Ex Parte Viviano

Board of Patent Appeals and Interferences

Jun 15, 2011

11453657 (B.P.A.I. Jun. 15, 2011)

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.
11/453,657 06/15/2006 Robert P. Viviano 4444 6051
45295 7590 06/15/2011
FLOYD B. CAROTHERS
CAROTHERS AND CAROTHERS
445 FORT PITT BOULEVARD, SUITE 200
PITTSBURGH, PA 15219
EXAMINER
CAJILIG, CHRISTINE T
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
06/15/2011 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 ROBERT P. VIVIANO
____________________

Appeal 2010-001424
Application 11/453,657
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and WILLIAM V.
SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/453,657
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-3 and 5-10. Claim 4 has been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).

The Invention
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A prefabricated self aligning three dimensional support
structure for a roof, such as a dormer or a porch roof, the
support structure comprising:
a parallel aligned spaced series of at least three
substantially rigid sheet truss members consisting of sheet
goods, wherein each sheet truss member defines full facade
contours of one side of the roof;
a parallel aligned spaced series of substantially rigid
sheet purlin members consisting of sheet goods running
perpendicular to and at right angles with said truss members
and interlocked with said truss members with opposing inter-
engaging slots to form a self aligning three dimensioned
support structure with flush upper sheet edges forming exterior
exposed surfaces for supporting roof sheathing; and
substantially rigid roof sheathing consisting of sheet
goods covering upper edges of said truss and purlin members
with spaced tabs protruding upwardly from said upper edges of
said truss members and received in corresponding slots in said
sheathing.

References
The Examiner relies upon the following prior art references:
Simmons
Tawzer
Winskye
DeSalvo
US 298,790
US 5,586,414
US 6,494,013 B2
US 6,923,705 B2
May 20, 1884
Dec. 24, 1996
Dec. 17, 2002
Aug. 2, 2005
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Rejections
I. Claims 1-3, 5, and 8-10 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Simmons and DeSalvo.
II. Claim 6 is rejected under § 103(a) as unpatentable over
Simmons, DeSalvo, and Tawzer.
III. Claim 7 is rejected under § 103(a) as unpatentable over
Simmons, DeSalvo, and Winskye.

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GROUND of REJECTION.

OPINION
In relevant part, the Examiner found that Simmons describes “sheet
truss members consisting of sheet goods” as required by claim 1. Ans. 4-5.
Appellant raises the dispositive issue of whether the truss members in
Simmons are “sheet goods.” Appeal Br. 11. In particular, Appellant argues
that Simmons shows conventional stick framing and that “sheet goods” is
defined in the Specification to exclude conventional stick framing. Id.
Appellant cites to paragraphs 4 and 20 of the Specification to provide the
definition, but these paragraphs only provide examples of “sheet goods” and
do not set forth a definition with “reasonable clarity, deliberateness, and
precision.” Instead, the paragraphs merely describe examples of “sheet
goods” in a general fashion. See In re Paulson, 30 F.3d 1475, 1480 (Fed.
Cir. 1994) (an inventor must define specific terms with “reasonable clarity,
deliberateness, and precision” in order to be his own lexicographer, as
opposed to merely describing “in a general fashion certain features”).
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Nevertheless, “sheet goods” must be given appropriate meaning. See
Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
(denouncing claim constructions that render phrases in claims superfluous);
Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“claims
are interpreted with an eye toward giving effect to all terms in the claim”).
The Examiner’s position is that Simmons’ truss members are “sheet goods”
because they are “broad, relatively thin members.” Ans. 9. Even assuming
that such an interpretation is commensurate with one of ordinary skill’s
understanding of “sheet goods,” 1 reviewing Simmons, we find insufficient
evidence to suggest that the truss members are broad and thin. Simmons’
detailed description of the figures does not provide an indication as to the
nature of the truss member’s construction. The three notches in figure 3, in
which the truss members h sit, do not appear thin relative to the truss
member height (shown in figure 8). Indeed, figure 10 shows the side view
of trusses h as rectangles with a width about half of the height (similar to
2x4s). Accordingly, the Examiner’s finding that Simmons describes “broad,
relatively thin members” that satisfy the “sheet goods” limitation of claim 1
is not supported by the outward disclosure in Simmons or any other basis
articulated by the Examiner. See In re Warner, 379 F.2d 1011, 1016-17
(CCPA 1967) (the examiner has the initial duty of supplying the requisite
factual basis and may not, because of doubts that the invention is patentable,
resort to speculation, unfounded assumptions, or hindsight reconstruction to
supply deficiencies in the factual basis). As such, the Examiner’s rejection
of claim 1, and of claims 2, 3, 5, 8, and 10, which depend from claim 1, is in
error. The Examiner separately rejects claims 6 and 7, but does not set forth

1 Neither the Examiner nor Appellant proposes how one of ordinary skill in
the art would interpret “sheet goods.”
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any additional findings or reasoning addressing whether it would have been
obvious to use sheet goods for the truss and purlin members of Simmons as
modified by DeSalvo. Consequentially, the Examiner’s rejections of claims
6 and 7 are likewise in error.
Claim 9 requires that the truss members be made of a particular sheet
good: plywood. In rejecting claim 9, the Examiner found that plywood is a
known material and that it would have been within the level of skill in the art
to select plywood as a material to build the truss members. Ans. 6.
Appellant argues that the Examiner has made an “unfounded conclusory
statement[]” and that there “is no teaching[] in the references as to how such
a combination should be made.” Appeal Br. 17-18. However, the
obviousness analysis does not require the prior art to teach or suggest a
combination or how it is to be made. In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (a proper conclusion of obviousness requires “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”) (cited with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (holding a rigid insistence on teaching, suggestion, or
motivation [TSM] is incompatible with its precedent concerning
obviousness)). “[A] court must ask whether the improvement is more than
the predictable use of prior art elements according to their established
functions.” Id. at 417. One of ordinary skill in the art has reason to pursue
known options. In re Leshin, 277 F.2d 197, 199 (CCPA 1960) (the selection
of a known material based upon its suitability for the intended use is a
design consideration within the skill of the art). In this case, the Examiner
found that plywood is a known material “within the general skill of a worker
in the art.” Ans. 6. Appellant does not challenge the Examiner’s finding
that plywood is a material known to one of ordinary skill. We find no
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evidence in the record before us that the use of plywood as a building
material would introduce any unpredictable or unexpected results, nor do we
find evidence that there is any unique challenge to one of ordinary skill in
using plywood to fabricate structures such as trusses for a porch. See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (holding obvious the inclusion of a known device because there was
no evidence presented that the inclusion of the known device in the
combined device was “uniquely challenging or difficult for one of ordinary
skill in the art” or “represented an unobvious step over the prior art”).
Accordingly, we do not find error in the Examiner’s conclusion, articulated
in the rejection of claim 9, that it would have been obvious to utilize
plywood sheet goods for the truss and purlin members of Simmons as
modified by DeSalvo.
Appellant alleges errors with the Examiner’s rejection of claim 1 that
we did not address above because of a controlling, reversible issue.
However, these arguments are pertinent to the rejection of claim 9, because
claim 9 includes all of the features of claim 1. Appellant argues that
Simmons does not describe “at least three … truss members.” Appeal Br.
12. Simmons, however, describes three truss members h, h’, and h2.
Simmons, p. 1, ll. 104; see also figs. 3, 10 (noting three notches for the
trusses). Appellant also argues that the “notches” of Simmons are not
“slots.” Appeal Br. 14. However, a reference need not teach a limitation
ipsissimis verbis. In re Bode, 550 F.2d 656, 660 (CCPA 1977). Appellant
does not provide any reason why the “notches” of Simmons do not satisfy
the “slot” limitation; the “notches” of Simmons appear to form opposing
interlocking recesses for forming a self-aligning three dimensional support
structure and thus appear to be slots as required by the claim.
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In light of the above, we do not find error in the Examiner’s
conclusion that the subject matter of claim 9 would have been obvious.

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1-3, 5-8, and 10 under 35 U.S.C. § 103(a) as unpatentable over Simmons
and DeSalvo. Because a dependent claim includes all of the limitations of
the claim from which it depends, the Examiner’s conclusion that claim 9 is
obvious is also a conclusion that claim 1 is obvious for the same reasons.
See Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007)
(when a dependent claim is “found to have been obvious, the broader claims
. . . must also have been obvious”). In effect, the Examiner’s conclusion
with respect to the utilization of plywood for the truss and purlin members of
Simmons cures the deficiency identified above with respect to the “sheet
good” limitation of claim 1. Appellant does not allege any other errors in
the Examiner’s rejection of dependent claims 2, 3, 5-8, and 10. As such, we
adopt the Examiner’s findings and rationale set forth in the rejection of
claims 1-3, 5-8, and 10 not relating to “sheet goods,” with the findings and
rationale relating to plywood set forth in the rejection of claim 9. In
particular, we find that plywood is a well-known building material with the
advantages of being widely available and inexpensive. In view of the level
of ordinary skill in the art, which would include a familiarity of common
building materials and their advantages, it would have been obvious to select
a sheet good such as plywood as the particular building material for the truss
and purlin members of the prefabricated support structure for a roof in
Simmons as modified by DeSalvo. KSR, 550 U.S. at 421 (“When there is a
design need or market pressure to solve a problem and there are a finite
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number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp.”);
Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
2009) (“while an analysis of obviousness always depends on evidence … it
also may include recourse to logic, judgment, and common sense available
to the person of ordinary skill that do not necessarily require explication in
any reference”). Accordingly, for this reason and the reasons set forth by the
Examiner in the rejection of claims 1-3 and 5-10, the subject matter of
claims 1-3, 5-8, and 10 would have been obvious.

DECISION
For the above reasons, we reverse the Examiner’s decision regarding
claims 1-3, 5-8, and 10, and affirm the Examiner’s decision regarding claim
9. We enter a new ground of rejection of claims 1-3, 5-8, and 10.

FINALITY OF DECISION
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board.” In addition to affirming the
Examiner's rejection of one or more claims, this decision contains a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b)
provides “[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that
Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner.…

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.…
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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; 37 C.F.R. § 41.50(b)

Appeal 2010-001424
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