Ex Parte Poirier

Patent Trial and Appeal BoardJan 9, 2017

13546708 (P.T.A.B. Jan. 9, 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. 13/546,708 07/11/2012 Peter P. Poirier 06821/09879 5238 24024 7590 01/11/2017 Calfee, Halter & Griswold LLP The Calfee Building 1405 East Sixth Street Cleveland, OH 44114-1607 EXAMINER AHMAD, CHARISSA L ART UNIT PAPER NUMBER 3638 NOTIFICATION DATE DELIVERY MODE 01/11/2017 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): ipdocket @ c alfee .com wfrick @ c alfee. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER P. POIRIER Appeal 2015-001051 Application 13/546,708 Technology Center 3600 Before JENNIFER D. BAHR, EDWARD A. BROWN, and SEAN P. O’HANLON, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Peter P. Poirier (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 10—30.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Claims 1—9 and 31—33 have been cancelled. See Amendment filed April 18, 2014 (hereinafter “the Amendment”). Appeal 2015-001051 Application 13/546,708 THE CLAIMED SUBJECT MATTER Claim 24, reproduced below, is illustrative of the claimed subject matter. 24. A modified flexible sealing membrane capable of sealing a building gap formed between a window frame and a rough opening in which the frame of a window is received, the modified flexible sealing membrane also being capable of sealing a frame gap that is formed between different structural members which combine to form the window frame by sandwiching panes of glass forming the window therebetween, the modified flexible sealing membrane consisting essentially of essentially transparent silicone rubber and comprising a flexible sheet defining an integral projection for receipt in the channel of an adaptor connected to the window frame, the flexible sheet defining on one side of the projection an outer membrane portion, the flexible sheet defining on the other side of the projection an inner membrane portion, wherein (a) the widths of the inner membrane portion and the outer membrane portion, and (b) the location of the projection on the flexible sheet of the sealing membrane are each selected so that when the projection of the sealing membrane is received in the channel of the adaptor, the inner membrane portion spans the frame gap while the outer membrane portion spans the building gap, thereby providing an air and moisture-proof barrier between the window frame and the associated building framing member. REJECTIONS2 I. Claims 10, 11, 24—26, and 30 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ellingson (US 2005/0204657 Al, 2 The rejections under 35 U.S.C. § 112, second and fourth paragraphs, were overcome by the Amendment. See Advisory Act.; Final Act. 2—A. 2 Appeal 2015-001051 Application 13/546,708 pub. Sept. 22, 2005), Allen (US 4,462,190, iss. July 31, 1984), and Thomas (US 2,778,793, iss. Jan. 22, 1957).3 II. Claims 10-24 and 26—28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fisher (US 2006/0070301 Al, pub. Apr. 6, 2006), Allen, and Thomas. III. Claims 19 and 29 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ellingson, Allen, Thomas, and Fisher. DISCUSSION Rejection I Appellant argues for patentability of claims 10, 11, 24—26, and 30 subject to this ground of rejection as a group. Br. 10-16. We select claim 24 as representative of this group, and claims 10, 11, 25, 26, and 30 stand or fall with claim 24. See 37 C.F.R. § 41.37(c)(l)(iv). The issue raised in the appeal of this rejection is whether the Examiner erred in determining that it would have been obvious to replace Ellingson’s sealing membrane (coextruded plastic member 36) with a transparent silicone rubber sealing membrane in view of the teachings of Allen and Thomas. See Br. 10—16; Final Act. 5—6. According to the Examiner, “[sjilicone rubber is an obvious choice due to its flexibility and durability” and “[t]he motivation for using a transparent material would be to prevent the sealing member from being conspicuous.” Final Act. 5—6. 3 Appellant and the Examiner agree that claim 30 should have been included in Rejection I, rather than in Rejection III, as set forth on page 8 of the Final Action. Br. 10; Ans. 2. 3 Appeal 2015-001051 Application 13/546,708 The Examiner emphasizes that the rejection is predicated not on “only changing the hinge material to a silicone rubber, but rather the entire sealing membrane.” Ans. 2—3. Thus, Appellant’s contention that because “it is well known that silicone rubber does not bond well to other materials” “any rejection based on the notion of replacing only the plastic used to make flexible hinge 48 [of Ellingson] with a transparent silicone rubber would be fatally defective under 35 U.S.C. § 103(a)” (Br. 11) is not germane to the rejection articulated by the Examiner. Appellant argues that transparent silicone rubber would not be a suitable material for Ellingson’s extruded plastic member 36, which includes flashing strip 37 and nailing fin 22, because Ellingson’s plastic member allows only pivotal movement about the longitudinal axis of flexible hinge 48; in contrast, a member made from a transparent silicone rubber would allow not only pivotal movement but also pulling apart of the two sides of each hinge in a side-to-side direction, as well as pulling apart of the two sides of each hinge along the pivotal axis of the hinge. Id. at 12—14. Appellant contends that an essentially transparent silicone rubber material would permit these two additional degrees of movement because it “is an elastomer which, by definition, is a material which can be stretched by a substantial amount.” Id. at 14. In support of this contention, Appellant relies on a “declaration of Professor Harry Michael Chung, a copy of which is attached to [the Appeal Brief] as Exhibit 1.” Id. Notably, a signed copy of the Chung Declaration was first submitted in the present application with the Appeal Brief, and, thus, will not be considered in this Appeal. See 37 C.F.R. § 41.37(c)(2) (“A brief shall not include . . . any new or non- 4 Appeal 2015-001051 Application 13/546,708 admitted affidavit or other Evidence. See ... § 41.33 for treatment of. . . affidavits or other Evidence filed after the date of filing the appeal.”). Appellant argues that “the inability of essentially transparent silicone elastomer to resist or prevent substantial stretching would make it unsuitable for use in making Ellingson’s extruded plastic member 36.” Br. 14. According to Appellant, “[t]his is because any hypothetical extruded member 36 made from this material would allow the door or window mounted with this hypothetical extruded member 36 to move about in its rough opening” and “[n]o skilled window manufacture[r] would tolerate such a possibility.” Id. Appellant adds that the Examiner’s rejection “focuses on flexibility and durability while completely disregarding another critical property” of Ellingson’s hinge, “i.e., the ability to prevent all movement of the two sides of the hinge with respect to one another except for pivotal movement.” Id. at 14—15. Thus, Appellant argues that the Examiner’s “reliance on the proposition of law in [In re Leshin, 277 F.2d 197, 199 (CCPA I960)], (selecting a known material on the basis of its suitability for the intended purpose) is misplaced.” Id. at 15. Appellant does not direct our attention to any disclosure in Ellingson that suggests that the hinge of Ellingson’s member 36 must prevent all movement except for pivotal movement or that the degree of stretchability exhibited by the types of transparent silicone rubbers described by Thomas would be considered intolerable, as opposed to being considered perhaps even desirable (to accommodate differential thermal expansion or shearing stresses, for example). Neither does Appellant proffer any other evidence to support the assertion that “[n]o skilled window manufacture[r] would tolerate such a possibility” {id. at 14). 5 Appeal 2015-001051 Application 13/546,708 Thus, even accepting “the distinction between plastics which exhibit some degree of flexibility, on the one hand, and elastomers such as silicone rubber which exhibit elasticity, on the other hand” (Br. 15), Appellant’s arguments fail to apprise us of error in the Examiner’s determination that it would have been obvious to replace Ellingson’s sealing membrane (coextruded plastic member 36) with a transparent silicone rubber sealing membrane in view of the teachings of Allen and Thomas. Accordingly, we sustain the rejection of claims 10, 11, 24—26, and 30 under 35 U.S.C. § 103(a) as unpatentable over Ellingson, Allen, and Thomas. Rejection II Appellant argues for patentability of claims 10—24 and 26—28 subject to this ground of rejection as a group. Br. 16—18. We select claim 24 as representative of this group, and claims 10—23 and 26—28 stand or fall with claim 24. See 37 C.F.R. § 41.37(c)(l)(iv). The primary issue raised in the appeal of this rejection is whether the Examiner erred in determining that it would have been obvious to replace Fisher’s sealing membrane (nailing fin 110) with a transparent silicone rubber sealing membrane in view of the teachings of Allen and Thomas. See Br. 16—18; Final Act. 7. Appellant acknowledges that Fisher “indicates its nailing fins 110 can be made from rubber,” but argues that “no skilled window manufacture[r] would make the nailing fins 110 of Fisher . . . from a material which could undergo substantial stretching, as that would make these nailing fins unsuitable for use for their intended purpose.” Br. 16. According to Appellant, “a skilled window manufacture[r] would interpret Fisher’s disclosure regarding rubber nailing fins” as limited to particular rubber 6 Appeal 2015-001051 Application 13/546,708 products that cannot “be stretched to any insignificant [sic] degree.” Id. Appellant contends that “[g]iven that the function of nailing fms 110 of Fisher ... is to mount window 110 [sic] securely in place, a skilled window manufacture[r] would immediately recognize that these nailing fms could not be made from a material which stretches significantly” and, thus, would further recognize that only “those rubbers which have been compounded and/or reinforced to avoid any significant stretching” could be used for making Fisher’s nailing fms 110. Id. at 16—17. In support of this contention, Appellant relies on entries from Wikipedia and Green Car Congress websites attached to the Appeal Brief as Exhibit 2 and Exhibit 3, respectively. Id. at 16. Notably, the Wikipedia and Green Car Congress documents were first submitted in the present application with the Appeal Brief, and, thus, will not be considered in this Appeal. See 37 C.F.R. § 41.37(c)(2). Appellant adds that “for the same reasons, a skilled window manufacturer would further recognize that these non-stretchable rubber nailing fms could not be replaced with nailing fms made from a transparent silicone rubber, because the hypothetical nailing fms produced thereby would be too stretchable.” Id. at 17. Appellant’s arguments regarding Fisher’s teachings of rubber nailing fms being limited to non-stretchable rubber nailing fms are unavailing for essentially the same reasons discussed above with respect to Rejection I. Appellant does not point to any specific disclosure in Fisher that suggests that the type of stretching that would be permitted by nailing fms made from the types of transparent silicone rubber materials described by Thomas would be either intolerable or undesirable for Fisher’s nailing fms. The Examiner points out, correctly, that the stated purposes of nailing fin 110 are 7 Appeal 2015-001051 Application 13/546,708 to engage against a surface of a wall to couple a window assembly to the wall and to help prevent infiltration of air and water from outside the wall to inside the wall. Ans. 5 (citing Fisher 126). “Nowhere [does Fisher state] that the nailing fin must not be stretchable or that the only rubbers that could be used are ones that have been compounded or reinforced to avoid any significant stretching.” Id. Appellant also asserts that “the additional ingredients and reinforcing agents that would need to be added to a transparent silicone rubber to make it non-stretchable enough to function as Fisher’s nailing fins 110 have been excluded from [the] claims” by the “consisting essentially of essentially transparent silicone rubber” language of independent claims 10 and 24. Br. 17—18 (citing In re Herz, 537 F.2d 549 (CCPA 1976)); see also id. at 21, 24 (Claims App.). The language “consisting essentially of’ limits the material of the claimed sealing membrane to essentially transparent silicone rubber and only other substances that do not materially affect the basic and novel characteristics of the claimed invention. See Herz, 537 F.2d at 551—52. Appellant contends that “an important feature of the inventive sealing membrane is that it is essentially transparent, which enables an installer to visually confirm that the layer of moisture-proof sealant applied underneath the inventive sealing membrane has been properly applied.” Br. 18 (citing Spec. 120). In this regard, Appellant’s Specification discloses that “[s]ilicone rubber is desirable in some embodiments because its relative transparency allows moisture-proof sealant applied on its underside to be seen through its body.” Spec. 120. Thus, consistent with Appellant’s Specification, any additives that do not materially affect the relative transparency (identified by Appellant in the Specification, as well as in the 8 Appeal 2015-001051 Application 13/546,708 explicit language of the claims, as the important or basic feature/characteristic) of the silicone rubber material are not excluded by the “consisting essentially of essentially transparent silicone rubber” language of claims 10 and 24. Accordingly, any additives or reinforcing agents that might be present in the transparent silicone rubber materials described by Thomas are not excluded by the “consisting essentially of essentially transparent silicone rubber” language in the claims. See Thomas, col. 2, 11. 50-54 (discussing preparation of silicone elastomers having increased tensile strength, while preserving their transparency, by curing siloxane resins between plates having an inorganic filler bonded to their surfaces). For the above reasons, Appellant’s arguments fail to apprise us of error in the Examiner’s determination that it would have been obvious to replace Fisher’s sealing membrane (nailing fin 110) with a transparent silicone rubber sealing membrane in view of the teachings of Allen and Thomas. Accordingly, we sustain the rejection of claims 10—24 and 26—28 under 35 U.S.C. § 103(a) as unpatentable over Fisher, Allen, and Thomas. Rejection III Appellant argues for patentability of claims 19 and 29 subject to this ground of rejection as a group. Br. 18—19. We select claim 19 as representative of this group, and claim 29 stands or falls with claim 19. See 37 C.F.R. § 41.37(c)(l)(iv). Appellant reiterates the arguments advanced against Rejections I and II in contesting this rejection. Br. 18. For the reasons set forth above, these arguments fail to apprise us of error in the Examiner’s rejection. Appellant also contends that the Examiner’s conclusion of obviousness is predicated on an incorrect “assumption] that [Fisher’s] 9 Appeal 2015-001051 Application 13/546,708 nailing fin 110 is one continuous piece which extends around all sides of window 100 including around its comers.” Id. at 18—19. According to Appellant, Fisher is clear that “nailing fms 110 are extrusions”; “[i]n other words, they are made by a continuous process in which a molten plastic is extmded through a die.” Id. at 19. Appellant asserts that such processes can only make long continuous products having a uniform cross section along their entire length and, thus, “cannot make products with variable cross sections such [as] the hypothetical comer pieces the [EJxaminer is postulating in this rejection.” Id. Appellant does not point to, nor do we discern on our own, any disclosure in Fisher that supports Appellant’s assertion that Fisher’s nailing fms 110 are necessarily formed by extmsion. Fisher discloses that, optionally, the window or door “structural members,” such as frame 104 and cladding 106, and acrylic caps 222A, 222B may be formed by extmsion. Fisher || 7, 9, 25, 32. However, we find no explicit disclosure in Fisher identifying nailing fms 110 as window or door “structural members.” Moreover, Fisher also discloses other alternative forming methods, such as “vacuum or thermal forming, or injection molding, or the like” for the stmctural members. Id. 132. Thus, even assuming that nailing fms 110 would be considered “stmctural members” in accordance with Fisher’s teachings, Fisher does not require that these components be formed by extmsion. Accordingly, the Examiner is correct that “the nailing fin does not have to be an extmsion and nothing in Fisher . . . precludes it from being the continuous piece that is shown in Figure 1 A.” Ans. 6—7. Appellant also argues that “[t]o pre-make separate comer sections and then subsequently join these pre-made comer sections together, as postulated 10 Appeal 2015-001051 Application 13/546,708 by the [EJxaminer in this rejection, serves no useful purpose and accomplishes no useful result other than providing a justification for what the [EJxaminer asserts is obvious.” Br. 19. Appellant contends that “[tjhis is the hallmark of a hindsight rejection.” Id. The Examiner reasons that “it would have been obvious ... to incorporate comer membrane pieces around the comers of the opening of Ellingson as suggested and taught by Fisher” because “[pjroviding the nailing fin around the comers provides additional connection points for the nailing fin and covers any gaps that would exist between frame and building.” Final Act. 8. This reasoning has rational underpinnings because, as is evident, for example, in Ellingson’s Figure 1, merely providing straight flashing strip/nailing fin sections around the sides and top of the door frame (or sides, top, and bottom of a window frame) as illustrated would leave the comers vulnerable to air and water intmsion. Forming comer flashing strip/nailing fin sections that wrap around the comers of the door or window frame as depicted in Fisher’s Figure 1 A, in contrast, would prevent such intmsion. As for fabricating the flashing strip/nailing fin in various sections (i.e., comer sections and straight sections) and subsequently joining them together to surround the window or door frame, the Examiner explains that “[mjaking one large nailing fin for an entire window could be very cumbersome, especially when the window is very large” and “[i]t would be much simpler to fabricate the nailing fin in various elements and assemble them together to create one continuous piece.” Ans. 7. Appellant does not identify any flaw in the Examiner’s reasoning or point to any knowledge relied on by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of 11 Appeal 2015-001051 Application 13/546,708 ordinary skill in the art at the time of the invention, and, accordingly, Appellant’s hindsight assertion is unsupported. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper.”). For the above reasons, Appellant fails to apprise us of error in the Examiner’s rejection of claim 19. Accordingly, we sustain the rejection of claims 19 and 29 under 35 U.S.C. § 103(a) as unpatentable over Ellingson, Allen, Thomas, and Fisher. DECISION The Examiner’s decision rejecting claims 10, 11, 24—26, and 30 under 35 U.S.C. § 103(a) as unpatentable over Ellingson, Allen, and Thomas is AFFIRMED. The Examiner’s decision rejecting claims 10—24 and 26—28 under 35 U.S.C. § 103(a) as unpatentable over Fisher, Allen, and Thomas is AFFIRMED. The Examiner’s decision rejecting claims 19 and 29 under 35 U.S.C. § 103(a) as unpatentable over Ellingson, Allen, Thomas, and Fisher is AFFIRMED. 12 Appeal 2015-001051 Application 13/546,708 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)(l)(iv). AFFIRMED 13