Gueli, Carmen

Patent Trials and Appeals Board

Jan 2, 2020

14710692 - (D) (P.T.A.B. Jan. 2, 2020)

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.
14/710,692 05/13/2015 Carmen Gueli MSH-958 1230
8131 7590 01/02/2020
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640
EXAMINER
AGUDELO, PAOLA
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
01/02/2020 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 CARMEN GUELI
__________

Appeal 2019-004436
Application 14/710,692
Technology Center 3600
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2, 4, and 6. Claims 1, 3, 5, and 7–10
have been withdrawn from consideration. Br. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. “The inventor[] [is] the real part[y] in interest.” Appeal Brief
(“Br.”) 2, filed Nov. 7, 2017.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to “joist hangers that are imbedded
into poured concrete for the purpose of retaining the joint support.” Spec.
1:9–11. Claim 2 is independent.
Claim 2 is representative of the claimed subject matter and recites:
2. A hanger for concrete walls, said hanger comprising a
unitary metal U-shaped truss support having a first side having a
bottom edge, and a second side having a bottom edge;
said first side having a downwardly extending first leg
unitarily connected to said bottom edge of said first side;
said second side having a downwardly extending second
leg unitarily connected to said bottom edge of said second side,
each side having openings which receive fasteners that pass
through the openings; each said downwardly extending leg
having a plurality of barbs extending therefrom
wherein said hanger is a hanger for concrete walls and the
barbs prevent the hanger from pulling out of the concrete wall.

THE REJECTION
Claims 2, 4, and 6 stand rejected under 35 U.S.C. § 103 as
unpatentable over Horton (US 5,488,810, issued Feb. 6, 1996) and Polyak
(US 3,365,222, issued Jan. 23, 1968).

ANALYSIS
Appellant does not offer arguments in favor of claims 4 and 6 separate
from those presented for independent claim 2. Br. 3–5. We select claim 2
as the representative claim, and claims 4 and 6 stand or fall with claim 2.
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Horton discloses a hanger having most of the
claimed limitations including “downwardly extending first and second legs
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([lower portions] 27s) . . . which receive fasteners that pass through []
openings [(nail holes 22]).” Final Act. 2–32 (citing Horton 2:29–31, Figs. 1,
3); see also Horton Fig. 12. The Examiner acknowledges that “[a]lthough
Horton’s downwardly extending legs have means for fastening to a
structural member (See fig. 12), it does not explicitly teach each of said
downwardly extend[ing] legs have a plurality of barbs extending therefrom.”
Final Act. 3. The Examiner, however, finds that Polyak discloses “a device
for supporting a joist” in which “the legs of the device include a plurality of
barbs ([fastening means] 18) extending therefrom.” Id. (citing Polyak 2:54);
see also Polyak Figs. 2, 3. The Examiner concludes that it would have been
obvious to modify the hanger of Horton to incorporate the barbs of Polyak
into the device of Horton “because nails and barbs are functionally
equivalent materials” and are well-known in the art “for being used
interchangeably . . . so as to provide a secure attachment without the need of
additional materials which may delay the installation process.” Final Act. 3.
Appellant contends that “Horton teaches a device for joining two
beams” and “Horton does not teach or suggest a hanger for [a] concrete
wall.” Br. 4. Appellant further contends that “[i]n Horton the lower legs are
not embedded into the concrete” and that “[o]ne skilled in the art would not
look to Horton because of this difference.” Id.
Appellant’s contentions are unpersuasive. “[T]he patentability of
apparatus or composition claims depends on the claimed structure, not on
the use or purpose of that structure.” Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). “A patent

2 Final Office Action (“Final Act.”), dated June 12, 2017.
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applicant is free to recite features of an apparatus either structurally or
functionally . . . . Yet, choosing to define an element functionally, i.e., by
what it does, carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). “‘Functional’ terminology may render a claim quite broad.
By its own literal terms a claim employing such language covers any and all
embodiments which perform the recited function.” In re Swinehart, 439
F.2d 210, 213 (CCPA 1971). Therefore, “[i]f the prior art structure is
capable of performing the intended use, then it meets the claim” (id.). Here,
claim 2 recites a “hanger for concrete walls” and “the barbs prevent the
hanger from pulling out of the concrete wall.” Br. 3 (Claims App.).3 The
Examiner correctly notes that “the hanger is not being claimed in an
installed position with a concrete wall,” but merely requires the capability of
such installation, and correctly finds that “[t]he hanger of the combination is
fully capable of being installed in a concrete wall, thus fully capable of
being a hanger for concrete walls.” Final Act. 3; see also id. at 4, Ans. 3–4.4
To the extent that Appellant is contending that Horton is non-
analogous art, this contention is unpersuasive.
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.

3 We refer to the Claims Appendix of the Revised Appeal Brief filed Jan. 2,
2018.
4 Examiner’s Answer (“Ans.”), dated Mar. 9, 2018.
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In re Clay, 966 F.2d 656, 658–659 (Fed. Cir. 1992). The Specification
discloses that the purpose of “joist hangers” is for “retaining the joint
support.” Spec. 1:9–11. Horton describes “hangers” (Horton 1:10–13) and
discloses “a novel post cap that is especially useful for joining a horizontal
beam to a vertical supporting post” (id. at 1:16–18; emphasis added). Thus,
in regard to the first criteria, both Appellant and Horton are in the same field
of endeavor, i.e., hangers and joint support. Accordingly, Horton is
analogous art.
Appellant contends that “Horton is not even suitable as a hanger for
concrete walls” and that “Horton does not teach or suggest using barbs to
prevent the hanger from pulling out of the concrete wall.” Br. 4.
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references []. [The reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.”
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the
Examiner relies on Polyak, not Horton, for the disclosure of using extending
barbs to resist the removal of the hanger from concrete. See Final Act. 3; see
also id. at 4.
Appellant argues that “Polyak does not teach or suggest using barbs to
secure the brace into the concrete wall.” Br. 4.
However, as noted above, the hanger is not being claimed in an
installed position with a concrete wall. See In re Schreiber, 128 F.3d at
1478 and In re Swinehart, 439 F.2d at 213. Further, the Examiner explains
that “when used in a concrete wall the barbs are perfectly capable of
preventing the hanger from pulling out of the concrete wall.” Final Act. 3;
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see also id. at 4. Stated differently, when Polyak’s barbs are embedded in a
concrete wall, the protruding barbs would prevent the hanger from being
pulled out of the concrete wall, the same as a protruding nail. See for
example, Polyak’s Figure 1 showing what looks like a nail or pin 46 passing
through aperture 32. See also Polyak 2:60–66. Thus, Appellant’s
contention does not apprise us of Examiner error.
Appellant contends that “Polyak teaches the use of a hardened steel
pin to affix the brace into the concrete foundation wall” whereas Polyak’s
“barbs (fastening means 18) are used to hold the brace to the joist 34.”
Br. 4. Appellant also argues that “one skilled in the art would not look to
replace the nail holes of Horton with the barbs of Polyak.” Id.; see also id.
at 5 (arguing that “one skilled in the art would not know to select them”).
Appellant’s underlying arguments rest on the intended use of the
barbs, which is unpersuasive for the reasons discussed above. Moreover,
“when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), citing United States v.
Adams, 383 U.S. 39, 50–51 (1966); see also In re Fout, 675 F.2d 297, 301
(CCPA 1982).
The Examiner points out that “nails and barbs are functionally
equivalent materials” and are well-known in the art “for being used
interchangeably . . . so as to provide a secure attachment.” Final Act. 3.
Appellant’s statement that “[t]he [b]arbs of Polyak are simply another type
of nail” (Br. 4) supports the Examiner’s position that nails and barbs are
functional equivalents. See Ans. 3. We note Appellant’s contention refers
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to Polyak’s disclosure of using a “hardened steel pin” rather than a “nail.”
However, Polyak also discloses “[a] suitable fastener 44 such as a 16 penny
nail, or the like, is inserted through the aperture 30” and “a suitable hardened
steel pin or the like which passes through the aperture 32” (Polyak 2:58–63;
emphasis added) evidences that hardened steel pins, nails, and barbs are
functional equivalents as fastening means.
Appellant contends that “[t]he combination of Horton and Polyak as
the Examiner has suggested would result in the barbs being used on the
upper portion of the brace to hold the beam to the brace.” Br. 5.
This argument is unpersuasive because it does not address the
Examiner’s rejection. The Examiner proposes modifying the hanger of
Horton by replacing the nail holes 22 of the lower portion portions 27, rather
than the upper portions 26, with the barbs of Polyak. See Final Act. 2–3; see
also Ans. 4.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 2 as unpatentable over
Horton and Polyak. Accordingly, we sustain the Examiner’s rejection of
claim 2. We further sustain the Examiner’s rejection of claims 4 and 6,
which fall with claim 2.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ 
Reference(s)/Basis Affirmed Reversed
2, 4, and 6 103   Horton and Polyak 2, 4, and 6

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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