Ex parte Curry

Board of Patent Appeals and Interferences

Feb 26, 1998

07998673 (B.P.A.I. Feb. 26, 1998)

Application for patent filed December 30, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
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(2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PAUL CURRY

_____________
Appeal No. 96-1293
Application 07/998,6731
______________
ON BRIEF
_______________
Before MEISTER, FRANKFORT and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 96-1293
Application 07/998,673
Although the examiner has approved entry of this2
amendment, we note that it has not as of yet been clerically
entered. This oversight should be corrected in any further
prosecution of the application before the examiner.
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 7 and 9 through 19, which are all
of the claims remaining in this application. Claim 8 was
canceled in an entered amendment accompanying the appeal brief
filed June 28, 1995.2
Appellant's invention relates to a pre-assembled,
relocatable building structure. As noted on page 3 of the
specification, it is of importance to appellant that the building
structure be highly resistant to the effects of high velocity
winds. Claims 1, 2, 3, 13 and 14 are representative of the
subject matter on appeal and a copy of those claims, as they
appear in the Appendix to appellant's brief, is attached to this
decision.
Appeal No. 96-1293
Application 07/998,673
3
The prior art references of record relied upon by the
examiner as evidence of obviousness of the claimed subject matter
are:
Paul 3,229,431 Jan. 18, 1966
Ziegelman et al. (Ziegelman) 3,461,633 Aug. 19, 1969
Morton et al. (Morton) 3,717,965 Feb. 27, 1973
Misawa 3,719,015 Mar. 6, 1973
Patena 3,845,592 Nov. 5, 1974
Herndon 4,738,061 Apr. 19, 1988
Claims 1, 4 through 6 and 14 through 18 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Ziegelman in
view of Patena.
Claims 2, 3, 10 and 11 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Ziegelman in view of Patena as
applied to claim 1 above, and further in view of Paul.
Claim 19 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Ziegelman in view of Patena as applied to
claim 1 above, and further in view of Herndon.
Appeal No. 96-1293
Application 07/998,673
4
Claims 7, 9 and 12 stand rejected under 35 U.S.C. § 103
as being unpatentable over Ziegelman in view of Patena and Paul
as applied to claim 2 above, and further in view of Morton.
Claim 13 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Ziegelman in view of Patena as applied to
claim 1 above, and further in view of Misawa.
Reference is made to the final rejection (Paper No. 11,
mailed October 28, 1994) and to the examiner's answer (Paper
No. 17, mailed August 11, 1995) for the examiner's full reasoning
in support of the above-noted rejections and to appellant's
brief (Paper No. 16, filed June 28, 1995) and reply brief (Paper
No. 18, filed September 19, 1995) for appellant's arguments
thereagainst.
OPINION
Our evaluation of the obviousness issues raised in this
appeal has included a careful assessment of appellant's
specification and claims, the applied prior art references, and
the respective positions advanced by appellant and the examiner.
Appeal No. 96-1293
Application 07/998,673
5
As a consequence of our review, we have come to the conclusions
which follow.
Looking to the examiner's rejection of claim 1 under
35 U.S.C. § 103, we note that appellant has urged in the brief
that it would not have been obvious to one of ordinary skill in
the art at the time of appellant's invention to provide the pads
(28) of Ziegelman with holes through which bolts set in a
foundation can be inserted. We do not agree.
Like the examiner, we consider that when the collective
teachings of Ziegelman and Patena are viewed from the perspective
of the person of ordinary skill in the art at the time of
appellant's invention, it would have been obvious to such person
to provide holes in the flat steel pads (28) of Ziegelman so as
to facilitate the mounting of the prefabricated building
structure therein on a foundation like that taught and suggested
in Patena (e.g., in Figure 8). While it is true that Ziegelman
expressly notes that the pads (28) are provided to raise the
structure above the surface level of the ground "so that the site
need not be prepared for the structure in any special manner"
(col. 3, lines 66-69), we observe that such statement does not
Appeal No. 96-1293
Application 07/998,673
6
preclude the possibility that the building structure therein may
be placed on a prepared site where there is a pre-poured concrete
foundation to support the building structure as is taught and
suggested in Patena.
With regard to dependent claim 19 and the examiner's
rejection thereof based on Ziegelman, Patena and Herndon, we
again agree with the examiner that it would have been obvious to
one of ordinary skill in the art at the time of appellant's
invention to make the holes provided in the pads (28) of
Ziegelman following the teachings of Patena oversized with
respect to the bolt which is to be disposed therethrough so as
to allow for minor errors in the placement of the bolts in the
foundation member, as is clearly taught and suggested in Herndon
(at col. 3, lines 19-26, and Figure 2 wherein the slots 18 are
provided to ensure proper placement of the support posts 24
relative to the anchor bolts 20 extending upwardly from the
foundation).
As for dependent claims 4 through 6, which were
rejected along with claim 1 on the basis of the combined
Appeal No. 96-1293
Application 07/998,673
7
teachings of Ziegelman and Patena, appellant urges on page 11 of
the brief that these claims are patentable at least for the same
reasons as claim 1, and "further limitations which are not
apparent from the references." However, appellant does not
inform us of exactly what those further limitations are and how
they define the claimed subject matter over the applied prior
art. Accordingly, we find that appellant has not complied with
the requirements of 37 CFR § 1.192(c)(7) and (c)(8)(iv). The
result is that claims 4 through 6 have not been separately argued
with any reasonable degree of specificity and must therefore be
considered to fall with claim 1 from which they depend.
Dependent claim 18 is likewise treated in this same manner since
appellant has again not provided a separate argument directed to
this claim.
As regards dependent claims 14 through 17, these claims
address details of a "transporting means" with which the
transportable pre-assembled building structure of claim 1 may be
associated so as to be moved from the factory to the site
where it is to be located. However, as pointed out by the
examiner (answer, page 4) claim 1 on appeal is directed to a
pre-assembled, relocatable building structure per se which "can
Appeal No. 96-1293
Application 07/998,673
8
be transported on transport means in a completed form" (claim 1,
line 3, emphasis added), not to the combination of a building
structure and a transport means as appellant seems to believe.
Thus, the recitation of the details of the transporting means in
claims 14 through 17 does not further limit or define the
building structure itself in any patentable sense, except to the
extent that the building structure must be capable of use with a
transport means like that set forth in claims 14 through 17.
Since it is clear to us that the pre-assembled, relocatable
building structure of the combination of Ziegelman and Patena is
capable of use with a transport means like that set forth in
claims 14 through 17, it follows that these claims do not add
anything to the claimed building structure which is not also
found in Ziegelman as modified by Patena. Accordingly, the
examiner's rejection of claims 14 through 17 will be sustained.
Based on a consideration of the foregoing, we are
led to conclude that the examiner has made out a proper case of
obviousness with regard to the subject matter of appellant's
claims 1, 4 through 6 and 14 through 19 on appeal. Accordingly,
Appeal No. 96-1293
Application 07/998,673
9
we will sustain the examiner's rejections of these claims under
35 U.S.C. § 103.
Turning next to the examiner's rejection of claims 2,
3, 10 and 11 under 35 U.S.C. § 103 as being unpatentable over
Ziegelman, Patena and Paul, we must agree with the examiner that
based on the combined teachings of the applied references it
would have been obvious to one of ordinary skill in the art at
the time of appellant's invention to make the T-shaped securement
extrusions and encapsulating means (48) of Ziegelman Figure 3 of
metal, as required in appellant's claim 2 on appeal. It is
apparent to us that the securement extrusions and encapsulating
means (48) of Ziegelman Figure 3 are associated with the wall and
roof structures therein for enclosing the edges of panels (e.g.,
40) which form a part of such wall and roof structures, and
further that they are utilized in a manner which will prevent
direct contact of the panel edges with high velocity winds and
prevent entry of such winds into the openings between the panels
and their associated framing members (e.g., 18 or 16). In this
regard, we particularly note the sealing gaskets (52) of the
T-shaped extrusions in Ziegelman.
Appeal No. 96-1293
Application 07/998,673
10
However, regarding appellant's claim 3 on appeal, we do
not see that the applied references to Ziegelman, Patena and Paul
would have been suggestive of "a plurality of elongate
horizontally extending metal plates which are each permanently
fixed to the top horizontal surface of a side beam" of a building
structure, as required in that claim. The plates referred to in
claim 3 are seen in Figures 4 and 5 of the application drawings
as elements (112). In Paul, the plates (21) pointed to by the
examiner, like the pads (28) of Ziegelman and the mounting plates
(26) of Patena, are positioned at and welded to the base of the
column or post members of the building structure and not to the
top surface of a side beam of the building structure as set
forth in appellant's claim 3. Thus, the examiner's rejection
of claim 3 will not be sustained.
Claims 10 and 11, like claims 4 through 6 and 18 above,
have not been separately argued by appellant with any reasonable
degree of specificity and must therefore be considered to fall
with claim 2 from which they depend. We note, however, that the
T-shaped extrusions and encapsulating means (48) of Ziegelman
Figure 3 clearly appear to provide the channels as required in
claims 10 and 11 on appeal.
Appeal No. 96-1293
Application 07/998,673
11
Looking to the examiner's rejection of claims 7, 9 and
12 under 35 U.S.C. § 103, we share the examiner's view that it
would have been obvious to one of ordinary skill in the art at
the time of appellant's invention to utilize an elastomeric
membrane sheet type roofing material, as taught in Morton (at
62), as the roofing material in a building structure like that of
Ziegelman, and thus arrive at the subject matter of appellant's
claim 7 on appeal. However, we do not find in the teachings of
Ziegelman, Patena, Paul and Morton any suggestion of the
particular structures defined in appellant's claims 9 and 12 on
appeal. There is simply no teaching or suggestion in these
references of an encapsulating bracket which is "disposed over
the top of a [sic] angled portion [of a roof] in a manner which
encloses a free edge portion of . . . elastomeric membrane sheet
type
roofing material," as in claim 9 on appeal, or of an inverted
V-shaped bracket "which is disposed along the ridge of the roof"
as in claim 12 on appeal. Accordingly, the examiner's rejection
of claim 7 is sustained, but the rejection of claims 9 and 12
under § 103 is not sustained.
Appeal No. 96-1293
Application 07/998,673
12
The last of the examiner's rejections for our
consideration is that of claim 13 under 35 U.S.C. § 103 as being
unpatentable over the collective teachings of Ziegelman, Patena
and Misawa. The structure defined in claim 13 on appeal is found
in Figure 15 of appellant's drawings and relates to the elongate
bolts (20) and the wooden blocks (22) seen therein which are used
to attach a concrete slab or patio to the building structure.
Suffice it to say that there is absolutely nothing in the applied
references which in any way whatsoever discloses or suggests the
subject matter of claim 13 on appeal. The examiner's reference
to the terrace (19b) of Misawa is entirely unavailing, and the
examiner's rejection of claim 13 under 35 U.S.C. § 103 will not
be sustained. We note however that given appellant's disclosure
(at page 19), it is difficult to see how the concrete slab or
patio set forth in claim 13 can be considered to be part of the
"pre-assembled, relocatable building structure" as defined in
claim 1 on appeal. The examiner may wish to inquire about this
issue in any further prosecution of the application.
To summarize our decision:
Appeal No. 96-1293
Application 07/998,673
13
The examiner's rejection of claims 1, 4 through 6 and
14 through 18 under 35 U.S.C. § 103 as being unpatentable over
Ziegelman in view of Patena is sustained.
The rejection of claims 2, 3, 10 and 11 under 35 U.S.C.
§ 103 as being unpatentable over Ziegelman in view of Patena
taken further in view of Paul is sustained with regard to
claims 2, 10 and 11, but reversed as to claim 3.
The rejection of claim 19 under 35 U.S.C. § 103 as
being unpatentable over Ziegelman in view of Patena as applied to
claim 1 and further in view of Herndon is sustained.
The rejection of claims 7, 9 and 12 under 35 U.S.C.
§ 103 based on Ziegelman in view of Patena, Paul and Morton is
sustained as to claim 7, but is reversed as to claims 9 and 12.
The rejection of claim 13 under 35 U.S.C. § 103 as
being unpatentable over Ziegelman in view of Patena and Misawa is
reversed.
Appeal No. 96-1293
Application 07/998,673
14
The decision of the examiner is accordingly affirmed-
in-part.
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Ronald P.Kananen
Marks and Murase
Suite 750
2001 L Street, N.W.
Washington, D.C. 20036
Appeal No. 96-1293
Application 07/998,673
- A1 -
APPENDIX
1. A pre-assembled, relocatable building structure
which is highly resistant to the effect of high velocity winds,
which can be transported on transport means in a completed form
and which can be set on foundation members, comprising:
a metallic skeleton formed of a plurality of pairs of
vertically extending metallic column members, longitudinally
extending metallic side beam members and laterally extending
metallic cross beam members, said side beam and cross beam
members being permanently connected to said column members at a
level proximate the lower end thereof, said skeleton further
including a plurality of angled portions, each of said angled
portions being permanently connected to the upper ends of a pair
of said column members;
a plurality of horizontally extending anchor pads which
are each permanently secured to a bottom of a column member, each
anchor pad being formed with a hole through which a bolt which is
set in a foundation member and which extends vertically upward,
can be inserted, said anchor pads being arranged to seat on said
foundation members and to elevate said side beam members so as to
define a small clearance between the lower surface of said side
beam members and the upper surface of said foundation members;
a flooring structure supported on said side and cross
beam members;
a wall structure disposed between said vertically
extending column members,
a roof structure disposed between said angled portions;
and
encapsulating means for sealing off openings which are
defined between panels and into which high velocity winds can
force their way and produce pneumatic forces which pry panels
away from their positions.
Appeal No. 96-1293
Application 07/998,673
- A2 -
2. A pre-assembled, relocatable building structure as
claimed in claim 1, wherein said encapsulating means comprises
metal encapsulating bracket means associated with said wall and
roof structures for enclosing edges of panels which form a part
of said wall and roof structures and for preventing direct
contact of the edges with high velocity winds and for preventing
the entry of high velocity winds into the openings between the
panels in a manner which produces said pneumatic forces.
3. A pre-assembled, relocatable building structure as
claimed in claim 1, further comprising a plurality of elongate
horizontally extending metal plates which are each permanently
fixed to the top horizontal surface of a side beam, said metal
plates supporting headers and the ends of floor joists which form
part of said floor structure.
13. A pre-assembled, relocatable building structure as
claimed in claim 1, further comprising:
an elongate bolt which is disposed through a side beam
and which is arranged to extend out of one side of the building
structure;
a wooden block which is disposed about said bolt and
located proximate an outboard side of the side beam through which
the bolt is disposed; and
a concrete slab which is formed on the ground adjacent
a foundation member and immediately beside the building
structure, said wooden block and a substantial portion of said
elongate bolt being buried in said concrete slab, said concrete
slab being effective as a patio or a car park.
14. A pre-assembled, relocatable building structure as
claimed in claim 1, said transporting means comprises:
a plurality of metal beams which can be disposed
beneath the housing structure;
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Application 07/998,673
- A2 -
a wheeled carriage which can be detachably connected
the rear ends of said metal beams; and
connector means for connecting the forward ends of said
metal beams to a prime mover.