Ex Parte Pilz et al

Patent Trial and Appeal BoardOct 27, 2016

13691595 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/691,595 11130/2012 20995 7590 10/31/2016 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 FIRST NAMED INVENTOR Donald A. Pilz 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. CALIFEX.039Pl C2 1960 EXAMINER GITLIN, MATTHEW J ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 10/31/2016 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): j ayna.cartee@knobbe.com efiling@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONALD A. PILZ, RAYMONDE. POLIQUIN, and FERNANDO HERNANDEZ SESMA Appeal2014-008029 Application 13/691,595 Technology Center 3600 Before LINDA E. HORNER, CHARLES N. GREENHUT, and GORDON D. KINDER, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1- 19. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. Appeal2014-008029 Application 13/691,595 CLAIMED SUBJECT MATTER The claims are directed to a fire-rated wall and ceiling system. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A fire rated metal stud framing wall and ceiling system, compnsmg: a metal bottom track comprising a web, a first flange and a second flange, the first and second flanges extending in an upward direction from opposing side edges of the web, the bottom track defining an interior space between the web and the inwardly-facing surfaces of the first and second flanges; a plurality of metal studs that are spaced from one another along the bottom track, each of the plurality of studs having a bottom end received within the interior space of the bottom track, each of the plurality of studs extending in a generally vertical direction from the bottom track; a metal top track comprising a web, a first flange and a second flange, the first and second flanges extending in a downward direction from opposing side edges of the web, the top track defining an interior space between the web and the inwardly-facing surfaces of the first and second flanges, wherein upper ends of each of the plurality of studs are received within the interior space of the top track, further comprising at least one heat-expandable, intumescent material strip extending along a length of the top track, the intumescent material strip attached to the top track and having at least a first surface facing the top track and a second surface; and a ceiling; wherein the top track is secured to the ceiling and the at least one intumescent material strip is located on the top track such that the second surface of the at least one intumescent material strip contacts the ceiling and wherein the second surface of the at least one intumescent material strip defines a width that is less than the width of the web of the metal top track. 2 Appeal2014-008029 Application 13/691,595 REJECTION Claims 1-19 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Surowiecki (US 6,854,237 B2, iss. Feb. 15, 2005) in view of Egri (CA 2,234,347 Al, pub. Aug. 10, 1999). OPINION The Examiner's rejection is premised, in part, on the disputed finding that "the at least one intumescent strip [3 8, 40 of Egri] is located on the top track such that the second surface of the at least one intumescent material strip contacts the ceiling." Final Act. 5 (citing Egri 3 (Field of the Invention (page 1 of the Egri Specification))). The Examiner finds "Figure 2 [of Egri] displays that the intumescent coating, caulk, or tape material [38, 40] is shown flush with the upper web of the header track (12)." Id. at 2. Appellants correctly point out that Figure 1 of Egri appears to instead show the upper surface of intumescent strips 38, 40 slightly below top wall 12 and that Egri is silent regarding whether the upper surface of the intumescent strips are actually flush with wall 12. App. Br. 9-10. Although arrangements depicted in prior-art figures may be relied upon to support a rejection (In re Seid 161F.2d229, 231(CCPA1947)), "it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue" (Hockerson-Halberstadt, Inc. v. Avia Group Int'!, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000)). Here, Egri's drawings appear to conflict with one another regarding the relationship between the top of the intumescent strips 38, 40 and the wall 12. Thus, these drawings are not particularly informative as to the relationship in question. 3 Appeal2014-008029 Application 13/691,595 The Examiner reasons that Egri' s stated desire to provide a "seal" to prevent the spread of fire, which the Examiner determines also means preventing the spread of smoke, implies that the "seal" should be "interpreted as a seal between the top surface of the intumescent material and the room ceiling." Ans. 3 (emphasis added). A critical flaw in the Examiner's reasoning is that Egri attributes the "seal" to the wall assembly, and not necessarily any portion thereof. Egri, p. 1, 11. 4-9. So, we do not know, for example, if side walls 14, 16, and top wall 12 sufficiently contribute to the seal, so that the intumescent strips 38, 40 need not contact the ceiling in order to achieve Egri's stated purpose. Appellants and the Examiner both provide speculative reasoning regarding this relationship, but based on the express or implicit disclosures of Egri, we must conclude that the Examiner has not shown by a preponderance of the evidence that Egri teaches the claimed relationship between the intumescent strips and the ceiling. "[L ]egal determinations of obviousness, as with such determinations generally, should be based on evidence rather than on mere speculation or conjecture." Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006). "The familiar rule that any doubt which exists should be resolved in favor of the applicant is here applicable." In re Kirschbraun, 44 F.2d 675, 677 (CCPA 1930). DECISION The Examiner's rejection is reversed. REVERSED 4