Ex Parte Gill

Patent Trial and Appeal Board

Aug 17, 2015

12084718 (P.T.A.B. Aug. 17, 2015)

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.
12/084,718 03/12/2009 Raymond Gill COU.P.US0007 2256
26360 7590 08/18/2015
Renner Kenner Greive Bobak Taylor & Weber Co., LPA
First National Tower, Suite 400
106 South Main Street
Akron, OH 44308-1412
EXAMINER
IHEZIE, JOSHUA K
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
08/18/2015 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 RAYMOND GILL
____________________

Appeal 2013-003948
Application 12/084,718
Technology Center 3600
____________________

Before STEFAN STAICOVICI, LYNNE H. BROWNE, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Raymond Gill (“Appellant”) seeks our review under 35 U.S.C.
§ 134(a) of the final rejection of claims 1, 2, 4, 8, 11–17, and 25. Br. 2.
Claims 3, 5–7, 9, 10, and 22 have been cancelled and claims 18–21, 23, 24,
and 26–30 have been withdrawn. Id. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
Appeal 2013-003948
Application 12/084,718

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CLAIMED SUBJECT MATTER
Appellant’s invention relates to “a structural member for providing
sound insulation in, for example, a wall or floor structure.” Spec. 1, ll. 6–7.
Claims 1 and 13 are independent and claim 1 is reproduced below, with
emphasis added on a particular claim limitation at issue in this appeal.
1. A structural member comprising a beam having at
least one face provided with a sound insulating layer
comprising a non-foamed, polymeric material;
wherein the sound insulating layer, having a thickness of
between 1 mm and 10 mm, is attached directly to a face of the
beam by way of an adhesive, and wherein the sound insulating
layer forms a surface to which a panel is attached, but wherein
the sound insulating layer covers only a surface area of the face
of the beam rather than an entire surface area of the panel.
Br. 11, Claims App. (emphasis added).

THE REJECTIONS
I. Claims 1, 2, 4, 8, 11–15, 17, and 25 stand rejected under 35
U.S.C. § 103(a) as unpatentable over ’606 (UK Patent Application
1,094,606, published Dec. 13, 1967) and Charlson (US 6,125,608, issued
Oct. 3, 2000). Final Act. 3 (mailed Feb. 28, 2012).
II. Claim 16 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over ’606, Charlson, and ’358 (UK Patent Application
2,375,358 A, published Nov. 13, 2002). Final Act. 5.

ANALYSIS
Rejection I: Claims 1, 2, 4, 8, 11–15, 17, and 25
In rejecting claims 1, 2, 4, 8, 11–15, 17, and 25, the Examiner finds
that ’606 discloses, for the most part, the claimed structural member (as
recited in claim 1) and structure (as recited in claim 13) comprising, inter
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Application 12/084,718

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alia, beam 15 with sound insulating layer 14 attached to panel 11. Id. at 3, 4
(citing ’606, Fig. 1 and ll. 10–12).
Figure 1 of ’606 is reproduced below:

Figure 1 depicts ’606’s rigid panel 11 covered with rubber sheet 14
and attached to wooden framework member 15. ’606, ll. 54–67.
The Examiner acknowledges that ’606 does not disclose sound
insulating layer 14 as only covering “a surface area of the face of the beam,”
as recited in claim 1, and instead discloses the sound insulating layer as
covering the “entire surface area of the panel.” Final Act. 3.
With respect to the claimed sound insulating layer as only covering “a
surface area of the face of the beam,” the Examiner relies on Charlson for
disclosing beam 220 with sound insulating layer 110 as teaching this
limitation. Id. (citing Charlson, Fig. 14, col. 21, ll. 58–59).

Appeal 2013-003948
Application 12/084,718

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Figure 14 of Charlson is reproduced below:

Figure 14 depicts Charlson’s wood framing member 220 with rigid
thermal insulation 110. Charlson, col. 5, ll. 34–37; id. at col. 9, ll. 27–30.
In combining ’606 with Charlson to arrive at the claimed “sound
insulating layer [as only covering] a surface area of the face of the beam
rather than an entire surface of the panel,” the Examiner reasons, “[i]t would
be obvious to cover only a surface area of the face of the beam with the
insulating material to save material and cut expenses while maximizing the
insulation capabilities of the structural member.” Final Act. 4 (emphasis
added).
In contesting the rejection, Appellant asserts that the Examiner is
relying on hindsight in modifying ’606’s rubber sheet 14 to “cover only a
surface area of the face of the beam.” Br. 6.
At the outset, we note that Appellant’s invention is explicitly aimed at
reducing the amount of sound insulating material, which is heavy and
expensive. Spec. 2, ll. 7–9. In particular, Appellant’s Specification
discloses:
The present invention is based on a discovery that, by
attaching a layer of a non-foamed, polymeric barrier sheet to
the structural framework, desirable sound insulation can be
achieved using a fraction of the sheet material used when
covering the surface of a wall. The structural framework
usually has a much lower surface area than that of the supported
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Application 12/084,718

5
wall, and so the present invention may greatly reduce the cost
of materials.
Spec. 2, ll. 13–17 (emphasis added).
Moreover, the Examiner has not provided any objective evidence to
support a finding that reducing the size of ’606’s rubber sheets 14 would
continue to provide adequate noise absorption, let alone “maximizing the
insulation capabilities,” as the Examiner found. See Final Act. 3–4, 5–6; see
also Adv. Act. 2; see also Ans. 2–3.1 In other words, the Examiner has not
only failed to establish that reducing the size of ’606’s rubber sheets 14
would “maximize” noise absorption, but also failed to establish that the size
reduction would somehow maintain minimally-acceptable noise absorption.
Accordingly, absent hindsight, namely, Appellant’s own disclosure,
we do not agree with the Examiner’s conclusion that a person of ordinary
skill in the art would have been led to reduce the size of ’606’s rubber sheets
14 to only cover a surface area of beam 15 for the purpose of saving
material, cutting expenses, and maximizing insulation capabilities. Final
Act. 4.
For the foregoing reasons, we do not sustain the rejection of claims
claims 1, 2, 4, 8, 11–15, 17, and 25 as unpatentable over ’606 and Charlson.

1 The pages of the Examiner’s Answer are incorrectly marked, therefore, all
references to the page numbers are based on the Title page as page 1 of a 5-
page document.
Appeal 2013-003948
Application 12/084,718

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Rejection II: Claim 16
The rejection of claim 16 is based on the same unsupportable legal
conclusion relied on and discussed supra with Rejection I, namely, that it
would have been obvious to modify the size of 606’s rubber sheet 14 to
“save material and cut expenses while maximizing the insulation capabilities
of the structural member.” See Final Act. 5; see also id. at 4. Therefore, we
do not sustain the rejection of claim 16 as unpatentable over ’606, Charlson,
and ’358.

SUMMARY
The Examiner’s decision to reject claims 1, 2, 4, 8, 11–15, 17, and 25
under 35 U.S.C. § 103(a) as unpatentable over ’606 and Charlson is
reversed.
The Examiner’s decision to reject claim 16 under 35 U.S.C. § 103(a)
as unpatentable over ’606, Charlson, and ’358 is also reversed.

REVERSED

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