Ex Parte Vetesnik et al

Patent Trial and Appeal Board

Jun 17, 2013

11836181 (P.T.A.B. Jun. 17, 2013)

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.
11/836,181 08/09/2007 Alena Vetesnik 85732-202 2749
23529 7590 06/17/2013
ADE & COMPANY INC.
2157 Henderson Highway
WINNIPEG, MB R2G1P9
CANADA
EXAMINER
PAINTER, BRANON C
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
06/17/2013 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 ALENA VETESNIK and JAN VETESNIK
____________

Appeal 2011-005637
Application 11/836,181
Technology Center 3600
____________

Before WILLIAM V. SAINDON, WILLIAM A. CAPP, and JILL D. HILL,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005637
Application 11/836,181

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STATEMENT OF THE CASE
Alena Vetesnik and Jan Vetesnik (Appellants) appeal under 35 U.S.C.
§ 134 from a final rejection of claims 1-4, 6-8, and 20-22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “a structural panel formed
wholly or primarily from wood and to a modular building constructed using
the panel which can be shipped to an installation site in substantially
completed form to minimize on-site labour.” Spec, p. 1, ll. 9-12. Claim 1
illustrates the subject matter on appeal and is reproduced below.
1. A structural panel comprising:
at least four parallel joists including two
outermost joists and a plurality of intermediate
joists;
a first pair of parallel perimeter rail
members connected across respective ends of the
parallel joists at right angles thereto and arranged
to define first sides of the panel such that the
parallel joists are continuous between the first pair
of rail members;
the two outermost parallel joists forming a
second pair of parallel perimeter rail members
arranged to define second sides of the panel at
right angles to the first sides;
the first pair of perimeter rail members and
the joists having top surfaces lying in a common
top plane and bottom surfaces lying in a common
bottom plane;
each of the joists having a first face on a first
side thereof connected to a second face on a
second side of a next adjacent one of the joists by a
plurality of diagonal planar bridge members;
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each of the diagonal planar bridge members
extending diagonally between said joist and said
next adjacent joist with one end edge of the
diagonal planar bridge member being fastened to a
side face of said joist and an opposed end edge
fastened to a side face of said next adjacent joist;
the plurality of diagonal planar bridge
members being arranged in zigzag manner back
and forth between said joist and said next adjacent
joist;
such that the plurality of diagonal planar
bridge members form a plurality of first apexes
where two of the bridge members meet along the
first face on the first side of said joist;
and such that the plurality of diagonal planar
bridge members form a plurality of second apexes
where two of the bridge members meet along the
second face on the second side of said next
adjacent joist;
a planar top cover sheet lying in said
common top plane and adhesively bonded to said
top surfaces of each of said first pair of said rail
members and each of said joists;
and a planar bottom cover sheet lying in said
common bottom plane and adhesively bonded to
said bottom surfaces of each of said first pair of
said rail members and each of said joists.
EVIDENCE

The Examiner relies on the following evidence:
Slayter US 2,186,538 Jan. 9, 1940
Lawrence US 4,091,582 May 30, 1978
Wolf US 6,244,016 B1 Jun. 12, 2001

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REJECTIONS
Claims 1-4, 6-8, and 20-22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Slayter, Wolf, and Lawrence. Ans. 4.1
ANALYSIS
Claims 1-3, 7 and 8
Appellants argue these claims as a group; claims 2, 3, 7, and 8 stand
or fall with claim 1. App. Br. 4. Regarding claim 1, the Examiner alleges
that Slater discloses all of the elements of the claims (including joists 25 and
bridges 26) except for the first pair of parallel perimeter rails connected
across respective ends of the joists, or the bridge members being arranged
diagonally and extending in a zigzag pattern forming an apex along a face of
adjacent joists. Ans. 4-5. The Examiner finds that Wolf discloses a panel
with a first pair of joists (8, 9), a pair of parallel perimeter rails (6, 7)
connected across respective ends of the joists at right angles thereto, and
bridge members (10, 11) that are arranged diagonal to the joists they
connect, with the bridge members extending in a zigzag pattern and forming
a first apex along the first face of a joist (8). Ans. 5.
The Examiner concludes that it would have been obvious to one
having ordinary skill in the art at the time of the invention to modify
Slayter’s floor panels by adding perimeter parallel rails as taught by Wolf to
provide a framework at the far ends of the panel to strengthen the panel.
Ans. 5. The Examiner also concludes that it would have been obvious to
one of ordinary skill in the art to modify Slayter’s bridge members by

1 The objections and the rejection of claim 1 under 35 U.S.C. § 112, second
paragraph, were withdrawn by the Examiner in the Advisory Action dated
April 13, 2010.
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arranging them diagonally in a zigzag pattern as taught by Wolf to reinforce
the panel. Ans. 6. In other words, to arrange the bridge members 26 of
Slayter to create a truss-like zigzag structure. The Examiner also finds that,
while Wolf only teaches two diagonal bridge members, Slayter teaches at
least four bridge members and, when arranging the bridge members of
Slayter diagonally as taught by Wolf, the bridge members will form first and
second apexes as claimed. Id.
The Examiner also finds that although Slater and Wolf do not
expressly disclose cover sheets connected to top and bottom surfaces of rail
members and joists with adhesive, Lawrence discloses the use of adhesive in
framing. Ans. 6 (citing Lawrence, col. 2, ll. 10-13). The Examiner
concludes that it would have been obvious to one having ordinary skill in the
art at the time of the invention to modify the combined panel of Slater and
Wolf by connecting the covers to the rails and joists with adhesive because
“Lawrence discloses that adhesive and nails or screws are equivalent
attachment means, and since doing so would provide a strong connection
between the cover panels and reinforcing joists and rails.” Id.
Appellants argue that Slayter provides “no suggestion that its
assembly forms a stiff structural panel of the type with which the present
invention is concerned” (App. Br. 6), and that their invention provides a
stronger, stiffer panel than that of the combination of Slayter and Wolf (App.
Br. 9). The Examiner responds that Appellants are not claiming any
particular strength characteristics of the structural panel, such that the
features upon which Appellant relies for this argument are not recited in the
claims. Ans. 12. We agree with the Examiner that the stiffness and strength
of the panel are not recited in the claims. To the extent that Appellants are
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arguing that the definition of the term “structural panel” include such
limitations, we find no evidence or argument that such a limited definition is
appropriate (or would distinguish over Slayter).
Appellants argue that Slayter, individually, provides no details
regarding where bridge members 26 are located or how many are present.
App. Br. 6. Slayter, however, shows multiple cross members 26 located
between adjacent joists 25 in Fig. 1. Ans. 9.
Appellants also argue against Slayter and Wolf individually, stating
that Slayter lacks end rails and zigzag bridge members and Wolf lacks joists
and side rails extending through the thickness of the panels with top and
bottom sheets attached to the top and bottom surfaces thereof. App. Br. 6-7.
The Examiner responds that Appellants are attempting to argue against the
references individually, and that one cannot show non-obviousness by
attacking references individually where the rejection is based on a
combination of references. See In re Keller, 642 F.2d 413 (CCPA 1981); In
re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). We agree with the
Examiner that Appellants’ attempts to argue the references individually is
not persuasive.
The Examiner explains that Wolf is relied on to teach features of the
invention when combined with the base reference Slayter and, with respect
to the first pair of perimeter rail members, Wolf discloses a similar panel
with initial framing members along two of the ends and perpendicular
framing members at right angles to the initial framing members, and that
adding a first pair of perimeter rail members to Slayter’s floor panel would
have been obvious to one of ordinary skill in the art at the time of the
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invention to provide a framework at the far ends of the panel to strengthen
the panel. Ans. 9-10 (citing Ans. 5).
Appellants also argue that Wolf does not teach diagonal bridge
members defining apexes connecting the joists, and that there is no
disclosure in Wolf that multiple diagonal bridge members would be in a
zigzag layout defining apexes. App. Br. 7-8, 11. The Examiner responds
that Wolf teaches providing cross members in an alternating diagonal
relationship and that angling the multiple bridge members 26 of Slayter in
the alternating diagonal relationship taught by Wolf would, in fact, result in
the zigzag pattern claimed, as well as first and second apexes as claimed.
Ans. 6, 10. Appellants have not refuted the Examiner’s assertion that
angling Slayter’s bridge member 26 diagonally would result in the claimed
zigzag pattern, except for an allegation that the Examiners conclusion is
incorrect because “many different arrangements of such diagonals could be
provided.” App. Br. 8. Appellants, however, provide no explanation here as
to why the arrangement of Wolf (i.e., a common truss), is improper for
incorporation into Slayter’s structure in the manner proposed by the
Examiner. We are not persuaded by such conclusory arguments.
Appellants further argue that the constructions of Slayter and Wolf are
“entirely different from one another and operate in an entirely different
manner.” App. Br. 8. The Examiner fairly assumes that Appellants are
arguing that Slayter and Wolf are non-analogous art, and responds that “both
Slayter and Wolf disclose building panels with internal, reinforcing
frameworks, and as such are both in the same field of endeavor and
concerned with the same problem.” Ans. 10-11. Appellants do not define
the field of use and we find the Examiner’s state field to be reasonable.
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The Examiner fairly considers Appellants’ statement that “no simple
combination of elements is possible since they are mutually inconsistent,” to
be arguing that Slayter and Wolf cannot be bodily incorporated with one
another. Ans. 11. The Examiner responds that the test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in anyone or all of the
references. Id. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. See In
re Keller, 642 F.2d 413 (CCPA 1981). Id. We are not persuaded by
Appellants’ conclusory argument that Wolf and Slayter are mutually
inconsistent.
For the reasons set forth above, we sustain the rejection of claims 1-3,
7 and 8.
Claims 4, 6, and 20
With respect to claims 4, 6, and 20, Appellants additionally argue that
Wolf’s bridge members 10, 11 are “defined by two separate parts” and do
not span between the top and bottom cover sheets and are not adhesively
bonded to the cover sheets, and that if one adds Wolf’s features to Slayter
the bridge members would have the two-part form of Wolf because “this is a
clear characteristic of the construction disclosed.”
The Examiner, however, does not rely on Wolf for the disclosure of
the bridge member spanning between top and bottom cover sheets. Rather,
the Examiner finds that Slayter teaches bridge members spanning the cover
sheets. Ans. 8. Additionally, as stated above, one cannot show non-
obviousness by attacking references individually where the rejection is based
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on a combination of references. We therefore are not persuaded by
Appellants’ argument and sustain the rejection of claims 4, 6, and 20.
Claim 21
Regarding claim 21, Appellants argue that Wolf discloses only one
apex and therefore does not teach apexes on one side joist being located at a
corresponding position to the apexes on the other side of the joist. App. Br.
10-11. To the extent that Appellants are arguing that it would not have been
obvious to provide a zigzag pattern for Slayter’s joist if Slayter’s joists are
arranged diagonally as taught by Wolf. As set forth above, such an
argument is not persuasive. Regarding Appellants’ arguments regarding
loading of apexes and load transfer, the Examiner responds that Appellant
has not recited the load transfer characteristics in claim 21. Ans. 12. We
agree with the Examiner that, to the extent that such load transfer is
disclosed in Appellants’ Specification, limitations from the Specification
should not be read into the claims. We sustain the rejection of claim 21.

Claim 22
Appellants argue that claim 22 combines all of the features set forth
above to provide “a stiff structural panel not in any way contemplated by
any of the prior art documents.” Appellants raise no new arguments for the
patentability of claim 22. We sustain the rejection of claim 22 for the
reasons set forth above.
DECISION
We AFFIRM the rejection of claims 1-4, 6-8, and 20-22 under 35
U.S.C. § 103(a) as unpatentable over Slayter, Wolf, and Lawrence.
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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