LETHIN, Douglas T.

Patent Trials and Appeals Board

Apr 1, 2020

14741353 - (D) (P.T.A.B. Apr. 1, 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.
14/741,353 06/16/2015 Douglas T. LETHIN 030.P001CIP2 5468
65638 7590 04/01/2020
OMIKRON IP LAW GROUP
5895 Jean Road
LAKE OSWEGO, OR 97035
EXAMINER
MATTEI, BRIAN DAVID
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
04/01/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ROBERT.CHANG@OMIKRONLAW.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUGLAS T. LETHIN

Appeal 2018-007295
Application 14/741,353
Technology Center 3600
____________

Before MICHAEL L. HOELTER, BRANDON J. WARNER, and
LISA M. GUIJT, Administrative Patent Judges.

HOELTER, 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 1–20, which constitute all the claims
pending in this application. Appellant’s counsel presented oral argument on
March 17, 2020. 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. Appellant identifies the real party in interest as “Sage
Bracket Solutions, LLC.” Appeal Br. 3.
Appeal 2018-007295
Application 14/741,353

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CLAIMED SUBJECT MATTER
The disclosed subject matter relates to “[a]dding additional roof like
structures to existing roofs.” Spec. ¶ 3. Apparatus and system claims 1 and
11 (respectively) are independent. Claim 1 is illustrative of the claims on
appeal and, is reproduced below.
1. An apparatus for providing an elevated roof over an
existing roof of a structure, the apparatus comprising:
a substantially vertical member
a bracket coupled to a first end of the substantially vertical
member, the bracket configured to support a support beam in a
substantially perpendicular orientation relative to the
substantially vertical member and to pivotally support a trailing
edge of the elevated roof over the existing roof, the support beam
and the trailing edge of the elevated roof being substantially
perpendicular to each other; and
a substantially rectangular base coupled to a second end of
the substantially vertical member, the second end being at an
opposite end of the substantially vertical member from the first
end, wherein the substantially rectangular base is configured to
penetrate through the existing roof proximate to the trailing edge
of the elevated roof and to attach to a load bearing component of
the structure, the load bearing component being a load bearing
wall configured to support the existing roof substantially around
a periphery of the existing roof.
EVIDENCE
Name Reference Date
Plaisted et al. (“Plaisted”) US 2008/0121273 A1 May 29, 2008
Dunkinson AU 2006200720 A1 September 6, 2007
Roof Extenda Bracket available at
http://web.archive.org/web/20110218155734/http://www.roofextenda.com.a
u/ss/shadesaiIbrochure.pdf (listed on form PTO-892, Notice of References
Cited dated November 9, 2015) (“Roof Extenda Bracket”).

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Application 14/741,353

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Shade Sail Anchor available at
http://web.archive.org/web/20110218155337/http://www.roofextenda.com.a
u/re/reb-brochure.pdf (listed on form PTO-892, Notice of References Cited
dated November 9, 2015) (“Shade Sail Anchor”).
REJECTIONS
Claims 1–6 and 11–16 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1, 3–11, 13
and 14 of copending Application No. 13/399,263.
Claims 1–20 are rejected under 35 U.S.C. § 103 as being unpatentable
over Roof Extenda Bracket and Plaisted.
Claims 1–3, 5–7, 11–13, and 15–17 are rejected under 35 U.S.C.
§ 103 as unpatentable over Shade Sail Anchor (Dunkinson) and Plaisted.
ANALYSIS
The provisional rejection of claims 1–6 and 11–16
on the ground of nonstatutory double patenting
Appellant does not submit a terminal disclaimer as this rejection is, at
present, a provisional rejection because the referenced co-pending
application has yet to issue. Thus, Appellant requests “that this provisional
rejection be held in abeyance until such time as claims have been allowed.”
Appeal Br. 9. Because of the provisional nature of this undisputed rejection,
our review of it would be moot, and we do not reach it on this appeal.

The rejection of claims 1–20
as unpatentable over Roof Extenda Bracket and Plaisted
Appellant argues all the claims (i.e., claims 1–20) together. See
Appeal Br. 10–15. We select claim 1 for review, with claims 2–20 standing
or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
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Application 14/741,353

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The Examiner relies on Roof Extenda Bracket for primarily disclosing
the limitations of claim 1, but acknowledges that this reference “does not
specifically disclose the bracket pivotally supporting a trailing edge of the
elevated roof.” Final Act. 5. The Examiner relies on Plaisted for teaching
“a bracket pivotally supporting a trailing edge” and provides a reason for
Plaisted’s combination with Roof Extenda Bracket. Final Act. 5.
Addressing Roof Extenda Bracket, Appellant notes its disclosure of
“an L-shaped bracket” mounted underneath a roof, and replicates an image
disclosing same. Appeal Br. 12. Appellant contends:
It should be appreciated by those of ordinary skilled the relevant
art, that cutting a hole having a large enough shape to
accommodate the rectangular base of the claimed subject matter
would be considered counter intuitive at best because cutting a
large hole in a sound roof would not be advised by most if not all
people working in this type of industry. Because of this counter
intuitive nature of cutting a large hole in a sound roof, Roof
Extenda Bracket only shows a small round hole approximate size
of the tube and not a large hole that would extend beyond the
tube. “Who would cut such a large hole into a perfectly good
roof”?
Appeal Br. 14; see also Reply Br. 5 (“the Roof Extenda Bracket clearly
shows a small single round hole to be drilled,” which is not suitable for the
recited “substantially rectangular base”).
Although a device may be extremely useful in its relevant field, when
tasked with addressing the appeal before us, we have been instructed that
“the name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998). Hence, we confine ourselves to the recited claim language
(and interpretations thereof as guided by our reviewing court) and contrast
such language with the cited art.
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Application 14/741,353

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Regarding the size of the hole in the roof as addressed by Appellant
above, the Examiner notes, “Appellant is not claiming the size of the hole
but merely that the bracket is configured to penetrate through the roof.”
Ans. 4. Indeed, claim 1 recites a base “configured to penetrate through the
existing roof,” and is silent as to how big or small, or what shape, such
penetration is to be. Moreover, even the “substantially rectangular” base
recited in the claim is just given a shape, but nothing is recited about any
particular size for the element. Roof Extenda Bracket itself is silent as to the
size and configuration of the hole to be cut, only providing instructions to
remove roofing material sufficient “to achieve opening.” Roof Extenda
Bracket, middle column; see also Ans. 4. Thus, to answer Appellant’s
question above, a skilled person would penetrate the roof with an opening
sized at least large enough for insertion of the bracket through the roof and
also to accommodate subsequent connection of that bracket to the “rafter”
and “existing wall,” as described and illustrated in Roof Extenda Bracket.
Roof Extenda Bracket, middle column.
Furthermore, Roof Extenda Bracket illustrates wind passing
underneath the added roof thereby illustrating the application of an uplifting
force upon this added roof and its supporting bracket. See Roof Extenda
Bracket, middle column. There is no indication that this bracket would fail
to resist such forces, or otherwise permit the vertical “threaded rod” to
separate from the mounting bracket. See Roof Extenda Bracket, generally.
Hence, there is no indication that the device depicted in Roof Extenda
Bracket is ill-suited for its intended purpose of securing a new roof over an
existing roof, and also maintaining that interconnection during an uplifting
load.
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The Examiner additionally addresses the L-shaped bracket depicted in
Roof Extenda Bracket in view of the claim limitation, “a substantially
rectangular type shaped base.” See Ans. 4. The Examiner makes two
findings. First, the Examiner notes Appellant’s use of the open-ended
phrase “comprising,” and thus, determines that Roof Extenda Bracket’s
corresponding “base” “could be considered to only be the horizontal
segment of the ‘L.’” Ans. 4. Further, the Examiner references “the
Merriam-Webster dictionary,” which defines “base” “as ‘the bottom of
something considered as its support.’” Ans. 5. The Examiner finds that this
“is precisely the function of” the horizontal component of the L-shaped
bracket, i.e., “it is the bottom and acts as the support.” Ans. 5. Appellant
addresses vertically aligned gusset plates 506, 620 (see Figs. 5, 6 of
Appellant’s Specification) contending that a skilled person “would not
interchange a gusset with an ‘L’ shaped bracket.” Reply Br. 5. However,
Appellant’s focus on the vertical component of the Roof Extenda Bracket’s
mounting bracket does not detract from its horizontal component qualifying
as a “base,” as addressed by the Examiner. Additionally, Appellant asks,
“would one go into a hardware store and ask for an ‘L’ shaped bracket when
the person was looking for a rectangular base?” Reply Br. 6. Again, this
does not detract from Roof Extenda Bracket’s L-shaped bracket having a
“base” as that term is employed.
Additionally, Appellant contends, “[t]he Examiner’s reliance upon the
dictionary for plain meaning in interpreting the claim term ‘base’ is
inappropriate because the specification is clear about the scope and content
of a claim term.” Reply Br. 6. However, Appellant does not identify where
Appellant’s Specification explicitly defines “base,” or otherwise employs
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this term, in a manner inconsistent with the definition above. For example,
Paragraph 23 of Appellant’s Specification states, “[t]he base plate 208 may
be attached to the component 212, which may be a load bearing component
as previously described.” See also Spec. ¶¶ 22, 27 (“to facilitate attachment
of the base 208 to the component 212”). Appellant does not explain how the
bottom (horizontal) portion of the L-shaped bracket disclosed in Roof
Extenda Bracket is not load bearing and as such, cannot be deemed a “base.”
See Roof Extenda Bracket generally. Nor does Appellant explain how this
bottom portion of the disclosed L-shaped bracket fails to be “substantially
rectangular” as recited. In other words, Appellant does not explain how
those skilled in the art would fail to recognize the horizontal bottom portion
of Roof Extenda Bracket’s L-shaped bracket as the “base” when oriented as
illustrated. Accordingly, we are not persuaded of Examiner error on this
point.
Appellant also contends, “Roof Extenda Bracket does not qualify as
prior art because the Examiner has not met the burden of providing the
appropriate dates for publication.” Appeal Br. 13; see also id. at 11; Reply
Br. 3, 4. In response, the Examiner explains that a link was provided where
such brochure was “found on the website via the Wayback Machine in order
to provide the date at which” the brochure was available to the public. Ans.
3. The Examiner also provided a link which shows the bracket was
“available on their website as early as 9/12/2010” (before Appellant’s filing
date of February 17, 2012). Ans. 3. Furthermore, it is noted that Roof
Extenda Bracket references both Australian Patent No. 707335 (granted July
12, 1996) and New Zealand Patent No. 312047 (granted September 7, 2000),
both grant dates being significantly prior to Appellant’s filing date. Thus,
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Appellant’s contentions that Roof Extenda Bracket, and particularly the
device disclosed therein, fails to qualify as prior art are not persuasive.
Addressing the secondary reference to Plaisted, it is to be noted that
the Examiner relied on this reference for teaching “a bracket pivotally
supporting a trailing edge.” Final Act. 5. Appellant contends “nowhere
does Plaisted describe a ‘trailing edge.’” Appeal Br. 14.2 However, while
this exact term may not be employed in Plaisted, this reference clearly
teaches the support of opposite edges (i.e., leading and trailing edges) of a
solar panel above an existing roof. See, e.g., Plaisted Abstract, Figs. 7A, 7B.
Additionally, the Examiner finds that Roof Extenda Bracket discloses
supporting “a trailing edge of the elevated roof over the existing roof.” Final
Act. 5. Thus, whether or not Plaisted “describe[s] a ‘trailing edge’” as
asserted by Appellant, this argument is moot in view of the redundant
findings in the primary reference which is not contested.
Appellant also argues that Plaisted does not disclose a base that is
configured to penetrate an existing roof as recited. Appeal Br. 15.
However, Plaisted was not relied on for such teachings, but instead for
disclosing a pivotal support bracket as noted above.
Accordingly, and based on the record presented, we are not persuaded
of Examiner error by Appellant’s contentions. We sustain the Examiner’s

2 Appellant acknowledges the Examiner’s reliance on “Figure 5a” and
“pivoting connection at 550 [with strut member 510 at] the ‘trailing edge.’”
Reply Br. 5 (referencing Ans. 5). However, “[A]ppellant is not too sure
what figure 5a and reference numbers 550 and 510 the Examiner referenced
because the present application does not have a figure 5a or references 550
or 510.” Reply Br. 5. Appellant’s contention is not persuasive because the
Examiner is referencing Plaisted, not Appellant’s “present application.” See
Ans. 4–5.
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Application 14/741,353

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rejection of claims 1–20 as unpatentable over Roof Extenda Bracket and
Plaisted.
The rejection of claims 1–3, 5–7, 11–13, and 15–17 as unpatentable
over Shade Sail Anchor (Dunkinson) and Plaisted
Appellant argues claims 1–3, 5–7, 11–13 and 15–17 together. See
Appeal Br. 16–19. We select claim 1 for review, with the remaining claims
(i.e., claims 2, 3, 5–7, 11–13, and 15–17) standing or falling with claim 1.
Appellant addresses Dunkinson contending that this reference
discloses brackets that “are L shaped” and as such, “[i]t is unclear how
Dunkinson would teach or suggest” the limitation “a substantially
rectangular base . . . .” Appeal Br. 17; see also id. at 16. This contention is
not persuasive for similar reasons discussed above regarding a similar
bracket depicted in Roof Extenda Bracket. Regarding Plaisted, Appellant
contends, “Plaisted does not teach or disclose anything about elevated
roofs.” Appeal Br. 18. However, Plaisted was not relied on for such
teachings, but instead for teaching “a bracket pivotally supporting a trailing
edge.” Final Act. 9; see also Plaisted Figs. 7A, 7B. Appellant’s further
discussions regarding Shade Sail Anchor, Dunkinson, and Plaisted (see
Appeal Br. 18, 19) are further not persuasive of Examiner error. See, e.g.,
Ans. 5–6 (“The bracket of the Shade Sail Anchor and Dunkinson bracket is
fully configured to penetrate through an opening [in] a roof” (noting “that
Appellant is not claiming the size of the hole”) and, in fact, “that is exactly
how it is to be installed”).
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1–3, 5–7, 11–13, and 15–17 as unpatentable
over Shade Sail Anchor (Dunkinson) and Plaisted.
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Application 14/741,353

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 11–16 Provisional
Obviousness-type
Double Patenting3

1–20 103 Roof Extenda
Bracket, Plaisted
1–20
1–3, 5–7,
11–13, 15–
17
103 Shade Sail Anchor
(Dunkinson),
Plaisted
1–3, 5–7, 11–
13, 15–17

Overall
Outcome
1–20
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

3 As explained above, we do not reach this rejection per Ex parte Moncla,
Appeal No. 2009-006448 (PTAB June 22, 2010) (holding that it is
premature to address a provisional rejection) (designated precedential).