Sno-Gem, Inc.

Patent Trials and Appeals Board

Jun 16, 2020

14476664 - (D) (P.T.A.B. Jun. 16, 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.
14/476,664 09/03/2014 Michael V. Smeja 331107.00003 4640
35614 7590 06/16/2020
Reed Smith, LLP
10 SOUTH WACKER DRIVE
CHICAGO, IL 60606-7507
EXAMINER
WALRAED-SULLIVAN, KYLE
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
06/16/2020 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):
ipdocket-chi@reedsmith.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL V. SMEJA
____________

Appeal 2019-000878
Application 14/476,664
Technology Center 3600
____________

Before MICHAEL L. HOELTER, JAMES P. CALVE, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, 5–12, 26, 39–49, and 52. An oral hearing was
held on May 14, 2020.2 We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Sno-Gem
Incorporated, which “is a related entity to Smeja Enterprises, LLC.” Appeal
Br. 1.
2 The record includes a transcript of the oral hearing (“Tr.”).
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THE CLAIMED SUBJECT MATTER
Claims 1, 26, 39, and 52 are independent. Claim 1 is reproduced
below.
1. A roof mounting bracket for securing accessories to seamed
panel roof systems, the roof mounting bracket being mounted on
a roof panel seam in a manner that creates a generally wave-
shaped distortion in the roof panel seam, the roof mounting
bracket comprising:
a first member, the first member having coupled thereto
two or more first projections disposed on a first side of the roof
panel seam, wherein the two or more first projections define a
space between each of the two or more first projections;
a second member disposed opposite the first member on
an opposite side of the roof panel seam, the second member
having coupled thereto one or more second projections, wherein
the one or more second projections are positioned opposite the
space defined between the two or more first projections;
wherein the two or more first projections are movable
relative to the first member to engage the first side of the roof
panel seam to create two or more first deformations in the roof
panel seam;
wherein the one or more second projections are movable
relative to the second member to engage the opposite side of the
roof panel seam to create one or more second deformations in the
roof panel seam in the spaces defined between the two or more
first deformations, thereby creating the generally wave-shaped
distortion of the roof panel seam;
wherein the two or more first projections and the one or
more second projections comprise screws, and each screw has a
head;
wherein the screws are coupled to the first member and the
second member by threaded fasteners formed in the first member
and the second member; and
wherein the heads of each of the screws directly engage
the roof panel seam and create the first two or more deformations
and the second one or more deformations in the roof panel seam
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and create the generally wave-shaped distortion in the roof panel
seam.
Appeal Br. 20–21(Claims App.).

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Alley US 6,318,028 B2 Nov. 20, 2001
Haddock ’196 US 2002/0088196 A1 July 11, 2002
Hockman US 2007/0051053 A1 Mar. 8, 2007
Haddock ’711 US 2013/0145711 A1 June 13, 2013

REJECTIONS
I. Claims 1, 2, 8, 26, 39, 40, 44, 45, and 52 stand rejected under
35 U.S.C. § 103 as unpatentable over Haddock ’711 and Alley. Final
Act. 2–14.
II. Claims 5 and 41 stand rejected under 35 U.S.C. § 103 as unpatentable
over Haddock ’711, Alley, and Hockman. Id. at 14–15.
III. Claims 6, 7, 42, and 43 stand rejected under 35 U.S.C. § 103 as
unpatentable over Haddock ’711, Alley, and Haddock ’196. Id. at 15–
16.
IV. Claims 9–12 and 46–49 stand rejected under 35 U.S.C. § 103 as
unpatentable over Haddock ’711, Alley, and Official Notice. Id. at
16–17.

OPINION
Rejection I
Appellant argues claims 1, 2, 8, 26, 39, 40, 44, 45, and 52 as a group.
Appeal Br. 7–15. We select claim 1 as representative of the issues that
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Appellant presents in the appeal, and claims 2, 8, 26, 39, 40, 44, 45, and 52
stand or fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Haddock teaches all of the limitations of
independent claim 1, except for teaching “the roof mounting bracket being
mounted on a roof panel seam in a manner that creates a generally wave-
shaped distortion in the roof panel seam, thereby creating the generally
wave-shaped distortion of the roof panel seam, the one or more second
deformations in the roof panel seam in the spaces defined in [between] the
two or more first deformations.” Final Act. 3–4. The Examiner finds that
Alley teaches the missing limitation. Id. at 4 (“Alley discloses the roof
mounting bracket (Fig. 18b) being mounted on a roof panel seam (shown
deformed in Fig. 19A) in a manner that creates a generally wave-shaped
distortion (Fig. 19A) in the roof panel seam (Fig. 19A), thereby creating the
generally wave-shaped distortion of the roof panel seam (Fig. 19A), the one
or more second deformations in the roof panel seam in the spaces defined in
the two or more first deformations (as shown in Fig. 19A, the bottom
projections are shown offset in relation to the top set of projections. In
doing so, the left projection on the bottom is disposed in the space defined
between the top two projections).”). The Examiner concludes that it would
have been obvious
to modify the bracket of Haddock [’711] wherein the roof
mounting bracket being mounted on a roof panel seam in a
manner that creates a generally wave-shaped distortion in the
roof panel seam, thereby creating the generally wave-shaped
distortion of the roof panel seam, the one or more second
deformations in the roof panel seam in the spaces defined in the
two or more first deformations as disclosed by Alley in order to
place one projection between the others such that the bracket is
unlikely to move in the longitudinal direction so as to securely
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grasp the seam. Moreover, it has been held that combining prior
art elements (bracket of Haddock [’711] with the hole
positioning of Alley) according to known methods to yield
predictable results (fastening), simple substitution of one known
element (hole positioning of Haddock [’711]) for another (hole
positioning of Alley) to obtain predictable results (fastening),
and/or use of known technique (hole positioning of [Alley]) to
improve similar devices (methods, or products) (bracket of
Haddock [’711]) in the same way are within the level of ordinary
skill in the art. See MPEP 2143 (I).
Id. at 4–5.
Appellant argues that “Haddock [’711] clearly requires the fasteners
to be disposed along a common axis, thereby teaching away from the
suggested modification of the fasteners’ alignment.” Appeal Br. 11
(emphasis omitted); see also Haddock ’711 ¶¶ 58, 59, 61 (reproduced by
Appellant on pages 9–10 of Appeal Brief). Such an argument is
unconvincing. In order to “teach away,” a reference must “criticize,
discredit, or otherwise discourage the solution claimed.” In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellant has not identified any
passage in Haddock ’711 that actually criticizes, discredits, or discourages
the use of offset or staggered hole positioning. We note that “[a] reference
does not teach away . . . if it merely expresses a general preference for an
alternative invention but does not ‘criticize, discredit, or otherwise
discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)
(quoting Fulton, 391 F.3d at 1201).
Although Haddock ’711 discloses moving opposing fasteners along a
common axis in opposite directions in order to compress or collapse hollow
seam rib 86, thereby resulting in contact between opposing internal surfaces
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of hollow seam rib 86, Appellant has not identified any passage in Haddock
’711 that actually criticizes, discredits, or discourages offset or staggered
movement of opposing fasteners. Haddock ’711 indicates that “[e]ach
instance” [of contact between opposing internal surfaces of hollow seam rib
86] provides an enhanced lift-off resistance—a resistance to pulling the
mounting device 10 off of the hollow seam rib 86.” Haddock ’711 ¶ 63. In
other words, Haddock more generally attributes enhanced lift-off resistance
to contact between opposing internal surfaces of hollow seam rib 86, as
opposed to the specific use of a common axis for opposing fasteners. So
long as the offset or staggered hole positioning would continue to result in
contact between opposing internal surfaces of hollow seam rib 86 as urged
by Haddock ’711, we are not persuaded that Haddock ’711 teaches away
from offset or staggered hole positioning.
Although Appellant argues that “the modified Haddock [’711], with
staggered seam fasteners would not cause the sides to actually contact at the
indentation points” (Reply Br. 7), Appellant also suggests that “the
modification of the location of the seam fasteners in view of Alley would
make no difference on the seam fasteners[’] ability to hold the mounting
block in place” (id. at 4 (emphasis omitted)). In our view, the latter is the
better position in that the indentations appear to extend along the length of
the interior surfaces of the hollow seam rib (Haddock ’711 Fig. 2A), such
that contact of indentations in an offset or staggered fastener configuration
would still be possible.
Appellant next argues that “Haddock [’711], as modified by Alley,
would not function as claimed by the Examiner.” Appeal Br. 11. More
particularly, Appellant argues that “[a]s Haddock [’711] relies on, and
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indeed requires, the hollow interior and movement of fasteners 74 along a
common axis, Haddock [’711] modified as shown in Alley would not create
a wave shaped formation as recited in the claims because each fastener 74 in
Haddock [’711] would contact with an opposing side wall of a hollow seam
86” and “would not create the wave shaped deformation and would not
operate in the manner intended by Haddock [’711].” Id. at 13; see also
Reply Br. 7 (“the staggered configuration would not create the wave shaped
distortion because the fasteners on the opposite sides would only act on and
deflect the rib sidewall on the side that they were on” and “[t]herefore,
Haddock [’711], even as modified by Alley, would not create a wave shaped
distortion”).
We are not persuaded that offset or staggered fasteners, each
contacting an opposing side wall of a hollow seam rib so as to compress that
side wall in a manner sufficient to cause contact between the opposing
internal surfaces of the hollow seam rib as required in Haddock ’711, would
fail to create a wave shaped formation as recited in the claim. As explained
by the Examiner, “[m]oving the location of the compression of the fasteners
does not preclude compression altogether, and the fasteners would still
function to collapse the sidewalls no matter where each fastener is laterally
aligned” and “[u]pon collapse, the sidewalls 88a/88b are crimped together.”
Ans. 5.
We have considered Appellant’s argument that “the Examiner cites to
nothing in Haddock [’711 ]’s disclosure that suggests that fasteners would be
able to ‘crimp’ the side walls of the seams together sufficient to create a
wave shaped distortion.” Reply Br. 5; see also Tr. 12:18–23 (“[I]n order to
create the wave-shaped deformation of the claim, the fasteners have to go
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beyond merely pinching something in between it or extended to the point
that they are shifting the two sides of the seam essentially in a plane past one
another in order to create a wave.”). We, however, are not persuaded that
creation of a wave-shaped deformation as set forth in the claim requires such
specific deformation as urged by Appellant, nor requires any deformation
beyond that which the Examiner has already explained. As explained by the
Examiner, “[t]here is no claim language that requires the wave shape
formation be in a single plane, or be located in a single, flat or planar seam.”
Ans. 5. In our view, the alternating, offset collapse of (i) a first side wall of
a hollow seam and (ii) a second opposing side wall of a hollow seam, so as
to crimp the side walls together in each instance, creates a succession of
curves in the hollow seam rib that constitutes a wave-shaped distortion
according to the claim in the absence of evidence or persuasive reasoning
supporting that such an interpretation of a “generally wave-shaped
distortion” is unreasonable.
Appellant further argues that “the Examiner fails to provide a reason
to modify Haddock [’711] in view of Alley.” Reply Br. 2 (capitalization
omitted). Appellant asserts that “[t]he Examiner does not point to any
teaching, suggestion or motivation to modify the location of the fasteners.”
Id. (citing Securus Techs. Inc. v. Global Tel*link Corp., 2017 WL 2992516,
*4 (Fed. Cir. 2017)). To the extent Appellant is insisting on an explicit
teaching, suggestion, or motivation in the cited references for the
Examiner’s proposed modification, such an argument has been foreclosed by
the Supreme Court. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415, 419
(2007) (stating that a rigid insistence on teaching, suggestion, or motivation
is incompatible with its precedent concerning obviousness). Rather, the
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Court requires that we look to whether the Examiner has provided “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(cited with approval in KSR, 550 U.S. at 418).
The Examiner reasons that the proposed modification to Haddock
’711 so as to create a generally wave-shaped distortion in the roof panel
seam in which one projection would be placed between two other opposing
projections would make the bracket “unlikely to move in the longitudinal
direction so as to securely grasp the seam.” Final Act. 5. Although
Appellant argues that “the modification would provide no benefit to the
system disclosed in Haddock [’711]” (Reply Br. 3), Appellant does not
identify in the briefing any flaw in the Examiner’s findings or reasoning
with respect to the advantage of preventing movement along the roof panel
seam in the longitudinal direction.
Appellant argued at the oral hearing that “the pressure on the
respective sides of the seam are going to be less . . . in a staggered
configuration” and wouldn’t “provide the lift-off resistance that’s noted in
Haddock [’711].” Tr. 13:12–15, 14:2–3; see also id. at 15:14–19 (“[I]t
wouldn’t have been obvious to somebody [of] ordinary skill in the art to read
Haddock [’711] and understand that they can stagger the configuration of the
screws and still retain that improved lift-off resistance that Haddock [’711]
describes.”). Appellant further explains that “Haddock [’711] has an
improved lift-off resistance because it has the two members that are pinching
those two sides of the seam. And then they are also creating a mechanical
barrier essentially to the crimped top portion of the seam. If you were to
pull on the block, those two opposed pinching members would abut a
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crimped portion of the seam.” Tr. 16:4–11. Appellant contrasts the
configuration described in Haddock ’711 “[w]ith [Haddock ’711 being
modified to have] the wave deformation,” noting that “you now have the
seam that is essentially . . . bending in the direction that it is being acted on
by each of the opposed projections. And there is no longer that mechanical
block that’s formed between the two opposed members and the crimped
portion of the seam on the top.” Id. at 16:11–17. Appellant suggests that
such a potential negative effect on lift-off resistance, coupled with the fact
that “the path set out in Alley . . . would increase the difficulty and cost in
manufacturing by requiring machining non-linear paths for opposing seam
fasteners without any added benefit” (Reply Br. 4) would discourage one of
ordinary skill in the art from modifying Haddock ’711 with the teachings of
Alley.
On the record before us, we do not agree that one of ordinary skill in
the art would have been discouraged from modifying Haddock ’711 to
stagger or offset the fasteners in order to prevent movement of a bracket in
the longitudinal direction of a roof panel seam (Final Act. 5), even if that
might have potentially had a negative effect on lift-off resistance and/or
might have increased manufacturing complexity/cost. Our reviewing court
has recognized that a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate any or
all reasons to combine teachings. See Medichem, S.A. v. Rolabo, S.I., 437
F.3d 1157, 1165 (Fed. Cir. 2006) (explaining that if there are tradeoffs
involved regarding features, such things do not necessarily prevent the
proposed combination); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the
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expense of another benefit, however, should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.”). Given (i) the acceptable consideration of tradeoffs,
(ii) Appellant’s failure to establish error in the Examiner’s position that
modifying Haddock ’711 to have an offset and/or staggered configuration
would advantageously help prevent movement of a bracket in the
longitudinal direction of a roof panel seam, and (iii) that any potential
negative effect on lift-off resistance due to offset or staggered fasteners as
identified by Appellant might be countered by a wave shape (as opposed to a
linear shape) as well as the presence of alternating side forces, we are not
persuaded that the potential negative effect on lift-off resistance and/or
increase in manufacturing complexity/cost outweighs the benefit in
preventing longitudinal movement. In sum, we are not persuaded that the
Examiner’s articulated reasoning as to why it would have been obvious to
modify Haddock ’711’s mounting device lacks rational underpinnings.
Appellant further argues that “Alley provides insufficient disclosure
of [Appellant’s] claimed limitation.” Appeal Br. 13. More particularly,
Appellant argues that “Alley does not disclose the use of the screw
configured to directly engage the seam as claimed” and “does not disclose
the use of the mounting assembly that does not include a clamping pad 11.”
Id. at 14. The Examiner did not rely on Alley for teaching screws
configured to directly engage the seam or for the lack of a clamping pad.
Instead, the Examiner relied on Haddock ’711 for “disclosing heads 76 of
the screws 74 directly engaging the roof panel seam 90 to create the first two
or more deformations in Fig. 2F.” Ans. 6. As explained by the Examiner,
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“Alley was solely relied upon as disclosing, ‘the roof mounting bracket
being mounted on a roof panel seam in a manner that creates a generally
wave-shaped distortion in the roof panel seam . . . .’” Id. That Alley lacks
any other claim limitations is not persuasive of error in the Examiner’s
rejection.
Appellant additionally argues that Alley “teaches away from using
singular contact surface in the ball and screw arrangement” and “teaches that
direct engagement by the screw is a negative to be avoided.” Appeal Br. 14
(citing Alley 1:61–63, 2:44–58). Even assuming arguendo that Alley
teaches away from direct engagement by a screw, this is not persuasive of
error in the Examiner’s rejection which does not rely on a modification of
Alley. Instead, the Examiner’s rejection is based on a modification of
Haddock ’711, which already teaches direct engagement of a screw with a
roof panel seam, solely so as to utilize Alley’s hole positioning.
Appellant also argues that “Graham factors of non-obviousness rebut
any potential prima facie case of obviousness based on [the] Alley patent.”
Appeal Br. 14 (citing MPEP § 2141). More particularly, Appellant argues
that the Declaration of Jim Carpenter (Feb. 10, 2017) (hereinafter “the
Carpenter Declaration” or “Carpenter Decl.”) “describes the significant
installation difficulties that would be associated with attempting to install the
multi-part Alley device and contrasts those deficiencies with the easy
installation of the claimed device.” Id. at 14–15 (citing Carpenter Decl.
¶¶ 9–10). Appellant continues that the Carpenter Declaration also describes
(i) “the potential complete failure of the Alley device should the screw back
out due to thermal contraction and expansion”; and (ii) “the substantial
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commercial success of the present invention as contrasted with the Alley
device.” Id. at 15 (citing Carpenter Decl. ¶¶ 9–10).
We do not find the Declaration to be sufficient to rebut the
Examiner’s prima facie case of obviousness. Even assuming arguendo that
the declaration testimony is sufficient to establish deficiencies or problems
of the Alley device relative to the claimed device, we do not find such
evidence to be effective to rebut a prima facie case of obviousness that is
based on a combination of Haddock ’711 and Alley. In other words, the
Carpenter Declaration compares the claimed subject matter to Alley, but
does not compare the claimed subject matter to Haddock ’711. See, e.g., In
re Burckel, 592 F.2d 1175 (CCPA 1979) (citing In re Wright, 569 F.2d 1124
(CCPA 1977) (“A Rule 132 [A]ffidavit, to be effective, must compare the
claimed subject matter with the closest prior art.”); see also In re Merchant,
575 F.2d 865, 868 (CCPA 1978) (emphasis omitted) (“A comparison of the
claimed invention with the disclosure of each cited reference to determine
the number of claim limitations in common with each reference, bearing in
mind the relative importance of particular limitations, will usually yield the
closest single prior art reference.”). Because there is never a comparison
between the claimed subject matter and Haddock ’711, the Declaration fails
to establish that any benefit or advantage of the claimed subject matter is due
to features recited in the claims and not merely due to those features that
might be present in prior art such as Haddock ’711. In sum, the Carpenter
Declaration does not compare the claimed invention with Haddock ’711 in
any way so as to be effective to rebut a prima facie case of obviousness that
is based on combination of Haddock ’711 and Alley.
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We next consider Appellant’s assertion of “the substantial commercial
success of the present invention.” Appeal Br. 15. Appellant has explained
that products incorporating the claimed invention have “replace[d] some of
[Appellant’s] other products that do not embody the invention” because
“[t]he response and demand for these products from contractors and
distributors has been so overwhelmingly positive.” Carpenter Decl. ¶ 11.
Appellant provides additional testimony that “the sales of the clamps that are
the subject of the patent have more than doubled since 2014 and growth
rates continue to be on the rise” and also that there has been “a substantial
increase in . . . the total revenue attributable to these products.” Id.
Appellant maintains that “[t]his increase in sales show that Sno-Gem’s
existing and new customers are switching to products that embody the
invention.” Id. Appellant points out that “[o]nly a handful of companies
operate in this market” of “[t]he snow guard industry.” Id. ¶ 13. Appellant
adds that it is the Declarant’s belief that the “commercial success is
attributable to the design of the present invention” and “[t]his belief is
because [Appellant’s] customers have commented on the unmatched
strength, ease of installation, and versatility of [Appellant’s] products that
embody the invention.” Id. ¶ 11.
“In considering evidence of commercial success, care should be taken
to determine that the commercial success alleged is directly derived from the
invention claimed, in a marketplace where the consumer is free to choose on
the basis of objective principles, and that such success is not the result of
heavy promotion or advertising, shift in advertising, consumption by
purchasers normally tied to applicant or assignee, or other business events
extraneous to the merits of the claimed invention, etc.” MPEP § 716.03(b)
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(citing In re Mageli, 470 F.2d 1380 (CCPA 1973) (conclusory statements or
opinions that increased sales were due to the merits of the invention are
entitled to little weight) and In re Noznick, 478 F.2d 1260 (CCPA 1973)).
Here, the Carpenter Declaration does not provide sufficient evidence to
support its asserted belief that increased sales were due specifically to the
claimed invention as opposed to any of numerous other business reasons.
For example, any commercial success might instead be due to the small
number of companies operating in the market and/or Appellant’s existing
hold in the market. See, e.g., Pentec, Inc. v. Graphic Controls Corp., 776
F.2d 309 (Fed. Cir. 1985) (commercial success may have been attributable
to extensive advertising and position as a market leader before the
introduction of the patented product).
Appellant provided only Mr. Carpenter’s statement that customers
purchased the clamps specifically because of “using three or more
projections configured to engage the seam to create multiple deformation[s]
in the roof panel seam that generate a wave-shaped distortion” based on
customer comments regarding “strength, ease of installation, and
versatility.” Carpenter Decl. ¶ 11. This statement is evidence only of Mr.
Carpenter’s opinion as to why customers purchased the clamps. Appellant
failed to provide any declarations or statements from customers themselves
to explain why customers purchased the clamps. Appellant has failed to
provide adequate proof that sales “were a direct result of the unique
characteristics of the claimed invention—as opposed to other economic and
commercial factors unrelated to the quality of the patented subject matter.”
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996); see also id. (holding that
“applicant must submit some factual evidence that demonstrates the nexus
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between the sales and the claimed invention—for example, an affidavit from
the purchaser explaining that the product was purchased due to the claimed
features”); see also Cable Elec. Prods. V. Genmark, Inc., 770 F.2d 1015,
1026 (Fed. Cir. 1985) (“[A] nexus between the merits of the claimed
invention and the evidence of secondary considerations is required in order
for the evidence to be given substantial significance in an obviousness
decision.”) (internal quotation marks omitted). Having fully considered
Appellant’s evidence of nonobviousness, including the arguments pertaining
to the advantages and commercial success of the claimed invention relative
to Alley’s device, we agree with the Examiner that the evidence of
obviousness, on balance, outweighs the evidence of nonobviousness.
For the foregoing reasons, we sustain the rejection of claim 1, and
claims 2, 8, 26, 39, 40, 44, 45, and 52 falling therewith, under 35 U.S.C.
§ 103 as unpatentable over Haddock ’711 and Alley.
Rejection II
Dependent claim 5 depends indirectly from independent claim 1 and
recites “a notch in third member for aligning the roof panel seam within
space.” Appeal Br. 21 (Claims App.). Dependent claim 41 depends
indirectly from independent claim 39 and recites “a notch in said third wall
for aligning said roof panel seam within said second space [defined by the
first arm, second arm and third arm].” Id. at 25 (Claims App.). In rejecting
claim 5 and 41, the Examiner acknowledges that Haddock ’711 “fails to
disclose . . . a notch in third member for aligning roof panel seam within
space.” Final Act. 15. The Examiner finds that Hockman teaches “a notch
(Fig 2[,] 6) in third member (top member) for aligning roof panel seam
within space (6 is capable of use for alignment, as this is a statement of
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intended use).” Id. That is, the Examiner takes the position that “[n]otch 6
of Hockman is capable of helping align the roof panel seam in space.” Ans.
8. More particularly, the Examiner takes the position that “attachment to 7/8
of Hockman would straighten and align the bracket member, which would in
turn align the roof panel seam in space.” Id. The Examiner concludes that it
would have been obvious “to modify the bracket of Haddock [’711] with the
notch of Hockman in order to simplify attachment to another object by
allowing a slide over connection.” Final Act. 15 (citing Hockman ¶ 19).
Appellant replies that “the notch disclosed in [the] Hockman reference
could not be used in the way described by the Examiner.” Reply Br. 7
(capitalization omitted). Appellant further replies that the Examiner’s
position which relies on engagement of Hockman’s snow bar 8 with slots 7
with grooves 6 in Hockman’s mounting block/bracket so as to align
Hockman’s mounting block/bracket, and, in turn, align a roof panel seam
(disposed within Hockman’s mounting block/bracket) in space is
speculation, which is insufficient to support the rejection. Id.
The Examiner has not explained adequately how Hockman’s notch 6
is capable of aligning a roof panel seam within the space defined by the first,
second, and third members making up the U-shaped bracket or mounting
block. That is, the Examiner has not explained adequately how attachment
of snow rail 8 with slots 7 over groove 6 in the U-shaped mounting
block/bracket so as to straighten the U-shaped mounting block/bracket
would have any effect on alignment of a roof panel seam within the space
defined by the first, second, and third members of the U-shaped mounting
block/bracket. Hockman describes that “[s]ince there are many different
raised seam shapes, the shape of the slot 3 and 4 will be determined by the
Appeal 2019-000878
Application 14/476,664

18
shape of the profile to which it will be attached.” Hockman ¶ 14, Figs. 2–3,
6. Thus, it appears that Hockman contemplates that slot 3, 4 of the mounting
block/bracket will be shaped specifically to correspond to the profile of the
roof panel seam. It does not appear that engagement between grooves 7 of
snow rail 8 and groove 6 in the U-shaped mounting block/bracket affects the
alignment of a roof panel seam within the specifically-shaped space defined
by the first, second, and third members of the U-shaped mounting
block/bracket.
For the foregoing reasons, we do not sustain the rejection of claims 5
and 41 under 35 U.S.C. § 103 as unpatentable over Haddock ’711, Alley,
and Hockman.
Rejections III and IV
In contesting the rejections of claims 6, 7, 9–12, 42, 43, and 46–49,
Appellant relies on the same arguments and reasoning we found
unpersuasive in connection with independent claim 1. See Appeal Br. 7–15.
Accordingly, we also sustain the rejections, under 35 U.S.C. § 103, of,
claims 6, 7, 42, and 43 as unpatentable over Haddock ’711, Alley, and
Haddock ’196, and claims 9–12 and 46–49 as unpatentable over Haddock
’711, Alley, and Official Notice.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 8, 25,
39, 40, 44,
45, 52
103 Haddock ’711, Alley 1, 2, 8, 26, 39,
40, 44, 45, 52

Appeal 2019-000878
Application 14/476,664

19
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
5, 41 103 Haddock ’711, Alley,
Hockman
5, 41
6, 7, 42, 43 103 Haddock ’711, Alley,
Haddock ’196
6, 7, 42, 43
9–12, 46–49 103 Haddock ’711, Alley,
Official Notice
9–12, 46–49
Overall
Outcome
1, 2, 6–12, 26,
39, 40, 42–49,
52
5, 41

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