Ex Parte Broad et alDownload PDFBoard of Patent Appeals and InterferencesMay 26, 201110871401 (B.P.A.I. May. 26, 2011) Copy Citation 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. 10/871,401 06/18/2004 Robert Patrick Broad 1297A-117 7835 25215 7590 05/26/2011 DOBRUSIN & THENNISCH PC 29 W LAWRENCE ST SUITE 210 PONTIAC, MI 48342 EXAMINER FIGUEROA, ADRIANA ART UNIT PAPER NUMBER 3633 MAIL DATE DELIVERY MODE 05/26/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ROBERT PATRICK BROAD and JAY K. McDONALD ____________ Appeal 2009-009783 Application 10/871,401 Technology Center 3600 ____________ Before WILLIAM F. PATE III, JOHN C. KERINS and STEVEN D.A. McCARTHY, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s 2 decision finally rejecting claims 26-28, 30, 31, 34, 35, 37, 38, 40-43, 47 and 3 49-56. The Examiner rejects: 4 claims 26, 27, 30, 34, 37, 38, 40, 41 and 47 under 35 5 U.S.C. § 102(b) as being anticipated by Moffitt (US 4,555,882, 6 issued Dec. 3, 1985); 7 Appeal 2009-009783 Application 10/871,401 2 claims 28, 31, 42, 43, 49 and 50 under 35 U.S.C. 1 § 103(a) as being unpatentable over Moffitt and Laska (US 2 4,700,512, issued Oct. 20, 1987); 3 claim 35 under § 103(a) as being unpatentable over 4 Moffitt and Restaino (US 6,045,921, issued Apr. 4, 2000); and 5 claims 51-56 under § 103(a) as being unpatentable over 6 Moffitt, Laska and Restaino. 7 Claims 1-25, 29, 33, 36, 39, 44-46 and 48 are cancelled. The Examiner has 8 withdrawn claim 32 from further consideration due to the dependence of 9 claim 32 from a cancelled base claim. (Final Office Action mailed January 10 23, 2008 at 2). We have jurisdiction under 35 U.S.C. § 6(b). 11 We AFFIRM. 12 Claim 26 is illustrative of the claims on appeal: 13 26. A window sill flashing comprising: 14 a thin gauge plastic vacuum formed film 15 member, the member being formed for including: 16 a substantially rectangular shaped 17 base portion for contacting a window 18 installed thereon, including a front edge, a 19 rear edge and two opposing side edges; 20 at least one side flange extending 21 substantially perpendicular from one of the 22 side edges of said base portion and 23 integrally formed therewith; 24 a front surface integrally formed with 25 the base portion and which extends 26 substantially perpendicular from the front 27 edge of said base portion; and 28 a front surface integrally formed with 29 the side flange and which extends 30 Appeal 2009-009783 Application 10/871,401 3 substantially perpendicular from a front 1 edge of side flange, 2 wherein the front surfaces of the base 3 portion and the at least one side flange are 4 integrally formed together to create a 5 continuous surface. 6 7 ISSUES 8 The Appellants expressly state that claims 35 and 51 “are not subject 9 of this appeal.” (Br. 5). Since the Appellants have withdrawn the appeal as 10 to claims 35 and 51, we DISMISS the appeal as to those claims. In the event 11 there are any further proceedings in this application following this appeal, 12 we direct the Examiner’s attention to MANUAL OF PATENT EXAMINING 13 PROCEDURE § 1215.03. 14 The Appellants argue the rejections of claims 26, 27, 30, 34, 37, 38, 15 40, 41 and 47 under § 102(b) as a group. Independent claims 26 and 37 are 16 representative of the group. The Appellants contend with respect to these 17 rejections that Moffitt fails to disclose either a thin gauge plastic film 18 member or a vacuum formed plastic film member as recited in independent 19 claims 26 and 37. (E.g., Br. 14). 20 The Appellants also argue the rejections of claims 28, 31, 42, 43, 49 21 and 50 under § 103(a) as a group. Claims 28 and 49 are representative. 22 Apart from repeating their arguments supporting the patentability of claims 23 26 and 37, the Appellants contend that one of ordinary skill in the art would 24 not have had reason to combine the teachings of Moffitt and Laska in the 25 fashion claimed. (Br. 16). The Appellants additionally contend that the 26 probative value of the combined teachings of Moffitt and Laska as evidence 27 of obviousness does not outweigh the probative value of a Declaration 28 Appeal 2009-009783 Application 10/871,401 4 Under Rule 32 by Gary D. Parsons (“Parsons Decl.”) and a Declaration 1 Under 37 C.F.R. 1.132 of Robert Broad (“Broad Decl.”), both submitted by 2 the Appellants as evidence of non-obviousness. (E.g., Br. 17). 3 The Appellants also argue the rejections of claims 52-56 under 4 § 103(a) as a group. Independent claim 52 is representative. The Appellants 5 contend that one of ordinary skill in the art would not have had reason to 6 combine the teachings of Moffitt, Laska and Restaino in the fashion claimed 7 in claim 52. (Br. 23). The Appellants also contend that the probative value 8 of the combined teachings of Moffitt, Laska and Restaino as evidence of 9 obviousness does not outweigh the probative value of the Parsons Decl. and 10 the Broad Decl. as evidence of non-obviousness. (Br. 21-25). 11 Only issues and findings of fact contested by the Appellants have 12 been considered. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 13 2010). The Examiner’s findings and conclusions, and the Appellants’ 14 contentions, raise the following issues: 15 First, does Moffitt disclose a thin gauge plastic film 16 member? 17 Second, does Moffitt disclose a plastic film member 18 identical to a vacuum formed plastic film member? 19 Third, do the evidence and technical reasoning 20 underlying the rejections of representative claims 28 and 49 21 adequately support the conclusion that one of ordinary skill in 22 the art would have had reason to manufacture the product 23 described by Moffitt from polyvinylchloride (“PVC”) in a 24 thickness of about 7.5-35 mils? 25 Appeal 2009-009783 Application 10/871,401 5 Fourth, do the evidence and technical reasoning 1 underlying the rejection of representative claim 52 adequately 2 support the conclusion that one of ordinary skill in the art 3 would have had reason to provide the product described by 4 Moffitt with a coating of silicone? 5 Fifth, does the probative weight of the combined 6 teachings of Moffitt and Laska, as evidence that the subject 7 matter of representative claims 28 and 49 would have been 8 obvious, outweigh the probative value of the declarations 9 submitted by the Appellants as evidence of non-obviousness? 10 Sixth, does the probative weight of the combined 11 teachings of Moffitt, Laska and Restaino, as evidence that the 12 subject matter of representative claim 52 would have been 13 obvious, outweigh the probative value of the declarations 14 submitted by the Appellants as evidence of non-obviousness? 15 16 FINDINGS OF FACT 17 The record supports the following findings of fact (“FF”) by a 18 preponderance of the evidence. 19 1. Moffitt discloses a moisture guard for a window or door frame. 20 (Moffitt, col. 1, ll. 41-48). The moisture guard 10a is formed as a one-piece 21 ABS plastic molding. (Moffitt, col. 2, ll. 57-60). 22 2. Moffitt does not disclose the thickness of the moisture guard 23 10a. Nevertheless, the drawing figures of Moffitt depict the thickness or 24 gauge of the moisture guard 10a as being significantly thinner than the 25 length or depth of the moisture guard. 26 Appeal 2009-009783 Application 10/871,401 6 3. Therefore, we adopt the Examiner’s finding (see Ans. 3) that 1 Moffitt discloses a window sill flashing member having a thin gauge plastic 2 film member. 3 4. On page 4 of a Non-Final Office Action dated August 7, 2007, 4 the Examiner found that: 5 The product-by-process limitation “vacuum 6 formed” would not be expected to impart 7 distinctive structural characteristics to the window 8 sill flashing. Therefore, the claimed window sill 9 flashing is not a different and unobvious window 10 sill flashing from Moffitt. The ABS presented 11 within Moffitt can be vacuum molded and thus is 12 the same as the claimed “vacuum formed” 13 member. 14 The Appellants were given an opportunity to respond to this finding with 15 evidence. Since the Appellants have not responded with persuasive 16 evidence, we adopt the finding. 17 5. The Appellants do not appear to contest that ABS plastic 18 having a thickness of about 60 mils can be vacuum formed. 19 6. The Appellants concede that “Laska teaches the use of a thin 20 gage vinyl film to be used in a flashing application.” (Br. 16). 21 7. More specifically, Laska describes flashing membrane made of 22 PVC having a thickness of about 10 mil to about 100 mil. (Laska, col. 2, ll. 23 6-9 and 30-39). 24 8. Restaino describes a barrier 16 for inhibiting the passage of 25 water, sound, air and dirt. (Restaino, col. 2, ll. 56-60). The barrier includes 26 a thin planar sheet of thermoplastic elastomer. (Restaino, col. 3, ll. 7). The 27 sheets are coated with a silicone release coating to achieve relative ease of 28 release between parts. (Restaino, col. 4, ll. 8-13). 29 Appeal 2009-009783 Application 10/871,401 7 9. The Broad Decl. lists manufacturing advantages and cost 1 savings attributable to the manufacture of sill flashings from vacuum formed 2 plastic rather than injection molded ABS. (Broad Decl., paras. 15-17 and 3 24-27). These manufacturing advantages and cost savings identified by the 4 Broad Decl. do not imply that a molded ABS plastic film member would 5 substantially differ physically from a one-piece vacuum formed ABS plastic 6 film member of similar thin gauge. 7 10. The Parsons Decl. states that The Dow Chemical Company 8 (“Dow”) licensed the subject matter of appealed independent claim 52. 9 (Parsons Decl., para. 5; see also Broad Decl., para. 20). 10 11. Dow began selling sill pan sets under license in or around April 11 of 2006. (Broad Decl., para. 21 and 22). The Parsons Decl. additionally 12 states that Dow had sold at least 125,000 sill pan sets by about June of 2007, 13 including about 90,000 sets between March and December of 2006. (Id., 14 para. 9). The Broad Decl. states that Dow sold about 56,000 sill pan sets in 15 the second quarter of 2006. (Broad Decl., para. 23). Neither the Parsons 16 Decl. nor the Broad Decl. provides statistics for the market as a whole or for 17 Dow’s position in that market. 18 12. The Broad Decl. states that the industry “recognized the 19 acceptability of making and using thin walled structures for sill flashings” 20 only after the Appellants demonstrated the claimed subject matter (Broad 21 Decl., para. 28). No further detail is provided in the Broad Decl. 22 13. The Parsons Decl. observes that an article published in 23 September of 2006 expressed skepticism concerning the sill pan sets sold by 24 Dow under license, stating that the sill pans appeared unlikely “to withstand 25 the normal rough handling that occurs on the typical job sites.” (Parsons 26 Appeal 2009-009783 Application 10/871,401 8 Decl., para. 13, citing Two New Plastic Sill Pans, 26 [9] ENERGY DESIGN 1 UPDATE 12-13 (Aspen Publishers, September 2006)). The author of the 2 Parsons Decl. states the he shared the same skepticism. The Parsons Decl. 3 provides no other examples of such skepticism. 4 5 ANALYSIS 6 First Issue 7 Claim 26 recites “a thin gauge plastic vacuum formed film member.” 8 Claim 37 recites “a thin gauge one piece vacuum formed plastic film 9 member.” Moffitt discloses a moisture guard 10a including a one-piece 10 molded ABS plastic film member. (FF 1). The Appellant argues that 11 Moffitt does not describe this film member as having a thin gauge. (Br. 14). 12 The Appellants do not formally define the term “thin gauge” in the 13 specification. Neither do the Appellants present evidence indicating that the 14 ordinary usage of the term “thin gauge” in the pertinent art is narrower than 15 the lay understanding of the term. A “gauge” is merely a dimension or 16 extent (see WEBSTER’S THIRD NEW INT’L DICTIONARY (G&C Merriam Co. 17 1971) (“gauge,” entry 1, def. 1b)), in this case a dimension of thickness. The 18 term “thin” denotes no more than “having little extent from one surface to its 19 opposite.” (Id. (“thin,” entry 1, def. 1a)). Moffitt’s drawings depict the 20 extent of the moisture guard 10a from, for example, the upper surface of the 21 base 11a to the lower surface of the base as being significantly thinner than 22 the extent of the upper or lower surface of the base. (FF 2). In at least 23 relative terms, Moffitt’s moisture guard 10a comprises a thin gauge plastic 24 film member. (FF 3). 25 26 Appeal 2009-009783 Application 10/871,401 9 Second Issue 1 2 The “vacuum formed” limitation of claim 26 and claim 37 is a 3 product-by-process limitation. “If the product in a product-by-process claim 4 is the same as or obvious from a product of the prior art, the claim is 5 unpatentable even though the prior product was made by a different 6 process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985); see also 7 SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 8 2006). Where claimed and prior art products are identical or substantially 9 identical, 10 the [Patent and Trademark Office] can require an 11 applicant to prove that the prior art products do not 12 necessarily or inherently possess the characteristics 13 of [the] claimed product. Whether the rejection is 14 based on ‘inherency’ under 35 U.S.C. § 102, on 15 ‘prima facie obviousness’ under 35 U.S.C. § 103, 16 jointly or alternatively, the burden of proof is the 17 same, and its fairness is evidenced by the PTO’s 18 inability to manufacture products or to obtain and 19 compare prior art products. 20 In re Best, 562 F.2d 1252, 1255 (CCPA 1977)(citations omitted). 21 Neither claim 26 nor claim 37 limits the material from which the 22 plastic film member may be manufactured. Neither claim limits the 23 thickness of the plastic film member other than by the recitation that the 24 plastic film member has a “thin gauge.” Moffitt’s moisture guard 10a meets 25 this limitation. During prosecution, the Examiner found that the window sill 26 flashing described by Moffitt is not different (or at least substantially 27 different) from a window sill flashing claimed in claims 26 and 37. (See FF 28 4). This finding shifted the burden to the Appellants to produce evidence at 29 least casting doubt on the finding. The Appellants have not produced 30 Appeal 2009-009783 Application 10/871,401 10 persuasive evidence indicating a structural difference between the window 1 sill flashing described by Moffitt, on the one hand, and a sill flashing as 2 claimed in claims 26 and 37 of material and thickness comparable to 3 Moffitt’s, on the other. (FF 5 and 9). 4 The Examiner has met the burden of showing that Moffitt’s moisture 5 guard 10a meets the “vacuum formed” limitation. We sustain the rejection 6 of claims 26, 27, 30, 34, 37, 38, 40, 41 and 47 under 35 U.S.C. § 102(b) as 7 being anticipated by Moffitt. 8 9 Third Issue 10 Claim 28 recites the window sill flashing assembly of claim 26, 11 wherein the member has a thickness of about 7.5-35 mils. Claim 49 recites 12 the window sill flashing assembly of claim 26, wherein the material of the 13 member is PVC. Laska describes flashing membrane made of PVC having a 14 thickness of about 10 mil to about 100 mil. (FF 6 and 7). The Examiner 15 concludes that it would have been obvious “to modify the member of Moffitt 16 to have a thickness of [about 10 mil to about 100 mil] as taught by Laska in 17 order to provide a member that is easy to cut and to conform to the shape of 18 the sill and more specifically to the corners.” (Ans. 5-6). The Appellants do 19 not provide a persuasive reason why this conclusion is incorrect. Since the 20 range of thicknesses described by Laska, namely, about 10 mil to about 100 21 mil, overlaps the range of thicknesses recited in claim 28, a window sill 22 flashing assembly having the recited range of thicknesses would have been 23 prima facie obvious. The Appellants’ argument that Laska alone describes a 24 flexible membrane which is not itself a formed article (see Br. 16) does not 25 address whether a window sill flashing assembly identical or substantially 26 Appeal 2009-009783 Application 10/871,401 11 identical to a vacuum formed assembly would have been prima facie 1 obvious. 2 3 Fourth Issue 4 Claim 52 recites a window sill flashing including a coating of silicone 5 on the film for ease of manufacturing and separation of the member. 6 Restaino teaches adding a silicone release coating to a thin planar sheet of 7 thermoplastic elastomer to achieve relative ease of release between parts. 8 (See FF 8). In view of this teaching, the Examiner correctly concludes that it 9 would have been obvious “to modify the member of Moffitt and Laska to 10 include a silicone coating as taught by Restaino in order to provide a relative 11 ease of release between the members.” (See Ans. 8; see also Br. 23-24). 12 13 Fifth and Sixth Issues 14 Inasmuch as we have concluded that the subject matter of 15 representative claims 28 and 49 would have been prima facie obvious, and 16 since the Appellant has submitted evidence in rebuttal of obviousness, we 17 now turn to consider this evidence. When such evidence is presented it is 18 our duty to consider the evidence anew. See, e.g., In re Eli Lilly & Co., 902 19 F.2d 943, 945 (Fed. Cir. 1990). We also are mindful that objective evidence 20 of nonobviousness in any given case may be entitled to more or less weight 21 depending on its nature and its relationship with the merits of the invention. 22 Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983). 23 Despite the Appellants’ argument to the contrary (see Br. 19-20), the 24 Parsons Decl. and the Broad Decl., separately or combined, fail to 25 demonstrate commercial success of the subject matter of claims 28, 31, 42, 26 Appeal 2009-009783 Application 10/871,401 12 43, 49, 50 and 52-56 (see FF 10 and 11). See In re Huang, 100 F.3d 135, 1 140 (Fed. Cir. 1996)(Evidence related solely to number of units sold is only 2 weakly probative of commercial success absent evidence indicating whether 3 the number of units sold represents a substantial quantity in the market). 4 The single license of the subject matter of claim 52 to Dow, without more, 5 also is weak evidence of commercial success. Despite the Appellants 6 argument to the contrary (see Br. 19), the skepticism of two individuals as to 7 whether the subject matter of claims 28, 31, 42, 43, 49, 50 and 52-56 was 8 strong enough to withstand the conditions at a construction site is only 9 weakly probative of skepticism among those involved in the pertinent art 10 (see FF 12 and 13). This is particularly true where, as here, there is no 11 evidence regarding how large the number of individuals involved in the art 12 was. 13 Having now considered all the evidence presented by the Appellants 14 and weighing the evidence anew, it is our conclusion that the evidence for 15 obviousness greatly outweighs the evidence thereagainst. We sustain the 16 rejections of claims 28, 31, 42, 43, 49 and 50 under § 103(a) as being 17 unpatentable over Moffitt and Laska; and of claims 52-56 under § 103(a) as 18 being unpatentable over Moffitt, Laska and Restaino. 19 20 DECISION 21 We AFFIRM the Examiner’s decision rejecting claims 26-28, 30, 31, 22 34, 35, 37, 38, 40-43, 47 and 49-56. 23 Appeal 2009-009783 Application 10/871,401 13 No time period for taking any subsequent action in connection with 1 this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2 § 1.136(a)(1). 3 4 AFFIRMED 5 6 7 Klh 8 Copy with citationCopy as parenthetical citation