Ex Parte Smith

Board of Patent Appeals and Interferences

Jan 31, 2007

09791051 (B.P.A.I. Jan. 31, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONALD R. SMITH
____________

Appeal 2006-2717
Application 09/791,051
Technology Center 3600
____________

Decided: January 31, 2007
____________

Before TERRY J. OWENS, JENNIFER D. BAHR and LINDA E. HORNER,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
STATEMENT OF THE CASE
The Appellants seek our review of the Examiner’s final rejection of claims
1-7, 9-12, 14, 15, and 18-20.1 We have jurisdiction over this appeal under 35 USC
§ 134(a).
SUMMARY OF DECISION
We AFFIRM-IN-PART.

1 Claims 8, 13, 16, and 17 have been withdrawn.
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THE INVENTION
The Appellant invented a wall adapter for fastening a mullion to a wall
(Specification 3). Claims 1 and 9, reproduced below, are representative of the
subject matter on appeal.
1. A wall adapter for fastening a mullion to a wall, the
mullion mounting a window or door, the mullion being a single piece
and having first and second sides, comprising:
a member having a first portion, a first side portion extending
from a first edge of the first portion and a second side portion
extending from a second edge of the first portion, the first portion,
first side portion and second side portion engaging the wall; and
the first portion having a first surface for receiving the single
piece mullion, the window or door being mounted to the mullion, the
mullion being secured to the wall only through the member.

9. A wall adapter system including:
a wall have a predetermined thickness;
a single piece mullion mounting a door or a window, the single
piece mullion having a first side and a second side, each side having
an inwardly directed lip;
a cover trim;
a wall adapter having a first portion of predetermined width, at
least one side portion extending from a first edge of the first portion,
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the first portion having a mullion snap interlock thereon, the mullion
snap fit on the mullion snap interlock, the first side portion having a
cover trim interlock, the cover trim snap fit on the cover trim
interlock, the mullion being secured to the wall only through the wall
adapter, the first portion having outer walls forming a portion of the
mullion snap interlock, the outer walls covering a portion of the first
and second sides of the single piece mullion.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Madl, Jr. US 3,126,986 Mar. 31, 1964
Mock US 3,609,928 Oct. 05, 1971
Browne US 3,858,377 Jan. 07, 1975
Wendt US 4,606,162 Aug. 19, 1986
The following rejections are before us for review.
1. Claims 1-5, 10, 12, and 18-20 stand rejected under 35 USC § 103(a) as being
unpatentable over Madl in view of Wendt.
2. Claims 6, 9, and 11 stand rejected under 35 USC § 103(a) as being
unpatentable over Madl in view of Wendt and Mock.
3. Claims 7, 14, and 15 stand rejected under 35 USC § 103(a) as being
unpatentable over Madl in view of Wendt and Browne.
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OPINION
CLAIMS 1-5, 10, 12, AND 18-20
Claim 1
In the rejection of independent claim 1, the Examiner determined that Madl
shows a wall adapter (47) for fastening a mullion (52) to a wall as claimed except
that it does not show the mullion being a single piece with first and second sides
(Answer 4). The Examiner relied on Wendt to show a single-piece mullion (86)
having first and second sides. The Examiner found,
It would have been obvious to one having ordinary
skill in the art at the time of the invention to modify Madl
Jr. to show the mullion being a single piece and having
first and second sides as taught by Wendt because having
a mullion of a single piece would enable the easy
assembly of the mullion and avoid the cumbersome
handling/inventorying of multiple parts of the mullion;
furthermore, it has been held that forming in one piece an
article which has formerly been formed in two pieces and
put together involves only routine skill in the art, Howard
v. Detroit Stove Works, 150 U.S. 164 (1893) (Answer 4).
The Appellant contends that Madl teaches away from use of a single piece
glazing rail of Wendt because Madl teaches using two separate window framing
elements (Brief 5). The issue before us is whether the Appellant has shown that
the Examiner erred in rejecting claim 1 under 35 USC § 103(a) as obvious over
Madl in view of Wendt.
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Madl discloses that “[the offset] wall 50 [of the metal extrusion 47] defines
the bottom of a dovetail groove 51, the same receiving window-framing members
52 that clamp the window 15 between them, a compressible sealing strip 53 being
used to avoid metal-to-glass contact of the glass pane 15 and the members 52”
(Madl, col. 3, ll. 32-35). We do not find, and the Appellant fails to point to, any
specific teaching in Madl that criticizes, discredits, or other otherwise discourages
the use of a one-piece mullion in the partition system of Madl.
Wendt shows a glazing rail (86) made of one piece, which demonstrates that
one-piece mullions were common knowledge in the art at the time of the invention.
A single piece mullion is easier to assemble than a two piece mullion, and one
purpose of Madl is to use frame components that are easy to assemble (Madl, col.
1, ll. 9-13).
“The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such disclosure
does not criticize, discredit, or otherwise discourage the solution claimed in the
'198 application.” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146
(Fed. Cir. 2004).
We conclude that Madl does not teach away from using a one-piece mullion,
because it does not discourage one from using such a mullion. Quite the opposite,
Madl encourages the use of frame components that are easy to assemble. Madl’s
teaching would have provided sufficient motivation for one having ordinary skill in
the art at the time of the invention to use the one piece mullion, as taught by
Wendt, in place of Madl’s two piece window framing system. We conclude that it
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would have been obvious to one having ordinary skill in the art at the time of the
invention to use the single piece mullion of Wendt in place of the two piece
mullion of Madl.
The Appellant further argues that Wendt does not disclose a wall adapter for
fastening a mullion to a wall. The Examiner did not rely on Wendt for the teaching
of a wall adapter. “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981)). Thus, Wendt must be read, not in isolation, but for what it fairly teaches
in combination with the prior art as a whole. The Examiner relied on Wendt for
the teaching of the use of a one-piece mullion for supporting a glass window. As
such, we find the Appellant’s argument unpersuasive.
The Appellant also argues that Madl does not show the window secured to
the wall only through the mullion because the window in Madl is also supported in
part by the metal extrusion (47) (Brief 5). We do not see where claim 1 requires
that the window is secured only through the mullion. Rather, claim 1 recites that
the window or door is mounted to the mullion and the mullion is secured to the
wall only through the member. Madl clearly shows this in Figures 5 and 6, in
which the window (15) is clamped between the window-framing members (52),
and the window-framing members (52) are secured to the wall (13) only through
the metal extrusion (47) (Madl, col. 3, ll. 21-37). As such, we are not persuaded by
the Appellant’s argument.
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We conclude that the Examiner did not err in his rejection, and we thus
sustain the Examiner’s rejection of claim 1 under 35 USC §103(a) as being
unpatentable over Madl in view of Wendt.
Claim 2
The Appellant contends that neither Madl nor Wendt discloses the inner
surfaces of the first portion, first side portion and second side portion engaging the
wall (Brief 6). Figure 6 of Madl shows the inner surfaces of the first portion (50),
the first side portion (48), and the second side portion (41) engaging the wall (13)
(Answer 3). As such, we sustain the Examiner’s rejection of claim 2.
Claim 3
The Appellant contends that neither Madl nor Wendt discloses a mullion
snap interlock on a member engaging a wall (Brief 6). The Examiner contends that
Figure 6 of Madl shows the first portion (50) of the wall adapter (47) engages the
wall (13) and has a snap interlock (51) (Answer 3).
Madl discloses that “[the offset] wall 50 [of the metal extrusion 47] defines
the bottom of a dovetail groove 51, the same receiving window-framing members
52 that clamp the window 15 between them, a compressible sealing strip 53 being
used to avoid metal-to-glass contact of the glass pane 15 and the members 52”
(Madl, col. 3, ll. 32-35). Madl’s window-framing members (52) do not appear to
snap into engagement with the dovetail grooves (51). The purpose of Madl,
however, is to use frame components that are easy to assemble (Madl, col. 1, ll. 9-
13). Wendt teaches a snap interlock between its glazing rail (86) and the lips (82
and 84) of clip (68). (Wendt, Figure 4 and col. 3, ll. 34-35).
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To establish a prima facie case of obviousness, the references being
combined do not need to explicitly suggest combining their teachings. See e.g., In
re Kahn, 441 F.3d 977, 987-88, 78 USPQ2d 1329, 1337-38 (Fed. Cir. 2006) (“the
teaching, motivation, or suggestion may be implicit from the prior art as a whole,
rather than expressly stated in the references”); and In re Nilssen, 851 F.2d 1401,
1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (“for the purpose of combining
references, those references need not explicitly suggest combining teachings.”).
An explicit teaching that identifies and selects elements
from different sources and states that they should be
combined in the same way as in the invention at issue, is
rarely found in the prior art. As precedent illustrates,
many factors are relevant to the motivation-to-combine
aspect of the obviousness inquiry, such as the field of the
specific invention, the subject matter of the references,
the extent to which they are in the same or related fields
of technology, the nature of the advance made by the
applicant, and the maturity and congestion of the field.
. . .
Precedent has also recognized that “[t]he suggestion or
motivation to combine references does not have to be
stated expressly; rather it may be shown by reference to
the prior art itself, to the nature of the problem solved by
the claimed invention, or to the knowledge of one of
ordinary skill in the art.”
In re Johnston, 435 F.3d 1381, 1385, 77 USPQ2d 1788, 1790-91 (Fed. Cir. 2006)
(citing Medical Instrumentation and Diagnostics Corp. v. Elekta AB, 344 F.3d
1205, 1221-22 (Fed. Cir. 2003)). “The test for an implicit showing is what the
combined teachings, knowledge of one of ordinary skill in the art, and the nature of
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the problem to be solved as a whole would have suggested to those of ordinary
skill in the art.” Kahn, 441 F.3d at 987-88, 78 USPQ2d at 1336 (quoting In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000)).
Madl is concerned with using frame components that are easy to install.
Wendt teaches a mullion having a snap fit interlock engagement to a glazing rail.
Snap fit interlocks are installed by merely exerting sufficient pressure on the
components to force the hook portions of the components to snap together and lock
in place. We conclude that it would have been obvious to one having ordinary
skill in the art at the time of the invention, in view of the purpose of Madl, to use
Wendt’s snap interlock connection for attaching the mullion to the metal extrusion
(47) of Madl, because such a snap interlock is easy to assemble. As such, we
sustain the Examiner’s rejection of claim 3.
Claim 4
The Appellant contends that Madl does not disclose cover trim interlocks on
the first and second side portions because the concealing members (46) of Madl are
part of the vertical frame components (12), not the window framing component
(15) (Brief 6). The Examiner determined that Madl, in Figure 6, shows cover trim
interlocks (46) (Answer 9).
Madl shows in Figures 1 and 3 the concealing members (46) as part of the
vertical frame components (12). As shown in Figure 6, Madl’s outer flange walls
(48) are flush with the sides of the wall, and Madl does not teach using an
attachment mechanism, such as a screw, to attach the side flanges to the wall. As
such, the first and second side portions (outer flange walls (48)) of Madl’s metal
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extrusion (47) have no need for side cover trim. We find no teaching, suggestion,
or motivation in Madl or Wendt for adding cover trim interlocks on the side
portions of the wall adapter member. As such, we do not sustain the Examiner’s
rejection of claim 4.
Claim 5
The Appellant contends that neither Madl nor Wendt has outer walls that are
exterior the side walls of the mullion (Brief 6). The Examiner contends that Madl
shows, in Figure 5, the first portion having first and second inner snap hooks and
adjacent first and second outer walls and the mullion snap fit between the inner
snap hooks and the outer walls (Answer 9).
As shown in Figures 5 and 6, the window framing members (52) of Madl are
held in place by dovetail grooves (51) and are not snap fit between adjacent inner
snap hooks and outer walls as claimed. The Examiner has not provided any further
explanation of where in Figure 5 the elements of claim 5 are shown in Madl. As
such, we do not sustain the Examiner’s rejection of claim 5.
Claim 10
The Appellant argues that neither Madl nor Wendt shows the step of
securing a wall adapter to a wall (Brief 7). The Examiner determined that the
claimed method steps would have been the obvious method steps for constructing
Madl’s structure, as modified by Wendt (Answer 10).
Madl shows in Figure 6 that the metal extrusion (47) extends around a panel
wall (13) (Madl, col. 2, l. 71 – col. 3, l. 1). Madl describes, “Each component
comprises a metal extrusion 47 of channel form with inner and outer flange walls
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48 that receive a panel 13 between them as do flanges 41 of the frame components
14 [sic, 12]” (Madl, col. 3, ll. 27-30). Although Madl does not explain the exact
steps taken to secure the metal extrusion (47) to the wall (13), we find that it is an
inherent and necessary step of the process for attaching the metal extrusion (47) to
the wall (13) that the person assembling somehow secures the metal extrusion (47)
to the wall (13) to prevent it from falling off. As such, we find that the step of
securing a wall adapter to a wall would have been obvious to one having ordinary
skill in the art in view of the combined teachings of Madl and Wendt.
The Appellant further makes the same arguments as to the deficiencies of
Madl and Wendt as was made for claim 1. We find these arguments unpersuasive
for the same reasons set forth supra. As such, we sustain the Examiner’s rejection
of claim 10.
Claim 12
The Appellant argues that Madl and Wendt teach away from the claimed
step of screwing the wall adapter to the wall because they do not suggest any such
structure (Brief 8). The Examiner determined that the claimed method steps would
have been the obvious method steps for constructing Madl’s structure, as modified
by Wendt (Answer 10).
As discussed supra, Madl does not provide any express teaching of how its
metal extrusion (47) is secured to the panel (13). Madl, however, also does not
discourage one having ordinary skill in the art from screwing the metal extrusion
(47) adapter to the wall (13). Further, Wendt teaches to attach its pivot clips (68),
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to which the one piece mullion (86) is attached, to the sill (14) and header using
screws (89) (Wendt, Figure 4, and col. 3, ll. 32-33).
We conclude that one having ordinary skill in the art at the time of the
invention would have been led to attach Madl’s metal extrusion (47) to the panel
(13) using screws, as taught in Wendt, to achieve a secure attachment.
As such, we sustain the Examiner’s rejection of claim 12.
Claim 18
Claim 18 depends from and further limits claim 9. The rejection of claim 9
as being unpatentable over Madl in view of Wendt and Mock cannot be sustained,
for the reasons discussed infra. It follows that the rejection of claim 18 based on
Madl and Wendt likewise cannot be sustained.
Claim 19
The Appellant contends that neither Madl nor Wendt discloses a storefront
mullion. The Examiner determined that the mullion of Madl inherently can be a
store front as claimed as there is no structural difference between the claimed
mullion and the mullion taught by Madl (Answer 9).
The specification does not describe a “storefront mullion.” Based on the
broad meaning of the words used, we find that a “storefront mullion” is merely a
mullion that is capable of being used on the front of a store. We find no structural
difference between this storefront mullion and the mullion of Madl, as modified by
the one piece mullion of Wendt.
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The claimed invention would have been obvious to one having ordinary skill
in the art at the time of the invention based on the wall adapter of Madl, as
modified by the one-piece mullion of Wendt, for the same reasons provided supra
with regard to claim 1. As such, we sustain the Examiner’s rejection of claim 19.
Claim 20
Claim 20 depends from and further limits claim 5. As such, we do not
sustain the Examiner’s rejection of claim 20 for the same reasons set forth supra
with regard to claim 5.
CLAIMS 6, 9, AND 11
Claims 6 and 11
The Examiner found that Mock shows a trim panel (46) that has a snap fit to
enable quick and easy mounting of the trim panel (Answer 4). The Appellant
argues that Madl teaches against side trim panels because Madl has no suggestion
to use them, being apparently satisfied with the appearance of edge flanges (41)
(Brief 7).
Mock teaches using trim channels (46) to cover the fasteners (44) used to
attach the parts (30, 34) to the plaster board (18) (Mock, col. 3, ll. 18-21). As we
set forth supra for claim 4, Madl’s outer flange walls (48) are flush with the sides
of the wall, and Madl does not teach using a fastener, such as a screw, to attach the
side flanges to the wall. As such, the first and second side portions (outer flange
walls (48)) of Madl’s metal extrusion (47) have no need of side cover trim. Thus,
we find no motivation to modify the side flanges of Madl to add the side cover trim
of Mock. As such, we do not sustain the Examiner’s rejection of claims 6 and 11.
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Claim 9
Claim 9, similar to claim 5, recites that the first portion has outer walls
forming a portion of the mullion snap interlock, the outer walls covering a portion
of the first and second sides of the single piece mullion. For the same reasons set
forth supra for claim 5, we find that neither Madl nor Wendt teaches or suggests
these outer walls as claimed. We further find that Mock fails to cure this
deficiency in the prior art. As such, we do not sustain the Examiner’s rejection of
claim 9.
CLAIMS 7, 14, AND 15
Claims 7 and 14
The Examiner determined that Browne shows a main portion (22) and an
adjustment portion (66) as recited in claim 7 (Answer 5). The Examiner also found
that the method steps of claim 14 would have been the obvious method steps of
constructing Madl’s structures, as modified by Wendt and Browne (Answer 7).
The Appellant contends that Browne does not disclose an adjustable device for use
with a range of wall thicknesses (Reply Brief 3).
Browne discloses a joint structure (10) used to connect wall panels of
buildings. Browne discloses that the joint structure (10) has a first member (18)
with parallel legs (22, 24) and a second member (20) with parallel legs (26, 28)
(Browne, col. 2, ll. 35-37). The legs (26, 28) each terminate in a ratchet tooth (30,
34) which is snapped into engagement with a ratchet tooth (32, 36) on leg (22, 24)
(Browne, col. 2, ll. 37-41). As such, there is but one fixed position of members
(18, 20) with respect to each other. These members (18, 20) are fixed at a set
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distance apart determined by the engagement of the ratchet teeth pairs (30, 32 and
34, 36).
Browne further discloses that leg (22) has an extension with teeth (70), and
leg (24) has an extension with teeth (78) (Browne, col. 3, ll. 3-4 and 13-14). The
joint structure (10) of Browne further includes retainer members (60, 62) which
have legs (66, 72) (Browne, col. 2, ll. 64-65). Leg (66) terminates in a ratchet
tooth (68), which “cooperates with one of the teeth 70 supported by leg 22”
(Browne, col. 3, ll. 1-3). Similarly, leg (72) terminates in a ratchet tooth (76)
“engaged with one of the teeth 78” of leg (24) (Browne, col. 3, ll. 12-13). It is not
clear from this description of Browne how the teeth (70, 78) of legs (22, 24) would
operate to allow adjustability of the joint structure (10) given the fixed position of
members (18, 20).
We find no suggestion, teaching, or motivation to modify the metal
extrusion (47) to make it adjustable. We conclude that one having ordinary skill in
the art would not have been led to make this modification to Madl based on the
teachings of Browne. As such, we do not sustain the Examiner’s rejection of
claims 7 and 14.
Claim 15
Claim 15 depends from and further limits claim 14. As such, we do not
sustain the Examiner’s rejection of claim 15 for the same reasons set forth supra
with regard to claim 14.
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CONCLUSION
To summarize, the decision of the Examiner to reject claims 1-3, 10, 12, and
19 is sustained and the decision of the Examiner to reject claims 4-7, 9, 11, 14, 15,
18, and 20 is no sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a). See 37 CFR § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal 2006-2717
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WILLIAM R. GUSTAVSON
SUITE 1185
9330 LBJ FRWY.
DALLAS, TX 75243