Ex Parte Marhevka

Patent Trial and Appeal Board

Aug 15, 2017

14329046 (P.T.A.B. Aug. 15, 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.
14/329,046 07/11/2014 Michael Andrew MARHEVKA JR. 1032800-000016 9510
21839 7590 08/17/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
BARLOW, ADAM G
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
08/17/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL ANDREW MARHEVKA, JR.
(Applicant: Penn Wood Products, Inc.)
Appeal 2017-004291
Application 14/329,0461
Technology Center 3600
Before LARRY J. HUME, AARON W. MOORE, and
DAVID J. CUTITTAII, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of all pending claims 1—5 in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellant, the real party in interest is Penn Wood Products,
Incorporated. App. Br. 3.
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Application 14/329,046
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed embodiments and claimed invention relate "to a
stair tread overlay, and more particularly to a stair tread overlay having a
scotia element attached to a bottom front edge of the tread." Spec. 11.
Exemplary Claims
Claims 1 and 2, reproduced below, are representative of the subject
matter on appeal:
1. A stair tread overlay for a staircase, comprising:
a generally planar stair tread having an upper surface, a
bottom surface, and an integrally formed rounded nosing
extending from an end thereof; and
a scotia element joined to said stair tread, said scotia
element including a front contoured surface and a planar back
side surface;
wherein a bottom surface of the nosing of said stair tread
includes one of a tongue or groove and an upper surface of said
scotia element includes the other of a tongue or groove;
wherein said tongue and groove of the nosing of said
tread and said scotia element are secured together to form a
joint to thereby connect said scotia element to said tread.
2. The stair tread overlay according to claim 1, wherein
said rounded nosing of said stair tread defines an upper portion
of a bullnose arc and said scotia element includes a portion
defining a lower portion of the bullnose arc, the upper portion
2 Our Decision relies upon Appellant's Appeal Brief ("App. Br.," filed
July 22, 2016); Reply Brief ("Reply Br.," filed Jan. 17, 2017); Examiner's
Answer ("Ans.," mailed Nov. 17, 2016); Final Office Action ("Final Act.,"
mailed Sept. 22, 2015); and the original Specification ("Spec.," filed
July 11,2014).
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Application 14/329,046
of the bullnose arc on the stair tread and the lower portion of
the bullnose arc on the scotia element forming a continuously
curved bullnose.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Young US 8,141,321 B2 Mar. 27, 2012
Stanchfield US 8,327,595 B2 Dec. 11, 2012
Rejection on Appeal
Clams 1—5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Young and Stanchfield. Final Act. 2;
see also Ans. 2.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 5—8), we decide the appeal
of the obviousness rejection of claims 1, 4, and 5 on the basis of
representative claim 1; and we decide the appeal of the obviousness rejection
of claims 2 and 3 on the basis of illustrative claim 2.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Application 14/329,046
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with particular arguments advanced by Appellant with
respect to claims 2 and 3 for the specific reasons discussed below. However,
we disagree with Appellant's arguments with respect to claims 1, 4, and 5
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellant's arguments. We highlight
and address specific findings, conclusions, and arguments regarding claims 1
and 2 for emphases as follows.
1. $ 103(a) Rejection of Claims E 4, and 5
Issue 1
Appellant argues (App. Br. 5—7; Reply Br. 3) the Examiner's rejection
of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination
of Young and Stanchfield is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a "stair tread overlay for a staircase" that includes "an integrally
formed rounded nosing extending from an end [of a planar stair tread],"
wherein, inter alia, "a bottom surface of the nosing of said stair tread
includes one of a tongue or groove and an upper surface of said scotia
element includes the other of a tongue or groove;" and "said tongue and
groove of the nosing of said tread and said scotia element are secured
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Application 14/329,046
together to form a joint to thereby connect said scotia element to said tread,"
as recited in claim 1?
Analysis
Appellant contends:
[T]he alleged nosing 24 of Young cannot be both the
noted portion c) of the stair tread, i.e., "an integrally formed
rounded nosing" as recited in Claims 1 and 5, and also joined to
the stair tread. Moreover, the tongue and groove of the nosing
and the scotia element cannot be secured to one another if the
nosing is already part of the scotia element as in Young.
App. Br. 6.4 "It is also clear that Young does not disclose or suggest a
bottom surface of the nosing including a tongue or groove in order to be
joined to a corresponding scotia element, and hence the Examiner further
relies upon Stanchfield." App. Br. 7.
With respect to the teachings and suggestions of Stanchfield,
Appellant argues "Stanchfield merely discloses a cap to be used between
joints [and tjhere is no disclosure for a tread with an integral rounded
nosing, as recited in Claims 1 and 5." Id.
Appellant further argues limitations not found in the claims, i.e., "by
eliminating a joint at the front edge of the stair tread, Appellant has
increased the strength of the wood board and the integrity of the flat step
surface, thus improving the safety of the stair tread." Id.
4 Appellant cites to the non-precedential decision by our predecessor
tribunal, The Board of Patent Appeals and Interferences, in Ex parte
Konstant, Appeal 2009-001901 (BPAI Aug. 20, 2009) in support of their
arguments. We note this non-precedential Decision is limited to its own
particular facts, and is non-binding on this panel.
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Appellant also contends the claimed invention achieves improved
functionality (see id.), including improved strength, integrity of the flat step
surface, safety, and better color and grain match. Along these lines,
Appellant argues the claimed invention achieves unexpected results or
"unexpected advantages" "in both material usage and assembly functionality
over the cited reference to Young." Id.
We first note the test for obviousness is what the combined teachings
of the prior art would have suggested to the hypothetical person of ordinary
skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant has
not challenged the combinability of the teachings of Young and Stanchfield.
With respect to the alleged improved functionality and unexpected results,
Appellant's arguments "fail from the outset because . . . they are not based
on limitations appearing in the claims." In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
We additionally note Appellant does not provide any objective
evidence of secondary considerations, such as commercial success, long felt
but unmet need, or unexpected results.5 Mere Attorney arguments and
conclusory statements regarding the purported unexpected results,
unsupported by factual evidence, are entitled to little probative value. In re
5 "For objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention." Wyers v. Master Lock
Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (internal quotation marks,
bracketing, and emphasis omitted).
6
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Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984).6
With respect to Appellant's "integral" argument quoted above, our
predecessor court held that simply integrating known components is
generally insufficient to establish patentability. In re Larson, 340 F.2d 965,
968 (CCPA 1965) ("[T]he use of a one piece construction instead of the
structure disclosed in [the prior art] would be merely a matter of obvious
engineering choice"). Moreover, we note in passing and without reliance in
sustaining the rejection, Young’s tread 22 with side nosing 44 attached
teaches “a generally planar stair tread having ... an integrally formed
rounded nosing extending from an end thereof’ and Young’s front nosing
teaches a separate “scotia element,” as recited in claim 1.
The Examiner responds to Appellant's contentions by finding "the
Stanchfield reference teaches the tongue and groove connection between the
bottom of the one stair nose component (14) and the top of another. The
modification of Young by Stanchfield will result in a relocation of the
tongue and groove connection." Ans. 2—3. Further,
Since the vertical tongue and groove connection of Young is
relocated to be a horizontal tongue and groove as taught by
Stanchfield in the combination, the nosing will be integral with
the stair tread and a separate scotia element that is joined to the
nosing by the tongue and groove connection. The nosing and
the separate scotia are the upper and lower portions that
together form a continuously curved bullnose arc. Since the
nosing will maintain its shape, it will be rounded, and the
6 "Argument in the brief does not take the place of evidence in the record."
In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d
769, 773 (CCPA 1964)).
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Application 14/329,046
separate scotia element below the nosing will maintain its same
contoured front surface and a planar back surface.
The appellant argues differences in lumber stock material
between the instant application and the Young reference.
However these limitations are not found in the claims.
Ans. 3.
We agree with the Examiner's finding that Young in combination with
Stanchfield teaches or at least suggests the contested limitations of claim 1,
and also agree that various arguments Appellant sets forth are not
commensurate in scope with the actual claim limitations. Ans. 2—3.
Moreover, our reviewing court guides, where "the problem is known,
the possible approaches to solving the problem are known and finite, and the
solution is predictable through use of a known option," a solution that is
obvious to try may indeed be obvious. Abbott Labs. v. Sandoz, Inc., 544
F.3d 1341, 1351 (Fed. Cir. 2008) (citing KSRInt7 Co. v. Teleflex Inc., 550
U.S. 398, 420 (2007)). See also Ortho-McNeil Pharm., Inc. v. Mylan Labs.,
Inc., 520 F.3d 1358, 1364 (Fed. Cir. 2008) (stating the number of options
must be "small or easily traversed").
Here, because there are only two possible locations for the tongue and
groove joint that joins the scotia to the planar stair tread, i.e., on the edge of
the stair tread as illustrated in Figure 3 of Young, or on the bottom of the
planar stair tread, both of which would perform the function of securing the
nosing of the tread to the scotia (see claim 1), we find an artisan would have
known how to accommodate the respective arrangements with predictable
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results.7 We conclude, as a matter of claim construction, the Examiner's
proffered substitution would have at least been "obvious to try."
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 4 and 5 which fall therewith. See Claim Grouping, supra.
2. $ 103(a) Rejection of Claims 2 and 3
Issue 2
Appellant argues (App. Br. 8) the Examiner's rejection of claim 2
under 35 U.S.C. § 103(a) as being obvious over the combination of Young
and Stanchfield is in error. These contentions present us with the following
issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the stair tread overlay of claim 1 wherein, inter alia, "the upper
portion of the bullnose arc on the stair tread and the lower portion of the
bullnose arc on the scotia element forming a continuously curved bullnose,"
as recited in claim 2?
7 See KSR, 550 U.S. at 416.
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Analysis
Appellant contends "Young discloses a continuous bullnose arc
formed from a one-piece nosing construction and Stanchfield does not
disclose a bullnose." We agree with Appellant's arguments. App. Br. 8.
For essentially the same reasons argued by Appellant {id.), we reverse
the Examiner's rejection of dependent claim 2, and also the rejection of
claim 3 depending therefrom and grouped therewith.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2—3) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellant has not shown.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1, 4, and 5 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we sustain the rejection.
The Examiner erred with respect to the obviousness rejection of
claims 2 and 3 under 35 U.S.C. § 103(a) over the cited prior art combination
of record, and we do not sustain the rejection.
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DECISION
We affirm the Examiner's decision rejecting claims 1, 4, and 5.
We reverse the Examiner's decision rejecting claims 2 and 3.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. §41.50(f).
AFFIRMED-IN-PART
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