Ex Parte Smythe et al

Patent Trial and Appeal BoardMar 21, 2016

12547838 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/547,838 08/26/2009 Timothy Smythe 69684 7590 03/23/2016 ABEL LAW GROUP, LLP 8911 N. Capital of Texas Hwy Bldg 4, Suite 4200 AUSTIN, TX 78759 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. 15-GP-0461 US02 6010 EXAMINER WENDELL, MARK R ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 03/23/2016 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): mail@abel-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY SMYTHE and DOUGLAS W AMBAUGH Appeal2014-003264 Application 12/547 ,838 1 Technology Center 3600 Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and MATTHEWS. MEYERS, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1, 3-5, 7, 8, 10, 13, and 14. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to the Appellants, the real party in interest is Structus Building Technologies, Inc. of Bend, Oregon. Appeal Br. 2. Appeal2014-003264 Application 12/547,838 Claimed Subject Matter Claim 1, the sole independent claim, is representative of the subject matter on appeal and is reproduced below. 1. A drywall comer finishing piece suitable for finishing sheet rocked wall comers comprising: a pair of elongated flanges, including a first flange and a second flange, connected to a central elongated member, said elongated member having an apex; a plurality of parallel longitudinal grooves running end- to-end on each of said flanges, said grooves running lengthwise along the piece end to end, the grooves forming multiple hinge lines on each flange about which the flange can rotate angularly relative to the apex and central elongated member. Rejections Claims 1, 3, 4, 7, 10, and 14 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Kunz (US 7,383,668 Bl, iss. June 10, 2008) and Robertson (US 6,438,914 Bl, iss. Aug. 27, 2002). Claims 5 and 8 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Kunz, Robertson, and Kunz '546 (US 2003/0131546 Al, pub. July 17, 2003). Claim 13 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Kunz, Robertson, and Smythe (US 2006/0059809 Al, pub. Mar. 23, 2006). ANALYSIS The Examiner finds Kunz teaches a drywall comer finishing piece including, a central elongated member 212, and first and second flanges 222, 224, where each flange has a longitudinal groove 226. See Final Act. 2 (citing Kunz, Fig. 2). The Examiner finds that Kunz fails to "disclose a plurality of (or multiple) grooves on each flange," as required by 2 Appeal2014-003264 Application 12/547,838 independent claim 1. See Final Act. 3. The Examiner finds that Robertson discloses "perforations (60) along each flange of the finishing piece." Final Act. 3. The Examiner concludes that "[i]t would have been obvious to one having ordinary skill in the art ... to modify the flanges of Kunz to further include the perforations of Robertson to enable the Kunz finishing piece to be more workable and bendable to accommodate multiple angles and deformations along a drywall board." Final Act. 3. The Examiner explains that adding Robertson's teaching of perforations to Kunz's flanges results in having flanges with multiple grooves, and, more specifically, results in "a groove at the intersection of the [central] elongated member [212] and flange (226 of Kuntz)[,] and a groove further down the flange (60 of Robertson); thusly a plurality of grooves on each flange." Final Act. 3, 6, Ans. 4. The Appellants contend that both Kunz and Robertson fail to teach a plurality of grooves, e.g., hinges or perforations, on a flange. See Appeal Br. 7-8. Rather, both Kunz and Robertson teach a flange with only one hinge or perforation. See Appeal Br. 7-8; Reply Br. 2--4. As such, the Appellants argue that the Examiner's conclusion is based on impermissible hindsight. Appeal Br. 9. In response, the Examiner explains that the Examiner's reasoning does not rely on a finding that "Robertson teaches a plurality of hinges on each flange." Ans. 8. The Examiner explains that the addition of a second hinge to Kunz' s flanges is for workability purposes of the finishing piece relative to the body of the piece and the drywall. See Ans. 8. Moreover, the Examiner explains that Kunz' disclosure contemplates additions be made to the invention, and that adding Robertson's perforations 60 to Kunz's flanges 222, 224, while retaining Kunz's longitudinal groove 226, such that the 3 Appeal2014-003264 Application 12/547,838 modified flange includes multiple grooves, provides more maneuverability and gives Kunz's device the capability to be formed around a larger variety of angled comers. See Ans. 10. However, a person of ordinary skill in the art would understand Kunz already has a hinge designed for workability purposes for the finishing piece relative to the body of the piece and the drywall. See Kunz, Abstract ("A hinge of flexible plastic is interposed between the nose and wing, so the wing will closely conform to an associated wall surface."). And, the Examiner fails to persuasively explain how Kunz's drywall comer finishing piece, having a single groove 226 associated with each wing 222, 224, is insufficiently maneuverable around a variety of comers. As such, we determine that the Appellants' argument that the Examiner's rejection of independent claim 1 is based on impermissible hindsight is persuasive. Thus, the Examiner's rejection of claim 1 and its dependent claims as unpatentable over Kunz and Robertson is not sustained. The remaining rejections based on Kunz and Robertson in combination with Kunz '546 or Smythe also rely on impermissible hindsight, as discussed above. As such, we do not sustain the rejections of claims 5, 8 and 13. DECISION We REVERSE the Examiner's decision rejecting claims 1, 3-5, 7, 8, 10, 13, and 14. REVERSED 4