Ex parte Forsland

Board of Patent Appeals and Interferences

Aug 31, 1999

08814272 (B.P.A.I. Aug. 31, 1999)

Application for patent filed March 10, 1997. According to the1
appellant, this application is a continuation-in-part of Application No.
08/601,777, filed February 15, 1996, now abandoned, Application No.
29/040,278, filed June 14, 1995, now U.S. Pat. No. D 378,421, and Application
No. 29/055,656, filed June 10, 1996, now U.S. Pat. No. D 397,447.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KENT H. FORSLAND
____________
Appeal No. 1999-0611
Application No. 08/814,2721
____________
ON BRIEF
____________
Before ABRAMS, STAAB and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 30, which are all of the claims
pending in this application. Claims 5, 12, 15, 19, 24 and 27
were amended after the final rejection in Paper No. 10.
We AFFIRM.
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Application No. 08/814,272
The copy of claim 29 in the appendix to the appellant's brief contains2
a minor error in that the claim of record, in line 3, reads "upwardly" instead
of "outwardly."
The examiner's inclusion of claim 24 in rejections 1 through 3, rather3
than in rejection 6, and claim 29 in rejection 3 in addition to rejection 6,
appears to have been an inadvertent error, in light of the record as a whole.
Accordingly, in deciding the appeal as to claims 24 and 29, we shall interpret
the rejections thereof as being under 35 U.S.C. § 103 as unpatentable over
Lewis and not under 35 U.S.C. § 102. The appellant does not appear to be
prejudiced by this interpretation in light of the appellant's grouping of
claims 24 and 29 with claims 11, 13 and 26 (brief, page 5) and argument as to
the non-obviousness of these claims under 35 U.S.C. § 103 (brief, pages 9 and
BACKGROUND
The appellant's invention relates to a closure, such as a
roll-up garage door, having a facade of at least one upright
door. An understanding of the invention can be derived from a
reading of exemplary claims 1, 14 and 28, which appear in the
appendix to the appellant's brief.2
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Norberg 2,093,020 Sep. 14,
1937
Fimbell 5,060,711 Oct. 29,
1991
Schlicht et al. (Schlicht) 5,123,211 Jun. 23,
1992
Lewis et al. (Lewis) 5,626,176 May 6,
1997
The following rejections are before us for review.3
Appeal No. 1999-0611 Page 3
Application No. 08/814,272
10).
Viewing the record as a whole, it is apparent to us that the4
examiner's omission of claim 16 in this rejection was an inadvertent error.
Accordingly, in deciding this appeal, we shall consider claim 16 to be
included in this rejection. The appellant is not prejudiced by this treatment
since the brief addresses claim 16 with regard to this rejection in the status
of claims, issues and arguments sections (pages 2, 5 and 11).
1. Claims 1 to 3, 7 to 10, 12, 14 to 16, 20 to 23, 25, 27,
28 and 30 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Fimbell.
2. Claims 1 to 3, 7 to 10, 12, 14 to 16, 20 to 23, 25, 27,
28 and 30 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Norberg.
3. Claims 1 to 3, 7 to 10, 12, 14 to 16, 20 to 23, 25, 27,
28 and 30 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Lewis.4
4. Claims 4 and 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Fimbell.
5. Claims 4 and 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Norberg.
6. Claims 4, 11, 13, 17, 24, 26 and 29 stand rejected under
35 U.S.C. § 103 as being unpatentable over Lewis.
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Application No. 08/814,272
7. Claims 5, 6, 18 and 19 stand rejected under 35 U.S.C. §
103 as being unpatentable over Lewis in view of Schlicht.
8. Claims 5, 6, 18 and 19 stand rejected under 35 U.S.C. §
103 as being unpatentable over Norberg in view of Schlicht.
9. Claims 5, 6, 18 and 19 stand rejected under 35 U.S.C. §
103 as being unpatentable over Fimbell in view of Schlicht.
The complete text of the examiner's rejections and
response to the argument presented by the appellant appears in
the final rejection (Paper No. 8) and the examiner's answer
(Paper No. 13), while the complete statement of the
appellant's argument can be found in the brief (Paper No. 12).
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The Norberg and Fimbell Rejections
Turning first to rejections 1 and 2, we note that
independent claims 1 and 28 both require that the closure have
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Application No. 08/814,272
a "front facade of a plurality of upright doors." While we do
agree with the examiner that "doors have numerous and vastly
different appearances" (answer, page 4), we find that a
"facade of a plurality of upright doors" requires an exterior
that appears to the viewer as a plurality of distinct
recognizable upright doors. From our viewpoint, the front
surfaces of the garage doors disclosed by Fimbell (see Figure
1) and Norberg (see Figure 1) do not present such an
appearance. While it is possible for one to carve out
portions of the exterior of the garage door of either Fimbell
or Norberg and designate them as doors, neither garage door
appears to the viewer as a plurality of distinct recognizable
upright doors.
With regard to independent claim 14, which requires
"frame means having at least one opening for exposing a
portion of the front wall, said one opening exposes portion of
the front wall having an upright door facade," the panels of
the garage door of Fimbell do comprise lower rails (16), upper
rails (18), end stiles (20) and mullions (22) which define
openings exposing the front surfaces of composite panes (24).
However, the front surface of a composite pane (24) does not,
Appeal No. 1999-0611 Page 6
Application No. 08/814,272
in our opinion, have an "upright door facade" as required by
the claim. Similarly, the Norberg garage door comprises a
rectangular grid-like pattern of frame members (unnumbered)
projected outwardly from the recessed portions of panels (10,
12, 14, 16), as seen in Figure 1. However, none of the
recessed panel portions exposed by the openings formed by the
frame members has "an upright door facade" as required by
claim 14.
For the above reasons, we shall not sustain the
examiner's rejection of independent claims 1, 14 and 28, or of
claims 2, 3, 7 to 10, 12, 15, 16, 20 to 23, 25, 27 and 30
which depend therefrom, under 35 U.S.C. § 102(b) as being
anticipated by Fimbell or Norberg.
With regard to rejections 4 and 5, the examiner has not
asserted any reason why one of ordinary skill in the art would
have modified the Fimbell or Norberg door to present a facade
of a plurality of upright doors to arrive at the invention of
claims 1 and 28 or to provide a frame means having an opening
exposing a portion of the front wall of the garage door having
a facade of an upright door to arrive at the invention of
claim 14. It follows then that we likewise cannot sustain the
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Application No. 08/814,272
examiner's rejections of claims 4 and 17 under 35 U.S.C. § 103
as being unpatentable over either Fimbell or Norberg.
Further, with regard to rejections 8 and 9, we have
reviewed the teachings of Schlicht but find nothing therein
which overcomes the above-noted deficiencies of Fimbell and
Norberg. Accordingly, we likewise cannot sustain the
examiner's rejections of claims 5, 6, 18 and 19 under 35
U.S.C. § 103 as being unpatentable over Fimbell or Norberg in
view of Schlicht.
The Lewis Rejections
With regard to rejection 3, the appellant states on page
5 of the brief that claims 1 to 3, 10, 12, 14 to 16, 23, 25,
28 and 30 stand or fall together and claims 7 to 9, 20 to 22
and 27 stand or fall together. Therefore, in accordance with
37 CFR § 1.192(c)(7), we have selected claims 1 and 7 as
the representative claims from these groupings on which to
decide the appeal of this rejection.
Lewis (Figures 5D and 5E) discloses an overhead door,
such as a garage door, comprising a plurality of horizontally
extending panels (170, 172, 174) pivotally connected to each
other by a flexible hinge (92), best seen in Figure 3. Each
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Application No. 08/814,272
of the panels comprises a pattern (176 to 186) formed by
raised mullions. From our viewpoint, the upright rectangular
patterns formed by the raised mullions and the portions of the
panels exposed within the patterns give the overhead door
shown in either Figure 5D or Figure 5E a facade of three
upright doors. Therefore, we do not agree with the appellant
that "[t]he door configurations of [Lewis] do not show a front
facade of a plurality of upright doors," as argued by the
appellant on page 11 of the brief.
Accordingly, we shall sustain the examiner's rejection of
claim 1, and of claims 2, 3, 10, 12, 14 to 16, 23, 25, 28 and
30 which stand or fall therewith, under 35 U.S.C. § 102(e).
As to claim 7, each panel of the Lewis door comprises an
outer skin (54) forming the front face of the panel. The
appellant's only argument with regard to the separate
patentability of claims 7 to 9, 20 to 22 and 27 is that Lewis
does not have "adjacent panels having sheet members that
overlap any panel structure" (brief, page 11). This is not
found persuasive as it is not commensurate in scope with claim
7, which merely requires that the front wall of each panel
include sheet members. Moreover, we note that each panel
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Application No. 08/814,272
comprises a D-shaped male joint member (104) attached at the
top edge thereof which engages a female joint member (58)
disposed at the bottom of the adjacent panel. As best seen in
Figure 2, when the overhead door is in the closed position,
with adjacent panels lying in the same plane, the skin (54) of
an upper panel has a bottom portion which overlaps the joint
member (104) of the next adjacent panel.
For the above reasons, we shall also sustain the
examiner's rejection of claim 7, and claims 8, 9, 20 to 22 and
27 which stand or fall therewith, under 35 U.S.C. § 102(e) as
being anticipated by Lewis.
With regard to rejection 6, the appellant states on page
5 of the brief that claims 4 and 17 stand or fall together and
claims 11, 13, 24, 26 and 29 stand or fall together.
Therefore, and in accordance with 37 CFR § 1.192(c)(7), we
have selected claims 17 and 13 as the representative claims to
decide the appeal of this rejection as to these two groups of
claims.
The appellant argues that Lewis does not disclose a top
frame member having a lower edge with an arched configuration
(page 9). The examiner asserts that the provision of arches
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Application No. 08/814,272
on the Lewis door panels would have been obvious "so as to
improve
aesthetics" (final rejection, page 3). We agree with the
examiner.
Initially, we note that a change in the shape of the
upper member of the frame of the garage door in this case is
merely an ornamental or aesthetic design consideration having
no mechanical function or consequence whatever and thus cannot
be relied upon for patentability of a claim in an application
for patent under 35 U.S.C. § 103. See In re Seid, 161 F.2d
229, 231, 73 USPQ 431, 433 (CCPA 1947). Moreover, although
Lewis does not illustrate any patterns on the overhead door
designs shown in Figures 5D and 5E having arched
configurations, Lewis does teach (see Figures 6A through 6C)
the use of patterns having arched configurations. Further,
Lewis suggests (column 1, lines 37 to 55 and column 2, lines
61 to 65) mixing, matching and flipping door panels provided
with different design patterns to provide the garage doors
with different aesthetic looks. In view of the teachings of
Lewis, it would have been obvious to provide the top panel of
the garage door shown in Figure 5D or Figure 5E with a panel
Appeal No. 1999-0611 Page 11
Application No. 08/814,272
having an arch-shaped pattern to give the garage door a
different "aesthetic" look. From our viewpoint, such an arch-
shaped pattern would comprise a top frame member having a
lower edge with an upwardly arched shape, as required by claim
17.
Accordingly, we shall sustain the examiner's rejection of
claims 4 and 17 under 35 U.S.C. § 103 as being unpatentable
over Lewis.
With regard to claim 13, the examiner implicitly concedes
that Lewis does not disclose the upright members of the design
patterns (176 to 186) having "upwardly and inwardly directed
beveled top ends." However, the examiner contends that the
provision of mullions or moldings having beveled surfaces
would have been obvious "to improve aesthetics" (final
rejection, page 3). Further, the examiner asserts on page 6
of the answer that "most mullions" are beveled and the
appellant has not challenged this assertion. Accordingly, we
shall accept the examiner's position that mullions having
beveled edges are very common and find that such mullions
would thus have commended themselves to one of ordinary skill
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Application No. 08/814,272
in the art designing door panels of the type disclosed by
Lewis.
For the above reasons, we shall sustain the examiner's
rejection of claim 13, and of claims 11, 24, 26 and 29 which
stand or fall therewith, under 35 U.S.C. § 103 as being
unpatentable over Lewis.
Turning finally to rejection 7, the appellant states that
claims 5, 6, 18 and 19 stand or fall together (brief, page 5).
Therefore, and in accordance with 37 CFR § 1.192(c)(7), we
have selected claim 18 as the representative claim to decide
the appeal of this rejection.
We agree with the examiner's position that it would have
been obvious to provide arched windows on the Lewis garage
door in view of the teachings of Schlicht. Schlicht teaches
"[l]ites are conventionally provided in exterior doors to
admit [light] and to allow the persons within the building to
observe the exterior" (column 1, lines 9 to 11). Schlicht
further teaches that complex decorative configurations for the
"lites" are frequently desirable (column 1, lines 16 to 20).
To achieve these objectives in a manner that does not require
formation of complex recesses in the door, Schlicht discloses
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Application No. 08/814,272
a "lite" assembly (16) comprising a rectangular frame (18) in
which a decorative trim panel (22) provided with pie-shaped
apertures (48) is inserted against a transparent glazing panel
(20). Schlicht teaches insertion of these "lite" assemblies
into rectangular recesses in the top door panel (14) of a
garage door, as seen in Figure 1. Thus, Schlicht provides
ample suggestion to one of ordinary skill in the art to have
provided such "lite" assembly inserts in the top panel of the
Lewis garage door to provide a decorative means for admitting
light into the garage and permitting persons within the garage
to view the exterior of the garage. Further, we find that it
would have been obvious to one of ordinary skill in the art to
position such inserts so that the vertical framing elements
(19) of the rectangular frame (18) are in alignment with the
mullion patterns of the Lewis door panels in order to achieve
an aesthetically pleasing effect. Contrary to the appellant's
argument on page 9 of the brief, we find that the decorative
panel (22) taught by Schlicht is indeed a top member of a
frame means, which also includes the vertical framing elements
(19) of the rectangular frame (18) of the insert and the
vertical mullions. Further, the decorative panel has lower
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Application No. 08/814,272
edges having an upwardly arched shape complementary to the
apertures (48) which form the windows.
For the foregoing reasons, we shall sustain the
examiner's rejection of claim 18, and of claims 5, 6 and 19
which stand or fall therewith, under 35 U.S.C. § 103 as being
unpatentable over Lewis in view of Schlicht et al.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 3, 7 to 10, 12, 14 to 16, 20 to 23, 25, 27, 28 and
30 under 35 U.S.C. § 102(b) as being anticipated by Fimbell or
Norberg, claims 4 and 17 under 35 U.S.C. § 103 as being
unpatentable over Fimbell or Norberg and claims 5, 6, 18 and
19 under 35 U.S.C. § 103 as being unpatentable over Fimbell
or Norberg in view of Schlicht is reversed. However, the
decision of the examiner to reject claims 1 to 3, 7 to 10, 12,
14 to 16, 20 to 23, 25, 27, 28 and 30 under 35 U.S.C. § 102(e)
as being anticipated by Lewis, claims 4, 11, 13, 17, 24, 26
and 29 under 35 U.S.C. § 103 as being unpatentable over Lewis
and claims 5, 6, 18 and 19 under 35 U.S.C. § 103 as being
unpatentable over Lewis in view of Schlicht is affirmed.
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Application No. 08/814,272
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/pgg
Richard O. Bartz
Appeal No. 1999-0611 Page 16
Application No. 08/814,272
1300 Foshay Tower
Minneapolis, MN 55402