Ex Parte Gernstein

Patent Trials and Appeals Board

Sep 20, 2013

12152048 - (D) (P.T.A.B. Sep. 20, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/152,048 05/12/2008 Dan H. Gernstein 3567
31083 7590 09/20/2013
THOMTE LAW OFFICE, L.L.C.
2120 S. 72ND STREET, SUITE 1111
OMAHA, NE 68124
EXAMINER
MAESTRI, PATRICK J
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
09/20/2013 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte DAN H. GERNSTEIN
________________

Appeal 2011-010291
Application 12/152,048
Technology Center 3600
________________

Before MICHAEL L. HOELTER, MITCHELL G. WEATHERLY and
CARL M. DeFRANCO, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010291
Application 12/152,048

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 2-8 and 10-21. Br. 1. Claims 1 and 9 have been
canceled. Claims App’x 14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a window well and more
particularly to a window well which provides an emergency escape structure
from a basement window.” Spec. 1:17-18. Independent claim 16 is
illustrative of the claims on appeal and is reproduced and reformatted below:
16. A modular egress window well for use by a person to
escape through a window formed in a basement wall,
comprising:
a first upstanding straight side wall module having an
upper end, a lower end, a first side edge, a second side edge,
and inner and outer surfaces; said first side wall module having
an elongated, vertically disposed first flange extending
outwardly from its said first side edge; said first side wall
module having an elongated, vertically disposed second flange
extending outwardly from its said second side edge; said first
side wall module having an elongated, horizontally disposed
third flange extending outwardly therefrom below its said upper
end;
a first upstanding curved corner module having an upper
end, a lower end, a first side edge, a second side edge and inner
and outer surfaces; said first curved corner module having an
elongated, vertically disposed first flange extending outwardly
from its said first side edge; said first curved corner module
having an elongated, vertically disposed second flange
extending outwardly from its said second side edge; said first
curved corner module having an elongated, horizontally
disposed third flange extending outwardly therefrom below its
said upper end;
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a second upstanding straight side wall module having an
upper end, a lower end, a first side edge, a second side edge and
inner and outer surfaces; said second side wall module having
an elongated, vertically disposed first flange extending
outwardly from its said first side edge; said second side wall
module having an elongated, vertically disposed second flange
extending outwardly from its said second side edge; said second
side wall module having an elongated, horizontally disposed
third flange extending outwardly therefrom below its said upper
end;
a second upstanding curved corner module having an
upper end, a lower end, a first side edge, a second side edge and
inner and outer surfaces; said second curved corner module
having an elongated, vertically disposed first flange extending
outwardly from its said first side edge; said second curved
corner module having an elongated, vertically disposed second
flange extending outwardly from its said second side edge; said
second curved corner module having an elongated, horizontally
disposed third flange extending outwardly therefrom below its
said upper end;
said second flange of said first side wall module being
joined to said first flange of said first corner module;
said second flange of said second side wall module being
joined to said first flange of said second corner module;
said second flanges of said first and second corner
modules being joined together whereby the joined modules
define a generally U-shaped body member;
said modular being comprised of a composite material.

REFERENCES RELIED ON BY THE EXAMINER
Bertsch US 4,118,809 Oct. 10, 1978
Poole US 6,484,455 B1 Nov. 26, 2002
Koenig US 6,581,338 B2 Jun. 24, 2003
Hawkes US 6,880,300 B2 Apr. 19, 2005
Oakley US 6,915,612 B2 Jul. 12, 2005
Heady US 2007/0089373 A1 Apr. 26, 2007
Joyce US 7,356,968 B2 Apr. 15, 2008

Appeal 2011-010291
Application 12/152,048

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THE REJECTIONS ON APPEAL
1. Claims 16, 18 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Heady and Bertsch. Ans. 4.
2. Claims 2, 5 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Heady, Bertsch and Joyce. Ans. 7.
3. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Heady, Bertsch and Poole. Ans. 8.
4. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Heady, Bertsch, Joyce and Koenig.1 Ans. 8.
5. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Heady, Bertsch and Oakley.2 Ans. 9.
6. Claims 17, 10, 14, 15, 19 and 21 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Heady, Hawkes and Bertsch. Ans. 10.
7. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Heady, Hawkes, Bertsch and Joyce. Ans. 14.
8. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Heady, Hawkes, Bertsch, Joyce and Koenig. Ans. 15.

1 The Examiner also lists claim 13 (Ans. 8) but claim 13 depends from claim
11 which involves the additional reference to Hawkes. As claim 13 is
separately rejected below based on Hawkes (among others), we believe the
Examiner’s inclusion of claim 13 in this rejection alongside claim 4 is an
oversight. Appellant does not dispute the matter. Br. 9, 12.
2 The Examiner does not identify Bertsch in the heading of this rejection, but
the Examiner references Bertsch in the body thereof. Ans. 9. We thus
understand that claims 7 and 8 are also rejected under Bertsch. Appellant
does not dispute this matter. Br. 9-10.
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ANALYSIS
The rejection of claims 16, 18 and 20
as being unpatentable over Heady and Bertsch
Appellant argues independent claim 16 separately from the combined
arguments made with respect to dependent claims 18 and 20. We address
both groupings separately.
Claim 16
Independent claim 16 is directed to a modular window well
comprising multiple flanged side walls and curved corner modules. The
Examiner finds that Heady teaches flangeless side wall and corner modules
(see items 20 and 24 of Heady Fig. 3) and relies on Bertsch for teaching
“flanges on both ends of all panels” (see items 73 and 74 of Bertsch Fig. 3).3
Ans. 4-6. The Examiner finds that it would have been obvious “to combine
the window well as taught by Heady with the flanges and method of
construction as taught by Bertsch in order to form a barrier against earth that
allows for egress from a window.” Ans. 6. The Examiner further elaborates
that by “making the well in several components as taught by Heady it would
allow for implementation in scenarios where different sizes are required.”
Ans. 6.
Appellant contends that Heady does not teach or suggest the different
“modules with the flanges thereof being joined together.” Br. 6. This is
correct; the Examiner does not rely on Heady for teaching or suggesting
flanges or that the modules are joined by their flanges. Instead, the
Examiner relies on Bertsch for such teachings. Ans. 4-6, 16. Accordingly,
Appellant’s contention is not persuasive.

3 Bertsch Fig. 3 only shows item “3,” but per the accompanying text, it is
believed that this is correctly item “73.” Bertsch 4:64 to 5:4.
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Appellant acknowledges that “Bertsch does teach flanges on the ends
of [the] modules” but that there is “no suggestion, motivation or teaching in
the references of record that the flanges of Bertsch could be employed in
combination with the Heady structure.” Br. 6. The Supreme Court provided
instruction that “[t]he obviousness analysis cannot be confined by a
formalistic conception of the words teaching, suggestion, and motivation, or
by overemphasis on the importance of published articles and the explicit
content of issued patents.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419
(2007). In place of such a rigid test, the Court held that “‘instead, there must
be some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.’” KSR, 550 U.S. at 418. Here, the
Examiner’s stated reasoning for combining Heady and Bertsch is to “form a
barrier against earth that allows for egress from a window” and also to
“allow for implementation in scenarios where different sizes are required.”
Ans. 6. Appellant does not indicate how the Examiner’s conclusion is in
error or lacks a rational underpinning such that the Examiner’s reasoning is
unable to support the legal conclusion of obviousness.
Appellant further contends that “even if Heady and Bertsch are
modified and combined as suggested by the Examiner, the resulting structure
would still not make Applicant’s claimed structure of Claim 16 obvious.”
Br. 6. Because Appellant does not further elaborate as to how this might be
the case, we do not find this contention persuasive of Examiner error.
Appellant also contends that Heady does not teach curved modules
that, when joined, define “a generally U-shaped body member.” Br. 7.
However, Figures 3 and 4 of Heady disclose such structure. See also Ans. 4.
Appellant acknowledges that “Fig. 4 of Heady illustrates two semi-circular
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members 16 and 20” but that “there is not a back wall module positioned
therebetween.” Br. 7. However, we agree with the Examiner that there is no
limitation in claim 16 directed to a back wall positioned between curved
modules. Ans. 17. Instead, this limitation is found in independent claim 17,
which is discussed below with respect to a separate rejection and which is
not rejected in light of the combination of Heady and Bertsch. See Ans. 4,
10.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of independent claim 16.
Claims 18 and 20
Claims 18 and 20 both depend directly from claim 16 and provide the
additional limitation that the flanges are joined together by “threaded
fasteners” (claim 18) or “glue” (claim 20). Appellant does not dispute the
Examiner’s findings that “Bertsch teaches fasteners” or that it is well known
in the art “to use glue to provide a watertight seal and make the joint
permanent.” Ans. 6. Instead, Appellant contends that there is no suggestion
“that the claimed flanges could be used on the claimed modules to enable the
window well structure to have different configurations and sizes.” Br. 7.
Further, Appellant contends that “[t]he prior art is completely silent as to any
structure even remotely similar to that described in claims 18 and 20.” Br. 7.
We note that there is no claim requirement that the window well structure
have different configurations and sizes; instead, this is the rationale relied on
by the Examiner for combining Heady and Bertsch, and Appellant’s
contention does not indicate where the Examiner’s rationale is faulty or in
error or lacks a rational underpinning to support the finding of obviousness.
Also, the rigid need for the prior art to specifically disclose such structure is
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no longer the test for obviousness after KSR. See supra. Accordingly, we
sustain the Examiner’s rejection of claims 18 and 20.

The rejection of claims 2, 5 and 6
as being unpatentable over Heady, Bertsch and Joyce
Appellant does not dispute the Examiner’s additional reliance on
Joyce for teaching “a spacer and a lid (figure 2, item 20 and 14).” Ans. 7.
Instead, Appellant relies on the same reasons for allowance as were relied on
supra with respect to parent claim 16. Br. 8. We do not find Appellant’s
contentions persuasive. Accordingly, we sustain the Examiner’s rejection of
claims 2, 5 and 6.

The rejection of claim 3
as being unpatentable over Heady, Bertsch and Poole
Appellant does not dispute the Examiner’s additional reliance on
Poole for teaching “a fiberglass material (col 7, lines 39-42).” Ans. 8.
Instead, as above, Appellant relies on the same reasons for allowance as
were relied on supra with respect to parent claim 16. Br. 8-9; see also Ans.
18. Appellant also contends that he believes “he is the first person to utilize
a composite material in a window well having the structure set forth in
Claim 16.” Br. 8. However, such contentions are not persuasive that the
Examiner’s findings are in error. We sustain the Examiner’s rejection of
claim 3.

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The rejection of claim 4
as being unpatentable over Heady, Bertsch, Joyce and Koenig
Appellant does not dispute the Examiner’s additional reliance on
Koenig for teaching “a translucent lid (col 7, lines 19-21).” Ans. 9. Instead,
Appellant relies on the same reasons for allowance as expressed with respect
to claim 16 and also contends that “he believes himself to be the first person
to use a translucent lid in combination with the claimed structure of the
window well.” Br. 9. Neither contention addresses the Examiner’s
additional reason for the rejection of claim 4 nor do they persuade us of
Examiner error. We sustain the Examiner’s rejection of claim 4.

The rejection of claims 7 and 8
as being unpatentable over Heady, Bertsch and Oakley
Appellant does not dispute the Examiner’s additional reliance on
Oakley for teaching “an upstanding stair structure (item 26).” Ans. 9.
Appellant contends that “he is the first person to utilize a stair structure in
combination with the structure set forth in Claim 16.” Br. 10. We are not
persuaded that the dependency of claims 7 and 8 on claim 16, or Appellant’s
contention, is indicative of Examiner error. We sustain the Examiner’s
rejection of claims 7 and 8.

The rejection of claims 17, 10, 14, 15, 19 and 21
as being unpatentable over Heady, Hawkes and Bertsch
Appellant does not dispute the Examiner’s additional reliance on
Hawkes for teaching “a composite material (claim 6), and a back wall
attached to the two curved corner walls (figure 3).” Ans. 12. Instead,
Appellant contends that these claims are allowable for reasons similar to
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those expressed with respect to claim 16. Br. 10-12. Appellant’s reliance on
arguments already presented and found wanting are not persuasive for the
reasons previously expressed. We sustain the Examiner’s rejection of claims
17, 10, 14, 15, 19 and 21.
The rejection of claims 11 and 12
as being unpatentable over Heady, Hawkes, Bertsch and Joyce
Appellant does not dispute the Examiner’s additional reliance on
Joyce for teaching “a spacer and a lid (figure 2, item 20 and 14).” Ans. 15.
Instead, Appellant relies on the same reasons for allowance as were relied on
supra with respect to claim 17. Br. 12. We do not find Appellant’s
contentions persuasive. Accordingly, we sustain the Examiner’s rejection of
claims 11 and 12.

The rejection of claim 13
as being unpatentable over Heady, Hawkes, Bertsch, Joyce and Koenig
Appellant does not dispute the Examiner’s additional reliance on
Koenig for teaching “a translucent lid (col 7, lines 19-21).” Ans. 16.
Instead, Appellant relies on the same reasons for allowance as expressed
with respect to claim 17. Br. 12. Appellant also notes the “five references
of record” that are combined to make this rejection. Br. 12. In this regard,
we are instructed by our reviewing court that “reliance on a large number of
references” in a rejection does not, without more, weigh against the
obviousness of the claimed invention and further that it “is not the number of
references, but what they would have meant to a person of ordinary skill in
the field of the invention.” In re Gorman, 933 F.2d 982, 986 (Fed. Cir.
1991). Here, Appellant only contends that these five references, when
combined as suggested by the Examiner, “do[] not make the structure of
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Claim 13 obvious.” Br. 12. Appellant’s contention does not persuade of us
Examiner error. Accordingly, we sustain the Examiner’s rejection of claim
13.

DECISION
The Examiner’s rejections of claims 2-8 and 10-21 are 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).

AFFIRMED

rvb