Ex Parte Mollinger et al

Patent Trial and Appeal Board

Dec 29, 2016

13557203 (P.T.A.B. Dec. 29, 2016)

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.
13/557,203 07/24/2012 Paul J. Mollinger EXT2532-014D 6890
8698 7590 01/03/2017
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
EXAMINER
SAFAVI, MICHAEL
ART UNIT PAPER NUMBER
3631
NOTIFICATION DATE DELIVERY MODE
01/03/2017 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):
standley docketing @ standleyllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL J. MOLLINGER, PAUL R. PELFREY, and
LARRY R. FAIRBANKS
Appeal 2015-000176
Application 13/557,203
Technology Center 3600
Before JILL D. HILL, JEFFREY A. STEPHENS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1—20. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Exterior Portfolio, LLC. App. Br.
2.
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Application 13/557,203
Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A siding panel unit for a wall of a structure, comprising:
a vinyl panel; and
a backing portion secured to said vinyl panel, said backing
portion comprised of:
a first side secured to and adjacent said vinyl panel; and
a second side adapted to be situated adjacent to said wall;
wherein a recess is formed on said first side of said
backing portion, which is adapted to receive a vinyl panel of an
adjacent panel unit such that said vinyl panel of said adjacent
panel unit is situated between said vinyl panel and said first
side of said backing portion.
Rejections
1. Claims 1—20 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 2.
2. Claims 11 and 13 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Porter (US 4,575,981, issued Mar. 18, 1986). Final Act. 4—5.
3. Claims 1, 4, 8—10, and 14 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Porter and Kagiyama (US 2005/0016102 Al,
published Jan. 27, 2005). Final Act. 5—7.
4. Claims 2 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Porter, Kagiyama, and Gilbert (US 2006/0075712 Al,
issued Apr. 13, 2006). Final Act. 7—9.
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5. Claim 20 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Porter, Kagiyama, and Gregoire (US 3,228,162, issued
Jan. 11, 1966). Final Act. 9—10.
6. Claims 5 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Porter, Kagiyama, and Gregoire. Final Act. 10-12.
7. Claims 12 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Porter and Gilbert. Final Act. 12—13.
8. Claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Porter and Gregoire. Final Act. 13—14.
9. Claims 17—19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Porter. Final Act. 14—15.
10. Claims 1,2, and 4—7 stand rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
1—5 of U.S. Patent No. 8,225,567 B1 (issued July 24, 2012).2 Final Act. 15—
17.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (App. Br. 9-12; Reply Br. 2—12). We are not persuaded by
Appellants’ arguments, except as to the separate basis for rejecting claim 3
for lack of written description support for “said vinyl panel comprises a
2 Appellants argue in the Reply Brief that the double patenting rejection is a
new ground of rejection and request that the rejection be held in abeyance
pending the appeal, but do not argue the merits of the double patenting
rejection. Any alleged failure by the Examiner to designate a rejection as a
new ground of rejection is a petitionable, not appealable, matter. 37 C.F.R.
§ 41.40(a). Absent argument on the merits of the double patenting rejection,
we summarily sustain the rejection.
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cellulosic composite.” For all other rejections, we adopt as our own the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and set forth in the Answer (see Ans. 15—21). We highlight
and address specific arguments and findings for emphasis as follows.
Rejection 1
§ 112, first paragraph, rejection of claims 1—20
The Examiner finds the Specification lacks written description support
for the recitation in independent claims 1,11, and 20 of a recess formed on
the first side of the backing portion, which is adapted to receive a vinyl panel
of an adjacent panel unit “such that said vinyl panel of said adjacent panel is
situated between said vinyl panel and said first side of said backing portion.”
Final Act. 2. Appellants argue the rejection of all claims on this basis as a
group. App. Br. 9-11. We select claim 1 as representative. 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants contend that the Examiner confuses recessed or relief zone
412 with recessed or relief zone 414, and that the claims address an example
of recessed or relief zone 414. App. Br. 9. As explained by Appellants,
paragraph 42 of the Specification “explicitly states that ‘[rjelief zone 414
may be adapted to receive an edge of an adjacent facing panel to provide an
improved lap joint.’” App. Br. 9 (capitalization altered by Appellants).
Appellants also emphasize that (1) paragraph 42 states relief zone 414 is in
side 402 of backer 400, and (2) side 402 corresponds to a side secured to,
and adjacent, the vinyl panel. App. Br. 9. “Hence,” Appellants contend,
“recessed or relief zone 414 is between the backing portion and the facing
panel.” Id. at 10. Based on this contention, Appellants state that “it is
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therefore readily apparent [from Figures 12 and 15] that relief zone 414 is
adapted to receive a vinyl panel of an adjacent panel unit such that the vinyl
panel of the adjacent panel unit is situated between the vinyl panel and the
first side of the backing portion.” Id. Appellants’ Figures 12 and 15 are
reproduced below.
FIG-15
Figures 12 and 15 depict a rear elevation view of
an exemplary embodiment of Appellants’ paneling
unit. Spec. 1^21, 25.
Appellants’ arguments do not apprise us of error in the rejection of
claim 1 for lack of written description. We agree with Appellants that
paragraph 42 of the Specification describes a relief zone in side 402 of
backer 400. Paragraph 39 describes side 402 as “first side 402 to be applied
to a siding portion.” It is unclear, however, from Figures 12 and 15, whether
the siding portion extends over relief zone 414. Although Figures 12 and 15
show edge portions on three sides that do not include ridges 408 or water
escape channels 410 (as described in paragraph 40 describing Figure 13 A),
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these edge portions are not further described, and it is unclear whether these
edge portions are intended to depict a portion of the backer lacking these
features, vinyl panel extending past the backer, or some other feature.
Accordingly, these figures do not show that an adjacent panel inserted into
the recess would be between the backing and the vinyl panel. The
dimensions of the relief zone relied on by Appellants (see App. Br. 10
(citing Spec. 142)) also do not indicate where the vinyl panel is in relation
to the relief zone because the recess may receive a portion of an adjacent
panel of similar dimensions without being sandwiched between the backer
and the vinyl panel as required by the amended claim.
Appellants contend that claims 1 and 6 of Patent No. 8,225,567,
which issued from the parent application of the application on appeal, also
provide support for the disputed limitations of claim 1. App. Br. 10; see also
Reply Br. 4. We do not agree. To the extent these issued claims correspond
to disclosure that is not new matter with respect to the application on appeal,
the claims recite a recess but do not describe the vinyl panel as enclosing the
recess, similar to the Specification under review.
Accordingly, for the reasons discussed above and by the Examiner,
we are not apprised of error in the Examiner’s rejection of representative
claim 1 under 35U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement. Thus, we sustain the rejection of
representative claim 1, and, for the same reasons, the rejection of claims 2—
20.
The Examiner also separately rejected claim 3 as lacking written
description support for reciting “said vinyl panel comprises a cellulosic
composite.” Based on paragraph 45’s description that the paneling units can
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be formed from a polymer such as vinyl or polymer composites such as
polymer reinforced with cellulosic materials, we agree with Appellants
(App. Br. 11) that this rejection is in error. Thus, the rejection of claim 3
under 35 U.S.C. § 112, first paragraph, is sustained only on the basis of its
dependence from claim 1, as discussed above.
Rejection 2
§ 102(b) rejection of claims 11 and 13
Appellants argue in the Reply Brief that the rejection of claims 11 and
13 as anticipated by Porter is in error (Reply Br. 5—6), but do not present
arguments regarding the rejection in the Appeal Brief (see generally Appeal
Br.). Appellants contend the rejection, although presented in the Final
Action, “was not maintained in the Advisory Action mailed on October 10,
2013,” and that it is, therefore, a new ground of rejection. Reply Br. 5.
Appellants’ contention that the Examiner’s Answer presents an
undesignated new ground of rejection is a petitionable matter not properly
before us on appeal. 37 C.F.R. § 41.40(a).3 To the extent Appellants’
arguments imply that the anticipation rejection is “an argument raised in the
examiner’s answer” under 37 C.F.R. § 41.41(b)(2), thereby permitting new
3 Section 40(a) provides:
Timing. Any request to seek review of the primary examiner’s
failure to designate a rejection as a new ground of rejection in an
examiner’s answer must be by way of a petition to the Director
under § 1.181 of this title filed within two months from the entry
of the examiner’s answer and before the filing of any reply brief.
Failure of appellant to timely file such a petition will constitute
a waiver of any arguments that a rejection must be designated as
a new ground of rejection.
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argument in the Reply Brief, we disagree. Although an advisory action may
modify an appealable rejection, see 37 C.F.R. § 41.39(a)(1) (referring to “the
Office action from which the appeal is taken (as modified by any advisory
action . . .)”), the Advisory Action in this case does not modify the
Examiner’s Final Action. The Advisory Action does not restate all grounds
of rejection applied in the Final Action, but also does not withdraw them.
Advisory Act. 2. Therefore, we find that Appellants were on notice of the
rejection under § 102(b) of claims 11 and 13, and waived any argument
against the rejection for purposes of this appeal by not presenting such
argument in the Appeal Brief. 37 C.F.R. § 41.41(b)(2).
In addition, even if we were to consider Appellants’ arguments
regarding the anticipation rejection, the arguments do not apprise us of error
in the rejection. Appellants contend Porter does not disclose a “relief zone
adapted to receive a facing panel of an adjacent panel unit such that said
facing panel of said adjacent panel unit is situated between said facing panel
and said backing portion of said siding panel unit,” as recited in claim 11,
because Porter’s wall 12 is situated between its own core 16 and a slot 18A
of an adjacent roof panel as shown in Figure 3. Reply Br. 5. Appellants’
arguments are not, however, commensurate in scope with the recited
limitations of claim 11. As shown in Figure 3 of Porter, slot 18A receives
wall 12 such that wall 12 is between the two walls of slot 18 A. The claim
does not preclude an additional layer, such as core 16, from also being
received between the two walls of the slot.
For the reasons given above, we sustain the rejection of claims 11 and
13 under 35 U.S.C. § 102(b) as anticipated by Porter.
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Rejection 3
§ 103(a) rejection of claims 1, 4, 8—10, and 14
Appellants argue in the Reply Brief that the rejection of claims 1, 4,
8—10, and 14 as obvious over Porter and Kagiyama is in error (Reply Br. 6—
7), but do not present arguments regarding the rejection in the Appeal Brief
(see generally Appeal Br.). Appellants contend the rejection, although
presented in the Final Action, “was not maintained in the Advisory Action
mailed on October 10, 2013,” and that it is, therefore, a new ground of
rejection. Reply Br. 6.
For the same reasons given above as to the anticipation rejection of
claims 11 and 13, we find Appellants waived any argument that the rejection
of claims 1, 4, 8—10, and 14 must be designated as a new ground of
rejection, see 37 C.F.R. § 41.40(a), and waived any argument against the
rejection for purposes of this appeal by not presenting such argument in the
Appeal Brief, see 37 C.F.R. § 41.41(b)(2).
In addition, even if we were to consider Appellants’ arguments
regarding the rejection of claims 1, 4, 8—10, and 14 as obvious over Porter
and Kagiyama, the arguments do not apprise us of error in the rejection. In
addition to the arguments presented with respect to the rejection of claims 11
and 13 as anticipated by Porter, with which we disagree, as discussed above,
Appellants argue there is no suggestion or motivation to modify the
dimensions of Porter. Reply Br. 7. Appellants’ arguments as to dimensions
appear to relate to the dimensions recited in claims 8—10, which Appellants
do not expressly argue separately from independent claim 1. Even
considering these arguments in connection with claim 8, for example, we
agree with the Examiner that a device having the claimed dimension would
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not perform any differently than the prior art device. Final Act. 7 (citing
Gardner v. TEC Sys., Inc., 725 F.2d 1338 (Fed. Cir. 1984)). Appellants do
not present evidence that only a facing panel could fit within a recess of the
claimed dimension, or that modifying Porter to receive only a facing panel
would have any appreciable effect on the performance of the Porter device.
For the reasons given above, we sustain the rejection of claims 1, 4,
8—10, and 14 under 35 U.S.C. § 103(a) as obvious over Porter and
Kagiyama.
Rejections E-9
§ 103(a) rejections of claims 2, 6, 20, 5, 7, 12, 16, 15, and 17—19
Appellants’ arguments as to the obviousness rejections of claims 2, 6,
20, 5, 7, 12, 16, 15, and 17—19 present the same issues as the obviousness
rejections of claims 1, 4, 8—10, and 14. Accordingly, for the same reasons,
we sustain the rejections under 35 U.S.C. § 103(a) of claims 2, 6, 20, 5, 7,
12, 16, 15, and 17-19.
DECISION
We affirm the Examiner’s decision to reject claims 1—20 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We affirm the Examiner’s decision to reject claims 11 and 13 under
35 U.S.C. § 102(b).
We affirm the Examiner’s decision to reject claims 1, 2, 4—10, 12, and
14—20 under 35 U.S.C. § 103(a).
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We affirm the Examiner’s decision to reject claims 1, 2, and 4—7 on
the ground of nonstatutory obviousness-type double patenting.
Because we have affirmed at least one ground of rejection with
respect to all claims on appeal, the Examiner’s decision to reject claims 1—20
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)(l)(iv).
AFFIRMED
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