DUCTMATE INDUSTRIES, INC. et al.

Patent Trials and Appeals Board

Nov 18, 2019

90014073 - (D) (P.T.A.B. Nov. 18, 2019)

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.
90/014,073 01/19/2018 7708034 9156-1902705 8099
28289 7590 11/18/2019
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
JASTRZAB, JEFFREY R
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
11/18/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
DUCTMATE INDUSTRIES, INC.,
Patent Owner

Appeal 2019-005906
Reexamination Control 90/014,073
Patent US 7,708,034 B21
Technology Center 3900
Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,2 Ductmate Industries, Inc.,
appeals from the Examiner’s decision to reject claims 1–15. Oral argument
was held in this case on October 16, 2019. A transcript of the hearing will
be entered into the record in due course. We have jurisdiction under
35 U.S.C. § 6(b).

1 Issued to Douglas G. Gudenburr et al. on May 4, 2010.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Ductmate
Industries, Inc. App. Br. 3.
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We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed “to ducts used in the heating, ventilating,
exhaust, and/or air conditioning fields.” Spec. col. 1, ll. 17–18. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A circular sheet metal duct that is self sealing when put
together by an installer comprising:
a. sheet metal;
b. a self locking mechanism having a female portion and a
male portion on opposite ends of the sheet metal, when the male
portion engages the female portion the circular duct is formed;
and
c. a liquid applied gasketing sealant in the female portion
or on the male portion that is applied during manufacturing of
the duct so that when the female portion and the male portion are
locked together by the installer a sealed duct is created.
REFERENCES
The prior art relied upon by the Examiner is:
Southard
Siebenlist
Primich
Curtis
US 467,999
US 2,201,409
US 2,698,031
US 2,756,778
Feb. 2, 1892
May 21, 1940
Dec. 28, 1954
July 31, 1956
Lockformer 1989, Product Specifications.
AIR-TITE 444, Technical Specification.
Georgia Power Technical Information Handbook 2002.
HVAC Duct Construction Standards, Second Edition, 1995 (“SMACNA
1995”).
HVAC Air Duct Leakage Test Manual, First Edition, 1985 (SMACNA
1985–2003).
Cold Seal Technical Specification, 2000.
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Q’SO Product Data, 1997.
Ductmate Solvseal Technical Specification, 2002.
Ductmate EnviroSeal Technical Specification, 1999.
Ductmate EZ-Seal Technical Specification, 2003.
Ductmate 5511M Sealant Technical Specfication, 1996.
REJECTIONS
Claims 1–4, 8, 9, 11–13, and 15 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Lockformer 1989. Ans. 6.3
Claims 5, 10, and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lockformer 1989, SMACNA 1995, and SMACNA 1985-
2003. Ans. 14.
Claims 1–4, 8, 9, 11–13, and 15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lockformer 1989 and Air-Tite 444.
Ans. 15.
Claims 1–4, 8, 9, and 11–14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lockformer 1989, Cold Seal 2000, SMACNA
1995, and SMACNA 1985-2003. Ans. 19.
Claims 1–4, 8, 9, 11–13, and 15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lockformer 1989 and Q'SO 1997. Ans.
21.
Claims 1–5, 8, 9, and 11–15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lockformer 1989 and Ductmate SolvSeal 2002.
Ans. 22.

3 The Examiner states that all claims are rejected, but provides no
independent basis for rejecting claims 6 and 7. Final Act. 2.
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Claims 1–5, 8, 9, and 11–15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lockformer 1989 and Ductmate EnviroSeal
1999. Ans. 23.
Claims 1–5, 8, 9, and 11–15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lockformer 1989 and Ductmate EZ-Seal 2003.
Ans. 24.
Claims 1–5, 8, 9, and 11–15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lockformer 1989 and Ductmate PROSeal 2000.
Ans. 25.
Claims 1–5, 8, 9, and 11–15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lockformer 1989 and Ductmate 5511M 1996.
Ans. 26.
The Examiner also makes numerous other rejections referred to as the
“Cleats Based Rejections” (Ans. 4) and the “JP ’570 Based Rejections”
(Ans. 5). These rejections are made in combination with Georgia Power
2002 or Curtis. As all of these rejections suffer the same defect, we will
address them infra and refer to them as the “Georgia Power Rejections.”

OPINION
Anticipation
The Examiner rejects claims 1–4, 8, 9, 11–13, and 15 as anticipated
by Lockformer 1989. The Examiner finds that “the Lockformer sealant
application is liquid during application, and while not specifically stated to
solidify, those having ordinary skill in the art would have understood that in
order to properly function as a sealant bead (gasket), the sealant would have
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to solidify in the duct seam.” Ans. 6. Appellant argues that “[a] person of
ordinary skill in the art . . . would interpret [the Lockformer sealant] as a
liquid sealant that would slide into the female pocket when the male enters,
otherwise it may be difficult or impossible for the male end to enter the
female portion.” App. Br. 19.
The Examiner appears to recognize the weakness of the finding that
Lockformer teaches the claimed sealant by including an obviousness
rejection over Lockformer 1989 and Air-Tite 444 stating that “to the extent
one might not construe the Lockformer sealant to meet the ‘liquid applied’
limitation,” Air-Tite 444 discloses such a sealant. Ans. 15. We note that the
claims require a specific kind of sealant, namely “a liquid applied gasketing
sealant.” Claim 1. Appellant provides a lengthy definition of this term in
the Specification that makes clear, among other things, that the sealant is
applied as a liquid; solidifies into a compressible, hardened seal; will not
flow or displace itself out of the original applied area; is formulated with
block co-polymers; and does not string like the mastic sealants do. Spec.
col. 3, ll. 37–50.
Appellant also submits the Declaration of Edward F. Rafalski,4 which
states that “[t]he prior art sealant used in custom rectangular duct was
typically a liquid sealant, which is an adhesion type of sealant.” Rafalski
Decl. 9. As Mr. Rafalski further states, adhesion sealants “adher[e] to both
mating surfaces” and “would then not be effective for sealing a seam more
than once or multiple times.” Rafalski Decl. 11. We are persuaded that,
contrary to the Examiner’s findings, the sealant in Lockformer is more likely

4 Declaration of Edward F. Rafalski, dated July 10, 2013.
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than not a liquid, or mastic, type sealant that does not solidify and is the type
commonly used in rectangular ductwork. Anticipation may not be based on
possibilities or probabilities as the Examiner has essentially done. This
being more likely than not a liquid sealant, although it may seal, it does not
form a gasket and cannot meet the definition of the claimed gasketing
sealant. Accordingly, we do not sustain the Examiner’s anticipation
rejection. Because claims 6 and 7 depend from claim 1, to the extent that the
Examiner’s rejection applies to claims 6 and 7, it is also not sustained.

Obviousness
Lockformer
The Examiner finds that Lockformer, when taken as a whole, teaches
various devices that could be used together to form a round duct with the
claimed snaplock feature as well as the claimed sealant. Ans. 6. As noted
above, we disagree that Lockformer teaches the claimed sealant, but, for
example, the Examiner also finds that it would have been obvious to use a
sealant such as Air-Tite 444, which the Examiner finds meets the claimed
liquid applied gasketing sealant. See, e.g., Ans. 15–16. Regarding duct
shape, the Examiner bases the finding that Lockformer teaches the claimed
ductwork mainly upon the statement that “Lockformer clearly states that . . .
the cold sealant system of page 27 ‘can be fitted to all Lockformer roll
forming machines’ (emphasis added).” Ans. 8.
Appellant argues that, despite this statement, Lockformer does not
actually teach the compatibility of the cold sealant system of page 27 with
round duct forming machines and that one of ordinary skill in the art would
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have understood that this statement was meant to apply only to rectangular
duct forming machines. See, e.g., App. Br. 18. Appellant further supports
this argument with a Declaration of Rian Scheel5 in which he states that this
statement was meant only to apply to square and rectangular machines.
Scheel Decl. ¶ 8(b)ix. Mr. Scheel also states that the Lockformer cold
sealant system would be incompatible with round duct machines. Id. ¶ 8(d)i.
Although Appellant’s arguments and Mr. Scheel’s testimony are
generally persuasive as to the teachings of Lockformer on its face, the
Examiner also finds that even if “the cold sealant system were not physically
capable of connection to the circular duct machines as proffered, the
teaching to those of ordinary skill in the art remains the same, i.e., that cold
sealant is applicable to circular seams nonetheless.” Ans. 8. We are
sufficiently persuaded that one of skill in the art would not take Lockformer
as teaching the compatibility of the specific machines, but we are not
persuaded that one of ordinary skill in the art would not have taken from
Lockformer that some other kind of sealant applicator could be used in
forming round duct work.
Having accepted this finding, we must then determine whether Air-
Tite 444 teaches the claimed liquid applied gasketing sealant. Appellant
again points us to the Rafalski Declaration, which generally deals with the
fact that Air-Tite “seals by adhering to both mating surfaces” and therefore
“would then not be effective for sealing a seam more than once or multiple
times.” Rafalski Decl. 11. The claims do not require reusability and so we
do not find this argument persuasive.

5 Declaration of Rian Scheel, dated July 2, 2013.
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As the Examiner finds, the sealant is liquid and “[t]he metal seams
can be assembled up to 12 months from the application date,” thus
suggesting that the sealant is applied as a liquid, but then cures to something
resembling a gasket. We further note that the description explains that it
“[w]ill not string when applying” and “[c]ures to a flexible, gummy
consistency.” Air-Tite 444. As pointed out above, one of the characteristics
of a gasketing sealant is that it does not string and given that it is described
as curing to a flexible, gummy consistency, we agree with the Examiner that,
on its face, Air-Tite 444 appears to meet the provided definition of a liquid
applied gasketing sealant.
Accordingly, we conclude that the Examiner has met the burden of
providing a prima facie case of obviousness in the combination of
Lockformer with Air-Tite 444. The burden thus shifts to Appellant to rebut
this prima facie case. Appellant offers numerous arguments as to why one
of ordinary skill in the art would not have made the Examiner’s proposed
combination.
We are most persuaded by Appellant’s arguments regarding how one
of skill in the art actually would have understood the teachings of
Lockformer along with the several of the industry participants
contemporaneously extolling the virtues of the “new” system of providing
round duct work that already has sealant applied. We note that Lockformer
had been known in the prior art for nearly twenty years at the time of
Appellant’s filing. Given the statements by Mr. Scheel, we agree that one of
ordinary skill in the art would not have understood Lockformer as actually
teaching the compatibility of the specific machines at issue used together in
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forming circular ducts. Also, given the time since Lockformer, it appears
that no one in the art actually looked to improve on the prior standard of
sealing during installation despite the teachings relied on by the Examiner to
conclude obviousness.
Appellant also submits at least three contemporaneous advertisements,
all touting the advantages of a pre-applied sealant in round duct work that
did not exist prior to the filing of the application leading to the patent at
issue. The Examiner appears to have generally dismissed this
contemporaneous advertising by others in the industry touting the pre-
applied sealant in round duct as being an improvement. See Ans. 41. First,
the Midwest Ducts advertisement explains that it features “tape fastener in
the lock to seal the longitudinal joint on the pipe.” App. Br. 8. It further
notes that this “represents the first significant improvement to round pipe
products in the last 50 years” and that it “eliminat[es] the need for messy
mastics or expensive foil tape.” Id. From this document it is clear that the
standard in the art was to either apply tape or mastic during installation and
that a pre-applied sealant was an innovation.
Next, the Gray Metal South advertisement characterizes its product as
“already sealed pipe…like no other.” App. Br. 9 (capitalization omitted). It
further states that this new pipe “is created by applying duct sealant along
the entire length of the pipe in the female side of the button lock” thus
“eliminat[ing] the need for tape or brushed sealant along its entire length.”
Id. Again, this advertisement provides evidence that pre-applying sealant in
round ducts was an improvement over the prior art of taping or using
mastics, as asserted by Appellant.
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Lastly, the Heating and Cooling Products advertisement touts its Ultra
Seal Pipe (USP) as being “an innovative round duct” with “[a] unique FIP
Gasket” that “[e]liminates UL181 [t]apes or [m]astics.” App. Br. 9. Given
this wide industry acknowledgement that pre-applied sealant in round duct
was innovative and an improvement over the then-prevalant state of the art
of using tapes or mastics applied during installation, we are persuaded by
this evidence in the form of secondary considerations that it would not have
been obvious to one of ordinary skill in the art to have attempted to apply a
gasketing sealant simply because Lockformer describes, apparently
incorrectly or inadvertently, that its cold sealant system was usable with all
duct forming roll machines. As such, we do not sustain the Examiner’s
obviousness rejections that include Lockformer 1989.

The Georgia Power Rejections
The remaining rejections rely in some part on Georgia Power or
Curtis for teaching “that circular and rectangular (square) ducts are
interchangeable and functionally equivalent.” Ans. 28. Curtis and Georgia
Power both deal with conversions for calculating airflow in both round and
square ducts. In other words, due to the cross sectional difference in shape
and the associated fluid dynamics, one simply could not use an equal cross-
sectional area for equivalent airflow, but would have to use the conversions
taught therein to replace round ducts with square ducts or vice versa. The
existence of these conversions, however, would not convey to persons of
ordinary skill in the art that all aspects involving the structure and
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manufacture of round and circular ducts are interchangeable or functionally
equivalent.
Neither Georgia Power nor Curtis addresses any structural and
manufacturing differences between round and square ducts and, as such, we
do not agree that any feature or aspect may merely be lifted from square duct
technology and imported into round duct technology simply because it was
known that there were particular sizes in converting from square to round to
achieve equivalent airflow in each. Accordingly, we do not sustain the
Examiner’s “Georgia Power Rejections.” Because claims 6 and 7 depend
from claim 1, to the extent that the Examiner’s rejection applies to claims 6
and 7 it is also not sustained.
DECISION
The Examiner’s rejections are REVERSED.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 8, 9,
11–13, 15
102 Lockformer 1989 1–4, 8, 9, 11–13,
15
1–5, 8–15 103 Lockformer 1989
and other references
1–5, 8–15
1–5, 8–15 103 the “Georgia Power
Rejections”
1–5, 8–15
6, 7 No
rejections
are asserted
against these
claims
To the extent any
rejections apply to
these claims, they
are reversed
Overall
Outcome
1–15
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REVERSE

cdc

PATENT OWNER:
THE WEBB LAW FIRM, P.C.
One Gateway Center, 420 Ft. Duquesne Blvd, Suite 1200,
Pittsburgh, PA 15222

THIRD PARTY REQUESTER:
HARTER SECREST & EMERY LLP
IP Practice Group, 1600 Bausch & Lomb Place
Rochester, NY 14604-2711