Ex Parte King et al

Patent Trial and Appeal Board

Oct 12, 2012

10308731 (P.T.A.B. Oct. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS MORRISON KING
and STEPHEN ANDREW McNALLY
____________

Appeal 2010-006944
Application 10/308,731
Technology Center 3600
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Before LINDA E. HORNER, KEN B. BARRETT, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1-10 and 14-20. App. Br. 1. Claims 11-13 have been cancelled. Id. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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Application 10/308,731

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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter on appeal:
1. A shingle comprising:
a first layer including:
a full tab having a full tab length;
a full cut-out having a full cut-out length;
a full tab width to first layer length ratio greater than 9/36
along the entire length of the full tab;
a full cut-out width to first layer length ratio greater than
8.5/36 along the length of the full cut-out; and
a second layer positioned under the first layer.

REJECTIONS
Claims 1, 8, and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stahl (US 6,038,826; iss. Mar. 21, 2000).
Claims 1, 3, 5-7, 10, 14, 16, and 18-20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Abraham (US 2,307,751; iss. Jan. 12,
1943) and Phillips (US 6,014,847; iss. Jan. 18, 2000).
Claims 2, 4, 15, and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Abraham and Phillips as applied to claims 1 and 10 and
further in view of Harshberger (US 1,862,852; iss. Jun. 14, 1932).
ANALYSIS
Claims 1, 8, and 9 as unpatentable over Stahl
The Examiner found that Stahl discloses a shingle comprising a first
layer 126 with a full tab 131 having a full tab length, a full cut-out 130
having a full cut-out length, and a second layer 127 positioned under the first
layer. Ans. 3. The Examiner found that Stahl does not disclose a first tab
width to first layer length ratio greater than 9/36 along the entire length of
the full tab, or a full cut-out width to first layer length ratio greater than
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8.5/36 along the length of the full cut-out, but determined that it would have
been an obvious matter of design choice to choose tab and cut-out widths
with those ratios because such modification involves a mere change in the
size of the component that is generally recognized as being within the level
of ordinary skill in the art. Ans. 3-4. The Examiner also found that “it is
well known in the art that the dimensions of tabs, cut-outs and the shingles
themselves can be varied.” Ans. 8 (citing Stahl, col. 3, ll. 22-25; col. 5, ll.
26-27). The Examiner further found that Stahl illustrates a full tab width to
first layer length ratio of greater than 8.5/36 and a full cut-out ratio width to
first layer length ratio greater than 8.5/36. Ans. 8.
Appellants argue that the Examiner’s finding that it is well known in
the art to vary the dimensions of shingles, tabs, and cut-outs does not teach
the claimed ratios or adequately explain why a skilled artisan would have
modified the prior art to arrive at the claimed ratios. Reply Br. 2.
Appellants also argue that the Examiner’s proposed modification to Stahl is
not an obvious design choice involving a mere change in the size of a
component because “the claimed ratios are not merely scaled-up versions of
what existed in the prior art.” App. Br. 3. We agree. The Examiner’s
reliance on In re Rose, 220 F.2d 459 (CCPA 1965)1 for a holding that “[a]

1 Rose claimed a lumber package comprising bundles, “the strips of each
bundle being of appreciable width and thickness and each bundle being of
appreciable length cooperating in the multiplicity of bundles to provide a
composite package of appreciable size and weight requiring handling by a
lift truck.” Rose, 220 F.2d at 461 (emphasis added). Rose argued that this
claim distinguished over prior art packages that can be lifted by hand, but
the Court held that this limitation was not patentably significant because it at
most relates to the size of the article under consideration which is not
ordinarily a matter of invention. Id. at 463.
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change in size is generally recognized as being within the level of ordinary
skill in the art” (Ans. 3-4) does not explain why a skilled artisan would have
modified Stahl to arrive at the claimed ratios as a matter of obvious design
choice. Claim 1 recites a ratio (or relationship) of a full tab width to the first
layer length and a ratio of a full cut-out width to the first layer length. The
Examiner has not shown that Stahl discloses such ratios or adequately
explained why it would have been obvious to modify Stahl to arrive at the
claimed ratios.
Appellants also argue that Stahl is completely silent on the width of a
tab or cut-out relative to the length of a shingle and therefore, the Examiner
cannot rely on Stahl’s drawings to disclose the claimed ratios. Reply Br. 2-
3. We agree. Hockerson-Halberstadt, Inc. v. Avia Gp. Int’l, Inc., 222 F.3d
951, 956 (Fed. Cir. 2000) (“it is well established that patent drawings do not
define the precise proportions of the elements and may not be relied on to
show particular sizes if the specification is completely silent on the issue”).
The Examiner has not identified any such disclosure in Stahl. As such, we
cannot sustain the rejection of claims 1, 8, and 9.
Claims 1, 3, 5-7, 10, 14, 16, and 18-20 as unpatentable over Abraham and
Phillips
The Examiner found that Abraham discloses a shingle with a first
layer having a full tab 15 and a full cut-out (between 15 and 14) but does not
disclose the claimed ratios. Ans. 4-5. The Examiner determined that it
would have been an obvious matter of design choice to make the tab and full
cut-out widths greater than 9/36 and 8.5/36 of the first layer length because
such a modification would have involved a mere change in the size of the
component that is within the level of ordinary skill in the art. Ans. 5. The
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Examiner again relied on In re Rose, 220 F.2d 459 (CCPA 1965). The
Examiner also found that “it is well known in the art that the dimensions of
tabs, cut-outs and the shingles themselves can be varied.” Ans. 8 (citing
Philips, col. 3, ll. 7-27).
We agree with Appellants that the rejection of claims 1 and 10 based
on a design choice rationale and holding in In re Rose, 220 F.2d 459 (CCPA
1965) is not sustainable for the reasons discussed supra for the rejection of
claim 1 based on Stahl. App. Br. 4. To the extent the Examiner relied on
the drawings of Abraham to disclose the claimed ratios (see Ans. 5-6), such
rejection is not sustainable because the Examiner did not identify any
disclosure in Abraham to support such a finding. To the extent that the
Examiner relied on Philips to show that it was known in the art that tabs can
have equal widths or different widths depending on desired application and
appearance of the shingles, Philips does not teach the claimed ratios and the
Examiner has failed to adequately explain why a skilled artisan would have
modified the prior art to arrive at the claimed ratios. As such, we cannot
sustain the rejection of claims 1, 3, 5-7, 10, 14, 16, and 18-20.
Claims 2, 4, 15, and 17 unpatentable over Abraham, Phillips, Harshberger
The Examiner relied on Harshberger to disclose features of claims 2,
4, 15, and 17 and not to cure the deficiencies of Abraham and Phillips as to
claims 1 and 10, from which claims 2, 4, 15, and 17 depend. Ans. 7. As
such, we cannot sustain the rejection of claims 2, 4, 15, and 17.
DECISION
We REVERSE the rejection of claims 1-10 and 14-20.

REVERSED
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