MITEK HOLDINGS, INC.Download PDFPatent Trials and Appeals BoardJun 21, 20212020005826 (P.T.A.B. Jun. 21, 2021) Copy Citation 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party in interest as MiTek Holdings, Inc. Appeal Br. 2. 2 Claims 5–7, 10–14, and 17–20 are cancelled, and claim 15 is withdrawn.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.” Appeal 2020-005826 Application 15/284,107 3 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 Appeal 2020-005826 Application 15/284,107 5 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 Appeal 2020-005826 Application 15/284,107 6 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 Appeal 2020-005826 Application 15/284,107 7 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 Copy with citationCopy as parenthetical citation