Ex Parte Robins

Board of Patent Appeals and Interferences

Feb 25, 2010

11053545 (B.P.A.I. Feb. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EVELYN M. ROBINS
____________

Appeal 2009-004142
Application 11/053,545
Technology Center 3600
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Decided: February 26, 2010
____________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004142
Application 11/053,545

STATEMENT OF THE CASE
Evelyn M. Robins (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 1-5 and 7-9. Claim 6 has
been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002).

The Invention
Appellant’s claimed invention is directed to a gutter debris screen.
Spec. 1, para. 1. The screen 10 includes a rear mounting portion 12 or 112, a
central screen portion 20 or 120, and a front mounting portion 40 or 140.
Spec. 5, para. 15; Spec. 9, para. 24; Figs. 2 and 5. The rear mounting
portion 12 or 112 has a first end 14 or 114 formed into a single accordion
pleat which is crimped onto the rear end of the central screen portion 20 or
120. Spec. 7, para. 19; Spec. 10-11, paras. 26 and 27.
Claim 1, reproduced below, is representative of the claimed subject
matter.
1. A gutter debris screen for use with a gutter, the
gutter having a rear wall, a front wall, a front ledge
extending inward from the front wall and a bottom
wall connecting the front wall with the rear wall,
the gutter being disposed adjacent a roof having
shingles, the gutter debris screen comprising:
a rear mounting portion;
a front mounting portion; and
a central screen portion extending between
the front and rear mounting portions and having:
a fine mesh top layer, the mesh
having a 94 mesh screen size; and
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an expanded metal bottom support
layer forming a grate beneath the mesh
layer, the central screen portion having a
front end and a rear end and at least one
reinforcement rib depending therefrom,
wherein the rear mounting portion has
a first end and a second end, the first end
forming a single accordion pleat defining a
slot beneath the rear mounting portion for
receiving the rear end of the central screen
portion, the accordion pleat being crimped
to rigidly retain the rear end of the central
screen portion, the second end being
generally flat and adapted for being received
between a roof panel and shingles mounted
on the roof panel.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Cosby US 5,406,754 Apr. 18, 1995
Adams US 6,298,612 B1 Oct. 9, 2001
Higginbotham US 6,951,077 B1 Oct. 4, 2005

Appellant seeks review of the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claims 1-5, 7, and 9 as being unpatentable over Higginbotham
and Adams; and claim 8 as being unpatentable over Higginbotham, Adams,
and Cosby.1

1 Although the Examiner does not include Adams in the statement of the
rejection, the Examiner’s statement that Higginbotham discloses all claim
limitations “as described above” (Ans. 6) is ostensibly a reference to
Higginbotham as modified in view of Adams. Appellant also understands
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SUMMARY OF DECISION
We AFFIRM.

ISSUES
The issues presented in this appear are as follows:
(1) Are Higginbotham and Adams analogous art to Appellant’s
invention, such that they may be relied upon to support an
obviousness rejection under 35 U.S.C. § 103(a)? See App. Br. 7-8;
Ans. 7.
(2) Has the Examiner articulated a reason with rational underpinning
for combining the crimping attachment taught by Adams with the
gutter screen of Higginbotham? See App. Br. 7-8; Ans. 4, 7-8.
(3) Does Higginbotham teach away from the Examiner’s proposed
modification of Higginbotham to crimp the forward securing
configuration 13, 15, 16, 17 of the rear attachment 9 or 14 onto the
main body (filter cloth membrane 3 and gutter screen 1)? See App.
Br. 9; Ans. 7-8.

PRINCIPLES OF LAW
Pertinent (Analogous) Prior Art
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
that the rejection is based on Higginbotham, Adams, and Cosby (App Br. 3,
10).
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the particular problem with which the inventor is involved. In re Clay, 966
F.2d 656, 658-59 (Fed. Cir. 1992).
For purposes of showing obviousness under 35 U.S.C. § 103(a),
“[a] reference is reasonably pertinent if, even
though it may be in a different field from that of
the inventor's endeavor, it is one which, because of
the matter with which it deals, logically would
have commended itself to an inventor's attention in
considering his problem.” In other words,
“familiar items may have obvious uses beyond
their primary purposes.”
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir.
2007) (citations omitted). Moreover, in making a determination with regard
to obviousness, we should not limit ourselves to looking only at the problem
Appellant was trying to solve. The question is not whether the combination
was obvious to Appellant but whether it was obvious to a person with
ordinary skill in the art. Thus, “[u]nder the correct analysis, any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007).
Obviousness – Reason to Combine
Rejections on obviousness grounds must be supported by “some
articulated reasoning with some rational underpinning” to combine the
known elements in the manner required in the claim at issue. Id. at 418.
However, “the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
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of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id.
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 417. An improvement that is nothing more than the predictable use of
prior art elements according to their established functions is likely to be
obvious. Id.
“[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” Id. at
416.
Teaching Away
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, . . . would be led in a direction divergent
from the path that was taken by the applicant.” In re Haruna, 249 F.3d
1327, 1335 (Fed. Cir. 2001) (citation omitted). “[W]hen the prior art teaches
away from combining certain known elements, discovery of a successful
means of combining them is more likely to be nonobvious.” KSR, 550 U.S.
at 416 (citing United States v. Adams, 383 U.S. 39, 51-52 (1966)).

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DISCUSSION
Issue (1)
Appellant does not appear to be arguing that Higginbotham is not
analogous prior art to Appellant’s invention. Indeed, any such argument
would be frivolous, as we find both Higginbotham and Appellant’s invention
are directed to gutter screens for preventing debris from entering the gutter
while allowing rain water to flow into and through the gutter. See
Higginbotham, col. 1, ll. 7-14; Spec. 1, para. 1. Thus, Higginbotham is in
Appellant’s field of endeavor, gutter screens, and addresses the same
problem addressed by Appellant, namely, preventing debris from entering
the gutter while allowing rain water to flow into and through the gutter.
Even accepting Appellant’s argument that Adams is not within the
field of endeavor of Appellant’s invention, we nonetheless find that Adams
is pertinent to Appellant’s invention. Specifically, Adams addresses the
problem of affixing one component to another in an assembly. See Adams,
col. 9, ll. 61-65. We also find that one of the problems facing Appellant in
arriving at the present invention was attaching the rear mounting portion 12
to the central screen portion. See Spec. 7, para. 19. Accordingly, Adams
logically would have commended itself to an inventor’s attention in
considering the problem of attaching the rear mounting portion of a gutter
screen to the main screen portion.
Issue (2)
We find that Higginbotham describes a gutter screen assembly
comprising both a main screen portion (filter cloth membrane 3 and gutter
screen 1) and one of two interchangeable rear attachments 9 and 14.
Higginbotham, col. 15, ll. 38-44 col. 16, ll. 30-31; Figs. 13-16.
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Higginbotham describes a forward securing configuration 13, 15, 16, 17 on
the rear attachment to “interchangeably clip” onto the main screen portion.
Higginbotham, col. 16, ll. 30-32. The Examiner found that Higginbotham’s
securing configuration comprises a single accordion pleat defining a slot for
receiving the rear end of the main screen portion (Ans. 4), and Appellant
does not dispute that finding. The Examiner conceded, however, that
Higginbotham does not expressly describe a “crimped” fastening of the pleat
to the main screen. Id.
We find that Adams establishes that crimping was one of many well
known securement techniques for affixing components of an assembly
together at the time of Appellant’s invention. See Adams, col. 9, ll. 61-65.
The Examiner reasoned that it would have been obvious to use
crimps, as taught by Adams, to secure the pleat of Higginbotham’s rear
attachment to the main screen, because this modification is simply the
substitution of one known attaching or retaining means for another. Ans. 7-
8. The Examiner’s reasoning is sound. The modification proposed by the
Examiner is nothing more than the simple substitution of one known element
for another or the mere application of a known technique to a piece of prior
art ready for the improvement. See KSR, 550 U.S. at 417. Appellant has not
presented any evidence showing that the use of crimping to secure the rear
attachment of Higginbotham to the main screen portion would have been
beyond the technical grasp of a person of ordinary skill in the art or
produced results that could not have been predicted by a person of ordinary
skill in the art.

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Issue (3)
Appellant argues that Higginbotham’s description of
“interchangeably” clipping the rear attachment to the main screen teaches
away from the Examiner’s proposed modification of crimping this
attachment. App. Br. 9. Specifically, Appellant asserts that such crimping
would render the attachment fixed and nonremovable, thereby destroying the
interchangeability intended by Higginbotham. Id. For the reasons that
follow, we are not persuaded that crimping would defeat Higginbotham’s
objective of interchangeability.
We find that Higginbotham describes two interchangeable rear
attachments 9 and 14 for attachment to the main screen. Higginbotham, col.
16, ll. 29-32. Rear attachment 9 is intended for installations where it may be
advantageous to sandwich the rear of the gutter cover between a roof
membrane and underlying sub roof. Higginbotham, col. 16, ll. 32-36; Fig.
24. Rear attachment 14 is intended for installations where it may be
desirable to rest the gutter cover wholly inside the gutter and not have any
portion thereof extend up onto a roof. Higginbotham, col. 16, ll. 36-40; Fig.
23. Higginbotham explains that the interchangeability of rear attachments 9
and 14 affords the advantage of “a configurable gutter cover that may be
adjusted for installation in a wider array of circumstances existing in the
field.” Higginbotham, col. 17, ll. 12-15.
In other words, Higginbotham describes the interchangeable rear
attachments to permit assembly of the gutter screen for either an on-roof
installation or an in-gutter installation, depending upon the circumstances
presented by the particular installation site. Higginbotham gives no
indication that disassembly and re-assembly of the gutter screen is intended
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or contemplated. Thus, the use of crimping to retain the screen in the
securing configuration of Higginbotham’s rear attachment to the main screen
would in no way defeat or destroy the interchangeability feature of
Higginbotham. As such, Higginbotham would not have dissuaded a person
of ordinary skill in the art from modifying Higginbotham as proposed by the
Examiner.

CONCLUSIONS
(1) Higginbotham and Adams are analogous art to Appellant’s
invention, and thus may be relied upon to support an obviousness
rejection under 35 U.S.C. § 103(a).
(2) The Examiner has articulated a reason with rational underpinning
for combining the crimping attachment taught by Adams with the
gutter screen of Higginbotham.
(3) Higginbotham does not teach away from the Examiner’s proposed
modification of Higginbotham to crimp the forward securing
configuration 13, 15, 16, 17 of the rear attachment 9 or 14 onto the
main body (filter cloth membrane 3 and gutter screen 1).
In light of our conclusions above, Appellant has not persuaded us that
the Examiner’s rejection of claim 1 should be reversed. Appellant has not
presented any separate arguments for claims 2-5, 7, and 9. Thus, these
claims fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Appellant relies solely on the arguments asserted against the rejection
of claim 1 in contesting the rejection of claim 8. App. Br. 10. In light of our
conclusions above, Appellant likewise has failed to persuade us that the
rejection of claim 8 should be reversed.
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DECISION
The Examiner’s decision 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) (2007).
AFFIRMED

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