Ex Parte Collister et al

Board of Patent Appeals and Interferences

Apr 23, 2012

11199747 (B.P.A.I. Apr. 23, 2012)

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

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Application 11/199,747

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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.
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Application 11/199,747

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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.
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Application 11/199,747

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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.
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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
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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).
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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
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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
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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.
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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

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