Ex Parte Elmer

Board of Patent Appeals and Interferences

Feb 29, 2012

10509822 (B.P.A.I. Feb. 29, 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.
10/509,822 09/30/2004 Hubert Elmer 5255-32PUS 2261
27799 7590 03/01/2012
Cozen O'Connor
277 Park Avenue, 20th floor
NEW YORK, NY 10172
EXAMINER
CHAPMAN, JEANETTE E
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
03/01/2012 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 HUBERT ELMER
____________

Appeal 2009-011744
Application 10/509,822
Technology Center 3600
____________

Before JOHN C. KERINS, PHILLIP J. KAUFFMAN and GAY ANN
SPAHN, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2009-011744
Application 10/509,822

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STATEMENT OF THE CASE
Hubert Elmer (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection of claims 10-14 and 17-21. Claims 1-9, 15
and 16 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellant’s invention is directed to a glass separating wall. Claims 10
and 21, reproduced below, are illustrative:
10. A glass separating wall comprising:

a pair of frameless side panels mounted between a
top structure and a base, each of the top structure
and the base having a channel, the side panels
engaging in the channels;

a frameless transom panel arranged between the
side panels and engaging in the channel at the top
structure;

a permanently elastic mass arranged between the
transom panel and the side panels and in the
channels, the transom panel being connected in
frictional engagement with the side panels and
with the top structure by the permanently elastic
mass, the side panels being connected in frictional
engagement with the top structure and the base by
the permanently elastic mass; and

a rotatable door leaf between the side panels and
below the transom panel, the door leaf being
rotatably supported exclusively at the transom
panel and the base by fittings, said fittings
comprising complementary first and second fitting
parts, said first fitting part being fixed to the door
leaf panel and said second fitting part being fixed
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directly to the frameless transom panel, said first
and second fitting parts cooperating to permit
rotation,

wherein the side panels and the transom panel are
fastened to one another and to the top structure and
the base independently from the fittings which
support the rotatable door leaf.

21. The glass separating wall of claim 10, wherein
the transom panel is fastened to the side panels and
the top structure solely by the permanently elastic
mass.
THE REJECTIONS
The Examiner has rejected:
(i) claims 10-14 and 17-20 under 35 U.S.C. § 103(a) as being
unpatentable over Eutebach (WO 94/27019 A1, published Nov. 24, 1994)1
in view of Casma di V. Marinoni & Figli (DE 34 25 765 A1, published Jan.
23, 1986)(hereafter “Marinoni”)2, Holmes (US 4,912,898, issued Apr. 3,
1990) and Oscari (US 3,685,240, issued Aug. 22, 1972)3; and

1 English-language translation dated March 2007 by The McElroy
Translation Company.
2 English-language translation dated March 2007 by The McElroy
Translation Company.
3 Although reference to Oscari was omitted from the ground of rejection in
the office action from which this appeal was taken, the Examiner corrected
this oversight, and Appellant made no argument based on this omission.
See, Office Action dated Apr. 18, 2008, at 2; Ans. 2; App. Br. 4-7; Reply Br.
1-5.
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(ii) claim 21 under 35 U.S.C. § 103(a) as being unpatentable over
Eutebach in view of Marinoni, Holmes, Oscari and Nippon Sheet Glass Co.
Ltd. (JP 2003268907A, published Sep. 25, 2003)(hereafter “Nippon”)4.

ISSUES
Did the Examiner err in combining the teachings of Holmes with the
teachings of Eutebach in reaching the conclusion that the subject matter of
claims 10-14 and 17-20 would have been obvious and does the combination
fall short of rendering obvious all limitations in claim 10?
Has the Examiner established the obviousness of claim 21 by
presenting sound rationale supported by rational underpinnings?

ANALYSIS
Claims 10-14 and 17-20--Obviousness
Appellant argues claims 10-14 and 17-20 as a group, with no separate
arguments for patentability being presented for claims 11-14 and 17-20. We
will take claim 10 as representative, and claims 11-14 and 17-20 stand or fall
with that claim.
The Examiner concluded, inter alia, that it would have been obvious,
in view of the teachings in Holmes, to modify the glass separating wall of
Eutebach to employ silicone with a reflective glazing compound between the
side panels and the transom “to produce a continuous, smooth, reflective
surface” with the glass sheets (side panels and transom). Ans. 5. The
Examiner also noted that adding the silicone (elastic mass) would provide a

4 English-language translation by Derwent Information Ltd. of Abstract and
other basic information dated Sep. 11, 2007.
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moisture barrier or waterproofing. Ans. 7, 8. The Examiner further
comments that the “elastic mass is seen as a substitute/addition to the
connector halves” of Eutebach to provide the waterproofing. Ans. 8.
As to this latter statement, we agree with Appellant that the Examiner
has not adequately established that a person of ordinary skill in the art would
find it obvious to substitute the elastic mass 58 of Holmes for the connectors
employed in Eutebach. Appellant contends that to do so would change the
principle of operation of connecting the glass panels in Eutebach. Reply Br.
2. Moreover, the Examiner has not pointed to evidence or provided any
rationale as to why a person of ordinary skill in the art would have a
reasonable expectation of success in replacing rigid connectors with a
permanently elastic mass in a glass panel connecting structure.
We do not agree with Appellant, however, that the addition of the
silicone material between the edges of the glass panels in Eutebach would
have been nonobvious. Appellant argues that adding Holmes’ permanently
elastic mass 58 to Eutebach contradicts the explicit teaching of Eutebach
and/or renders the Eutebach glass panel system unsatisfactory for its
intended purpose. Reply Br. 2. Appellant maintains that the intended
purpose of Eutebach is to “eliminate[e] strip-like connectors interconnecting
adjacent panels.” Id.
Eutebach discloses, as an object of that invention, providing
connectors for glass panels that are not highly visible. (Eutebach, p. 3, ll.
17-19). Eutebach discusses that prior art strip connectors designed in a U-
shape and disguised by covers for a decorative effect are nonetheless usually
very visible. (Eutebach, p. 3, ll. 9-16).
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The Examiner’s proposed modification to the Eutebach glass partition
system does not involve adding highly visible strip connectors of the type
described in Eutebach, but rather a silicone elastic mass that, in the words of
Holmes, “produce[s] a continuous, smooth, reflective surface” with the
adjoining glass panels. (Holmes, col. 9, ll. 17-19). Accordingly, we are not
persuaded that the Examiner’s proposed modification is either contrary to
the teachings of Eutebach or renders the Eutebach system unsatisfactory for
its intended purpose.
Appellant also argues that, even if the proposed modification is
effected, the resulting structure does not address the claim limitation directed
to “the transom panel being connected in frictional engagement with the side
panels and with the top structure by the permanently elastic mass.” App. Br.
6; Reply Br. 4. Appellant elaborates on this argument by asserting that
Holmes teaches, at most that the silicone elastic mass 58 is in frictional
engagement with the glass panel units, and that:
[t]here is no teaching that Holmes’ glass panel
units 11a, 11b themselves are connected with each
other in frictional engagement, much less through
the alleged permanently elastic mass 58, . . . . As
stated in appellants previous submissions, the
adjacent glass panel units 11a, 11b in Holmes are
held together by and joined to a mullion 45. As
Holmes explicitly teaches, the alleged permanently
elastic mass 58 is inserted in between the glass
panel units 11a, 11b after they are mounted onto
the mullion 45 and in place (see, col. 9, ln. 7).
Because of this direct connection of the glass panel
units 11a, 11b by the mullion 45, no frictional
engagement can exist between such adjacent glass
panel units 11a, 11b in Holmes, either directly or
through the alleged permanently elastic mass 58.
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Reply Br. 4.
Appellant makes a similar argument with respect to the Eutebach
system, contending that because the glass panels are connected by the
connectors provided by Eutebach, insertion of the silicone elastic mass
between the panels will not generate frictional engagement between the
panels by way of the elastic mass. Id.
Appellant’s Specification does not provide a definition for the claim
expression, “being connected in frictional engagement . . . by the
permanently elastic mass”, nor is any discussion provided which might shed
further light on what is meant by this expression. Appellant uses essentially
that exact expression in two paragraphs of the Specification. Spec., p. 2,
para. [0010], and p. 4, para. [0018]. The accompanying drawings show only
that a permanently elastic mass 13 is interposed between edges of adjacent
glass panels 4, 5, and between edges of glass panels and a top channel
member 8. Spec., Figs. 1-4. Accordingly, the expression in question is
interpreted, consistent with Appellant’s disclosure, as requiring the elastic
mass to be interposed between the glass panels and in frictional engagement
with each of the glass panels, such that the panels are connected via the
permanently elastic mass. Appellant’s Specification and drawings do not
admit of any more specific or detailed meaning.
As such, the Examiner’s proposed modification to the Eutebach glass
panel system meets the limitation that the transom panel is to be connected
in frictional engagement with the side panels and with the top structure.
Appellant’s attempt to have the claim expression interpreted in some other
manner is unavailing.
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The rejection of claims 10-14 and 17-20 under 35 U.S.C. § 103 will
be sustained.
Claim 21--Obviousness
Claim 21 depends from claim 10 and requires that the transom panel
be fastened to the side panels and the top structure solely by the permanent
elastic mass. The Examiner, citing to the Nippon reference, concluded that
it would have been obvious to further modify Eutebach to employ the
method of securement of the glass panels disclosed therein “in order to
improve the fireproofing properties, to facilitate assembly and to improve
the external appearance of the glass panels assembly.” Ans. 7. The
Examiner characterizes the Nippon reference as disclosing that the glass
panels are “connected in lattice shape soley [sic.] through sealing joint 30”
and that the glass panels are “supported (not connected) by the metal
support 12.” Ans. 11. Appellant contends that the metal supports 12
disclosed in Nippon contribute to the fastening of the glass panels by
disclosing that “panels are supported by the metal support (12) arranged at
four sides of the panel, at preset interval.” App. Br. 7.
Not only do we believe that Appellant has the better position here, the
Examiner’s proposed modification is akin to the position taken by the
Examiner, discussed supra, that the Holmes silicone elastic mass would
have been an obvious substitute for the connectors employed in Eutebach.
That the Nippon reference employs both a silicone mass and metal supports
tends to show that a person of ordinary skill in the art would not likely have
a reasonable expectation of success in fastening a transom panel to two side
panels and a top structure solely by a permanently elastic mass. The
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conclusion of obviousness is not adequately supported by rational
underpinnings.
The rejection of claim 21 under 35 U.S.C. § 103(a) will not be
sustained.

CONCLUSIONS
The Examiner did not err in combining the teachings of Holmes with
the teachings of Eutebach in reaching the conclusion that the subject matter
of claims 10-14 and 17-20 would have been obvious, and the combination
does not fall short of rendering obvious all limitations in claim 10.
The Examiner has not established the obviousness of claim 21 by
presenting sound rationale supported by rational underpinnings.
DECISION
The decision of the Examiner to reject claims 10-14 and 17-20 is
affirmed. The decision of the Examiner to reject claim 21 is reversed.
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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