Ex Parte Tiramani

Board of Patent Appeals and Interferences

Aug 28, 2012

10653523 (B.P.A.I. Aug. 28, 2012)

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.
10/653,523 09/02/2003 Paolo Tiramani 286357-00004-1 3343
7590 08/28/2012
David C. Jenkins
Eckert Seamans Cherin & Mellot, LLC
44th Floor
600 Grant Street
Pittsburgh, PA 15219
EXAMINER
CHAPMAN, JEANETTE E
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
08/28/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAOLO TIRAMANI
____________

Appeal 2010-008385
Application 10/653,523
Technology Center 3600
____________

Before JOHN C. KERINS, MICHAEL L. HOELTER, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Paolo Tiramani (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejection of claims 1, 2, 4-11 and 13-19. Appellant
canceled claims 3 and 12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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The Claimed Subject Matter
The claimed subject matter relates “to a modular, expandable
prefabricated house.” Spec. 1, ll. 13-14. Sole independent claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A prefabricated house comprising:
two or more modules, each module having a
frame, said frame having a plurality of studs;
said module frames having one or more
multiframe openings;
each said multiframe opening incorporating
two studs from said frame plurality of studs and
having a plurality of medial cross-members; and
said two or more modules structured to be
joined at one of said one or more multiframe
openings.
App. Br., Clms. App’x.

The Rejections
The following Examiner’s rejections are before us for review:
1. Claims 13-15 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out
and distinctly claim the subject matter which Appellant regards as
the invention. Ans. 4.
2. Claims 1, 2, 4, 9-11, 17, and 18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kump (US 3,712,007; iss. Jan. 23,
1973) and Donahue (US 2,644,203, iss. Jul. 7, 1953). Id. at 5-6.
3. Claims 5, 6, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kump, Donahue, and Derman (US 2,070,924;
iss. Feb. 16, 1937). Id. at 7-8.
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4. Claims 7, 8, 16, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kump, Donahue, and Prigmore (US 4,779,514;
iss. Oct. 25, 1988). Id. at 8.

OPINION
Indefiniteness
The Examiner finds that claims 13-15 depend from canceled claim 12.
Ans. 4. Appellant does not argue that the rejection was improper. See App.
Br. 6 and Reply Br. 1-2. Thus, based on the record before us, we sustain the
Examiner’s rejection of claims 13-15 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Obviousness based on Kump and Donahue
The Examiner determines that Kump discloses a prefabricated house
substantially as claimed with the exception of studs, for which the Examiner
cites Donahue. Ans. 5-6. Appellant argues that, while Kump discloses a
structural frame, a module frame, and an opening frame, Kump fails to
disclose a frame, as used and described in the Specification. App. Br. 9 and
Reply Br. 3-4. Appellant offers definitions of “frame” to support the use in
the Specification. App. Br. 9 and Evid. App’x. Appellant also argues that
the “frame” of the Specification is distinguishable from Kump’s structural
frame, module frame, and opening frame. Id. at 10-12. In particular,
Appellant argues that the structural frame includes posts and not studs. Id. at
10. Appellant offers definitions for “stud” and “post” and an affidavit
describing the difference between a stud and a post. Id. at 10-12 and Evid.
App’x. Appellant also argues that the module frame of Kump does not
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include studs (Id. at 10-12) and that the opening frame of Kump does not
provide structural support and is thus not a frame (Id. at 12).
Appellant’s arguments are not persuasive. The Examiner relies on
Donahue for teaching studs. Ans. 5-6 and 15. Thus, as the Appellant
acknowledges that the Examiner’s citing of Donahue to show studs obviates
some of Appellant’s arguments (Reply Br. 5), Appellant’s arguments
regarding Kump’s structural frame including posts instead of studs and
Kump’s module frame not including studs are not enough to show that the
Examiner erred in finding that the combination of Kump and Donahue
discloses the claimed module having a frame with a plurality of studs.
As to Appellant’s argument that Kump’s opening frame does not
provide structural support, we agree with the Examiner that the argument is
not based on any limitation appearing in the claim. Ans. 17. Appellant also
argues that the Specification and claims indicate to one of ordinary skill in
the art that the claimed module frame is a traditional frame. App. Br. 9.
Claims are given their broadest reasonable interpretation consistent with the
Specification, and a particular embodiment is not read into the claim if the
claim language is broader than that embodiment. As Appellant shows with
the definitions of “frame” from secondary sources specific to the
construction art, the term “frame” can include more than a traditional frame.
See App. Br. 9. Moreover, the Examiner cites opening 41 of Kump (Ans. 5),
which Kump describes and shows as including a hollow frame 42 (Kump,
col. 5, ll. 4-5, and Fig. 6). Therefore, Appellant’s arguments regarding the
term “frame” do not show that the Examiner erred in his rejection.
Appellant also argues that one skilled in the art cannot combine a
traditional frame assembly with the external structural frame or module
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frame of Kump without undue experimentation, and thus, Kump is not
enabling with regard to traditional framing methods. App. Br. 12-13. We
are not persuaded. Appellant has not met the burden of establishing that
undue experimentation would be required. Appellant has only presented a
conclusory statement in the form of attorney argument that alleges undue
experimentation would be required. Appellant’s argument also fails to
address any of the Wands factors. See In re Wands, 858 F.2d 731, 737 (Fed.
Cir. 1988).
Appellant argues that Kump and Donahue fail to disclose a
multiframe opening incorporating studs and medial cross-members. App.
Br. 13-14. We are not persuaded. A preponderance of the evidence
indicates that the Examiner correctly finds that Kump discloses medial
cross-members 42, 46 and that Donahue discloses studs 70, 12, 95, and 99.
Ans. 5.
Appellant also argues that the Examiner has not made explicit the
reason Kump and Donahue can be combined. App. Br. 16 and Reply Br. 5.
We disagree. The Examiner finds that Kump and Donahue disclose the
limitations of the claims and concludes that it would have been obvious to
include the studs of Donahue in the module of Kump in order to reinforce
and strengthen the module. See Ans. 5-6. Thus, in view of the record before
us, the Examiner has provided an explicit reason for combining Kump and
Donahue.
Appellant further argues that Kump and Donahue teach away from
each other. App. Br. 16. This argument is not persuasive because in order
to teach away, a reference must criticize, discredit, or otherwise discourage
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the solution claimed. Appellant does not cite any portion of Kump or
Donahue as discouraging the claimed prefabricated house.
Appellant also argues that modifying Kump to include the studs of
Donahue would create sharp edges that would weaken the module of Kump.
App. Br. 17 and Reply Br. 5. Appellant further argues that combining Kump
and Donahue is impossible because the combination cannot have a stud that
is part of the opening frame. Reply Br. 5-6. We are not persuaded as the
Examiner’s proposal to include the studs in the frame 42 of opening 41 does
not require creating sharp edges, as contended by Appellant, because one of
ordinary skill would readily appreciate that studs can be made part of frame
42 without creating such sharp edges or weakening the module frame.
Appellant further argues that “it is impossible to combine [Kump and
Donahue] without destroying the object of the Donahue reference” and that
“Donahue when combined with Kump would be ‘unsatisfactory for its
intended purpose.’” App. Br. 17-18. We are not persuaded. If the proposed
modification or combination of the prior art would change the principle of
operation of the reference being modified, not the reference providing the
modification, then the teachings of the references are not sufficient to render
claims prima facie obvious. In re Ratti, 270 F.2d 810 (CCPA 1959). The
Examiner proposes modifying Kump with Donahue (Ans. 5-6), and
Appellant provides no showing that Kump as modified by Donahue would
be unsatisfactory for Kump’s intended purpose.
Accordingly, for the reasons supra, we sustain the Examiner’s
rejection of claims 1, 2, 4, 9-11, 17, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Kump and Donahue.

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Obviousness based on Kump, Donahue, and Derman
The Examiner finds that Kump and Donahue lack cross members
removably coupled to studs and thus cites Derman as disclosing cross-
members removably coupled to studs, as recited by claims 5, 6, 14, and 15.
Ans. 7-8. The Examiner states that it would have been obvious to
removably couple studs to cross-members “to allow for a greater degree in
variation of size of the opening for the modules . . . as shown by Derman.”
Id. at 8. Appellant argues that the rejection is not properly supported
because the Examiner failed to provide key support for his finding of
obviousness. App. Br. 18-19. The Examiner replies that the rejection is
supported by the motivation of “allow[ing] for variation in the size of the
opening.” Ans. 23.
We agree with Appellant. The Examiner finds that Derman discloses
a reinforcing strip 35 and channeled strip 27 that are removably coupled to a
frame strip 19 and channel 22. Ans. 7-8. However, Derman fails to indicate
that these components can vary the size of any opening, and the Examiner
does not indicate how one of ordinary skill in the art would recognize that
these components allow for varying the size of an opening. Thus, based on
the record before us, the Examiner fails to provide articulated reasoning
based on rational underpinnings.
Therefore, we cannot sustain the Examiner’s rejection of claims 5, 6,
14, and 15 under 35 U.S.C. § 103(a) as unpatentable over Kump, Donahue,
and Derman.
Obviousness based on Kump, Donahue, and Prigmore
The Examiner finds, inter alia, that Prigmore discloses a fixed space
portion and a passive space portion. Ans. 8. Appellant argues that Prigmore
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fails to disclose a passive space and a fixed space as defined in the
Specification. App. Br. 19-20 (citing Spec. 8, ll. 19-31) and Reply Br. 11-
13.
Appellant’s argument is not persuasive. The Specification at page 8,
lines 20-21, states that a “[f]ixed space does not compress” and that a “fixed
space is rigid and does not include foldable panels 18.” The Examiner cites
Figure 7 of Prigmore as showing a fixed space portion having non-foldable
walls. Ans. 8. Figure 7 of Prigmore shows a gabled roof portion 60 that
does not compress and does not include foldable panels, and thus meets the
definition of a fixed space. Also, the Specification states that a “[f]ixed
space is typically any space that has functionality beyond providing
volume.” Spec. 8, ll. 21-22. Emphasis added. The inclusion of the word
“typically” indicates that the fixed space can be, but is not limited to, a space
that has functionality beyond providing volume, and thus, the Specification
does not exclude a space that only provides volume, as contended by
Appellant. App. Br. 20 and Reply Br. 12.
The Specification also states that a “passive space is compressible
space, i.e., that which may be folded.” Spec. 8, ll. 24-25. Figure 7 of
Prigmore shows panels 12c and 12d with hinges so that a building unit can
be collapsed. See also Prigmore, col. 8, ll. 14-18. Therefore, the Examiner
did not err in determining that Kump as modified by Prigmore discloses a
fixed space portion and a passive space portion, as defined by the
Specification and as recited by claims 8 and 19.
Appellant also argues that a core module, which has both fixed and
passive spaces, is an indoor room and that the roof of Prigmore is not an
indoor room. App. Br. 20 (citing Spec. 8, ll. 13 and 17-18). Appellant’s
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argument is unpersuasive because the Specification states that “core modules
11 are a series of connectable modules 10 which are, generally, indoor
rooms . . .” Spec. 8, ll. 12-13. Emphasis added. The use of the word
“generally” does not limit the core module to only indoor rooms. Thus, the
Specification does not limit the recitation of “core modules” by claims 8 and
19, as contended by Appellant. App. Br. 20.
Appellant further argues that the Examiner has failed to provide
explicit findings and key support for a finding of obviousness. App. Br. 20.
We are not persuaded. The Examiner states that Prigmore discloses foldable
panels, fixed and passive spaces, and that these features permit transporting
of a prefabricated unit. Ans. 8. See also Prigmore, col. 8, ll. 7-9 and 14-20,
and Fig. 7. The Examiner then concludes that “[i]t would have been obvious
. . . to modify Kump to include foldable panels and the fixed and passive
spaces to permit transport of the prefabricated unit as shown by Prigmore et
al.” Id. Thus, based on the record before us, the Examiner provides
articulated reasoning based on rational underpinnings.
Appellant does not provide any other arguments regarding the
patentability of claims 7 and 16. See App. Br. 19-20 and Reply Br. 11-13.
Accordingly, in view of the record before us, we sustain the Examiner’s
rejection of claims 7, 8, 16, and 19 under 35 U.S.C. § 103(a) as unpatentable
over Kump, Donahue, and Prigmore.

DECISION
We affirm the Examiner’s rejection of claims 13-15 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
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out and distinctly claim the subject matter which Appellant regards as the
invention.
We affirm the Examiner’s rejection of claims 1, 2, 4, 9-11, 17, and 18
under 35 U.S.C. § 103(a) as unpatentable over Kump and Donahue.
We reverse the Examiner’s rejection of claims 5, 6, 14, and 15 under
35 U.S.C. § 103(a) as unpatentable over Kump, Donahue, and Derman.
We affirm the Examiner’s rejection of claims 7, 8, 16, and 19 under
35 U.S.C. § 103(a) as unpatentable over Kump, Donahue, and Prigmore.
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-IN-PART

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