Ex Parte Simmons

Board of Patent Appeals and Interferences

Jun 15, 2009

11385604 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT J. SIMMONS
____________________

Appeal 2009-002919
Application 11/385,604
Technology Center 3600
____________________

Decided1: June 16, 2009
____________________

Before RICHARD E. SCHAFER, JAMESON LEE, and SALLY G. LANE,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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A. STATEMENT OF THE CASE
This is a decision on appeal by an Appellant under 35 U.S.C. § 134(a)
from a final rejection of claims 1 and 2. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
References Relied on by the Examiner
Uecker et al. (Uecker) 2,203,113 Jun. 4, 1940

The Rejections on Appeal
The Examiner rejected claims 1 and 2 under 35 U.S.C. § 102(b) as
anticipated by Uecker.

The Invention
The invention relates to a structure having a frame with open-ended
hollow tubular columns that receive construction-extension
instrumentalities, such as cranes. (Spec. 1:15-2:11.)
Independent claim 1 is reproduced below (Claims App’x 1:1-2:3):
1. Building structure with integrated, overhead, construction-
extension access utility port structure comprising

a frame including a load-bearing portion having a pattern of
interconnected, elongate, upright columns and laterally extending
beams, each column taking the form of an assembly of hollow, tubular
column components, said frame having a load-bearing portion top,
wherein said column components extend, continuous with said
column components in said load-bearing portion, above said top, and

provided in at least one of said column components, an elongate
upper-end utility region extending upwardly beyond the top of said
load-bearing frame portion, with said utility region terminating in a
nominally open, but selectively reversibly and sealably closeable,
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upwardly facing mouth which opens to the hollow interior of said at
least one column component to define therewith a utility port,

said utility port accommodating the selective insertion through
said mouth, and the reception inside the adjacent hollow interior of
said at least one column component, of a construction-extension
instrumentality which is drawn from the list consisting of (a) an
installable/removable crane structure, including temporary-use davit
structure, wherein said frame forms part of a crane supporting mount
structure, (b) a column-like element provided for the addition of
selected building superstructure, wherein a construction extension is
located on and in said column components, and (c) additional building
infrastructure feedable downwardly through said port toward a
selected elevation in said building structure which is below the top of
said frame’s said load-bearing portion.
B. ISSUES
1. Has the Appellant shown that the Examiner was incorrect in
finding that Uecker discloses a frame having column components that
extend above a top of a load-bearing portion of the frame?
2. Has the Appellant shown that the Examiner was incorrect in
finding that Uecker discloses column components each with a “like, upper-
end utility region” as required in claim 2?
C. FINDINGS OF FACT
1. Uecker discloses a scaffold having a frame including a pair of
end braces 10 with a series of cross braces 11, diagonal braces 18, and
horizontal braces 16. (Uecker p. 1, col. 2, ll. 5-26.)

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2. Figure 1 of Uecker, reproduced below, shows a perspective
view of the scaffold and illsutrates the frame of the scaffold:

3. Upper horizontal braces 16 support planking that forms deck
17. (Uecker p. 1, col. 2, ll. 20-24.)
4. Uecker specifies that, if desired, a guard railing 19 may be
provided that extends on the sides of deck 17 to protect the top section of the
scaffold. (Id. at ll. 29-32.)
5. As shown in Figure 1, guard railing 19 includes portions that
are supported by three of the vertical posts 15 that form end braces 10. A
fourth vertical post 15 supports hoist 25.
6. The upper ends of each vertical post 15 are shown as being
substantially identical to one another.
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7. Uecker’s Figure 2, reproduced below, depicts a side view of
hoist 25 arranged at a corner on the top of Ueker’s scaffold:

8. Hoist 25 includes a standard 26 with an extension 27 that is
received in vertical post 15. (Uecker p. 1, col. 2, ll. 33-40.)
9. Uecker also discloses that end frames 10 may be superimposed
on additional similar frames 12 that support frames 10 above the ground. (Id.
at ll. 11-13.)
10. Like frames 10, frames 12 include vertical posts 15 and
horizontal braces 16 that may support a deck 17. (Id. at ll. 20-24.)
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11. Frames 10 and 12 are joined by coupling pins 14 that connect
the vertical posts of the frames together. (Id. at ll. 18-19; Fig. 1.)
12. When the vertical posts of each of the frames are connected, the
vertical posts of frames 10 are continuous with the vertical posts of frames
12 and extend above the horizontal braces 16 of frames 12. (Id. at Fig. 1.)
D. PRINCIPLES OF LAW
Anticipation under 35 U.S.C. § 102 is established if each element in a
claim is found in a single prior art reference and is arranged as recited in the
claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001).
E. ANALYSIS
The Examiner rejected claims 1 and 2 as anticipated by Uecker. The
Appellant argues the two claims separately.
Claim 1
The Appellant first argues that (App. Br. 4:18-20):
Claim 1 recites that the column components form part of a
building. The applied art is a scaffold having a winch thereon. At no
time will the art of [Uecker] be part of a building frame.

That argument is misplaced. Claim 1 does not require any “building
frame.” The claim recites merely a “frame.” Although the entire claim is
directed to a “building structure” because the preamble begins with the term
“building structure,” RBG has not argued that and explained why a scaffold
is not a building structure. Given RBG’s disclosure, if such an argument
were made, it would likely fail. In the context of RBG’s specification,
”building structure” is broad and not limited to skeletal supports such as the
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columns and beams of a building. Examples given in the specification for a
building structure include “cables, fluid conduit, and other things.” (Spec.
2:16-17.)
The Appellant also contends that (App. Br. 4:21-5:1):
Claim 1 requires that a utility port be located above a load-
bearing portion of a building frame, on a column component which is
continuous with column components in the load-bearing portion of the
building frame.

According to the Appellant, (Id. at 5:1-4):
[Uecker] teaches a scaffold having a guard rail extending about the
upper margin thereof. Assuming, arguendo, that [Uecker] teaches a
building frame, the crane thereof is mounted on a load-bearing portion
of the frame which is part of the guard rail, not on a column extending
continuously above the load-bearing portion of the building frame.

The Appellant then concludes that (Id. at 5:6-9):
Were the scaffold of [Uecker] to be upwardly extended, the
guard rail component, including that portion supporting the crane,
would be removed and another tier of scaffolding installed. This does
not meet the “…continuous with said column component is [sic, in]
said load-bearing portion,…”

The Appellant’s specification defines the claim term “load-bearing
portion” as having a special meaning. In particular, the specification states
(Spec. 3:6-12):
As employed herein, this phrase refers to that volumetric portion of a
building frame which is occupied by interconnected columns and
beams that are intended to handle various loads delivered into that
volume region of the frame. The phrase does not include the parts of
any frame components – and in particular, column components –
which project upwardly and freely above the top of the associated,
underlying frame volume which contains load-bearingly
interconnected columns and beams.
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Claim 1 calls for a “frame having a load-bearing portion top, wherein
said column components extend, continuous with said column components
in said load-bearing portion, above said top[.]” (Claims App’x 1:5-7.) In
light of the Appellant’s special definition of “load-bearing portion,” the term
“load-bearing portion top” reads on the upper part of the load-bearing
portion, which is a volume of space that contains the columns and beams
making up the frame.
Figure 1 of Uecker, reproduced below, illustrates a perspective view
of Uecker’s structure:

The structure includes end braces 10 with upper horizontal braces 16
supporting planking that forms deck 17. (Uecker p. 1, col. 2, ll. 20-24.)
Uecker specifies that, if desired, a guard railing 19 may be provided that
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extends on the sides of deck 17 to protect the top section of the structure.
(Id. at ll. 29-32.) As shown in Figure 1, guard railing 19 includes portions
that are supported by three of the vertical posts 15 that form end braces 10.
A fourth vertical post 15 supports hoist 25.
Uecker’s Figure 2, reproduced below, shows a side view of hoist 25
arranged on one corner of Uecker’s structure:

Hoist 25 includes a standard 26 with an extension 27 that is received
in vertical post 15. (Uecker p. 1, col. 2, ll. 33-40.) The Examiner found that
the top of the load-bearing portion in Uecker is located beneath deck 17.
(Ans. 3:13-14.) The Examiner further found that Uecker “clearly shows a
port located above a load bearing portion (the portion between parts 15 and
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16) to connect to part 46.” (Ans. 4:12-13.) Thus, the Examiner found that a
tubular portion of the frame extends above a top of the load-bearing portion
arranged beneath deck 17 and forms a port with a hollow interior that is
continuous with vertical post 15.
An enlarged lower portion of Figure 2 is reproduced below:

The Examiner’s finding is reasonable. Appellant’s claim 1 does not
require any particular length or degree of the extension of the utility port
above the top of the load-bearing portion. As shown in the segment of
Figure 2 reproduced above, the tubular portion that is located just beneath
lower ring 46 extends along a portion of the side of deck 17 above the top of
the load-bearing portion located between horizontal braces 16. That tubular
portion abuts and is continuous with vertical post 15.
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The Appellant does not address the Examiner’s finding or otherwise
explain why the tubular portion referenced by the Examiner does not form a
utility region with a port that is continuous with, and extends above, the
column components in the load-bearing portion as required in claim 1.
Instead, the Appellant argues that upwardly extending the scaffold requires
installing another tier of scaffolding and summarily concludes that such an
additional tier does not satisfy the requirements of claim 1. However,
whether an additional tier may be added to the top of Uecker’s scaffold is of
no moment. The Examiner’s finding does not require the addition of any
tiers to the scaffold shown in Uecker’s Figure 1. The Appellant’s argument
does not explain why the Examiner’s finding is incorrect.
The Appellant also argues that its claim “requires that the building
frame located above the load-bearing portion thereof is required to form part
of a crane supporting mount structure. (App. Br. 5:12-13.) According to the
Appellant, “the portion of the frame of [Uecker] on which the crane is
mounted is part of the load-bearing portion, not a portion extending,
continuously above the load-bearing portion.” (Id. at 5:14-15.)
The Examiner does not disagree with the Appellant that the claim
requires a crane structure mounted as stated by the Appellant. As discussed
above, the Examiner found that Uecker’s Figure 2 shows an unnumbered
port located beneath a lower ring 46 where the port extends continuously
above a load-bearing portion formed beneath deck 17 and receives an
extension 27 of hoist 25. Thus, the Examiner found that that configuration
in Uecker satisfies the above-noted claim requirements. The Appellant’s
argument that Uecker’s hoist is mounted on part of the load bearing portion
does not account for the Examiner’s finding. That is, the Appellant does not
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explain why the unnumbered portion of Uecker’s Figure 2, termed a “port”
by the Examiner, that resides beneath lower ring 46 does not meet the
requirements relating to a port extending above the load-bearing portion and
receiving a crane structure.
Lastly, the Appellant argues that claim 1 “requires that the utility port
and column components be configured to allow additional infrastructure to
be feedable downwardly through the port towards a selected elevation in the
building structure, which is below the top of said frame’s said load-bearing
portion.” (App. Br. 5:17-20.) The Appellant contends that Uecker does not
satisfy that requirement.
The Appellant’s argument is misplaced. Claim 1 includes the
following clause (Claims App’x 1:13-2:3):
said utility port accommodating the selective insertion through
said mouth, and the reception inside the adjacent hollow interior of
said at least one column component, of a construction-extension
instrumentality which is drawn from the list consisting of (a) an
installable/removable crane structure, including temporary-use davit
structure, wherein said frame forms part of a crane supporting mount
structure, (b) a column-like element provided for the addition of
selected building superstructure, wherein a construction extension is
located on and in said column components, and (c) additional building
infrastructure feedable downwardly through said port toward a
selected elevation in said building structure which is below the top of
said frame’s said load-bearing portion.

Thus, the claim clause requires that a “construction-extension
instrumentality” is selected from a list of three separate structural elements
marked as (a), (b), and (c). That means the claim is satisfied if any one of
the three elements is found in the prior art. The Examiner determined that
Uecker discloses a hoist 25 that corresponds to the “installable/removable
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crane structure” of element (a). The Appellant does not contend that
Uecker’s hoist does not meet the requirement of element (a). Instead, the
Appellant argues that the structure that corresponds to element (c) is not
present in Uecker. However, because the Examiner determined that the
crane of element (a) is satisfied by Uecker, we need not consider whether the
limitation of element (c) is also satisfied.
The Appellant has not shown that the Examiner was incorrect in
determining that Uecker satisfies the requirements of claim 1.
We further note that claim 1 is also satisfied by an alternative reading
of Uecker. Uecker discloses that end frames 10 may be superimposed on
additional similar frames 12 that support frames 10 above the ground.
(Uecker p. 1, col. 2, ll. 11-13.) Like frames 10, frames 12 include vertical
posts 15 and horizontal braces 16 that may support a deck 17. (Id. at ll. 20-
24.) That is, frames 12 also include a load-bearing portion with a load-
bearing portion top that extends between horizontal braces 16. Frames 10
and 12 are joined by coupling pins 14 that connect the vertical posts of the
frames together. (Id. at ll. 18-19; Fig. 1.) When the vertical posts of each of
the frames are connected, the vertical posts of frames 10 are continuous with
the vertical posts of frames 12 and extend above the load-bearing portion top
between horizontal braces 16 of frames 12. (Id. at Fig. 1.) Furthermore, at
least one of the vertical posts of frames 10 includes an open end that
receives extension 27 of hoist 25. (Id. at p. 1, col. 2, ll. 35-40.) Thus,
vertical posts 15 of frames 10 form columns that extend above the load-
bearing portion top where at least one of the columns forms a utility port that
receives a crane structure as required in claim 1.
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For all the foregoing reasons, we sustain the rejection of claim 1 as
anticipated by Uecker.
Claim 2
Claim 2 is dependent on claim 1 and adds the limitation that “each
one of plural column components is provided with a like, upper-end utility
region.” (Claims App’x 2:4-5.)
The Appellant contends that Uecker does not satisfy the above-quoted
limitation because “[c]learly, in Fig. 1 of [Uecker], guard rail 19 is formed
using some of the column components, and the top of the guard rail uprights
do not have like, upper-end utility regions as do the column components.”
(App. Br. 7:3-5.)
The Appellant’s argument is misplaced. The claim requires that it is
the column components themselves that have the like, upper-end utility
regions and not any other element received in those column components.
The Examiner has relied on Uecker’s vertical posts 15 as forming column
components. As shown in Uecker’s Figures 1 and 2, those posts each
include upper openings that operate as utility regions that receive other
structural elements including unnumbered vertical portions of guard rail 19
and extension 27 of hoist 25. The appearance of those portions of the guard
rail and hoist 25 that are inserted into the vertical posts is of no moment.
The relevant inquiry centers on whether the ends of the vertical posts 15
have “like, upper-end utility regions” as required. As shown in Figure 1, the
upper ends of each vertical post 15 are substantially identical to one another.
We reject the argument that the added limitation of claim 2 distinguishes the
Appellant’s invention over the disclosure of Uecker.
We sustain the rejection of claim 2 as anticipated by Uecker.
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F. CONCLUSION
1. The Appellant has not shown that the Examiner was incorrect
in finding that Uecker discloses a frame having column components that
extend above a top of a load-bearing portion of the frame.
2. The Appellant has not shown that the Examiner was incorrect
in finding that Uecker discloses column components each with a “like,
upper-end utility region” as required in claim 2.
G. ORDER
The rejection of claims 1 and 2 under 35 U.S.C. § 102(b) as
anticipated by Uecker 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).

AFFIRMED

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MAT

Robert D. Varitz, P.C.
4915 SE 33rd Place
Portland OR 97202