Ex Parte Donaldson

Board of Patent Appeals and Interferences

Aug 31, 2012

11825436 (B.P.A.I. Aug. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte BRUCE DONALDSON
____________________

Appeal 2010-008988
Application 11/825,436
Technology Center 3600
____________________

Before: JOHN C. KERINS, PHILLIP J. KAUFFMAN, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008988
Application 11/825,436

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
8-10 and 14-17 under 35 U.S.C. §103(a) as encompassing subject matter
unpatentable over Charlson (US 6,125,608; iss. Oct. 3, 2000) in view of
Burg (US 2005/0102969 A1; pub. May 19, 2005).1 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
THE CLAIMED SUBJECT MATTER
The claims are directed to support structures and methods of
construction. Claim 8, reproduced below, is illustrative of the claimed
subject matter:
8. A metal channel support structure comprising:
a top contact area;
at least one brim contact area; and
vibration suppression material attached to the top contact
area and the at least one brim contact area;
wherein the vibration suppression material comprises:
a polymer layer to absorb sound and/or vibrations;
an adhesive layer to attach the polymer layer to the
metal channel; and
an abrasion resistance layer covering the polymer
layer.

1 The Examiner also objected to claim 15 under 37 C.F.R. § 1.75(c)
for lack of clarity. Ans. 3. We do not consider that issue in this appeal
because the objection is a petitionable matter and not an appealable matter.
See MPEP §§ 706.01 and 1201 (8th ed., Rev. 8, July 2010); see also Ex Parte
Frye, 94 USPQ2d 1072, 1077-78 (BPAI 2010) (precedential).

Appeal 2010-008988
Application 11/825,436

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ANALYSIS
Appellant argues all rejected claims as a group. Br. 5-8. We therefore
select claim 8 as representative and decide the appeal with respect to all
appealed claims on the basis of claim 8 alone; see 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner found that Charlson teaches all elements of claim 8
except (a) the channel including at least one brim contact area and (b)
placement of vibration suppression material. Ans. 4. The Examiner further
found that Burg discloses a metal channel support having a top contact area
and at least one brim contact area (id. at 4, 9), and that Burg and Charlson
function similarly to one another. Id. at 10. The Examiner concluded that it
would have been obvious to one skilled in the art to select Burg’s metal
channel support shape as a matter of design choice “absent persuasive
evidence that the particular configuration of the claimed subject matter was
significant.” Id. at 4-5, 10. The Examiner also found that Charlson
discloses attachment of vibration suppression material (distinct insulators
115, 130) on contact areas of variously-shaped members. Id. at 4 (citing
Charlson, col. 21, ll. 45-65 and Figs. 4A-C). The Examiner further
concluded that it would have been obvious to place vibration suppression
material on any surface as needed to achieve vibration suppression. Id. at 5.
We consider in turn Appellant’s arguments in attacking the rejection.
First, Appellant argues that one of ordinary skill would not have been
motivated to apply Charlson’s teachings to Burg because the dimensions of
the member in Charlson “dwarf the size of a typical channel” as exemplified
in Appellant’s Figs. 2 and 4, producing a combination that would not
function as intended. Br. 5.
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Application 11/825,436

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We find this argument unconvincing for those reasons given by the
Examiner at Ans. 8, first full paragraph, which we adopt as our own.
Appellant’s argument is directed to limitations not present in the claims and
so fails immediately. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(“[A]ppellant’s arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.”).
We also find this argument unconvincing because Appellant has not
established with evidence that the dimensions given in Figs. 2 and 4 are
indeed those of a “typical channel” or that Charlson’s dimensions are
incompatible with those of Burg. Whether Charlson’s size makes it
incompatible with certain exemplary dimensions does not address the
question of whether Charlson’s size would have made it incompatible with
Burg.
Second, Appellant argues that the Examiner identified no teaching in
the art of record that Charlson’s insulation materials could be applied to a
structure such as the channel brim shown in Burg and that, as such, the
Examiner impermissibly relied on Appellant’s own teachings to reach the
claimed subject matter. Br. 5-7.
While Appellant is correct that the Examiner has identified no
teaching in either Charlson or Burg for positioning the vibration suppression
material on a brim contact area, a prima facie case of obviousness need not
be premised on such an express teaching. The Examiner found that
Charlson discloses attachment of vibration suppression material on various
contact areas of the member and concluded that it would have been obvious
to position the vibration suppression material on a brim contact area of Burg
because the support structures in Charlson and Burg function in a similar
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Application 11/825,436

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way for a similar purpose, such that the selection of any particular shape
would have involved exercise of no more than routine skill. Ans. 4, 10.
Thus, the Examiner found, and we agree, that vibration suppression material
positioned on a brim contact area would reasonably have been expected to
function much as it would on the variety of other contact areas disclosed in
Charlson. Ans. 5, 10. Appellant does not challenge the Examiner’s findings
with respect to Charlson, nor has Appellant provided evidence to show any
particular significance to positioning vibration suppression material on a
brim contact area, such as evidence of unexpectedly superior function
compared to other positionings. As such, Appellant’s argument is
insufficient to overcome the Examiner’s prima facie case of obviousness.
We therefore hold that Appellant has not identified any reversible
error in the rejection.
DECISION
For the above reasons, the Examiner’s rejection of claims 8-10 and
14-17 is AFFIRMED.

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) (2009).

AFFIRMED

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