Ex Parte ShanniDownload PDFPatent Trial and Appeal BoardSep 20, 201310552100 (P.T.A.B. Sep. 20, 2013) Copy Citation 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. 10/552,100 09/30/2005 Vincent Shanni HOM-1(C1) 4185 54630 7590 09/20/2013 ROBERTS & ROBERTS, LLP ATTORNEYS AT LAW P.O. BOX 484 PRINCETON, NJ 08542-0484 EXAMINER HOLLOWAY, JASON R ART UNIT PAPER NUMBER 3664 MAIL DATE DELIVERY MODE 09/20/2013 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 VINCENT SHANNI ____________________ Appeal 2011-009961 Application 10/552,100 Technology Center 3600 ____________________ Before: PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and BART A. GERSTENBLITH, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009961 Application 10/552,100 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1-6, 8-17, 19-28, 30-33, and 37. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention Appellant’s claimed invention “relates to prefabricated folding structures.” Spec. 1:8. Claims 1, 12, 23, and 37 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A prefabricated folding structure comprising: a generally rectangular central core comprising a plurality of core walls, a core floor section connected to and extending between the core walls at a base of the core walls, and a core roof section connected to and over the core walls and over the core floor section; each of said core walls, core floor section and core roof section comprising a plurality of spaced metal channel beams having at least one flat side; a plurality of folding rooms attached to the central core; each folding room comprising a plurality of room wall members, a folding room floor section removably attached to and extending between the room walls at a base of the room walls and a folding a room roof section removably attached to and extending over the room wall members and extending over the room floor section; each of the room wall members, the room floor section and the room roof section comprising a plurality of spaced metal channel beams having at least one flat side; at least one of said room floor section being pivotedly connected at one end thereof to said core floor section; Appeal 2011-009961 Application 10/552,100 3 at least said one room roof section being pivotedly connected at one end thereof to said core roof section; said room wall members being removably attached to said room floor section and said room roof section; each room roof section being pivotedly connected to the core roof section on the same side of the central core as each room floor section is connected to the core floor section; wherein each folding room floor section and each folding room roof section may be alternately detached from its room wall members and pivoted inwardly toward said central core and positioned in close proximity to and substantially parallel to a corresponding core wall and thereby form a compact folded structure, or pivoted outwardly away from said central core to define a room adjacent to said central core when attached to its room wall members; and wherein said core walls and room wall members further comprise a plurality of spaced metal channel studs having at least one flat side, wherein at least one of said metal channel studs is positioned within a notch cut into an edge flange of a metal channel beam of at least one core wall or room wall member, and wherein an end of the metal channel stud rests on an opposite edge flange of the metal channel beam. Br. 20-21, Claims App’x, claim 1(emphasis added). Evidence Relied Upon Nystrom Colvin Smith US 3,146,864 US 4,660,332 US 5,461,832 Sep. 1, 1964 Apr. 28, 1987 Oct. 31, 1995 Appeal 2011-009961 Application 10/552,100 4 The Rejections The following rejections are before us on appeal: I. Claims 1-6, 8-17, 19-28, and 30-33 under 35 U.S.C. § 103(a) as unpatentable over Colvin and Nystrom;1 and II. Claim 37 under 35 U.S.C. § 103(a) as unpatentable over Colvin, Nystrom, and Smith. OPINION I. Obviousness over Colvin and Nystrom2 We address Appellant’s arguments with regard to each reference. Colvin Appellant argues that claim 1 calls for a plurality of metal channel spaced beams, while in contrast, Colvin provides wooden beams. Br. 14-15. In support of this argument, Appellant enumerates some of the advantages of metal structures over those made of wood (e.g., durability). Br. 15. Appellant also notes that Colvin does not disclose a stud positioned within a notch so that an end of the metal channel stud rests on an opposite edge flange of the metal channel beam as called for in claim 1. Br. 15-16. The Examiner acknowledged that Colvin’s beams are wooden rather than metal, and proposed to modify Colvin’s beams to be formed of metal, 1 The heading of this rejection in the Examiner’s Answer mistakenly includes claims 7, 18, 29, and 34-36; however, these claims are cancelled. See Ans. 3 (incorrect listing); Br. 3 (correct listing); see also Office Action dated Nov. 24, 2009 at 1 (correct listing of pending and rejected claims). 2 Appellants argue claims 1-6, 8-17, 19-28, and 30-33 as a group, and we select claim 1 as representative. Br. 13-17; see 37 C.F.R. § 41.37(c)(1)(vii)(2011). Appeal 2011-009961 Application 10/552,100 5 as disclosed by Nystrom, to provide stronger support to the folding structure. Ans. 5-6. Thus, Appellant’s argument that Colvin discloses wooden beams is not responsive to the rejection as articulated by the Examiner. See Ans. 10. Similarly, the Examiner did not rely upon Colvin as disclosing a stud positioned with a notch in an edge flange of a channel beam. Rather, the Examiner relied upon Nystrom for such disclosure. Ans. 6. Nystrom Appellant argues that Nystrom relates to metal buildings and uses metal channel beams, but does not provide any teaching or suggestion that metal building arrangements would or could be used in formulating a folding or portable structure. Br. 16. In particular, according to Appellant, Nystrom’s structure does not include pivotable or detachable metal beams or a wall arrangement as claimed and shown in Figure 10. Id. The Examiner relies upon Colvin, not Nystrom, as disclosing a folding or portable building. See Ans. 3-4. For that reason, Appellant’s argument is nonresponsive. Further, to the extent that Appellant’s argument implies that there must be some suggestion in Nystrom to make the proposed combination, such a strict application of the teaching, suggestion, or motivation test is not supported in the law. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (rejecting the rigid requirement of a teaching, suggestion, or motivation to combine known elements in order to show obviousness, but nonetheless making clear that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal Appeal 2011-009961 Application 10/552,100 6 conclusion of obviousness” (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner provided a reason for the proposed combination, namely, to provide stronger support, and Appellant’s argument does not cogently address the merits of that rationale. See Ans. 6. Appellant also contends Nystrom’s “notches,” as shown in Figures 17-19, are “metal flap-like structures formed in the ends of the beams,” and are not “notches” as called for in claim 1. Br. 16. The Examiner found that Nystrom discloses a stud positioned within a notch so that an end of the metal channel stud rests on an opposite edge flange of the metal channel beam. Ans. 6 (citing Nystrom, figs. 1, 3-5, 9-13, and 17-19). Appellant correctly points out that Nystrom’s Figures 17-19 do not disclose a stud positioned within a notch in a beam as claimed because Figures 17-19 only depict beams (rafter elements 40 and 41). See Br. 16; see also Nystrom, col. 2, ll. 14-16, 70-71; figs. 17-19. However, we agree with the Examiner that Appellant’s response regarding Figures 17-19 of Nystrom ignores Figure 5. See Ans. 11. Nystrom’s Figure 5 depicts a stud (side flange 83, half clip 85, column side flange 87) positioned within a notch so that an end of the metal channel stud rests on an opposite edge flange of the metal channel beam (contiguous webs 80). Nystrom, col. 5, ll. 3-23; figs. 4, 5. Appellant’s arguments fail to apprise us of error in the rejection of claim 1. Consequently, we sustain the rejection of claims 1-6, 8-17, 19-28, and 30-33. Appeal 2011-009961 Application 10/552,100 7 II. Obviousness over Colvin, Nystrom, and Smith Appellant argues that claim 37 is patentable for the reasons given with regard to claim 1, and that Smith does not cure the deficiencies of the proposed combination of Colvin and Nystrom. Br. 17-19. As explained in the analysis of claim 1 as obvious over Colvin and Nystrom, supra, there are no deficiencies for Smith to cure. Accordingly, we sustain the rejection of claim 37. DECISION We affirm the Examiner’s decision to reject claims 1-6, 8-17, 19-28, 30-33, and 37. 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). AFFIRMED mls Copy with citationCopy as parenthetical citation