Ex Parte Bigelow

Board of Patent Appeals and Interferences

Apr 27, 2009

10458981 (B.P.A.I. Apr. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT T. BIGELOW
____________

Appeal 2009-0225
Application 10/458,981
Technology Center 3600
____________

Decided: 1 April 27, 2009
____________

Before LINDA E. HORNER, JOHN C. KERINS, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
Robert T. Bigelow (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-26. Claims 27-34 have been
withdrawn. We have jurisdiction over this appeal under 35 U.S.C. § 6(b)
(2002).

THE INVENTION
The Appellant’s invention is drawn towards a spacecraft multi-
purpose beam for providing structural support, facilitating airflow, and
housing conduits. Specification 1, ll. 16-22 and fig. 1.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A multi-purpose beam for use with a spacecraft
comprising:
an elongated tubular like structural member having a
cross section selected from one of the group comprising
generally oval, circular, box, triangular, or polygonal or a
combination thereof, an external periphery, a length, and
at least one divider disposed within, and along the length
of, the elongated tubular like structural member defining
a plurality of cavities;
a plurality of openings extending from at least one cavity
within the elongated tubular like structural member
through the external periphery; and
at least one conduit disposed in a cavity.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Putnam US 1,718,252 Jun. 25, 1929
Rotheroe US 6,955,023 B2 Oct. 18, 2005

The Appellant seeks review of the Examiner’s rejection of claims 1-
26 under 35 U.S.C. § 103(a) as unpatentable over Rotheroe in view of
Putnam.

THE ISSUE
Has the Appellant demonstrated that the Examiner erred in
determining that the combined teachings of Rotheroe and Putnam would
have prompted a person of ordinary skill in the art to provide the conduits of
Putnam within the cavities of the structural beam member of Rotheroe?

SUMMARY OF DECISION
We AFFIRM.
FINDINGS OF FACT
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Rotheroe discloses a structural member for use in a structural
frame in aircrafts, automobiles, building construction, and
potentially, a spacecraft. Rotheroe, col. 1, ll. 10-11 and 14-20.
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2. A person of ordinary skill in the art would readily appreciate
that aircrafts, automobiles, building constructions, and even
spacecrafts include conduits for transferring electricity and
fluids between separate locations.
3. Rotheroe discloses a metallic structural member 10 including a
circular (fig. 5D), triangular (fig. 6D), or oval (fig. 6B) shaped
elongated member 10 having a plurality of internal webs
(dividers) 12, extending axially and radially, and forming
internal cavities. Rotheroe, col. 3, l. 65 through col. 4, l. 6 and
figs. 5A-5D and 6A-6D.
4. Rotheroe further discloses a plurality of perforations 30
(openings) formed in the internal webs (dividers) 12 and also in
the external surface 16 of the structural member 10 for
optimizing the strength-to-weight ratio of the structural
member. Rotheroe, col. 5, ll. 28-30 and 64-66 and fig. 1.
5. Putnam discloses a building structural member, positioned
within the wall of a building, having partitions 8 for dividing
the structural member and for holding a plurality of conduits,
i.e., pipes and wires, so that “no room space is wasted”.
Putnam 1, ll. 31-37 and ll. 106-110 and fig. 1.
6. The structural member of Putnam includes two C-shaped
channels that are assembled back-to-back and moldings 7 for
covering the open sides of the structural member. Putnam 1, ll.
86-90 and 102-105 and fig. 1.
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7. Putnam further discloses that the molding 7 includes plugs 15
and outlets 16 and 17 for connecting the conduits (wires and
pipes) for external use. Putnam 2, ll. 34-39 and fig. 1.
8. The dictionary defines "adapt" as "to make fit" or "to make
suitable.” MERRIAM WEBSTER'S COLEGIATE DICTIONARY 13
(Tenth Ed. 1997).
9. The structural members of both Rotheroe and Putnam include
cavities and partitions respectively, which define an empty
space through which air is capable of flowing.

PRINCIPLES OF LAW
Obviousness
It is elementary that to support an obviousness rejection “[a]ll words
in a claim must be considered in judging the patentability of that claim
against the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 ("While the sequence of these questions might be
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reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.")
The Supreme Court stated that in cases involving more than the
simple substitution of one known element for another, or the mere
application of a known technique to a piece of prior art ready for the
improvement, it will be necessary to "determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue." Id. at 417-418. The Court noted that "[t]o facilitate
review, this analysis should be made explicit." Id. at 418 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.")
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
need not seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
550 U.S. at 418 (2007).
When a work is available in one field of
endeavor, design incentives and other market
forces can prompt variations of it, either in the
same field or a different one. If a person of
ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.
For the same reason, if a technique has been
used to improve one device, and a person of
ordinary skill in the art would recognize that it
would improve similar devices in the same
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way, using the technique is obvious unless its
actual application is beyond his or her skill.
Id. at 417. We “must ask whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” Id.
OPINION
Claims 1, 8, 9, 17, 25 and 26
The Appellant argues that the Examiner has failed to provide any
reason “why a person of ordinary skill in the art would find it desirable to
combine [the teachings of] Rotheroe and Putnam.” Br. 29. Further, the
Appellant argues that the Examiner based the determination of obviousness
on the hindsight combination of Rotheroe and Putnam. Id. Specifically, the
Appellant argues:
The Examiner has not identified any reasons why a person of
ordinary skill in the art would choose Putnam as a reference
when Putnam does not teach enclosing a conduit with a
structural member, or relying upon Rotheroe as a reference
when Rotheroe does not identify that the structural member is
capable of receiving a conduit for the purpose of affording the
conduit a measure of protection. Further, neither Rotheroe nor
Putnam provides any teaching, suggestion, or motivation to
combine the two references and arrive with a beam that can
conduct airflow as in the present invention. Br. 27.
Putnam does not teach or suggest the desirability of a beam
surrounding a conduit. Rotheroe does not teach a beam that can
accommodate a conduit for the purpose of protecting the beam.
Nothing is cited as providing the impetus for a person of skill in
the art to make the leap required to render the present invention
obvious. Br. 28.
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At the outset, we note that the Appellant’s arguments appear to attack
the teachings of Rotheroe and Putnam individually, rather than the
combination of Rotheroe and Putnam. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co, 800 F.2d 1091, 1097 (Fed. Cir. 1986). Secondly, we note that that while
the requirement of demonstrating a teaching, suggestion, or motivation (the
TSM test established by the Court of Customs and Patent Appeals) to
combine known elements in order to show that the combination is obvious
may be “a helpful insight,” it cannot be used as a rigid and mandatory
formula. KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
In this case, we find that Rotheroe discloses a structural member for
use in a structural frame in aircrafts, automobiles, building construction, and
potentially, a spacecraft. FF 1. The structural member 10 of Rotheroe
includes a circular (fig. 5D), triangular (fig. 6D), or oval (fig. 6B) shaped
elongated member 10 having a plurality of internal webs 12 (dividers),
extending axially and radially, and forming internal cavities. FF 3.
However, as the Examiner points out, Rotheroe does not disclose a conduit
passing through an internal cavity of the structural member. Ans. 4.
Nonetheless, a person of ordinary skill in the art would readily appreciate
that aircrafts, automobiles, building construction, and even spacecrafts
include conduits for transferring electricity and fluids between separate
locations. FF 2.
Putnam discloses a building structural member positioned within the
wall of a building having partitions 8 for dividing the structural member into
areas that hold a plurality of conduits, i.e., pipes and wires, so that “no room
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space is wasted.” FF 5. In other words, Putnam discloses that it was known
to provide partitions within a structural member to hold a plurality of
conduits in order to save space and hence avoid occupying a space external
to the structural member. As such, the Appellant’s claimed multi-purpose
beam is nothing more than the structural member of Rotheroe, in which a
plurality of conduits have been placed according to the teachings of Putnam,
to save space, and thereby avoid placing the conduits within a space adjacent
the structural member.
A person of ordinary skill in the art would have immediately
appreciated that positioning conduits within a structural member, as taught
by Putnam, would provide the same benefit in Rotheroe’s structural member
for aircrafts, automobiles, building construction, and even spacecrafts, to
save space and hence avoid placing the conduits within a space adjacent the
structural member. As such, modifying the structural member of Rotheroe
to include the conduits of Putnam 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).
Therefore, the modification appears to be the product not of innovation but
of ordinary skill and common sense. Moreover, the Appellant has not
alleged, much less shown, that the modification of Rotheroe to provide
conduits would have been beyond the skill of a person of ordinary skill in
the art. In conclusion, we agree with the Examiner that
[i]t would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify Rotheroe by
adding conduit lines of wiring, pipes, or the like in order to
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better protect them and to save space adjacent to the member
and to hide them from view.
Ans. 4. Emphasis added.
The Appellant further argues that, in contrast to the Examiner’s
position, the instant invention does not concern itself with “hiding wire[s] or
pipes from view” or “sav[ing] space adjacent to the member.” Br. 13.
According to the Appellant, the present invention “offers a measure of
protection for the conduits within the beam” (Br. 15), whereas neither
Rotheroe nor Putnam discloses that a “purpose for either of those inventions
was to protect internal wires or pipes.” Br. 13. Moreover, the Appellant
then argues:
Putnam impliedly teaches away from protecting a conduit from
damage through enclosing the conduit in a structural beam due
partly to the fact that Putnam includes a detachable non-
structural cover [molding 7] that allows complete access to the
wires and pipes.
Br. 18. Emphasis added.
Turning to the teachings of Rotheroe, the Appellant similarly argues
that Rotheroe “does not address the problem of protecting a conduit inside a
beam like structure.” Br. 20. Although we agree with the Appellant that
neither Rotheroe nor Putnam specifically addresses the problem of
protecting a conduit within a structural member, when determining whether
the subject matter of a claim would have been obvious, “neither the
particular motivation nor the avowed purpose of the [applicant] controls.
What matters is the objective reach of the claim. If the claim extends to what
is obvious, it is [unpatentable] under § 103.” KSR Int’l. Co., 550 U.S. at
419. “[A]ny need or problem known in the field of endeavor at the time of
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invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” Id. at 420 In this case, the Examiner
determined that it would have been obvious to provide conduits within the
structural member of Rotheroe, in a manner similar to that taught by
Putnam, so as to save space and hence avoid placing the conduits within a
space adjacent the structural member. Ans. 4. Hence, the Examiner has
provided an articulated reasoning with rational underpinning to support the
legal conclusion of obviousness. The Appellant has failed to show error in
this reasoning provided by the Examiner.
Lastly, we note that the structural member of Putnam includes two C-
shaped channels that are assembled back-to-back, and moldings 7 for
covering the open sides of the structural member (FF 6), and for connecting
the conduits, i.e., wires and the pipes, for external use through plugs 15 and
outlets 16 and 17. FF 7. Although Putnam does not specifically disclose
protecting a conduit, a person of ordinary skill in the art would readily
recognize that the conduits of Putnam are protected within the structural
member by the moldings 7. That is, the conduits are first protected from
external influences such as the weather (i.e., rain and static electricity, which
can short-circuit the electrical wires), falling debris, or mere damage caused
by persons outside the building. Second, the conduits are protected from
internal influences such as debris, fire, flooding, or damage caused by
persons inside the building. Although the moldings 7 are detachable, as the
Appellant argues, when in place, the moldings 7 contribute to the protection
of the conduits because they completely enclose the conduits within the
structural member. Whether the moldings 7 are detachable or non-
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detachable does not appear to have any effect on the ability of the structural
member of Putnam to protect the conduits therein.
Furthermore, the Appellant has not provided any evidence to show
that the detachable moldings 7 of Putnam somehow influence the ability of
the structural member of Putnam to protect the conduits therein. Simply that
there are differences between two references is insufficient to establish that
such references "teach away" from any combination thereof. See In re
Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). In conclusion, we find
that a person of ordinary skill in the art would have readily appreciated that
the structural member of Putnam protects the conduits therein and as such,
we agree with the Examiner that Putnam discloses protecting the conduits
from damage. Ans. 5.
Pointing to Figure 13A of Rotheroe, the Appellant further argues that
the internal cavities of Rotheroe are “clearly not designed to receive and
protect conduits” because the “web structure has numerous edges that could
adversely affect conduits with prolonged contact.” Br. 20. It is unclear to us
which “edges” the Appellant is referring to in Figure 13A. Although we
agree that Figure 13A of Rotheroe is not very clear, as far as we understand,
the “edges” shown represent a side view of the perforations 30 (openings)
formed in the internal webs (dividers) 12 of the structural element 10.
Moreover, we agree with the Examiner that once a conduit has been
installed it does not move, and, as such, even assuming arguendo that the
web structure of Rotheroe included “edges,” as the Appellant argues, we
agree with the Examiner that the “edges” would not disturb the conduit of
Putnam in the structural member of Rotheroe. Ans. 6. The Appellant also
argues that the structural member of Rotheroe does not include “supporting
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structures or attachments points to accommodate a conduit….” Br. 20. The
Appellant’s argument is not persuasive, because the claimed invention does
not require such supporting structures or attachment points. Limitations not
appearing in the claims cannot be relied upon for patentability. In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
The Appellant further argues that neither Rotheroe nor Putnam
discloses a “beam having a cavity adapted to conduct, or direct, airflow,” as
required by claims 82, 17, and 25. Br. 11. Emphasis added. The dictionary
defines "adapt" as "to make fit" or "to make suitable.” FF 8. Thus, a “cavity
adapted to conduct, or direct, airflow” is a cavity that is "suitable" or is
"fitted" to “conduct, or direct, airflow.” The structural members of both
Rotheroe and Putnam include cavities and partitions, respectively, that
constitute a defined space through which air is capable of flowing. FF 9. As
such, we agree with the Examiner that both Rotheroe and Putnam are
“inherently capable of allowing air to move, or flow, from one point to
another” (Ans. 5), hence are “adapted to conduct, or direct, airflow,” as
required by claims 8, 17, and 25.
Finally, the Appellant argues that neither Rotheroe nor Putnam
discloses a beam for use in a spacecraft. Br. 26. We find the Appellant’s
argument unpersuasive because Rotheroe specifically discloses a structural
member for use in a structural frame in a spacecraft. FF 1.
For the foregoing reasons, the Appellant’s arguments do not persuade
us that the Examiner erred in rejecting claims 1, 8, 9, 17, 25 and 26.
Therefore, the rejection of claims 1, 8, 9, 17, 25 and 26 is sustained.

2 See also Br. 22.
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Claims 2-7, 10-16, and 18-24
With respect to claims 2-7, 10-16, and 18-24, the Appellant argues
that neither Rotheroe nor Putnam teaches the claimed limitations “in
conjunction with the limitations of the referenced independent claim,” that
is, independent claims 1, 9, and 17. See Br. 22-25. Statements baldly
asserting that limitations are not present in the prior art are not persuasive as
to error on the part of the Examiner, when the Examiner has identified
portions of the prior art that describe those limitations. Hence, the
Appellant’s arguments as to claims 2-7, 10-16, and 18-24 likewise fail to
demonstrate error in the rejection of claims 2-7, 10-16, and 18-24 under 35
U.S.C. § 103(a), as unpatentable over the combined teachings of Rotheroe
and Putnam. Accordingly, the rejection of claims 2-7, 10-16, and 18-24 is
likewise sustained.

CONCLUSION
The Appellant has failed to demonstrate that the Examiner erred in
determining that the combined teachings of Rotheroe and Putnam would
have prompted a person of ordinary skill in the art to provide the conduits of
Putnam within the cavities of the structural beam member of Rotheroe.

SUMMARY
The decision of the Examiner to reject claims 1-26 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED
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mls

MR. FRANKLIN E. GIBBS, ESQ.
BIGELOW AIRSPACE
1899 WEST BROOKS AVENUE
NORTH LAS VEGAS, NV 89032