MITEK HOLDINGS, INC.

Patent Trials and Appeals Board

Jun 21, 2021

2020005826 (P.T.A.B. Jun. 21, 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.
15/284,107 10/03/2016 David L. Houghton MLP 7838.US 7077
321 7590 06/21/2021
STINSON LLP
7700 FORSYTH BOULEVARD, SUITE 1100
ST LOUIS, MO 63105
EXAMINER
HIJAZ, OMAR F
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
06/21/2021 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):
stl.uspatents@stinson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID L. HOUGHTON
Appeal 2020-005826
Application 15/284,107
Technology Center 3600
Before MICHAEL J. FITZPATRICK, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, 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 1–4, 8, 9, 16, 21, and 22.2 See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as MiTek Holdings,
Inc. Appeal Br. 2.
2 Claims 5–7, 10–14, and 17–20 are cancelled, and claim 15 is withdrawn.
Appeal Br. 2. The Examiner rejected claim 23, but ultimately withdrew the
rejection. See Final Act. 6; Ans. 3. The Examiner indicated that claim 24
recites allowable subject matter. Final Act. 2.
Appeal 2020-005826
Application 15/284,107
2
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a gusset plate and column assembly for
moment-resisting, bi-axial, beam-to-column joint connections. See Spec.
¶ 2. Claim 1, reproduced below with indentations and paragraph numbering
added, is illustrative of the claimed subject matter:
1. [i.] A gusset plate assembly for use in connecting at
least two beams to a hollow tubular column in a building, the
gusset plate assembly configured to receive said at least two
beams in a biaxial orientation of said beams, the gusset plate
assembly comprising
[ii.] gusset plates sized for transferring the weights of
said at least two beams and the reaction forces and bending
moments of the at least two beams to the hollow tubular column,
[iii.] at least a first of the gusset plates being configured
to receive a portion of a second of the gusset plates therein, and
[iv.] a joint penetration groove weld joining the first and
second gusset plates together, the joint penetration groove weld
being disposed on an exterior surface of the first and second
gusset plates, the joint penetration groove weld having a length
comprising a partial joint penetration groove weld with a
reinforcing fillet weld extending part of the length of the joint
penetration weld[3] and a fillet weld extending another part of the
length of the joint penetration groove weld.
Appeal Br. 11 (Claims App.).

3 Based on the context of claim 1, it appears that Appellant intended to recite
a “joint penetration groove weld” rather than a “joint penetration weld.”
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Application 15/284,107
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Houghton US 2003/0009977 A1 Jan. 16, 2003
Hinchliffe GB 717,744 Nov. 3, 1954

REJECTION
Claims 1–4, 8, 9, 16, 21, and 22 are rejected under 35 U.S.C. § 103 as
being unpatentable over Hinchliffe and Houghton.
OPINION
The Examiner finds that Hinchliffe discloses a gusset plate assembly
comprising many of the elements recited in claim 1, including a weld that
joins the first and second gusset plates together. Final Act. 2–3. Finding
that Hinchliffe fails to disclose that its weld is a “joint penetration groove
weld” satisfying the requirements of paragraph iv. of claim 1, the Examiner
relies on Houghton to teach a joint penetration groove weld in which a
partial joint penetration (“PJP”) groove weld with a reinforcing fillet weld
extends part of the length of the joint penetration groove weld and a fillet
weld extends another part of the length of the joint penetration groove weld.
Id. at 3–4 (citing Houghton ¶ 17, claim 12). The Examiner takes the
position that claim 12 of Houghton clarifies the disclosure of paragraph 17
by reciting a combination of various types of welds. Id. at 4. The Examiner
reasons,
it would have been obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention, to
modify the structural framework of Hinchliffe . . . such that the
weld is a joint penetration groove weld having a length
comprising a partial joint penetration groove weld with
Appeal 2020-005826
Application 15/284,107
4
reinforcing fillet weld extending part of the length of the joint
penetration weld and a fillet weld extending another part of the
length of the joint penetration groove weld, as taught by
Houghton, in order to provide the most optimal welding bond
between the elements of the structure, to enhance the strength of
the structure.
Final Act. 4 (emphasis added). Thus, the Examiner determines that, based
on the teachings of Houghton, modifying Hinchliffe’s weld to include the
limitations of paragraph iv. of claim 1 would have been an obvious matter of
providing an optimal welding bond. Elaborating on the rejection, the
Examiner states, in the Response to Arguments section of the Final Office
Action, “[w]hile Houghton might not specifically show two different kinds
of welds on a single joint, using different types of welds on a joint would
have been obvious in order to discover the most optimal strength bond
between two structural elements.” Id. at 8. The Examiner further
determines, “it would have been obvious to a welder, or one having ordinary
skill in the art, to use different types of welds on a single joint, in the same
way that a carpenter might use nails and wood glue, wood glue and screws,
or a combination thereof, when assembling a wooden structure.” Id.
Appellant argues that, although Houghton discloses the use of various
types of welds, Houghton applies only a single type of weld to any particular
joint. See Appeal Br. 5–8. In support of this argument, Appellant refers to a
Declaration executed by David L. Houghton (hereinafter, the “Houghton
Declaration” or “Houghton Decl.”), the sole named inventor of Houghton
and of the present Application. See id. at 7 (citing Houghton Decl. ¶ 3).
As for the Examiner’s further discussion of the rejection in the
Response to Arguments section of the Final Office Action, Appellant
contends “the Examiner’s stated reasoning of ‘to discover the most optimal
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strength bond’ is conclusory and does not provide an explanation sufficient
to support prima facie obviousness,” and Appellant asserts that the rejection
of claim 1 relies on the use of improper hindsight. Appeal Br. 7–8.
In response, the Examiner takes the position that, contrary to
Appellant’s argument and the statement in the Response to Arguments
section of the Final Office Action, Houghton discloses the use of different
welds on the same joint. See Ans. 4–5.
Responding to Appellant’s allegation of the use of improper hindsight
in the rejection, the Examiner interprets claim 1 broadly, stating,
a weld is a weld, no matter what name it is given. And the change
from one type of weld to another type of weld, depends on the
particular shape(s) of the joining surfaces. In claim 1, the names
of different welds are given, but the structural shapes of the
joining surfaces are not defined.
Ans. 5. The Examiner then states,
utilizing different welding techniques would have been obvious
in order to discover an optimal bond strength between two
surfaces, and this would not have required any hindsight,
particularly in light of the fact that the structural shapes of the
surfaces requiring the weld types in question are not being
claimed, at least not until claim 23.
Id. at 5–6.
Appellant has the better position. First, a preponderance of the
evidence does not support the Examiner’s finding that Houghton discloses
the use of more than one type of weld on a single joint. Houghton’s
paragraph 17 lists various types of welds that may be used as “welds
between the gusset plates and other members of the structural connection.”
However, this portion of Houghton does not indicate that any particular joint
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may be comprised of more than one of these types of welds. Further,
paragraph 3 of the Houghton Declaration states,
[w]hile multiple types of welds were certainly known at the time,
it was not my intention or understanding to use two or more types
of welds along a single joint connecting the gusset plates to the
other structures of the structural joint connection. Rather, as is
shown in every figure, only a single weld type is used along the
full length (vertical depth) of a connected gusset plate to the face
of a column flange for any given joint within the structure. The
different welds were provided as possible alternatives at a given
joint.
Claim 12 of Houghton depends from claim 11 and recites, in pertinent part,
“said welds comprise any one or combination of fillet welds, full-penetration
groove welds . . . and any other suitable weld type.” Emphasis added. By
stating that “said welds” rather than that “a weld” may comprise any of the
listed types of welds, Houghton appears to indicate only that the welds
introduced in Houghton’s claim 11 may include any of the listed types of
welds, not that a single joint may include more than one type of weld.
Second, Appellant’s claim 1 recites more than that a given joint is
connected via a combination of welds, claim 1 recites “a partial joint
penetration groove weld with a reinforcing fillet weld extending part of the
length of the joint penetration weld and a fillet weld extending another part
of the length of the joint penetration groove weld.” Thus, providing two
types of welds, one on each of two opposing faces of a joint, would not meet
the requirements of claim 1. Rather, claim 1 requires a change of the type of
weld along its length. The Examiner’s reasoning that “using different types
of welds on a joint would have been obvious in order to discover the most
optimal strength bond between two structural elements” (Final Act. 8) may
provide a basis for selecting and applying a particular type of weld on each
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of opposing faces of a joint, but it does not account for changing the type of
weld at an intermediate point along the length of the weld. Accordingly, we
agree with Appellant that the Examiner’s reasoning is not based on rational
underpinnings, and we reverse the rejection of claim 1, and claims 2–4, 8, 9,
16, 21, and 22 depending therefrom, as unpatentable over Hinchliffe and
Houghton.
CONCLUSION
The Examiner’s decision to reject claims 1–4, 8, 9, 16, 21, and 22 is
reversed.
More specifically,
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 8, 9,
16, 21, 22
103 Hinchliffe,
Houghton
1–4, 8, 9,
16, 21, 22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED