Ex parte Cline

Board of Patent Appeals and Interferences

Aug 29, 2000

08813359 (B.P.A.I. Aug. 29, 2000)

The opinion in support of the decision being entered today (1) was not written for publication
in a law journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROGER M. CLINE
____________
Appeal No. 99-1082
Application No. 08/813,359
____________
ON BRIEF
____________
Before ABRAMS, McQUADE, and CRAWFORD, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-4, 6-15
and 17. Claim 16 has been allowed, and claims 5, 18 and 19 have been indicated as
containing allowable subject matter.
We AFFIRM-IN-PART.
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Application No. 08/813,359
BACKGROUND
The appellant's invention relates to a snow guard (claims 1-4 and 6-15) and to a
method of preventing snow and ice from falling from roofs (claim 17). An understanding of
the invention can be derived from a reading of exemplary claim 1, which appears in the
appendix to the appellant's Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Zaleski Des. 254,051 Jan. 29, 1980
McMullen Des. 314,506 Feb. 12, 1991
Kwiatkowski et al. (Kwiatkowski) 5,570,557 Nov. 05, 1996
Claims 1, 6, 9-15 and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kwiatkowski.
Claims 2-4 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Kwiatkowski in view of McMullen.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Kwiatkowski in view of Zaleski.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the Answer (Paper
No. 10) and the Supplemental Answer (Paper No. 11) for the examiner's complete
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Application No. 08/813,359
reasoning in support of the rejections, and to the Brief (Paper No. 9) and Reply Brief
(Paper No. 12) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, the applied prior art references, the respective
positions articulated by the appellant and the examiner, and the guidance provided by our
reviewing court. As a consequence of our review, we make the determinations which
follow.
All three of the standing rejections are under 35 U.S.C. § 103. The initial burden of
establishing a basis for denying patentability to a claimed invention rests upon the
examiner. See In re Piasecki. 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984) The question under 35 U.S.C. §103 is not merely what the references expressly
teach but what they would have suggested to one of ordinary skill in the art at the time the
invention was made. See Merck & Co. v. Biotech Labs., Inc. 874 F.2d 804, 10 USPQ2d
1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989) and In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). While there must be some suggestion or
motivation for one of ordinary skill in the art to combine the teachings of references, it is not
necessary that such be found within the four corners of the references themselves; a
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Application No. 08/813,359
conclusion of obviousness may be made from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion in a particular
reference. See In re Bozak, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA
1969).Insofar as the references themselves are concerned, we are bound to consider the
disclosure of each for what it fairly teaches one of ordinary skill in the art, including not only
the specific teachings, but also the inferences which one of ordinary skill in the art would
reasonably have been expected to draw therefrom. See In re Boe, 355 F.2d 961, 965,
148 USPQ 507, 510 (CCPA 1966) and In re Preda, 401 F.2d 825, 826, 159 USPQ 342,
344 (CCPA 1968).
This invention relates to an apparatus and method for preventing large sheets of ice
or snow from sliding or falling from roofs. As manifested in independent claim 1, the snow
guard comprises a base, a plate extending from the top surface of the base, support
members having lower edges integrally attached to the top surface of the base and
integrally attached to the plate, and multiple vents provided in the bottom surface of the
base and extending inward from the side edges of the base. Independent claim 17 sets
forth a method in which multiple snow guards having the structure recited in claim 1 are
adhesively attached to a roof. These claims stand rejected by the examiner as being
unpatentable over Kwiatkowski.
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Application No. 08/813,359
In an obviousness assessment, skill is presumed on the part of the artisan, rather1
than the lack thereof. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir.
1985).
In Figure 1, Kwiatkowski discloses a snow guard that has all of the structure recited
in the appellant’s claim 1, except that it has a single support member rather than the
plurality of members recited in the claim. However, we agree with the examiner that one of
ordinary skill in the art would have found it obvious to utilize more than one support
member, suggestion being found in the self-evident advantages of providing more support
for the upright plate, which would have been within the skill of the artisan. With regard to1
the requirement in the claim that the there be vents in the bottom surface of the base, we
point out that Kwiatkowski discloses a plurality of downwardly oriented ribs (210) defining
passages that extend inwardly from the edges of the bottom surface of the base and, in
view of the fact that Kwiatkowski teaches that an adhesive (60) can be placed in these
grooves to facilitate attachment of the device to a roof structure, we find ourselves in
agreement with the examiner that they inherently will function as “vents” for allowing gases
to be evacuated during the curing of the adhesive.
It therefore is our opinion that the teachings of Kwiatkowski establish a prima facie
case of obviousness with regard to the subject matter recited in claim 1.
We reach the same conclusion with regard to method claim 17. Initially, we note
that Kwiatkowski teaches installing a plurality of the snow guards on a roof. In addition,
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Application No. 08/813,359
It is well settled the use of the term "comprising" in a claim opens the claim2
to inclusion of elements or steps other than those recited in the claim. See, for example, In
re Hunter, 288 F.2d 930, 932, 129 USPQ 225, 226 (CCPA 1961
In re Nielson, 816 F.2d 1567, 2 USPQ2d 1525 (Fed. Cir. 1987).3
the reference teaches placing an adhesive in the vents on the bottom surface of the base,
which would be pressed into contact with the roof when the snow guard is installed (column
4, lines 53-57). In this regard, the claim is couched in terms of a “comprising” format,
which leaves it open to the inclusion of additional steps, such as the interengaging
attachment feature disclosed in the reference. Kwiatkowski therefore also establishes a2
prima facie case of obviousness with regard to the method of claim 17.
We thus will sustain the rejection of independent claims 1 and 17, as well as the
rejection of dependent claims 6 and 9-15, the patentability of which have not been
separately argued before the Board.3
While we carefully considered all of the arguments presented by the appellant in the
Briefs, they did not persuade us that this rejection should not be sustained. With regard to
the appellant’s argument that the Kwiatkowski snow guard is held in place by engagement
with upwardly protruding elements on the surface of the roof, whereas the appellant’s is
non-invasive, we observe that on page 10 of the appellant’s specification the invention is
described as including countersunk holes so that the snow guard can be secured to the
roof by invasive means such as fasteners. Moreover, there are no limitations in claims 1 or
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Application No. 08/813,359
See In re Self, 671 F.2d 1344, 213 USPQ 1 (CCPA 1982).4
17 that require that the snow guard be attached exclusively by non-invasive means or that
preclude the use of other means in addition to the adhesive. Likewise, the arguments that
Kwiatkowski does not place support members on both the front and the rear of the plate,
and that the plate must be attached to the lower portion of the base rather than the upper
portion, are not persuasive in that the appellant’s claims are not so specific. 4
Claims 2-4 stand rejected as being unpatentable over the combined teachings of
Kwiatkowski and McMullen. Claim 2, from which claims 3 and 4 depend, adds to claim 1
the requirement that the base comprise an “elevated, longitudinal, rib-receiving channel.”
McMullen is a design patent directed to a snow guard in which, as shown, the upstanding
plate is provided with a an elevated longitudinal channel. We do not agree with the
examiner’s position that it would have been obvious to one of ordinary skill in the art to add
this feature to the Kwiatkowski snow guard “for additional strength,” because it is
“essentially a corrugation,” and the use of corrugations was “well known in the construction
art” to provide additional stiffness and strength to a member (Answer, page 5). First of all,
the examiner has provided no evidence in support of this conclusionary statement.
Second, even if the statement is accepted for the truth of the assertions made therein,
McMullen teaches that the channel be placed in the upstanding plate and not in the base.
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Application No. 08/813,359
In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).5
We fail to perceive any teaching, suggestion or incentive which would have led one of
ordinary skill in the art to locate a longitudinal channel in the base of the Kwiatkowski
device, which already is provided with a series of lateral channels that form part of the
attaching means, for to do so would appear to complicate the structure of the device and
compromise its attachment to the disclosed roofing system, which would have been a
disincentive to the artisan. From our perspective, suggestion for this proposed
modification is found only in the hindsight afforded one who first viewed the appellant’s
disclosure, which is improper as a basis for a rejection. The rejection of claims 2-4 is not5
sustained.
Claim 7 adds to claim 1 (through claim 6) the requirement that the sides of the
upwardly projecting plate slope upward and inward, and claim 8 that the plate decreases in
thickness as it extends upward. Zaleski discloses a snow guard in which the plate clearly
has exactly that configuration (see Figures 2 and 6). In view of the fact that the appellant
has attached no criticality to the claimed shapes in his disclosure, it is our position that
they would have been matters of design choice well within the purview and the skill of the
artisan. The rejection of claims 7 and 8 is sustained.
CONCLUSION
The rejection of claims 1, 6, 9-15 17 is sustained.
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Application No. 08/813,359
The rejection of claims 2-4 is not sustained.
The rejection of claims 7 and 8 is sustained.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
nea/vsh
Appeal No. 1999-1082 Page 10
Application No. 08/813,359
JAMES C. WRAY
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