13136983 (P.T.A.B. Feb. 28, 2017)

Ex Parte Platt et al

Patent Trial and Appeal BoardFeb 28, 2017

13136983 (P.T.A.B. Feb. 28, 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. 187100-3166 5698 EXAMINER CHAPMAN, JEANETTE E ART UNIT PAPER NUMBER 3638 MAIL DATE DELIVERY MODE 13/136,983 08/16/2011 William J. Platt 50787 7590 02/28/2017 STRADLEY RONON STEVENS & YOUNG, LLP 30 VALLEY STREAM PARKWAY GREAT VALLEY CORPORATE CENTER MALVERN, PA 19355-1481 02/28/2017 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 WILLIAM J. PLATT and BRETT W. SAREYKA Appeal 2014-006020 Application 13/136,983 Technology Center 3600 Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE William J. Platt and Brett W. Sareyka (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 2 and 3, which are all the pending claims. Appeal Br. 5. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Worthington Armstrong Venture, which is a joint venture between Worthington Industries, Inc. and Armstrong World Industries, Inc. Appeal Br. 3. Appeal 2014-006020 Application 13/136,983 CLAIMED SUBJECT MATTER Appellants’ disclosed invention “relates to noise control in suspended ceilings,” which “have a grid of intersecting metal beams that are suspended by hangers from a structural ceiling.” Spec., p. 1,11. 4—7. In particular, the disclosed invention “deals with deadening . . . sound vibrations coming down the hangers.” Id. at 11. 17—18. Claim 2, reproduced below, is the sole independent claim appealed and is representative of the subject matter on appeal. 2. In a suspended ceiling having grid beams suspended from a structural ceiling by hangers; the improvement comprising[:] a noise damper of resilient sound vibration damping material in contact with the grid beam that insulates a hanger from the grid beam, wherein the noise damper extends through a knock-out in the web of the beam. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Deaton US 4,471,596 Sept. 18, 1984 Lehane US 2009/0158684 A1 June 25,2009 Payne US 7,735,285 B2 June 15,2010 REJECTIONS The following rejections are before us for review: I. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Deaton and Payne. Non-Final Act. 3. 2 Appeal 2014-006020 Application 13/136,983 II. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lehane and Payne. Id. at 4. ANALYSIS Appellants present argument against the rejections of claims 2 and 3 together, expressly stating that dependent claim 3 “stands or falls” with independent claim 2. Appeal Br. 11—12; see id. at 11—14; Reply Br. 2. We select claim 2 as representative of the issues that Appellants present together, with claim 3 standing or falling with claim 2. See 37 C.F.R. § 41.37(c)(l)(iv). Rejections I and II both rely on a known arrangement of a suspended ceiling having grid beams suspended from a structural ceiling by hangers, as disclosed in Deaton and Lehane, respectively, and propose to modify such a ceiling arrangement by placing a noise damping grommet, as taught by Payne, in contact with a grid beam to extend through a knock-out in a web of the beam. Non-Final Act. 3^4. In particular, the Examiner found that Payne teaches a noise damper in the form of a grommet that extends through a knock-out/hole in a web of a beam and concluded that, given the teachings of the prior art, it would have been obvious to one of ordinary skill in the art at the time of the invention to have “extended] a rubber like grommet (noise damper) through [an] opening [(knock-out)] in the web of the T-bar grid [of a known ceiling arrangement such as in Deaton or Lehane] to acoustically isolate the structural ceiling from the grid.” Id. (same conclusion for both rejections). Appellants do not dispute that Deaton and Lehane disclose known suspended ceiling arrangements, or that Payne teaches a noise damping 3 Appeal 2014-006020 Application 13/136,983 grommet. See Appeal Br. 12—13. Rather, Appellants assert that Payne’s noise damping grommet is not positioned in exactly the same way as in the claimed improvement—namely, extending through a knock-out in a web of the grid beam. See id. This assertion, however, is unconvincing because it is not responsive to the rejections articulated by the Examiner. Although we appreciate Appellants’ observation that Payne’s noise damping grommet is not positioned identically as in the claim, merely asserting a difference in a single reference is insufficient to identify error in the conclusion of an obviousness rejection (as opposed to an anticipation rejection). Appellants’ argument amounts to a contention that the claimed invention would not have been obvious to one of ordinary skill in the art at the time of the invention because Payne does not disclose every limitation recited in the claim. But nonobviousness is not established by attacking a reference individually when the rejection is predicated upon a combination of prior art teachings. See Ans. 6—7 (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981) and In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)). The Examiner correctly notes that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. at 8 (citing In re Keller, 642 F.2d at 425). Moreover, we note that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appellants have not provided any 4 Appeal 2014-006020 Application 13/136,983 factual evidence or persuasive technical reasoning to explain why positioning a noise damping grommet, as taught by Payne, through a knock out in the web of the beam, as proposed in the rejections, would yield anything other than a predictable result of acoustically isolating the suspended grid and the structural ceiling, or that doing so would be somehow beyond the level of ordinary skill in the art. See Ans. 7—9. In the Reply Brief, Appellants observe that examiners are “cautioned against applying hindsight by using [Appellants’] disclosure as a blueprint to reconstruct the claimed invention out of isolated teachings in the prior art.” Reply Br. 2. However, Appellants do not identify, nor do we discern, any knowledge that the Examiner relied upon that was gleaned only from Appellants’ disclosure and that was not otherwise within the level of ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (so long as a conclusion of obviousness is based on a reconstruction that “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from [Appellants’] disclosure, such a reconstruction is proper”). In view of the foregoing, Appellants do not apprise us of error in the Examiner’s factual findings, or the reasoning provided for the ultimate conclusion of obviousness with respect to claim 2. Accordingly, we sustain the rejections of independent claim 2, and of dependent claim 3 falling therewith, under 35 U.S.C. § 103(a) as being unpatentable over Deaton and Payne, and as being unpatentable over Lehane and Payne. 5 Appeal 2014-006020 Application 13/136,983 DECISION We AFFIRM the Examiner’s decision rejecting claims 2 and 3 under 35 U.S.C. § 103(a) as being unpatentable over Deaton and Payne. We AFFIRM the Examiner’s decision rejecting claims 2 and 3 under 35 U.S.C. § 103(a) as being unpatentable over Fehane and Payne. 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 6