Ex Parte Rillie

Board of Patent Appeals and Interferences

Aug 9, 2002

09376461 (B.P.A.I. Aug. 9, 2002)

1Claim 5 was canceled by the appellant after the final rejection, and claims 10-15 were withdrawn
as being directed to a non-elected invention
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID WINDSOR RILLIE
____________
Appeal No. 2001-2382
Application No. 09/376,461
____________
ON BRIEF
____________
Before COHEN, ABRAMS, and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-4 and
6-9.1
We REVERSE.
Appeal No. 2001-2382
Application No. 09/376,461
Page 2
BACKGROUND
The appellant's invention relates to a tubular skylight (claims 1-4) and to a roof
flashing (claims 6-9). An understanding of the invention can be derived from a reading
of exemplary claims 1 and 6, which have been reproduced below.
The Representative Claims
1. A tubular skylight comprising:
a seamless metal flashing;
a transparent dome engageable with the flashing; and
at least one skylight tube depending downwardly from the flashing.
6. A metal roof flashing, comprising:
a hollow frusto-conical shaped curb defining a bottom end;
a metal skirt extending radially away from the bottom end, the skirt being
formed with at least one surface strengthening anomaly.
The Applied Prior Art
Hoy et al. (Hoy) 4,549,379 Oct. 29, 1985
DeBlock et al. (DeBlock) 5,655,339 Aug. 12, 1997
Chao et al. (Chao) 5,896,713 Apr. 27, 1999
Blackmon et al.(Blackmon) 5,956,191 Sep. 21, 1999
(filed May 1, 1998)
Streiter 6,044,592 Apr. 4, 2000
(filed May 13, 1998)
The Standing Rejections
Appeal No. 2001-2382
Application No. 09/376,461
Page 3
(1) Claims 1-4 and 6-9 under 35 U.S.C. § 102(e) as being anticipated by
Chao.
(2) Claim 1 under 35 U.S.C. § 103(a) as being unpatentable over DeBlock in
view of Hoy and Streiter.
(3) Claims 2-4 and 6-9 under 35 U.S.C. § 103(a) as being unpatentable over
DeBlock in view of Hoy, Streiter and Blackmon
OPINION
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 9) for the examiner's complete reasoning in support of the rejections, and to
the Brief (Paper No. 8) and Reply Brief (Paper No. 10) for the appellant's arguments
thereagainst.
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The Rejection Under Section 102
Anticipation is established only when a single prior art reference discloses, either
expressly or under the principles of inherency, each and every element of the claimed
invention. See, for example, In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d
1671, 1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990).
Appeal No. 2001-2382
Application No. 09/376,461
Page 4
Independent claim 1 and dependent claims 2-4 stand rejected as being
anticipated by Chao. There is no dispute that Chao discloses a tubular skylight
comprising a metal flashing, a transparent dome engageable with the flashing, and a
skylight tube extending downwardly from the flashing. It is the examiner’s opinion that
the flashing is seamless since Chao has not stated otherwise in the specification and
no seam is shown in the drawing. The appellant, who is one of the inventors of the
Chao device, urges that the reference does not support such a finding on its face (Brief,
paragraph bridging pages 3 and 4).
Chao does not state in the specification whether or not the flashing is seamless.
Contrary to the conclusion reached by the examiner, it is our opinion that in the
absence of explanation in the specification, the drawings do not provide sufficient
evidence from which to conclude that the flashing is seamless, and cannot be relied
upon as the sole basis for this conclusion. In fact, it could be argued that there is a
seam at the point of joinder of the curb and the skirt, for a line is present there in the
drawing. It not being clear that this requirement is disclosed or taught by Chao, we will
not sustain the Section 102 rejection of claim 1 or, it follows, of claims 2-4, which
depend therefrom.
Independent claim 6 also stands rejected as being anticipated by Chao. Claim 6
requires the presence of a surface strengthening anomaly in the flashing. In this
rejection, the examiner has taken the position that Chao does disclose a seam in the
Appeal No. 2001-2382
Application No. 09/376,461
Page 5
flashing, that the seam is welded, and that the weld constitutes a “surface strengthening
anomaly.” We first point out that even if one were to consider that there is a joint
between the flashing curb and skirt, there is no evidence from which to conclude that
the seam is welded. Moreover, even if it were a welded seam, in the absence of
supporting evidence it cannot be concluded that by its mere presence the seam
constitutes a “strengthening anomaly” rather than, for example, a weakened point. The
Section 102 rejection of claims 6-9 therefore cannot be sustained.
The Rejections Under Section 103
The test for obviousness is what the combined teachings of the prior art would
have suggested to one of ordinary skill in the art. See, for example, In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie
case of obviousness, it is incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed invention. See Ex parte Clapp,
227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation
must stem from some teaching, suggestion or inference in the prior art as a whole or
from the knowledge generally available to one of ordinary skill in the art and not from
the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
Appeal No. 2001-2382
Application No. 09/376,461
Page 6
2Skill is presumed on the part of the artisan, rather than the lack thereof. In re Sovish, 769 F.2d
738, 226 USPQ 771 (Fed. Cir. 1985).
The first of the Section 103 rejections is that claim 1 would have been obvious
on the basis of DeBlock in view of Hoy and Streiter. It is the examiner’s view that
DeBlock discloses all of the subject matter recited in claim 1 except for the seamless
construction of the flashing and that the flashing be of metal. However, the examiner
opines that it would have been obvious to one of ordinary skill in the art to make the
flashing seamless in view of the teachings of Hoy, and further to make it of metal in
view of those of Streiter. The appellant counters by providing several reasons why a
prima facie case of obviousness is lacking (Brief, pages 4 and 5).
DeBlock discloses a skylight assembly comprising a flashing, a transparent
dome engagable with the flashing, and a skylight tube depending from the flashing.
DeBlock is silent as to the material from which the flashing is made. It is our view that
one of ordinary skill in the art would have known2 that leakage between the curb and
flange portions of DeBlock’s skylight flashing would be detrimental to the proper
operation of the device and therefore would have provided that the elements be
attached to one another in such a manner as to prevent leakage at the points of joinder,
that is, that the elements be integral with one another. However, the fact that the
flashing components are integral with one another does not establish that this
attachment occurs without the presence of a seam, for the desired integrity could be
Appeal No. 2001-2382
Application No. 09/376,461
Page 7
established by welding the seams. Thus, DeBlock falls short of disclosing or teaching
that the flashing is seamless, or that it is made of metal, both as required by claim 1.
Hoy discloses a skylight assembly and is concerned with leak-proof construction
of the flashing (curb unit 45; see column 1, lines 52-55; column 3, lines 47-49). In this
regard, Hoy teaches that “the curb unit 45 [Figure 3] is produced by vacuum forming a
sheet of semi-rigid plastics material such as vinyl, and includes a frame-shaped curb
portion 46 which integrally connects a laterally or downwardly projecting rectangular
mounting flange portion 52" (column 2, lines 57-63). It is our opinion that one of
ordinary skill in the art would have been taught by Hoy that the DeBlock flashing could
be formed from a single piece of seamless vacuum formed plastics material, but not
that it be made of metal, much less seamless metal.
The examiner then looks to Streiter, which is directed to “a support, generally
referred to as a ‘curb,’ for placement upon the roof of a building, and upon which a
piece of material such as an air conditioning unit is mounted” (column 1, lines 11-14).
The Streiter device can be of sheet metal or fiberglass (column 1, lines 21 and 22). As
explained in column 3, the components of the device are formed by bending, and are
attached together at their seams by welding (lines 14-21). There is no teaching in
Streiter that this metal device is entirely seamless. Nor would this appear to be a
requirement since the device is not a flashing surrounding an opening in a roof, and
Appeal No. 2001-2382
Application No. 09/376,461
Page 8
there would seem to be no need for the points of joinder between the various
components of the device be leak-proof, much less seamless.
The examiner concludes, on the basis of Streiter’s disclosure, that it would have
been obvious to one of ordinary skill in the art to further modify the DeBlock flashing,
now made of seamless plastics material by virtue of the teachings of Hoy, by making it
of metal. The appellant challenges this conclusion, arguing that no evidence has been
provided that seamless metal flashings were known in the art or that there was a
reasonable expectation of success that metal flashings could be made in such a
manner (Brief, pages 4 and 5). We also note that the presence of seams in the prior art
flashings was pointed out by the appellant on page 2 of the specification as giving rise
to problems that are solved by the present invention. The examiner’s response was
that forming metal by the process of stamping was a well known technique in the prior
art, and that there was no need for evidence to be provided on this point because the
manner of achieving seamless construction was not recited in the claim.
The mere fact that the prior art structure could be modified does not make such
a modification obvious unless the prior art suggests the desirability of doing so. In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Considering that
Streiter does not disclose or teach a flashing-type structure that is of seamless metal
construction, we cannot agree with the examiner that it would have been obvious to
make the DeBlock flashing of seamless metal construction, particularly in the light of
Appeal No. 2001-2382
Application No. 09/376,461
Page 9
the appellant’s unanswered challenge to the examiner to produce evidence that it was
known to manufacture such devices of metal without seams.
It therefore is our conclusion that the combined teachings of DeBlock, Hoy and
Streiter fail to establish a prima facie case of obviousness with regard to the subject
matter recited in claim 1, and we will not sustain this rejection.
Claims 2-4 and 6-9 stand rejected as being unpatentable over DeBlock in view of
Hoy, Streiter and Blackmon. Claim 2 adds to claim 1 the requirement that the metal
flashing have a skirt formed with at least one rib, and independent claim 6 recites a
metal flashing having a skirt formed with at least one strengthening anomaly. The
examiner looks to Blackmon for a teaching of providing ribs extending outwardly to
reinforce a plate, concluding that it would have been obvious to provide the flashing of
DeBlock, as modified by Hoy and Streiter, with such a feature. The appellant argues
that Blackmon is non-analogous art, a conclusion with which we agree.
The test for analogous art is first whether the art is within the field of the
inventor's endeavor and, if not, whether it is reasonably pertinent to the problem with
which the inventor was involved. See In re Wood, 599 F.2d 1032, 1036, 202 USPQ
171, 174 (CCPA 1979). A reference is reasonably pertinent if, even though it may be in
a different field of endeavor, it logically would have commended itself to an inventor's
attention in considering his problem because of the matter with which it deals. See In
re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992).
Appeal No. 2001-2382
Application No. 09/376,461
Page 10
Blackmon is directed to a light weight reflector facet for a solar concentrator, and
so it clearly is not within the field of the appellant’s endeavor. The examiner points out
that Blackmon discloses a plurality of reinforcing ribs 40 (Answer, page 4). The fact of
the matter is that the ribs to which the examiner refers are shown in Figure 5 in the
context of constituting a portion of a multi-element frame adhered to the back of a
planar glass mirror 12 so that it is properly supported over its entirety. It is our view that
Blackmon would not logically have commended itself to the attention of an inventor who
is dealing with the problem of constructing a flashing that surrounds the opening in a
roof through which a tubular skylight extends. Blackmon therefore fails to meet either
of the tests necessary to qualify as analogous art and cannot properly be combined with
the other references. This being the case, the rejection of claims 2-4 and 6-9 will not be
sustained.
Moreover, as we concluded above, the subject matter of claim 1 is not rendered
obvious by the combined teachings of DeBlock, Hoy and Streiter, and without a
reference which overcomes the deficiency in combining those three references in such
a manner as to render the subject matter of claim 1 obvious, the rejection of dependent
claims 2-4 also cannot be sustained. We might add that even if Blackmon were
considered to be a proper reference, its teachings would not overcome the problem with
combining the other three references in the manner proposed by the examiner.
Appeal No. 2001-2382
Application No. 09/376,461
Page 11
Additionally with regard to claim 6, which does not require that the flashing be
seamless, even if it were considered that DeBlock, Hoy and Streiter would have
suggested the metal flashing and metal skirt, the disqualification of Blackmon as a
reference leaves the rejection absent any teaching that would have suggested providing
the skirt with a reinforcing anomaly, and therefore a prima facie case of obviousness
has not been established.
SUMMARY
None of the rejections are sustained.
The decision of the examiner is reversed..
Appeal No. 2001-2382
Application No. 09/376,461
Page 12
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
NEA/lbg
Appeal No. 2001-2382
Application No. 09/376,461
Page 13
JOHN L. ROGITZ
750 B STREET, SUITE 3120
SAN DIEGO, CA 92101