Ex Parte Buehler

Board of Patent Appeals and Interferences

Sep 13, 2011

11294154 (B.P.A.I. Sep. 13, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/294,154 12/02/2005 Michael J. Buehler 33-1117 5629
757 7590 09/14/2011
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
ADDIE, RAYMONDW
ART UNIT PAPER NUMBER
3671
MAIL DATE DELIVERY MODE
09/14/2011 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 MICHAEL J. BUEHLER

___________

Appeal 2010-005847
Application 11/294,154
Technology Center 3600
U.S. Patent No. 6,623,204
____________

Before RICHARD TORCZON, SALLY C. MEDLEY, and
SCOTT R. BOALICK, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal in a reissue proceeding from the final rejection of
newly added claims 29, 30, 33, 35-38, 40-43, 53 and 55-63, which are all of
the claims currently pending. Original claims 1-28 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and designate our affirmance as a new ground of rejection
under 37 C.F.R. § 41.50(b).
Appeal 2010-005847
Application 11/294,154
U.S. Patent No. 6,623,204

2
STATEMENT OF THE CASE
Reissue Proceedings
A request for reissue of U.S. Patent No. 6,623,204 (the '204 patent)
was filed on December 2, 2005 and assigned serial 11/294,154. The instant
reissue is said to be one of two divisions of reissue application 10/931,242.
(App. Br. 3.)
Appellant's Invention
Appellant's invention relates to a vehicle impact attenuator 10
including a rail 30 (col. 2, ll. 41-42; Abstract) and at least one guide
member 32 moveable along the rail 30 (col. 2, ll. 47-51; Abstract). The
attenuator 10 includes an array 14 of tubes 16 (col. 2, l. 16) mounted along
either side of the rail 30 (col. 1, ll. 32-34; fig. 1). The rail 30 restrains the
guide members 32 from translational movement other than axial sliding
along the rail 30. (Col. 2, l. 67 to col. 3, l. 6.) Figure 1 (below) illustrates a
first preferred embodiment of the vehicle impact attenuator 10. (Col. 1,
ll. 47-48.)

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U.S. Patent No. 6,623,204

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The Claims
Claim 29 is exemplary:
29. A roadway crash cushion, comprising:
a collapsible, substantially self-restoring portion comprising an
interior space bounded on opposite sides by laterally disposed energy
absorbing elements formed substantially of a thermoplastic material, an
outermost side of each of the energy absorbing elements defining a camber;
at least one substantially rectangular supporting frame secured to the
laterally disposed energy absorbing elements; and
a longitudinal, ground-mounted rail member having a side, wherein
the supporting frame cooperates with the side of the rail such that the frame
is restrained by the rail from being translated in a lateral direction relative
thereto.
The Rejections
Claims 29, 30 and 33 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Young (U.S. Patent No. 3,674,115), Carney '584 (U.S. Patent
No. 5,823,584) and Oberth (U.S. Patent No. 5,733,062).
Claims 35-38 and 59-63 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Young and Oberth.
Claims 37, 38, 61 and 62 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Young, Oberth and Carney '112 (U.S. Patent
No. 5,403,112).
Claims 35, 36, 40-43, 53, 59, 60 and 63 stand rejected under 35
U.S.C. § 103(a) as being obvious over Young and Mileti (U.S. Patent No.
4,190,275).
Claims 37, 38, 55, 56, 61 and 62 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Young, Mileti and Carney '112.
Appeal 2010-005847
Application 11/294,154
U.S. Patent No. 6,623,204

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Claims 29, 30, 33, 57 and 581 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Young, Mileti and Carney '584 (U.S. Patent No.
5,823,584).
ISSUES
The following two issues are presented for decision:
1. Is it proper to combine the teachings of Young, Carney '584 and
Oberth?
2. Is it proper to combine the teachings of Young and Mileti?
FINDINGS OF FACT
Young
1. Young relates to “a reuseable impact attenuation device designed to
absorb and harmlessly dissipate the energy of impact of a colliding
vehicle or the like with a fixed structure along or near a highway. . . .”
(Col. 1, ll. 7-11.) In the “Description of the Prior Art” section, Young
describes that “[c]ommon practice is to place a rigid railing between
the vehicular traffic route and the fixed structure to deflect the
automobile in such a manner that the automobile, or other vehicle,
avoids direct impact with the fixed structure.” (Col. 1, ll. 20-23.)
However, these devices have “limited value” because “they do not
attempt to decelerate the vehicle at a controlled, safe rate to provide
maximum safety and minimum injury to the occupants” and “result in
the impacting vehicle being thrown back on the highway where it may
collide with other moving vehicles.” (Col. 1, ll. 23-29.)

1 The rejection of claim 58 under 35 U.S.C. § 112, first paragraph has been
withdrawn by the Examiner. (Ans. 13.)
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2. Figure 2 (below) illustrates a top plan view of an impact attenuation
device. (Col. 2, ll. 45-46.) The attenuation device includes a rigid
backing member 12 (col. 3, ll. 17-19), clusters 16 of energy absorbing
and dissipating buffer members 18 (col. 3, ll. 21-23), interior
panels 24 (col. 3, ll. 53-55), movable diaphragms 30 (col. 3, ll. 69-70),
restraining cables 40, a fixed cable anchorage 42 (col. 4, ll. 52-54) and
slide straps 54 (col. 5, ll. 22-23). The rigid backing member 12 is
attached to a fixed structure such as an abutment 10 (col. 3, ll. 8-19)
and includes two cable fastening means 14 (col. 3, ll. 19-20). Each
buffer member 18 can be composed of a vinyl coated nylon fabric
cylindrical body. (Col. 3, ll. 28-30.)

3. “A series of cables are [sic] provided to assist in supporting the impact
attenuation device . . . and to further enhance the impact absorbing
and dissipating capabilities of the structure.” (Col. 4, ll. 48-52.) Two
restraining cables 40 are fastened to the fixed cable anchorage 42,
pass through the movable diaphragms 30 (col. 4, ll. 52-54) and are
anchored to the two cable fastening means 14 (col. 4, ll. 69-70). The
slide straps 54 are provided beneath the movable diaphragms 30 such
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that “[u]pon impact, the diaphragms [30] are readily movable along
[the] slide straps 54.” (Col. 5, ll. 22-25.)
Oberth
4. Oberth relates to “a highway crash cushion . . . having an array of
diaphragms, a plurality of energy absorbing elements disposed
between the diaphragms, and an array of fender panels extending
alongside the diaphragms.” (Col. 1, ll. 5-10.) In the “Background of
the Invention” section, Oberth describes that
[w]hen an impacting vehicle strikes the fender panels
obliquely, it is desirable that the crash cushion act as a
guard rail, which redirects the impacting vehicle without
sending it back into traffic at a steep angle, and without
allowing the impacting vehicle to move into the region
on the other side of the crash cushion protected by the
crash cushion.
(Col. 1, ll. 29-35.) Oberth further describes a need for a crash cushion
that “provides increased rigidity in a lateral impacts that decelerates
an impacting vehicle in a more controlled manner in a lateral impact.”
(Col. 1, ll. 44-46.)
5. Figure 1 (below), described as a preferred embodiment (col. 3,
ll. 60-62), illustrates a perspective view of a highway crash cushion
10 (col. 3, ll. 29-31). The highway crash cushion 10 “is mounted to
slide axially along a guide rail 12” (col. 3, l. 63) and “includes an
array of spaced, parallel diaphragm assemblies 14” (col. 3, ll. 64-65).
Energy absorbing elements 22 are placed between adjacent pairs of
diaphragm assemblies 14. (Col. 4, ll. 1-3.) During an axial impact,
“the diaphragm assemblies 14 slide down the guide rail 12, while the
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guide rail 12 prevents substantially all lateral movement of the crash
cushion 10.” (Col. 5, ll. 57-60.)

Mileti
6. Mileti relates to impact attenuators including applications for
“stationary installations particularly in urban areas where vehicle
speeds are usually low and available space may be severely
restricted.” (Abstract.) Figure 8 (below) illustrates a side view of an
attenuator installed adjacent to a fixed hazard. (Col. 2, ll. 20-21.) The
attenuator includes four identical modules 50, 52, 54 and 56 with end
stiffener plates 60 and 62 and intermediate plates 64, 66 and 68
(col. 4, ll. 57-63; fig. 8). The attenuator features a support system
“which permits free longitudinal movement of the individual modules
. . . but which prevents vertical or lateral displacement of the
modules.” (Col. 5, ll. 12-15.) The support system includes a series of
brackets 80 each secured to the stiffener plates 60, 64, 66 and 68.
(Col. 5, ll. 15-19.) The brackets 80 include a pair of wheels or
rollers 84 to be received in rails 86 bolted to a roadway. (Col. 5,
ll. 19-22.)
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Carney '584
7. Carney '584 relates to “crash impact attenuators and more particularly
to such crash impact attenuators that are designed for mounting on
vehicles such as trucks.” (Col. 1, ll. 6-9.) The crash impact attenuator
includes a perimeter band 12 (col. 5, ll. 19-22; fig. 1) with two front
cylinders 22 and 24 (col. 5, ll. 46-47) and a rear cylinder 26 mounted
in the perimeter band 12 (col. 6, ll. 6-8). The preferred material for
the cylinders is a high molecular weight/high density polyethylene.
(Col. 4, ll. 42-45.)
ANALYSIS
Young / Carney '584 / Oberth
With respect to claims 29, 30 and 33, Appellant argues that “one of
ordinary skill in the art would not have found it obvious to combine
Young/Carney with Oberth so as to achieve any predictable results.” (App.
Br. 10; see also Reply Br. 2-5.) In particular, Appellant argues that the
combination would “render the device of Young inoperative for its intended
use and change the very principles of operation . . . .” (App. Br. 11.)
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Although we agree with Appellant that the Examiner's reasoning for
the combination of the references was deficient, we nevertheless conclude
that it would have been obvious to have combined the teachings of the
references.
The Examiner acknowledged that Young does not teach the limitation
“wherein the supporting frame cooperates with the side of the rail such that
the frame is restrained by the rail from being translated in a lateral direction
relative thereto” and cited Oberth for the disclosure of a crash cushion 10
including diaphragm assemblies 14 and a guide rail 12 to restrict lateral
movement of the crash cushion 10. (Ans. 4-5.) The Examiner concluded
that it would have been obvious “to provide the crash cushion of Young et
al. . . . with a lateral stability means, as taught by Oberth et al. in order to
prevent the crash cushion from being overturned, or driven into a lane of
traffic.” (Ans. 5.) We do not agree with the Examiner's rationale.
In the “Description of the Prior Art” section, Young describes the
common practice of placing a rigid railing between a vehicular traffic route
and a fixed structure to deflect colliding automobiles. (FF 1.) However,
Young describes that such devices have “limited value” because “they do
not attempt to decelerate the vehicle at a controlled, safe rate” that results in
“the impacting vehicle being thrown back on the highway where it may
collide with other moving vehicles.” (FF 1.) Instead, Young teaches an
impact attenuation device (FF 2) including restraining cables 40 that yield
laterally to reduce the force of a side impact of a colliding vehicle (FF 3).
In the “Background of the Invention” section, Oberth describes that
“it is desirable that the crash cushion act as a guard rail, which redirects the
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U.S. Patent No. 6,623,204

10
impacting vehicle without sending it back into traffic at a steep angle.”
(FF 4.) Oberth also describes the need for a crash cushion with “increased
rigidity . . . that decelerates an impacting vehicle in a more controlled
manner.” (FF 4.) Oberth teaches a highway crash cushion 10 that includes
diaphragm assemblies 14 mounted to a guide rail 12 to prevent lateral
movement of the crash cushion 10. (FF 5.)
Therefore, because Young's impact attenuation device decelerates an
impacting vehicle by allowing lateral movement of the device (FF 1, 2) and
Oberth teaches a highway crash cushion 10 that prevents lateral movement
(FF 4, 5), we agree with Appellant that the Examiner's reasoning is deficient.
Nevertheless, we conclude that the teachings of Oberth, Young and
Carney '584 may properly be combined.
In particular, Oberth teaches all the limitations of independent
claim 29 (FF 5) except “a collapsible, substantially self-restoring portion
comprising . . . energy absorbing elements formed substantially of a
thermoplastic material, an outermost side of each of the energy absorbing
elements defining a camber.” Instead, Oberth teaches a highway crash
cushion 10 with energy absorbing elements 22 placed between adjacent pairs
of diaphragm assemblies 14. (FF 5.) Young teaches an impact attenuation
device including clusters 16 of energy absorbing and dissipating buffer
members 18 composed of vinyl coated nylon fabric cylindrical bodies.
(FF 2.) Carney '584 teaches a crash impact attenuator including cylinders
composed of a high molecular weight/high density polyethylene. (FF 7.)
Combining Oberth and Young is no more than the simple substitution
of Young's known clusters 16 of energy absorbing and dissipating buffer
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members 18 for Oberth's known energy absorbing elements 22, with no
unexpected results. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007). Furthermore, combining Oberth, Young and Carney '584 is no more
than the simple substitution of one known material (i.e., high molecular
weight/high density polyethylene) for another known material (i.e., vinyl
coated nylon fabric) to form the buffer members 18 of Young, with no
unexpected results. See id.
Therefore, claim 29 would have been obvious over the combination of
Oberth, Young and Carney '584. Appellant does not present separate
arguments for claims 30 and 33, and we conclude that these claims would
have been obvious for the same reasons as claim 29.
In addition, Appellant did not present separate arguments for the other
rejections involving Young and Oberth, either alone or combined with
Carney '112. We affirm these rejections for the reasons previously
discussed.
Young / Mileti
With respect to claims 35, 36, 40-43, 53, 59, 60 and 63, Appellant
argues that “it would not have been obvious to one of ordinary skill in the art
to combine Mileti with Young.” (App. Br. 12.) In particular, Appellant
argues that “one of ordinary skill in the art would not have found it obvious
to combine Young with Mileti so as to achieve any predictable results.”
(App. Br. 12.)
Although we agree with Appellant that the Examiner's reasoning for
the combination of the references was deficient, we nevertheless conclude
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that it would have been obvious to have combined the teachings of the
references.
The Examiner acknowledged that Young does not teach the limitation
“wherein each diaphragm cooperates with a side of the rail member such
that the diaphragm is restrained by the rail member from being translated in
a lateral direction relative thereto” and cited Mileti for the disclosure of an
impact attenuator with a support system received in rails that prevents lateral
movement. (Ans. 10.) The Examiner concluded that it would have been
obvious “to provide the roadway crash cushion of Young et al., with a
vertical and lateral stability means, as taught by Mileti, in order to prevent
undesirable vertical and lateral movement of the crash cushion, during a
collision.” (Ans. 10.) Again, we do not agree with the Examiner's rationale.
As discussed previously, Young describes that a rigid railing does not
adequately decelerate the vehicle at a controlled, safe rate (FF 1) and teaches
an impact attenuation device (FF 2) including restraining cables 40 that yield
laterally to reduce the force of a side impact from a colliding vehicle (FF 3).
Mileti teaches an impact attenuator with a support system including
brackets 80 with a pair of wheels or rollers 84 to be received in rails 86 to
prevent lateral movement. (FF 6.)
Therefore, because Young's impact attenuation device decelerates an
impacting vehicle by allowing lateral movement of the device (FF 1, 2) and
Mileti teaches an impact attenuator with a support system that prevents
lateral movement (FF 6), we agree with Appellant that the Examiner's
reasoning is deficient.
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13
Nevertheless, we conclude that the teachings of Young and Mileti
may properly be combined.
In particular, Mileti teaches all the limitations of independent claim 35
(FF 5) except “an array of collapsible energy absorbing elements” with
cambers. Instead, Mileti teaches an impact attenuator with four identical
modules 50, 52, 54 and 56 with end stiffener plates 60 and 62 and
intermediate plates 64, 66 and 68. (FF 6.) As discussed previously, Young
teaches an impact attenuation device including clusters 16 of energy
absorbing and dissipating buffer members 18 formed as cylindrical bodies.
(FF 2.)
Combining Mileti and Young is no more than the simple substitution
of Young's known clusters 16 of energy absorbing and dissipating buffer
members 18 for Mileti's known modules 50, 52, 54 and 56, with no
unexpected results. See KSR, 550 U.S. at 417.
Therefore, claim 35 would have been obvious over the combination of
Mileti and Young. Claims 53 and 59 recite limitations similar to those
discussed with respect to claim 35 and would have been obvious for similar
reasons. Appellant does not present separate arguments for claims 36,
40-43, 60 and 63, and we conclude that these claims would have been
obvious for the same reasons.
In addition, Appellant did not present separate arguments for the other
rejections involving Young and Mileti combined with either Carney '112 or
Carney '584. We affirm these other rejections for the reasons previously
discussed.
Appeal 2010-005847
Application 11/294,154
U.S. Patent No. 6,623,204

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NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Because our decision relies on different reasoning than was set forth
by the Examiner for the combination of the references, including the
combination of Oberth, Young, and Carney '584 and the combination of
Mileti and Young, we designate our decision as new grounds of rejection
under 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that a “new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner ….
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record ….
DECISION
The rejections of claims 29, 30, 33, 35-38, 40-43, 53 and 55-63 are
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
37 C.F.R. § 41.50(b)

Appeal 2010-005847
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U.S. Patent No. 6,623,204

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