Ex Parte diGirolamo et al

Board of Patent Appeals and Interferences

Oct 30, 2008

10095411 (B.P.A.I. Oct. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDWARD R. DIGIROLAMO and MICHAEL L. TORRES
____________

Appeal 2008-4486
Application 10/095,411
Technology Center 3600
____________

Decided: October 31, 2008
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and STEFAN
STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Edward R. diGirolamo et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1-3, 5-6, 10, 22, 24, and
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Application 10/095,411

26. Claims 4, 7, 8, 11-21, and 23 have been canceled.1 We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
The Appellants’ invention is drawn towards a connector 10 including
a connecting plate 12 having a plurality of openings 14, a base plate 16
connected to the connecting plate 12 along a juncture 24 and having a
central opening 20, openings 22, reinforcing ribs 18 that extend
perpendicular to the juncture 24, and an upturned flange 26 opposite the
juncture 24 (Spec. 4, ll. 10-11 and 15-17; Spec. 5, ll. 10-11; and fig. 1A).
The connector 10 further includes a reinforcing block 28 having a plurality
of recesses 30 that are designed to receive and mate with the reinforcing ribs
18 (Spec. 6, ll. 6-8 and fig. 2C).
Claim 1 is representative of the claimed invention and reads as
follows:

1. A connector for securing a metal stud to a support
structure, comprising:

a generally flat connecting plate for connecting to the
stud;

a base plate extending from the connecting plate at a
selected angle for connecting to the support structure;

1 Claims 9, 25, and 27 are objected to by the Examiner as being
dependent upon a rejected base claim and otherwise indicated as being
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claim (Ans. 6). Claim 9, 25, and 27 are
not part of the instant appeal.
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a juncture defined between the connecting plate and the
base plate;

a series of spaced apart ribs formed in the base plate and
extending generally perpendicular to the juncture;

the base plate having a bent upturned flange;

a reinforcing block for resting on the base plate; and

the reinforcing block having a plurality of rib recesses
that mate with the underlying ribs formed in the base
plate.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:

Lilley US 4,691,491 Sep. 8, 1987
Anderson US 5,042,615 Aug. 27, 1991

The following rejections are before us for review:
Claims 1, 5-6, and 10 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Anderson.
Claims 22 and 26 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Lilley.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderson.
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Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Lilley.
The Examiner provides reasoning in support of the rejections in the
Answer (mailed May 22, 2007). The Appellants present opposing
arguments in the Appeal Brief (January 9, 2007) and the Reply Brief (filed
September 12, 2006).

OPINION
The anticipation rejection based upon Anderson
Appellants argue all the claims rejected under 35 U.S.C. § 102(b)
together as a group. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii), we have selected claim 1 as the representative claim to
decide the appeal of the anticipation rejection, with claims 5, 6, and 10
standing or falling with claim 1.
We find that Anderson discloses a pump jack pole (connector) formed
by a metal tubing 32 having two parallel lateral walls (connecting plate and
bent upturned flange) perpendicular to a facing wall 46 (base plate) with
outwardly extending elongated protrusions 40 (ribs) that mate with recesses
50 of rubber strip 34 (reinforcing block) (col. 3, ll. 3-8, 26-33, and 50-55 and
fig. 3). The facing wall 46 (base plate) includes openings for rivets 60 to
connect the rubber strip 34 (reinforcing block) to the facing wall 46 (base
plate) (col. 3, ll. 63-66 and fig. 7).
The Appellants’ arguments as to why Anderson does not anticipate
claim 1 are that Anderson does not disclose: (1) a series of spaced apart ribs
“extending generally perpendicular” to the juncture (App. Br. 6); (2) a
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“reinforcing block” (App. Br. 7); and (3) a connecting plate connected to a
stud (App. Br. 8).
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). It is not necessary that the reference teach what
the subject application teaches, but only that the claim read on something
disclosed in the reference, i.e., that all of the limitations in the claim be
found in or fully met by the reference. Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772 (Fed. Cir. 1983).
The Appellants first argue that the ribs 40 of Anderson “extend
parallel – not perpendicular to the juncture,” as required by claim 1 (Reply
Br. 2). In response, the Examiner correctly points out that the “juncture is
formed between the connecting plate (32) and the base plate (46)” (Ans. 7).
The Examiner then explains that because ribs 40 are perpendicular to the
base plate 46 and the base plate 46 is perpendicular to the juncture, the ribs
40 are also perpendicular to the juncture (Ans. 7). We agree. As shown
below in the modified partial reproduction of Figure 3 of Anderson the
juncture as defined by the Examiner extends in the Z-direction while the ribs
40 are spaced along the Y-direction and extend in both the X and the Z -
directions.

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Y
X
Z
The modified partial reproduction of Figure 3 of Anderson depicts the
pump jack pole (connector) of Anderson in an orthogonal system of
coordinates X, Y, Z.
While the Appellants correctly point out that the ribs 40 extending in
the Z-direction are parallel to the juncture rather than perpendicular, the
Examiner is also correct that in addition to the Z-direction the ribs also
extend in the X-direction. Since the juncture extends in the Z-direction
and the ribs extend in the X-direction the ribs 40 extend “generally
perpendicular to the juncture,” as required by claim 1. We must be careful
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not to read a particular embodiment appearing in the written description
into the claim if the claim language is broader than the embodiment. See
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (“Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim. For example,
a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the embodiment.”)
The challenge is to interpret claims in view of the specification without
unnecessarily importing limitations from the specification into the claims.
See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003). In conclusion, because the claim language is broad enough to
encompass ribs that extend along their minor axis (the X-direction)
perpendicular to the juncture, Anderson teaches ribs that extend
perpendicular to the juncture, as required by claim 1.
With respect to the Appellants’ second argument, the Appellants
contend that the rubber pad 34 of Anderson does not constitute a
“reinforcing block” (App. Br. 7). We disagree. Accepting the Appellants’
proffered definition of “reinforcing” to mean “[t]o strengthen by adding
extra support or material” (Exhibit 2 of the Appeal Brief filed December 20,
2004), we find that one ordinarily skilled in the art would consider the
rubber pad 34 to constitute a “reinforcing block,” as required by claim 1.
The rubber pad 34 represents extra material that is added such that the cross-
section of the pump jack pole (connector) of Anderson is increased, thereby
providing increased strength. Although the Appellants are correct to point
out that the rubber pad of Anderson is utilized to grip the pole (App. Br. 7),
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this does not alter the fact that the rubber pad satisfies the limitation of a
“reinforcing block.” Anticipation does not require that the reference teach
what the subject application teaches, but only that the claim read on
something disclosed in the reference, i.e., that all of the limitations in the
claim be found in or fully met by the reference. Kalman v. Kimberly-Clark
Corp., 713 F.2d 760, 772 (Fed. Cir. 1983)
With regard to the Appellants’ third argument that Anderson does not
disclose a connecting plate connected to a stud (App. Br. 8) we agree with
the Examiner that claim 1 does not require a stud (Ans. 8). Claim 1 merely
requires a connecting plate and does not include a positive recitation of a
stud. We find the Appellants’ argument to be functional in nature. While
features of an apparatus may be recited either structurally or functionally,
claims directed to an apparatus must be distinguished from the prior art in
terms of structure rather than function. In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997). In this case a functional limitation is used in
association with the connecting element to define the capability of the
connecting plate to be connected to a stud. Therefore, as long as the
connecting plate 32 of Anderson is capable of being connected to a stud,
Anderson satisfies the limitation.
For the foregoing reasons, the Appellants’ arguments do not persuade
us that the Examiner erred in rejecting claim 1, and claims 5, 6, and 10
standing or falling with claim 1, as anticipated by Anderson. Accordingly,
the rejection of claim 1, and claims 5, 6, and 10 standing or falling with
claim 1, is sustained.

The anticipation rejection based upon Lilley
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We find that Lilley discloses a roofing structure including a plurality
of rails 10 (studs) that are connected to a plurality of sheets 4 (supporting
structure) using a plurality of U-shaped brackets 6 (connectors), fasteners 8,
and washers (reinforcing member) (col. 2, ll. 18-27 and fig. 1). The U-
shaped bracket 6 (connector) includes a base (base plate) having openings
22, 24 and two side walls perpendicular to the base and having openings 26,
28 (connecting plate and bent upturned flange) (col. 2, ll. 51-56 and figs. 2
and 4).
Appellant argues claims 22 and 26 together as a group. Thus, we
select claim 22 as the representative claim, with claim 26 standing or falling
with claim 22. The Appellants’ main argument as to why Lilley does not
anticipate claim 22, and claim 26 depending from claim 22, is that Lilley
does not disclose a series of spaced apart metal studs (App. Br. 10 and Reply
Br. 5). In response, the Examiner takes the position that the spaced apart
horizontal rails 10 constitute the metal studs because the shape of the rail 10
is an “elongated channel member similar to the applicants’ stud” (Ans. 8).
Using the dictionary, the Appellants argue that the ordinary and customary
definition of a “stud” is “[a]n upright post in a frame structure or wall for
supporting sheets of lath, wallboard or similar material” (App. Br. 10 and
Exhibit 1 of the Appeal Brief filed December 20, 2004) (underlining added).
According to our understanding of the Appellants’ arguments and the
Examiner’s response, it appears that the Appellants and the Examiner
disagree as to whether the term “stud” is only applied to a vertically
(upright) oriented structure.
While we appreciate the Appellants’ definition of the term “stud” we
note that when construing claim terminology in the United States Patent and
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Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004)). [T]he ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
2005). In this case, we find that a person of ordinary skill in the art of
construction building would understand a “stud” to include both vertical
(upright) and horizontal structural members (See U.S. Patent No. 4,998,394,
issued Mar. 12, 1991, col. 3, ll. 1-4 and U.S. Patent No. 5,524,727, issued
Jun. 11, 1996, col. 5, ll. 37-40). The Specification does not provide an
explicit definition of the term “stud.” Although the Specification mentions
that a building “stud” may be a “vertical support member” (Spec. 4, l. 13),
the Specification does not explicitly exclude a building “stud” from being a
horizontal structural member. Since the Specification does not provide us
with any suggestion that the term “stud” describes exclusively a “vertical
structural member,” the term “stud” should not be limited to the preferred
embodiment in the Specification of a “vertical structural member.”
Moreover, claim 22 is directed merely to a wall section, not a wall section
installed in any particular orientation, and thus does not impart any
limitation as to the orientation of either the wall section or the studs thereof.
As such, we find that the term “stud” encompasses structural members in
any orientation. In conclusion, we agree with the Examiner that the
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horizontal rails 10 of Lilley satisfy the limitation of a “series of spaced apart
metal studs,” as required by claim 22.
Therefore, the Appellants’ arguments do not persuade us that the
Examiner erred in rejecting claim 22, and claim 26 depending from claim
22, as anticipated by Lilley. Accordingly, the rejection of claim 22, and
claim 26 standing or falling with claim 22, is sustained.

The obviousness rejection based upon Anderson
The Appellants argue that there is no evidence in Anderson to suggest
connecting the pump jacks to other structures as the Examiner has proposed
(App. Br. 9). Furthermore, the Appellants argue that “attaching a structure
to the scaffold of Anderson would interfere with the operation of the jacks”
(Reply Br. 4).
First, we note that while the requirement of demonstrating a teaching,
suggestion, or motivation (the TSM test established by the Court of Customs
and Patent Appeals) to combine known elements in order to show that the
combination is obvious may be “a helpful insight,” it cannot be used as a
rigid and mandatory formula. KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct.
1727, 1741 (2007).
Second, we note that Anderson specifically teaches joining two pole
sections 62 and 64 by introducing an “interior joint” (col. 4, ll. 23-24 and 44-
46 and fig. 7),2 hence teaching attaching an additional “structure” to the pole

2 Anderson refers us to US Patent No. 4,382,488, issued May 10, 1983,
for an explanation of how the junction between the pole sections is formed.
Here, as shown in Figures 3 and 4, the pole sections 52 and 54 are joined by
a splint 62, safety transverse pins 58, 60, and bolts 64, 66 that extend
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jack pole (connector) of Anderson. An artisan must be presumed to know
something about the art apart from what the references disclose. See In re
Jacoby, 309 F.2d 513, 516 (CCPA 1962). A person of ordinary skill in the
art of scaffolding equipment in general, and pump jack poles in particular,
would have understood that when providing an “interior joint” to join two
pump jack pole sections the pole sections require openings and fasteners to
create the interior joint. Hence, a person of ordinary skill in the art would
have been prompted to provide openings in the connector plate of Anderson
to provide access for fasteners for joining two pump jack poles. With
respect to the Appellants’ position that “attaching a structure to the scaffold
of Anderson would interfere with the operation of the jacks,” we note that
the Appellants have not provided any objective evidence that this is the case.
The arguments of counsel cannot take the place of evidence in the record. In
re Schulze, 346 F.2d 600, 602 (CCPA 1965). Actually, in contrast to the
Appellants’ contention, Anderson discloses attaching an additional pole
(structure) to an already existing scaffolding structure.
For the foregoing reasons, the Appellants’ arguments do not persuade
us that the Examiner erred in rejecting claim 2, and claim 3 that depends
from claim 2, as unpatentable over Anderson. The rejection is sustained.

The obviousness rejection based upon Lilley
The issue presented in the instant appeal with respect to the rejection
based upon the teachings of Lilley is whether the Appellants have
through the two parallel lateral walls perpendicular to the rubber pad 46
(connecting plates) (col. 5, ll. 33-50).
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demonstrated that the Examiner erred in determining that claim 24 is
unpatentable over Lilley. The issue turns on whether the Examiner has
established a prima facie case that it would have been obvious for one of
ordinary skill in the art to provide an adhesive between the washer
(reinforcing member) and the base (base plate) in the structure of Lilley.
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In
making such a rejection, 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 speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in the factual basis. In re Warner, 379
F.2d 1011, 1017 (CCPA 1967).
The Examiner asserts that “[i]t would have been obvious to one
having ordinary skill in the art at the time of the invention to modify Lilley’s
structure to show an adhesive interposed between the reinforcing member
and the base plate for securing the reinforcing member to the base plate
because having an adhesive would reinforce the securing of the reinforcing
member to the base plate and prevents the loosening per vibration” (Ans. 6).
However, the Examiner has not provided any factual basis to show that
providing an adhesive layer specifically between the reinforcing member
(washer) and the base plate necessarily prevents loosening caused by
vibration or that a person of ordinary skill in the art would understand this to
be the case. Furthermore, the Examiner has not provided any factual basis to
show the source of the vibration in the structure of Lilley or that the
structure of Lilley is prone to vibrations.
In the Appellants’ invention, an adhesive layer 32 is used to secure the
reinforcing block 28 to the base plate 16 (Spec. 6, ll. 13-15 and fig. 2D).
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However, the reinforcing member (washer) in the structure of Lilley is
already secured to the base by the fastener 8, and as such, the use of an
adhesive for securing purposes would be superfluous. Furthermore, we note
that the transmission of vibrations in a complex structure having multiple
degrees of freedom, such as a construction building, depends on a variety of
factors, such as the source of the vibrations, the characteristics of the
vibrations (amplitude, frequency, and phase), the properties of the
material(s) used in the structure (mass, stiffness, and damping), and the
geometry of the structure. Without taking these factors into consideration,
we find that it is not clear that an adhesive layer placed specifically between
the reinforcing member (washer) and the base plate necessarily prevents
vibration induced loosening of the reinforcing member (washer). We do not
find that the Examiner has established a factual basis to show that providing
an adhesive layer between the reinforcing member (washer) and the base
plate necessarily prevents loosening caused by vibration or that a person of
ordinary skill in the art would understand this to be the case.
Accordingly, the modification proposed by the Examiner of providing
an adhesive between the washer (reinforcing member) and the base (base
plate) in the structure of Lilley would not have been obvious to the person of
ordinary skill in the art. For the above stated reasons, we conclude that the
Examiner has not discharged the initial burden of establishing a prima facie
case of obviousness of the subject matter of claim 24. The rejection is
reversed.

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DECISION
The decision of the Examiner is affirmed as to claims 1-3, 5, 6, 10, 22,
and 26 and reversed as to claim 24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

JRG

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