Ex parte Kucirka

Board of Patent Appeals and Interferences

Jan 22, 1999

08502276 (B.P.A.I. Jan. 22, 1999)

Application for patent filed July 13, 1995. According1
to appellant, this application is a continuation-in-part of
Application 08/067,136, filed May 26, 1993, now abandoned
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(2) is not binding precedent of the Board.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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MARK J. KUCIRKA
__________
Appeal No. 97-4177
Application 08/502,2761
__________
ON BRIEF
__________
Before MEISTER, STAAB, and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-4177
Application No. 08/502,276
2
Mark J. Kucirka (the appellant) appeals from the final
rejection of claims 1-26, the only claims present in the
application.
We REVERSE.
The appellant's invention pertains to (a) an assembly of
joists that are interconnected by bridging which includes
flexible straps, (b) a method of installing bridging among a
plurality of joists and (c) a method of aligning misaligned
joists. Independent claims 1, 18 and 24 are further
illustrative of the appealed subject matter and copies thereof
may be found in the appendix to the brief.
The references relied on by the examiner are:
Paine Sr. (Paine) 457,664 Aug. 11, 1891
Powell 1,523,711 Jan. 20, 1925
Lane 1,656,741 Jan. 17, 1928
Gstalder 2,442,726 Jun. 1, 1948
Tracy 3,596,941 Aug. 3, 1971
Schoeller 4,038,803 Aug. 2, 1977
Bodell 5,224,309 Jul. 6, 1993
Menig (Swiss) 323,249 Sep. 14, 1957
RAPZ Strapping Products Catalogue (RAPZ), "RAPZ Strapping
Products, Steel Strapping Tools and Accessories," RAPZ
Strapping Products, pp. 1-21, 1990.
Appeal No. 97-4177
Application No. 08/502,276
A complete explanation of the rejections may be found on2
pages 4-10 of the answer.
3
The claims on appeal stand rejected under 35 U.S.C. § 103
in the following manner:2
(1) Claims 1-5, 12, 18 and 20 as being unpatentable over
Powell in view of Paine and RAPZ;
(2) Claims 6-11 and 21-23 as being unpatentable over
Powell in view of Paine, RAPZ and the Swiss patent;
(3) Claims 13-15 as being unpatentable over Powell in
view of Paine, RAPZ and Gstalder;
(4) Claim 16 as being unpatentable over Powell in view of
Paine, RAPZ, Gstalder and Tracy;
(5) Claim 17 as being unpatentable over Powell in view of
Paine, RAPZ and Bodell;
(6) Claim 19 as being unpatentable over Powell in view of
Paine, RAPZ and Lane; and
(7) Claims 24-26 as being unpatentable over Powell in
view of Paine, RAPZ and Schoeller.
Each of the above-noted rejections is bottomed on the
examiner's view that
it would have been obvious to one with ordinary
skill in the art to modify Powell's bridging to
Appeal No. 97-4177
Application No. 08/502,276
4
replace the single flexible strap between the two
joists with two separate flexible strap lengths
between the two joists connected at a connection
point therebetween as taught by Paine in order to
provide secure bracing between two joists which
provides more versatility by being able to shorten
or lengthen the bridging as needed and which
simplifies installation because the worker would not
be required to manage an awkward and bulky bundle of
the flexible strapping. Further, it would be [sic,
have been] obvious that the connection of Paine is
not appropriate for use with strapping, but
connection means for strapping are well known in the
art and RAPZ teaches a common connection means for
strapping, i.e. with a tensioner or sealer. It
would be [sic, have been] obvious to one with
ordinary skill in the art to utilize a connection
means known and commonly used for strapping, such as
taught by RAPZ, in order to adequately secure the
two piece flexible strapping of Powell/Paine with a
connection means conducive to the material of
strapping. [Answer, pages 4 and 5.]
We will not support the examiner's position. The mere
fact that (a) two separate flexible strap lengths between two
joists would provide "more versatility by being able to
shorten or lengthen the bridging" and (b) a connection means
is "commonly used" in order to connect the ends of tensioned
straps does not serve as a proper motivation for combining the
teachings of Powell, Paine and RAPZ in the manner proposed as
the examiner apparently believes. Instead, it is well settled
that it is the teachings of the prior art taken as a whole
which must provide the motivation or suggestion to combine the
Appeal No. 97-4177
Application No. 08/502,276
5
references. See Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988) and
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1142-43,
227 USPQ 543, 550-51 (Fed. Cir. 1985). Here, we find no such
suggestion.
Powell, while teaching the use of flexible strapping
material as bridging between joists, teaches that the
procedure for using such material is to: (1) first, provide an
indeterminate length of such material, (2) second, fasten one
end of the strapping material to one of the joists, (3) third,
thread the other or free end of the strapping material "over
and under" the joists (page 1, line 54), (4) fourth, place the
entire length of strapping material under a predetermined
tension by engaging the other or free end with a tensioning
tool 4,5,6 and (5) fifth, nail the strapping material to the
tops and bottoms of the joists. Paine, while teaching that
the bridging between adjacent joists may be formed by two
bracing members c,c which are adjustably connected together
(see Fig. 3), provides no teaching or suggestion of tensioning
these members. RAPZ is not concerned with providing bridging
between joists but, instead, merely teaches the joining
Appeal No. 97-4177
Application No. 08/502,276
6
together of the opposite ends of a single length of strapping
material while held under tension for the purpose of providing
a binding on a package or bundle (see, e.g., page 3). What is
entirely missing from these three references is any fair
suggestion of connecting together the ends of two separate
flexible bridging members with a predetermined tension. In
our view, the examiner has impermissibly relied upon the
appellant’s own teachings in arriving at a conclusion of
obviousness. As the court in Uniroyal, 837 F.2d at 1051, 5
USPQ2d at 1438 stated "it is impermissible to use the claims
as a frame and the prior art references as a mosaic to piece
together a facsimile of the claimed invention."
As to rejections (2) through (7), we have carefully
reviewed the teachings of the Swiss patent, Gstalder, Tracy,
Bodell, Lane and Schoeller but find nothing therein which
would overcome the deficiencies of Powell, Paine and RAPZ that
we have noted above.
The decision of the examiner to reject claims 1-26 under
35 U.S.C. § 103 is reversed.
REVERSED
Appeal No. 97-4177
Application No. 08/502,276
7
James M. Meister )
Administrative Patent Judge )
)
)
)
Lawrence J. Staab ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Murriel E. Crawford )
Administrative Patent Judge )
tdc
Appeal No. 97-4177
Application No. 08/502,276
8
Eric A. LaMorte
985 Reading Avenue
Yardley PA 19067