Ex Parte Jacobsen

Board of Patent Appeals and Interferences

Mar 24, 2010

10938428 - (D) (B.P.A.I. Mar. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RODNEY ALLEN JACOBSEN
____________

Appeal 2009-006779
Application 10/938,428
Technology Center 3600
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Decided: March 24, 2010
____________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Rodney Allen Jacobsen (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-23, including a new ground of
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rejection in the Examiner’s Answer. We have jurisdiction under 35 U.S.C.
§ 6(b).
The Invention
The claimed invention is to caulk free trims. Spec. 1:2-3.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A caulk free window trim for use with a replacement
window in a wall having a window jam, the window jam
having a jam liner, the window trim comprising:
a vertical rigid first member for disposing against a
portion of the replacement window; and
an angled flexible second member extending away from
a predetermined intermediate position on said vertical rigid first
member and above an uppermost portion of said vertical rigid
first member in contact with a portion of the jam liner wherein
the second member maintains a permanent, fixed position to
prevent air from infiltrating into the wall between the jam liner
and the replacement window.

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Nelson US 4,497,137 Feb. 5, 1985
Stutzman US 5,784,834 Jul. 28, 1998

The Rejections
The following Examiner’s rejections are before us for review:
(A) Claims 1, 3-7, 9, 11-14, 16, and 18-22 stand rejected under 35
U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over Stutzman.
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(B) Claims 2, 10, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Stutzman in view of Nelson.
(C) Claims 1-23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stutzman in view of Nelson.1

SUMMARY OF DECISION
We AFFIRM.

OPINION
Rejection (A)
The Examiner’s rejection of claims 1, 3-7, 9, 11-14, 16, and 18-22 as
either anticipated or obvious over Stutzman is not sustained. The rejection is
based on an incorrect finding that Stutzman discloses a caulk free trim for
use with a replacement window. Instead, Stutzman is used in a door seal. A
proper finding of anticipation requires a showing that each element or
limitation in a claim is present in the cited reference, either explicitly or
inherently, and that the elements must be arranged in the same manner as in
the claim under review. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990); see
also Bell Commc’ns Research , Inc. v. Vitalink Commc’ns Corp., 55 F.3d
615, 621 (Fed. Cir. 1995)(holding that a recitation in a claim preamble
limited the claim where the recitation in the preamble was expressly
incorporated into a limitation in the body of the claim). This same error
permeates the Examiner’s finding that Stutzman alone renders obvious these
claims as evidenced by the Examiner in the new ground of rejection finding
“Stutzman does not specifically disclose ‘a caulk free window trim’ wherein

1 New ground of rejection set forth in the Examiner’s Answer (Ans. 11).
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the trim is used with a replacement window.” Ans. 11. In other words, the
Examiner, in the new grounds of rejection, corrects the deficiency of such
being disclosed within Stutzman.
Rejection (B)
The Examiner’s rejection of claims 2, 10, and 17 as obvious over
Stutzman and Nelson is sustained, but only for the reasons articulated by the
Examiner in the new ground of rejection, and treated infra.
Rejection (C)
Although independent claims 1, 16, and 19 appear to be argued
separately because of separate headings, nonetheless, Appellant presents
essentially identical arguments with respect to the rejection of each of
independent claims 1, 16, and 19 under 35 U.S.C. § 103(a) as unpatentable
over Stutzman and Nelson. See Reply Br. 4-8. As such, the following
analysis applies equally to claims 1, 16, and 19, rejected over the combined
teachings of Stutzman and Nelson. Therefore, in accordance with 37 C.F.R.
41.37(c)(1)(vii), we have selected claim 1 as the representative claim to
decide the appeal, with claims 2-23 standing or falling with claim 1.
Stutzman discloses a door seal 16 that surrounds a door 11 and does
not utilize caulk. A person having ordinary skill in the art could consider in
the broadest reasonable sense that the seal 16 surrounding the door 11 could
be considered a trim since Appellant has not provided evidence or
persuasive argument to the contrary. As such, Stutzman discloses a caulk
free trim since no caulk is used in the seal. Instead, what Stutzman uses to
seal the door is a flap 39 connected to the seal portion 22. The seal portion
22 is rigid, see col. 2, ll. 3-5, since it is disclosed as being unitary with the
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base portion 21, see col. 2, ll. 27-31. Stutzman discloses that the flap is
flexible. See col. 2, l. 20. As shown in figures 3 and 4 of Stutzman, flap 39
extends away from a predetermined intermediate position on the seal portion
22, and the flap is connected just below the a corner of the seal portion 22
and extends above the top of seal portion 22 when viewing figure 3. In view
of the foregoing, the Examiner did not err in finding Stutzman teaches a
caulk free trim having a vertical rigid first member and an angled flexible
second member extending away from a predetermined intermediate position
and above an uppermost portion of the vertical rigid first member as set forth
in claim 1.
Appellant’s contention that Stutzman’s flap 39 is not designed to
maintain a permanent, fixed position after installation is not commensurate
with the scope of claim 1. See, e.g., App. Br. 14. Claim 1 just requires the
flexible member to maintain a permanent, fixed position to prevent air from
infiltrating. While Stutzman is utilized as a door seal and the door is
movable, nothing precludes the door being maintained in a closed position.
In such a position, the flap would maintain a permanent, fixed position to
prevent air from infiltrating. As such, the Examiner did not err in finding
Stutzman’s flap 39 is readily capable of maintaining a permanent, fixed
position to prevent air from infiltrating.
The Examiner acknowledges that Stutzman does not specifically
disclose the trim being a window trim nor being used with a replacement
window in a wall having a window jam where the window jam has a jam
liner. Ans. 11. In other words, the Examiner acknowledges that Stutzman is
not being used in the environment set forth in the claims. As the Examiner
correctly found, recitations directed to capabilities that do not further limit
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the structure of the trim member do not patentably distinguish the claimed
invention over the prior art. It is well-settled that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable. In re Pearson, 494 F.2d 1399, 1403 (CCPA 1974) (intended use
of an old composition does not render composition claim patentable); In re
Zierden, 411 F.2d 1325, 1328 (CCPA 1969) (“[M]ere statement of a new use
for an otherwise old or obvious composition cannot render a claim to the
composition patentable.”); In re Sinex, 309 F.2d 488, 492 (CCPA 1962)
(statement of intended use in an apparatus claim failed to distinguish over
the prior art apparatus); In re Hack, 245 F.2d 246, 248 (CCPA 1957) (“[T]he
grant of a patent on a composition or a machine cannot be predicated on a
new use of that machine or composition.”); In re Benner, 174 F.2d 938, 942
(CCPA 1949) (“[N]o provision has been made in the patent statutes for
granting a patent upon an old product based solely upon discovery of a new
use for such product.”).
The Examiner found that a person of ordinary skill in the art would
substitute the Stutzman device for the caulk free trim member of Nelson.
Ans. 12. The Examiner’s proposed substitution is an application of a known
technique to improve a similar device in the same way and as such, absent
such application being beyond the skill level of a person having ordinary
skill in the art, is obvious. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007).
Appellant does not provide any evidence or argument that this
substitution would be beyond the skill level of a person of ordinary skill in
the art. Instead, Appellant argues the combination fails to render obvious a
flexible member that is suitable for use as a sealant between a replacement
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window and a wall jam liner. Reply Br. 4. This argument is unconvincing
because it is not commensurate in scope with the language of claim 1.
Appellant additionally argues neither Stutzman nor Nelson are suitable for
use as a window trim because of their alleged highly flexible nature and
alleged inability to act as a seal. Reply Br. 5. This argument is
unconvincing as well because familiar items may have obvious uses beyond
their primary purpose. KSR, 550 U.S. at 420. Appellant’s argument that
modifying the structure of the strips described in either Stutzman or Nelson
would change the principle operations of the inventions disclosed therein is
unconvincing. Reply Br. 5. The Examiner does not propose to modify
either structure. Instead, the Examiner’s rejection proposes to substitute the
structure in Stutzman for the structure in Nelson. As such, Appellant’s
argument is not directed to the actual rejection, but to what Appellant
perceives as the rejection. Moreover, Appellant’s reliance on In re Ratti,
270 F.2d 810 (CCPA 1959) is misplaced for this case. No substantial
reconstruction or redesign of Stutzman or Nelson would be required in order
to substitute Stutzman’s structure for Nelson’s structure.

CONCLUSION
In view of the foregoing, the Examiner did not err in concluding that
claim 1 is rendered obvious over the combined teachings of Stutzman and
Nelson as the Examiner articulated in the new grounds of rejection. Claims
2-23 fall with claim 1.

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DECISION
The rejection of claims 1, 3-7, 9, 11-14, 16, and 18-22 under 35
U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over Stutzman is reversed.
The rejection of claims 2, 10, and 17 under 35 U.S.C. § 103(a) as
being unpatentable over Stutzman in view of Nelson is affirmed.
The rejection of claims 1-23 under 35 U.S.C. § 103(a) as being
unpatentable over Stutzman in view of Nelson is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

mls

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