Ex Parte Bergendahl et al

Patent Trial and Appeal Board

Aug 8, 2017

13233479 (P.T.A.B. Aug. 8, 2017)

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.
13/233,479 09/15/2011 Peter Bergendahl 091078.1634 3608
5073 7590 08/10/2017
RAKFR ROTTST T P
EXAMINER
2001 ROSS AVENUE MCMAHON, MATTHEW R
SUITE 700
DALLAS, TX 75201-2980 ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
08/10/2017 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):
ptomaill @bakerbotts.com
ptomai!2 @ bakerbotts .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER BERGENDAHL, GREGORY A. NEECE,
and BRIAN SMITH1
Appeal 2016-003914
Application 13/233,479
Technology Center 3600
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—7, 9—16, and 18—26. App. Br. I.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Trinity Industries, Inc. is listed as the real party in interest. App. Br. 4.
2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Final Action mailed March 31, 2015 (“Final Act.”); the Appeal
Brief filed August 28, 2015 (“App. Br.”); and the Examiner’s Answer
mailed December 31, 2015 (“Ans.”).
Appeal 2016-003914
Application 13/233,479
STATEMENT OF THE CASE
Appellants describe the present invention as follows:
A safety barrier comprises a plurality of posts spaced from
each other and disposed adjacent to a roadway, each post having
a cross section defined in part by a web and a pair of legs
extending therefrom. Additionally, each post has one slot
formed in the web of the post extending from an upper end of the
post. A first cable and a second cable are releasably engaged
with and supported by the posts and disposed within each slot
between the respective legs of each post. A third cable and a
fourth cable are each coupled to an exterior surface of the posts.
The posts and the first, second, third and fourth cables cooperate
to prevent a vehicle from leaving the roadway.
Abstract.
Independent claim 1, reproduced below with added emphasis, is
illustrative of the appealed claims:
1. A safety barrier comprising:
a plurality of posts spaced from each other and disposed
between a roadway and a median separating the roadway from
another roadway;
each post having a cross section defined in part by a web
and a pair of legs extending therefrom;
each post of the plurality of posts having one slot formed
in the web of the post extending from an upper end of the post;
a first cable and a second cable releaseably engaged with
and supported by the plurality of posts and disposed within each
slot between the respective legs of each post;
a third cable coupled to a first exterior surface of each of
the plurality of posts at a first height above ground level; and
a fourth cable coupled to a second exterior surface of each
of the plurality of posts at a second height above ground level
that is lower than the first height;
each slot having a first edge and a second edge with
respective sloping surfaces operable to slidably receive the first
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Application 13/233,479
cable and the second cable therein, and only the first cable and
second cable are disposed within each slot; and
the sloping surfaces on the first edge of each slot providing
a plurality of first projections;
the sloping surfaces on the second edge of each slot
providing a plurality of second projections;
at most two restrictions being formed within each slot,
each of the two restrictions defined by a first projection of the
plurality of first projections extending from the first edge and a
second projection of the plurality of second projections
extending from the second edge; and
the posts and the first, second, third and fourth cables
cooperating to prevent a vehicle from leaving the roadway,
wherein the first exterior surface is opposite to the second
exterior surface,
wherein the first cable is disposed in a first area between
the first edge and the second edge of each slot,
wherein the second cable is disposed in a second area
between the first edge and the second edge of each slot,
wherein a distance from the first edge to the second edge
in the first area is greater than a distance from the first edge to
the second edge in the second area,
wherein the third cable is coupled to the first exterior
surface of each post such that the third cable extends along a
same first side of each post, and the fourth cable is coupled to
the second exterior surface of each post such that the fourth
cable extends along a same second side of each post, and
wherein the first exterior surface of each post is disposed
closer to the roadway than the second exterior surface of each
post and the second exterior surface of each post is disposed
closer to the median than the first exterior surface of each post.
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Appeal 2016-003914
Application 13/233,479
Claims 1—4, 6, 7, 9-16, and 18—26 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Alberson (US 2007/0102689 Al; published
May 10, 2007), Mauer (US 2009/0218554 Al; published Sept. 3, 2009).
Final Act. 3—35.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Alberson, Mauer, and Bergendahl (US 6,962,328 B2; issued Nov. 8, 2005).
Final Act. 35—36.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
EXAMINER FINDINGS
The Examiner finds the combination of Alberson and Mauer expressly
teaches all of the limitations of the independent claims, except for two. E.g.,
Final Act. 3—8. Noteworthy, the Examiner finds that Mauer teaches third
and fourth cables, which, as claimed, respectively are coupled to opposing
exterior surfaces of the posts at respectively differing heights. Id. at 5—6
(citing lower two cables 11 of FIG. 15). The Examiner additionally finds
that motivation existed to combine the references’ teachings. Id. at 6—7.
The disputed limitation relevant to the present appeal is “wherein the
first exterior surface of each post is disposed closer to the roadway than the
second exterior surface of each post and the second exterior surface of each
post is disposed closer to the median than the first exterior surface of each
post.” See id. at 7. The Examiner reasons, though,
one of ordinary skill in the art would recognize that there are a
finite number of designs related to which side of the barrier to
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Application 13/233,479
dispose closer to the roadway and which side to dispose closer to
the median. In fact, there are exactly two possible designs (either
the first exterior side is disposed closer to the roadway and the
second exterior surface is disclosed closer to the median, or vice
versa). In either case, one of ordinary skill in the art could have
pursued the known potential solutions with a reasonable
expectation of success. Accordingly, such a design would be
obvious. KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
Id. at 7—8.3
CONTENTIONS AND ANALYSIS
/.
Appellants argue that neither Alberson nor Mauer suggests the
claimed arrangement of the roadway, median, and exterior surfaces of the
posts (App. Br. 23, 30-31), and, therefore, “Alberson in view of Mauer,
alone or further in view of Bergendahl, fails to render claims [1, 14, 23,
and 26] obvious.” Id. 26, 33—34. These arguments are unpersuasive
because the rejection is not based on any of the references expressly
teaching the particularly claimed arrangement. As acknowledged by
Appellants (App. Br. 24—26, 31—33), the rejection is premised on the
3 The Examiner initially interpreted claim 1 to be reciting the roadway and
the median “functionally” and reasoned that “since the devices of both
Alberson and Mauer are capable of being disposed such that the first exterior
surface is closer to a roadway and the second exterior surface is closer to a
median, this limitation fails to distinguish the claimed subject matter from
that of the prior art.” Final Act. 7. We understand this reasoning to be that
the claims only recite the roadway and median inferentially—not
affirmatively. We need not address this interpretation or rationale for
rejecting the claims, though, because the Examiner subsequently
acknowledges that the roadway and median are recited affirmatively. Ans. 4
(citing App. Br. 23—23). We therefore limit our analysis to that alternative
rationale of rejection.
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Application 13/233,479
proposition that in light of the fact that given the combination teaches the
claimed arrangement of four cables generically, albeit without regard to the
orientation of the two opposing third and fourth cables relative to the street
and median, it would have been obvious to try the specifically claimed
arrangement of the lowermost fourth cable being oriented towards the
median. Final Act. 7—8.
II.
Appellants argue the Examiner’s conclusion that the claimed
arrangement would have been obvious to try is in error because “the
Examiner must articulate ‘a finding that at the time of the invention, there
had been a recognized problem or need in the art, which may include a
design need or market pressure to solve a problem.’” App. Br. 25 (citing
MPEP 2143(I)(E)). Appellants argue the following:
Examiner fails to identify any reference that discusses the
relative merits and problems associated with placing a cable on
an external surface of a post closest to the median versus placing
a cable on an external surface of a post closest to the roadway,
let alone a reference that identifies such relative placement as a
known problem in the relevant art.
. . . [T]he Examiner also fails to tie any of the “potential
solutions to [a] recognized need or problem,” as is also required
for a proper rejection using the “obvious to try rationale.”
App. Br. 25.
Appellants further argue the Examiner is incorrect in concluding
that “‘there are exactly two possible designs,’ when there are, in fact, at
least six possible designs for arranging third and fourth cables relative
to one another and relative to the roadway and median.” Id.
These arguments are unpersuasive. As a threshold matter, we
disagree with Appellants’ premise (see id.) that there are “at least six
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Application 13/233,479
possible designs for arranging third and fourth cables relative to one another
and relative to the roadway and median.” The Examiner’s position is that
the cited art at least does teach the orientation of the third and fourth cables
relative to one another. Final Act. 7—8. The only remaining limitation that
is not taught is the orientation of the cable-and-post arrangement relative to
the street and median. Id. Appellants have provided insufficient argument
or evident that this finding is incorrect. As such, we agree with the
Examiner that there are only two possible orientations: the lowermost cable
necessarily must face either the street or the median.
We likewise are unpersuaded by the argument that the obvious-to-try
rationale is improper because the Examiner fails to tie any of the potential
solutions to a recognized need or problem. App. Br. 25. As noted by the
Examiner (Ans. 6), Appellants’ Specification does not set forth any problem
or solution that is served by orienting the fourth cable towards the median,
as opposed to being oriented towards the street. The Specification only
explains the problems that are addressed by placing cables at different
heights—not different street/median orientations. See Spec. 5:31—6:31
(listing the technical advantages of placing cables at different heights); see
also Spec. 16:27—17:6 (discussing in relation to FIG. 11, the additional
protection provided by the fourth cable); see also Spec. 17:6—18:15
(addressing the effect of varying the cable heights on preventing vehicle
submarining). Appellants’ Specification simply does not disclose any
significance of the particular orientation of the cables relative to the road and
median.
Given Appellants’ lack of disclosure of any significance to the
orientation of the post-and-cable system relative to the street and median,
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Application 13/233,479
coupled with the fact that the prior-art’s generic post-and-cable system only
can be oriented relative to a road and median in one of two possible
manners, we find no error in the Examiner’s conclusion that specifically
picking the claimed orientation would have been obvious to try.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s obviousness rejection of independent claims 1, 14, 23, and
26. Accordingly, we will sustain the Examiner’s rejection of those claim, as
well as claims 1—7, 9-13, 15, 16, and 18—22, 24, and 25, which depend from
claims 1, 14, and 23.
With respect to the remaining rejection of dependent claim 5,
Appellants have not particularly pointed out errors in the Examiner’s
reasoning regarding the additional teachings of Bergendahl, but merely
argue that claims patentability based on its dependency from claim 1.
DECISION
The Examiner’s decision rejecting claims 1—7, 9—16, and 18—26 is
affirmed.
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)(l)(iv).
AFFIRMED
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