Ex Parte Swanson

Patent Trial and Appeal Board

Oct 3, 2017

14247858 (P.T.A.B. Oct. 3, 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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/247,858 04/08/2014 Lief Eric Swanson 11261.3818 4391
22235 7590 10/05/2017
Malin Haley DiMaggio & Bowen, P.A.
Spectrum Office Building
4901 NW 17th Way, Suite 308
FORT LAUDERDALE, EL 33309
EXAMINER
FIGUEROA, LUZ ADRIANA
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
10/05/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
info@mhdpatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIEF ERIC SWANSON1
Appeal 2017-003829
Application 14/247,858
Technology Center 3600
Before ERIC S. FRAHM, LARRY J. HUME, and AARON W. MOORE,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant names Top Down Siding, LLC as the real party of interest.
Appeal 2017-003829
Application 14/247,858
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Exemplary Claims
Claims 1, 8, and 15 are independent, and each recite a siding system
including a plurality of siding planks having first and second flanges and a
groove, and a starter strip having a flange and a groove. Claim 1 differs
from remaining independent claims 8 and 15, in that claim 1 additionally
recites limitation [A] (found at the end of claim 1, see infra), reciting that
“the starter strip does not include an upwardly extending flange for mating
with a siding plank arranged above the starter strip.” Exemplary
independent claims 1 and 8 under appeal, with emphases,
formatting/paragraphing, and bracketed lettering added, read as follows:
LA siding system comprising:
a plurality of siding planks, each siding plank extending
along a long axis and having a building-contacting side and a
second side opposite the building-contacting side, the building­
contacting side having at least one section adapted to mate with
a wall of a building, and the second side being bounded by first
and second ends, each of the siding planks comprising:
a first flange extending upwardly from and offset
with respect to the building contacting side, the first
flange being tapered;
a second flange extending downwardly below the
second end of the second side of the siding plank to form
a fixation-member-receiving section adapted to receive a
fixation member for securing the siding plank to the wall
of the building; and
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Application 14/247,858
a tapered groove formed between the second side
of the siding plank and the second flange, the tapered
groove extending upwardly above the second end of the
second side of the siding plank, such that a section of the
first flange of a first of the plurality of siding planks is
adapted to mate with the tapered groove of a second of
the plurality of planks to interlock the first siding plank
with the second siding plank via the tapered groove/first-
flange interface; and
a starter strip comprising a building-contacting side and
a second side opposite the building-contacting side, the
building-contacting side of the starter strip having at least one
section adapted to mate with the wall of the building, wherein
the second side is bounded by first and second ends, the starter
strip including
a flange extending downwardly below the second
end of the second side of the starter strip, the flange
forming a fixation-member-receiving section adapted to
receive a fixation member for securing the starter strip to
the wall of the building; and
a tapered groove formed between the second side
of the starter strip and the flange, the tapered groove
extending upwardly above the second end of the second
side of the starter strip and having a profile that is
substantially identical to the profile of the tapered
groove formed in each of the plurality of siding planks,
such that a section of the first flange of the second siding
plank is adapted to mate with the tapered groove of the
starter strip to interlock the second siding plank with the
starter strip,
\A] wherein the starter strip does not include
an upwardly extending flange for mating with a siding
plank arranged above the starter strip.
8. A siding system comprising:
a plurality of siding planks, each siding plank extending
along a long axis and having a building-contacting side and a
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second side opposite the building-contacting side, the building­
contacting side having at least one section adapted to mate with
a wall of a building, and the second side being bounded by first
and second ends, each of the siding planks comprising:
a first flange extending upwardly from the second
side of the siding plank;
a second flange extending downwardly below the
second end of the second side of the siding plank to form
a fixation-member-receiving section adapted to receive a
fixation member for securing the siding plank to the wall
of the building; and
a groove formed between the second side of the
siding plank and the second flange, the groove extending
upwardly above the second end of the second side of the
siding plank, such that a section of the first flange of a
first of the plurality of siding planks is adapted to mate
with the groove of a second of the plurality of planks to
interlock the first siding plank with the second siding
plank via the groove/first-flange interface; and
a starter strip comprising a building-contacting side and
a second side opposite the building-contacting side, the
building-contacting side of the starter strip having a first section
adapted to mate with the wall of the building at a top end of the
building-contacting side and a second section adapted to mate
with the wall of the building at a bottom end of the building­
contacting side, the second side being bounded by first and
second ends, the starter strip including:
a flange extending downwardly below the second
end of the second side of the starter strip, the flange
forming a fixation-member-receiving section adapted to
receive a fixation member for securing the starter strip to
the wall of the building; and
a groove formed between the second side of the
starter strip and the flange, the groove extending
upwardly above the second end of the second side of the
starter strip and having a profile that is substantially
identical to at least a portion of a profile of the
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first flange of the siding plank, such that the first flange
of the siding plank is adapted to mate with the groove of
the starter strip to interlock the siding plank with the
starter strip.
The Examiner’s Rejections
(1) The Examiner rejected claims 8—20 as being anticipated under 35
U.S.C. § 102(b) by McCauley (US 2,241,642; issued May 13, 1941). Final
Act. 2—10; Ans. 2—3.
(2) The Examiner rejected claims 1—5 and 7 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of McCauley and
Champagne (US 5,634,314; issued June 3, 1997). Final Act. 10-15; Ans. 3—
4.
(3) The Examiner rejected dependent claim 6 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of McCauley, Champagne,
and Wilson (US 7,762,040 B2; issued July 27, 2010). Final Act. 15.
Principal Issues on Appeal2
Based on Appellant’s arguments in the Appeal Brief (Br. 11—14), the
following principal issues are presented on appeal:
2 Independent claims 8 and 15 both contain the same disputed limitation of a
starter strip, and are argued by Appellant as a group (Br. 11). Independent
claim 1 differs in scope from claims 8 and 15, and recites the additional
limitation [A] found at the end of the claim. Appellant presents arguments
as to claim 1, and relies on those arguments as to the patentability of claims
2—7 depending therefrom (Br. 12—13). We, therefore, select claim 1 to be
representative of the group of claims 1—5 and 7, and decide the appeal of
claim 6 on the same basis as representative claim 1. We also select claim 8
to be representative of the group of claims 8—20.
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(1) Did the Examiner err in rejecting claims 8—20 as being anticipated
by McCauley because McCauley fails to disclose, whether expressly or
inherently, a starter strip, as recited in representative claim 8?
(2) Did the Examiner err in rejecting claims 1—7 as being obvious over
the base combination of McCauley and Champagne because the base
combination fails to teach or suggest a starter strip that “does not include an
upwardly extending flange for mating with a siding plank arranged above
the starter strip,” as recited in representative independent claim 1?
ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 2—15) in light
of Appellant’s arguments in the Appeal Brief (Br. 11—14) that the Examiner
has erred, as well as the Examiner’s response (Ans. 2-A) to Appellant’s
arguments. We disagree with Appellant’s arguments. With regard to
representative independent claims 1 and 8, we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Final Act. 2-4, 10-12) and (2) the reasons set forth by the
Examiner in the Examiner’s Answer (Ans. 2—A) in response to Appellant’s
Appeal Brief. We concur with the findings and legal conclusions reached by
the Examiner, and highlight and emphasize certain findings with regard to
McCauley and Champagne.
Claim 8: Anticipation by McCauley
We agree with the Examiner (Final Act. 2-4; Ans. 2—3) that
McCauley discloses the disputed limitations. During examination, claims
are to be given their broadest reasonable interpretation consistent with the
specification, and the language should be read in light of the specification as
it would be interpreted by one of ordinary skill in the art. In re Am. Acad, of
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Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); Phillips v. AWHCorp.,
415 F.3d 1303, 1316 (Fed. Cir. 2005). Under the broadest reasonable
interpretation, “a starter strip” having “a flange” and “a tapered groove” as
recited in claim 8 encompasses McCauley’s first, and top, siding plank used
to start the siding process. We agree with the Examiner’s finding that
McCauley (see Figs. 1,3,4) discloses not only a plurality of siding planks as
recited in claim 8, but also discloses a first row of planks used to start the
siding process, any of which read on the recited starter strip (Ans. 2—3).
And, the first row of planks disclosed by McCauley meet the recited
limitations of (i) a starter strip with opposite sides, top and bottom ends, and
first and second ends (see Figs. 1, 3, 4); (ii) a flange (Fig. 4, front face 14)
“adapted to receive a fixation member” (see e.g., Figs. 3 and 4, front face 14
receives nail 19); and (iii) a groove (Fig. 4, mortise or undercut rabbet 12)
“adapted to mate with the groove of the starter strip to interlock the siding
plank with the starter strip” (see Fig. 4, bottom longitudinal edge 10, mortise
or undercut rabbet 12, and bottom edge lip 13).
Under the broadest reasonable interpretation, Appellant’s contentions
(Br. 11) that McCauley fails to disclose a starter strip as recited in claim 8
are unpersuasive. In view of the foregoing, we sustain the anticipation
rejection of independent claim 8, as well as claims 9-20 grouped therewith,
as being anticipated by McCauley.
Claim 1: Obviousness over Base Combination of McCauley and Champagne
We agree with the Examiner (Final Act. 10—12; Ans. 3 4) that the
combination of McCauley and Champagne teaches or suggests the disputed
limitations, including a starter strip having a flange and a tapered groove,
“wherein the starter strip does not include the upwardly extending flange for
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mating with a siding plank arranged above the starter strip” as recited in
claim 1. We agree with the Examiner’s finding (Final Act. 12; Ans. 3), as
does Appellant (Br. 11), that McCauley discloses a top down siding system
(see McCauley, col. 1,11. 39-43).
Appellant’s argument (Br. 12) that Champagne teaches away from
Appellant’s claimed invention is unpersuasive. Appellant’s arguments are
premised on Champagne’s disclosure of a bottom up siding process/system,
as opposed to the recited top down siding process/system. First, we note that
the Examiner relies upon McCauley for providing a top down
process/system (which Appellant does not dispute, see Br. 11). Second,
Appellant’s claim 1 does not actually recite a “top down” system or process
for siding. In any event, we agree with the Examiner (Ans. 4) that because
“Champagne teaches a siding system including a plurality of siding planks
and a starter strip” (i.e., first row of planks), as does McCauley,
“Champagne ... is pertinent to the appellant’s claimed invention [recited in
claim 8]” (Ans. 4). We also agree with the Examiner that it would have
been “obvious to modify the starter strip of McCauley to not include the
upwardly extending flange as taught by Champagne in order to provide a top
trim to the siding system and to prevent accumulation of debris behind the
first flange” (Ans. 3). Therefore, modifying McCauley’s top down siding
system with Champagne’s trim strip 22, in order to prevent rain and debris
from getting behind the siding, would teach or suggest the limitations recited
in claim 8 on appeal of a siding system having a plurality of siding planks
and a starter strip.3
3 Although the record before us on appeal does not address the issue, should
there be further prosecution, the Examiner may also wish to consider
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In view of the foregoing, we sustain the Examiner’s obviousness
rejection of representative claim 1 over the base combination of McCauley
and Champagne, as well as claims 2—5 and 7 grouped therewith. We also
sustain the rejection of dependent claim 6 as being obvious over the
combination of McCauley, Champagne, and Wilson for the reasons provided
as to claim 1 from which claim 6 depends, and because Appellants make the
same unpersuasive argument for claim 6 as presented for claim 1 already
discussed. See Br. 13.
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 8—20 as being
unpatentable under 35 U.S.C. § 102(b) as anticipated by McCauley.
(2) The Examiner did not err in rejecting claims 1—7 as being
unpatentable under 35 U.S.C. § 103(a) over the base combination of
McCauley and Champagne.
whether or not it would have been obvious to the ordinarily skilled artisan
(carpenter, framer, and/or contractor installing siding) to use a saw to cut
McCauley’s siding plank (shown in Figs. 1,3,4) at or around the
longitudinal edge 6 such that the siding portion 2 and the sheathing portion 3
are cut along an even edge near edge 6 to produce a single downward
sloping edge to the siding plank such that the siding plank thereby becomes
a suitable starter plank having either (i) a downward slope, or (ii) edge
perpendicular to the wall for abutting tightly against a soffit at the top of the
wall, which prevents rain and debris from getting behind the plank.
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DECISION
We affirm the Examiner’s rejections of claims 1—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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