Ex Parte Lafreniere

Patent Trial and Appeal BoardNov 20, 2012

11179114 (P.T.A.B. Nov. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DENNIS P. LAFRENIERE ____________ Appeal 2010-010543 Application 11/179,114 Technology Center 3600 ____________ Before JENNIFER D. BAHR, HYUN J. JUNG, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010543 Application 11/179,114 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-6 and 8-22. Claim 7 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Appellant’s claimed invention relates to bracket clips for supporting a header stud in a building wall. Spec. 7, para. [0025]. Claims 1, 14, and 20 are independent. Claim 1, reproduced below, is illustrative: 1. In a metal framed building wall including a framed opening defined by a pair of generally vertically oriented jamb studs and at least one generally horizontally oriented header stud spanning therebetween, the improvement comprising: a pair of bracket clips for respective attachment to the jamb studs at an adjustably selected vertical position lining an inboard side of the framed opening, and for vertically supporting opposite ends of the header stud; each of said bracket clips having a width dimension not exceeding the width of the associated jamb stud; each of said bracket clips defining at least one generally horizontally oriented support land for vertically supporting an associated end of the header stud; at least one first fastener; Appeal 2010-010543 Application 11/179,114 3 each of said bracket clips further including a base wall for mounting substantially flush with the associated jamb stud and having at least one vertically elongated slot formed therein for reception therethrough of said at least one first fastener for attaching said base wall to the associated jamb stud, said slot accommodating vertical positional adjustment of said bracket clip relative to the associated jamb stud substantially without permitting horizontal positional adjustment therebetween; second fasteners for attaching said bracket clips respectively to the opposite ends of the header stud; and at least one third fastener for precision securement of said base wall of each of said bracket clips to the associated jamb stud substantially without permitting positional adjustment therebetween. REJECTIONS Appellant seeks review of the following rejections: 1. Claims 1-6, 8, 9, 11-17, and 19-22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Brady (US 2005/0066611 A1; pub. Mar. 31, 2005) and diGirolamo (US 6,612,087 B2; iss. Sep. 2, 2003); and 2. Claims 10 and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Brady, diGirolamo, and Findleton (US 3,036,347; iss. May 29, 1962). OPINION Claims 1, 14, and 20 each include “bracket clips . . . having at least one vertically elongated slot” for reception of a “first fastener” to allow Appeal 2010-010543 Application 11/179,114 4 vertical adjustment of the bracket clips or mounting bracket clips by a first fastener extending through at least one vertically elongated slot formed for vertical adjustment. Claims 1, 14, and 20 each further include “at least one third fastener” to precisely secure each bracket clip to a stud “without permitting positional adjustment therebetween” or mounting the bracket clips with at least one third fastener without permitting positional adjustment therebetween. In the rejection of claims 1, 14, and 20, the Examiner determined that Brady discloses each of the features of claims 1, 14, and 20 except “a metal framed wall [and] the bracket clips having at least one vertically elongated slot . . . accommodating vertical positional adjustment of said bracket clip.” Ans. 5, 7, 9. The Examiner cites diGirolamo as disclosing these features and concludes that it would have been obvious to modify Brady accordingly. Ans. 5-10. Appellant acknowledges that “a person skilled in the art may indeed find it obvious to combine the cited Brady and diGirolamo references.” App. Br. 13. Appellant further acknowledges that “it may . . . be obvious to substitute Brady’s small round holes (200) with diGirolamo’s vertically elongated slots (20).” Id. However, Appellant contends that it would not be obvious to include both the holes (200) from Brady and the slots (20) from diGirolamo in a single bracket because diGirolamo provides vertical adjustment for the bracket at all times and it is not desirable to provide vertical adjustment for the bracket in Brady. App. Br. 13-14 and Reply Br. 3-4. We are not persuaded as familiar items may have obvious uses beyond Appeal 2010-010543 Application 11/179,114 5 their primary purposes. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007). Although the slots 20 of diGirolamo may have the primary purpose of providing constant vertical adjustment, we fail to see how those slots cannot also allow vertically adjusting the header member, easy installation, and adjusting manually or due to changes in forces or weather, as determined by the Examiner. See Ans. 5-10. Appellant notes that “[t]he examiner’s contention . . . is in fact NOT disclosed or suggested or remotely hinted at by the Brady and/or the diGirolamo references.” Reply Br. 4. Appellant’s argument requiring a reason to modify Brady based on the disclosure of Brady or diGirolamo is foreclosed by KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), in which the Court rejected the rigid requirement of a teaching, suggestion or motivation to combine known elements in order to show obviousness. KSR Int’l Co., 550 U.S. at 415. Rather, rejections based on obviousness must be supported by “some articulated reasoning with some rational underpinning” to combine known elements in the manner required by the claim. Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Appellant then argues that the Examiner must be relying on impermissible hindsight in the proposed combination of Brady and diGirolamo because neither reference discloses or suggests a two-step mounting sequence or the sequence and manner of installation recited in the claims. App. Br. 14-15 and Reply Br. 5. As explained by the Examiner, “[o]ne skilled in the art has the knowledge to combine two ordinary, familiar methods of mounting a bracket Appeal 2010-010543 Application 11/179,114 6 with fasteners” and both steps of attaching brackets to studs are “known in the art as seen in the prior art of record.” Ans. 15. The Examiner has relied upon knowledge of the skilled artisan when combining Brady and diGirolamo, which, the Examiner finds, disclose familiar methods. See KSR, 550 U.S. at 416 (stating that the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”). This does not amount to impermissible hindsight. Appellant additionally argues that the rejection is improper because “the Examiner’s analysis seeks to combine [Brady and diGirolamo] in a sequence and manner that is clearly incompatible with the disclosures and teachings of the references themselves.” Reply Br. 3; see also App. Br. 14. We disagree. Replacing one of the holes (200) in Brady with a slot to provide vertical adjustability during assembly would not alter the bracket in a sequence or manner incompatible with the disclosure of Brady. Instead, the modified bracket of Brady would be vertically adjustable via the slot and then precisely secured using one of the numerous holes (200). Appellant argues that “Brady teaches away from such ‘vertical positional adjustment’, whereas diGirolamo teaches away from any precision securement.” App. Br. 14. However, the Examiner has proposed modifying Brady to include a slot from diGirolamo for vertical adjustment of the bracket in Brady and has not proposed modifying diGirolamo to include precision securement. Appellant’s argument fails to persuasively Appeal 2010-010543 Application 11/179,114 7 explain why the references teach away from the Examiner’s proposed modifications to Brady. Instead, Appellant contends that a teaching away exists because Brady only includes holes and diGirolamo includes only slots. Id. However, simply that there are differences between two references is not sufficient to establish that such references teach away from their combination, and Appellant does not point to any portion of Brady or diGirolamo that disparages the inclusion of the slot in the bracket of Brady. For these reasons, we do not agree that the references teach away from the Examiner’s proposed modifications to Brady. Claims 2-6, 8-13, 15-19, 21, and 22 are not argued separately. See App. Br. 12-17 and Reply Br. 2-6. For the above reasons, we sustain the Examiner’s decision to reject claims 1-6 and 8-22. DECISION We AFFIRM the Examiner’s decision to reject claims 1-6 and 8-22. 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 mls