EZEE DAM INC.

Patent Trials and Appeals BoardOct 4, 2021

2021002312 (P.T.A.B. Oct. 4, 2021)

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. 14/121,604 09/24/2014 Michael R. Albert 81782655 (0800022-1) 9772 123556 7590 10/04/2021 SMART & BIGGAR LLP Burns Building, Suite 301, 237 8th Avenue SE Calgary, ALBERTA T2G 5C3 CANADA EXAMINER GILBERT, WILLIAM V ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 10/04/2021 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): US.mail@smartbiggar.ca calgary@smartbiggar.ca PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL R. ALBERT ____________ Appeal 2021-002312 Application 14/121,604 Technology Center 3600 ____________ Before JOHN C. KERINS, JEREMY M. PLENZLER, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 11–21, which are all the pending claims. Appeal Br. 1, 5. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM IN PART and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the inventor, Michael R. Albert. Appeal Br. 3. Appeal 2021-002312 Application 14/121,604 2 CLAIMED SUBJECT MATTER Appellant’s disclosed invention relates to an assembly for a window pan drainage dam system for deflecting water away from the window pan area to prevent water ingress through the sill pan area. See, e.g., Spec., p. 1, ll. 5–11, Abstract. Claims 1 and 21, reproduced below with emphasis added and with line breaks added to claim 1 for clarity, are the independent claims and are representative of the subject matter on appeal. 1. A window pan drainage dam assembly for a window pan area of a window opening, said window pan area having a window sill plate, said window opening also comprising right and left vertical walls, said assembly comprising[:] a central sill strip that slopes outwardly from back to front of the window opening when installed on the sill plate, said sill strip abutting 90 degree, back to front outwardly sloped right and left corner dams, each [of] said right and left corner dams being outwardly sloped on both a base portion when supported on said window sill plate, and outwardly sloped on a vertical side portion having a continuously smooth outer surface when supported against respective right and left vertical walls, to be operable to direct water outwards from an interior side of the building opening, said assembly operable to provide a dam system for the window sill plate and the right and left vertical walls of the window opening, said right and left corner dams extending on said window sill plate and upward on the respective right and left vertical walls of the window opening. Appeal 2021-002312 Application 14/121,604 3 21. A drainage dam assembly for a bottom area of a building opening, said building opening comprising a central sill plate and right and left vertical walls, said assembly comprising: - a central sill strip mounted on said sill plate and sloping downward and outwards from a back area of the sill plate to a front area of the sill plate; - a 90 degree outwardly sloped left corner dam and a 90 degree outwardly sloped right corner dam; said central sill strip being positioned in abutment with said right and left corner dams; each [of] said right and left corner dams being outwardly sloped on both a base portion and a vertical side portion having a continuously smooth outer surface, each [of] said right and left corner dams being outwardly sloped on both a base portion when supported on said window sill plate, and outwardly sloped on vertical side portions when supported against respective right and left vertical walls, so as to operable to direct water outwards from an interior side of the building opening; - said assembly extending on said sill plate and upward on the right and left vertical walls of the building opening; - said sill strip and said corner dams operable to deflect moisture towards the exterior of the building opening. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Allen US 2005/0166471 A1 Aug. 4, 2005 Bushberger US 2010/0058683 A1 Mar. 11, 2010 Appeal 2021-002312 Application 14/121,604 4 REJECTIONS The following rejections are before us for review:2 I. Claims 1, 11, 14–17, and 19 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Bushberger. Ans. 4–7. II. Claims 12 and 13 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bushberger. Id. at 7–8. III. Claims 18, 20, and 21 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bushberger and Allen. Id. at 8–10. ANALYSIS Regardless of whether the rejection is characterized as being based on obviousness, as in the Final Action (see Final Act. 3), or anticipation, as in the Answer (see Ans. 3), the rejection of independent claim 1 is premised on the same findings from Bushberger. As explained below, those findings are deficient. This decision characterizes the rejection of claim 1 as being based on anticipation, corresponding to the “correction” made in the Examiner’s Answer.3 2 We note that the Grounds of Rejection to be Reviewed on Appeal section presented in the Examiner’s Answer makes clear that the rejection headings have been corrected relative to a single rejection heading presented in the Final Action dated April 13, 2020, from which this appeal is taken, but that the substance of the rejections is “unchanged” and “the same as” that provided in the Final Action. Ans. 3–4; compare id. at 4–10, with Final Act. 3–9. Appellant appears to understand that the substance of the rejections is unchanged, as the Argument section of the Reply Brief is the same as that of the Appeal Brief, but for two additional sentences at the conclusion of one paragraph. See Reply Br. 10–13; Appeal Br. 10–13. We make reference herein to the rejections as presented in the Answer. 3 See note 2, supra. Appeal 2021-002312 Application 14/121,604 5 Appellant contends that “claims 1 and 21 . . . recite that the right and left corner dams are also outwardly sloped on a vertical side portion when supported against respective right and left vertical walls,” and “Bushberger neither teaches nor suggests that [its] vertical sides are or can be outwardly sloped,” as claimed. Appeal Br. 12; Reply Br. 12. With respect to claim 1, the Examiner makes no findings regarding Bushberger disclosing the feature noted above. See Final Act. 3–4; Ans. 5. Indeed, when addressing similar features in claim 21, the Examiner acknowledges that “Bushberger does not specifically disclose the details to the right and left corner dams.” Final Act. 8. For at least this reason, we do not sustain the Examiner’s rejections of claim 1, and claims 11–20, which ultimately depend from claim 1. With respect to claim 21, the Examiner determined that a combination of teachings from Bushberger and Allen renders obvious the subject matter claimed. See Final Act. 7–9; Ans. 9–10. Appellant argues that the rejection is deficient because of asserted shortcomings with respect to Bushberger’s corner elements relative to those claimed. See Appeal Br. 11–12; Reply Br. 11–12. After careful consideration of the record before us, Appellant’s arguments do not apprise us of error in the Examiner’s rejection of claim 21. In short, we sustain this rejection based on the reasoned positions set forth therein and in light of the Examiner’s thorough responses to Appellant’s arguments. See Final Act. 7–9; Ans. 11–14. In particular, Appellant asserts that Bushberger’s corner elements are described as being “horizontal,” and therefore would not be sloped when supported on a window sill plate. Appeal Br. 11; Reply Br. 11. But, as the Appeal 2021-002312 Application 14/121,604 6 Examiner explains, Bushberger’s corner elements would necessarily slope in the same manner as the sill pan due to the relative positioning therewith. Ans. 11–12. Appellant also asserts that the claimed corner dams need not overlay the central sill strip because they are positioned in abutment therewith. Appeal Br. 11–12; Reply Br. 11–12. The Examiner correctly explains, however, that the claim does not specify any particular portion of the corner dams that must abut the central sill strip and that portions of Bushberger’s corner elements do abut the central element as the claim requires. Ans. 12–13. Finally, Appellant asserts that Bushberger’s corner elements have vertical sides that are flat, whereas the claimed corner dams are “outwardly sloped” on a vertical side portion when supported on the window sill plate and against the vertical walls. Appeal Br. 12; Reply Br. 12. Presuming the vertical side portions are outwardly sloped relative to a vertical plane, which the Examiner correctly observes is not explicitly recited, the Examiner relies on Allen for suggesting such an outward slope (see Final Act. 8–9 (citing Allen, Fig. 7)), where such reliance is supported by a preponderance of the evidence (see, e.g., Allen, Figs. 1, 6, 7) and is uncontested by Appellant (Ans. 14). In conclusion, after careful consideration of the evidence of record and for the foregoing reasons, Appellant’s arguments do not apprise us of error in the Examiner’s findings or reasoning in support of the conclusion of obviousness. Accordingly, we sustain the rejection of independent claim 21 under 35 U.S.C. § 103 as being unpatentable over Bushberger and Allen. In light of the abundance of overlap in the recited subject matter between independent claims 1 and 21, particularly with respect to the argued Appeal 2021-002312 Application 14/121,604 7 features of the corner dams, we apply the Examiner’s obviousness rejection based on Bushberger and Allen to independent claim 1 (and its associated dependent claims)4 in the same manner as it is applied to independent claim 21, and we enter a new ground of rejection for independent claim 1 and dependent claims 11–20 pursuant to 37 C.F.R. § 41.50(b). DECISION We REVERSE the Examiner’s decision rejecting claims 1 and 11–20. We AFFIRM the Examiner’s decision rejecting claim 21. We ENTER A NEW GROUND OF REJECTION, as set forth above, for claims 1 and 11–20. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: 4 The new ground of rejection for dependent claims 11–20 relies on the same basis set forth by the Examiner for the additional features recited in those claims, with the modification of the rejection of those claims being based on obviousness over Bushberger and Allen to cure the deficiency in the Examiner’s anticipation rejection of claim 1, from which claims 11–20 ultimately depend. Appeal 2021-002312 Application 14/121,604 8 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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)(1)(iv). CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 11, 14–17, 19 102(a)(1) Bushberger 1, 11, 14–17, 19 12, 13 103 Bushberger 12, 13 18, 20, 21 103 Bushberger, Allen 21 18, 20 1, 11–20 103 Bushberger, Allen 1, 11–20 Overall Outcome 21 1, 11–20 1, 11–20 AFFIRMED IN PART; 37 C.F.R. § 41.50(b)