Ex Parte TiramaniDownload PDFBoard of Patent Appeals and InterferencesAug 28, 201210653523 (B.P.A.I. Aug. 28, 2012) Copy Citation 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. Appeal 2010-008385 Application 10/653,523 2 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. Appeal 2010-008385 Application 10/653,523 3 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 Appeal 2010-008385 Application 10/653,523 4 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 Appeal 2010-008385 Application 10/653,523 5 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 Appeal 2010-008385 Application 10/653,523 6 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. Appeal 2010-008385 Application 10/653,523 7 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 Appeal 2010-008385 Application 10/653,523 8 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 Appeal 2010-008385 Application 10/653,523 9 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 Appeal 2010-008385 Application 10/653,523 10 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 mls Copy with citationCopy as parenthetical citation