Ex Parte Israeli et al

Patent Trial and Appeal Board

Aug 18, 2016

12778339 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121778,339 05/12/2010 Amit Israeli
23413 7590 08/22/2016
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10SFS0007-US-NP 6239
EXAMINER
FERGUSON, MICHAEL P
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
08/22/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMIT ISRAELI, FRANS ADRIAANSEN, and
MICHAEL MATTHEW LAURIN
Appeal2014-007964
Application 12/778,339 1
Technology Center 3600
Before CYNTHIA L. MURPHY, KENNETH G. SCHOPPER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1--4, 7-9, 11, and 27-30. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
BACKGROUND
According to Appellants, the Specification "generally relates to
connectors and collectors for connecting panels." Spec. i-f 2.
1 According to Appellants, the real party in interest is Sabic Innovative
Plastics IP B.V. Appeal Br. 2.
Appeal2014-007964
Application 12/778,339
CLAHvIS
Claims 1--4, 7-9, 11, and 27-30 are on appeal. Claim 1 is illustrative
of the appealed claims and recites:
1. A connector assembly, comprising:
a connector; and
a pair of side collectors, each comprising:
a connector engagement region having a size and
geometry to fixedly mate with the connector so as to hold
ends of two adjacent panels together such that the
connector and the pair of side collectors are intentionally
disassemblable; and
a panel engagement region comprising a receiving
area with an energy director extending into the receiving
area, and having a size to attach onto an edge of a panel.
Appeal Br. 19.
REJECTIONS 2
1. The Examiner rejects claims 1, 7, and 8 under 35 U.S.C. § 102(b)
as anticipated by Francis. 3
2. The Examiner rejects claim 28 under 35 U.S.C. § 103(a) as
unpatentable over Francis.
3. The Examiner rejects claims 1--4, 7, 9, 11, and 27-30 under
35 U.S.C. § 103(a) as unpatentable over Konstantin4 in view of
Erlandsson. 5
2 The rejection of claims 1, 7, 8, 11and27-29 under 35 U.S.C. § 112,
second paragraph, and the rejection of claim 29 under 35 U.S.C. § 102(b)
have been withdrawn. Ans. 2.
3 Francis, Jr. et al., US 4,828,132, iss. May 9, 1989.
4 Konstantin, US 7,441,379 B2, iss. Oct. 28, 2008.
5 Erlandsson et al., US 6,719,363 B2, iss. Apr. 13, 2004.
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Application 12/778,339
4. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Konstantin in view of Erlandsson and Francis.
DISCUSSION
Rejection 1
With respect to the anticipation rejection, we are persuaded by
Appellants' argument that Francis does not disclose a connector and pair of
side collectors that are intentionally disassemblable as required by claim 1.
The Examiner indicates that Francis discloses a device that is intentionally
disassemblable because "connector 23 is capable of being disassembled
from side collectors 21,22 if one intentionally chooses to do so, [regardless]
as to whether damage to one of the components occurs." Ans. 11. As noted
by Appellants, Francis discloses that the hinge 23 and brace sections 21 and
22 are integrated to prevent separation and the hinge is formed by extruding
a molding composition into the brace sections and allowing it to cool.
Appeal Br. 7 (citing Francis col. 4, 11. 20-23, 39--57). We agree with
Appellants that disassembly of Francis' s hinge and braces would require
damaging the components of Francis's connector, and we find it
unreasonable to interpret the claim so broadly as to construe "intentionally
disassemblable" to include the separation of parts resulting in damage to
those parts. Accordingly, we do not sustain this rejection of claim 1 or
claims 8 and 9 depending therefrom.
Rejection 2
The Examiner rejects claim 28 as obvious over Francis alone. Claim
28 depends from claim 1 and this rejection does not cure the deficiency in
the rejection of claim 1 as discussed above. Accordingly, for the reasons
discussed above, we do not sustain this rejection.
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Application 12/778,339
Rejection 3
Independent claims 1, 2, 3, 4, 29, and 30
Here, the Examiner relies on Konstantin as disclosing all elements of,
for example, claim 1, except that Konstantin discloses connector
engagement regions integrally formed on panels instead of including
separately formed side collectors to be attached to panels. Final Act. 6-8
(citing Konstantin Figs. 9, 10, 21). The Examiner relies on Erlandsson as
teaching separately formed side collectors. Id. at 8 (citing Erlandsson Figs.
1-3; col. 3, 11. 45-50). The Examiner concludes:
Accordingly, it would have been obvious to one having ordinary
skill in the art at the time the invention was made to modify the
connector assembly disclosed by Konstantin to comprise
separately formed side collectors, wherein each side collector
comprises arms with energy directors extending from the arms
into the receiving area as taught by Erlandsson et al. in order to
enable one to assemble a variety of assemblies comprising
different sized panels and providing for use of conventional flat
panels; providing for easier; less expensive manufacturing and
readily available replacement of the panels, and easier shipping
of flat panels; opposed to manufacturing specialized panels on
which the connector engagement regions are integrally formed.
Furthermore, Applicant is reminded that one-piece
construction, in place of separate elements fastened together,
wherein no structural significance is disclosed between separate
element construction and one-piece construction, is a design
consideration within the skill of the art. In re Kohno, 391 F.2d
959, 157 USPQ 275 (CCPA 1968); In re Larson, 340 F.2d 965,
144 USPQ 347 (CCPA 1965).
Moreover, the separation of elements, where removability
would be desirable, is a design consideration within the skill of
the art. In re Dulberg, 283 F.2d 522, 129 USPQ 348 (CCPA
1961).
Id. at 8-9.
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Application 12/778,339
Appellants first argue that the rejection is based on hindsight because
the Examiner's statements are derived from the present Specification.
Appeal Br. 11-12. Appellants conclude that "[c]learly, the rationale to
combine Konstantin and Erlandsson is based on the teachings of the
Appellants, not on the disclosures of the references." Id. at 12. We are not
persuaded and find that one of ordinary skill in the art would have
recognized certain advantages to the Examiner's proposed modification
including decreasing costs by allowing use of flat panels over the
manufacture of specialized panels with integrated connector regions.
Although Appellants have noted similarities between the Examiner's
rationale and the Specification, we are not persuaded that the rejection relies
on "knowledge gleaned only from [Appellants'] disclosure." See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Regarding the Examiner's conclusions regarding the use of one-piece
construction or separate elements, we are also not persuaded of error by
Appellants' arguments. Appellants argue that separating elements in
Konstantin would compromise its weatherproofing and its ability to
withstand high uplift loads. Appeal Br. 13-15. However, similar to the
discussion above, we find that one of ordinary skill would understand that
there would be certain advantages and disadvantages to each approach and a
skilled artisan would have known how to compensate for the alleged
disadvantages cited by Appellants. For example, a person of ordinary skill
in the art would have recognized from Erlandsson's disclosure that the panel
engagement regions could be ultrasonically welded to the panels to achieve
the necessary weatherproofing contemplated by Konstantin. See Erlandsson
col. 3, 11. 45-50.
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Application 12/778,339
Based on the foregoing, we sustain this rejection of claim 1.
Appellants do not provide separate arguments for claims 2--4, 7, and 27-30,
and thus, we sustain this rejection of those claims for the reasons stated
above.
Claim 9
Independent claim 9 is similar to claim 1 and further requires:
wherein on a side of the side collector opposite the receiving area
is a joint wall, wherein the joint wall is non-perpendicular as
determined with respect to an arm of the receiving area, such
that, when two complementary side collectors are assembled
together, a thermal expansion space is formed between adjacent
joint walls.
Appeal Br. 21.
In rejecting this claim, The Examiner relies on the following
annotation of Konstantin Figure 21:
Figure 21, as annotated above, shows a portion of a cross-sectional
view of an embodiment of Konstantin's panel connectors including a clip
and added reference to portions A and Bon the clip. See Konstantin col. 5,
11. 59-63; see also Final Act. 7-8.
The Examiner finds that
wherein on an inwardly-facing side of the side collector 14
is a joint wall, wherein the joint wall is non-perpendicular Bas
determined with respect to the longitudinal extension of panels
12, such that, when two complementary side collectors are
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Application 12/778,339
assembled together, a thermal expansion space 96 1s formed
between adjacent joint walls (Figure 21 ).
Final Act. 7.
Appellants argue:
Clearly, from the annotated figure the panel wall 12 is
shown in contact with the vertical clip 18 and no thermal
expansion space is formed between adjacent joint walls as
recited in Claim 9. Furthermore, when considering Konstantin
in view of Erlandsson as described in FOA 08/13, it is
Erlandsson's hinge apparatus that describes the panel
engagement region. There is no discussion of a thermal
expansion space in Erlandsson nor is there any indication of such
space in any of Erlandsson's figures. Seemingly, in the
combination of references, FOA 08/13 has picked alleged
features of Konstantin's integral panel and seam flange to retain
during combination with Erlandsson.
Appeal Br. 16.
We are persuaded by Appellants' argument. With respect to Figure
21, Konstantin does describe a space 96 that prevents the panels from
rubbing against one another when they expand. See Konstantin col. 14, 11.
33-37. However, the Examiner has not adequately explained how this
space, as indicated in Figure 21, is defined by a joint wall that is non-
perpendicular as required by the claim. Although the annotated Figure
points to a curved wall, the thermal expansion space 96 appears to only exist
where the joint walls are parallel to each other and perpendicular to the
length of the panels above the clip 18. Thus, without further explanation
from the Examiner, it is not clear how the portion of Konstantin's clip the
Examiner has identified meets the claim language. Accordingly, we do not
sustain this rejection of claim 9.
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Claim 11
Claim 11 depends from claim 1 and further requires "wherein the
panel engagement region further comprises a body portion located between
the receiving area and the connector engagement region, and wherein the
body portion comprises diagonal ribs."
The Examiner finds that "Konstantin as modified by Erlandsson et al.
discloses a connector assembly wherein the panel engagement region further
comprises a body portion located between the receiving area and the
connector engagement region, and wherein the body portion comprises
diagonal ribs (Konstantin Figures 21,23 ). " Final Act. 9. The Examiner
further cites element C as the diagonal ribs in the annotated Figure 23,
shown below. Ans. 17.
Figure 23, as annotated above, shows a portion of a cross-sectional
view of an embodiment of Konstantin's panel connectors including a clip
and added reference to a diagonal line C on at the panel end. See Konstantin
col. 6, 11. 1--4; see also Ans. 8.
While this Figure shows one line that appears to be diagonal, we find
that the Examiner has not adequately explained how this line meets the
claim requirement. Further, we agree with Appellants that it is not clear how
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Application 12/778,339
the Examiner is proposing that Konstantin and Erlandsson be combined such
that the device would include diagonal ribs in a body portion as claimed.
See Appeal Br. 17. Accordingly, we do not sustain this rejection of
claim 11.
Rejection 4
With respect to the rejection of claim 8, Appellants argue:
Francis, Jr. is relied upon to allegedly disclose the energy
directors being staggered as in Claim 8. Again, the mere
existence of an element in the prior art is not motivation to
combine that element into another design. Allegedly the
motivation was to attain "tighter engagement between the side
collectors and the panels". However, isn't the tightest
engagement the elements being a single piece (i.e., the original,
unmodified design of Konstantin)? As a result, it is respectfully
submitted that Claim 8 is non-obvious over Konstantin in view
of Erlandsson and further in view of Francis, Jr.
Appeal Br. 17-18. However, we find that this argument does not address
the entirety of the motivation provided by the Examiner, who stated that it
would have been obvious to combine Francis with the modified device of
Konstantin and Erlandsson "in order to provide for a tighter engagement
between the side collectors and the panels, provide a higher resistance to
withdrawal of the panels from the side collectors, and to provide for easier
insertion of the panels into the side collectors." Final Act. 11. Without
addressing the entirety of the proposed motivation for the combination,
Appellants have not shown any error in the rejection. Accordingly, we
sustain this rejection of claim 8.
CONCLUSION
For the reason set forth above, we REVERSE the rejection of
claims 1, 7, and 8 as anticipated; we REVERSE the rejection of claims 9 and
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Appeal2014-007964
Application 12/778,339
11 as obvious; and we AFFIRl\rI the rejections of claims 1--4, 7, 8, and 27-
30 as obvious.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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