Ex Parte Lanzilotta et al

Patent Trial and Appeal Board

Jul 7, 2017

14922542 (P.T.A.B. Jul. 7, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
APT - US62/068820 6754
EXAMINER
MICHENER, JOSHUA J
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
14/922,542 10/26/2015 John LANZILOTTA
22925 7590 07/11/2017
PHARMACEUTICAL PATENT ATTORNEYS, LLC
55 MADISON AVENUE
4THFLOOR
MORRISTOWN, NJ 07960-7397
07/11/2017 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):
docket @ LicensingLaw. net
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN LANZILOTTA and DAWN HOPPER1
Appeal 2017-000377
Application 14/922,542
Technology Center 3600
Before ROBERT E. NAPPI, TERRENCE W. McMILLIN, and
JOYCE CRAIG, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 2, 6, 8, 9, and 13. The rejections of
claims 3 through 5, 7, 10 through 12, and 14 have been withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Applicant is American Panel Tec Corp.
Appeal 2017-000377
Application 14/922,542
INVENTION
Appellants’ disclosed and claimed invention is a steel stud wall which
includes a diagonal member. Abstract. Claim 1 is representative of the
invention and reproduced below.
A prefabricated steel wall comprising:
a. A substantially-horizontal steel sill plate
connected to a substantially-horizontal steel top plate
by a plurality of substantially-vertical members
selected from the group consisting of: stud, post and
combinations thereof;
b. A diagonal member connected to an adjustable
joint to form a jointed member having a lower end
and an upper end;
c. The jointed member diagonally disposed relative
to the substantially-vertical members, the jointed
member lower end affixed to the sill plate, a bottom
portion of a post or both, the jointed member upper
end affixed to the top plate, an upper portion of a post
or both;
d. Whereby the adjustable joint may be adjusted to
remove undesired slack in the diagonal member after
installation of the prefabricated steel wall panel.
REJECTIONS AT ISSUE2
The Examiner has rejected claims 1,2, and 6 under 35 U.S.C. § 102
as being anticipated Sarkisian (US 2008/0289267 Al; Nov. 27, 2008).
Answer 2—3.
2 Throughout this Decision we refer to the Appeal Brief filed June 14, 2016,
Reply Brief filed Sept. 27, 2016, Final Office Action mailed Mar. 4, 2016,
and the Examiner’s Answer mailed Aug. 10, 2016.
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Application 14/922,542
The Examiner has rejected claims 8, 9, and 13 under 35 U.S.C. § 103
as being unpatentable over Sarkisian and Hildreth (US. 2005/0235594 Al;
Oct. 27, 2005). Answer 3^4.
ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellants’
arguments. Appellants’ arguments have not persuaded us of error in the
Examiner’s rejections of claims 1, 2, 6, 8, 9, and 13.
Appellants argued that the Examiner’s anticipation rejection of
representative claim 1 is in error because Sarkisian does not teach:
a) that the structure is prefabricated;
b) that the structure is a wall;
c) that the structure contains a sill pate;
d) that the structure contains a stud; and
e) that the structure is adjustable.
App. Br. 7—15 and Reply Br. 2—14.3 Appellants’ augments rely upon
several asserted definitions of the argued terms. Further, Appellants assert
the Examiner is in error as the definitions relied upon by the Examiner are:
contrary to what those of skill in the art would consider (see e.g. arguments
on page 14 of App. Br.); are contradicted by evidence of record (see e.g.
arguments page 12 of App. Br.); and rely upon dictionary definitions which
not of record (see e.g. arguments directed to stud on page 8 of the Reply Br).
3 Our reference to page numbers are based upon the cover page of the Briefs
being page 1, and differs from the numbering on the actual pages of the
briefs which contain several pages numbered as 1 and many unnumbered
pages.
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Application 14/922,542
The Examiner has provided a comprehensive response to Appellants’
arguments. The Examiner has found that the term “prefabricated” does not
change the structure of the wall, and that the Specification supports the
broad interpretation of a Sarkisian’s frame as being a wall. Answer 5—6.
Further, the Examiner relies upon dictionary definitions of the terms “sill”
and “stud” to interpret the terms and finds that Sarkisian’s bottom horizontal
member and vertical members meet these limitations. Answer 6—8.
Additionally, the Examiner notes that the claim merely recites that the wall
may be adjusted and Sarkisian teaches adjustability. Answer 8.
We have reviewed Appellants’ Specification and concur with the
Examiner’s claim interpretation and findings that Sarkisian anticipates claim
1. We are not persuaded of error by Appellants’ arguments. Initially we
note that the limitation directed to “prefabricated wall” is a limitation
directed to the process by which the wall is fabricated and, as found by the
Examiner, does not change the product. It has long been held that “[i]f the
product in a product by process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.” Smithkline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1199 (Fed. Cir. 2006) (quoting In re Thorpe,
111 F.2d 695, 697 (Fed. Cir. 1985)).
We are not persuaded that the Examiner’s interpretation of the term
“wall” as including the frame shown in Sarkisian is unreasonable. While
Sarkisian may use the term “wall” to mean more than the frame, the
Examiner’s interpretation is consistent with the term “wall” as used in
Appellants’ Specification. We determine the scope of the claims in patent
applications not solely on the basis of the claim language, but upon giving
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Application 14/922,542
claims their broadest reasonable construction in light of the specification as
it would be interpreted by one of ordinary skill in the art. In re Am. Acad, of
Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir.
2004). Appellants’ Specification states: “it is known in the art to build a
wall as a frame having a horizontal sill plate on the bottom and a horizontal
top plate on the top, connected by a series of vertical studs.” Specification
Pg- !•
Appellants’ arguments directed to the Examiner’s interpretation of the
terms “sill plate” and “stud” are also unpersuasive. Appellants’ proffered
definition of “sill plate” as being “a bottom member of a wall and supports
the vertical members” is overly narrow. Appellants’ Specification does not
describe the sill as supporting the vertical members. While the drawings
may depict the sill in this manner, the Examiner’s broad interpretation of
“sill” as a horizontal piece that forms the lowest member is not inconsistent
with the Specification. Similarly, Appellants’ argument that a “stud” be
interpreted to be a vertical member that plywood sheathing is attached to is
similarly overly narrow and unsupported by Appellants’ Speciation. Reply
Br. 7—8. Further, Appellants’ arguments directed to the use of a dictionary
are not well taken. See id. at 8. Use of dictionary definitions is not
considered the introduction of evidence on appeal and is permitted. See
37 C.F.R § 41.30; MPEP 1204.04.
With respect, Appellants’ arguments that the slippage permitted in
Sarkisian is different from the claimed adjustment, is similarly not
persuasive. App. Br. 15. Claim 1 recites a diagonal member connected to
an adjustable joint that may be adjusted to remove slack. The Examiner has
found that the joints in Sarkisian are adjustable in that they move during
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Application 14/922,542
seismic events and because the joint makes use of “slotted and elongated”
apertures which provides for adjustment. Answer 9. We concur with the
Examiner. See, e.g., Fig. 11. Thus, Appellants’ arguments directed to the
Examiner’s anticipation rejection have not persuaded us of error in the
rejection of claim 1, and we sustain the Examiner’s rejection of claim 1 and
claim 2 grouped with claim 1.
Appellants did not provide arguments directed to the rejection of
claims 6, 8, 9, and 13 in the Appeal Brief. Appellants, for the first time in
the Reply Brief, present arguments directed to the Examiner’s rejection of
claims 6 and 13. Appellants have not shown good cause as to why these
arguments could not be presented earlier. As such, these arguments have not
been considered and are waived. See Ex parte Borden, 93 USPQ2d 1473,
1473—74 (BPAI2010) (informative) (absent a showing of good cause, the
Board is not required to address arguments in Reply Brief that could have
been presented in the principal Appeal Brief). Thus, we sustain the
Examiner’s anticipation rejection of claim 6 and the obviousness rejection of
claims 8, 9 and 13 for the same reasons as claim 1.
DECISION
We affirm the Examiner’s rejection of claims 1, 2, 6, 8, 9, and 13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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