18
and 28, this argument is not persuasive. Accordingly, we likewise sustain
the Examiner’s rejection of dependent claims 31, 32, and 35 as unpatentable
over Horton and Parsons.

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Claim 34
Appellant contends that dependent claim 34 is patentable over Horton
and Parsons based upon its dependency from claim 18 and Appellant’s
contentions regarding claim 28. See Br. 14. Appellant has not apprised us
of Examiner error regarding claim 34. As we find no deficiency in the
Examiner’s rejection of independent claim 28, for the reasons discussed
above, we likewise sustain the Examiner’s rejection of dependent claim 34
as unpatentable over Horton and Parsons.

Obviousness over Horton, Parsons, and Brady

Claims 5, 6, and 11

Appellant presents the same arguments for dependent claims 5, 6, and
11. See Br. 15–16. Specifically, Appellant contends that “Brady discloses
channels that engage to provide telescoping of one piece relative to a second
piece. Consequently, Brady and thus, the combination of Horton in view of
Parsons and Brady do not disclose Applicant’s recesses that function to
prevent the protrusion of fasteners.” See id.
Appellant’s arguments are not persuasive because nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Further, we note that
claim 5 does not call for “recesses that function to prevent the protrusion of
fasteners.” See Br. Claims App. 1. Claim 5 merely calls for “the first side
and the second side of each stud [to] include a recess.” See id. Moreover, as
discussed above, the Examiner correctly finds that each of the small holes
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19
13, 27 provided on the sides of studs 10 of Horton constitute “a recess,” as
claimed. Regarding claims 6 and 11 (which limit the amount of protrusion
of a fastener), in response to Appellant’s argument, the Examiner finds that
Brady discloses that it is highly well known in the
art to provide a space frame construction system
with recesses #135 upon the edges of an interior
support member #30 as well as recesses #60 upon
the sides of an outer stud #25 so that the recesses
#135 and #60 fit within each other and can be
fastened together with a fastener #70. . . . Brady
depicts in figures 8, 9 and 12 the recesses used to
receive fasteners #70 have a sufficient depth such
that the head of the fastener which seats within the
recess does not protrude from the recess in order to
allow the sides #25 of the outer stud #20 to sit
flush with other elements. Therefore . . . it would
have been obvious to provide the recess features
disclosed in Brady within the steel space frame of
[Horton] in view of Parsons in order to create a
stronger connection between the studs and the
blocks of the [modified] frame of [Horton].

Ans. 17–18. The Examiner’s findings and conclusions are based on rational
underpinnings. Appellant has not apprised us of error regarding the
Examiner’s findings or conclusions.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
dependent claims 5, 6, and 11 as unpatentable over Horton, Parsons, and
Brady is sustained.

Claim 12

Appellant contends that (1) “Brady discloses channels that engage to
provide telescoping of one piece relative to a second piece. Consequently,
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20
Brady and thus the combination of Horton in view of Parsons and Brady do
not disclose [Appellant’s] recesses that function to prevent the protrusion of
fasteners” (Br. 16); and (2) “claim 12 discloses [indentations] that function
as guides whereas the combination of Horton in view of Parsons and Brady
disclose holes” (Id.).
Appellant’s arguments are not persuasive. Regarding Appellant’s first
argument, we note that claim 12 does not call for “recesses that function to
prevent the protrusion of fasteners.” See Br. Claims App. 1. Claim 12 calls
for “wherein each tab includes an indentation that functions as a guide for a
fastener inserted through the tab.” See id. Regarding Appellant’s second
argument, the Examiner finds that “[t]he recesses #135 of Brady are
provided with holes such that the fasteners #70 are further guided properly
through each recess to fasten the two elements to each other.” Ans. 18. The
Examiner further concludes that it would have been obvious
to have used the teaching of recesses placed upon
the supporting member as disclosed in Brady to
provide recesses upon the tabs of the block
disclosed in [Horton] in order to create a stronger
connection between the blocks and studs of
[Horton]. The recesses would have been placed on
the tabs of the block disclosed in [Horton] since
the tabs are the elements used to secure the block
to the stud.

Id. at 11. The Examiner’s findings and conclusions are based on rational
underpinnings. Appellant has not provided any persuasive evidence or
argument apprising us of error in the Examiner’s findings and conclusions.

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21
Accordingly, for the foregoing reasons, the Examiner’s rejection of
dependent claim 12 as unpatentable over Horton, Parsons, and Brady is
sustained.

Obviousness over Horton, Parsons and Sedlmeier
Claim 7
Appellant contends that dependent claim 7 is patentable over Horton
and Parsons based upon its dependency from claim 18 and Appellant’s
contentions regarding claim 18. See Br. 16. Appellant has not apprised us
of Examiner error regarding claim 7. As we find no deficiency in the
Examiner’s rejection of independent claim 18, for the reasons discussed
above, we likewise sustain the Examiner’s rejection of dependent claim 7 as
unpatentable over Horton, Parsons, and Sedlmeier.

DECISION
We AFFIRM the decision of the Examiner to reject claims 5, 13, 18,
20–28, 31, 32, 34, and 35 as unpatentable over Horton and Parsons
We AFFIRM the decision of the Examiner to reject claims 5, 6, 11,
and 12 as unpatentable over Horton, Parsons, and Brady.
We AFFIRM the decision of the Examiner to reject claim 7 as
unpatentable over Horton, Parsons, and Sedlmeier.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
pgc