Ex Parte Anderson

Patent Trial and Appeal BoardOct 29, 2012

10830821 (P.T.A.B. Oct. 29, 2012)

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. 10/830,821 04/23/2004 Ted F. Anderson 29984/00001 4303 70130 7590 10/29/2012 BULLIVANT HOUSER BAILEY PC 888 SW 5th Avenue Ste. 300 Portland, OR 97204 EXAMINER FIGUEROA, ADRIANA ART UNIT PAPER NUMBER 3633 MAIL DATE DELIVERY MODE 10/29/2012 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 TED F. ANDERSON ____________ Appeal 2010-010179 Application 10/830,821 Technology Center 3600 ____________ Before LINDA E. HORNER, PATRICK R. SCANLON, and BRADFORD E. KILE, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ted F. Anderson (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-3, 7-12, and 18-27. Claims 4- 6, 13-17, and 28-54 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-010179 Application 10/830,821 2 THE INVENTION Appellant’s claimed invention “relates to roof battens used for applying tiles to a roof, and, more particularly, to a batten product integrally- formed of plastic.” Spec., para. [0001]. Claim 1, reproduced below with paragraphing added, is the sole independent claim and is representative of the subject matter on appeal. 1. A roof batten comprising spaced, generally parallel upper and lower surfaces with a series of struts connecting the upper and lower surfaces, wherein the spaced surfaces are elongated having a front edge, a back edge and side ends peripheral to the surfaces, wherein the struts are spaced from one another, said struts and surfaces forming a series of chambers for fluid passage, wherein the upper and lower surfaces and the struts are formed having a thickness of at least 1/32 inch, wherein the struts and the upper and lower surfaces are integrally-formed of plastic, and wherein the spaced surfaces are separated by at least 5/16 inch. THE REJECTIONS Appellant seeks review of the following rejections: 1. The Examiner rejected claims 1, 3, 10, 18-21, and 25-27 under 35 U.S.C. § 102(b) as being anticipated by Morris (US 6,357,193 B1; iss. Mar. 19, 2002). 2. The Examiner rejected claims 2, 7-9, and 20-26 under 35 U.S.C. § 103(a) as being unpatentable over Morris. Appeal 2010-010179 Application 10/830,821 3 3. The Examiner rejected claims 11 and 12 under 35 U.S.C. § 103(a) as being unpatentable over Morris and Vasquez (US 5,471,807; iss. Dec. 5, 1995). ISSUE The issue presented by this appeal is whether Morris discloses a roof batten comprising spaced, generally parallel upper and lower surfaces with a series of struts connecting the upper and lower surfaces “wherein the spaced surfaces are separated by at least 5/16 inch” as called for in independent claim 1. ANALYSIS Anticipation by Morris Claim 1, as amended by After-Final Amendment to incorporate the limitation from dependent claim 17, recites “wherein the spaced surfaces are separated by at least 5/16 inch.” The Examiner determined that Morris discloses spaced surfaces 52 and 54 being separated by at least 5/16 inch. Ans. 4 (citing Morris, col. 4, ll. 53-54 and fig. 5) and Ans. 11 (stating that “Morris teaches a batten that can be formed of only one layer and the batten can have a thickness of 5/8 inch . . . .”). Appellant argues that the cited disclosure in Morris describes an exemplary roof batten 30 comprised of a series of layers and thus it fails to disclose anything about the distance between the surfaces 52 and 54 in the embodiment of Figure 5. App. Br. 5. We agree with Appellant’s reading of Morris. As correctly noted by Appellant, the cited passage of Morris describes that an “[e]xemplary roof batten 30 may be about 5/8 inches in thickness, 1 1/2 inches in width, and include two hinged segments 48 inches in length.” Morris, col. 4, ll. 53-55 (emphasis added). As such, Morris describes the Appeal 2010-010179 Application 10/830,821 4 overall thickness of an exemplary batten formed of “two hinged segments” as being about 5/8 inches. Contrary to the Examiner’s finding (Ans. 11), Morris does not describe in this passage a batten formed of a single layer having a thickness of 5/8 inches. We decline to speculate from this disclosure that the thickness of a batten, such as the embodiment shown in Figure 5 formed of one layer, would automatically be half the thickness of the exemplary batten formed of two hinged layers. As such, the Examiner’s finding that Morris discloses a roof batten wherein the spaced surfaces are separated by at least 5/16 inch is not supported by a preponderance of the evidence. Accordingly, we do not sustain the rejection of independent claim 1, or its dependent claims 3, 10, 18-21, and 25-27 as anticipated by Morris.1 Obviousness based on Morris Claims 2, 7-9, and 20-26 depend from independent claim 1. The rejections of claims 2, 7-9, and 20-26 are based on unpatentability over Morris. While we agree with the Examiner’s analysis that the additional subject matter of these dependent claims would have been an obvious matter of design choice (Ans. 5-8), the Examiner’s rejection under 35 U.S.C. § 103(a) of these claims is based on the underlying erroneous finding that Morris discloses a roof batten wherein the spaced surfaces are separated by at least 5/16 inch, as called for in independent claim 1. As 1 We make no determination as to whether it would have been obvious to one of ordinary skill in the art at the time of Appellant’s invention to make the roof batten of the Figure 5 embodiment of Morris such that the spaced surfaces are separated by at least 5/16 inch, as such a rejection has not been presented to us by the Examiner or briefed by Appellant in this appeal. See MPEP § 1213.02 (“Since the exercise of authority under 37 CFR 41.50(b) [to enter a new ground of rejection] is discretionary, no inference should be drawn from a failure to exercise that discretion.”). Appeal 2010-010179 Application 10/830,821 5 such, we do not sustain the rejection of claims 2, 7-9, and 20-26 as being unpatentable over Morris for the reason discussed supra in our analysis of independent claim 1. Obviousness based on Morris and Vasquez Claims 11 and 12 depend from independent claim 1. The rejections of claims 11 and 12 are based on unpatentability over Morris in view of the teaching in Vasquez of a batten made of recycled polypropylene. Ans. 8. Appellant does not contest the Examiner’s finding as to the scope and content of Vasquez or the proposed combination of Morris and Vasquez, and instead relies on the arguments for patentability of claim 1 as the basis for the patentability of claims 11 and 12. App. Br. 10. Because the Examiner’s rejection of claims 11 and 12 is based on the underlying erroneous finding that Morris discloses a roof batten wherein the spaced surfaces are separated by at least 5/16 inch, as called for in independent claim 1, we do not sustain the rejection of claims 11 and 12 as being unpatentable over Morris and Vasquez for the reason discussed supra in our analysis of independent claim 1. CONCLUSION Morris does not disclose a roof batten comprising spaced, generally parallel upper and lower surfaces with a series of struts connecting the upper and lower surfaces “wherein the spaced surfaces are separated by at least 5/16 inch” as called for in independent claim 1. Appeal 2010-010179 Application 10/830,821 6 DECISION We REVERSE the decision of the Examiner to reject claims 1-3, 7-12, and 18-27. REVERSED Klh