Ex Parte Haddock et al

Patent Trial and Appeal Board

May 26, 2017

12856827 (P.T.A.B. May. 26, 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.
12/856,827 08/16/2010 Robert M. M. Haddock 50200-00096 2898
25231 7590 05/31/2017
MARSH, FISCHMANN & BREYFOGLE LLP
8055 East Tufts Avenue
Suite 450
Denver, CO 80237
EXAMINER
SADLON, JOSEPH
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
05/31/2017 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):
PTOMail @ mfblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT M. M. HADDOCK
and DUSTIN MARSHALL-MASTON HADDOCK
Appeal 2016-001962
Application 12/856,8271
Technology Center 3600
Before MICHAEL J. STRAUSS, MICHAEL M. BARRY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3—5, 14—18, and 20—28, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Technology
The application relates to a “mounting assembly ... for installing
solar cell or photovoltaic modules ... on a building surface.” Spec.
Abstract. Claims 1 and 20 are illustrative and reproduced below with the
limitations at issue emphasized:
1 According to Appellants, the real parties in interest are RMH Tech,
LLC/Metal Roof Innovations, Ltd. App. Br. 1.
Appeal 2016-001962
Application 12/856,827
1. A photovoltaic system, comprising:
a building surface;
a plurality of mounting assemblies comprising a first mounting
assembly, wherein each said mounting assembly comprises:
a mounting device mounted to said building surface;
a mounting plate positioned on said mounting device and
comprising oppositely disposed upper and lower surfaces,
wherein said mounting plate comprises a plurality of apertures
that each extend completely through said mounting plate and that
are located outside of where said mounting device engages said
lower surface of said mounting plate, wherein said lower surface
of said mounting plate comprises a plurality of wiring clips,
wherein each aperture of said plurality of apertures is associated
with only a single wiring clip of said plurality of wiring clips,
wherein each said aperture is associated with a different said
wiring clip of said plurality of wiring clips, wherein each said
wiring clip of said plurality of wiring clips comprises a first
segment that extends downwardly from said lower surface of
said mounting plate and a second segment that extends from its
corresponding said first segment, that is vertically aligned with a
corresponding said aperture, and that is vertically offset from
said lower surface of said mounting plate, and wherein said
second segment for each said wiring clip extends from its
corresponding said first segment in a different direction
compared to said second segment of every other said wiring clip;
a clamping member comprising first and second clamping
legs; and
a threaded clamp fastener that extends through said
clamping member, through said mounting plate, and that is
secured to said mounting device; and
first and second photovoltaic modules positioned on said upper
surface of said mounting plate of said first mounting assembly, wherein
said first clamping leg of said first mounting assembly is engaged with
said first photovoltaic module, and wherein said second clamping leg
of said first mounting assembly is engaged with said second
photovoltaic module.
2
Appeal 2016-001962
Application 12/856,827
20. A photovoltaic system, comprising:
a building surface;
a plurality of mounting assemblies comprising a first mounting
assembly, wherein each said mounting assembly comprises:
a mounting device mounted to said building surface;
a mounting plate positioned on said mounting device and
comprising oppositely disposed upper and lower surfaces,
wherein said mounting plate comprises a first aperture that
extends through said mounting plate and that is located outside
of where said mounting device engages said lower surface of said
mounting plate, wherein said lower surface of said mounting
plate comprises a first wiring clip, wherein said first wiring clip
comprises a first segment that extends downwardly from said
lower surface of said mounting plate and a second segment that
extends from said first segment, that is vertically aligned with
said first aperture, and that is vertically offset from said lower
surface of said mounting plate, wherein said second segment
extends toward said mounting plate and then back away from
said mounting plate in proceeding in a direction that is away
from said first segment to define a recess within said second
segment;
a clamping member comprising first and second clamping
legs; and
a threaded clamp fastener that extends through said
clamping member, through said mounting plate, and that is
secured to said mounting device; and
first and second photovoltaic modules positioned on said upper
surface of said mounting plate of said first mounting assembly, wherein
said first clamping leg of said first mounting assembly is engaged with
said first photovoltaic module, and wherein said second clamping leg
of said first mounting assembly is engaged with said second
photovoltaic module, .2
2 In the event of further prosecution, we encourage amending to delete the
“, ” in “module, See Reply to Request for Continued Examination 4 (Jan.
3, 2014) (amending claim 20 to delete a clause after the comma, but not
deleting the comma).
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Appeal 2016-001962
Application 12/856,827
Rejection
Claims 1, 3—5, 14—18, and 20-28 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Haddock (US 2008/0302928 Al; Dec. 11, 2008)
and Edwards (US 6,158,180; Dec. 12, 2000). Final Act. 2.
ISSUES
1. Did the Examiner err in finding Edwards teaches or suggests “a
plurality of wiring clips,” as recited in claim 1?
2. Did the Examiner err in finding Edwards teaches or suggests
“said second segment for each said wiring clip extends from its
corresponding said first segment in a different direction compared to said
second segment of every other said wiring clip,” as recited in claim 1?
3. Did the Examiner err in combining Haddock and Edwards for
purposes of the obviousness of claim 1 ?
4. Did the Examiner err in finding Edwards teaches or suggests
“said second segment extends toward said mounting plate and then back
away from said mounting plate in proceeding in a direction that is away
from said first segment to define a recess within said second segment,” as
recited in claim 20?
ANALYSIS
Claims 1, 3—5, and 14—18
Claim 1 recites “a plurality of wiring clips.” Appellants contend
“Edwards only addresses a single support hook 120,” not a plurality as
required by claim 1. App. Br. 7 (emphasis added). We agree with the
Examiner, however, that Edwards teaches “FIG. 26 is intended to show the
under surface 168 of the wall 42 of a device as shown in FIG. 21 in which
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Appeal 2016-001962
Application 12/856,827
the support hook 120 has been provided in substitution for the holes 156 and
82.” Edwards 15:63—66; Ans. 15—16. Figure 26 shows a zoomed-in view of
one hook, but Figure 21 is a zoomed-out view depicting multiple groups of
“holes 156 and 82,” and each such group would be replaced by a hook from
Figure 26. Thus, we are not persuaded of error in the Examiner finding
Edwards teaches or suggests a plurality of wiring clips.
Claim 1 also recites “said second segment for each said wiring clip
extends from its corresponding said first segment in a different direction
compared to said second segment of every other said wiring clip.”
Appellants contend “Edwards only addresses a single support hook
120. Therefore, Edwards cannot disclose a plurality of wiring clips, where
in effect each wiring clip is disposed in a different orientation.” App. Br. 7—
8. For the reasons discussed above, however, we are not persuaded Edwards
is limited to a single hook.
Appellants further contend “the Examiner’s Answer takes the position
that [disposing wire clips in different orientations] is simply a matter of
design choice” (such as “to maximize the use of space between the mounting
plate and the standing seam”), whereas “Appellant’s original specification
reveals a very different reason for disposing the various mounting clips in
different orientations.” Reply Br. 1 (quoting Ans. 18). The Supreme Court,
however, has held that “[t]he question is not whether the combination was
obvious to the patentee but whether the combination was obvious to a person
with ordinary skill in the art.” KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398,
420 (2007). “In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls.” Id. at 419. Thus, “the prior art need not address the
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Appeal 2016-001962
Application 12/856,827
exact problem that the patentee sought to resolve” because “any need or
problem known in the relevant field of endeavor at the time of invention can
provide a reason to combine.” Tyco Healthcare Grp. LP v. Ethicon Endo-
Surgery, Inc., 11A F.3d 968, 977 (Fed. Cir. 2014). Accordingly, whether the
inventors were motivated by a different purpose is not persuasive of error.
Appellants also argue “the wall 42 of Edwards and the mounting plate
110 [of Haddock] are not corresponding structures” and “[i]f one skilled in
the art were instructed to incorporate the hook 120 into . . . Haddock,” then
other parts of Edwards would also be incorporated into Haddock. App. Br.
9. However, “[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). We are
not persuaded a person of ordinary skill motivated as set forth by the
Examiner would bodily incorporate needless structures from Edwards (such
as walls 42 and 44) rather than simply adapt Edwards’ hook 120 into
Haddock’s mounting plate 110.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 3—5 and 14—18, which Appellants argue are patentable for similar
reasons. See App. Br. 6; 37 C.F.R. § 41.37(c)(l)(iv).
Claims 20—28
Independent claim 20 recites a wiring clip comprises a first segment
that extends downwardly from said lower surface of said mounting plate and
a second segment that extends from said first segment, wherein “said second
segment extends toward said mounting plate and then back away from said
mounting plate in proceeding in a direction that is away from said first
segment to define a recess within said second segment” (emphasis added).
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Appeal 2016-001962
Application 12/856,827
Appellants contend “[t]he portion of the hook 120 in Figure 26 of
Edwards that engages the conduit 172 appears to be flat and . . . parallel to
the wall 42.” App. Br. 11. The Examiner does not address this argument of
Appellants. See Final Act. 10 (citing only Edwards’ “shape of 186, FIG.
26”); Ans. 20-21. Although Edwards teaches element 186 of Figure 26
extends back away from wall 42, the Examiner has not shown Edwards
teaches the second segment extends “toward said mounting plate.”3
Accordingly, we are constrained to reverse the Examiner’s rejection
of claim 20, and its dependent claims 21—28 (including both claims
numbered 24).4
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1, 3—5, and 14—18.
We reverse the Examiner’s decision rejecting claims 20—28 (including
both claims numbered 24).
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.
§ 41.50(f).
AFFIRMED-IN-PART
3 In the event of further prosecution, the Examiner may wish to consider
whether this limitation is taught or suggested by another reference, such as
Figure 7 of Heuer (US 2,658,247; Nov. 10, 1953).
4 Appellants correctly point out “there is a claim numbering error in the
pending claims” in that “there are two instances of claim 24.” App. Br. 10.
In the event of further prosecution, we encourage correcting this error.
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