TL FAB, LP

Patent Trials and Appeals BoardJul 23, 2020

15423459 - (D) (P.T.A.B. Jul. 23, 2020)

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. 15/423,459 02/02/2017 VICTOR O'MARA 961-P-2-USA 9538 71850 7590 07/23/2020 ONE, LLP 4000 MacArthur Blvd. East Tower, Suite 500 Newport Beach, CA 92660 EXAMINER KATCHEVES, BASIL S ART UNIT PAPER NUMBER 3633 NOTIFICATION DATE DELIVERY MODE 07/23/2020 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): ipdocketing@onellp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte VICTOR O’MARA Appeal 2020-001219 Application 15/423,459 Technology Center 3600 ____________ Before JOHN C. KERINS, WILLIAM A. CAPP, and ERIC C. JESCHKE, Administrative Patent Judges. KERINS, 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 1–10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The term “Appellant” is used herein to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies TL Fab, LP, as the real party in interest. Appeal Br. 2. Appeal 2020-001219 Application 15/423,459 2 THE CLAIMED SUBJECT MATTER Appellant’s invention relates to a stair tread and a stairway assembly including a plurality of stair treads. Claim 1 is illustrative, and is reproduced below: 1. A stair tread comprising: a metal pan including a bottom wall, first and second sidewalls, a front wall, and a rear wall, said walls forming a cavity; one or more foam inserts positioned within the metal pan's cavity; a concrete filler positioned within said metal pan which encapsulates said one or more foam inserts, said concrete filler having a top surface which is substantially planar to form an upper walking surface. THE REJECTIONS The Examiner rejects: (i) claims 1–3 and 6–8 under 35 U.S.C. § 103 as being unpatentable over Classen (US 8,935,894 B1, issued Jan. 20, 2015) in view of Williams (US 7,765,755 B2, issued Aug. 3, 2010) and (ii) claim 4, 5, 9, and 10 under 35 U.S.C. § 103 as being unpatentable over Classen in view of Williams and Vargas (US 2009/0293385 A1, published Dec. 3, 2009). Appeal 2020-001219 Application 15/423,459 3 ANALYSIS Claims 1–3 and 6–8--Unpatentability over Classen and Williams Appellant argues the claims as a group. We use claim 1 as the representative claim for the group, and claims 2, 3, and 6–8 stand or fall with claim 1. The Examiner finds that Classen discloses a stair tread having a metal pan and a concrete filler, as recited in claim 1, but does not disclose the use of one or more foam inserts positioned in the cavity of the metal pan. Final Act. 3. The Examiner cites to Williams as disclosing the use of foam inserts in various structural concrete panels, and concludes that it would have been obvious to modify the stair tread of Classen to include foam inserts in order to reduce the weight of the tread, an advantage taught by Williams. Id.; see, e.g., Williams 3:36–37, 4:57–58. Appellant argues: a) Classen not only does not teach positioning one or more foam inserts in the cavity of the metal pan, Classen teaches away from the addition of any embedded elements within the concrete; b) Williams does not teach a cement stair tread, nor a metal shell into which concrete is added, and expressly discourages the use of metal structures––instead, frame members and a matrix of joists and beams are used in constructing floor panels; c) Classen does not provide the “weight saving” rationale articulated by the Examiner; and d) the person of ordinary skill in the art, when considering Classen and Williams, would not embed elements in the Classen Appeal 2020-001219 Application 15/423,459 4 stair tread and/or would strive to minimize use of metal in constructing structural elements. Appeal Br. 12–21; Reply Br. 2–4. In support of argument a) above, Appellant quotes Classen as informing that “embedded support elements such as rebar are not necessary and their drawbacks may be avoided.” Appeal Br. 18–19, quoting Classen 1:44–47 and 2:23–26. Responding to the Examiner’s retort that Classen is not proposed to be modified to add support elements, but rather foam inserts to reduce weight (Answer 3), Appellant mistakenly asserts that the Examiner finds rationale for the modification to Classen in the fact that foam is not a structural support material. Reply Br. 3. The Examiner does not do so; the Examiner merely points out that Classen does not teach away from the possibility that non-structural support elements might be used in Classen’s stair tread. Indeed, although not specifically identifying foam, Classen contemplates that the stair treads may include “filler material,” in addition to rebar (not preferred) or other supportive materials. Classen 5:44–46. With respect to argument b), the Examiner points out that the Williams disclosure that metal structures are not preferred due to their weight is of no moment, in that the rejection does not propose modifying Williams to add metal structure to any of its components; the rejection is instead a proposed modification to Classen, which already employs a metal pan containing concrete. Ans. 3. The proposed modification to add foam inserts into the concrete structure would be seen by a person of ordinary skill in the art as a measure to address (i.e., reduce) the weight of the Classen stair tread while maintaining the structural integrity attendant to the use of a Appeal 2020-001219 Application 15/423,459 5 metal pan. This is consistent with the Williams goal of reducing the weight of the structural members. Argument c) also misses the mark. The Examiner does not rely on Classen as providing the rationale for modifying the Classen stair tread to reduce its weight. Williams is relied on as disclosing the embedding of foam in concrete panels, in part to provide a weight savings. Additionally, the record on appeal contradicts Appellant’s assertion that the Examiner “is silent” as to where Williams provides a reason for incorporating foam inserts into structural members such as a stair tread. See Reply Br. 3. Argument d) above is little more than what Appellant surmises would be the result of the person of ordinary skill in that art taking into account the purported teachings away of Classen and Williams. As noted above, we do not credit the assertions that the references teach away from the Examiner’s proposed combination. It matters not that the combined teachings of Classen and Williams could well lead to other modifications to the structure disclosed in either of the references; the Examiner’s proposed modification is supported by the evidence of record, with an articulated reason for the modification that is supported by rational underpinnings. The rejection of claim 1 as being unpatentable over Classen and Williams is sustained. Claims 2, 3, and 6–8 fall with claim 1. Claims 4, 5, 9, and 10--Unpatentability over Classen, Williams, and Vargas Appellant includes a separate subheading in the Appeal Brief identifying the Vargas patent, and provides a brief discussion as to the structure disclosed in Vargas. Appeal Br. 15–16. Appellant does not, however, present arguments as to any alleged shortcomings of the Vargas Appeal 2020-001219 Application 15/423,459 6 reference; and instead reiterates arguments directed to alleged deficiencies in the combined teachings of Classen and Williams. Id. at 17–21. Consistent with this, Appellant elsewhere states that all claims on appeal stand or fall together, for the purposes of the appeal. Id. at 10. The rejection of claims 4, 5, 9, and 10 is sustained for the same reasons set forth in the discussion above directed to claims 1–3 and 6–8. DECISION The rejections of claims 1–10 as being unpatentable are affirmed. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6–8 103 Classen, Williams 1–3, 6–8 4, 5, 9, 10 103 Classen, Williams, Vargas 4, 5, 9, 10 Overall Outcome 1–10 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED