Ex Parte Zirbel et al

Patent Trial and Appeal Board

Aug 29, 2014

11943954 (P.T.A.B. Aug. 29, 2014)

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.
11/943,954 11/21/2007 Mark E. Zirbel MET-004 4417
114199 7590 08/29/2014
Monahan & Company, LLC
201 E. Park Avenue
Greenville, SC 29601
EXAMINER
IHEZIE, JOSHUA K
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
08/29/2014 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 MARK E. ZIRBEL and BRYANT A. ZAVITZ
____________________

Appeal 2012-005279
Application 11/943,954
Technology Center 3600
____________________

Before JENNIFER D. BAHR, JAMES P. CALVE, and HYUN J. JUNG,
Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Mark E. Zirbel and Bryant A. Zavitz (“Appellants”) appeal under 35
U.S.C. § 134 from a final rejection of claims 11–16. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2012-005279
Application 11/943,954
2
CLAIMED SUBJECT MATTER
The claims are related to “a concrete stair that is pre-cast.” Spec.
1:11. Sole independent claim 11, reproduced below, is representative of the
claimed subject matter.
11. A stair comprising first and second beams
and a plurality of steps formed by a tread and a
riser, wherein the steps have an upper side formed
by a top of the tread and a front of the riser, and a
flat underside, wherein the steps are suspended
between and abutting the first and second beams,
wherein the stair is an integral, monolithic
structure of pre-cast concrete, wherein the first
beam has a top, which is coextensive with the
upper side of the steps and a bottom, which
projects below the underside of the steps, and
wherein the second beam has a top, which projects
above the upper side of the steps.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hanson
Baldi
Weingarten
US 3,805,464
US 5,493,823
US 5,632,124
Apr. 23, 1974
Feb. 27, 1996
May 27, 1997

REJECTIONS
Claims 11–14 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hanson and Baldi.1

1 The Examiner also rejects claims 11–14 and 16 under 35 U.S.C. § 103(a)
as unpatentable over Baldi and Hanson. Ans. 7. The order in which prior
art is applied in a rejection is not considered to be significant. See, e.g., In re
Bush, 296 F.2d 491, 496 (CCPA 1961) (“[i]n a case of this type where a
rejection is predicated on two references each containing pertinent disclosure
Appeal 2012-005279
Application 11/943,954
3
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Hanson, Baldi, and Weingarten.2

ANALYSIS
The Examiner finds that Hanson substantially discloses the stair of
claim 11 but does not disclose a “beam having a top which is coextensive
with the upper side of the steps and a bottom, which projects below the
underside of the steps, and wherein the second beam has a top, which
projects above the upper side of the steps.” Ans. 5 (citing Hanson, Figs. 1,
2). The Examiner finds Baldi discloses “side beams (16, 18), whereby the
top of the one beam is extensive with the top of each tread and front of each
riser, so that this side of the steps forms the top of said beam (18), with the
other beam . . . abutting the other side of each step, said other beam having a
top and bottom with the top extending above the plane passing through the
top of each tread, with the bottom of said other beam being at least
substantially the same plane as the bottom of each tread (16).” Id. (citing
Baldi, Fig. 1). The Examiner concludes that “[i]t would have been obvious
. . . to modify the monolithic concrete stair of Hanson with the beam
orientation of Baldi in order to make it possible for the concrete stair of
Hanson to be installed in different orientations and also to simulate the
appearance of an expensive wooden staircase while increasing the strength
of the stairway.” Id.

which has been pointed out to the applicant, we deem it to be of no
significance, but merely a matter of exposition, that the rejection is stated to
be on A in view of on B instead of B in view of A, or to term one reference
primary and the other secondary.”).
2 The Examiner also rejects claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Baldi, Hanson, and Weingarten. Ans. 9.
Appeal 2012-005279
Application 11/943,954
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The Examiner also finds that Baldi substantially discloses the stair of
claim 11 but “does not disclose that the stair is monolithic and integral.”
Ans. 7. The Examiner finds that Hanson discloses a stair that is “an integral,
monolithic structure of pre-cast concrete.” Id. at 7–8 (citing Hanson, Figs. 1,
2). The Examiner determines that “[i]t would have been obvious . . . to
make the stair of Baldi concrete, monolithic[,] and integral as taught by
Hanson to provide a structurally sound structure that can withstand heavy
loads.” Id. at 8.
The Appellants argue that “Baldi does not teach that there is any
structural advantage to the location of the stringers relative to the treads”
because “Baldi teaches that the stringers may be located (a) one above and
one below the treads; (b) both above the treads; or (c) both below the
treads.” App. Br. 4 (citing Baldi, col. 1, ll. 24–29). The Appellants further
argue that “the Examiner’s unsupported conclusion directly contradicts
Hanson, who teaches that the ‘U-shaped’ construction of the stairs is critical
to its performance.” Id. at 5 (citing Hanson, col. 3, ll. 11–35).
The Appellants’ arguments are persuasive. The Examiner cites Figure
1 of Baldi. Ans. 5, 7. In describing Figure 1, Baldi states that “those skilled
in the art will appreciate that both stringers may be located either above or
below the treads depending on various architectural considerations.” Baldi,
col. 1, ll. 26–29. The Examiner also cites Figure 1 of Hanson. Id. at 4–5, 7–
8. In its description of Figure 1, Hanson states that “[c]onstruction of a
reinforced concrete stair without the use of the U-shaped construction of the
present invention would require . . . heavy thickness of concrete, absent the
deep U-shaped construction . . . in order to make the stair self-supporting of
its own weight and the loads to be anticipated in service.” Hanson, col. 3, ll.
11–19. Hanson also describes that its U-shaped concrete stair provides “an
Appeal 2012-005279
Application 11/943,954
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extremely strong construction.” Id. at ll. 29–30. Thus, Baldi does not teach
a particular arrangement of beams, and Hanson teaches that a beam
arrangement forming a u-shape provides an extremely strong construction.
Therefore, Hanson does not support the Examiner’s rationale to modify the
u-shaped monolithic concrete stair of Hanson with the beam arrangement of
Baldi shown in its Figure 1 in order to increase the strength of the stairway.
See id. at 5. The Examiner has not provided a reason supported by a rational
underpinning to explain why a skilled artisan would have been prompted to
modify Hanson with Baldi to provide the claimed configuration when
Hanson teaches that a U-shaped concrete stair provides increased strength.
Hanson also does not support the Examiner’s alternate rationale “to
make the stair [shown in Figure 1] of Baldi concrete, monolithic and integral
as taught by Hanson to provide a structurally sound structure that can
withstand heavy loads.” See Ans. at 8. The alternate rationale fails to
provide an articulation of an adequate reason why one having ordinary skill
in the art would have been led to make the stair of Baldi concrete,
monolithic, and integral when Hanson states the arrangement of Baldi show
in Figure 1 does not avoid “heavy thickness of concrete . . . in order to make
the stair self-supporting of its own weight and the loads to be anticipated in
service.” See Hanson, col. 3, ll. 11–19.
Accordingly, we do not sustain the rejections of claims 11–14 and 16
under 35 U.S.C. § 103(a) as unpatentable over the proposed combinations of
Baldi and Hanson. For claim 15, the Appellants rely on their arguments for
the underlying base claim 11. App. Br. 9, 10. The Examiner’s application
of the additional teachings of Weingarten does not cure the deficiency in the
proposed combinations of Baldi and Hanson. Thus, for the reasons above,
we do not sustain the rejections of claim 15 under 35 U.S.C. § 103(a) as
Appeal 2012-005279
Application 11/943,954
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unpatentable over the proposed combinations of Baldi, Hanson, and
Weingarten.
DECISION
For the above reasons, the Examiner’s rejections of claims 11–16 are
reversed.

REVERSED

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