Ex Parte Garrett

Board of Patent Appeals and Interferences

Feb 22, 2011

10838529 (B.P.A.I. Feb. 22, 2011)

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.
10/838,529 05/05/2004 Robert Garrett 3867
7590 02/22/2011
ROBERT GARRETT
2470 WINTERGREEN WAY
GAMBRILLS, MD 21054-1555
EXAMINER
QUINN, COLLEEN M
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
02/22/2011 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 ROBERT GARRETT
____________________

Appeal 2009-007766
Application 10/838,529
Technology Center 3600
____________________

Before JENNIFER D. BAHR, LINDA E. HORNER, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Robert Garrett (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 21-24 and 26. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

THE INVENTION
Appellant’s claimed invention pertains to a wedge-shaped apparatus
for use in pitched roof construction. See Spec. 5, para. [10]; 87, para [300] –
88, para. [302]; figs. 97-99. Claim 21, reproduced below, is representative
of the subject matter on appeal.
21. An apparatus for preventing at least one item from
sliding off an inclined surface, comprising:
a planar substantially rigid portion for accepting at least a
portion of the at least one item on a top side over one end of the
planar substantially rigid portion, the substantially rigid portion
having no raised edges on the one end of the planar
substantially rigid portion or on sides adjoining the one end of
the planar substantially rigid portion;
a stop portion at the other end of the planar substantially
rigid portion, comprising a substantially perpendicular portion
to the planar substantially rigid portion, for securing at least a
portion of the item, wherein the stop portion includes a cutout
serving as a handle for carrying the apparatus; and
a wedge-shaped layer of foam material secured to an
underside of the planar substantially rigid portion, the wedge-
shaped layer of foam is adapted to engage the inclined surface
to as to prevent the apparatus from sliding on the inclined
surface,
wherein the wedge-shaped layer of foam has a wedge
shape defined by a varying thickness of foam, varying from a
first thickness at the one end of the planar substantially rigid
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portion to a second, larger thickness at the other end of the
planar substantially rigid portion.

THE REJECTION
Before us for review is the Examiner’s rejection of claims 21-24
and 26 under 35 U.S.C. § 103(a) as being unpatentable over Cougar
(US 6,216,819 B1, issued Apr. 17, 2001, hereinafter “Cougar ‘819”), Bond
(US 5,887,406, issued Mar. 30, 1999), and Cougar (US Des. 398,820, issued
Sep. 29, 1998, hereinafter “Cougar ‘820”).

OPINION
Appellant argues the rejected claims as a group. App. Br. 7-20. We
select claim 21 as the representative claim, and claims 22-24 and 26 stand or
fall with claim 21. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 21 calls for an apparatus comprising: 1) a planar substantially
rigid portion; 2) a stop portion that forms the only raised edge on the planar
portion; 3) a cutout in the stop portion which serves as a handle; and 4) a
wedge-shaped layer of foam material secured to the underside of the planar
portion.
We agree with and adopt as our own the Examiner’s findings set
forth in the Grounds of Rejection section of the Answer. Ans. 3-5. The
Examiner found that Cougar ‘819 discloses Appellant’s claimed invention
except that the foam layer of the device of Cougar ‘819 is not wedge shaped,
and the stop lacks a cutout. Ans. 3-4; see, e.g., Cougar, fig. 2. The foam
layer of Cougar ‘819 appears to have a constant thickness rather than the
claimed wedge shape. Bond teaches the use of a foam wedge to provide a
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level surface for items on a pitched roof. Ans. 42; see, e.g., Bond, Abstr,
figs. 1-2. Cougar ‘820 discloses a device similar to that of Cougar ‘819 with
a cutout in the stop. Ans. 4-5; Cougar ‘820, figs. 1-3. The Examiner’s
proposed modification results in the device of Cougar ‘819 having a wedge
shaped foam member as taught by Bond and a cutout in the stop as taught by
Cougar ‘820. It is our determination that the Examiner’s conclusion of
obviousness is supported by adequate articulated reasoning with rational
underpinning. See Ans. 4-5, 6, 9, 12.
We have considered Appellant’s arguments, but are not persuaded that
the Examiner failed to establish a prima facie case of obviousness. In
particular, we note that many of Appellant’s arguments are not
commensurate with the scope of claim 21. For example, Appellant’s view
of the invention is as follows:
The present inventor invented the small, portable wedge, by
coming up with the idea of using a wedge-shaped piece of foam
on a smaller device, which rests only under a portion of the
shingle package. Prior Art devices were large and bulky
because they did not have the insight to use a wedge shaped
piece of foam to wedge under just a portion of a shingle
package.
App. Br. 18. Claim 21 does not contain a size limitation. Also, Appellant’s
“insight” as to the intended use of the device is expressed in claim 21 as
functional language and is broadly stated in terms of the rigid portion being
configured “for accepting at least a portion of the at least one item”
(emphasis ours), not to wedge under only a portion of a shingle package, as

2 The Examiner also relies on Bond for the teaching of sheet metal as the
material for the rigid portion, which is not a requirement of representative
claim 21. Ans. 4; cf. claim 26 (reciting a sheet metal flange).
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Appellant suggests. The apparatus resulting from the combined references’
teachings is capable of performing this function. See Ans. 4, 7, 8, 10; see
also In re Swinehart, 439 F.2d 210, 213 (CCPA 1971) (“a claim employing
such [functional] language covers any and all embodiments which perform
the recited function.”)
Appellant’s arguments as to the purported shortcomings of the
individual references (e.g., App. Br. 8-10) do not show error in the
obviousness rejection. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981))
(“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”)
To the extent that Appellant’s arguments are based on a rigid and
formulistic requirement of a teaching, suggestion, or motivation to combine
references (see App. Br. 10-11, 17-19), those arguments are not persuasive
in light of the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418-19 (2007).
We are not persuaded by Appellant’s argument (App. Br. 18) that
Bond teaches away from wedging foam under a package of shingles (which,
again, is not commensurate with the “at least one item” language of claim
21) by depicting a package of shingles resting against the side rather than the
top of the wedge. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004)) (“A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
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claimed.”); see also Bond, col. 2, ll. 54-56 (“When the tray 20 is not used, a
number or a bundle of shingles may be supported in whole or in part on the
level surface of the support 10.”)
We conclude that the Examiner has established a prima facie case of
obviousness. However, Appellant asserts that there is evidence of secondary
indicia of non-obviousness. Accordingly, we consider anew the issue of
obviousness under 35 U.S.C. § 103, carefully evaluating and weighing both
the evidence relied upon by the Examiner and the objective evidence of
non-obviousness provided by Appellant. For evidence of secondary
considerations to be accorded substantial weight, Appellant must establish a
nexus between the evidence and the merits of the claimed invention. See In
re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995).
Appellant argues: “The present invention has enjoyed commercial
success in that it has been featured in the ABC industrial supply catalog,
which is one of the major ‘go-to’ sources for roofing and construction tools
(See Evidence Appendix).” App. Br. 13 (citing to Exh. 3, a copy of the
catalog depicting “Roof Mates™ Shingle Wedge”). To establish
commercial success, Appellant must present “hard evidence” to support a
finding of commercial success and must show that the commercial success is
a “direct result of the unique characteristics of the claimed invention – as
opposed to other economic and commercial factors unrelated to the quality
of the [claimed] subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir.
1996). Appellant does not indicate what, if any, criteria is used in
determining which products were featured in the catalog. As such, we find
that the inclusion of Appellant’s device in a catalog is, at most, very weak
evidence of commercial success. Appellant’s unsupported assertion that
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“Applicant’s invention … was selling successfully” (App. Br. 14) is mere
attorney argument and not evidence of commercial success. See In re
Schulze, 346 F.2d 600, 602 (CCPA 1965) (“Argument in the brief does not
take the place of evidence in the record.”)
Appellant also argues that “competitors have copied the design nearly
verbatim” and assert that “the ABC catalog decided to make their own
version of the apparatus using one of their subsidiary companies, and sell it.
(See Evidence Appendix).” App. Br. 14 (citing to Exh. 4, a copy of the
catalog depicting the “Wedgie”). Even if we were to assume that a
competitor copied Appellant’s claimed invention, there are various reasons
why one might do so – some of which do not necessarily support a
conclusion of non-obviousness – therefore, “more than the mere fact of
copying … is needed to make that action significant to a determination of
the obviousness issue.” Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d
1015, 1028 (Fed. Cir. 1985), overruled on other grounds by Midwest Indus.,
Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1358-61 (Fed. Cir. 1999) (en
banc). On the very limited record before us, we find that any evidence of
copying is entitled to little weight.
Appellant further argues that “[a]s evidenced by the Prior Art, there is
a lot of activity in this field, and many inventors have struggled to solve the
long-felt needs of roofers.” App. Br. 20; see also id. at 13 (asserting that
non-obviousness is evidenced by “long felt need, failure of others,
commercial success, and the like.”) Evidence of a long felt need must show
that the problem solved by Appellant’s invention was known but not solved
prior to the invention. See In re Gershon, 372 F.2d 535, 538-39 (CCPA
1967). To show a failure of others, the evidence must establish that others
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skilled in the art tried and failed to find a solution for the problem solved by
Appellant. Id.; Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed.
Cir. 1983). According to Appellant, the long felt need and failure of others
pertains to the problem of items falling off roofs. App. Br. 20. The cited
Cougar and Bond references disclose solutions to this problem. Appellant’s
opinion, in the form of mere attorney argument (e.g., App. Br. 13, 18), that
the prior art devices would not work well does not convince us that persons
of ordinary skill in the art were unable to solve a perceived and persistent
need. Further, Appellant seemingly admits that there was a known solution
to the problem by conceding that “foam can be used to secure items … and
the use of foam as a securing agent is adequately demonstrated in the art.”
App. Br. 16. Appellant has not shown that there existed a long-felt but
unresolved need or that there was a failure of others.
On the totality of the evidence, weighing all evidence of obviousness
against all evidence of non-obviousness, we hold that claim 21 is
unpatentable over Cougar ‘819, Bond, and Cougar ‘820. Likewise, claims
22-24 and 26, which fall with claim 21, are also unpatentable over those
references.
DECISION
The decision of the Examiner to reject claims 21-24 and 26 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED
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mls

ROBERT GARRETT
2470 WINTERGREEN WAY
GAMBRILLS, MD 21054-1555