Ex Parte Broad et al

Board of Patent Appeals and Interferences

May 26, 2011

10871401 (B.P.A.I. May. 26, 2011)

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
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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withdrawn claim 32 from further consideration due to the dependence of 9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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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