Ex Parte Collins

Board of Patent Appeals and Interferences

Feb 9, 2007

10444736 (B.P.A.I. Feb. 9, 2007)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEONARD COLLINS
____________

Appeal No. 2006-3370
Application No. 10/444,736
____________

ON BRIEF
____________

Before THOMAS, RUGGIERO, and BLANKENSHIP, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. ' 134 from the examiner=s final
rejection of claims 1, 5-7, and 9-12, which are all the claims remaining in the application.
We affirm.
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BACKGROUND
The invention relates to a tool for placing furring strips during construction.
Representative claims 1 and 7 are reproduced below.
1. A precision strapping device comprising:

an elongated body member having a first end, a second end and a middle
portion;

wherein said first end of said elongated body has an abutment shoulder;

wherein said abutment shoulder has a first arm extending perpendicular to
said longitudinal direction of said elongated body member;

wherein said abutment shoulder has a second arm extending half a width
of a standard furring strip in a same longitudinal direction of said elongated body
member beyond said first arm of said abutment shoulder;

wherein said second end has a cradle having a middle point, a primary
arm, and a secondary arm;

said primary arm and said secondary arm extend perpendicular to said
longitudinal direction of said elongated member

wherein a distance between said middle point of said cradle and the end
of said second arm of said abutment shoulder is equal to a standard distance
between standard furring strips;

wherein a distance between said primary and said secondary arm of said
cradle is equal to said distance of said standard furring strip.
7. Device of claim 1 wherein:

said elongated body has a handle extending perpendicular to said
longitudinal direction of said elongated body.

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Application No. 10/444,736

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The examiner relies on the following references:
Jondole US 2,744,334 May 8, 1956

Williams US 4,237,614 Dec. 9, 1980

Payne US 5,490,334 Feb. 13, 1996

I. Claims 1, 5-7, 9, 11, and 12 stand rejected under 35 U.S.C. ' 103 as being
unpatentable over Payne and Williams.
II. Claims 7, 9, and 10 stand rejected under 35 U.S.C. ' 103 as being
unpatentable over Payne, Williams, and Jondole.
We refer to the Final Rejection (mailed Jul. 14, 2004) and the Examiner=s Answer
(mailed Dec. 9, 2005) for a statement of the examiner=s position and to the Brief (filed
Aug. 17, 2005) for appellant=s position with respect to the claims which stand rejected.

OPINION
At the outset, we observe that instant claim 1 (with claims 5-7, 9, and 10
depending) could have been rejected under 35 U.S.C. ' 112, second paragraph as
being indefinite, in that Asaid distance of said standard furring strip@ lacks proper
antecedent basis in the claim. The error appears to have been introduced by an
amendment filed June 1, 2004, in which appellant changed the claim 1 recitation of Ahalf
a distance of a standard furring strip@ to Ahalf a width of a standard furring strip,@ without
changing the last occurrence of Asaid distance@ in the claim. In this decision on appeal,
however, we will consider all of, but only, the arguments that appellant provides in
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support of the position that the examiner has erred in the applied rejections over the
prior art.
Further, for reasons that are not apparent in this record, appellant seems to use
the terms Afurring strip@ and Afurring strap@ interchangeably in the written description and
in the claims. For example, instant claim 11 recites Aplacing a proximal furring strip
within said cradle@ in one line, and in the next recites Asecuring said proximal furring
strap [sic] onto support structure,@ which would appear to raise another issue regarding
lack of antecedent basis in the claims. For the purposes of this appeal, we will assume
that Afurring strip@ and Afurring strap@ are synonymous, but we will refer to the structure
by the commonly accepted term of Afurring strip.@
In response to the rejection of claims 1, 5-7, 9, 11, and 12 under 35 U.S.C. ' 103
as being unpatentable over Payne and Williams, appellant begins (Brief at 5-6) by
contesting the examiner=s finding that the top flanges of the Payne device as depicted in
the drawings meet the requirements of a Ahandle@ as claimed. Appellant does not
allege error in the finding of a motivation to combine the references1 ; i.e., that the
artisan would have been motivated to apply the standard furring strip dimensions as
taught by Williams to the orthogonal framing tool as taught by Payne.

1 The presence or absence of a motivation to combine references in an obviousness
determination is a pure question of fact. In re Gartside, 203 F.3d 1305, 1316, 53 USPQ2d 1769, 1776
(Fed. Cir. 2000).
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Appellant=s general argument concerning the Ahandle,@ in the claims that are
rejected over Payne and Williams, only corresponds to the requirements of dependent
claim 7. Claim 7 also stands rejected over Payne, Williams, and Jondole, in the second
ground of rejection. Jondole teaches a handle 27, even if we were to find that Payne
fails to teach a handle.
In any event, we agree with the examiner that the topmost flanges of the Payne
tool, as shown in Figures 3 and 4, is a handle for all that claim 7 requires. We disagree
with appellant=s assessment (Brief at 6) that Figures 1 and 2 of Payne show the
operator=s hands wrapped entirely around the elongated body member, and not utilizing
the Atop flanges@ in any manner whatsoever. In view of the examiner=s reading of the
claims on the Payne device, the operator=s hands in Figures 1 and 2 of the reference do
not contact the recessed portions of the elongated body member, but contact the
flanges that extend perpendicular to the longitudinal direction of the elongated body, the
flanges being consistent with the structural requirements of instant claim 7.
Appellant=s only additional argument in response to the first ground of rejection is
that both Payne and Williams disclose tools that require a predecessor member (e.g.,
an existing stud or furring strip) while appellant=s invention does not. Although appellant
submits this to be an Aimportant structural aspect@ of the invention (Brief at 7-8), the
device set forth by representative claim 1 is silent with respect to the existence or non-
existence of predecessor members. Appellant does not point out, in response to the
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examiner=s rejection, language that might be thought to limit the scope of the claims to
the argued feature.
The claims measure the invention. SRI Int=l v. Matsushita Elec. Corp., 775 F.2d
1107, 1121, 227 USPQ 577, 585 (Fed. Cir. 1985) (en banc). We conclude that
appellant=s argument is based on an unclaimed feature, and thus not relevant in the
determination of whether a prima facie case of obviousness has been established with
respect to representative claim 1.
With respect to the second ground of rejection, appellant argues that the
dimension of eight inches is critical in instant claim 10, which specifies dimensions of
the handle set forth by claim 7. For support, appellant refers to the instant specification
(at 4, ll. 13-15), which recites that Aexact lengths are essential to the invention.@
We find that the specification does state that A[t]he exact lengths are essential to
the invention@ at the noted section, but that the Aexact lengths@ are not referring to the
handle dimensions. Appellant has not demonstrated error in the conclusion of prima
facie obviousness of the subject matter of representative claim 10, nor shown any
criticality with respect to handle dimensions.
We have considered all of appellant=s arguments but are not persuaded of error
in the rejections. We therefore sustain the rejection of claims 1, 5-7, 9, 11, and 12
under 35 U.S.C. ' 103 as being unpatentable over Payne and Williams and the rejection
of claims 7, 9, and 10 under 35 U.S.C. ' 103 as being unpatentable over Payne,
Williams, and Jondole.
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CONCLUSION
The rejection of claims 1, 5-7, and 9-12 under 35 U.S.C. ' 103 is affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR ' 1.136(a). See 37 CFR ' 1.136(a)(1)(iv).

AFFIRMED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2006-3370
Application No. 10/444,736

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Jason Bryan
Lambert & Associates
92 State Street
Boston, MA 02109-2004