Ex Parte Moench

Patent Trial and Appeal Board

Apr 8, 2015

12800901 (P.T.A.B. Apr. 8, 2015)

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.
12/800,901 05/25/2010 John P. Moench 7722 6461
7590 04/08/2015
Paul M. Denk
Suite 305
763 S. New Ballas Road
St. Louis, MO 63141
EXAMINER
HIJAZ, OMAR F
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
04/08/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN P. MOENCH
____________________

Appeal 2013-000437
Application 12/800,901
Technology Center 3600
____________________

Before: MICHELLE R. OSINSKI, WILLIAM. A. CAPP, and
JILL D. HILL, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
John P. Moench (Appellant)1 appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claim 6. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellant, the real parties in interest are John P. Moench,
Patrick W. Duggan, and Innovative Drywall Solutions, LLC. Appeal Br. 4.

Appeal 2013-000437
Application 12/800,901

THE CLAIMED SUBJECT MATTER
Claim 6, the sole claim on appeal, is reproduced below.
6. A prefabricated five-sided fire resistant rectangular gypsum
wallboard box for use as a recessed ceiling fixture enclosure for
mounting adjacent a ceiling opening and formed from a single
piece of gypsum wallboard of a cross shaped configuration
comprising;
a single piece of gypsum wallboard, said wallboard cut to
a five wall integrally connected cross shaped configuration for
folding for forming a five-sided structure, including a top wall,
said top wall having four side edges around its perimeter, a
series of side walls, one of each side wall being integrally
connected to the top wall along one of said top wall side edge,
said top wall and the edges at the top of the four side walls
being attached to each other through a living hinge created
when the gypsum wallboard has been routed through its front
face and the interior fire resistance gypsum core leaving the
back paper layer intact to act as said hinge, the edge between
the top wall and each side wall being routed internally at a 45°
angle so that the side walls can be turned approximately 90° to
form an integral enclosure for a recessed lighting fixture, each
of the side walls having side edges, and each of the side edges
of said side walls also being routed at a 45° angle, so that when
each side wall is folded relative to the top wall, and said side
walls enter into contiguity with the side edge of the adjacent
side wall, said side wall and adjacent side wall form a mated
connection thereat, fire resistant tape means extending along
select of the formed edges of the top and side walls to provide
sealing between adjacent side walls when formed into said
recessed ceiling fixture enclosure;
a surrounding separate metal flange means cooperating
with those edges of the sidewalls opposite from the top wall to
provide means for supporting and mounting of said fixture
enclosure to ceiling joists;
said flange means including a flange surrounding the
bottom opening of said formed wallboard box, said metal
flange means including a series of integral tabs, said tabs bent
upwardly at 90° angles for locating inwardly from the bottom
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edges and contiguously against the four side walls during
installation, fasteners provided for securement of the flange
means and its tabs to the building structure;
a lighting fixture cooperating with and mounting to the
flange means when mounting the lighting fixture within the
ceiling fixture enclosure; and
thereby forming said gypsum wallboard box that retards
the spread of fire, flame or hot gases through a ceiling opening
in which the wallboard structure and a lighting fixture may
locate.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Menchetti
Monson
Newbold
US 4,704,837
US 6,105,334
US 2004/0090772 A1
Nov. 10, 1987
Aug. 22, 2000
May 13, 2004
REJECTIONS
I. Claim 6 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
Final Act. 3–4; Ans. 9.
II. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Newbold, Menchetti, and Monson. Ans. 5–9.
OPINION
Rejection I
The Examiner rejected claim 6 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Final Act. 3–4. In connection with the rejection, the Examiner stated that:
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(i) the recitation of “for folding for forming” at line 6 was unclear; (ii) the
recitation of “its” at line 9 was unclear; (iii) the recitation of “said edges of
the top and side walls being routed each at said approximately 45 angle” at
lines 15–16 was unclear; (iv) the recitation of “formed into a recessed
ceiling fixture enclosure, a surrounding separate metal flange” at lines 22–23
was unclear; (v) it was unclear as to what is being surrounded by the metal
flange means; (vi) the recitation of “for locating inwardly from the bottom”
is unclear; and (vii) the recitation of “a lighting fixture cooperating with and
mounting to the flange means” is unclear. Id.
Appellant’s Amendment filed on February 13, 2012 was entered for
purposes of appeal via an Advisory Action mailed June 11, 2012. Advisory
Act. 2. The Advisory Action indicated that although some of the 35 U.S.C.
§ 112 rejection issues were adequately addressed, including items (ii) and
(iii) outlined above, “additional 112 issues remain.” Id. The Examiner’s
Answer maintained the rejection of claim 6 under 35 U.S.C. § 112, second
paragraph. Ans. 9.
Appellant does not present arguments contesting the Examiner’s
rejection of claim 6 under 35 U.S.C. § 112, second paragraph. See Br. 4–16.
Consequently, Appellant has waived any argument of error, and we
summarily sustain the rejection of claim 6 under 35 U.S.C. § 112, second
paragraph. See In re Berger, 279 F.3d 975, 984–85 (Fed. Cir. 2002)
(holding that the Board did not err in sustaining a rejection under 35 U.S.C.
§ 112, second paragraph, when the applicant failed to contest the rejection
on appeal); see also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (“If an appellant fails to present arguments on a particular
issue—or more broadly, on a particular rejection—the Board will not, as a
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Application 12/800,901

general matter, unilaterally review those uncontested aspects of the
rejection”) and Manual of Patent Examining Procedure (MPEP) § 1205.02
(9th ed., Mar. 2014) (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, appellant has waived any challenge to that
ground of rejection and the Board may summarily sustain it, unless the
examiner subsequently withdrew the rejection in the examiner’s answer.”).
Rejection II
The Examiner relies on a combination of Newbold, Menchetti, and
Monson to teach all of the limitations of claim 6. Ans. 5. The Examiner
finds that Newbold “teaches a prefabricated five-sided fire resistant
rectangular gypsum wallboard box . . . for use as a recessed ceiling fixture
enclosure for mounting adjacent a ceiling opening,” but acknowledges that
Newbold fails to disclose several recited limitations of claim 6. Id. at 5–7.
The Examiner generally relies on Menchetti to teach forming a wall
construction from a single piece of gypsum wallboard, the walls being
attached to each other through a living hinge, and the edges between
adjacent walls being at a 45° angle. Id. at 7. The Examiner concludes that it
would have been obvious to one of ordinary skill in the art to modify
Newbold’s box “to be constructed of a single piece of gypsum wallboard,
such that adjacent walls are integrally connected through a living hinge . . .
and such that the top and side wall edges form a 45-degree angle to form a
90-degree angle connection” as taught by Menchetti “in order to facilitate
assembly of the enclosure.” Id. at 8. The Examiner also concludes that it
would have been obvious that “if the living hinges of Menchetti were
applied to the edges of the box of Newbold . . . , a cross shaped
configuration would result.” Id. As to the 45° angles of the edges being
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routed, the Examiner acknowledges that Menchetti “does not specifically
disclose that the product is formed by using routing,” but relies on a finding
that Menchetti’s product appears to be the same or similar to the claimed
product, in light of the limitation being a product-by-process claim
limitation. Id. (citing MPEP § 2113).
The Examiner generally relies on Monson for its teaching of “a single
piece cross-shape element to form a box structure” (Id. at 7 (citing Monson,
Figs. 1–3)), as well as its use of fasteners 60 “provided for securement of the
flange means and its tabs to the building structure . . . ; and the lighting
fixture cooperating with and mounting to the flange means when mounting
the lighting fixture within the ceiling fixture enclosure” (Id. at 8–9 (citing
Monson, Fig. 4)). The Examiner concludes that it would have been obvious
to one of ordinary skill in the art to modify Newbold’s housing assembly “to
include fasteners for securing the flanges to building members and fasteners
affixing the lighting fixture to the flange means” as taught by Monson “in
order to provide for a more stable and secure lighting assembly.” Id. at 9.
Appellant argues that Newbold’s fire assembly box “is far more
complex of structure, far more time consuming to use, and provides exposed
edges where the various side walls and top wall, in addition to the bottom
wall, fit against the Newbold frame 50.” Br. 12. For example, Appellant
points out, among other things, that Newbold’s fire assembly box requires
the use of separate support structure 50, inner drywall layers 30a, 30b, and
bar hanger 18, whereas the claimed invention is a single sheet of material
that does not require any internal frame structures, resulting in several
advantages during shipping, usage, and installation. Id. at 11–13.
Appellant’s arguments are unpersuasive because Appellant cannot show
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nonobviousness by attacking Newbold individually when the rejection as
articulated by the Examiner is based on a combination of Newbold,
Menchetti, and Monson. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Each reference cited by the Examiner must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, the
Examiner has pointed out that the additional elements noted in Newbold “are
from a different embodiment that was not used in the rejection.” Final Act.
9; Ans. 9, 10.
Appellant also argues that “it is not seen how Menchetti can be used
to make the Newbold style of structure, from his six panels, since the
framework 50 would get in the way” and the references do not suggest how
to form the box “without the use of any type of framework 50.” Br. 13.
Appellant further argues that the claimed invention “tak[es] standard
gypsum wallboard, miter cut[s] it, and ship[s] it in that configuration” as
opposed to “forming a wall construction per se” that includes metal fold
retainers 14 as in Menchetti. Id. at 12–13. Appellant’s additional arguments
also are not persuasive as the Examiner relies on Menchetti for its teachings
regarding the use of a single piece of wallboard, living hinges, and 45° edges
and does not propose wholesale bodily incorporation of Menchetti’s device
or its features directly into Newbold’s device. See Keller, 642 F.2d at 425
(“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”). The
ordinary artisan is not compelled to blindly follow the teaching of one prior
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art reference over the other without the exercise of independent judgment.
See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir.
1984). We agree with the Examiner that a person of ordinary skill in the art
following the teachings of Newbold and Menchetti would make Newbold’s
box out of a single piece of wallboard, with living hinges and 45° edges, as
necessary, to maintain functionality of the resulting fire assembly box. See
also Ans. 9–10 (“[I]t is the living hinge feature that makes the wallboard
able to bend two walls . . . and that is the feature being relied upon. . . . The
[E]xaminer contends that the modification to Newbold . . . in view of
Menchetti would be obvious regardless of the metal clips 14.”).
Appellant further argues that Menchetti “suggest[s] in no way how his
wallboard could ever be fabricated into a cross shaped configuration, for
integrally forming a ceiling fixture enclosure.” Br. 13. Appellant’s
argument is not persuasive in that although the Examiner has noted that “if
the living hinges of Menchetti were applied to the edges of the box of
Newbold . . ., a cross shaped configuration would result,” (Ans. 8), the
Examiner has additionally found that it is “known to use a single piece cross
shape element to form a box structure (as evidenced by Monson . . .
[F]igures 1–3).” Id. at 7, 10. Appellant’s argument does not address the
Examiner’s finding relating to Monson.
Appellant further argues that several of Monson’s teachings “are
entirely different from what [Appellant] ha[s] invented” and that Appellant’s
claimed invention has several advantages as compared to Monson. Br. 14.
These arguments are unpersuasive in that they fail to address the rejection as
articulated by the Examiner in which Monson is relied upon for its particular
teachings of a cross shape configuration and fasteners, and not for any and
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all of its numerous teachings. See Ans. 10–11. As to Appellant’s further
argument that “it is not seen how Monson can be considered for using the
wall construction of Menchetti, for embodying within the structure of
Newbold, to come up with structure that is equivalent to what [Appellant]
define[s] in [its] remaining claim 6” (Br. 14), this argument is not persuasive
because it fails to specifically point out error in the Examiner’s findings or in
the Examiner’s articulated reasoning for combining references in support of
the conclusion of obviousness.
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 6 under 35 U.S.C.§ 103(a).
DECISION
The Examiner’s decision to reject claim 6 under 35 U.S.C. § 112,
second paragraph, is summarily AFFIRMED.
The Examiner’s decision to reject claim 6 under 35 U.S.C. § 103(a) as
being unpatentable over Newbold, Menchetti, and Monson is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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