Ex Parte Wendel

Board of Patent Appeals and Interferences

Oct 28, 2010

10880338 (B.P.A.I. Oct. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONALD M. WENDEL
____________

Appeal 2009-008415
Application 10/880,338
Technology Center 3600
____________

Before LINDA E. HORNER, JENNIFER D. BAHR, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Ronald M. Wendel (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting under 35 U.S.C. § 112, second
paragraph, claims 1, 5-8, and 10 as being indefinite; and rejecting under 35
U.S.C. § 103(a) claims 1 and 5-7 as being unpatentable over Goldstein (US
5,222,845, iss. Jun. 29, 1993) and Bouchet (US 6,176,057 B1, iss. Jan. 23,
2001); claims 1 and 8 as being unpatentable over Bouchet and Goldstein;
claim 10 as being unpatentable over Bouchet, Goldstein, and Ezard (US
4,738,071, iss. Apr. 19, 1988); and claims 11, 13, and 14 as being
unpatentable over Diaz (US 6,193,449 B1, iss. Feb. 27, 2001), Bouchet, and
Goldstein. We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002).
The Invention
Appellant’s claimed invention is directed to formed metal pieces used
in wood stud framing for making connections, nail shields, and
reinforcements. Spec. 1:9-11.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Indefiniteness rejection
The basis of the Examiner’s rejection is that it is not clear whether the
phrase “of approximately 1 ¼ inches” in claim 1 modifies “a predetermined
minimum thickness” or “said drilled hole.” Ans. 11. In other words,
according to the Examiner, claim 1 is unclear as to whether the dimension of
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the “predetermined minimum thickness” or “said drilled hole” is required to
be "approximately 1 ¼ inches.” Further, the Examiner concludes that if the
phrase “of approximately 1 ¼ inches” modifies “said drilled hole,” it is not
clear what dimension of the hole is required to be approximately 1 ¼ inches.
Ans. 4.
Accordingly, a threshold issue is whether those skilled in the art
would understand to what the limitation “of approximately 1 ¼ inches” in
claim 1 applies, so as to be able to ascertain the metes and bounds of the
claim.2
We do not agree with Appellant that it is clear from a reading of lines
8-11 of claim 1 “that the limitation of 1 ¼ inches is referring not to the hole,
but to the predetermined minimum thickness” (App. Br. 4). We find that the
grammatical structure of the passage in which this dimension limitation is
recited would support either an interpretation that the drilled hole must have
a dimension of 1 ¼ inches or an interpretation that the predetermined
minimum thickness must be 1 ¼ inches. Further, neither interpretation is
implausible on its face. Moreover, we find that Appellant’s Specification
describes both the minimum remaining thickness and the hole diameter of
the invention as typically being on the order of 1 ¼ inches. Spec. 4:11-12.
As such, both interpretations are equally consistent with the Specification.
Thus, the Examiner is justified in holding the claim unpatentable as
indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (“if

2 The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
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a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”).
Accordingly, we sustain the rejection of claim 1 as being indefinite.
Appellant does not present any separate argument as to how any of claims 5-
8 and 10 resolves the ambiguity inherited from claim 1, from which they
depend. Thus, we also sustain the like rejection of dependent claims 5-8 and
10.
Obviousness Rejections
We recognize the inconsistency implicit in our holding that claim 1 is
indefinite with a holding that claim 1, or any of its dependent claims, is
unpatentable under 35 U.S.C. § 103. Normally, when substantial confusion
exists as to the interpretation of a claim and no reasonably definite meaning
can be ascribed to the terms in a claim, a determination as to patentability
under 35 U.S.C. § 103 is not made. See In re Steele, 305 F.2d 859, 862
(CCPA 1962) and In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
However, in this instance, we consider it to be desirable to avoid the
inefficiency of piecemeal appellate review. See Ex parte Ionescu, 222
USPQ 537, 540 (Bd. App. 1984). For the reasons outlined below, we are
able to reach a determination on the rejections of claim 1, and the claims
depending therefrom, under 35 U.S.C. § 103(a), despite the ambiguity
therein.

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Goldstein and Bouchet
Appellant argues, inter alia, that the opening in Goldstein’s drill guide
bushing 60 prevents the front wall of Goldstein’s drill guide from acting as a
nail shield on a building wall stud. App. Br. 5. We agree with Appellant.
While Goldstein’s bushing 60 is retained in aperture 66 by set screws
70, and thus is removable from the front face (first leg 20) (col. 4, ll. 49-53),
such removal would leave behind an aperture 66. The 1-inch inner diameter
of bushing 60 (col. 4, ll. 32-37), or the even larger diameter of aperture 66,
provides more than ample, unhindered access for passage of a nail through
the first leg 20 and into the structure to which the drill guide is affixed.
Thus, the front wall (first leg 20) of Goldstein’s drill guide is not
“substantially solid to be able to serve as a nail shield covering a hole drilled
into said stud,” as called for in claim 1 and described in Appellant’s
Specification (Spec. 1:12-14).
The Examiner does not rely on Bouchet for any teaching that would
remedy the deficiency of Goldstein discussed above. See Ans. 5 (relying on
Bouchet’s teaching of sheet steel as the material for a combination guide
hole and nail shield piece).
For the above reasons, we are constrained to reverse the rejection of
claim 1, and of claims 5-7, which depend from claim 1.
Bouchet and Goldstein
Claim 1:
In rejecting claim 1, the Examiner found that Bouchet does not
disclose that the drilled hole would be approximately 1 ¼ inches, but
concluded it would have been obvious to provide a hole of such size as a
matter of design choice in order to make the hole the correct size for piping
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or cabling. Ans. 7, 12. Appellant argues that to have either a hole or a
remaining stud thickness (spacing of the hole from the front wall) of 1 ¼
inches would defeat the intended purpose of Bouchet of accommodating an
oversized pipe which has weakened the stud excessively. App. Br. 7.
Appellant also argues that Bouchet does not describe use of the bracket as a
drill guide, and further does not teach a hole, but rather a U-shaped notch 13.
App. Br. 6, 7.
Appellant’s arguments do not persuade us of error in the Examiner’s
rejection.
First, we agree with the Examiner’s finding that Bouchet’s main
opening 13 satisfies the guide hole limitation of claim 1 (Ans. 6). Nothing
in claim 1 distinguishes the claimed “guide hole” from an opening having
the shape of Bouchet’s main opening 13.
Further, whether or not Bouchet describes use of the bracket as a drill
guide is not germane to the patentability of claim 1 over Bouchet, as
modified in view of Goldstein. “It is well settled that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Bouchet’s bracket reasonably appears to be capable of such use, and
Appellant does not allege, much less show, that Bouchet’s bracket is not
capable of being used as a drill guide.
As for the hole size, Bouchet teaches that a notch of more than 25% of
the width of a stud is oversized pursuant to the Uniform Building Code.
Col. 1, ll. 18-23. Bouchet’s bracket is intended to mend studs in which such
oversized notches have been made, so as to meet design compression load
requirements. Col. 1, ll. 64-67. For a 2x4 stud, having an actual width of
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3.5 inches (col. 1, ll. 60-61), a notch sufficiently large to accommodate a
building component having a diameter of approximately 1 ¼ inches
necessarily would exceed the 25% (.875 inch) limit, and thus would be
oversized. Accordingly, an opening 13 of approximately 1 ¼ inches to
accommodate such a building component would certainly fall within the
range of opening sizes contemplated by a person of ordinary skill in the art
reading Bouchet’s disclosure. Likewise, a notch, or drilled hole, in the stud
leaving only approximately 1 ¼ inches remaining on either side of the notch
or hole would result in an oversized notch or hole. Accordingly, an opening
13 sized to accommodate such a notch or hole would fall within the range of
opening sizes contemplated by a person of ordinary skill in the art reading
Bouchet’s disclosure. Thus, Appellant’s argument that to have either a hole
or a remaining stud thickness (spacing of the hole from the front wall) of
1 ¼ inches would defeat the intended purpose of Bouchet is not well
founded.
For the above reasons, Appellant has not convinced us that the
Examiner’s rejection should be reversed. We sustain the rejection of claim 1
as being unpatentable over Bouchet and Goldstein.
Claim 8:
We do not sustain the rejection of claim 8 as being unpatentable over
Bouchet and Goldstein. The Examiner’s rejection is grounded in part on the
Examiner’s proposed modification of Bouchet to provide parallel weakening
lines formed on opposite sides of the hole (opening 13) instead of the one
series of weakening openings 16 described by Bouchet. Ans. 8. As hinted
at by Appellant (App. Br. 7-8), there would not have been an apparent
reason to provide parallel lines of weakening on opposite sides of opening
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13. The weakening openings 16 of Bouchet are provided to facilitate
bending of second reinforcing member 11 out of the plane defined by first
reinforcing member 10 so that the bracket can be slid around the building
component 9 (col. 5, ll. 50-54). Adding another line of such weakening
openings on the opposite side of opening 13 would do nothing to facilitate
bending of section 11 so as to provide access to opening 13 for sliding onto
building component 9.
Bouchet, Goldstein, and Ezard
The Examiner relies on the argument presented against claim 1 for the
patentability of claim 10. App. Br. 8. The arguments asserted against the
rejection of claim 1 as unpatentable over Bouchet and Goldstein are not
convincing, for the reasons discussed above. They are no more convincing
with respect to the rejection of claim 10 as unpatentable over Bouchet,
Goldstein, and Ezard. Thus, we sustain the rejection of claim 10.
Diaz, Bouchet, and Goldstein
Method claim 11 is directed to a method of drilling holes in building
wall studs, comprising the steps of forming a sheet metal piece and attaching
said metal piece to said stud. As correctly pointed out by Appellant, Diaz
does not describe a method for drilling holes in building wall studs. App.
Br. 8. Further, Diaz does not disclose a step of attaching the metal piece to a
stud, as explicitly called for in claim 11. The Examiner does not rely on any
teaching in Bouchet or Goldstein to make up for this deficiency, and, in
particular, does not propose to modify the method of Diaz by attaching the
drill template to a stud, much less articulate a reason why it would have been
obvious to do so. The Examiner’s finding that “Diaz discloses a method that
is capable [of] that intended use of drilling a hole in a stud” (Ans. 13) does
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not establish an apparent reason to actually do so,3 as called for in method
claim 11. Thus, we agree with Appellant that “the method recited in claim
11 is not derivable” from the combination of Diaz, Goldstein, and Bouchet
proposed by the Examiner. App. Br. 8.
Accordingly, we reverse the rejection of claim 11, and of claims 13
and 14, which depend from claim 11.

DECISION
The Examiner’s decision is affirmed as to claims 1, 5-8, and 10, and
reversed as to claims 11, 13, and 14.
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

hh

JOHN R. BENEFIEL
525 Lewis Street
BIRMINGHAM, MI 48009

3 A conclusion of obviousness must be supported by explicit findings and
analysis establishing an apparent reason to combine the known elements in
the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007).