Ex Parte Eddy

Board of Patent Appeals and Interferences

Sep 9, 2008

10033580 (B.P.A.I. Sep. 9, 2008)

UNITED STATES PATENT AND
TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GARY R. EDDY
____________

Appeal 2008-1504
Application 10/033,580
Technology Center 3600
____________

Decided: September 9, 2008
____________

Before HUBERT C. LORIN, MURRIEL E. CRAWFORD, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3-16, and 18-22. Claims 2 and 17 have been
Appeal 2008-1504
Application 10/033,580
cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2002). We
AFFIRM-IN-PART.
THE INVENTION
The Appellants’ claimed invention is directed to a support bracket
with a main beam, a connection element, a hook, and first and second legs.
(Specification, 2:13-25). Claim 1, reproduced below, is representative of the
subject matter of appeal.
.
1. An eaves trough support bracket, comprising:

(a) a main beam having longitudinally spaced distal and proximal
ends, laterally spaced first and second edges, and transversely spaced
first and second surfaces;
(b) a connection element extending in a first transverse direction
from the distal end of the main beam and having a longitudinally
extending tab transversely spaced from the main beam in the first
transverse direction a distance of about 0.4 to 0.6 inches from the first
surface of the main beam;
(c) a hook extending in the first transverse direction and a second
longitudinal direction from the proximal end of the main beam, and
defining a concavity open in a second transverse direction;
(d) a first leg extending in a second transverse direction from the
first edge of the main beam with a proximal longitudinal end
substantially transversely aligned with the proximal end of the main
beam; and
(e) a second leg extending in the second transverse direction from
the second edge of the main beam with a proximal longitudinal end
substantially transversely aligned with the proximal end of the main
beam,
(f) wherein the main beam, first leg and second leg define a
concavity accessible from the first transverse direction whereby the
support bracket is transversely nestable.

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Application 10/033,580

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Odekirk US 4,294,422 Oct. 13, 1981

The following rejections are before us for review:
1. Claims 1, 3-16, and 18-20 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to provide support for the claimed limitation
“transversely nestable”.
2. Claim 22 is rejected under 35 U.S.C. § 112, second paragraph
as failing to show overlapping of the primary rib and the leg.
3. Claims 1, 3-16, and 18-22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Odekirk.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence1:
FF1. In the Specification, Figure 1-4 show the legs 110 and 120 extending
straight down which would preclude transverse nestability for the bracket.
The Specification fails to provide any specific teaching that the bracket is
transversly nestable.

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 10/033,580
FF2. In the Specification, Figure 2 shows the rib 131 spaced longitudinally
from the legs 110 and 120. As the rib 131 and the legs 110 and 120 are
spaced apart, the rib cannot longitudinally overlap the legs.
FF3. Odekirk does not disclose a bracket with legs which are transversly
nestable (Figures 1-3).
FF4. Odekirk does not disclose a bracket with legs which have a transverse
height that tapers (Figures 1-3). Odekirk’s leg 22 has seven individual
sections which span its length.
FF5. Odekirk does not disclose a bracket with a primary rib which
longitudinally overlaps the legs (Figures 1-3).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

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Application 10/033,580
ANALYSIS
Claims 1, 3-16, and 18-20 have been rejected under 35 U.S.C. § 112,
first paragraph, as failing to provide support for the claimed limitation
“transversely nestable” (Ans. 3-4). The Appellant argues that “[w]hile the
Figures and written description do not expressely illustrate or describe the
brackets in a nested configuration, Figures 1-4 clearly illustrate a bracket
with the inherent function of nestability” (Br. 6). The Appellant argues that
support for the invention being “transversly nestable” is found in Figures 1-4
(Br. 6).
In contrast, the Examiner has determined that the Figures do not
disclose that the legs are nestable since the legs 110 and 120 extend straight
down as shown in Fig. 4 (Ans. 8-9).
We disagree with the Appellant. The purpose of the written
description requirement is to convey with reasonable clarity to those skilled
in the art that, as of the filing date sought, applicant was in possession of the
invention as now claimed. Vas-Cath, Inc.v. Mahurkar, 935 F.2d 1555,
1563-64 (Fed. Cir. 1991). The possession test alone, however, is not always
sufficient to meet the written description requirement. Enzo Biochem, Inc. v.
Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002). Rather, “the written
description requirement is satisfied by the patentee’s disclosure of ‘such
descriptive means as words, structures, figures, diagrams, formulas, etc., that
fully set forth the claimed invention.’” Id. (quoting Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Here, the Appellant
has acknowledged that “the Figures and written description do not
expressely illustrate or describe the brackets in a nested configuration”
(Br. 6). Figures 1-4 which are relied upon by the Appellant for inherently
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Application 10/033,580
showing transverse nestability of the bracket do not inherently disclose such
a feature either. In Figures 1-4 the legs 110 and 120 extend straight down
(see Fig. 4). Since the legs 110 and 120 extend straight down and are not
flared outwardly the bracket cannot be transversely nestable (FF 1). The
Appellant’s Specification and Figures do not fully set forth or provide any
support inherently for the claimed transverse nestabilty of the bracket. For
the above reasons, the rejection of claims 1, 3-16, and 18-20 under 35 U.S.C.
§ 112, first paragraph is sustained.

Claim 22 has been rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
The Appellant argues that the rejection of claim 22 under 35 U.S.C.
§ 112, second paragraph is improper because Figures 1-5 provide support for
the primary rib to longitudinally overlap the first and second leg (Br. 6).
The Appellant argues that the primary rib 131 runs in longitudinal direction
x2 (Fig. 2) and therefore overlaps the first leg 110 (Br. 6).
In contrast the Examiner argues that rib 131 fails to contact or cover
the legs 110 and asserts that the rejection under 35 U.S.C. § 112, second
paragraph is proper (Ans. 8-9).
We disagree with the Appellant. The test for definiteness under 35
U.S.C. § 112, second paragraph, is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). Here it is unclear how the
rib 131 can overlap or cover even a part of the legs 110 and 120 if it is
laterally spaced from the legs and therefore prevented from spanning the
same longitudinal direction (FF2). As it is unclear how the rib could
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Application 10/033,580
overlap the legs, those skilled in the art would not understand what is
claimed in claim 22 when read in light of the Specification. For these
reasons, the rejection of claim 22 under 35 U.S.C. § 112, second paragraph
is sustained.

Claims 1, 3-16, and 18-22 have been rejected under 35 U.S.C. §
103(a) as being unpatentable over Odekirk.
The Appellant argues that the rejection of claim 1, 3-16, and 18-20
under 35 U.S.C. § 103(a) as being unpatentable over Odekirk is improper
because that bracket is not nestable (Br. 8). The Examiner argues only that
if the Appellant’s bracket is nestable, then Odekirk’s would be nestable as
well (Ans. 9).
We agree with the Appellant. Odekirk does not disclose a bracket
with legs which are transversely nestable (FF3). For this reason, the
rejection of claims 1, 3-16, and 18-20 under 35 U.S.C. § 103(a) as being
unpatentable over Odekirk is not sustained.
The Appellant argues that the rejection of claim 21 under 35 U.S.C.
§ 103(a) as being unpatentable over Odekirk is improper because it fails to
disclose legs with a transverse height that tapers. The Appellant argues that
Odekirk’s legs have a uniform transverse height along the entire length of
the main beam (Br. 8). The Examiner states that the use of transverse
heights for the legs is a matter of design preference (Ans. 7).
We agree with the Appellant. Odekirk does not disclose a bracket
with legs which have a transversely height that tapers (FF4). The Examiner
argues that use of a transverse heights in the legs is a matter of design
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preference. The leg 22 in Odekirk’s device is very thin and contains seven
individual sections which make up its length (FF 4). Modifying the leg of
Odekirk to have a transverse height that tapered would require a more
complicated manufacturing process made difficult by the thin leg and six
bends in leg. There is not a well articulated reasoning with sufficient
rational underpinning to support a legal conclusion of obviousness for
modifying the leg of Odekirk to have a transverse height that tapered. For
this reason, the rejection of claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over Odekirk is not sustained.
The Appellant argues that the rejection of claim 22 under 35 U.S.C.
§ 103(a) as being unpatentable over Odekirk is improper because it fails to
show a primary rib which longitudinally overlaps the legs (Br. 9). The
Examiner agrees and only states that if the Applicant’s bracket is has a rib
that longitudinally overlaps the legs, then Odekirk’s would do so as well
(Ans. 10).
We agree with the Appellant. Odekirk does not disclose a bracket
with a primary rib which longitudinally overlaps the legs (FF5). For this
reason, the rejection of claims 22 under 35 U.S.C. § 103(a) as being
unpatentable over Odekirk is not sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 1, 3-16, and 18-20 under 35 U.S.C. § 112, first
paragraph.
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claim 22 under 35 U.S.C. § 112, second paragraph.
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We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1, 3-16, and 18-21 under 35 U.S.C. § 103(a) as being
unpatentable over Odekirk.

DECISON
The Examiner’s rejection of claims 1, 3-16, 18-20, and 22 is
sustained. The Examiner’s rejection of claim 21 is not sustained.
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) (2007).

AFFIRMED-IN-PART

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Application 10/033,580

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