The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICHARD C. WILSON
and
PATRICK M. CULPEPPER
__________
Appeal No. 2006-0812
Application No. 09/391,294
___________
ON BRIEF
___________
Before BARRETT, MEDLEY, and MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1-2 and 4-5 of reissue application 09/391,294
of Patent 5,664,376 (08/639,698). Claims 6-23 have been
cancelled. Claim 3 does not appear to be rejected, although it is
not indicated to be allowable.
REPRESENTATIVE CLAIMS
The appellants have indicated (Brief, page 3) that, for the
purposes of this appeal, claims 1-2 and 4 will stand or fall
together. Claim 5 is urged to stand separately. Accordingly, we
reproduce independent claims 1 and 5 below:
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Application No. 09/391,294
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1. A support and insulating member for a corner post made of
thin sheet material and used to enclose one corner of an
external wall of a building, the corner post being spaced
from the external wall to define a longitudinally extending
hollow space therebetween, said support and insulating member
comprising:
a single member having first and second longitudinally
extending portions, the first portion lying in a first plane
angularly disposed with respect to the second portion lying
in a second plane, wherein said first and second
longitudinally extending portions have lengths adapted for
corresponding to the length of the corner of the building and
wherein said single member defines a cornered inner surface
adapted for contacting the building and a spaced apart
cornered outer surface parallel to said cornered inner
surface adapted for contacting the corner post;
a first support member flange lying in the first plane
and extending outwardly from said first portion a
predetermined distance and extending continuously along the
entire length of said first portion and from said cornered
inner surface radially outwardly; and
a second support member flange lying in the second plane
and extending outwardly from said second portion a
predetermined distance and extending continuously along the
entire length of said second portion and from said cornered
inner surface radially outwardly.
5. An insulating support comprising:
a single support member having first and second portions
angularly disposed from each other, said first and second
portions defining a cornered inner surface and a cornered
outer surface parallel to said cornered inner surface, said
single support member having first and second support flanges
extending outwardly from the first and second portions of the
single support member respectively, said first and second
flanges extending continuously along the entire length of the
first and second portions.
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Application No. 09/391,294
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THE REFERENCE
In rejecting the claims under 35 U.S.C. § 102(b), the
examiner relies upon the following single reference:
Hauck 2,091,315 Aug. 31, 1937
THE REJECTION
Claims 1-2 and 4-5 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Hauck.
THE INVENTION
The invention relates to a siding corner post trim piece,
filled with an insulating material.
DISCUSSION
The Rejection of Claims 1-2 and 4-5 Under 35 U.S.C. § 102 (b)
The examiner has found that Hauck describes a member having a
first and second longitudinally extending portions defining a
cornered inner surface each having a radially outwardly extending
flange. (Rejection dated March 21, 2000, page 7, as applied to
claims 1 and 5; see also Rejection dated May 3, 2000, page 7,
paragraph 12).
As regards Claim 1, the appellants argue that Hauck does not
show:
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Application No. 09/391,294
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(i) a first support flange lying in the first plane and
extending outwardly from the first portion, and
(ii) a second support member flange lying in the second plane
and extending outwardly therefrom. (Appeal Brief, pages 8-9).
The support for this position appears to arise from the
appellants’ belief that Hauck’s flanges, while extending beyond
the support members, do not actually extend from them. This is
said to be so because the flange is formed from a different
material and therefore extends from itself, not from the member.
Hauck is said to disclose a metal flange over which the wooden
corner strip may be placed. (Id., page 9).
It is evident that this issue will hinge on an interpretation
of the language of the claim. We, therefore, embark on our
analysis with the words of the claim.
Federal Circuit precedent provides guidance with respect to
the construction of claims undergoing examination. Burlington
Industries, Inc. v. Quigg, 822 F.2d 1581, 1583, 3 USPQ2d 1436,
1438 (Fed. Cir. 1987) (claims undergoing examination are given
their broadest reasonable construction consistent with the
specification). We therefore shall give the claims their broadest
reasonable interpretation, divining whatever guidance as is
appropriate from the specification.
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Application No. 09/391,294
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(i) The Preamble
The preamble of claim 1 reads as follows:
A support and insulating member for a corner post made of
thin sheet material and used to enclose one corner of an
external wall of a building, the corner post being spaced
from the external wall to define a longitudinally extending
hollow space therebetween, said support and insulating member
comprising:
Generally speaking, the preamble does not limit the claims.
DeGeorge v. Bernier, 768 F.2d 1318, 1322 n.3, 226 USPQ 758, 764
n.3 (Fed. Cir. 1985). However, the preamble may be limiting “when
the claim drafter chooses to use both the preamble and the body to
define the subject matter of the claimed invention.” Bell
Communications Research, Inc. v. Vitalink Communications Corp., 55
F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995). If the
preamble is “necessary to give life, meaning and vitality” to the
claim, then the claim preamble should be construed as limiting.
Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 480-81 (CCPA
1951). This is determined “on the facts of each case in view of
the claimed invention as a whole.” In re Stencel, 828 F.2d 751,
754, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987); see also Applied
Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98
F.3d 1563, 1572-73, 40 USPQ2d 1481, 1488 (Fed. Cir. 1996)
(“Whether a preamble stating the purpose and context of the
invention constitutes a limitation . . . is determined on the
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Application No. 09/391,294
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facts of each case in light of the overall form of the claim, and
the invention as described in the specification and illuminated in
the prosecution history.”).
In the present case, it is apparent that the preamble goes to
the intended use of the support and insulating member in the space
between the thin sheet material and the external wall of the
building. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345, 65 USPQ2d 1961, 1965 (Fed. Cir.
2003) ("An intended use or purpose usually will not limit the
scope of the claim because such statements usually do no more than
define a context in which the invention operates."). The preamble
of claim 1 describes the corner post of thin sheet material and
the space defined by that corner post and the exterior wall of the
building, which is the space the claimed support and insulating
member will occupy. No part of the preamble, however, is
necessary to understanding or defining the claimed support and
insulating member.
Furthermore, where the building or corner post do appear in
the claim body, it is in terms of the member being “adapted for”
use with the building. See Loctite Corp. v. Ultraseal, Ltd., 781
F.2d 861, 868, 228 USPQ 90, 94 (Fed. Cir. 1985) ("we interpret
'adapted to remain ... metal surfaces' as merely language of
intended use, not a claim limitation").
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Application No. 09/391,294
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Finally, the corner post and the building do not form a part
of the claimed subject matter.
Accordingly, we conclude that the preamble is non-limiting.
Turning to the claim elements, the first is:
a single member having first and second longitudinally
extending portions, the first portion lying in a first plane
angularly disposed with respect to the second portion lying
in a second plane, wherein said first and second
longitudinally extending portions have lengths adapted for
corresponding to the length of the corner of the building and
wherein said single member defines a cornered inner surface
adapted for contacting the building and a spaced apart
cornered outer surface parallel to said cornered inner
surface adapted for contacting the corner post;
The term “single” is used in conjunction with “member.” Both
terms are undefined in the specification. Both must be read
together in conjunction with the specification to determine the
broadest reasonable interpretation to be afforded the claim. For
example, in construction a door may be a single “member” of the
house, but that door may be composed of several elements affixed
together (panels, windows, framing, and bracing) to create a
construction “member.” In a different context/perspective, those
elements of the door could also be thought of as “members.”
As used in the specification, the “member” is one of a few
components which go into weatherproofing the exterior of a house –
corner post (col. 3, line 26); siding panels (Id., line 27);
oriented strand board outer wall (Id., lines 29-30); and the
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Application No. 09/391,294
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claimed corner support member.
There are several meanings which can be ascribed to the term
“single.”
Webster’s New Collegiate Dictionary (1977) gives the
following meanings at page 1083:
single adj. 1a: not married b: of or relating to celibacy 2:
unaccompanied by others: LONE, SOLE, 3a (1): consisting of or having only one part,
feature, or portion <~ consonants> (2): consisting of one as
opposed to or in contrast with many: UNIFORM
(3) consisting of only one in number
b: having but one whorl of petals or ray
flowers 4a: consisting of a separate unique whole:
INDIVIDUAL ; b: of, relating to, or
involving only one person 5a: FRANK, HONEST b:
exclusively attentive 6: UNBROKEN,
UNDIVIDED 7: having no equal or like: SINGULAR 8: designed
for the use of one person or family only
In the context of home construction, definitions 3a and 6
appear to be the broadest reasonable interpretation – that a
“single member” is one whole building member.
We recognize that this interpretation is not as narrow as a
member which is “uniform throughout” or “formed from a single
homogeneous piece.”
The next claim elements are:
a first support member flange lying in the first plane and
extending outwardly from said first portion a predetermined
distance and extending continuously along the entire length
of said first portion and from said cornered inner surface
radially outwardly; and
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Application No. 09/391,294
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a second support member flange lying in the second plane and
extending outwardly from said second portion a predetermined
distance and extending continuously along the entire length
of said second portion and from said cornered inner surface
radially outwardly.
We need interpret what is meant by “extending outwardly from
said first portion.”
The specification uses this phrase at column 3, lines 36-38
in describing figure 1 as:
In the preferred embodiment (FIG. 1) the corner support
member 10 has two flanges 44 and 46 extending outwardly from
the support member portions 36 and 38.
Figure 1 is reproduced below:1
1 This figure is a cross sectional view of a corner post illustrating a thick
section (36,38) in the inner corner and thinner flanges (44,46) extending
outwardly. (Section 508 Compliance)
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Application No. 09/391,294
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Each of support member portions 36 and 38 is considerably
thicker than the flanges 44 and 46.
The specification does not restrict the flange to any
particular portion of the cross section of the member. We
therefore conclude that the flanges may protrude from any part of
the cross section of the entire member.
We now turn to the crux of the matter – the appellants’ sole
argument raised on appeal regarding claims 1 and 5 is the
contention that the “Hauck reference does not show a first [or
second] support flange lying in a first plane and extending
outwardly from the first [or second] portion” (Appeal Brief, page
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Application No. 09/391,294
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8, lines 20-22). This is based on the appellants’ argument that
the flange of Hauck, while extending beyond the member, does not
extend from the member as it is simply adjacent to the member.
The appellants urge that the flange is made of metal while the
corner is made of wood, two different materials which cannot be “a
single member” (Appeal Brief, page 9, lines 4-5).
Hauck illustrates a composite building corner member with a
metal flange and a corner wooden post.
Hauck Figure 1 reflects a metal corner piece covering the
building sheathing in conjunction with a wooden corner piece.
Hauck Figure 12 is reproduced below:
As may be seen, the Hauck metal flanges 8 and wood portion 6,
when taken together, form each of the first portion and the second
portion as claimed in claims 1 and 5. As discussed above, we
2 Figure 1 of Hauck shows a wooden corner post with an internal metal flange
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Application No. 09/391,294
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interpret “single member” as a building member, which is inclusive
of multiple components fixed together to become that member.
As such, the portions are encompassed by the perimeter of the
metal flange and wooden portions of Hauck. The metal flange,
while extending from itself, comprises a segment of each first and
second portion, and therefore anticipates a flange extending from
the portion.
Accordingly, we shall sustain this rejection as it relates to
claims 1, 2, 4, and 5.
Summary of Decision
The rejection of claims 1-2 and 4-5 under 35 U.S.C. § 102(b)
over Hauck is SUSTAINED.
(Section 508 Compliance).
Appeal No. 2006-0812
Application No. 09/391,294
13
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
SALLY C. MEDLEY )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. MOORE )
Administrative Patent Judge )
cc (via first class mail):
Andrew R. Basile, Esq.
YOUNG & BASILE PC
3001 West Big Beaver Road
Suite 624
Troy, Michigan 48084-3107
