Ex Parte Gunthardt

Board of Patent Appeals and Interferences

Aug 18, 2004

09640335 (B.P.A.I. Aug. 18, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RAY GUNTHARDT
__________
Appeal No. 2004-1542
Application No. 09/640,335
___________
ON BRIEF
___________
Before COHEN, MCQUADE, and NASE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Ray Gunthardt appeals from the final rejection (Paper No.
12) of claims 1 through 20 and 28, all of the claims pending in
the application.
THE INVENTION
The invention relates to “architectures for resisting the
forces of weather” (specification, page 1). Representative claim
1 reads as follows:
1. An architecture comprising:
a framework carried by a supporting surface;
an openwork of discrete, aerodynamic living units supported
by the framework, each of the living units having a shape and the
units being arranged to absorb weather forces of predicted
Appeal No. 2004-1542
Application No. 09/640,335
2
weather patterns and use the forces to bias the units toward the
supporting surface and in a selected direction to increase
stability of the architecture.
THE REJECTIONS
Claims 1, 3 through 6, 8 through 11 and 13 through 17 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by U.S.
Patent No. 3,331,168 to Frey.
Claims 2, 7, 12, 18 through 20 and 28 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Frey.
Attention is directed to the main and reply briefs (Paper
Nos. 14 and 16) and the answer (Paper No. 15) for the respective
positions of the appellant and the examiner regarding the merits
of these rejections.
DISCUSSION
Frey discloses a multiple unit building which is described
in the reference as follows:
Referring now in detail to the drawings, the
building illustrated therein includes a double walled
service column having inner and outer walls 10 and 12
respectively with a plurality of floor elements 14
mounted therebetween at various levels in the tower.
An elevator shaft 16 (FIG. 2) is provided within the
wall 10 and has access doors 18 at the levels of the
various floor elements 14. A stair well 20 is also
provided in the service tower inside the wall 10 as is
a vertical chute 22 in which service facilities (not
shown) are mounted for providing water, electricity,
gas, and sewage outlets at each floor level of the
tower.
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Application No. 09/640,335
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As best seen in FIG. 2, the outer wall 12 of the
service tower is hexagonal and provided with an exterior
opening 24 in each of its six faces at the level of each
floor element 14. A plurality of housing units 26, 27,
28, 29 and 30 are suspended adjacent to the service
tower and provided with doorways communicating with the
access openings 24 in the outer wall 12 of the service
tower. In the embodiment of the invention illustrated,
each of the modular housing unit[s] is suspended
independently by cables 32 which are attached to the
floor 34 (FIG. 3) of each module except module 29 which
is suspended solely by a single central cable 32
attached to the roof of the module by conventional cable
anchors as shown in FIG. 3, the cables extending
upwardly through passages in the modules thereabove and
hence over sheaves 36 on a cantilever support portion 38
on top of the service tower. The ends of the cables 32
are connected to power hoists 40 in the top of the
service tower, the hoists being used to lift the various
modules into place adjacent to the service tower with
the cables being detached from the hoist and permanently
secured to the tower after the modules are in place
[column 3, lines 19 through 51].
As indicated above, independent claim 1 recites an
architecture comprising a framework carried by a supporting
surface and living units arranged to absorb weather forces of
predicted weather patterns and use the forces to bias the units
toward the supporting surface and in a selected direction to
increase stability of the architecture. Independent claims 6,
11, 18 and 28 contain similar living unit limitations. Claim 6
recites an architecture comprising living units shaped and
arranged to absorb weather forces of predicted weather patterns
Appeal No. 2004-1542
Application No. 09/640,335
4
and use the forces to bias the units in a selected direction to
increase stability of the architecture. Claim 11 recites an
architecture comprising living units each shaped and arranged to
absorb weather forces of predicted weather patterns and use the
forces to bias the units in a selected direction to increase
stability of the architecture. Claim 18 recites an architecture
comprising living units each arranged to absorb weather forces of
predicted weather patterns and use the forces to bias the units
together to increase stability of the architecture. Claim 28
recites a method of erecting an architecture comprising the step
of erecting living units arranged to use predicted weather forces
to bias the units toward the supporting surface. Each of the
rejections on appeal rests on a determination by the examiner
that Frey meets these limitations.
More specifically, the examiner finds correspondence between
Frey’s housing units 26-30 and the living units recited in the
appellant’s claims and submits that
[a]lthough Frey does not specifically disclose that said
units are arranged to absorb weather forces of predicted
weather patterns and use the forces to bias the units
toward the supporting surface and in a selected
direction to increase stability of the architecture[,]
[t]he examiner would like to point out that these
limitations are functional limitations, and Frey
discloses all of the specific structural features of the
claims. Therefore, the units are inherently capable of
resisting, or absorbing weather forces of predicted
Appeal No. 2004-1542
Application No. 09/640,335
5
weather patterns and using the forces to bias the units
toward the supporting surface and in a selected
direction to increase stability of the architecture.
This is so because two structures having the same
structural features will inherently act in the same
manner. Finally, since the applicant has not claimed
any structure that differentiates his architecture from
Frey’s architecture, the two structures will inherently
be capable of functioning in the same manner [answer,
pages 4 and 5].
The examiner seems to have parsed independent claims 1, 6,
11, 18 and 28 into “structural” limitations and “functional”
limitations and found that Frey meets the above noted
“functional” limitations under principles of inherency merely
because Frey’s building meets the “structural” limitations. In
effect, this approach improperly reads the “functional”
limitations out of the claims.
There is, of course, nothing intrinsically wrong with using
functional language in a claim to define something by what it
does rather than by what it is. In re Swinehart, 439 F.2d 210,
213, 169 USPQ 226, 228 (CCPA 1971). As correctly pointed out by
the examiner, the language at issue in claims 1, 6, 11, 18 and 28
is essentially functional in nature. It defines the living units
by what they do. Properly construed, these limitations, while
functional in nature, require the building units to embody
structure which, when subjected to weather forces of predicted
weather patterns, uses such forces to bias the building units in
Appeal No. 2004-1542
Application No. 09/640,335
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a particular manner. Frey simply does not provide any factual
basis for a determination that the housing units disclosed
therein inherently embody, or would have suggested, such
structure.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of independent claims 1, 6 and 11, and
dependent claims 3 through 5, 8 through 10 and 13 through 17, as
being anticipated by Frey, or the standing 35 U.S.C. § 103(a)
rejection of independent claims 18 and 28, and dependent claims
2, 7, 12, 19 and 20, as being unpatentable over Frey.
SUMMARY
The decision of the examiner to reject claims 1 through 20
and 28 is reversed.
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Application No. 09/640,335
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REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/kis
Appeal No. 2004-1542
Application No. 09/640,335
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ROBERT A. PARSONS
PARSONS & GOLTRY
340 EAST PALM LANE
SUITE 260
PHOENIX, AZ 85004