Ex parte Hoffman

Board of Patent Appeals and Interferences

Jan 27, 1999

08540548 (B.P.A.I. Jan. 27, 1999)

Application for patent filed October 6, 1995.1
1
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(2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KENNETH S. HOFFMAN
__________
Appeal No. 98-0059
Application 08/540,5481
__________
ON BRIEF
__________
Before ABRAMS, STAAB, and CRAWFORD, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-5 and 7-10, which at that point
Appeal No. 98-0059
Application No. 08/540,548
Paper No. 8, the final rejection, erroneously2
indicated that claim 6 was still of record, although it had
been canceled in the amendment designated as Paper No. 7.
2
constituted all of the claims of record in the application. 2
An amendment after the final rejection was entered (Paper No.
10), which alleviated a rejection under 35 U.S.C. § 112, first
paragraph, but did not overcome the standing rejection of all
pending claims under 35 U.S.C. § 103.
The appellant's invention is directed to a roof flashing
strip. The subject matter before us on appeal is illustrated
by reference to claim 1, which reads as follows:
1. A prefabricated flashing strip system for
weatherproofing intersection of upright wall and a shingled
roof, the system comprising:
a plurality of partially overlapping adjacently disposed
flashing cards, each of the plurality of partially overlapping
adjacently disposed flashing cards having a substantially
vertical portion and a substantially horizontal portion.
a sealing, watertight adhesive interposed between
adjacent flashing cards for sealably mounting the vertical
portion of each of the plurality of partially overlapping
adjacently disposed flashing cards to the vertical portion of
an adjacent flashing card, forming a substantially watertight
seal therebetween; and
wherein a shingle is slidably seated between the
substantially horizontal portion of each of the plurality of
partially overlapping adjacently disposed flashing cards.
Appeal No. 98-0059
Application No. 08/540,548
3
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Prestidge 4,594,818 Jun. 17, 1986
Hartman 5,337,526 Aug. 16, 1994
Damron 5,381,632 Jan. 17, 1995
THE REJECTION
Claims 1-5 and 7-10 stand rejected under 35 U.S.C. § 103
as being unpatentable over Hartman or Prestidge in view of
Damron.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief and the Reply Brief.
OPINION
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims, and the respective views of the
examiner and the appellant as set forth in the Answer and the
Briefs. As a result of our review, we have determined that
the rejection should not be sustained. Our reasoning in
support of this conclusion follows.
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Application No. 08/540,548
4
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness under 35 U.S.C. § 103, it is incumbent upon the
examiner to provide a reason why one of ordinary skill in the
art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed
invention. See Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat.
App. & Int. 1985). To this end, the requisite motivation must
stem from some teaching, suggestion or inference in the prior
art as a whole or from the knowledge generally available to
one of ordinary skill in the art and not from the appellant's
disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988). The appellant’s
invention provides that a plurality of flashing cards be
attached together into a flashing strip. The flashing cards
overlap with one another, and are attached together by, in the
language of claim 1,
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Application No. 08/540,548
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a sealing, watertight adhesive interposed between
adjacent flashing cards for sealably mounting the
vertical portion of each of the plurality of
partially overlapping adjacently disposed flashing
cards to the vertical portion of an adjacent
flashing card, forming a substantially watertight
seal therebetween.
According to the appellant, the sealing, watertight adhesive
performs two functions. First, it attaches together a
plurality of flashing cards and therefore makes flashing
easier for the installer to use. Second, it guards against
water seepage between individual flashing cards, thus
improving the roofing. See specification, pages 7 and 8.
The examiner finds in both Hartman and Prestidge all of
the subject matter required by claim 1 except for the
“sealable means between the overlapped vertical portions of
adjacent shingles [sic, cards]” (Answer, page 2). It is the
examiner’s position, however, that Damron teaches placing
sealing between two vertical members to exclude water, and
therefore it would have been obvious to place sealant “between
any structures where sealant is called for” (Answer, page 2).
The examiner also points out that his dictionary defines
sealant as “an adhesive agent used to secure something or to
prevent the seepage of moisture or air,” and therefore the
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Application No. 08/540,548
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sealant meets the adhesive requirement of the claim also
(Answer, page 4).
We cannot subscribe to the examiner’s reasoning. Claim 1
requires that there be a “sealing, watertight adhesive” for
“sealably mounting” the vertical portions of the overlapping
cards together to form a “substantially watertight seal
therebetween.” As far as the primary references are
concerned, Prestidge discloses neither an adhesive nor a
sealant, so it lacks an element having either of the required
properties, and Hartman discloses only an adhesive, because
no sealing is required, and therefore it lacks one of the
required properties. The secondary reference, Damron,
discloses a sealant with no adhesive properties, for no
adhesive is necessary. Moreover, none of the applied
references recognizes the problem to which the appellant has
directed his inventive efforts. Thus, from our perspective,
applying the teachings of Damon to either of the primary
references would, at best, result in the application of a bead
of sealant to the upper edge of the flashing, rather than the
application of a sealing watertight adhesive between the
vertical portions of adjacent overlapping flashing cards.
Appeal No. 98-0059
Application No. 08/540,548
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In the final analysis, we fail to perceive any teaching,
suggestion or incentive which would have led one of ordinary
skill in the art to combine the references in such a manner as
to meet the terms of claim 1, other than the hindsight
accorded one who first viewed the appellant’s disclosure.
This, of course, is impermissible as the basis for a
rejection. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992). Such being the case, the
teachings of the references fail to establish a prima facie
case of obviousness with regard to the subject matter recited
in independent claim 1 or, it follows, of any of the other
claims, all of which are dependent from claim 1.
The rejection is not sustained.
The decision of the examiner is reversed.
REVERSED
Appeal No. 98-0059
Application No. 08/540,548
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Neal E. Abrams )
Administrative Patent Judge )
)
)
)
Lawrence J. Staab ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Murriel E. Crawford )
Administrative Patent Judge )
tdc
Appeal No. 98-0059
Application No. 08/540,548
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Arnold S. Weintraub
Weintraub Duross & Brady
30200 Telegraph Road, Suite 444
Bingham Farms, MI 48025-4505