12075594 (P.T.A.B. Mar. 2, 2015)

Ex Parte Sareyka et al

Patent Trial and Appeal BoardMar 2, 2015

12075594 (P.T.A.B. Mar. 2, 2015)

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. 12/075,594 03/12/2008 Brett W. Sareyka 187100-3139 2898 50787 7590 03/02/2015 STRADLEY RONON STEVENS & YOUNG, LLP 30 VALLEY STREAM PARKWAY GREAT VALLEY CORPORATE CENTER MALVERN, PA 19355-1481 EXAMINER HIJAZ, OMAR F ART UNIT PAPER NUMBER 3633 MAIL DATE DELIVERY MODE 03/02/2015 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 BRETT W. SAREYKA, WILLIAM L. HEATH, and WILLIAM J. PLATT Appeal 2012-009312 Application 12/075,594 Technology Center 3600 ____________________ Before MICHAEL R. ZECHER, GLENN J. PERRY, and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges. ZECHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-009312 Application 12/075,594 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 6–10. App. Br. 5. 1 Claims 1–5 were cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b)(1). We affirm. The Invention Appellants purportedly invented using a web of T-beams to form a vertical wall liner that reinforces wallboard sheets, such that the wallboard sheets can stand vertically without additional support. See Spec. 3:22–4:1. According to Appellants, the web of T-beams is kept aligned by the bulb and flanges of each T-beam, which, in turn, resists any bending forces imparted by or against the wallboard sheets. See id. at 4:7–12. Illustrative Claim Claim 6 is directed to a vertical wall liner apparatus. Claims 7–10 directly or indirectly depend from independent claim 6. Independent claim 6 is illustrative of the disclosed invention and is reproduced below: 6. In a vertical wall liner (10) having sheets of wallboard (33), extending in front of a back wall (20), the improvement comprising rolled sheet metal T-beams having a cross section with a) a bulb (25), b) a web (26) extending from the bulb, and c) flanges (27) extending laterally from the web (26), that are secured to, and combine with, the sheets of the wallboard (33) to form vertical stiffeners (23) in the wall liner (10) that a) are reinforced from the back wall, 1 All references to the Appeal Brief are to the Appeal Brief filed on February 16, 2012, which replaced the Appeal Brief filed on December 23, 2011. Appeal 2012-009312 Application 12/075,594 3 b) keep the sheets of wallboard (33) of the wall liner (10) vertically aligned, with substantially all of the weight of the wallboard borne by the floor under the liner, and c) reinforce the wall liner (10) to prevent buckling. Related Appeal Appellants indicate that U.S. Patent Application No. 11/985,690 is related to the application at issue in this case. App. Br. 4. We previously decided an appeal in this related application on August 21, 2014. See Ex parte Sareyka, No. 2012-005206, 2014 WL 4228049 (PTAB 2014) (non- precedential) (reversing the Examiner’s anticipation and obviousness rejections). Prior Art Relied Upon Awbrey US 2,109,520 March 1, 1938 Madsen US 5,943,838 Aug. 31, 1999 Wendt US 6,047,512 Apr. 11, 2000 Berry US 2007/0163191 A1 July 19, 2007 Rejections on Appeal Claims 6, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Awbrey and Wendt. Ans. 4–6. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Awbrey, Wendt, and Berry. Id. at 6–7. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Awbrey, Wendt, and Madsen. Id. at 8. Examiner’s Findings and Conclusions The Examiner finds that Awbrey teaches all of the limitations recited in independent claim 6, except “rolled sheet metal T-beams having a cross section with a) a bulb (25), b) a web (26) extending from the bulb, and c) Appeal 2012-009312 Application 12/075,594 4 flanges (27) extending laterally from the web (26), that are secured to, and combine with, the sheets of the wallboard (33).” Ans. 4–5 (citing Awbrey, 1:50–55, Figs. 1–3, 7). The Examiner finds that Wendt teaches these limitations. Id. at 5–6 (citing Wendt, Abstract, 1:10–15, Figs. 2, 9). The Examiner concludes that one of ordinary skill in the art would have combined the teachings of Awbrey and Wendt “in order to provide a ready- made T-shaped element to support a fascia for a wall system.” Id. at 6. The Examiner also concludes that the proffered combination would achieve cost savings because the “T-beams will allow for sufficient strength to merely hold the wall panels in place, while [also] allowing for the use of less material than a C-shaped channel.” Id. Appellants’ Contentions Appellants contend that, although Wendt discloses a conventional prior art suspended ceiling that consist of a web of T-beams that extend horizontally, Wendt does not suggest using the web of T-beams as vertical stiffeners in the manner claimed. App. Br. 14. Appellants argue that it would not have been obvious to one of ordinary skill in the art to use Wendt’s T-beams, which are designed to resist bending in a suspended ceiling, as a support structure for a vertical wall linear. See id. at 14–15. II. ISSUE The issue before us is whether the Examiner provided a sufficient articulated reason with a rationale underpinning to justify combining the teachings of Awbrey and Wendt? Appeal 2012-009312 Application 12/075,594 5 III. ANALYSIS 35 U.S.C. § 103(a) Rejection—Combination of Awbrey and Wendt Claim 6 We do not discern error in the Examiner’s obviousness rejection of independent claim 6. To bolster the rationale to combine the teachings of Awbrey and Wendt discussed above, the Examiner contends that Figures 9– 12 of Wendt illustrate that the T-beams may be used in a horizontal manner, as well as vertical manner. Ans. 9. Based on the disclosure in Wendt of using T-beams in a vertical manner, the Examiner concludes that it would have been obvious to one of ordinary skill to replace Awbrey’s channel- shaped member with Wendt’s T-beams because both metal members are strong enough to carry the load required to hold the wallboard in place. Id. We agree with the Examiner. For convenience, Figure 9 of Wendt is reproduced below. Figure 9 of Wendt illustrates a suspended drywall ceiling with boxed soffits 92. Wendt, 4:17–21. Boxed soffits 92 are constructed from a number Appeal 2012-009312 Application 12/075,594 6 of straight “T” grid main beams 30 and “T” grid cross beams 36 (collectively, “T-beams”). Id. at 7:54–56. The T-beams that make up box soffits 92 are oriented in both a horizontal and vertical manner. Id. at Fig. 9. Given that Figure 9 of Wendt clearly illustrates that the T-beams may be oriented in a vertical manner, we agree with the Examiner that one of ordinary skill in the art would have substituted Awbrey’s channel-shaped member with Wendt’s T-beams. In our view, such a substitution is a predictable use of prior art elements according to their established functions—an obvious improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Moreover, Appellants have not presented sufficient or credible evidence that such a substitution is beyond the level of an ordinarily skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Lastly, Appellants raise new arguments in the Reply Brief that were not raised in the first instance in the Appeal Brief. Compare Reply Br. 2–6, with App. Br. 12–15. We decline to consider these new arguments because Appellants have not shown that they are responsive to the arguments raised in the Examiner’s Answer, nor have Appellants shown why good cause exists to consider these belated arguments. See 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, . . . will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”). It follows that the Examiner has not erred in determining that the combination of Awbrey and Wendt renders independent claim 6 unpatentable. Appeal 2012-009312 Application 12/075,594 7 Claims 9 and 10 Appellants do not provide separate and distinct arguments for patentability with respect to dependent claims 9 and 10. Therefore, we accept Appellants’ grouping of these dependent claims with their underlying base claim. App. Br. 8, 15. Consequently, dependent claims 9 and 10 fall with independent claim 6. See 37 C.F.R. § 41.37(c)(1)(iv). Remaining 35 U.S.C. § 103(a) Rejections Claims 7 and 8 Appellants do not provide separate and distinct arguments for patentability with respect to dependent claims 7 and 8. Therefore, we accept Appellants’ grouping of these dependent claims with their underlying base claim. App. Br. 8, 15. Consequently, dependent claims 7 and 8 fall with independent claim 6. See 37 C.F.R. § 41.37(c)(1)(iv). IV. CONCLUSION OF LAW The Examiner has not erred in rejecting claims 6–10 as being unpatentable under 35 U.S.C. § 103(a). V. DECISION We affirm the Examiner’s decision to reject claims 6–10. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED cdc