Ex Parte Collister et alDownload PDFBoard of Patent Appeals and InterferencesApr 23, 201211199747 (B.P.A.I. Apr. 23, 2012) 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. 11/199,747 08/09/2005 Kenneth F. Collister 225756-130101 2576 44200 7590 04/23/2012 HONIGMAN MILLER SCHWARTZ & COHN LLP 350 East Michigan Avenue Suite 300 Kalamazoo, MI 49007-3800 EXAMINER KOSANOVIC, HELENA ART UNIT PAPER NUMBER 3749 MAIL DATE DELIVERY MODE 04/23/2012 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 KENNETH F. COLLISTER and BRENDEN J. JONES ____________ Appeal 2011-010816 Application 11/199,747 Technology Center 3700 ____________ Before LINDA E. HORNER, STEFAN STAICOVICI, and CHARLES N. GREENHUT, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010816 Application 11/199,747 2 STATEMENT OF THE CASE Kenneth F. Collister and Brenden J. Jones (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-20. We have jurisdiction over this appeal under 35 U.S.C. § 6.1 THE INVENTION Appellants’ invention is drawn toward a ridge vent for a roof that contains a biocidal source to prevent growth of unwanted biological material such as moss, mold, bacteria, and fungus. Spec. 1, ¶ [0002] and fig. 1. In use, the biocidal source is disposed downstream of the ridge vent such that water running off the ridge contacts the biocidal source before continuing down the roof. Spec. 3, ¶ [0011]. Claim 1 is illustrative of the claimed invention and reads as follows: 1. An improved ridge vent assembly for mounting on a roof comprising: at least one vent support adapted to be disposed on the roof, the support extending from a bottom end to a top end; a vent cover attached to the top end of the support such that the cover extends over the roof; a housing adjacent the vent cover; a biocidal source carried by the housing; and a concealing structure disposed adjacent the biocidal source and composed of material different from the biocidal source to minimize visibility of the ridge vent assembly and conceal the biocidal source. 1 This is Appellants’ second appeal before the Board of Patent Appeals and Interferences. In the first appeal (2009-004321, Decision mailed September 11, 2009) (hereafter “Decision”), the Examiner’s decision to reject claims 1-20 was reversed. Appeal 2011-010816 Application 11/199,747 3 THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Smith US 3,311,047 Mar. 28, 1967 Nielsen US 4,276,732 Jul. 7, 1981 Trostle US 4,643,080 Feb. 17, 1987 Tubbesing US 5,052,286 Oct. 1, 1991 Headrick US 2001/0019941 A1 Sep. 6, 2001 The following rejections are before us for review: The Examiner rejected claims 1-8, 10, 11, and 18-20 under 35 U.S.C. § 103(a) as unpatentable over Headrick and Nielsen. The Examiner rejected claims 10 and 11 under 35 U.S.C. § 103(a) as unpatentable over Trostle and Nielsen.2 The Examiner rejected claims 12-16 under 35 U.S.C. § 103(a) as unpatentable over Trostle, Nielsen, and Smith. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as unpatentable over Headrick, Nielsen, and Tubbesing. The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as unpatentable over Trostle, Nielsen, Smith, and Tubbesing. SUMMARY OF DECISION We AFFIRM-IN-PART. 2 The Examiner has withdrawn the rejection of claims 12-16 under 35 U.S.C. § 103(a) as unpatentable over Trostle and Nielsen. Ans. 11. See also, Reply Br. 3. Appeal 2011-010816 Application 11/199,747 4 ANALYSIS The obviousness rejections over Headrick or Trostle and Nielsen Appellants argue the rejection under 35 U.S.C. §103(a) of claims 1-8, 10, 11, and 18-20 over Headrick and Nielsen together as a group. App. Br. 8. Therefore, in accordance with 37 C.F.R. 41.37(c)(1)(vii)(2011), we have selected claim 1 as the representative claim to decide the appeal, with claims 2-5, 7, 8, 10, 11, 18, and 19 standing or falling with claim 1. In view of Appellants’ arguments, we will address the rejection of claims 6 and 20 separately. Similarly, Appellants argue the rejection under 35 U.S.C. §103(a) of claims 10 and 11 over Trostle and Nielsen together as a group. App. Br. 9. Therefore, we have selected claim 10 as the representative claim to decide the appeal, with claim 11 standing or falling with claim 10. The Examiner found that Headrick discloses all the limitations of independent claim 1, with the exception of a biocidal source. Ans. 5. Similarly, with respect to Trostle, the Examiner found that Trostle discloses all the limitations of independent claim 10, with the exception of a biocidal source. Ans. 6. The Examiner then turned to Nielsen to show a plastic housing 10 (trough) having a concealing structure 46 (outer surface of trough 10) with drain holes 44 and sheets of a biocidal source, such as zinc, dispersed therein. Ans. 5 and 6. See also, Nielsen, col. 3, ll. 5-6 and 34-39; col. 4, ll. 5-6; and fig. 1. The Examiner concluded that it would have been obvious to a person of ordinary skill in the art to modify the device of either Headrick or Trostle to include the biocidal source of Nielsen in order to provide electrolytes “for killing moss on rooftops.” Ans. 5. See also, Ans. 6. Appeal 2011-010816 Application 11/199,747 5 Appellants argue that the Examiner has not provided an adequate reasoning with rational underpinnings to combine the teachings of Headrick or Trostle and Nielsen. App. Br. 8 and 9. See also, Reply Br. 2. According to Appellants: Headrick does not teach a biocidal source or where to put biocidal material so that it is effective and concealed. Nielsen fails to teach a ridge vent. App. Br. 8. Trostle does not teach a biocidal source or where to put biocidal material so that it is effective and concealed. Nielsen fails to teach a ridge vent. App. Br. 10. At the outset, we are not persuaded by Appellants’ arguments because Appellants appear to be attacking the teachings of Headrick, Trostle, and Nielsen individually. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). See also, Ans. 10 and 11. Furthermore, in contrast to Appellants’ position, we find that the Examiner has provided a reason with rational underpinning (“killing moss on rooftops”). See Ans. 5 and 6; In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). To provide the biocidal source of Nielsen to the rooftop ridge vents of Headrick and Trostle as proposed by the Examiner, would improve the rooftops of Headrick and Trostle in the same manner as the biocidal source improves the rooftop of Nielsen, namely, providing Appeal 2011-010816 Application 11/199,747 6 electrolytes to kill the moss on the rooftops. See KSR, 550 U.S. at 417 (stating “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Thus, the Examiner’s articulated reason for the modification has rational underpinning. As such, the rejection of claim 1, and claims 2-5, 7, 8, 10, 11, and 18, and 19 standing or falling with claim 1, over Headrick and Nielsen is sustained. Similarly, the rejection of claim 10, and claim 11 standing or falling with claim 10, over Trostle and Nielsen is likewise sustained. With respect to the rejection of claims 6 and 20, Appellants argue that, “[t]here is no teaching in Headrick that slotted wall 20 could even remotely function as a diverter3.” App. Br. 8. Although we appreciate that Headrick does not specifically use the term “diverter,” what a reference teaches or suggests must be examined in the context of the knowledge, skill, and reasoning ability of a skilled artisan. What a reference teaches a person of ordinary skill is not limited to what a reference specifically “talks about” or what is specifically “mentioned” or “written” in the reference. Syntex (U.S.A.) LLC v. Apotex, Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005). In this case, Appellants’ Specification describes diverter 36 as being “angled” and providing a path for water flowing off cover 20 onto base 34 and roof 14. Spec. 8, para. 27 and Spec. 9, para. 28 and fig. 1. Similarly, slotted wall 20 of Headrick is “angled” and provides a path for rainwater to spill from 3 An ordinary and customary meaning of the term “divert” is “to turn from one course or use to another: DEFLECT.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). Appeal 2011-010816 Application 11/199,747 7 central panel 12 into the drain trough and through weep holes 25 to escape onto the roof to be drained away. Headrick, para. 27 and figs. 2 and 7. Thus, since slotted wall 20 of Headrick is angled and changes the course of the flowing rainwater, slotted wall 20 also extends the flow path of the water. Hence, we agree with the Examiner that slotted wall 20 of Headrick constitutes a “diverter,” as called for by claims 6 and 20. Thus, we shall also sustain the rejection of claims 6 and 20 over the combined teachings of Headrick and Nielsen. The obviousness rejections over Trostle, Nielsen, and Smith and over Trostle, Nielsen, Smith, and Tubbesing The Examiner found that Trostle as modified by Nielsen discloses a structure for use with a roofing ridge vent including a housing 44, 40, 34 (base 40, a first end 34, and a second end 44) and a biocidal source. Ans. 5- 6. The Examiner further found that although Trostle and Nielsen do not disclose a diverter, as called for by claim 12, Smith describes a round ridge vent assembly having a diverter 22a. Ans. 7. The Examiner concluded that [i]t would have been obvious to one of ordinary skill in the art at the time of the invention to substitute the Smith round ridge vent assembly and diverter for that of Trostle … because the substitution of one known element for another would have yielded predictable results of protecting the interior of the roof from water. Id. Appellants argue that cover 22a of Smith does not constitute a diverter because it does not direct water off the ridge vent. Reply Br. 4. According Appeal 2011-010816 Application 11/199,747 8 to Appellants, “the combination is not obvious because there is no rationale for the combination.” App. Br. 10. We agree. The Examiner’s proposed modification of the modified Trostle structure to include cover 22a (diverter) of Smith is not clear. If the Examiner is proposing to substitute Smith’s round ridge vent assembly and diverter 22a for Trostle’s top part 14 (top parts 16, 18; outer sides 22, 24; louvered panels 26, 28), the Examiner does not provide any support for the allegation that in contrast to top part 14a of Trostle, the inclusion of Smith’s cover 22a would prevent water from entering the ridge vent. As far as we can tell, top part 14a of Trostle likewise prevents water from entering the ridge vent. As such, we find that the Examiner’s proposed substitution of Trostle and Nielsen to include cover 22a (diverter) of Smith would be redundant and as such would not have been obvious to the person of ordinary skill in the art. If, on the other hand, the Examiner is proposing to somehow include cover 22a of Smith in the housing 44, 40, 34 of the modified Trostle structure, we find that such a modification would require further modification to the structure of Trostle and the Examiner has not provided any findings to show how to incorporate the cover 22a of Smith into the housing 44, 30, 34 of Trostle. Absent hindsight, we fail to see why one having ordinary skill in the art would have been led to modify the housing of Trostle in the manner claimed. Thus, the Examiner has not made the initial factual findings required to demonstrate a prima facie case of obviousness of independent claim 22. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (the examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to Appeal 2011-010816 Application 11/199,747 9 speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis). Hence, we cannot sustain the rejection of claim 12, and its dependent claims 13-16, under 35 U.S.C. § 103(a) as unpatentable over Trostle, Nielsen, and Smith. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988). With respect to claim 17, the addition of Tubbesing does not remedy the deficiencies of Trostle, Nielsen, Smith as described supra. As such, by virtue of its dependency from claim 12, the rejection of claim 17 over the combined teachings of Trostle, Nielsen, Smith, and Tubbesing likewise cannot be sustained. The obviousness rejection over Headrick, Nielsen, and Tubbesing Appellants first argue that the Examiner has not provided an adequate reasoning with rational underpinnings to combine the teachings of Headrick and Nielsen. App. Br. 11-12. Reply Br. 5-6. However, as shown above, we find that the Examiner has provided a reason with rational underpinning (“killing moss on rooftops”). See Ans. 5 and 6. Thus, the Examiner’s articulated reason for the modification has rational underpinning. Appellants then merely state that “it is an even bigger stretch to propose adding the grate of Tubbesing.” App. Br. 12. Appellants’ conclusory assertion ignores and fails to point out the error in the rationale provided by the Examiner, namely, “to prevent nesting insects or debris.” See Ans. 8. See also, Tubbesing, col. 6, ll. 52-53. As such, for the foregoing reasons, we shall sustain the rejection of claim 9 over the combined teachings of Headrick, Nielsen, and Tubbesing. Appeal 2011-010816 Application 11/199,747 10 Finally, regarding Appellants’ argument that the Examiner improperly reopened prosecution (see App. Br. 5-7 and Reply Br. 2), we note that the decision to reopen prosecution is a petitionable matter, not an appealable matter, and is not within the jurisdiction of the Board. See MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) §§ 1002.02(c)(1) and 1201. See also, In re Mindick, 371 F.2d 892, 894 (CCPA 1967). SUMMARY The decision of the Examiner is affirmed as to claims 1-11 and 18-20 and reversed as to claims 12-17. 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 mls Copy with citationCopy as parenthetical citation