Ex Parte Petta et al

Patent Trial and Appeal Board

Feb 29, 2016

12324467 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/324,467 11/26/2008
1059 7590 03/01/2016
BERESKIN & PARR LLP/S.E.N.C.R.L., s.r.l.
40 KING STREET WEST
40th Floor
TORONTO, ON MSH 3Y2
CANADA
FIRST NAMED INVENTOR
Gabriel Petta
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3445-P89l1US03 9694
EXAMINER
KENNEDY, JOSHUA T
ART UNIT PAPER NUMBER
3649
MAILDATE DELIVERY MODE
03/01/2016 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 GABRIEL PETTA and ROLF J. OHRSTROM
Appeal2013-010965
Application 12/324,467
Technology Center 3600
Before WILLIAM A. CAPP, LEE L. STEPINA, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-3, 5, 6, 10, 13-19, and 21-28. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2013-010965
Application 12/324,467
THE INVENTION
Appellants' invention relates to railing systems for porches and
stairways. Spec. 1. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A railing apparatus, comprising:
a) an upper rail, the upper rail comprising an upper beam
extending lengthwise of the upper rail;
b) a lower rail spaced below and generally parallel to the
upper rail, the lower rail comprising a lower beam extending
lengthwise of the lower rail; and
c) a plurality of balusters extending generally vertically
between the upper and lower rails, each baluster including
a hollow casing and
a brace extending lengthwise within the casing, the brace
having an upper brace end secured to the upper rail and a
lower brace end secured to the lower rail, and
wherein each of the upper beam and lower beam comprises
a proximal face directed towards the balusters, and a distal face
opposite the proximal face, and
wherein the upper rail comprises an upper cover generally
covering the distal face of the upper beam.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Burt
Souza
Murdock
Bryan
Curatolo
Svalbe
McGinness
us 3, 174,727
us 3,357,681
us 3,756,567
US 6,719,278 B2
US 6,874,766 B2
US 7 ,032,890 B2
US 2008/0179579 Al
2
Sept. 18, 1962
Oct. 21, 1965
Sept. 4, 1973
Apr. 13, 2004
Apr. 5, 2005
Apr. 25, 2006
Jul. 31, 2008
Appeal2013-010965
Application 12/324,467
The following rejections are before us for review:
1. Claims 1, 5, 6, 21, 22, 24, and 25 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Curatolo.
2. Claims 1-3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Curatolo and Svalbe.
3. Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Curatolo and Souza.
4. Claims 10, 14, and 26-28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Curatolo, Bryan, and McGinness.
5. Claims 13, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Curatolo, Bryan, McGinness, and Souza.
6. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Curatolo, Bryan, McGinness, Souza, and Burt.
7. Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Curatolo, Bryan, McGinness, Souza, Burt, and Murdock.
OPINION
Anticipation by Curatolo
Appellants argue claim 1, but do not separately argue for the
patentability of claims 5, 6, 21, 22, 24, and 25. Appeal Br. 11-14. We
consider Appellants' arguments with respect to claim 1 and claims 5, 6, 21,
22, 24, and 25 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv)
(2015).
The Examiner finds that Curatolo discloses all of the limitations of
claim 1. Final Action 2-3. In particular, the Examiner finds that element 13
of Curatolo constitutes a brace within the meaning of claim 1. Id. at 3.
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Application 12/324,467
Appellants traverse the Examiner's rejection by arguing that Curatolo
fails to disclose a brace within the baluster casings. Br. 12. Appellants
argue that the Examiner erroneously reads the brace limitation of claim 1
onto a "screw port" of Curatolo by using an overly broad interpretation of
the term "brace." Id.
In response, the Examiner states that the walls of Curatolo that define
the hole that serves as a screw boss also constitute a brace. Ans. 18. The
Examiner states that the structure of element 13 in Curatolo imparts rigidity
and stiffness to the post/baluster walls which comports with the plain
meaning of "brace." Id. at 19. The Examiner states that there is no special
definition of the term "brace" in Appellants' Specification that differentiates
the meaning of "brace" as used in claim 1 from the plain meaning of brace
that is consistent with the structure disclosed in Curatolo. Id.
Curatolo explains:
Posts 7 are preferably formed in an extrusion process.
According to this extrusion process the post are substantially
hollow and include screw ports 13 internally of the opposite
ends 9 and 11 of the posts. Each post is symmetrical over its
entire length with the reference numeral 9 only being used to
designate the upper end of the post and the reference
numeral 11 being to designate the lower end of the post. As is
to be understood, both ends of the post are identical and each
post may be used in a position reversed to what is shown in the
drawings.
The posts are preferably formed as part of a continuous
length of post and then cut to the desired length for the
particular deck railing application.
Curatolo, col. 2, 11. 22-35 (emphasis added). The foregoing passage from
Curatolo supports the Examiner's position and essentially refutes the
Appellants' position. Contrary to Appellants' allegations that element 13 is
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Application 12/324,467
merely a screw port, but not a brace, Curatolo discloses that each post is
symmetrical over its entire length and that a post is formed as part of a
continuous length that is cut to a desired length. In other words, while the
structure that is identified at each end of the post is identified as a screw
port, such structure extends throughout the entire length of the post. While
such structure may be capable of receiving a fastening screw at either end of
the post, the Examiner is correct in finding that the structure, when
considered along the entire length of the post, imparts rigidity or steadiness
to the post and, therefore, constitutes a "brace" within the plain meaning of
the term.
The Examiner's findings of fact are supported by a preponderance of
the evidence and we sustain the anticipation of rejection of claims 1-5, 6,
21, 22, 24, and 25.
Claims 1 and 2
Unpatentability of Claims 1-3
Curatolo and Svalbe
Appellants argue claim 1, but do not separately argue for the
patentability of claim 2. Br. 14--15. We consider Appellants' arguments
with respect to claim 1 and claim 2 stands or falls with claim 1. See 3 7
C.F .R. § 41.3 7 ( c )(1 )(iv) (2015).
The Examiner finds that Curatolo discloses all of the limitations of
claim 1. Final Action 2-5. Indeed, the Examiner finds that Curatolo
anticipates claim 1. Id. The Examiner relies on Svalbe as disclosing a
reinforcing metal brace that lies lengthwise within each baluster. Id. at 5.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to modify the
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Appeal2013-010965
Application 12/324,467
apparatus of Curatolo by adding a metal brace within each baluster, as taught
by Svalbe. Id. According to the Examiner, a person of ordinary skill in the
art would have done this to strengthen the balusters. Id.
Appellants argue that the rejection fails to address the limitation
directed to "an upper brace end secured to the upper rail and a lower brace
end secured to the lower rail." Br. 14. Appellants also argue that it would
not have been obvious to a person of ordinary skill in the art to secure the
steel tube or rod of Svalbe to the upper lower rails of Curatolo. Id. at 15.
In response, the Examiner states that the claim merely requires that
the brace be "secured" at each end to the rails. Ans. 21. The Examiner
states that "the brace of Svalbe extends into and [is] contained within the
upper and lower rails." Id. According to the Examiner, such containment is
sufficient to satisfy the claim language that the brace is secured to the rails.
Id. The Examiner states that a person of ordinary skill in the art "would
import such structure when combining the teaching of Svalbe to the baluster
of Curatolo." Id. Svalbe discloses as follows:
The picket 50 sheathes a picket strengthening member 55
shown by hidden lines in FIG. 5. The picket strengthening
member 55 moves inside the picket 50. The picket
strengthening member 55 is preferably a steel tube or rod. The
picket strengthening member 55 can be round or square, or any
other convenient shape in cross section. The vertical picket
strengthening member 55 traverses the distance between the top
and bottom rails 20, 30 and drops through the member aperture
35 of the bottom rail 30 to rest upon a horizontal strengthening
member 70 located in the bottom rail 30. Thus, the picket
strengthening member 55 provides two functions: 1) strengthen
the picket 50, and 2) lock into place (position) the bottom of the
picket 50 on the bottom rail 30 at bottom member aperture 35.
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Appeal2013-010965
Application 12/324,467
Svalbe, col. 2, 1. 61- col. 3, 1. 8. \Ve think the language in column 3
explaining that the strengthening member locks the bottom of the picket on
the bottom rail is sufficient to satisfy the claim language that the lower brace
end is secured to the lower rail. Similarly, Figure 5 of Svalbe depicts the
upper end of strengthening member 55 extending into top rail 20. The top
rail is described as having a plurality of picket apertures 25. Svalbe, col. 2,
11. 29-41. When assembled, the top of picket 50 is inserted into a picket
aperture 25 of the top rail 20 thereby locking it into place. Id. at col. 2,
11. 54--61. The strengthening member 55 traverses the distance between the
top and bottom rails. Id. col. 2, 1. 64 - col. 3, 1. 1. This teaching is sufficient
to satisfy the claim language that the upper brace end is secured to the upper
rail. Thus, the Examiner's findings are supported by a preponderance of the
evidence.
Appellants argument that it would not have been obvious to secure the
steel rod of Svalbe to the rail of Curatolo is not supported by evidence or
technical reasoning and is, therefore, unpersuasive. It is well settled that an
obviousness analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). A
person of ordinary skill in the art is also a person of ordinary creativity. Id.
at 421. An artisan must be presumed to know something about the art apart
from what the references disclose. See In re Jacoby, 309 F.2d 513, 516
( CCP A 1962 ). Here, Curatolo teaches fastening a baluster to a rail with
screws or "threaded attachment members." See Curatolo, col. 1, 11. 34--35.
Svalbe teaches extending pickets and associated strengthening members
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Application 12/324,467
through picket apertures. Svalbe, col. 1, 11. 31--46. In view of the evidence
before us, we are not persuaded that designing appropriate means to secure
Svalbe's strengthening member to Curatolo's rails would require anything
more than ordinary skill.
We sustain the unpatentability rejection of claims 1 and 2.
Claim 3
Claim 3 depends from claim 2 and adds the limitation: "wherein the
brace of each baluster is formed of a single extruded lineal cut to length, the
brace having a brace length extending from the upper rail to the lower rail,
and the brace having a constant cross-sectional profile along the brace
length." Claims App. The Examiner considers the claim language directed
to being "extruded" to be a product-by-process limitation Final Action 5.
Appellants argue that forming a brace as a single extruded lineal cut to
length results in relevant structural distinctions such as a particular micro-
structure, stress and strain resistance, and surface finish. Br. 15. Appellants
argue that such characteristics patentably distinguish the instant invention
over the prior art. Id. In response, the Examiner notes that Appellants'
position amounts to nothing more than attorney argument that is not
substantiated by any evidence in the record. Ans. 22.
The patentability of a product does not depend on its method of
production. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Even though
product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself. Id. If the
product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process. Id. Here, the Examiner correctly
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Application 12/324,467
articulated a prima facie case, thereby shifting the burden to Appellants to
prove that the prior art products do not necessarily or inherently possess the
characteristics of the claimed product. Id. at 698. Appellants' case,
however, is limited to unsubstantiated attorney argument that is not
supported by any evidence. This is insufficient to satisfy Appellants' burden
to rebut the Examiner's prima facie case.
We sustain the unpatentability rejection of claim 3.
Unpatentability of Claim 23
over Curatolo and Souza.
Claim 23 depends from claim 22 which we previously determined is
anticipated by Curatolo. Claim 23 adds the limitation: "wherein the upper
brace end of each brace bears directly against the proximal face of the upper
beam." Claims App. The Examiner finds that Curatolo discloses an upper
retainer upon which each upper brace end bears directly against instead of
the upper brace end bearing directly against the proximal face of the upper
beam. Final Action 6. The Examiner finds that person of ordinary skill in
the art would have found it desirable to remove the lower retainer of
Curatolo. Id. According to the Examiner, a person of ordinary skill in the
art would have done this to have fewer parts to contend with. Id.
The Examiner finds that Souza discloses a rail comprised of a cover
and beam coupled by way of tangs and balusters connected directly to an
insert. Id. According to the Examiner, a person of ordinary skill in the art
would discern that such construction is simple to assemble as there are only
two components to assemble into a rail. Id. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
the invention was made to modify the apparatus of Curatolo by assembling
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Application 12/324,467
the cover of the rail directly to the insert as well as connecting the balusters
directly to the insert, as taught by Souza. Id. at 7. According to the
Examiner, a person of ordinary skill in the art would have done this to have
a more simple construction. Id.
Appellants traverse the rejection by arguing that it would not have
been obvious to remove the first rail piece 19 from Curatolo because
piece 19 provides a desired function that is necessary for assembly of the
Curatolo rail. Br. 16. Appellants argue that, without the first rail piece 19,
there is no structure for engaging the cover to assemble the cover to the
upper rail. Id. Appellants contends that Curatolo teaches away from a two-
piece upper rail. Id. at 17
In response, the Examiner states that a person of ordinary skill in the
art would recognize that a railing can be assembled in any number of pieces
as demonstrated by the fact that Souza teaches that a railing may be made of
two pieces. Ans. 23. The Examiner states that such teaching is applied to
the railing of Curatolo. Id.
We think that the Examiner has stated the better position here.
Appellants' argument rests on an assumption that the Examiner's proposed
combination requires Curatolo and Souza to be physically combined.
However, the obviousness inquiry does not ask "whether the references
could be physically combined but whether the claimed inventions are
rendered obvious by the teachings of the prior art as a whole." In re Etter,
756 F.2d 852, 859 (Fed.Cir.1985) (en bane). Here, the combination of
Curatolo and Souza, taken together, disclose all of the limitations of
claim 23. The Examiner has provided persuasive reasoning as to why the
teachings of the two references could have been successfully combined
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Application 12/324,467
using only ordinary skill. Appellants have failed to rebut the Examiner's
prima facie case with evidence or persuasive technical reasoning. In
particular, we are not persuaded by Appellants' teaching away argument. A
reference does not teach away if it merely expresses a general preference for
an alternative invention but does not "criticize, discredit, or otherwise
discourage" investigation into the invention claimed. In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Appellants have not brought any language
from Curatolo to our attention that discourages investigation into having a
brace bear directly against the proximal face of an upper beam.
We sustain the unpatentability rejection of claim 23.
Claim 10
Unpatentability of Claims 10, 14, 26-28
over Curatolo, Bryan, and McGinness
The Examiner finds that Curatolo discloses the limitations of claim 10
substantially as claimed, except for the limitation directed to a metal brace
extending vertically within the casing and being secured to the upper and
lower beams. Final Action 7-8. The Examiner relies on Bryan as teaching a
similar system with a brace that extends vertically within the baluster casing
and where each brace has spaced apart contact surfaces that engage opposed
inner surfaces of the casings. Id. at 8. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
the invention was made to modify the railing system Curatolo by adding
braces, as taught by Bryan. Id. According to the Examiner, a person of
ordinary skill in the art would have done this to prevent rotation and relative
lateral movement of the baluster cases. Id.
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Application 12/324,467
The Examiner relies on ~vfoGinness as teaching a brace that extends
vertically through a hollow baluster casing. Id. at 9. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time the invention was made to modify the railing system of
Curatolo by replacing the separated, short braces of Bryan with one that
extends the entire length of the baluster. According to the Examiner, it
would have been further obvious to insert fasteners from the upper and
lower beams into the brace to secure the bracing system. Id.
Finally, the Examiner finds that Curatolo lacks a brace that is metal.
Id. at 9. The Examiner states that person of ordinary skill in the art would
have found it desirable to select a metal material for a brace, since metal is
well known for being rigid. Id. In the absence of an unexpected result
demonstrating criticality, the Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to modify the railing system of Curatolo by making the brace metal.
According to the Examiner, a person of ordinary skill in the art would have
done this to enhance the strength of the brace.
Appellants traverse the rejection by arguing that the Examiner's
rationale for modifying Curatolo by Bryan is insufficient. Br. 18.
Appellants argue that Curatolo already has means for securing balusters to
the rails and incorporating the connectors of Bryan into Curatolo would
increase the cost and complexity of Curatolo' s system. Id. Appellants
further argue that Bryan's connectors are of a composite material that is
unsuitable for use in the proposed combination. Id. at 19.
Appellants argue that McGinness relates to newel posts that are
anchored to a ground surface so as to avoid use of an unsightly base plate.
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Id. Appellants argue that modifying Curatolo and B1yan with ~vfoGinness
would not have been obvious. Id. According to Appellants, a person of
ordinary skill in the art would have recognized that there is no need to put
the length of the baluster in compression, because the load bearing
requirement of the balusters is much less than that of the newel posts. Id.
Appellants further contend that inserting screws into the ends of the braces
to secure the braces to the beam exerts a tensile force on the braces, which is
opposite the teaching of McGinness. Id.
In response, the Examiner states that it would have been apparent to a
person of ordinary skill in the art that modifying Curatolo with Bryan would
provide advantages such as strengthening the connection of the balusters to
the rails. Ans. 24--25. The Examiner further explains that modifying
Curatolo with Bryan merely entails the application of a known technique to
a known device with predictable results. Id. at 26. With respect to
Appellants' tensile force argument, the Examiner notes that there are no
limitations in the claims directed to the particular loading of the balusters
and braces. Id. at 27.
Bryan discloses connectors 28 that are fastened to rails 50 and 52 by
means of screw fasteners. Bryan, col. 3, 11. 54--63, Figs 4 and 5. McGinness
discloses a support member 40 that extends the entire vertical length of a
post. McGinness, Fig. 3. We think the Examiner has articulated a sufficient
reason for modifying Curatolo with Bryan and McGinness. We do not find
Appellants' argument regarding the compressive force purpose of
McGinness to be persuasive. "A reference may be read for all that it
teaches, including uses beyond its primary purpose." In re Mouttet, 686
F.3d 1322, 1331 (Fed. Cir. 2012) (citing KSR, 550 U.S. at 418-421).
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Appellants' cost and complexity argument is equally unpersuasive.
Bryan teaches a means of attaching balusters to a rail. If a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill. KSR, 550 U.S. at 417. We are similarly unpersuaded by the
argument that Bryan's composite material is unsuitable as the Examiner's
proposed combination contemplates using a metal material for the brace.
We have considered the Appellants' other arguments and do not find
them persuasive. We sustain the Examiner's unpatentability rejection of
claim 10.
Claims 14 and 26-28
Appellants do not argue for the separate patentability of claims 14
and 26-28 apart from arguments that we previously considered in
connection with claims 10, and/or claim 3, and/or claim 14. For essentially
the same reasons expressed above with respect to such claims, we sustain the
rejection of claims 14 and 26-28.
Claim 13
Unpatentability of Claims 13, 15, and 16
over Curatolo, Bryan, McGinness, and Souza
The Examiner relies on Souza as teaching a railing where the
balusters are connected directly to the insert. Final Action 12. In traversing
the rejection, Appellants rely on essentially the same argument that was
raised in connection with claim 13, which we previously found
unpersuasive. We find that argument equally unpersuasive here and we
sustain the rejection of claim 13.
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Claims 15 and 16
Appellants do not argue for the separate patentability of claims 15
and 16 apart from arguments presented with respect to claim 10 which we
have previously considered. For essentially the same reasons discussed
above with respect to claim 10, we sustain the rejection of claims 15 and 16.
Unpatentability of Claims 17 and 18
over Curatolo, Bryan, McGinness, Souza, and Burt
Appellants do not argue for the separate patentability of claims 1 7
and 18 apart from arguments presented with respect to claim 10 which we
have previously considered. Br. 22. We sustain the rejection of claims 17
and 18.
Unpatentability of Claim 19
over Curatolo, Bryan, McGinness, Souza, Burt, and Murdock
Appellants do not argue for the separate patentability of claim 19
apart from arguments presented with respect to claim 18 which we have
previously considered. Br. 23. We sustain the rejection of claim 19.
DECISION
The decision of the Examiner to reject claims 1-3, 5, 6, 10, 13-19,
and 21-28 is affirmed.
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).
AFFIRMED
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