Ex Parte St. Denis

Patent Trial and Appeal Board

Jan 31, 2017

13066208 (P.T.A.B. Jan. 31, 2017)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/066,208 04/07/2011 Dennis St. Denis 281-1US 9480
5568 7590 01/31/2017
TACK PAAVTT A
EXAMINER
43 VICTORIA ST., W. SILBERMANN, JOANNE
ALEXANDRIA, Ontario, KOC 1A0
CANADA ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
01/31/2017 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 DENNIS ST. DENIS
Appeal 2014-006332
Application 13/066,208
Technology Center 3600
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
AMANDA F. WIEKER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dennis St. Denis (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 2, 3, 6, 19, 21, and 23. See Appeal
Br. 5; Reply Br. 3. Claims 12, 13, 20, and 22 have been allowed by the
Examiner, and claims 4, 5, 7—9, and 14—16 have been withdrawn. See
Appeal Br. 5; Reply Br. 3; Final Act. 1 (Office Action Summary). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2014-006332
Application 13/066,208
CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates to “a warning sign to be
mounted on a load bearing wall, which sign becomes visible when
renovation or demolition of the wall begins,” so as to deter improper or
unsafe building renovation. Spec. 11002; see id. 1000-06. Claim 19,
reproduced below with emphasis and line breaks added, is illustrative of the
subject matter on appeal.
19. A warning sign adapted for mounting solely on a load
bearing wall in a building, the load bearing wall having an inner
supporting structure with vertical spaced-apart studs, the
structure covered with an outer layer;
the sign being a single, essentially two-dimensional,
member, with an essentially unbroken, planar, viewing surface
on one side of the member, and a mounting surface on the other
side of the member;
the sign sized to have a width substantially less than the
distance between two adjacent studs[;]
the sign having a warning on it’s [sic] viewing surface
relevant to a load bearing wall;
the sign adapted to be mounted on the supporting
structure of a load bearing wall with the viewing surface on the
sign facing outwardly from the structure and with the
supporting structure and the sign normally being covered with
the outer layer so the sign is not visible and thus not in use,
removal of the outer layer allowing the sign to become visible
and thus in use, and to warn the viewer about proceeding.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Fatigati US 6,371,692 B1 Apr. 16, 2002
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Appeal 2014-006332
Application 13/066,208
REJECTIONS
The following rejections are before us for review:
I. Claims 21 and 23 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 2.
II. Claims 21 and 23 stand rejected under 35 U.S.C. § 101 as
reciting an improper process claim and therefore being directed
to patent-ineligible subject matter. Id.
III. Claims 2, 3, and 19 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Fatigati. Id. at 3.
IV. Claims 6, 21, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fatigati. Id. at 3^4.
ANALYSIS
Rejections I and II— Claims 21 and 23 as being indefinite and
reciting an improper process claim
Independent claim 21 recites, in relevant part, the “use of a warning
sign,” followed—not by any method steps—but by recitations regarding the
structure of the sign itself. Appeal Br. 23, Claims App. (emphasis added).
Appellant asserts that the claim is definite because “[t]he use being claimed
relates to the use of a specific sign,” and contends that there would be no
infringement of the claim “if a person does not use the claimed sign.”
Appeal Br. 13, 14 (emphasis added).
However, as the Examiner correctly notes, claim 21 is not directed to
a sign (as is claim 19), but rather is directed to “use of’ a sign without
reciting any defined active steps to be performed in a method or process.
See Final Act. 2. Accordingly, we sustain these rejections for the reasons set
forth therein and in light of the Examiner’s responses to Appellant’s
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Appeal 2014-006332
Application 13/066,208
arguments. See id.; Ans. 2; see also MPEP § 2173.05(q) (regarding issues
presented by so-called “use” claims, which accord with the rejections
presented by the Examiner here).1
Rejection III— Claims 2, 3, and 19 as anticipated byFatigati
The Examiner found that Fatigati discloses a warning sign, including
all of the structural limitations recited in these claims. Final Act. 3 (citing
Fatigati, Fig. 1). Appellant argues that Fatigati does not show each feature
claimed. See Appeal Br. 14—17; Reply Br. 5—8. After careful consideration
of the rejection before us, Appellant’s arguments do not apprise us of error
in the Examiner’s factual findings, which are supported by a preponderance
of the evidence. In short, we sustain this rejection based on the findings set
forth therein and in light of the Examiner’s responses to Appellant’s
arguments. See Final Act. 3; Ans. 3. We address Appellant’s principle
arguments below simply as a matter of emphasis.
Specifically, Appellant asserts that Fatigati does not disclose a sign
that is “a single, essentially two-dimensional” member, as recited in the
claims. See Appeal Br. 15—16; Reply Br. 5—6. In particular, Appellant
contends that Fatigati’s sign includes—not only a two-dimensional
member—but also additional elements, such as support legs and pegs. See
id. However, the relevant inquiry is simply whether Fatigati discloses a sign
1 We also note that the patent grant of an apparatus claim, such as
recited in claim 19, includes the right to exclude “use” of the apparatus
claimed. See 35 U.S.C. § 271. Thus, it is unclear how the scope of the “use
of a warning sign” recited in claim 21 would be distinct from the ordinary
use of the “warning sign” recited in claim 19. See MPEP § 706.03(k)
(regarding substantial duplicate claims that cover the same thing).
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Appeal 2014-006332
Application 13/066,208
that is a single, essentially two-dimensional member, as relied on in the
rejection, which it does. See Fatigati, Fig. 1; Final Act. 3 (citing same).
Fatigati’s inclusion of additional elements (such as support legs and pegs)
does not diminish the fact that it discloses a single, essentially two-
dimensional sign, as the Examiner found. See id. As the Examiner explains,
these additional elements “are not part of the sign but attachments thereto,
much like the supports used to mount Appellant’s sign.” Ans. 3.
Appellant also asserts that Fatigati does not disclose a sign that meets
the size limitation recited in the claims, which is that the sign is “sized to
have a width substantially less than the distance between two adjacent
studs.” See Appeal Br. 16—17; Reply Br. 6—7. Although the claims do not
recite any particular stud spacing dimension, Appellant urges that typical
stud spacing is known to be either 12, 16, or 24 inches. See Appeal
Br. 16—17, 19-21; id. at 24, Evidence App. (and referenced Exhibits A—F).
Initially, the Examiner is correct that the claims do not recite a sign in
combination with a wall, but rather just a sign that is “adapted for mounting”
on a load bearing wall; thus, any sign that is “sized to have a width” that is
substantially less than the distance between any two adjacent studs on such a
wall meets the claim. See Ans. 3. Moreover, even analyzing the claimed
“size” of the sign limitation under Appellant’s proffered stud spacing, we
note that Fatigati discloses that sign sheet 12 is typically “about 18 to 24
inches in height,” and the drawings show that each individual sign sheet 12
is taller than it is wide, such that it logically follows that Fatigati’s sign is
sized to have a width less than 18 to 24 inches, which would fit between two
adjacent studs under Appellant’s suggested spacing range. Fatigati, col. 2,
11. 60-61, Fig. 1.
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Appeal 2014-006332
Application 13/066,208
After careful consideration of the record before us, Appellant’s
arguments do not apprise us of error in the Examiner’s factual findings that
Fatigati discloses a sign as recited in the claims, which are supported by a
preponderance of the evidence. Accordingly, we sustain this rejection.
Rejection IV— Claims 6, 21, and 23 as unpatentable over Fatigati
With respect to this rejection, Appellant reiterates the arguments
against Fatigati discussed above—namely, that Fatigati is allegedly deficient
in disclosing recited structure of the sign itself, and that the “use” recited in
these claims requires that the sign be used with certain structure of a load
bearing wall. See Appeal Br. 17—19. For the same reasons discussed above
regarding Rejections I—III, Appellant’s arguments do not apprise us of error
in this rejection, which we likewise sustain based on the findings and
reasoned position set forth therein and in light of the Examiner’s responses
to Appellant’s arguments. See Final Act. 2—\\ Ans. 3^4.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 2, 3, 6, 19, 21,
and 23.
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)(l)(iv).
AFFIRMED
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