Unirac, Inc.

Patent Trials and Appeals Board

Jul 27, 2020

16048152 - (D) (P.T.A.B. Jul. 27, 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.
16/048,152 07/27/2018 Chad Robinson S244-0008USC1 6526
29150 7590 07/27/2020
LEE & HAYES, P.C.
601 W. RIVERSIDE AVENUE
SUITE 1400
SPOKANE, WA 99201
EXAMINER
SADLON, JOSEPH
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
07/27/2020 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHAD ROBINSON
____________

Appeal 2020-000115
Application 16/048,152
Technology Center 3600
____________

Before JAMES P. CALVE, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.

CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–4, and 6–9 under 35 U.S.C. § 102(a)(2) as anticipated
by Stearns (US 9,985,575 B2, iss. May 29, 2018).2, 3 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Unirac Inc. as the applicant and real
party in interest. Appeal Br. 3.
2 The rejection of claims 5 and 10–15 has been withdrawn by the Examiner.
Ans. 8.
3 A double patenting rejection set forth in the Final Action is not mentioned
in Appellant’s Briefs or the Answer and is presumed to be withdrawn. Final
Act. 3; Ans. 3.
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Application 16/048,152
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THE INVENTION
Appellant’s invention relates to mounting racks for solar panels and
the like. Spec. ¶ 13. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A tiered mounting system, comprising:
a base plate including a mounting guide rail including:
a first rail wall disposed parallel to a second rail wall,
an inner track extending between the first rail wall and the
second rail wall, and
a plurality of mounting grooves including a first set of
grooves spaced apart on an outer side of the first rail wall
and a second set of grooves spaced apart on an outer side of
the second rail wall; and
an object mount connector having a plurality of mounting
ridges, the object mount connector being configured to:
slidingly engage the mounting guide rail via insertion of
one or more of the plurality of mounting ridges within a
corresponding one or more of the plurality of mounting
grooves, and
lock in place along the mounting guide rail via a fastener
placed through the object mount connector and secured
tightly to the inner track of the mounting guide rail.
OPINION
Claim 1
The Examiner finds that Stearns discloses each limitation of claim 1.
Final Act. 4. Appellant concedes that Stearns’ bolt 807 extends through
part 830, but argues that it is not secured to the inner track extending
between the first and second rail walls. Appeal Br. 9. In response, the
Examiner states:
[T]he Examiner submits where Applicant has admitted on
record that “Stearns merely describes a bolt 807 that extends
through the part 830”, this is evidence that the “standoff 830” is
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Application 16/048,152
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secured to the inner track because the part 830 is secured to the
“slide 817” which includes the inner track. The inner track
(described in the rejection as “see “inner track” proximate head
of fastener 820 FIG. 29; this area is recognized as between the
above identified walls”) is part of the mounting guide rail, and
the standoff is secured to the rail, the standoff is recognized as
secured to the inner track.
Ans. 9. In reply, Appellant argues that bolt 807 does not extend beyond the
wall of standoff 830 to the inner track within slide 817. Reply Br. 3.
Moreover, Appellant argues that Stearns does not have a through-hole or slot
by which bolt 807 could be secured to the inner track. Id.
Stearns is directed to a roof mount system for solar panels. Stearns,
Abstract. The Figure 28–39 embodiment features roof fastener 820 that
fastens mounting bracket 816 to the roof through flashing 818. Id. col. 11,
ll. 43–62, Figs. 29–31. Stearns features slide 817 that corresponds to
Appellant’s claimed mounting guide rail. Id. Stearns also features
standoff 830 that corresponds to Appellant’s object mount connector. Id.
As shown in Figures 29 and 31, slide 817 may be locked in place relative to
standoff 830 by means of locking bolt 807. Id., Figs. 29, 31. Locking
bolt 807 appears to extend through a hole in standoff 830 and, from there, is
free to contact the outer wall of slide 817. Id. It does not appear to extend
through a hole in slide 817 and, indeed, there does not appear to be any hole
in slide 817 for locking bolt 807 to go through. Id. Thus, while locking
bolt 807 appears to engage the outer wall of slide 817, it does not appear to
directly engage an inner wall of slide 817.
As we understand the Examiner’s rejection, locking bolt 807 directly
engages the outer wall of slide 817. The force imposed on the upper portion
of the wall of slide 817 displaces the wall laterally until the inner wall
Appeal 2020-000115
Application 16/048,152
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thereof comes into contact with an immediately adjacent surface of
standoff 830. The resulting friction between the inner wall of slide 817 and
standoff 830 causes slide 817 and standoff 830 to “lock in place” relative to
each other.
In analyzing the claim language relative to Stearns, we consider and
answer the following questions:
(1) Does Stearns disclose an object mount connector with a plurality
of mounting ridges? Yes, standoff 830 satisfies this claim limitation.
(2) Is Stearns’ object mount connector configured to slidingly engage
the mounting guide rail via insertion of mounting ridges into mounting
grooves? Yes, there are corresponding ridges and grooves on slide 817 and
standoff 830. See Stearns, Fig. 29.
(3) Is Stearns’ object mount connector configured to lock in place
along the mounting guide rail via a fastener? Yes, locking bolt 807 is placed
through standoff 830 and engages slide 817 so as to lock in place slide 817
and standoff 830. Id. Fig. 29, col. 11, ll. 51–62 (“standoff 830 is selectively
fixed relative to the slide 817 by a locking bolt 807”).
(4) Is Stearns’ object mount connector configured to lock the
mounting guide rail “via a fastener” that is placed “through the object mount
connector” in such a way that the object mount connector is secured tightly
“to the inner track” of the mounting guide rail?
The Examiner and Appellant have different answers to question
number 4 above based on diverse interpretations of the claim language.
Appellant’s position is that, to satisfy the claim language, the fastener must
directly engage the inner track of the mounting guide rail. The Examiner, on
the other hand, interprets the claim language more broadly such that the
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Application 16/048,152
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mounting guide rail and the object mount connector “lock in place” via a
fastener placed through the object mount connector as long as the fastener
causes the mounting guide rail and object mount connector to frictionally
engage.
Having carefully reviewed the claim language of claim 1, we agree
with Appellant that claim 1 requires the fastener to: (1) pass through the
object mount connector; and (2) engage the inner track of the mounting rail
guide. Thus, it is the “fastener” itself that must engage the inner track
(“secured tightly”).
For a prior art reference to anticipate a claim, it must disclose all of
the limitations of the claim, “arranged or combined in the same way as in the
claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir.
2008). Inasmuch as Stearns’ locking bolt 807 only engages the outer wall of
slide 817, but not the inner wall/inner track thereof, Stearns does not
anticipate claim 1.
We do not sustain the Examiner’s anticipation rejection of claim 1.
Claims 2–4
These claims depend from claim 1. Claims App. The Examiner’s
rejection of these claims suffers from the same infirmity that was identified
above with respect to claim 1. Thus, for essentially the same reason
expressed above in connection with claim 1, we do not sustain the rejection
of claims 2–4.
Claims 6–9
Claim 6 is an independent claim that, as with claim 1, has a limitation
directed to a fastener being secured to an inner track of the mounting guide
rail. Claims App. Claims 7–9 depend from claim 6. Id. The Examiner
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Application 16/048,152
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again relies on locking bolt 807 in Figure 29 of Stearns as teaching a
fastener being secured tightly to an inner track of the mounting guide rail.
Final Act. 7. Thus, the Examiner’s rejection of these claims suffers from the
same infirmity that was identified above with respect to claim 1. Thus, for
essentially the same reason expressed above in connection with claim 1, we
do not sustain the rejection claims 6–9.
CONCLUSION
Claims
Rejected
§ Reference Affirmed Reversed
1-4, 6-9 102 Stearns 1-4, 6-9

REVERSED