Ex Parte Platt

Patent Trial and Appeal BoardMay 22, 2013

11446729 (P.T.A.B. May. 22, 2013)

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. 11/446,729 06/05/2006 William J. Platt 0612 9686 2057 7590 05/23/2013 EUGENE CHOVANES JACKSON AND CHOVANES SUITE 319 ONE BALA PLAZA BALA CYNWYD, PA 19004 EXAMINER BUCKLE JR, JAMES J ART UNIT PAPER NUMBER 3633 MAIL DATE DELIVERY MODE 05/23/2013 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 WILLIAM J. PLATT ________________ Appeal 2011-004755 Application 11/446,729 Technology Center 3600 ________________ Before MICHAEL L. HOELTER, RICHARD E. RICE and MITCHELL G. WEATHERLY, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004755 Application 11/446,729 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 11-13. App. Br. 5. Claims 1-10 have been cancelled. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to beams that form a grid in a suspended ceiling.” Spec. 1:5-6. Independent claim 11 is illustrative of the claims on appeal and is reproduced below: 11. In a beam for a grid in a suspended ceiling, formed from a single layer of metal folded longitudinally into a cross section having (a) a bulb at the top, (b) a single-layered web extending downwardly from the bulb, (c) a first and second flange at the bottom of the web, each of which extends horizontally on the opposite side of the web from the other flange, with the first flange formed of an upper and lower layer of metal, the upper layer of which extends from the bottom of the web, and the second flange formed of at least a single layer of metal extending from the lower layer of the first flange; the improvement comprising a balanced beam wherein the second flange is cantilevered from the bottom of the web by a binding, so that the resultant load of an equal vertical load on each of the first and second flanges of the beam passes directly through the vertical plane of the web. REFERENCES RELIED ON BY THE EXAMINER Platt US 6,722,098 B2 Apr. 20, 2004 Applicant’s Admitted Prior Art Appeal 2011-004755 Application 11/446,729 3 THE REJECTION ON APPEAL Claims 11-13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Applicant's Admitted Prior Art (AAPA) in view of Platt. Ans. 4. ANALYSIS Sole independent claim 11 includes the limitation of a “balanced beam” wherein the beam has a second flange that “is cantilevered from the bottom of the web by a binding.” The Examiner identifies Appellant’s Fig. 4 as Applicant’s Admitted Prior Art (AAPA). Ans. 4. The Examiner finds that AAPA discloses the limitations of this claim with the exception that “AAPA (Fig. 4) does not disclose the beam wherein the second flange is cantilevered from the bottom of the web by a binding.” Ans. 5. For this, the Examiner relies on Platt for teaching that it is known to have a beam that “includes a binding (67) to increase the rigidity of two layers.” Ans. 5 referencing Platt 4:3-7. The Examiner concludes that it would have been obvious “to have modified the beam of AAPA by binding the two layers of the flange together at the location claimed to increase the rigidity of the flange” (italics added). Ans. 5. The Examiner reasons that “binding the flange at the claimed location” would not achieve a new or unpredictable result and that the claimed balanced beam “would be achieved” or “would have been incidental to stitching two layers together along the flange of the beam.” Ans. 5, 6. Appellant stresses the importance of the second flange being “cantilevered from the bottom of the web” as claimed to achieve a balanced beam, i.e., no twisting or torque. App. Br. 11-15, see also Reply Br. 2. Appeal 2011-004755 Application 11/446,729 4 Appellant also references the Specification for such a discussion. App. Br. 13, Reply Br. 2, see also Spec. 1:23 to 2:3, 3:10-13, 3:17-23 and 6:25 to 7:9. In essence, Appellant contends that the combination of AAPA Fig. 4 and Platt does not teach the claimed limitation. Platt clearly discloses a double-thickness web (70) bound or stitched (67) together. Platt Figs 2-4. Platt also clearly teaches that “[s]titches 67, or other forms of fastening, such as welding, hold the two layers 68 and 69 of web 70 together to give a rigidity to the beam 23.” Platt 4:3-5. However, there is no discussion in Platt, nor is there any illustration in Platt, of locating the stitching 67 at the juncture between Platt’s web 70 and the bottom flanges 61, 62. While we understand that the Examiner’s combination of AAPA and Platt results in the stitching together of double- thickness flange 25 of AAPA for rigidity purposes, we are not informed of a reason to place such stitching at the juncture between the web and the flange. Such a location is necessary for the limitation that “the second flange is cantilevered from the bottom of the web by a binding” and further, the limitation that such a cantilevered construction results in a beam that is “balanced” (i.e., no torque or twisting). Instead, it is found to be obvious to bind the flange “at the location claimed” without being provided a reason as to why such a location would have been obvious. Clearly, Platt’s stitching can be located elsewhere along flange 25 of AAPA but in doing so, the limitation of the second flange being cantilevered from the bottom of the web would not have been satisfied as the cantilever would have been from such other location and not “from the bottom of the web” as claimed. Appellant addresses this matter by stating: Appeal 2011-004755 Application 11/446,729 5 The invention, as claimed, defines a single-layered web balanced beam 20 for a suspended ceiling. The beam does not twist under an equal load on first 25 and second 23 opposing flanges, from panels or drywall sheets. Such balance is achieved by cantilevering the second flange 23 which extends from first flange 25, from the bottom of the web 22, by a binding 40, so that the resultant of the load on the flanges passes vertically through the plane of the single-layered web. App. Br. 14. Appellant also discusses unbalanced torque forces with respect to AAPA Fig. 4. See App. Br. 13, 14, Reply Br. 3 and Spec. 6:15-24. We have been instructed by the predecessor to our reviewing court that The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis. To the extent the Patent Office rulings are so supported, there is no basis for resolving doubts against their correctness. Likewise, we may not resolve doubts in favor of the Patent Office determination when there are deficiencies in the record as to the necessary factual bases supporting its legal conclusion of obviousness. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Here, we are not persuaded the Examiner has provided the necessary factual basis for locating Platt’s stitching at the juncture between the web and the flange as required for the claim limitation that “the second flange is cantilevered from the bottom of the web by a binding.” Accordingly, we do not sustain the rejection of claim 11 or dependent claims 12 and 13. Appeal 2011-004755 Application 11/446,729 6 DECISION The Examiner’s rejection of claims 11-13 is reversed. REVERSED Klh