Ex Parte Berlin

Board of Patent Appeals and Interferences

Feb 15, 2011

11541626 (B.P.A.I. Feb. 15, 2011)

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.
11/541,626 09/29/2006 David N. Berlin ALM-10003/29 2423
25006 7590 02/15/2011
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
MAYO-PINNOCK, TARA LEIGH
ART UNIT PAPER NUMBER
3671
MAIL DATE DELIVERY MODE
02/15/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID N. BERLIN
____________

Appeal 2009-009242
Application 11/541,626
Technology Center 3600
____________

Before, STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009242
Application 11/541,626

STATEMENT OF THE CASE
David N. Berlin (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 16-18, 20-22,
and 24 as unpatentable over Ullman (US 5,033,244, issued Jul. 23, 1991)
and Molnar (US 4,386,799, issued Jun. 7, 1983) and claims 19 and 23 as
unpatentable over Ullman, Molnar, and Meltzer (US 7,163,244 B2, issued
Jan. 16, 2007). 2. We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a bumper cushion assembly for a dock
including a stringer 106, a bracket 1002 that fits over the stringer 106 and is
held in position by fastener 1110, and bumper 1004 that is fitted to the
bracket 1002. Spec. 9, ll. 22-29 and fig. 10.
Claim 16 is representative of the claimed invention and reads as
follows:
16. A bumper cushion assembly for a dock made up of dock
sections held together on either side by stringers having vertical outer
surfaces terminating in upper and lower horizontal lips defining a
height, the bumper cushion assembly comprising:

a rigid bracket member including:

an outer surface configured for placement against the
outer surface of a stringer, an upper lip configured for
placement over an upper horizontal lip of a stringer, and
opposing upwardly oriented and downwardly oriented
elongated channels;

2 The rejection of claims 16-24 under 35 U.S.C. § 112, second
paragraph, as being indefinite, has been withdrawn by the Examiner. Ans. 2.
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Appeal 2009-009242
Application 11/541,626

a compressible, resilient bumper member having a smooth outer
surface and upper and lower elongated flanges that slide into the
opposing channels in the bracket member, thereby holding the bumper
member in position; and

a plurality of fasteners attaching the bracket member to a
stringer.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
The obviousness rejection over Ullman and Molnar
The Examiner found, and we agree, that Ullman discloses a bumper
cushion assembly including a bracket 10 (mounting member) and a bumper
12 (resilient strip), but does not disclose that the bracket has an upper lip, as
per claim 16, or an upper and a lower lip, as per claim 22. Ans. 3, 4
(parenthetical nomenclature to Ullman). See also Ullman, fig. 1. We further
agree with the Examiner that Molnar discloses a shock absorbing device
including a bracket member 14 (main bumper body), having an upper lip 24
and a lower lip 26, attached to a stringer 72 (stiffener). Ans. 4 (parenthetical
nomenclature to Molnar). See also Molnar, fig. 3. The Examiner concluded
that it would have been obvious for a person of ordinary skill in the art to
modify the bracket 10 of Ullman’s bumper cushion assembly to include
upper and lower lips as disclosed in Molnar to “facilitate attachment of the
bumper cushion assembly to a different structure.” Ans. 4.
Appellant argues that “adding lips to the structure of Ullman would
render the structure of Ullman unfit for its intended purpose” because the
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Appeal 2009-009242
Application 11/541,626

goal of Ullman’s bumper cushion assembly is “to facilitate flush mounting
of resilient material 12 against surface 14 such that mounting member 10
does not show.” App. Br. 4. See also Reply Br. 2. As such, Appellant
concludes that, “if the Examiner’s combination were made, the mounting
member 10 of Ullman would be visible, the structure would be difficult to
attach if not unstable, and the purposes of the reference would be defeated.”
App. Br. 5.
We find Appellant’s arguments unpersuasive for the following
reasons. First, we note that the Examiner’s proposed modification of
Ullman’s bumper cushion assembly includes both an upper and a lower lip
(see Ans. 4) and not just an upper lip X as shown by Appellant in the Figure
presented on page 5 of the Appeal Brief. Having both an upper and a lower
lip would allow the modified bracket 10 of Ullman to be easily attached to
surface 14.
Second, although we agree with Appellant that Ullman’s purpose is to
facilitate flush mounting of the bumper 12, a person of ordinary skill in the
art would have understood that in order to maintain a flush mounting of
Ullman’s bumper 12 when modified by Molnar, bumper 12 would have to
be extended to cover the upper and lower lips of bracket 10 so as to be flush
with surface 14. An artisan must be presumed to know something about the
art apart from what the references disclose. See In re Jacoby, 309 F.2d 513,
516 (CCPA 1962). “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398,
421 (2007). We do not find that modifying bumper 12 as set forth above
would have been beyond the technical grasp of a person of ordinary skill in
the art.
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Appeal 2009-009242
Application 11/541,626

Hence, in contrast to Appellant’s position, we do not find that
modifying the bracket of Ullman to include upper and lower lips, as
disclosed by Molnar, “would render the structure of Ullman unfit for its
intended purpose.” See App. Br. 4. Accordingly, the rejection of claims 16
and 22 under 35 U.S.C. § 103(a) as unpatentable over Ullman and Molnar is
sustained. Appellant does not present any additional arguments with respect
to dependent claims 17, 18, 20, 21, and 24. Therefore, the rejection of
claims 17, 18, 20, 21, and 24 is likewise sustained.

The obviousness rejection over Ullman, Molnar, and Meltzer
Appellant argues that the Examiner’s rationale to include the vertical
web of Meltzer to the bumper cushion assembly of Ullman as modified
by Molnar to “‘enhance the structural integrity of the bumper’ is without
support.” App. Br. 5. According to Appellant, because the resilient member
12 of Ullman is “positively engaged” with the mounting member 10,
resilient member 12 does not need additional “structural integrity,” as the
Examiner opines. App. Br. 6. Reply Br. 2. However, merely having the
resilient member 12 “positively engaged” with the mounting member 10
does not preclude the additional advantage of having a bumper cushion that
can distribute the applied load in a uniform manner. See Ans. 9. Providing
the vertical rib of Meltzer to Ullman’s bumper as modified by Molnar would
not have been uniquely challenging to a person of ordinary skill in the art
because it is no more than “the mere application of a known technique to a
piece of prior art ready for the improvement.” KSR Int'l. Co. v. Teleflex lnc.,
550 U.S. 398, 417 (2007). Thus, we find that the Examiner articulated a
reasoning with rational underpinning to support the conclusion that the
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Appeal 2009-009242
Application 11/541,626

provision of Meltzer’s vertical rib to Ullman’s bumper as modified by
Molnar would have been obvious. Accordingly, the rejection of claims 19
and 23 under 35 U.S.C. § 103(a) as unpatentable over Ullman, Molnar, and
Meltzer is likewise sustained.

SUMMARY
The decision of the Examiner to reject claims 16-24 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)(iv).

AFFIRMED

JRG

GIFFORD, KRASS, SPRINKLE, ANDERSON & CITKOWSKI, P.C
P.O. BOX 7021
TROY, MI 48007-7021
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