Ex Parte Breed

Board of Patent Appeals and Interferences

Mar 17, 2010

10375870 (B.P.A.I. Mar. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID S. BREED1
____________

Appeal 2009-005371
Application 10/375,870
Technology Center 3600
____________

Decided: March 18, 2010
____________

Before WILLIAM F. PATE, III, DANIEL S. SONG, and
FRED A. SILVERBERG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Automotive Technologies International, Inc.
(App. Br. 1).
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The Appellant appeals under 35 U.S.C. § 134 from a Final Rejection
of claims 1-2, 4-11, 13-14, 16-17, 19-21, 23-24, 34-36, 39-40 and 42.
Claims 29-33 have been indicated to be allowable, and claims 44-45 have
been previously withdrawn (App. Br. 2; Final Office Action 7; Ans. 2).
Claims 3, 12, 15, 18, 22, 25-28, 37-38, 41 and 43 have been indicated to be
allowable if rewritten in independent form to include all of the limitations of
the base claim and any intervening claims (Final Office Action 8; Ans. 2).
In addition, four After Final Amendments have been refused entry by the
Examiner in Advisory Actions mailed January 10, 2005, February 7, 2005,
March 17, 2005 and April 1, 2005 (App. Br. 2). We have jurisdiction over
this appeal under 35 U.S.C. § 6(b) (2002).
The claimed invention is directed to a roadside barrier. Independent
claims 1 and 24 read as follows (App. Br. 12 and 15, Claims App’x.;
emphasis added):
1. A barrier for placement along a road to reduce the
momentum of a moving object impacting the barrier and ideally
bring the object to a stop using the weight of the object itself,
comprising:
a plurality of barrier sections coupled to one another,
each of said barrier sections comprising
a horizontal portion;
a vertical portion extending upward from a middle
region of said horizontal portion to provide said
horizontal portion with a front part and a rear part, said
front part of said horizontal portion having a flat upper
horizontal surface; and
a front plate connected to said vertical portion and
spaced apart therefrom, said front plate being adapted to
receive the impact from the moving object, said front
plate being arranged above said front part of said
horizontal portion such that the moving object is situated
on or over said flat upper surface of said front part of
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said horizontal portion when impacting said front plate
and the weight of the moving object applied to said front
part of said horizontal section prevents said barrier
section from tipping over.

24. A barrier section for use in a road barrier to reduce the
momentum of a moving object impacting the barrier section,
comprising:
a horizontal portion;
a vertical portion extending upward from a middle region
of said horizontal portion to provide said horizontal portion
with a front part and a rear part, said front part of said
horizontal portion having a flat upper horizontal surface
extending from a forward edge of said horizontal portion to said
vertical portion;
a front plate connected to said vertical portion and
spaced apart therefrom, said front plate being arranged above
said flat upper surface of said front part of said horizontal
portion and being adapted to receive the impact from the
moving object; and
drag increasing means arranged in connection with said
horizontal portion for increasing the drag of the barrier section
during rearward movement and thereby provide resistance to
rearward movement of the barrier section after impact of the
moving object against said front plate in order to reduce the
momentum of the moving object.

Independent claim 16 is similar to independent claim 1 reproduced
above except that it merely recites a barrier section rather than a plurality of
barrier sections that are coupled together (App. Br. 14, Claims App'x.).
The evidence relied upon by the Examiner in rejecting the claims is:
Beard US 4,925,334 May 15, 1990
Giavotto US 5,876,020 Mar. 2, 1999
Hughes, Sr. (“Hughes”) US 6,109,820 Aug. 29, 2000

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The Examiner rejected claims 1-2, 8, 10-11, 13, 16-17, 20-21, 23-24,
34-35 and 39 under 35 U.S.C. § 102(b) as anticipated by Beard.
The Examiner rejected claims 1, 4-5, 7, 9, 13-14, 16, 19, 23-24, 34-
36, 39-40 and 42 under 35 U.S.C. § 102(b) as anticipated by Giavotto.
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Beard and Hughes.

We AFFIRM-IN-PART.

ISSUES
The following issues have been raised in the present appeal:
1. Whether the Examiner erred in applying Beard, which is
directed to a traffic marker, as an anticipating reference.
2. Whether the Examiner erred in finding that Beard describes a
"reinforcement member" or a "reinforcement means" as recited in dependent
claims 10, 11, 20 and 21.
3. Whether the Examiner erred in finding that Giavotto describes
“a front plate” arranged above a front part of the horizontal portion as recited
in independent claims 1, 16, and 24.
4. Whether the Examiner erred in finding that Giavotto describes
an energy absorbing expandable metal joint as recited in dependent claims
14 and 36.
5. Whether the Examiner erred in concluding that the combination
of Beard and Hughes renders obvious, a barrier with a horizontal portion
having a length of 2 meters, as recited in dependent claim 6.

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Beard describes a traffic marker that includes a cone-shaped
upright member 10, a base plate 16, and a display device 22 connected to the
upright member (col. 2, ll. 47-56; col. 2, l. 66-col. 3, l. 2; Figs. 1 and 2).
2. Beard also describes an embodiment in which plurality of
traffic markers are interconnected using a rope 72 (col. 5, ll. 34-40; Fig. 9).
3. Giavotto describes a guardrail that can withstand heavy
impacts, the guardrail including an upright post 212, a spacer 20,
longitudinal rails 30, 32, 34, and two longitudinal tubular elements 250, 250′
which increase the impact capacity of the guardrail (col. 2, ll. 29-52; col. 3,
ll. 3-6, 21-22, 33-37; Fig. 14).
4. The upright post 212 of Giavotto is supported by a base 280
(col. 3, ll. 1-3; Fig. 14).
5. Giavotto states:
The particular shape of the longitudinal rail [30] and the spacers
[20] allows a high impact force to be absorbed, mainly through
deformation of the spacers, which moreover, as they are
deformed, causing lifting of the longitudinal rail which helps
straighten the vehicle and prevent it from overturning.
(Col. 2, ll. 63-67).
6. Hughes describes a traffic control apparatus 11 including a
flexible vertical marker 13 and a horizontal anchor base 15 of a sufficient
length so support a vehicle tire thereon (col. 2, ll. 7-11; Fig. 4).
7. Hughes also states:
When the tire 35 of the vehicle strikes apparatus 11, tire 35 rolls
onto base 15 and up ramp surfaces 23 and one set of arcuate
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portions 19 before striking marker 13. When tire 35 strikes
marker 13, marker 13 flexes into a substantially horizontal
position, contacts and conforms to the shape of the other set of
arcuate portions 19 under the weight of the vehicle. … After the
vehicle and tire 35 move past apparatus 11, the resiliency of
marker 13 allows it to return to an upright position.
(Col. 2, ll. 47-64).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described in a single prior
art reference.” Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987). It is not necessary that the reference teach what the subject
application teaches, but only that the claim read on something disclosed in
the reference, i.e., that all of the limitations in the claim be found in or fully
met by the reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772 (Fed. Cir. 1983).
Analysis of whether a claim is patentable over the prior art under 35
U.S.C. § 102 begins with a determination of the scope of the claim. It is the
Appellants’ burden to precisely define the invention. In re Morris, 127 F.3d
1048, 1056 (Fed. Cir. 1997). The scope of the claims in patent applications
is determined not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction in light of the specification as
it would be interpreted by one of ordinary skill in the art. In re Prater, 415
F.2d 1393, 1404-05 (CCPA 1969). The words of the claim must be given
their plain meaning unless the plain meaning is inconsistent with the
specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Particular
embodiments appearing in the written description must not be read into the
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claim if the claim language is broader than the embodiment. See Superguide
Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
“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 Court also 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”)).

ANALYSIS
Anticipation Rejection Over Beard
The Examiner rejects claims 1-2, 8, 10-11, 13, 16-17, 20-21, 23-24,
34-35 and 39 as anticipated by the traffic marker of Beard, the Examiner
contending that the display device 22 of Beard corresponds to the recited
front plate (FF 1; Ans. 4-6).
The Appellant initially argues with respect to all of these claims that
Beard is non-analogous art because it is directed to a traffic marker for
placement on roadsides whereas the claimed invention is directed to barrier
for roads (App. Br. 5-6; Reply Br. 1-2). However, this argument is
misdirected because “whether a reference is analogous art is irrelevant to
whether that reference anticipates.” In re Schreiber, 128 F.3d 1473, 1478
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(Fed. Cir. 1997). In this regard, “a reference may be from an entirely
different field of endeavor than that of the claimed invention or may be
directed to an entirely different problem from the one addressed by the
inventor, yet the reference will still anticipate if it explicitly or inherently
discloses every limitation recited in the claims.” Id.
The Appellant also argues that the traffic marker of Beard does not
reduce the momentum of the impacting object using the weight of the object
(App. Br. 6). However, we fail to see error in the Examiner's finding that
the marker of Beard would be inherently capable of receiving impact and
reducing momentum (Ans. 10-11) given the fact that the rejected claims do
not define what the "moving object" is, or define the magnitude and extent
to which momentum is reduced. The Appellant's further contention with
respect to using the weight of the object to prevent the barrier section from
tipping is also unpersuasive. We agree with the Examiner (Ans. 10) that
because this recitation is directly tied to an undefined "moving object," the
traffic marker of Beard (which includes a horizontal portion) is capable of
performing the recited function.

Claims 10-11 and 20-21
Regarding dependent claims 10-11 and 20-21, the Appellant
specifically argues that Beard does not describe a "reinforcement member
connected to said horizontal portion and said vertical portion" as recited in
claims 10 and 20, and does not describe a "reinforcement means for
connecting said vertical portion to said rear part of said horizontal portion"
as required by claims 11 and 21 (App. Br. 7-8; Reply Br. 2).
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The Examiner contends that "Beard discloses the vertical portion
extends upward from the horizontal portion to provide a rear part, that is
capable of supporting a reinforcement device having drag increasing means,
such as a weighted collar (16) . . .." (Ans. 5). However, we fail to
understand what component of Beard corresponds to a "reinforcement
member" or a "reinforcement means" that connects the vertical and
horizontal portions. In this regard, we observe that the Examiner has taken
the position that the base plate 16 of Beard corresponds to the recited
"horizontal portion" of the claims, and the upright member 10 corresponds
to the recited "vertical portion" of the claims (Ans. 4). The Examiner
appears to consider the base plate 16 as satisfying both the reinforcement
member limitation, as well as the horizontal portion limitation (Ans. 17).
We do not agree with the Examiner's position that the base plate 16 satisfies
both horizontal portion and reinforcement member or reinforcement means
limitations. There does not appear to be any other structure described in
Beard which can correspond to these limitations. Thus, we do not sustain
the Examiner's rejection of dependent claims 10, 11, 20 and 21. The
Appellant's further argument based on the term "connect" is moot.

Anticipation Rejection Over Giavotto
The Examiner rejects claims 1, 4-5, 7, 9, 13-14, 16, 19, 23-24, 34-36,
39-40 and 42 as anticipated by Giavotto (Ans. 6-7; FF 3-5). The Appellant
contends that Giavotto does not describe "a front plate" as recited in
independent claims 1 and 16 which is connected to the vertical portion, or
describe the arrangement of the front plate above the front part of the
horizontal portion (App. Br. 8). In particular, the Appellant argues that
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Giavotto’s tubular elements 250, 250' are not constructed and positioned to
receive an impact from a moving object which would, instead, impact the
rail 30 of Giavotto (App. Br. 8).
However, we agree with the Examiner that the tubular elements 250,
250' of Giavotto do satisfy the "front plate" limitation, the tubular elements
having a flat, vertical front face which are disposed in a location spaced
apart from the vertical portion 200 (Ans. 13, 15; FF 3). While we
understand the basis for the Appellant's contention that impact would occur
with the rail 30, we observe that depending on the size and geometry of the
"moving object" which is otherwise undefined, the object may very well
impact the tubular elements 250, 250' of Giavotto, with or without initially
impacting the rail 30. We also do not agree with the Appellant's contention
that the tubular elements are not constructed or positioned to receive impact
from a moving object, Giavotto describing the guardrail embodiment that
incorporates the tubular elements 250, 250' as having increased impact
capacity (FF 3). Hence, we do not agree that the Examiner erred in finding
that the tubular elements 250, 250' of Giavotto satisfy the recited limitation
directed to the front plate.
The Appellant also argues that Giavotto does not describe the recited
arrangement of the front plate so that the moving object is situated on or
over the flat surface of the base 280 when impacting the front plate, and also
does not describe that the base 280 is designed to receive the weight of an
object (App. Br. 9). However, we again note that the rejected claims do not
define the recited "moving object," much less recite a dimension or weight
limitation that may otherwise distinguish the claims from the disclosure in
Giavotto. Clearly, Giavotto discloses a base that is structural (FF 4), and
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thus, is capable of supporting an undefined "moving object" thereon.
Therefore, we are not persuaded of Examiner error.

Claims 14 and 36
With respect to claims 14 and 36 which depend from independent
claim 1, the Examiner rejects these claims contending that elements 20, 30,
32 and 34 of Giavotto satisfy the recited "energy absorbing expandable
metal joint" limitation (Ans. 7, 19).
The Appellant contends that Giavotto does not describe the recited
"energy absorbing expandable metal joint" because elements 20, 30, 32 and
34 of Giavotto do not expand when pressure is applied to the barrier, and
because the rails 30 and strips 32, 34 are designed merely to absorb energy
from an impacting vehicle (App. Br. 9-10).
However, we are not persuaded of Examiner error because these
components of Giavotto absorb energy from an impacting vehicle by
deforming (FF 5), and upon impact, the wave-form cross-sectional shape of
the strips would likely deform to be more flat, that is, expand upwardly and
downwardly (see Fig. 14). Giavotto also specifically describes that upon
application of a high impact force, the spacers 20 deform in a manner to lift
the longitudinal rail, thereby disclosing upward expansion of the spacer (FF
5). In the above regard, we note that the claims do not include language that
limits the recited expansion to a specific direction. Hence, we are not
persuaded of Examiner error in the rejection of claims 14 and 36 based on
Giavotto.

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Obviousness Rejection Over Beard and Hughes
Claim 6, which depends from independent claim 1, further recites
"wherein said front part of said horizontal portion has a length of about 2
meters, the length being defined between a forward edge of said horizontal
portion and said vertical portion, such that when the moving object is a
vehicle, at least one front tire of the vehicle is on or over said horizontal
portion when contacting said front plate."
The Examiner rejects claim 6 as obvious over Beard, as applied to
independent claim 1, in view of Hughes (Ans. 7-8). In particular, the
Examiner contends that Beard teaches the desirability of providing a
weighted base to traffic barriers to prevent them from tipping over, but does
not disclose a base long enough to support a vehicle tire (Ans. 7-8). To cure
this deficiency, the Examiner relies on Hughes which discloses a traffic
barrier with a base having a sufficient length so that a vehicle wheel is
supported thereon (Ans. 8; FF 6). Thus, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to provide the
traffic barrier of Beard with a base of sufficient size and strength to support
a vehicle wheel as described in Hughes (Ans. 8).
The Appellant argues that Beard and Hughes are non-analogous art.
(App. Br. 10; Reply Br. 1-2). The Appellant also argues that Beard and
Hughes do not disclose the front part of the horizontal portion having the
particular dimension as set forth in claim 6 so that at least one front tire of
the vehicle is on or over the horizontal portion when contacting the front
plate for use in reducing momentum of impacting vehicle (App. Br. 10-11).
We do not find the Examiner's articulated reason for combining Beard
and Hughes to be sufficient to support the conclusion of obviousness relative
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to claim 6. In particular, the Examiner's articulated reason is based on the
traffic marker of Beard which includes a base plate 16 (Ans. 7) which one
can infer, provides sufficient support to the upright member 10 to maintain
its upright orientation. However, the disclosure of the base plate 16 does not
address the issue of sizing of the base plate. Indeed, the Examiner concedes
that Beard does not disclose providing a base long enough to support a
vehicle tire (Ans. 7-8). The Examiner has relied on Hughes to cure this
deficiency, Hughes describing a tire of a vehicle that is over a horizontal
portion of the anchor base (FF 6-7). Moreover, it can be reasonably
inferred, and it would also be obvious, that the size of the anchor would be
sufficient to ensure stability of the traffic control apparatus.
However, we are at a loss as to why one of ordinary skill in the art
would dimension the front part of the base plate Beard to be 2 meters
(approximately 6.56 feet) long as recited in claim 6, merely based on the
desire to provide sufficient support to the cone-shaped upright member
and/or the vehicle wheel as articulated by the Examiner. Therefore, the
Examiner's articulated reason is insufficient to support the rejection, and the
Examiner appears to be engaging in hindsight as to the recited dimension of
the base plate of claim 6.
In view of the above, we do not sustain the Examiner's obviousness
rejection of claim 6. The Appellant's argument based on non-analogous art
is moot.

CONCLUSIONS
1. The Examiner did not err in applying Beard as an anticipating
reference.
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2. The Examiner erred in finding that Beard describes a
"reinforcement member" or a "reinforcement means" as recited in dependent
claims 10, 11, 20 and 21.
3. The Examiner did not err in finding that Giavotto describes “a
front plate” which is arranged above a front part of the horizontal portion as
recited in independent claims 1, 16, and 24.
4. The Examiner did not err in finding that Giavotto describes an
energy absorbing expandable metal joint as recited in dependent claims 14
and 36.
5. The Examiner's articulated reason for combining Beard and
Hughes to result in a barrier having a horizontal portion of 2 meters as
recited in dependent claim 6 is insufficient to support the obviousness
rejection.

DECISION
1. A. The Examiner's rejection of claims 1-2, 8, 13, 16-17, 23-
24, 34-35 and 39 under 35 U.S.C. § 102(b) over Beard is
AFFIRMED.
B. The Examiner's rejection of claims 10-11 and 20-21
under 35 U.S.C. § 102(b) over Beard is REVERSED.
2. The Examiner's rejection of claims 1, 4-5, 7, 9, 13-14, 16, 19,
23-24, 34-36, 39-40 and 42 under 35 U.S.C. § 102(b) over Giavotto is
AFFIRMED.
3. The Examiner's rejection of claim 6 under 35 U.S.C. § 103(a)
as unpatentable over Beard and Hughes is REVERSED.

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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-IN-PART

ack

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BRIAN ROFFE, ESQ
540-B WILLOW AVENUE
CEDARHURST, NY 11516-2211