Ex Parte Poirier

Patent Trial and Appeal Board

Jan 9, 2017

13546708 (P.T.A.B. Jan. 9, 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.
13/546,708 07/11/2012 Peter P. Poirier 06821/09879 5238
24024 7590 01/11/2017
Calfee, Halter & Griswold LLP
The Calfee Building
1405 East Sixth Street
Cleveland, OH 44114-1607
EXAMINER
AHMAD, CHARISSA L
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
01/11/2017 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):
ipdocket @ c alfee .com
wfrick @ c alfee. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER P. POIRIER
Appeal 2015-001051
Application 13/546,708
Technology Center 3600
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
SEAN P. O’HANLON, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter P. Poirier (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 10—30.1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 1—9 and 31—33 have been cancelled. See Amendment filed April
18, 2014 (hereinafter “the Amendment”).
Appeal 2015-001051
Application 13/546,708
THE CLAIMED SUBJECT MATTER
Claim 24, reproduced below, is illustrative of the claimed subject
matter.
24. A modified flexible sealing membrane capable of sealing a
building gap formed between a window frame and a rough
opening in which the frame of a window is received, the
modified flexible sealing membrane also being capable of
sealing a frame gap that is formed between different structural
members which combine to form the window frame by
sandwiching panes of glass forming the window therebetween,
the modified flexible sealing membrane consisting essentially of
essentially transparent silicone rubber and comprising a flexible
sheet defining an integral projection for receipt in the channel of
an adaptor connected to the window frame, the flexible sheet
defining on one side of the projection an outer membrane
portion, the flexible sheet defining on the other side of the
projection an inner membrane portion, wherein
(a) the widths of the inner membrane portion and the
outer membrane portion, and
(b) the location of the projection on the flexible sheet of
the sealing membrane
are each selected so that when the projection of the sealing
membrane is received in the channel of the adaptor, the inner
membrane portion spans the frame gap while the outer
membrane portion spans the building gap, thereby providing an
air and moisture-proof barrier between the window frame and the
associated building framing member.
REJECTIONS2
I. Claims 10, 11, 24—26, and 30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ellingson (US 2005/0204657 Al,
2 The rejections under 35 U.S.C. § 112, second and fourth paragraphs, were
overcome by the Amendment. See Advisory Act.; Final Act. 2—A.
2
Appeal 2015-001051
Application 13/546,708
pub. Sept. 22, 2005), Allen (US 4,462,190, iss. July 31, 1984), and
Thomas (US 2,778,793, iss. Jan. 22, 1957).3
II. Claims 10-24 and 26—28 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Fisher (US 2006/0070301 Al, pub. Apr. 6,
2006), Allen, and Thomas.
III. Claims 19 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ellingson, Allen, Thomas, and Fisher.
DISCUSSION
Rejection I
Appellant argues for patentability of claims 10, 11, 24—26, and 30
subject to this ground of rejection as a group. Br. 10-16. We select claim
24 as representative of this group, and claims 10, 11, 25, 26, and 30 stand or
fall with claim 24. See 37 C.F.R. § 41.37(c)(l)(iv).
The issue raised in the appeal of this rejection is whether the
Examiner erred in determining that it would have been obvious to replace
Ellingson’s sealing membrane (coextruded plastic member 36) with a
transparent silicone rubber sealing membrane in view of the teachings of
Allen and Thomas. See Br. 10—16; Final Act. 5—6. According to the
Examiner, “[sjilicone rubber is an obvious choice due to its flexibility and
durability” and “[t]he motivation for using a transparent material would be
to prevent the sealing member from being conspicuous.” Final Act. 5—6.
3 Appellant and the Examiner agree that claim 30 should have been included
in Rejection I, rather than in Rejection III, as set forth on page 8 of the Final
Action. Br. 10; Ans. 2.
3
Appeal 2015-001051
Application 13/546,708
The Examiner emphasizes that the rejection is predicated not on “only
changing the hinge material to a silicone rubber, but rather the entire sealing
membrane.” Ans. 2—3. Thus, Appellant’s contention that because “it is well
known that silicone rubber does not bond well to other materials” “any
rejection based on the notion of replacing only the plastic used to make
flexible hinge 48 [of Ellingson] with a transparent silicone rubber would be
fatally defective under 35 U.S.C. § 103(a)” (Br. 11) is not germane to the
rejection articulated by the Examiner.
Appellant argues that transparent silicone rubber would not be a
suitable material for Ellingson’s extruded plastic member 36, which includes
flashing strip 37 and nailing fin 22, because Ellingson’s plastic member
allows only pivotal movement about the longitudinal axis of flexible hinge
48; in contrast, a member made from a transparent silicone rubber would
allow not only pivotal movement but also pulling apart of the two sides of
each hinge in a side-to-side direction, as well as pulling apart of the two
sides of each hinge along the pivotal axis of the hinge. Id. at 12—14.
Appellant contends that an essentially transparent silicone rubber material
would permit these two additional degrees of movement because it “is an
elastomer which, by definition, is a material which can be stretched by a
substantial amount.” Id. at 14. In support of this contention, Appellant
relies on a “declaration of Professor Harry Michael Chung, a copy of which
is attached to [the Appeal Brief] as Exhibit 1.” Id. Notably, a signed copy
of the Chung Declaration was first submitted in the present application with
the Appeal Brief, and, thus, will not be considered in this Appeal. See
37 C.F.R. § 41.37(c)(2) (“A brief shall not include . . . any new or non-
4
Appeal 2015-001051
Application 13/546,708
admitted affidavit or other Evidence. See ... § 41.33 for treatment of. . .
affidavits or other Evidence filed after the date of filing the appeal.”).
Appellant argues that “the inability of essentially transparent silicone
elastomer to resist or prevent substantial stretching would make it unsuitable
for use in making Ellingson’s extruded plastic member 36.” Br. 14.
According to Appellant, “[t]his is because any hypothetical extruded
member 36 made from this material would allow the door or window
mounted with this hypothetical extruded member 36 to move about in its
rough opening” and “[n]o skilled window manufacture[r] would tolerate
such a possibility.” Id. Appellant adds that the Examiner’s rejection
“focuses on flexibility and durability while completely disregarding another
critical property” of Ellingson’s hinge, “i.e., the ability to prevent all
movement of the two sides of the hinge with respect to one another except
for pivotal movement.” Id. at 14—15. Thus, Appellant argues that the
Examiner’s “reliance on the proposition of law in [In re Leshin, 277 F.2d
197, 199 (CCPA I960)], (selecting a known material on the basis of its
suitability for the intended purpose) is misplaced.” Id. at 15.
Appellant does not direct our attention to any disclosure in Ellingson
that suggests that the hinge of Ellingson’s member 36 must prevent all
movement except for pivotal movement or that the degree of stretchability
exhibited by the types of transparent silicone rubbers described by Thomas
would be considered intolerable, as opposed to being considered perhaps
even desirable (to accommodate differential thermal expansion or shearing
stresses, for example). Neither does Appellant proffer any other evidence to
support the assertion that “[n]o skilled window manufacture[r] would
tolerate such a possibility” {id. at 14).
5
Appeal 2015-001051
Application 13/546,708
Thus, even accepting “the distinction between plastics which exhibit
some degree of flexibility, on the one hand, and elastomers such as silicone
rubber which exhibit elasticity, on the other hand” (Br. 15), Appellant’s
arguments fail to apprise us of error in the Examiner’s determination that it
would have been obvious to replace Ellingson’s sealing membrane
(coextruded plastic member 36) with a transparent silicone rubber sealing
membrane in view of the teachings of Allen and Thomas. Accordingly, we
sustain the rejection of claims 10, 11, 24—26, and 30 under 35 U.S.C.
§ 103(a) as unpatentable over Ellingson, Allen, and Thomas.
Rejection II
Appellant argues for patentability of claims 10—24 and 26—28 subject
to this ground of rejection as a group. Br. 16—18. We select claim 24 as
representative of this group, and claims 10—23 and 26—28 stand or fall with
claim 24. See 37 C.F.R. § 41.37(c)(l)(iv).
The primary issue raised in the appeal of this rejection is whether the
Examiner erred in determining that it would have been obvious to replace
Fisher’s sealing membrane (nailing fin 110) with a transparent silicone
rubber sealing membrane in view of the teachings of Allen and Thomas. See
Br. 16—18; Final Act. 7.
Appellant acknowledges that Fisher “indicates its nailing fins 110 can
be made from rubber,” but argues that “no skilled window manufacture[r]
would make the nailing fins 110 of Fisher . . . from a material which could
undergo substantial stretching, as that would make these nailing fins
unsuitable for use for their intended purpose.” Br. 16. According to
Appellant, “a skilled window manufacture[r] would interpret Fisher’s
disclosure regarding rubber nailing fins” as limited to particular rubber
6
Appeal 2015-001051
Application 13/546,708
products that cannot “be stretched to any insignificant [sic] degree.” Id.
Appellant contends that “[g]iven that the function of nailing fms 110 of
Fisher ... is to mount window 110 [sic] securely in place, a skilled window
manufacture[r] would immediately recognize that these nailing fms could
not be made from a material which stretches significantly” and, thus, would
further recognize that only “those rubbers which have been compounded
and/or reinforced to avoid any significant stretching” could be used for
making Fisher’s nailing fms 110. Id. at 16—17. In support of this
contention, Appellant relies on entries from Wikipedia and Green Car
Congress websites attached to the Appeal Brief as Exhibit 2 and Exhibit 3,
respectively. Id. at 16. Notably, the Wikipedia and Green Car Congress
documents were first submitted in the present application with the Appeal
Brief, and, thus, will not be considered in this Appeal. See 37 C.F.R.
§ 41.37(c)(2). Appellant adds that “for the same reasons, a skilled window
manufacturer would further recognize that these non-stretchable rubber
nailing fms could not be replaced with nailing fms made from a transparent
silicone rubber, because the hypothetical nailing fms produced thereby
would be too stretchable.” Id. at 17.
Appellant’s arguments regarding Fisher’s teachings of rubber nailing
fms being limited to non-stretchable rubber nailing fms are unavailing for
essentially the same reasons discussed above with respect to Rejection I.
Appellant does not point to any specific disclosure in Fisher that suggests
that the type of stretching that would be permitted by nailing fms made from
the types of transparent silicone rubber materials described by Thomas
would be either intolerable or undesirable for Fisher’s nailing fms. The
Examiner points out, correctly, that the stated purposes of nailing fin 110 are
7
Appeal 2015-001051
Application 13/546,708
to engage against a surface of a wall to couple a window assembly to the
wall and to help prevent infiltration of air and water from outside the wall to
inside the wall. Ans. 5 (citing Fisher 126). “Nowhere [does Fisher state]
that the nailing fin must not be stretchable or that the only rubbers that could
be used are ones that have been compounded or reinforced to avoid any
significant stretching.” Id.
Appellant also asserts that “the additional ingredients and reinforcing
agents that would need to be added to a transparent silicone rubber to make
it non-stretchable enough to function as Fisher’s nailing fins 110 have been
excluded from [the] claims” by the “consisting essentially of essentially
transparent silicone rubber” language of independent claims 10 and 24. Br.
17—18 (citing In re Herz, 537 F.2d 549 (CCPA 1976)); see also id. at 21, 24
(Claims App.). The language “consisting essentially of’ limits the material
of the claimed sealing membrane to essentially transparent silicone rubber
and only other substances that do not materially affect the basic and novel
characteristics of the claimed invention. See Herz, 537 F.2d at 551—52.
Appellant contends that “an important feature of the inventive sealing
membrane is that it is essentially transparent, which enables an installer to
visually confirm that the layer of moisture-proof sealant applied underneath
the inventive sealing membrane has been properly applied.” Br. 18 (citing
Spec. 120). In this regard, Appellant’s Specification discloses that
“[s]ilicone rubber is desirable in some embodiments because its relative
transparency allows moisture-proof sealant applied on its underside to be
seen through its body.” Spec. 120. Thus, consistent with Appellant’s
Specification, any additives that do not materially affect the relative
transparency (identified by Appellant in the Specification, as well as in the
8
Appeal 2015-001051
Application 13/546,708
explicit language of the claims, as the important or basic
feature/characteristic) of the silicone rubber material are not excluded by the
“consisting essentially of essentially transparent silicone rubber” language of
claims 10 and 24. Accordingly, any additives or reinforcing agents that
might be present in the transparent silicone rubber materials described by
Thomas are not excluded by the “consisting essentially of essentially
transparent silicone rubber” language in the claims. See Thomas, col. 2,
11. 50-54 (discussing preparation of silicone elastomers having increased
tensile strength, while preserving their transparency, by curing siloxane
resins between plates having an inorganic filler bonded to their surfaces).
For the above reasons, Appellant’s arguments fail to apprise us of
error in the Examiner’s determination that it would have been obvious to
replace Fisher’s sealing membrane (nailing fin 110) with a transparent
silicone rubber sealing membrane in view of the teachings of Allen and
Thomas. Accordingly, we sustain the rejection of claims 10—24 and 26—28
under 35 U.S.C. § 103(a) as unpatentable over Fisher, Allen, and Thomas.
Rejection III
Appellant argues for patentability of claims 19 and 29 subject to this
ground of rejection as a group. Br. 18—19. We select claim 19 as
representative of this group, and claim 29 stands or falls with claim 19.
See 37 C.F.R. § 41.37(c)(l)(iv).
Appellant reiterates the arguments advanced against Rejections I and
II in contesting this rejection. Br. 18. For the reasons set forth above, these
arguments fail to apprise us of error in the Examiner’s rejection.
Appellant also contends that the Examiner’s conclusion of
obviousness is predicated on an incorrect “assumption] that [Fisher’s]
9
Appeal 2015-001051
Application 13/546,708
nailing fin 110 is one continuous piece which extends around all sides of
window 100 including around its comers.” Id. at 18—19. According to
Appellant, Fisher is clear that “nailing fms 110 are extrusions”; “[i]n other
words, they are made by a continuous process in which a molten plastic is
extmded through a die.” Id. at 19. Appellant asserts that such processes can
only make long continuous products having a uniform cross section along
their entire length and, thus, “cannot make products with variable cross
sections such [as] the hypothetical comer pieces the [EJxaminer is
postulating in this rejection.” Id.
Appellant does not point to, nor do we discern on our own, any
disclosure in Fisher that supports Appellant’s assertion that Fisher’s nailing
fms 110 are necessarily formed by extmsion. Fisher discloses that,
optionally, the window or door “structural members,” such as frame 104 and
cladding 106, and acrylic caps 222A, 222B may be formed by extmsion.
Fisher || 7, 9, 25, 32. However, we find no explicit disclosure in Fisher
identifying nailing fms 110 as window or door “structural members.”
Moreover, Fisher also discloses other alternative forming methods, such as
“vacuum or thermal forming, or injection molding, or the like” for the
stmctural members. Id. 132. Thus, even assuming that nailing fms 110
would be considered “stmctural members” in accordance with Fisher’s
teachings, Fisher does not require that these components be formed by
extmsion. Accordingly, the Examiner is correct that “the nailing fin does
not have to be an extmsion and nothing in Fisher . . . precludes it from being
the continuous piece that is shown in Figure 1 A.” Ans. 6—7.
Appellant also argues that “[t]o pre-make separate comer sections and
then subsequently join these pre-made comer sections together, as postulated
10
Appeal 2015-001051
Application 13/546,708
by the [EJxaminer in this rejection, serves no useful purpose and
accomplishes no useful result other than providing a justification for what
the [EJxaminer asserts is obvious.” Br. 19. Appellant contends that “[tjhis
is the hallmark of a hindsight rejection.” Id.
The Examiner reasons that “it would have been obvious ... to
incorporate comer membrane pieces around the comers of the opening of
Ellingson as suggested and taught by Fisher” because “[pjroviding the
nailing fin around the comers provides additional connection points for the
nailing fin and covers any gaps that would exist between frame and
building.” Final Act. 8. This reasoning has rational underpinnings because,
as is evident, for example, in Ellingson’s Figure 1, merely providing straight
flashing strip/nailing fin sections around the sides and top of the door frame
(or sides, top, and bottom of a window frame) as illustrated would leave the
comers vulnerable to air and water intmsion. Forming comer flashing
strip/nailing fin sections that wrap around the comers of the door or window
frame as depicted in Fisher’s Figure 1 A, in contrast, would prevent such
intmsion. As for fabricating the flashing strip/nailing fin in various sections
(i.e., comer sections and straight sections) and subsequently joining them
together to surround the window or door frame, the Examiner explains that
“[mjaking one large nailing fin for an entire window could be very
cumbersome, especially when the window is very large” and “[i]t would be
much simpler to fabricate the nailing fin in various elements and assemble
them together to create one continuous piece.” Ans. 7.
Appellant does not identify any flaw in the Examiner’s reasoning or
point to any knowledge relied on by the Examiner that was gleaned only
from Appellant’s disclosure and that was not otherwise within the level of
11
Appeal 2015-001051
Application 13/546,708
ordinary skill in the art at the time of the invention, and, accordingly,
Appellant’s hindsight assertion is unsupported. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning, but so long as it
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 applicant's disclosure, such a reconstruction is
proper.”).
For the above reasons, Appellant fails to apprise us of error in the
Examiner’s rejection of claim 19. Accordingly, we sustain the rejection of
claims 19 and 29 under 35 U.S.C. § 103(a) as unpatentable over Ellingson,
Allen, Thomas, and Fisher.
DECISION
The Examiner’s decision rejecting claims 10, 11, 24—26, and 30 under
35 U.S.C. § 103(a) as unpatentable over Ellingson, Allen, and Thomas is
AFFIRMED.
The Examiner’s decision rejecting claims 10—24 and 26—28 under
35 U.S.C. § 103(a) as unpatentable over Fisher, Allen, and Thomas is
AFFIRMED.
The Examiner’s decision rejecting claims 19 and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Ellingson, Allen, Thomas, and Fisher is
AFFIRMED.
12
Appeal 2015-001051
Application 13/546,708
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
13