Ex Parte Fields

Patent Trial and Appeal Board

Jan 31, 2013

10255058 (P.T.A.B. Jan. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DARELL WAYNE FIELDS
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Appeal 2010-011326
Application 10/255,058
Technology Center 3600
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Before: PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
JOHN W. MORRISON, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011326
Application 10/255,058

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
10, 15-17, and 19. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to frameless window module. Spec 1. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A window module providing, in dependence on the
number of modules arrayed, operable windows of any length in
a wood stud frame wall having opposing interior and exterior
faces and structural members including a top, longitudinally-
extending cap piece, a longitudinally-extending sole plate and a
continuous run of laterally-spaced, upstanding studs
interconnecting the cap piece and sole plate, said window
module eliminating both the need to cut any stud to provide a
window box opening and the use of a window box installed in a
window box opening, comprising:
first and second glazing member subassemblies;
first means coupled to said first glazing member
subassembly for mounting said first glazing member
subassembly exteriorly outwardly to at least one of said
structural members of said wood stud frame wall without
penetrating said wood stud frame wall at one of said opposing
interior and exterior faces of said wood stud frame wall for
pivoting motion between open and closed positions away from
and towards said one of said opposing faces of said wood stud
frame wall; and
second means coupled to said second glazing member
subassembly for mounting said second glazing member
subassembly exteriorly outwardly to at least one of said
structural members of said wood stud frame wall without
penetrating said wood stud frame wall at the other of said
opposing interior and exterior faces of said wood stud frame
wall for pivoting motion between open and closed positions
away from and towards said other one of said opposing faces of
said wood stud frame wall, said first and second means thereby
eliminating both the need to cut any said upstanding stud of
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said wood stud frame wall to provide a window box opening
therein through, and the use of a window box installed in the
window box opening

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Winship
Crescentini
Glover
US 2,226,274
US 2,286,899
US 5,400,557
Dec. 24, 1940
Jun. 16, 1942
Mar. 28, 1995

REJECTIONS
The Examiner made the following objection and rejections:
Claims 1-10, 15-17, and 19 stand objected to under 35 U.S.C §112,
second paragraph as being indefinite. See Office Action mailed March 23,
2006, page 2.
Claims 1-10, 15-17, and 19 stand rejected under 35 U.S.C §112,
second paragraph as being indefinite.
Claims 1-3 and 10 stand rejected under 35 U.S.C §102(b) as being
anticipated by Crescentini.
Claims 1, 6-8, 15-17, and 19 stand rejected under 35 U.S.C §102(b) as
being anticipated by Winship.
Claim 4 stands rejected under 35 U.S.C §103(a) as being unpatentable
over Crescentini and Glover.

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ANALYSIS
Objections under §112
The Examiner objected to claims 1-10 for formalities. The Examiner
further objected to claims 1-10, 15-17, and 19 “because the claimed
language between preamble and body of the claim is inconsistent because
the preambles set forth a subcombination of a window module (claims 1-10)
and a frameless integument module (claims 15-15 and 19) and the portion of
the claims positively related to wood studs, for example: ‘without
penetrating said wood stud’.” Ans. 3.
The Examiner objected to claims 1-10, 15-17, or 19 under 35 U.S.C.
§ 112, second paragraph. See Office Action mailed on March 23, 2006, at 2.
Ordinarily, an objection is a petitionable matter, and not an appealable one.
See MPEP §§ 706.01 and 1201 (8th ed., Rev. 9, Aug. 2012); see also Ex
Parte Frye, 94 USPQ2d 1072, 1077-78 (BPAI 2010) (precedential)
(similarly determining an objection to the drawings was outside of the
Board’s jurisdiction).
Further, addressing the rejections before us does not require
consideration of the scope of independent claims 1 and 15 with regard to
how the window module recited in the preamble and a frameless integument
module are inconsistent with regard to positively claiming the wood studs.
In other words, the objection does not relate to the other rejections. See In re
Hengehold, 440 F2.d 1395, 1404 (CCPA 1971) (“the kind of adverse
decisions of examiners which are reviewable by the board must be those
which relate, at least indirectly, to matters involving the rejection of
claims”).
Accordingly, the objection is not before us on review.
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Rejections under §112
The Examiner rejected claims 1-10, 15-17, and 19 under 35 U.S.C.
112, second paragraph, as being indefinite. Addressing claim 1, the
Examiner determined that the claim language “in dependence on the number
of modules arrayed, operable windows of any length in a wood stud frame
wall” and “said first and second means thereby eliminating both the need to
cut any said upstanding stud of said wood stud frame wall to provide a
window box opening therein through” as set forth in claim 1 is indefinite.
Ans. 3. Appellant contends, “Since no reasons are explicitly set forth why
the identified limitations are considered to be indefinite beyond the mere
allegation that the identified claim language is ‘confusing,’ and because the
applicant-appellant is not able to try to resolve, let alone rebut, such un-
stated deficiencies” App. Br. 9. We agree with Appellant that the Examiner
has failed to make a prima facie case of indefiniteness. The general
statements provided by the Examiner fail to provide sufficient reasoning as
to why one skilled in the art would not understand the metes and bounds of
the claim language in question. As such, we cannot sustain the
indefiniteness rejection of claim 1, or claims 2-10 which depend therefrom.
Addressing claim 5, the Examiner determined the claim language that
each of the seals “when the subassemblies are in their closed positions is a
pneumatic seal” to be indefinite. Ans. 3. Again, Appellant argues that the
Examiner presented a “mere allegation” of indefiniteness and has not made a
prima facie case of indefiniteness. App. Br. 9-10. We agree with the
Appellant because the Examiner includes no analysis as to why one skilled
in the art would not understand the metes and bounds of the claim language
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in question. As such, we cannot sustain the indefiniteness rejection of claim
5.
Addressing claim 15, the Examiner stated that “it is unclear how could
one third hinge [be] couplable to both said first and second integument
members.” Ans. 3. Again, Appellant argues that the Examiner presented a
“mere allegation” of indefiniteness and has not made a prima facie case of
indefiniteness. App. Br. 9-10. We agree with the Appellant because the
Examiner includes no analysis as to why one skilled in the art would not
understand the metes and bounds of the claim language in question. As
such, we cannot sustain the indefiniteness rejection to claim 15, or claims
16, 17, and 19 which depend therefrom.

Anticipation by Crescentini
Independent claim 1 calls for the first means to mount the first glazing
member subassembly exteriorly outwardly to at least one of the structural
members of the wood stud frame wall without penetrating the wood frame
stud frame wall at the exterior face of the wood stud frame wall. In parity
with the claim language, the Specification states that the first means includes
upper and lower pivot hinges 30, 32 that mount the first glazing member 26
exteriorly outwardly of the wood stud frame wall 14. Br. 3 (identifying the
claimed subject matter in the Specification); Spec. 10:1-6; figs. 1-3.
Addressing claims 1-3 and 10, the Examiner found that Crescentini
discloses “a window assembly comprising window panes or a pair of glazing
member subassemblies 18, first mean 17 coupled to said first glazing
member subassembly for mounting said first glazing member subassembly
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exterior outwardly, second means 21 coupled to said second glazing member
18.” Ans. 4.
Crescentini’s storm sashes 15 are mounted within the opening in the
frame, and for that reason, Crescentini’s first means (hinge 21) does not
mount the first glazing member subassembly (storm window 15 having glass
18) exteriorly outwardly to at least one of the structural members of the
wood stud frame wall (wall 10), and the first glazing member subassembly
(storm window 15 having glass 18) penetrates the wood frame stud frame
wall at the exterior face of the wood stud frame wall. Crescentini 1, col. 1,
ll. 45-49; col. 2, ll. 17-19, figs. 1, 2 (note storm sash 15 mounted by hinge 21
within wall 10 rather than exterior to the face of that wall 10).
Consequently, we agree with Appellant that Crescentini’s first glazing
member subassembly (storm window 15 having glass 18) penetrates the
wood stud frame wall (wall 10) in contravention of claim 1. See Br. 11.
We do not sustain the rejection of independent claim 1 its respective
dependent claims 2, 3, and 10, as anticipated by Crescentini.

Anticipation by Winship
Addressing claim 1, the Examiner found that Winship teaches
A] window construction comprising a pair of glazing
subassemblies 26, 27 (col. 1, lines 1-10 and Fig. 1), a first
means 28 couples to said first glazing member 26 for mounting
said first glazing member subassembly exterior outwardly,
second means 28 coupled to said second glazing member 27,
the glazing members are pivot hinged to window frame 11, 13,
and an interconnection hinge 38 couplable to the two sashes 26,
27 of the two glass panes, respectively.
Ans. 4-5. Appellant counters that “[s]ince each of the sashes is mounted for
combined pivoting/sliding motion inside the frame between its inner and
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outer surfaces, thereby penetrating the frame at least partially which itself
completely penetrates its containing wall.” App. Br. 14. Again, the
Examiner’s findings are not persuasive. The first and second glazing
members are not mounted “exterior outwardly” to the wood stud frame wall,
but rather to a surface that between the inner and outer surface of the wall.
In addition, as argued by Appellant, this mounting arrangement partially
penetrates the wood stud frame wall. As such, we cannot sustain the
anticipation rejection of claim 1 or claims 6-8 which depend therefrom.
Addressing claim 15, the Examiner relied on the findings made above
with respect to claim 1. Appellant counters that Winship fails to disclose a
“third interconnection hinge couplable to both said first and second
integument members adapted to cause said first and second integument
members to pivotally move together away from and towards respective ones
of said exterior and interior faces of said wood stud frame wall.” App. Br.
14-15. As discussed above, the sashes, or integument members, are not
mounted to move away from and toward the exterior faces of the wall, but
are rather mounted in such a way that partially penetrates, or moves through
the exterior faces of the wood stud frame wall. As such, we cannot sustain
the anticipation rejection of claim 15, or claims 16, 17, and 19 which depend
therefrom.

Obviousness over Crescentini and Glover
Addressing claim 4, the Examiner determined that
Crescentini discloses the claimed invention as stated except for
wherein each of said first and second glazing member
subassemblies has lateral and longitudinal edges, and further
includes a seal and a seal seat adapted to seal the lateral edges
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of each of [s]aid glazing member subassemblies, and a seal on a
seal seat. Glover teaches a removable glass windowpane 84
having seal strip 300 seat on seal seat 90 (Figs. 1 and 3). In
view of Glover, it would have been obvious to one of ordinary
skill in the art at the time the invention was made to provide
Crescentini with seal and seal seat for the seal positioned on as
Crescentini is concerns thus for preventing heat lost.
Ans. 5. However, nothing in this determination cures the underlying
deficiency of the use of a casing or window box in Crescentini. As such, we
cannot sustain the obviousness rejection of claim 4.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-10, 15-
17, and 19 are reversed.

REVERSED

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