TL FAB, LP

Patent Trials and Appeals Board

Jul 23, 2020

15423459 - (D) (P.T.A.B. Jul. 23, 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.
15/423,459 02/02/2017 VICTOR O'MARA 961-P-2-USA 9538
71850 7590 07/23/2020
ONE, LLP
4000 MacArthur Blvd.
East Tower, Suite 500
Newport Beach, CA 92660
EXAMINER
KATCHEVES, BASIL S
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
07/23/2020 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):
ipdocketing@onellp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VICTOR O’MARA

Appeal 2020-001219
Application 15/423,459
Technology Center 3600
____________

Before JOHN C. KERINS, WILLIAM A. CAPP, and
ERIC C. JESCHKE, Administrative Patent Judges.

KERINS, 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 1–10. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies TL Fab, LP, as the real party in interest.
Appeal Br. 2.
Appeal 2020-001219
Application 15/423,459

2
THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a stair tread and a stairway assembly
including a plurality of stair treads. Claim 1 is illustrative, and is reproduced
below:
1. A stair tread comprising:

a metal pan including a bottom wall, first and second sidewalls,
a front wall, and a rear wall, said walls forming a cavity;

one or more foam inserts positioned within the metal pan's
cavity;

a concrete filler positioned within said metal pan which
encapsulates said one or more foam inserts, said concrete filler
having a top surface which is substantially planar to form an
upper walking surface.

THE REJECTIONS
The Examiner rejects:
(i) claims 1–3 and 6–8 under 35 U.S.C. § 103 as being unpatentable
over Classen (US 8,935,894 B1, issued Jan. 20, 2015) in view of Williams
(US 7,765,755 B2, issued Aug. 3, 2010) and
(ii) claim 4, 5, 9, and 10 under 35 U.S.C. § 103 as being unpatentable
over Classen in view of Williams and Vargas (US 2009/0293385 A1,
published Dec. 3, 2009).
Appeal 2020-001219
Application 15/423,459

3
ANALYSIS
Claims 1–3 and 6–8--Unpatentability over Classen and Williams
Appellant argues the claims as a group. We use claim 1 as the
representative claim for the group, and claims 2, 3, and 6–8 stand or fall with
claim 1.
The Examiner finds that Classen discloses a stair tread having a metal
pan and a concrete filler, as recited in claim 1, but does not disclose the use
of one or more foam inserts positioned in the cavity of the metal pan. Final
Act. 3. The Examiner cites to Williams as disclosing the use of foam inserts
in various structural concrete panels, and concludes that it would have been
obvious to modify the stair tread of Classen to include foam inserts in order
to reduce the weight of the tread, an advantage taught by Williams. Id.; see,
e.g., Williams 3:36–37, 4:57–58.
Appellant argues:
a) Classen not only does not teach positioning one or more foam
inserts in the cavity of the metal pan, Classen teaches away from
the addition of any embedded elements within the concrete;
b) Williams does not teach a cement stair tread, nor a metal shell
into which concrete is added, and expressly discourages the use
of metal structures––instead, frame members and a matrix of
joists and beams are used in constructing floor panels;
c) Classen does not provide the “weight saving” rationale
articulated by the Examiner; and
d) the person of ordinary skill in the art, when considering
Classen and Williams, would not embed elements in the Classen
Appeal 2020-001219
Application 15/423,459

4
stair tread and/or would strive to minimize use of metal in
constructing structural elements.
Appeal Br. 12–21; Reply Br. 2–4.
In support of argument a) above, Appellant quotes Classen as
informing that “embedded support elements such as rebar are not necessary
and their drawbacks may be avoided.” Appeal Br. 18–19, quoting Classen
1:44–47 and 2:23–26. Responding to the Examiner’s retort that Classen is
not proposed to be modified to add support elements, but rather foam inserts
to reduce weight (Answer 3), Appellant mistakenly asserts that the Examiner
finds rationale for the modification to Classen in the fact that foam is not a
structural support material. Reply Br. 3. The Examiner does not do so; the
Examiner merely points out that Classen does not teach away from the
possibility that non-structural support elements might be used in Classen’s
stair tread. Indeed, although not specifically identifying foam, Classen
contemplates that the stair treads may include “filler material,” in addition to
rebar (not preferred) or other supportive materials. Classen 5:44–46.
With respect to argument b), the Examiner points out that the
Williams disclosure that metal structures are not preferred due to their
weight is of no moment, in that the rejection does not propose modifying
Williams to add metal structure to any of its components; the rejection is
instead a proposed modification to Classen, which already employs a metal
pan containing concrete. Ans. 3. The proposed modification to add foam
inserts into the concrete structure would be seen by a person of ordinary skill
in the art as a measure to address (i.e., reduce) the weight of the Classen stair
tread while maintaining the structural integrity attendant to the use of a
Appeal 2020-001219
Application 15/423,459

5
metal pan. This is consistent with the Williams goal of reducing the weight
of the structural members.
Argument c) also misses the mark. The Examiner does not rely on
Classen as providing the rationale for modifying the Classen stair tread to
reduce its weight. Williams is relied on as disclosing the embedding of
foam in concrete panels, in part to provide a weight savings. Additionally,
the record on appeal contradicts Appellant’s assertion that the Examiner “is
silent” as to where Williams provides a reason for incorporating foam inserts
into structural members such as a stair tread. See Reply Br. 3.
Argument d) above is little more than what Appellant surmises would
be the result of the person of ordinary skill in that art taking into account the
purported teachings away of Classen and Williams. As noted above, we do
not credit the assertions that the references teach away from the Examiner’s
proposed combination. It matters not that the combined teachings of
Classen and Williams could well lead to other modifications to the structure
disclosed in either of the references; the Examiner’s proposed modification
is supported by the evidence of record, with an articulated reason for the
modification that is supported by rational underpinnings.
The rejection of claim 1 as being unpatentable over Classen and
Williams is sustained. Claims 2, 3, and 6–8 fall with claim 1.

Claims 4, 5, 9, and 10--Unpatentability over Classen, Williams, and Vargas
Appellant includes a separate subheading in the Appeal Brief
identifying the Vargas patent, and provides a brief discussion as to the
structure disclosed in Vargas. Appeal Br. 15–16. Appellant does not,
however, present arguments as to any alleged shortcomings of the Vargas
Appeal 2020-001219
Application 15/423,459

6
reference; and instead reiterates arguments directed to alleged deficiencies in
the combined teachings of Classen and Williams. Id. at 17–21. Consistent
with this, Appellant elsewhere states that all claims on appeal stand or fall
together, for the purposes of the appeal. Id. at 10.
The rejection of claims 4, 5, 9, and 10 is sustained for the same
reasons set forth in the discussion above directed to claims 1–3 and 6–8.

DECISION
The rejections of claims 1–10 as being unpatentable are affirmed.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6–8 103 Classen, Williams 1–3, 6–8
4, 5, 9, 10 103 Classen, Williams,
Vargas
4, 5, 9, 10
Overall
Outcome
1–10

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED