Ex Parte Wilson et al

Board of Patent Appeals and Interferences

Aug 16, 2011

11107422 (B.P.A.I. Aug. 16, 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.
11/107,422 04/15/2005 David J. Wilson 60137-350 4408
82074 7590 08/16/2011
Carlson, Gaskey & Olds/Masco Corporation
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
LE, HUYEN D
ART UNIT PAPER NUMBER
3751
MAIL DATE DELIVERY MODE
08/16/2011 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 DAVID J. WILSON,
EVAN CARPENTER CRAWFORD, and JEFFREY A. DEBOER
____________

Appeal 2009-012477
Application 11/107,422
Technology Center 3700
____________

Before JOHN C. KERINS, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David J. Wilson et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 7-23. Claims 1-6 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2009-012477
Application 11/107,422

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The Invention
The claims on appeal relate to a tub enclosure and a method of
installing a tub enclosure. Claim 7, reproduced below, is illustrative of the
subject matter on appeal.
7. A tub enclosure comprising:
a back wall having a first end and a second
end opposing said first end;
a first side wall attached to said first end by
a first hinge;
a second side wall attached to a second end
by a second hinge, said first side wall, said back
wall and said second side wall forming a U-shaped
enclosure, wherein at least a portion of said back
wall is generally parallel to said first side wall and
said second side wall when positioned in a U-
shape.

The Rejections
The following Examiner’s rejections are before us for review:
Claims 11 and 15-17 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Skyhawk1 (U.S. Patent No. 3,574,869, issued Apr. 13, 1971).
Claims 7-10, 12-14, 22, and 232 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Skyhawk and Mustee (U.S. Patent No.
3,940,806, issued Mar. 2, 1976).

1 The reference name actually appears to be either “van Skyhawk” or “Van
Skyhawk.” However, since both the Examiner and Appellant refer to the
reference as “Skyhawk,” we also refer to the reference as “Skyhawk” for
consistency.
2 On Apr. 16, 2009, the Examiner corrected the claim listing in the ground of
rejection on page 4 of the Examiner’s Answer to include claims 12-14, 22,
and 23, all of which were discussed in the body of the rejection. However,
claim 18 was not addressed in the body of the rejection on page 4 of the
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Application 11/107,422

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Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Skyhawk, Mustee, and Halliday (U.S. Patent No.
2,885,722, issued May 12, 1959).
Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Skyhawk, Mustee, and Deldime (U.S. Patent No.
3,385,462, issued May 28, 1968).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Anticipation based upon Skyhawk
Appellants list independent claim 11 and its dependent claims 15 and
17 as being appealed (App. Br. 2) and allege in a heading that the rejection
of claims 11, and 15-17 under 35 U.S.C. § 102(b) is improper (App. Br. 3),
but Appellants present no arguments of error with respect to the Examiner’s
rejection of claims 11, 15, and 17 under 35 U.S.C. § 102(b) as anticipated by
Skyhawk (App. Br. 3-4 and Reply Br. 1-2). Thus, we summarily sustain the
Examiner’s rejection of claims 11, 15, and 17 under 35 U.S.C. § 102(b) as
anticipated by Skyhawk.
Turning to claim 16, dependent on claim 11, the Examiner finds that
Skyhawk discloses a back wall (back panel 10) having a first portion (at
recess 13) with first and second ends and having second portions (arcuate

Examiner’s Answer, but instead was addressed in a separate ground of
rejection on page 5 of the Examiner’s Answer. Hence, we have removed
claim 18 from the claim listing of this ground of rejection.
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Application 11/107,422

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portions of back panel 10 on which numerals 28 and 34 are situated). Ans.
3. The Examiner also finds that Skyhawk discloses first and second side
walls (end panels 16, 18) attached to the second portions of the back wall to
form a U-shaped enclosure. Id. The Examiner alleges that Skyhawk’s
Figure 1 clearly shows that an interior side of each side wall 16, 18 is offset
(at abutments 37 and 39) from an interior side (inner side of flanges 20, 22)
of the second portions (arcuate portions of back panel 10 on which numerals
28 and 34 are situated) of the back wall (back panel 10) in a direction toward
the opposite side wall (end panels 18, 16). Ans. 6.
Appellants contend that claim 16 is not anticipated by Skyhawk
because the interior sides of Skyhawk’s side walls (end panels 16, 18) are
not offset from the interior side of the second portions of the back wall (back
panel) toward the opposite side wall, but rather are offset (at abutments 37,
39) in a direction away from the opposite side walls (i.e., toward their
respective side walls 24, 26). App. Br. 3-4 and Reply Br. 1-2. Appellants
also contend that the inner sides of the flanges 20, 22 cannot constitute the
interior sides of the second portions (arcuate portions of back panel 10 on
which numerals 28 and 34 are situated) of the back wall (back panel 10) as
suggested by the Examiner because the interior sides of the second portions
of the back wall (back panel 10) of Skyhawk can only be those portions of
the back panel 10 that actually face the interior of the tub enclosure (i.e., the
flanges 20, 22 are positioned between the inner and outer surfaces of the tub
enclosure shown in its installed position in Skyhawk’s Figure 1). Reply Br.
2.
We agree with Appellants that claim 16 is not anticipated by
Skyhawk. A determination of anticipation begins with claim construction,
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followed by a comparison of the construed claim to the prior art. Key
Pharm. v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998). When
Skyhawk’s tub enclosure is in its installed position as shown in Figure 1, a
person of ordinary skill in the art would not consider the interior sides of the
flanges 20, 22 to constitute the interior sides of the second portions of the
back panel 10 in order to meet the claim language of claim 16. Indeed, a
person of ordinary skill in the art would only consider those portions of
Skyhawk’s back panel 10 to the right of abutment 37 and to the left of
abutment 39, i.e., those portions of the back panel 10 actually forming the U-
shaped enclosure, to be interior portions. With the interior sides of the
second portions of Skyhawk’s back panel 10 properly construed according
to how a person of ordinary skill in the art would interpret that language,
Skyhawk’s tub enclosure does not satisfy claim 16’s language of “in a
direction toward the opposite side wall” and therefore, claim 16 is not
anticipated by Skyhawk.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 16 under 35 U.S.C. § 102(b) as anticipated by Skyhawk.
Obviousness based upon Skyhawk and Mustee
The Examiner finds that Skyhawk discloses the invention of claim 7
substantially as claimed, except that Skyhawk fails to disclose hinges for
attaching the side walls to the back wall. Ans. 4. The Examiner also finds
the Mustee discloses a U-shaped shower enclosure in Figures 16 and 17
having side walls 138, 139 joined to the back wall 140 via hinges 165, 166
to enable the shower enclosure to be folded for shipment and easily erected
during installation. Id. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art to have attached Skyhawk’s
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side walls with a hinge as taught by Mustee to enable the tub enclosure to be
knocked down to a compact shipping position and easily reassembled. Id.
Appellants contend that the Examiner’s proposed modification of
Skyhawk’s tub enclosure with the hinges of Mustee is an impermissible
hindsight reconstruction. App. Br. 4-5.
While we agree with the Examiner that Skyhawk does not disclose
hinges attaching the first and second side walls to first and second ends of
the back wall as recited in claim 7 and that Mustee does disclose a U-shaped
shower enclosure having side walls attached to a back wall by hinges, we
find that the Examiner has not articulated a reasonable basis with rational
underpinnings as to how the two references of Skyhawk and Mustee could
be combined to render the claimed subject matter prima facie obvious. See
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“‘[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’” quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). For example, it is unclear to us
the rational basis for combining the two references since Skyhawk’s end and
back panels 16, 18, 10 are not integral and Mustee’s living hinges 165, 166
are integrally formed of the wall material (i.e., reduced sectional thickness of
the material defining junctions of walls as discussed at column 8, lines 22-26
of Mustee). Here, the only suggestion for providing hinges to attach the first
and second side walls to the back wall in the Skyhawk construction appears
to come from Appellants’ disclosure.
Therefore, we do not sustain the rejection of claims 7-10, 12-14, 22,
and 23 under 35 U.S.C. § 103 as unpatentable over Skyhawk and Mustee.
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Since the rejections of claims 18-21 rely upon the same lack of a reasonable
basis with rational underpinnings and since neither Halliday nor Deldime
remedy the deficiency of Skyhawk and Mustee, we also do not sustain the
Examiner’s rejections of claims 18 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Skyhawk, Mustee, and Halliday and of claims 20 and 21
under 35 U.S.C. § 103(a) as unpatentable over Skyhawk, Mustee, and
Deldime.

DECISION
We affirm the Examiner’s rejection of claims 11, 15, and 17 under 35
U.S.C. § 102(b) as anticipated by Skyhawk.
We reverse the Examiner’s rejections of: claim 16 under 35 U.S.C.
§ 102(b) as anticipated by Skyhawk; claims 7-10, 12-14, 22, and 23 under
35 U.S.C. § 103(a) as unpatentable over Skyhawk and Mustee; claims 18
and 19 under 35 U.S.C. § 103(a) as unpatentable over Skyhawk, Mustee, and
Halliday; and claims 20 and 21 under 35 U.S.C. § 103(a) as unpatentable
over Skyhawk, Mustee, and Deldime.
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

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