Paul Zondlak

Patent Trials and Appeals Board

Apr 14, 2021

2020005615 (P.T.A.B. Apr. 14, 2021)

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.
15/174,025 06/06/2016 Paul Zondlak MSH-1092CIP 2032
8131 7590 04/14/2021
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640
EXAMINER
MORRIS, TAYLOR L
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
04/14/2021 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 PAUL ZONDLAK
___________

Appeal 2020-005615
Application 15/174,0251
Technology Center 3600
____________

Before BRUCE T. WIEDER, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1 and 3. 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 the
inventor, Paul Zondlak. (Appeal Br. 2.)
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Application 15/174,025

2
CLAIMED SUBJECT MATTER
Appellant’s invention relates to a gutter hanger. (Spec. 1, l. 12.)
Claim 1 is the sole independent claim on appeal. It recites:
1. A hanger, said hanger comprising:
i. an elongated support member, said elongated
support member having a first end and a second end;
ii. said first end configured to engage and hold a front
end of a gutter;
iii. said second end configured as a raised portion,
integrally connected to a top surface of said elongated support
member;
iv. said raised portion having a front surface having an
opening therein,
v. said opening being countersunk, said opening
leading to an elongated tube, said elongated tube opening at a
back end of said raised portion;
there being a clip surmounted on said back end and
extending beyond said raised portion.

REJECTIONS
Claim 1 is rejected under 35 U.S.C. § 103 as unpatentable in view of
Brown (US 8,225,556 B2, iss. July 24, 2012) (hereinafter “Brown ’556”)
and Brown (US 2005/0115190 A1, pub. June 2, 2005) (hereinafter
“Brown ’190”).
Claim 3 is rejected under 35 U.S.C. § 103 as unpatentable in view of
Brown ’556, Brown ’190, and Gutshall (US 3,882,752, iss. May 13, 1975).

ANALYSIS
Obviousness is a legal conclusion involving a determination of
underlying facts.
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Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that Brown ’556 discloses a clip “surmounted on said back end and
extending beyond said raised portion.” (Final Action 4.)
Appellant argues that in Brown ’556, the
the gutter clip 9 extends down the distal end 11 of the neck 10.
The clip extends down the back end but it never extends beyond
the raised portion (the section identified by applicant’s 10). To
extend beyond the raised portion you would have to go past the
raised portion. As seen in Fig 1, the clip never extends past the
backside of the gutter bracket therefore it is not extending beyond
the raised portion.

(Appeal Br. 3–4.)
Figure 1 of Brown ’556, as annotated by the Examiner (Final
Action 6), is reproduced below.
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Annotated figure 1 “depicts a cross-sectional view of the preferred
embodiment” of the self-cleaning gutter system and gutter bracket of
Brown ’556. (Brown ’556, col. 5, ll. 30–32.) Brown ’556 discloses that
“gutter clip 9 is located on the distal end 11 of the bracket neck 10. . . . The
gutter clip 9 extends down the distal end 11 of the neck 10 and is inserted
behind the distal wall 62 of the gutter 60 from above.” (Id. at col. 6, ll. 4–8.)
Brown ’556 discloses that the clip provides support for the bracket during
installation. (Id.)
The Examiner explains that Brown ’556
[(1)] discloses a raised portion R, as indicated in the annotated
figure [above], from which a clip (cited as elements 1-2, 9, C)
extends. The claim does not contain any language which defines
the structure of the raised portion or the clip, therefore all that is
required is a hanger having a portion which is raised and a
structure which can clip onto another that is connected to the
raised portion at a back end of the hanger. . . . [(2)] [I]f element
9 is viewed alone as the “clip” and the portion 10 from which it
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extends as the raised portion, it can still be interpreted as
“extending beyond said raised portion”. An element is regarded
as being “beyond” another when it is located “on or to the farther
side of” the other element. As element 9 begins its extension on
the rear side of raised portion 10, it can be regarded as being
located beyond the bounds of said portion and therefore its
extension is also beyond the portion.

(Answer 4 (citing Merriam-Webster.com, https://merriam-
webster.com/dictionary/beyond) (footnote omitted).) We understand the
Examiner’s two explanations to be: (1) that the clip extends vertically
beyond the boundaries of the raised portion, and (2) that the clip extends
horizontally beyond the boundaries of the raised portion.
We disagree with the Examiner that claim 1 “does not contain any
language which defines the structure of the raised portion.” (See Answer 4.)
Claim 1 recites that the raised portion has a front surface and a back end, i.e.,
“said raised portion having a front surface having an opening therein” and
“said opening leading to an elongated tube, said elongated tube opening at a
back end of said raised portion.” Claim 1 recites that a clip is “surmounted
on said back end and extending beyond said raised portion.” Claim 1 also
recites that the raised portion is “integrally connected to a top surface of said
elongated support member.”
As we understand the Examiner’s first explanation, the raised portion
is defined by R, and the clip is defined by elements 1, 2, 9, and C of
annotated figure 1. (See Answer 4.) But it is unclear what portion of
annotated figure 1 of Brown ’556 the Examiner regards as the top surface of
the elongated member and how the portion R is integrally connected to it.
(If the Examiner were to regard positioning tab 1 and fulcrum tab 2 as part
of the top surface, then we would disagree that the clip extends vertically
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beyond the raised portion.) Also, annotated figure 1 of Brown ’556 appears
to show portion R separated from portion C by mounting screw 5, and thus,
that the entrance and exit holes for mounting screw 5 are located above
portion R. But claim 1 recites that the raised portion includes openings in
both its front surface and back end.
In view of the foregoing, and absent further explanation from the
Examiner, we disagree that Brown ’556 discloses a clip “surmounted on said
back end” of the raised portion and extending vertically beyond the raised
portion, as the term “raised portion” is used in claim 1.
With regard to the Examiner’s second explanation, we agree that
clip 9 of Brown ’556 extends horizontally beyond the boundary of the raised
portion, regardless of whether the boundary of the raised portion is defined
as including element R alone, or a combination of elements, e.g., elements 1,
2, C, and R.
Therefore, we are not persuaded that the Examiner erred in finding
that Brown ’556 discloses a clip “surmounted on said back end” of a raised
portion and extending beyond the raised portion. (Final Action 4.)
Appellant argues that Brown ’556 “fails to disclose an opening
leading to an elongated tube,” that Brown ’190 discloses a throughbore and
that “[t]hroughbores are not elongated tubes, rather they are holes drilled
through the gutter bracket (See Fig. 4). Tube [sic] are hollow cylinders.
Throughbores and hollow cylinders are not the same.” (Appeal Br. 4.)
Brown ’190 discloses “[a] bracket for mounting and supporting a rain
gutter that includes an overlying, leaf- and debris-shedding cover.” (Brown
’190, Abstract.) Figure 1 of Brown ’190, as annotated by the Examiner
(Answer 7), is reproduced below.
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Figure 1 “is a front perspective view of an embodiment of a gutter support
bracket for use with a gutter including an overlying cover or deflector.”
(Brown ’190 ¶ 14.)
We agree with the Examiner that Brown ’190
discloses an integrally molded portion T having cylindrical
walls, (see annotated figure [above]) and a bore 34 extending to
form a tube portion with those cylindrical walls. While the tubes
of Brown [’190] are integrated with ribs 13, 26, and flanges 20,
22, this is no different from the tube of the pending invention
being integrally formed with walls 15, 21, and 23. In both cases,
a tube is formed as an integrated element of an overall structure
with portions of the tube being molded with other elements of
the structure and therefore, it is clear that Brown [’190] teaches
a hollow cylindrical structure integrated into its hanger.

(Answer 6.)
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In view of the above, we are not persuaded that the Examiner erred in
finding that Brown ’190 discloses an opening leading to an elongated tube.
Appellant argues that “the front surface of Brown [’556] has two
openings therein. ‘An’ is an article that is used before singular nouns. Thus
applicant is claiming only one opening on the front surface.” (Appeal Br. 4.)
The Federal Circuit
“has repeatedly emphasized that an indefinite article ‘a’ or ‘an’
in patent parlance carries the meaning of ‘one or more’ in open-
ended claims containing the transitional phrase
‘comprising.’ ” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d
1351, 1356 (Fed. Cir. 2000). That “a” or “an” can mean “one or
more” is best described as a rule, rather than merely as a
presumption or even a convention. The exceptions to this rule
are extremely limited: a patentee must “evince[ ] a clear intent”
to limit “a” or “an” to “one.” Id. The subsequent use of definite
articles “the” or “said” in a claim to refer back to the same claim
term does not change the general plural rule, but simply
reinvokes that non-singular meaning. An exception to
the general rule that “a” or “an” means more than one only arises
where the language of the claims themselves, the specification,
or the prosecution history necessitate a departure from the
rule. See, e.g., Abtox Inc. v. Exitron Corp., 122 F.3d 1019
(Fed.Cir.1997); Insituform Techs., Inc. v. Cat Contracting,
Inc., 99 F.3d 1098 (Fed.Cir.1996).

Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed.
Cir. 2008) (brackets in original).
Claim 1 contains the transitional phrase “comprising” and Appellant
does not direct us to any language in claim 1, in the Specification, or in the
prosecution history that necessitates a departure from the rule. We are not
persuaded that the Examiner erred in rejecting claim 1.
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Claim 3 recites:
3. In combination, the hanger of claim 1 and a fastener, said
fastener having a head, a pointed tip, and a shaft connecting said
head and said tip therebetween, said fastener having threads
along said shaft from said head to said pointed tip, said head
having a flat upper surface and a dome shaped under surface.

With regard to claim 3, Appellant argues that “the end of the fastener
of Gutshall is chiseled rather than a pointed tip. Further, the threads on the
fastener of Gutshall stop well above the tip.” (Appeal Br. 5.)
Appellant’s figure 5 is reproduced below.

“Figure 5 is a full side view of a fastener of [Appellant’s] invention.”
(Spec. 3, l. 1.)
Gutshall discloses a controlled-drive sealing fastener. (Gutshall,
Title.) Figure 1 of Gutshall, as annotated by the Examiner (Answer 10), is
reproduced below.
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Figure 1 of Gutshall “is an exploded perspective view of the elements
making up the controlled-drive sealing fastener assembly of the [Gutshall]
invention.” (Gutshall, col. 4, ll. 47–49.)
The Examiner finds, and we agree, that the chiseled end of the
fastener (S) of Gutshall “is clearly narrowed to a sharpened tip,” i.e., the
screw has “a cutting end which is sharpened to a pointed end so that it can
piece through material as the screw is rotated.” (Answer 9; see also Gutshall
Fig. 1.) In short, Gutshall discloses a fastener having a pointed tip.
The Examiner finds that with regard
to the location of the threads in relation to the tip of Gutshall, the
pointed tip of Gutshall is the portion indicated at 14 and the
threaded portion 12 extend[s] from the head and that portion,
which reads on the claims. The fastener of the pending invention
is also depicted in this way, as Fig. 5 of the application clearly
shows a threaded portion 31 extending from a head 32 and
ending and then a pointed end portion 33 extends from the end
of the threaded portion. Therefore, both the pending invention
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and Gutshall disclose pointed tip sections and threads which
extend from where a head ends to where the pointed tip section
begins.

(Answer 9.) Applying a broadest reasonable interpretation consistent with
the Specification and figures, we interpret the term “pointed tip” to include
that section of the end of the shaft coming to a point, as shown in
Appellant’s figure 5. In view of the foregoing, we are not persuaded that the
Examiner erred in finding that Gutshall discloses a fastener having threads
along a shaft from the head to the pointed tip.
Finally, Appellant argues that “one would not be motivated to select
the fastener of Gutshall for use in Brown [’556]/Brown [’190] because
Gutshall requires the use of a rigid washer 18 and a resilient sealant
washer 30 to create the sealing point neither of which are available on
Brown [’556]/Brown [’190].” (Appeal Br. 5.)
But Appellant does not persuasively argue why the Examiner erred in
determining that
[t]he countersunk connection between the head and the washer
in Gutshall imparts self-centering properties and creates a lower
head profile. As the openings of Brown [’556] are countersunk,
it is clear that one having ordinary skill in the art would be
motivated to make the combination in the action as the
connection between the fastener of Gutshall and the openings of
brown [sic] would be provided with these improvements.

(Answer 9–10 (footnote omitted).) Therefore, we are not persuaded that the
Examiner erred in rejecting claim 3.
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CONCLUSION
The Examiner’s rejections of claims 1 and 3 under 35 U.S.C. § 103
are affirmed.
Specifically:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1 103 Brown ’556,
Brown ’190
1
3 103 Brown ’556,
Brown ’190, Gutshall
3
Overall
Outcome
1, 3

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