Ex Parte Fetko

Patent Trial and Appeal Board

Aug 31, 2017

13095253 (P.T.A.B. Aug. 31, 2017)

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.
13/095,253 04/27/2011 Duane Fetko 110026 2241
9961 7590 09/05/2017
Beck & Thomas, P.C.
SUITE 100
1575 McFarland road
PITTSBURGH, PA 15216-1808
EXAMINER
HIDALGO-HERNANDEZ, RUTH G
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
beckthomas_docketing @ cardinal-ip. com
docket @ beckthomas .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DUANE FETKO
Appeal 2016-002849
Application 13/095,253
Technology Center 3700
Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002849
Application 13/095,253
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 of the Examiner’s rejection
of claims 1—12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
Appellant’s claims are directed generally to “fittings used in
connection with ductwork in the HVAC industry.” Spec. 1 6. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for creating a manufactured sealed latched sheet
metal circular HVAC fitting comprising:
(a) providing a first subcomponent;
(b) providing a second subcomponent;
(c) applying a sealant to the first subcomponent or the
second subcomponent; and
(d) joining the first subcomponent to the second
subcomponent by:
(i) creating a first subcomponent coupling on the
first subcomponent;
(ii) creating a second subcomponent coupling on the
second subcomponent; and
(iii) using the first subcomponent coupling, the
second subcomponent coupling, and the sealant to join the
first subcomponent to the second subcomponent to create
a manufactured sealed latched sheet metal circular HVAC
fitting having a sealed latched joint.
The prior art relied upon by the Examiner in rejecting the claims on
THE INVENTION
REFERENCES
appeal is:
Jensen
Wang
US 2005/0017507 A1 Jan. 27, 2005
US 2007/0042193 A1 Feb. 22, 2007
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Application 13/095,253
Bloom US 2008/0303276 A1 Dec. 11, 2008
REJECTIONS
The Examiner made the following rejections:
Claims 1—6, 8, and 10 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Bloom. Ans. 2.
Claims 7 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bloom and Jensen. Ans. 4.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bloom and Wang. Ans. 5.
ANALYSIS
Appellant does not generally challenge the Examiner’s application of
the teachings regarding the structure of the elements disclosed in Bloom, but
does challenge the Examiner’s finding that Bloom teaches the claimed
fitting because “Bloom is teaching [] sealing the connection between
ductwork i.e. the connection between two separate ducts or the connection
between a duct and a fitting” and that “[tjhose connections are put together
by an installer and not by the manufacturer.” Reply Br. In other words, the
only distinction between the claims and Bloom is the location where the
components are connected and the identity of the person who connects the
components together. As long as the connected components are sold
connected together as a single unit, though made of joined components, the
unit constitutes a fitting.
The Examiner is correct that Bloom teaches a fitting in that Bloom
defines “ductwork” to “include[] other straight pieces of duct and all types
of fittings.” Bloom 143; contra App. Br. 10. Therefore, a workpiece that is
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Appeal 2016-002849
Application 13/095,253
comprised of components, i.e., ductwork and a fitting, joined together would
have been understood by one of ordinary skill in the art to be a “fitting” as
defined by Appellant. Appellant, however, is correct in that the instant
Specification defines a “manufactured sealed latch sheet metal HVAC fitting
[as] — a sheet metal piece used to connect two pieces of ductwork (which
could include fittings) or used to connect ductwork to an endpoint.” Spec. 1
23. This definition in and of itself does not preclude the Examiner’s
application of Bloom, but the Specification goes on to explain that such a
fitting as claimed verbatim in the claims “is sold as one piece that is
constructed of two or more parts having a latched connection that has sealant
in the latch connection when it is manufactured.” Id. The Specification also
states that “[a]n installer can take the manufactured sealed latched sheet
metal HVAC fitting and without applying any sealant install it in an HVAC
system and air will not leak out of the integral joints of the fitting.” Id.
It is not the case, as the Examiner suggests (Ans. 6), that Appellant’s
construction would amount to importing limitations from the Specification
because the Specification, in a section of the Specification entitled
“Definitions,” explicitly defines terms that appear verbatim in the claims.
Therefore, the claim language at issue must be given the definition provided.
We agree that these explicit defmitions/descriptions of a fitting as claimed
provide a distinction between something manufactured and sold as a unit
versus subcomponents that are manufactured to be later joined by an
installer. As such, we cannot agree that Bloom anticipates this claim
language.
Appellant, however, does not argue that there is any structural
difference between two discrete components/sub-components of Bloom that
are later assembled to create a fitting and the sub-components of the recited
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Application 13/095,253
fitting. So, as noted above, the only real distinction is the location where,
and by whom, the components are assembled. We first note that one of skill
in the art would have readily understood that if it were so desired, the
components of Bloom, or at least two, namely a piece of tubular ductwork
and a fitting (or a multi-piece fitting), all falling within the definition
provided by Bloom as ductwork, could have been pre-assembled and
shipped ready for installation by the installer. Furthermore, in one sense, the
manufacturer could be considered a primary manufacturer and the installer
could be a secondary manufacturer and, by assembling the two pieces, the
installer is actually manufacturing a fitting to then sell to an end-user. Thus
it would be manufactured and sold as a unit at least by the installer to the
end-user and meet the claims. Lastly, as is clearly shown at least in Jensen,
a multi-piece fitting 10 could be preassembled by a manufacturer having the
joint disclosed in Bloom. Again, Bloom defines ductwork as including both
fittings and ducts, so tap fitting 10 of Jensen could readily be considered a
fitting as defined by Appellant and provided for sale as a unit, just with the
joints disclosed in Bloom.
Regardless of the specific motivation chosen, claim 1 would have
been obvious over Bloom, either alone, or in combination with Jensen.
Accordingly, we do not sustain the Examiner’s anticipation rejection of
claims 1—6, 8, and 10, over Bloom, but we conclude that the claimed device
would have been obvious as explained above. Claims 1—6, 8, and 10, are
therefore now rejected, in a new ground of rejection pursuant to our
authority under 37 C.F.R. §41.50(b), under 35 U.S.C. § 103(a) as being
unpatentable over Bloom. Appellant provides no other argument against the
Examiner’s remaining obviousness rejections and relies only on the
arguments pertaining to Bloom. Accordingly, we affirm the Examiner’s
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Application 13/095,253
obviousness rejections of claims 7 and 9 over Bloom and Jensen and of
claims 11 and 12 over Bloom and Wang, with our modified application of
the teachings of Bloom.
DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1—6, 8, and 10, but enter new grounds of rejection of these
claims as explained above. We AFFIRM the Examiner’s rejection of claims
7, 9, 11, and 12, but denominate these also as new grounds due to our
differing application of Bloom under obviousness rather than anticipation.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
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Application 13/095,253
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2009).
AFFIRMED-IN-PART, 37 C.F.R, $ 41.50(b)
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