Ex Parte LaSee

Board of Patent Appeals and Interferences

Dec 30, 2011

10840145 (B.P.A.I. Dec. 30, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JACK C. LASEE
____________________

Appeal 2010-002500
Application 10/840,145
Technology Center 3600
____________________

Before: STEVEN D.A. MCCARTHY, PHILLIP J. KAUFFMAN, and
EDWARD A. BROWN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/840,145
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-7, 9, 11, 14, and 17-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Claims 1 and 11 are independent, and claim 1, reproduced below, is
representative:
1. A fire resistant vision panel for assembly in an opening
passing through a door, the vision panel comprising:
a first and second flange unit each comprising a
preassembled rectangular frame sized to frame the opening and
abut a front and rear face of the door; the rectangular frames of
the flange units each having four sides attached at comers by
welds;
sash elements adapted to extend into the opening from
each of the first and second flange units to capture a transparent
pane therebetween within the opening;
at least one retention member attached to the first flange
unit and extending into the opening beyond a position of the
transparent pane with respect to the first flange unit when
positioned between the sash elements to grip a sill surface of
the opening thereby to retain the first flange unit and its sash
element in position for assembly the retention member having
an end unobstructed by the first flange unit when the first flange
unit is in position for assembly;
a spike positioned on the first end to affix the first end to
a core material of a sill surface of the opening to retain the
retention member in the opening wherein the spike is sized,
oriented and positioned to be driven into the core material by
impact of a hammer; and
at least one fastener adapted to draw the first and second
flange units and the sash elements together against the pane;
and
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wherein the sash elements include flanges extending
generally parallel to the transparent pane when captured
therebetween, ends of the flanges flexing to provide inwardly
spring-biased sharp edge portions in contact with said pane
wherein said sharp edge portions will embed in said pane to
grip the pane when said pane becomes semi-molten in fire.

REJECTIONS1
Appellant seeks review of the following rejections:
1. Claim 1 under 35 U.S.C. § 112, second paragraph, as indefinite for
failing to particularly point out and distinctly claim the subject matter which
Appellant regards as the invention.
2. Claims 1, 7, and 9 under 35 U.S.C. § 103(a) as unpatentable over
Stark (US 4,259,818; iss. Apr. 7, 1981) and LaSee ‘542 (US 4,550,542; iss.
Nov. 5, 1985).
3. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over Stark, LaSee,
and Petta (US 5,987,826; iss. Nov. 23, 1999).
4. Claims 1 and 3-6 under 35 U.S.C. § 103(a) as unpatentable over Plym
(US 1,157,900; iss. Oct. 26, 1915), LaSee, and Petta.
5. Claims 11, 14, and 17-20 under 35 U.S.C. § 103(a) as unpatentable
over Plym.

1 The Examiner objected to the drawings under 37 C.F.R. § 1.83(a). Office
Action dated Jan. 23, 2009, pp. 2-3; Ans. 18-19. An objection to the
drawings under 37 C.F.R. § 1.83(a) is a petitionable, not an appealable,
matter. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002). As such, we
do not review this objection.
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ISSUES
This appeal presents the following issues:
Is claim 1 indefinite?
Does Stark disclose a retention member as called for in claim 1?
Does Plym disclose first and second flange units capable of abutting a
front and rear face of the door as called for in claim 1?

ANALYSIS
Claim 1 under 35 U.S.C. § 112, second paragraph
We agree with Appellant that claim 1 calls for first and second flange
units each having sash elements, which in turn have flanges that extend
parallel to the pane. See Br. 10; see also Spec. 6, paras. [0035]-[0037]; fig.
3. Consequently, a person of ordinary skill in the art would understand what
is claimed when claim 1 is read in light of the Specification. See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986) (citations omitted). As such, we cannot sustain the rejection of
claim 1.

Claims 1, 7, and 9 as unpatentable over Stark and LaSee
Claim 1 calls for at least one retention member attached to a first
flange unit that extends into an opening passing through a door, beyond a
position of the transparent pane with respect to the first flange unit (when
positioned between the sash elements) to grip a sill surface. Consistent with
the claim, the Specification states that the retention member (retention arm
40) may attach to the inner surface of flange 23 and extend into opening 22,
providing a ledge 25 supporting edges of glass 32, and providing a foot
element 44 having a foot 46 that abuts (grips) the sill surface 26. Spec. 7,
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paras. [0040]-[0041]; figs. 3, 4. By calling for the retention arm to be
attached to the first flange unit and extend beyond the position of the
transparent pane “with respect to the first flange unit,” claim 1 provides the
direction in which the retention arm must extend. Contra. Ans. 14.
Consequently, claim 1 calls for a retention member that is attached to the
first flange unit, and extends, with respect to the first flange unit, beyond the
position of the transparent pane to grip a sill surface.
Stark discloses a clip 52a (retention member) attached via U-shaped
portion 54a to front panel 22a (first flange unit). See Stark, col. 5, ll. 4-8;
figs. 2, 5.2 Clip 52a includes a tab 62a that extends into opening 18 passing
through a door 16. Stark, col. 3, ll. 29, 33-36; col. 5, ll. 12-13, 26-31; figs.
2, 5. However, tab 62a of clip 52a terminates at or before (does not extend
beyond) the perpendicular edge of the pane 42a opposite the front panel 22a
(first flange unit) and does not grip wall 64a (a sill surface). Stark’s thin
layer of mastic 40a (identified by the Examiner as portion “A”) is disposed
in the slot 36a between panels 30a and 40a, and is not in contact with or a
part of clip 52a. Stark col. 4, ll. 35-37; figs. 2, 3, 5; contra. Ans. 4, 15.
Even were we to consider thin layer of mastic 40a to be part of clip 52a, thin
layer of mastic 40a does not grip wall 64a (a sill surface), and thus cannot
correspond to a retention member as called for in claim 1.
Consequently, the Examiner’s finding that Stark discloses a retention
member as called for in claim 1 is in error. As such, we cannot sustain the
rejection of claim 1 or its dependent claims 7 and 9.

2 Stark’s second embodiment (Figure 5) is “substantially identical” to the
first embodiment (Figure 2), and thus descriptions of the first embodiment
(e.g. pane of glass 42) are applicable to the second (e.g., pane of glass 42a).
Stark, col. 3, ll. 3-6, 12-15; col. 4, l. 37; col. 6, ll. 31-33; figs. 2, 5.
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Claim 2 over Stark, La See, and Petta
Appellant argues claim 2 based on its dependency from claim 1.
Br. 8. The rejection of claim 2, like the rejection of claim 1, relies upon the
finding that Stark discloses a retention member as claimed. Ans. 10. As
explained in the analysis of claim 1, supra, that finding is in error and
consequently we cannot sustain the rejection of claim 2.

Claims 1 and 3-6 over Plym, LaSee, and Petta
Claim 1 calls for first and second flange units each comprised of a
preassembled rectangular frame sized to frame the opening and abut a front
and rear face of the door. The Specification does not provide a
lexicographical definition of “abut.” A common definition of “abut” with
regard to an object is “to touch (something) with a projecting end or point
means, to end on, to lean against at one end for rest or support.”3 Consistent
with this definition, the Specification states that the front and rear frame
halves 18 and 20 include flanges 23 which abut the front face 12 and rear
face 14. Spec. 6, para. [0035]. Therefore, claim 1 calls for the first and
second flange units each comprising a preassembled rectangular frame that
touch the front and rear face of the door.
The Examiner’s conclusion of obviousness is based in part on the
finding that Plym discloses a window sash construction having first and
second flange units capable of abutting a front and rear face of the door. See
Ans. 15-16.
Appellant argues, and we agree, that Plym’s window sash
construction attaches to a horizontal face of a window sill and cannot abut a
front and rear face of the door as called for in claim 1 because it does not

3 “Abut,” v., def. 3, OXFORD ENGLISH DICTIONARY (1989).
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touch the front and rear faces of the door. See Br. 14; Plym, figs. 1-5. As
such, we cannot sustain the rejection of claim 1 or its dependent claims 3-6.

Claims 11, 14, and 17-20 over Plym
Independent claim 11 is similar to independent claim 1 in that it calls
for first and second flange units that abut (touch) the front and rear faces of
the door. The Examiner’s conclusion of obviousness for claim 11 is based
in part on the finding that Plym discloses a window sash construction having
first and second flange units capable of abutting a front and rear face of the
door. Ans. 10-13, 17-18. Our analysis of claim 1 as regards obviousness
over Plym, LaSee, and Petta, supra, is applicable here as well. As such, we
cannot sustain the rejection of claim 11 or its dependent claims 14 and 17-
20.

CONCLUSIONS
Claim 1 is not indefinite.
Stark does not disclose a retention member as called for in claim 1.
Plym does not disclose first and second flange units capable of
abutting a front and rear face of the door as called for in claim 1.

DECISION
We reverse the Examiner’s decision to reject claim 1 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
We reverse the Examiners decision to reject claims 1-7, 9, 11, 14, and
17-20 under 35 U.S.C. § 103(a).
REVERSED
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