Ex Parte Turner

Patent Trial and Appeal Board

Nov 14, 2017

13893230 (P.T.A.B. Nov. 14, 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.
13/893,230 05/13/2013 Bruce H. Turner 60805.300202 7902
103807 7590 11/16/2017
Intellectual Property Venture Group
3350 Shelby St., Ste. 200
Ontario, CA 91764-5556
EXAMINER
LAUX, JESSICA L
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
pfiler @ ipvglaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE H. TURNER
Appeal 2017-001970
Application 13/893,230
Technology Center 3600
Before JOSEPH L. DIXON, MICHAEL J. STRAUSS, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-001970
Application 13/893,230
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—20, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.
THE INVENTION
The application is directed to “[a]n assembly for protecting a utility
conduit passing through a hole in a stud used in building construction.”
(Abstract.) Claims 1 and 2, reproduced below, exemplify the subject matter
on appeal:
1. An assembly for protecting a utility conduit passing through
a hole in a stud used in building construction, comprising:
a sleeve;
a single unitary sleeve plate;
said sleeve having:
a body portion forming a hollow trough longitudinally
and defining a body length, wherein said trough has a
circular side section with a diameter defining a body
width, and wherein said circular side section is changeable
to adapt said body width to coincide with a range of sizes
of the hole in the stud;
said body portion further having an inserted end and a
worked end at opposed ends of said trough to permit
engagement of the sleeve into the hole in the stud by
inserting said inserted end into the hole and pressing on
said worked end;
said body portion within said trough containing a
sleeve fillant;
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Application 13/893,230
a stop portion at said worked end of said body portion
to stop insertion of the sleeve into the hole beyond a
proximate face of the stud; and
a retention portion in the sleeve to affirmatively retain
the sleeve within the hole once inserted there in; and
said sleeve plate having:
a plate portion including a plate surface conforming to
said proximate face of the stud;
a plate opening to insertably receive said sleeve; and
a plate attachment mechanism to attach said sleeve
plate to the stud.
2. A sleeve for protecting a utility conduit passing through a hole
in a stud used in building construction, comprising:
a single unitary body portion forming a hollow trough
longitudinally and defining a body length, wherein said trough
has a circular side section with a diameter defining a body width,
and wherein said circular side section is changeable to adapt said
body width to coincide with a range of sizes of the hole in the
stud;
said body portion further having an inserted end and a worked
end at opposed ends of said trough to permit engagement of the
sleeve into the hole in the stud by inserting said inserted end into
the hole and pressing on said worked end;
said body portion within said trough including a sleeve fillant;
a stop portion at said worked end of said body portion to stop
insertion of the sleeve into the hole beyond a proximate face of
the stud; and
a retention portion in the sleeve to affirmatively retain the
sleeve within the hole once inserted there in.
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Appeal 2017-001970
Application 13/893,230
THE REFERENCES AND THE REJECTIONS
1. Claims 1—3, 5, and 7—11 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Thomson (US 5,103,609; issued Apr. 14,
1992). (See Final Act. 2—5.)
2. Claims 1, 4, and 12—20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Thomson and Colwell (US 8,161,696 B2; issued Apr. 24,
2012). (See Final Act. 5—10.)
3. Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable
over Thomson. (See Final Act. 10—11.)
ANALYSIS
Anticipation: Claim 1
Appellant argues Thoreson does not anticipate claim 1 because the
claim recites “a single unitary sleeve plate” and Thoreson shows four
separate mounting clips 50. (App. Br. 7.) The Examiner responds that
“Thoreson discloses the claimed unitary sleeve plate at element 50” and that
“Appellant’s argument that Thoreson discloses four discreet [sic] elements
50 does [not] mean that Thoreson does not disclose a unitary sleeve plate
50” because “[t]he claim does not preclude multiple unitary sleeve plates.”
(Ans. 5.) The Examiner concludes that “[t]he (one single) element 50 of
Thoreson is certainly considered unitary as it is a single unit that functions as
a single unit and as defined by appellant.” (Id. )
We agree with Appellant. The claim requires that the “single unitary
sleeve plate” have “a plate portion including a plate surface conforming to
said proximate face of the stud; a plate opening to insertably receive said
sleeve; and a plate attachment mechanism to attach said sleeve plate to the
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Application 13/893,230
stud.” (See, e.g., Spec., Fig. 18a (plate 80, plate opening 84, plate prongs
90).) We conclude that Thoreson’s mounting clips 50, shown in Figure 1
below, are insufficient to support an anticipation rejection because, although
each is “unitary,” an individual clip does not include “a plate opening to
insertably receive said sleeve,” as required by claim 1.
Figure 1 of Thoreson is a perspective view
of an intumescable fire stop device.
For this reason, we do not sustain the rejection of claim 1 under
Section 102.
Anticipation: Claims 2, 3, 5, and 7—11
Regarding claim 2, Appellant argues the claimed “body portion
element is unitary, meaning, in particular, that its body, stop, and retention
portions are all part of the same undivided unit” and “[o]ne of ordinary skill
in the art would see [the] four discreet [sic] mounting clips (50) as
equivalent to Appellant’s stop and retention portions, but [the] four discreet
[sic] mounting clips (50) cannot be reconciled with this unitary limitation.”
(App. Br. 8.) Appellant further argues that “while Thorenson’s [sic] collar
(12) alone may be unitary, it is unable to work in the manner of Appellant’s
sleeve, having no stop, and retention portions or corresponding
functionality.” (Id.)
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Application 13/893,230
The Examiner responds that “[t]he Office does not rely upon elements
50 to anticipate the stop and retention portions of the body portion,” but
“[rjather the Office indicates element 12 to equate to the unitary body
portion, having retention portion 22 (formed as part of body 12 as seen in the
figures and disclosure) and stop portion 48 (formed as part of body 12 as
seen in the figures and disclosure).” (Ans. 6.) The Examiner states that
“[cjlearly the body portion 12 including elements 48 and 22, which are
formed as part of the body 12, are unitary.” (Ans. 6.)
Appellant responds that “Thorenson’s [sic] element 22 is not a
‘retention portion,’ they are ‘heat conducting tabs 22,” that “extend in an
opposite direction than Appellant’s retention portions” and “do nothing to
retain a sleeve within a hole in a wall stud,” while “claim 2 recites ‘a
retention portion in the sleeve to affirmatively retain the sleeve within the
hole [in the wall stud] once inserted there in.’” (Reply Br. 9.)
We agree with Appellant. Thoreson states that “[t]he collar 12
includes a plurality of triangular-shaped heat conducting tabs 22 that extend
outwardly from the 20 inner surface 14 of the collar 12” and that “[t]he heat
conducting tabs 22 are configured to extend into the interior of an
intumescent material 24 so as to support the intumescent material 24 against
the inner surface 14 of the collar 12.” (Thoreson 3:19—21 & 30—33.) Given
that tabs 22 are only described as supporting the intumescent material
against the inner surface of the collar, we fail to see, and the Examiner does
not explain, how that structure “affirmatively retain[s] the sleeve within the
hole once inserted there in,” as claimed.
We accordingly do not sustain the rejection of claims 2, 3, 5, and 7—11
under Section 102.
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Application 13/893,230
Obviousness: Claim 1
Regarding the rejection of claim 1 under Section 103, Appellant
argues the claim “recites a unitary sleeve plate” but Thoreson “discloses no
sleeve plate at all, or, arguably a plurality of mounting clips (50) that
function as a set similar to a sleeve plate in some respects” and “Colwell
teaches that its wall facing surface (46, 47) (sleeve plate equivalents) each
have two mounting plate parts (41).” (App. Br. 8.)
The Examiner responds that the “Office relies upon Colwell for
teaching a unitary sleeve plate 40” and that “Colwell identifies the sleeve
plate as a single unit 40 made up of two units 41 fastened together to form
the whole sleeve plate.” (Ans. 6, citing Colwell 5:20—38.)
The issue for us to resolve, therefore, is whether Colwell’s mounting
plate 40, shown below, is “a single unitary sleeve plate,” as claimed.
“FIG. 6 is a perspective view of exemplary mounting plate parts
that can be mated together to form a mounting plate. ” (Colwell 2:34—35.)
Having reviewed the reference, we conclude that the mounting plate
40 is “a single unitary sleeve plate,” as claimed. It is true that the plate is
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Application 13/893,230
assembled from two parts 41, but the reference explains that, in use, “tabs 42
may be fastened to each other thus securing mounting plate parts 41 to each
other (e.g., by the use of one or more screws, bolts, nails, rivets, etc.)” and
that “other methods and devices may be used to secure tabs 42 to each other
(e.g., liquid adhesive, caulk, double-faced adhesive sheeting, and the like).”
(Colwell 6:48—52.) We conclude that once the halves are fastened together
as described, the result is “unitary” structure. In other words, we conclude
that although the plate may not be “unitary” when the parts are separated, it
is “unitary” when the parts are connected using the described methods.
We are not persuaded that a different result should follow from the
Board’s decision in Appeal No. 2010-003621. The claim terms at issue in
that case were “unitary die-stamped construct” and “a unitary cast
construct,” where “die-stamped” and “cast” were methods of manufacture
that were limited by “unitary,” so as to require that the part had been
manufactured (constructed by stamping or casting) as a single piece. The
claims at issue here do not include such limitations and, instead, merely
recite the part itself which, as we find, is “unitary” after the two parts are
joined.
Because we find Appellant’s argument unpersuasive, we sustain the
rejection of claim 1 as obvious. For the same reason, we sustain the
obviousness rejection of dependent claim 6, for which no additional/separate
arguments for patentability are offered.
Obviousness: Claim 4
Claim 4 adds the limitation “said sleeve fillant includes a material that
expands in response to moisture.” Appellant argues “[t]he Office has not
cited any art that includes a material that expands in response to moisture.”
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(App. Br. 8.) The Examiner responds that “the rejection clearly addresses
claim 4, relying on teachings in Colwell to anticipate the clamed material.”
(Ans. 7.)
The Final Action states that Thoreson “does not expressly disclose
that the fillant includes a material that expands in response to moisture,” but
that “it is known that intumescent material expands in response to water to
and is used to help protect pipe/cable poke through from water damage,” as
“[f]or example, Colwell discloses such at least at Col. 10 (and as noted in
applicant’s disclosure).” (Final Act. 10.)
Because column 10 of Colwell does not, in fact, describe “a material
that expands in response to moisture,”1 and because the Examiner does not
identify where in Appellant’s disclosure there is an admission that prior art
intumescent material expanded due to moisture,2 we find insufficient
evidence to sustain the obviousness rejection of claim 4.
Obviousness: Claims 12—20
Regarding claim 12, Appellant argues the combination of Thoreson
and Colwell does not include a unitary sleeve and a unitary sleeve plate.
(App. Br. 9.) The Examiner responds that “Thoreson is relied upon for
1 Column 10 of Colwell describes testing that “involves subjecting the
firestopped through-penetration (after the exposure to fire) to a stream of
water to determine the ability of the system to prevent the passage of water”
(10:43—54), but says nothing about the fire stop material expanding in the
presence of water.
2 Appellant’s Detailed Description of the Invention states that “[depending
on an application, one or more triggers can activate the sleeve fillant 94” and
one “trigger can be moisture.” (Spec. 119:12—13.) The Examiner may not
appropriately rely on portions of Appellant’s own disclosure that are not
expressly, or at least implicitly, identified as prior art.
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teaching a unitary sleeve” and that “[w]ith regards to the unitary sleeve
plate, the Office relies upon Colwell for teaching a unitary sleeve plate 40.”
(Ans. 6.)
We find Appellant’s arguments unpersuasive because, as discussed
above, Colwell does teach a unitary sleeve plate (mounting plate 40), and
Thoreson does teach a unitary sleeve (collar 12).
For these reasons, we sustain the obviousness rejection of claim 12, as
well as the obviousness rejections of claims 13—20, which are not separately
argued.
DECISION
The anticipation rejection of claims 1—3, 5, and 7—11 is reversed.
The obviousness rejections of claims 1, 6, and 12—20 is affirmed. The
obviousness rejection of claim 4 is reversed.
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).
AFFIRMED-IN-PART
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