Ex Parte BullingerDownload PDFPatent Trial and Appeal BoardSep 10, 201410697788 (P.T.A.B. Sep. 10, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL J. BULLINGER ____________________ Appeal 2012-006589 Application 10/697,788 Technology Center 3600 ____________________ Before JOHN C. KERINS, STEFAN STAICOVICI, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael J. Bullinger (“Appellant”) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 8–25, 28, and 29. Appeal Br. 4. Claims 1–7, 26, and 27 have been cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2012-006589 Application 10/697,788 2 CLAIMED SUBJECT MATTER The Appellant’s invention is directed to a gutter and cover system. Spec. 1. Independent claims 8 and 10 are illustrative and are reproduced below with emphasis on the relevant claim limitations. 8. A seamless gutter and cover system comprising: a gutter formed from a first coil of material having a front face, a bottom and a rear portion extending upward to a top segment; a cover formed from a second coil of material, wherein the cover extends over the gutter and has a debris separation portion extending above the front face of the gutter, and a lip portion extending upward and wrapping over the top segment of the gutter, wherein the lip portion and the top segment of the gutter are continuously pressed and fixed together along their entire length to form an integral gutter and cover assembly. 10. A seamless gutter and cover system comprising: a gutter formed from a first coil of material having a front face, a bottom and a rear portion extending upward to a top segment; a cover formed from a second coil of material, wherein the cover extends over the gutter and has a debris separation portion extending above the front face of the gutter, and a lip portion extending upward and wrapping over the top segment of the gutter; wherein the top segment of the gutter and the flange portion of the cover are continuously crimped together along their entire length to interlock the top segment of the gutter with the flange portion of the cover. Appeal 2012-006589 Application 10/697,788 3 THE REJECTIONS The Examiner has rejected (see Answer 4–9): (i) claims 8, 11, and 13–21 under 35 U.S.C. § 102(b) as being anticipated by Knudson (US 5,845,435, issued Dec. 8, 1998); (ii) claim 10 under 35 U.S.C. § 103(a) as being unpatentable over Knudson in view of Middleby (US 4,263,756, issued Apr. 28, 1981); (iii) claim 12 under 35 U.S.C. § 103(a) as being unpatentable over Knudson in view of Wade (US 5,729,931, issued Mar. 24, 1998) and further in view of Richard (US 6,732,477 B1, issued May 11, 2004); and (iv) claims 9, 22–25, 28, and 29 under 35 U.S.C. § 103(a) as being unpatentable over Knudson in view of Beam (US 4,604,837, issued Aug. 12, 1986). ANALYSIS Claims 8, 11, and 13–21 as Anticipated by Knudson The Appellant presents separate arguments for independent claim 8 and dependent claims 17–21. Appeal Br. 8–11. We select claims 8 and 17 for review with claims 11 and 13–16 standing or falling with claim 8 and claims 18–21 standing or falling with claim 17. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 8 The Examiner found that Knudson discloses a seamless gutter and cover system comprising a gutter 96 and a cover (shield) 99.1 Answer 4 and 5. The Examiner further found that gutter 96 and cover 99 are “continuously pressed, and fixed together along their entire length to form an integral gutter and cover assembly” through lip portion (hook) 99a and top segment 1 Parenthetical nomenclature refers to Knudson. App App (end appe remo for th (emp teach (seco Trad inter in lig skill Cir. parti we m eal 2012-0 lication 10 ) 98a. See ars to pres Figure 1 Figure 1 In respo vable from e cover an hasis adde es away f nd empha When co emark Off pretation c ht of the S in the art. 2004). As cular defin ust consu 06589 /697,788 id. at 5. I s fit over p 1 of Knud 1 depicts “ nse, the Ap the gutte d gutter t d). The A rom such a sis added) nstruing c ice, claim onsistent w pecificati In re Am. the Appel ition to th lt a genera n particula art 98a.” son is repr lip portion pellant co r assembly o be presse ppellant f n integral . laim termi s are to be ith the Sp on as it wo Acad. of S lant’s Spe e claimed l dictionar 4 r, the Exa Id. oduced be ” 99a and ntends tha , and for t d togethe urther con gutter and nology in given thei ecificatio uld be int ci. Tech. C cification terms “pre y definitio miner stat low: “top segm t “cover” his reason r.” See Ap tends that cover ass the United r broadest n, reading erpreted by tr., 367 F does not a ssed toget n of the te ed that “pa ent” 98a. 99 of Knu , “it is not peal Br. 9 “Knudson embly.” I States Pa reasonabl the claim one of or .3d 1359, ssign or su her” or “in rms for gu rt 99a dson is possible and 10 clearly d. at 9 tent and e language dinary 1364 (Fed ggest a tegral,” idance in . Appeal 2012-006589 Application 10/697,788 5 determining the ordinary and customary meaning as viewed by a person of ordinary skill in the art. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). “Press” is defined as “to move by applying pressure” and “integral” is defined as “formed of constituent parts; united.” The Free Dictionary, http://www.thefreedictionary.com/press (last visited Aug. 19, 2014). From these definitions, we find that an ordinary and customary meaning of a cover and a gutter “pressed together” to form an “integral gutter and cover assembly” merely means that some pressure is applied to unite the gutter together with the cover. We also find that, broadly defined, these definitions do not mean that the cover cannot be removed from the gutter once they are “pressed together” to form an “integral gutter and cover assembly,” as proposed by the Appellant. See Appeal Br. 9 and 10. Such an interpretation is also consistent with the Appellant’s Specification, which references “pressed together,” as follows: The lip portion 114 is configured to slide over the upper end of the rear wall 117. These are pressed together and aligned by a guide roller 1030 and a pair of opposed guide rolls 1032. A press roll 1034 presses the lip portion 114 downward onto the upper end of the rear wall 117. An opposed punch roll and die roll 1036 and 1038 crimp and interlock the cover portion to the gutter portion to create an interlocked gutter and cover system 110. Spec. 8, line 27– Spec. 9, line 3; see also Spec., Fig. 10 (emphasis added). As described in the Specification, the step of the lip portion and top segment of the gutter being “pressed together” occurs before the gutter and cover are crimped and interlocked with one another via punch and die roll 1036 and 1038. See id. Because the “press[ing] together” of the lip portion Appeal 2012-006589 Application 10/697,788 6 and top segment of the gutter is described as a separate operation preceding the interlocking of the gutter and cover attained by the crimping together of the two components, we find that the Specification supports the interpretation that the claims do not exclude a cover that can be removed from a gutter after the gutter and cover are “pressed together.” In this regard, we note that claim 8 does not recite that the gutter and cover are “crimped” or otherwise “interlocked” with one another. See Appeal Br., Claims App. Accordingly, we agree with the Examiner that Knudson’s “lip portion” 99a and “top segment” 98a of gutter 96 “are continuously pressed and fixed together along their entire length to form an integral gutter and cover assembly,” as recited in claim 8. See Answer 4 and 5 and Appeal Br., Claims App. We also note that the Appellant argues that Knudson teaches away from the subject matter of claims rejected as being anticipated. Appeal Br. 9. Since teaching away is irrelevant to anticipation, the argument is not probative of any error with respect to the rejection of claim 8 as being anticipated by Knudson. See Seachange Intern., Inc. v. C-COR, Inc. 413 F.3d 1361, 1380 (Fed. Cir. 2005). For these reasons, we are not apprised of error in the rejection of claim 8. Therefore, we sustain the rejection of claim 8, as well as of claims 11 and 13–16, which fall with claim 8, under 35 U.S.C. § 102(b) as being anticipated by Knudson. Claim 17 The Appellant also states that Knudson fails to teach or suggest “the integral gutter and cover system as discussed above with regard to claim 8, Appeal 2012-006589 Application 10/697,788 7 and further comprising the support member of such an integral system.” Appeal Br. 11. In support of this position, the Appellant asserts that “[t]he present invention as recited in claims 17-21 provides for an integrally connected gutter and cover assembly with support members that are slid into position.” Id. The argument is not commensurate in scope with the subject matter of claims 17-21, in that none of these claims calls for or requires support members that are slid into position. To the extent that the Appellant is simply arguing that Knudson fails to disclose any internal support member, the Patent Rules require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements are not found in the prior art. 37 C.F.R. § 41.37(c)(1)(iv); see also In re Lovin 652 F.3d 1349, 1357 (Fed. Cir. 2011). We find that the Appellant’s conclusory statement does not point out, with any specificity, missing findings or inadequate reasoning in the Examiner’s proposed rejection. In any event, we agree with the Examiner that Knudson’s fastening support device 131 can be properly construed as the “internal support member,” as recited in claim 17. See Answer 5 and 6. For these reasons, we are not apprised of error in the rejection of claim 17. Therefore, we sustain the rejection of claim 17, as well as of claims 18–21, which fall with claim 17, under 35 U.S.C. § 102(b) as being anticipated by Knudson. Claim 10 as Unpatentable over Knudson in view of Middleby The Examiner found that “Knudson does not show the [gutter and cover being] continuously crimped together to interlock the [gutter and cover,]” but determined that “[i]t would have been obvious to one having Appeal 2012-006589 Application 10/697,788 8 ordinary skill in the art at the time of the invention to modify Knudson’s structure” to crimp the two attached structures, as taught by Middleby, to “enable the secured fastening of the structures together.” See Answer 7. The Appellant contends, inter alia, that Knudson teaches away from an integral gutter and cover assembly because Knudson teaches a cover that is removable from the gutter assembly.2 Appeal Br. 9 and 10. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)). Furthermore, if the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). We find that modifying Knudson’s removable shield 99 so that it is crimped and interlocked with gutter 96 would render shield 99 unsatisfactory for its intended purpose, which is to be removable and “readily attached to and detached from the gutter.” Knudson col. 1, ll. 49– 52. Therefore, we do not sustain the rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable over Knudson in view of Middleby. 2 Although the “teaching away” argument was presented by the Appellant in the prior anticipation rejection portion of the Appeal Brief, we consider them here, as this argument is relevant to the obviousness analysis. Appeal 2012-006589 Application 10/697,788 9 Claim 12 as Unpatentable over Knudson in view of Wade and Richard The Appellant does not make any substantive arguments directed specifically to limitations present in claim 12, but rather relies on the arguments presented supra with respect to the anticipation rejection of independent claim 8, from which claim 12 depends. Appeal Br. 13. Accordingly, for the same reasons as expressed above, we likewise sustain the rejection of claim 12. Claim 9 as Unpatentable over Knudson in view of Beam The Appellant does not make any substantive arguments directed specifically to limitations present in claim 9, but rather relies on the arguments presented supra with respect to the anticipation rejection of independent claim 8, from which claim 9 depends. Id. at 13 and 14. Accordingly, for the same reasons as expressed above, we likewise sustain the rejection of claim 9. Claims 22, 24, 28, and 29 as Unpatentable over Knudson in view of Beam The Appellant does not make any substantive arguments directed specifically to limitations present in claims 22, 24, 28, or 29, but rather relies on the arguments presented supra with respect to Knudson’s failure to disclose “the lip portion and top segment pressed together along their length to form an integral gutter and cover assembly.” Id. at 15. Accordingly, for the same reasons as expressed above, we likewise sustain the rejection of claims 22, 24, 28, and 29. Claims 23 and 25 as Unpatentable over Knudson in view of Beam The Appellant does not make any substantive arguments directed specifically to limitations present in claims 23 or 25, but rather relies on the arguments presented supra with respect to the unpatentable rejection of Appeal 2012-006589 Application 10/697,788 10 independent claim 22, from which claims 23 and 25 depend. Id. at 15. Accordingly, for the same reasons as expressed above, we likewise sustain the rejection of claims 23 and 25. SUMMARY The Examiner’s decision to reject claims 8, 11, and 13–21 under 35 U.S.C. § 102(b) as anticipated by Knudson is affirmed. The Examiner’s decision to reject claim 10 under 35 U.S.C. § 103(a) as unpatentable over Knudson in view of Middleby is reversed. The Examiner’s decision to reject claim 12 under 35 U.S.C. § 103(a) as unpatentable over Knudson in view of Wade and Richard is affirmed. The Examiner’s decision to reject claims 9, 22–25, 28, and 29 under 35 U.S.C. § 103(a) as unpatentable over Knudson in view of Beam is affirmed. 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-IN-PART Klh Copy with citationCopy as parenthetical citation