Ex Parte CarrollDownload PDFBoard of Patent Appeals and InterferencesAug 23, 200710705083 (B.P.A.I. Aug. 23, 2007) Copy Citation The opinion in support of the decision being entered today is not binding precedent of the Board UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte WILLARD D. CARROLL, JR. ______________ Appeal 2007-2121 Application 10/705,083 Technology Center 1700 _______________ Decided: August 23, 2007 _______________ Before EDWARD C. KIMLIN, CHARLES F. WARREN, and CATHERINE Q. TIMM, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL Applicant appeals to the Board from the decision of the Primary Examiner finally rejecting claims 1, 3 through 6, 9, and 14 through 17 in the Office Action mailed December 21, 2005. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2005). We affirm the decision of the Primary Examiner. Claims 1 and 9 illustrate Appellant’s invention of an integrated driver system, and is representative of the claims on appeal: 1 Appeal 2007-2121 Application 10/705,083 1. In combination, a grading marker stake with an integral impact head and a driver which, together with the stake, form an integral point driver system, comprising: a stake body formed in one piece of a lightweight synthetic polymeric material, the stake body having a length, a bottom end which terminates in a bottom end opening, an intermediate sidewall portion and a top end which terminates in a top end opening; a driver having a stepped cylindrical body including a drive shoulder located along a length thereof between a drive end and an oppositely arranged pointed end of the body; wherein the stake body has a cylindrical sidewall portion which is joined to the top end by a performed frusto-conical [sic] wall region which also defines a top, planar exposed end surface, and wherein the planar exposed end surface has an outer periphery, the outer periphery being of a larger relative diameter than the diameter of the cylindrical sidewall portion of the stake body, the top, planar exposed surface being selectively sized to receive the driver shoulder of the pointed shaft driver for driving the stake into the surrounding terrain; wherein the top, planar exposed surface comprises a reinforced upper end of the stake body, also integrally formed of the synthetic polymeric material, for receiving impact forces from the driver; and wherein the stake body has a hollow interior bore which communicates the top and bottom end openings, the interior bore being sized to closely receive a portion of the cylindrical body of the driver with the driver pointed end extending at least slightly from the bottom end of the stake body, whereby the stake can be retained frictionally on the driver to allow a user to drive a stake into the surrounding terrain without the necessity of bending. 9. In combination, a grading marker stake with an integral impact head, an end cap, and a driver which, together with the stake, form having an integral point driver system, comprising: a stake body formed in one piece of a lightweight synthetic polymeric material, the stake body having a bottom end which terminates in a bottom end opening, an intermediate sidewall portion and a top end which terminates in a top end opening; 2 Appeal 2007-2121 Application 10/705,083 a driver having a stepped cylindrical body including a drive shoulder located along a length thereof between a drive end and an oppositely arranged pointed end of the body; wherein the stake body has a cylindrical sidewall portion which is joined to the top end by a performed frusto-conical [sic] wall region which also defines a top, planar exposed end surface, and wherein the planar exposed end surface has an outer periphery, the outer periphery being of a larger relative diameter than the diameter of the cylindrical sidewall portion of the stake body, the top, planar exposed surface being selectively sized to receive the driver shoulder of the pointed shaft driver for driving the stake into the surrounding terrain; wherein the top, planar exposed surface comprises a reinforced upper end of the stake body, also integrally formed of the synthetic polymeric material, for receiving impact forces from the driver; wherein the stake body has a hollow interior bore which communicates the top and bottom end openings, the interior bore being sized to closely receive a portion of the cylindrical body of the driver with the driver pointed end extending at least slightly from the bottom end of the stake body, whereby the stake can be retained frictionally on the driver to allow a user to drive a stake into the surroundings terrain without the necessity of bending; and wherein the top end opening of the stake body is also selectively sized to receive an end cap of a filament bundle having associated stiff, resilient strands, whereby the end cap is frictionally retained in the top end opening after the driver has been used to drive the stake into the surrounding terrain, whereby the filament bundle of stiff, resilient strands forms an indicator flag when the end cap is seated within the top end opening of the stake body. The Examiner relies on the evidence in these references: Clarke US 2,049,105 Jul. 28, 1936 Selby US 2,649,009 Aug. 18, 1953 Gipp US 5,215,033 Jun. 1, 1993 Smith US 5,377,768 Jan. 3, 1995 Roger US 5,449,253 Sep. 12, 1995 Anglea US 6,142,882 Nov. 7, 2000 3 Appeal 2007-2121 Application 10/705,083 Appellant requests review of the grounds of rejection under 35 U.S.C. § 103(a) (Br. 7): claims 1, 6, and 14 as being unpatentable over Smith in view of Selby, Clarke, Gipp, and Roger (Answer 3-6); and claims 3 through 5, 9, and 15 through 17 as being unpatentable over Smith in view of Selby, Clarke, Gipp and Roger as applied to claims 1, 6 and 14, further in view of Angela (id. 6-7).1 Appellant argues independent claims 1 and 14 as representative claims in the first ground of rejection and independent claim 9 as representative of the claims in the second ground of rejection (Br. in entirety). Thus, we decide this appeal based on claims 1, 9, and 14. 37 C.F.R. § 41.37(c)(1)(vii) (2005). With respect to claims 1 and 14, the Examiner finds Smith discloses tubular stake 14 and pointed shaft driver 20, wherein the hollow stake body has top and bottom end openings and receives shaft driver 20 which is used to drive the stake into terrain (Answer 3-4, citing Smith Figs. 1-3). The Examiner finds Smith’s tubular stake does not have a preformed frusto- conical shaped reinforced top planar exposed end surface for receiving the shaft driver; Selby discloses a drive spike 10 reinforced with a widened top end surface 12 to drive the spike into place; and Clarke discloses a compression screw spike 10 with a preformed frusto-conical wall region 8 for greater strength against lateral action (id. 4-5, citing Selby col. 3, ll. 60-61, and Fig. 1; and Clarke page 2, left col., ll. 1-2, and Fig. 1). The 1 The Answer includes a ground of rejection of claim 12 (Answer 7-8) and the Brief requests review of this ground (Br. 7). However, claim 12 was canceled in the Amendment filed June 1, 2005. 4 Appeal 2007-2121 Application 10/705,083 Examiner concludes it would have been obvious to one of ordinary skill in the art to modify Smith’s tubular stake with Selby’s reinforced widened top end surface and Clarke’s frusto-conical wall region to better receive blows from the shaft driver with greater strength against lateral action (id.; see also 10-11). The Examiner finds Smith’s stake body is not disclosed to be formed of a lightweight synthetic polymeric material, and Gipp discloses hollow body 22 of flexible boundary marker 10 is made of PVC tubing (Answer 5, citing Gipp col. 3, ll. 61-63; see also Answer 11). The Examiner concludes it would have been obvious to one of ordinary skill in this art to form Smith’s tubular stake from PVC for durability as taught by Gipp (Answer 5). The Examiner finds the pointed end of Smith’s stake driver does not extend below the bottom end opening of the tubular stake, and Roger discloses driving tube 1 into the ground by hammering with driver 3 having pointed end 6 extending past the tube bottom opening to penetrate the surface (id., citing Roger col. 3, ll. 12-13, and Fig. 2; see also 11-12). The Examiner concludes it would have been obvious to one of ordinary skill in the art to modify Smith’s shaft driver by extending the pointed end past the stake bottom end opening to penetrate the surface the stake is driven into as taught by Roger (id. 5-6). With respect to claim 9, the Examiner contends the combined teachings of Smith, Selby, Clarke, Gipp, and Roger do not disclose an end cap having a filament bundle as an indicator flag which can be frictionally retained in the top end opening of Smith’s tubular stake, and Anglea discloses an end cap of a filament bundle 32 with an end cap formed by 5 Appeal 2007-2121 Application 10/705,083 adhesive layer 60 and metal strip attachment means 42 which can be retained in a stake body as an indicator flag such that pulling upward on the filament bundle removes the bundle along with the stake (Answer 6-7, citing Anglea col. 3, l. 38, and Fig. 3; see also 12-13). The Examiner concludes it would have been obvious to one of ordinary skill in the art to modify Smith’s tubular stake by adding Anglea’s filament bundle end cap as an indicator flag for easy observation (id. 7; see also 13-14). In response to Appellant’s contentions, the Examiner contends one of ordinary skill in the art would have been motivated to combine Smith with Selby, Clarke, Gipp, Roger, and Anglea for the advantageous features taught by the references (Answer 8-9). The Examiner contends the preambular term “grading marker stake†is one of intended use which does not structurally distinguish the claimed tubular stake and driver combination from prior art capable of performing that use (id. 9; see also 6). With respect to claim 1, Appellant contends the common terms “marker stake or grading stake†are defined in the Specification “as an ordinary stake with a small stripe of colored fabric tied about the stake body†and the claimed polymeric material stakes are more durable than wood (Br. 11). Appellant contends there is no reason to combine the applied references as they do not involve “grading marker stakes†(id. 12). Appellant contends the Examiner used hindsight in combining Smith with Selby and Clarke because the “‘heavy duty’ railroad spikes†of these references would not provide a stake body of polymeric material (id. 12-13; see also 9-10). Appellant contends Smith discloses a tubular stake body without a frusto-conical shaped reinforced top planar exposed end surface as 6 Appeal 2007-2121 Application 10/705,083 claimed, with Smith’s driver “used to turn over a lip (32 in Figure 4) on the top of the tube†and “called a ‘flattening wall member 25’†by Smith (Br. 14; see also 9). Appellant contends the driver for a tube of Roger “works on the inside of the tube diameter, not on the top of the tube†as claimed, as the hydraulically driven tool exerts a driving force “upon an internal ‘hammer bearing surface’†4 of the tube as seen in Fig. 3, and not a hand operated device as claimed (Br. 15 and 15-16; see also 10). Appellant contends Smith drives a stake, which is not a marker stake, through a timber into the ground; discloses stake and driver are formed of metal; does not disclose the pointed end of the driver extends from the bottom end opening; and does not initially hold the stake body on the driver (id. 12). Appellant contends Gipp discloses solid bottom stake member 12 in Figure 1 that does not have a hollow interior bore for receiving a driver tool as claimed, and thus does not provide teachings of a driver tool as claimed (Br. 12; see also 10). With respect to claim 9, Appellant contends Anglea does not teach the claimed stake and driver combination with respect to Smith as Angela’s end cap is not installed into a tubular stake driven into terrain with a driver as claimed, and is permanently fitted into bore 24 while, as claimed, the filament bundle could be removed for reuse (Br. 16-17; see also 10). With respect to claim 14, Appellant contends the applied references do not teach a tubular stake and a driver therefor as claimed (id. 17-18). The issues are whether the Examiner erred in concluding it would have been prima facie obvious to one of ordinary skill in the art to combine the teachings of Smith, Selby, Clarke, Gipp, and Roger and further with 7 Appeal 2007-2121 Application 10/705,083 Anglea and thence modify the teaching of Smith by the teachings of these references to arrive at the claimed invention. The plain language of claims 1 and 9, with reference to Specification Figs. 1, 2, 6, and 7, specifies the combination of an open-ended, hollow bore tubular stake 31, comprising at least, among other things, a preformed frusto-conical shaped reinforced top planar exposed end surface 39,46,48,50, and shaft driver 52 which has, among other things, driver shoulder 54 and extends through hollow bore 53 and further slightly from bottom end opening 36 of the tubular stake, wherein top, planar end surface 48 of the tubular stake receives drive shoulder 54 for driving the stake into the surrounding terrain without the necessity of the user bending (see Specification 8-10). Both the tubular stake and the driver are formed from a lightweight synthetic which can be, among other things, “any suitable plastic which can be injection molded†(Specification 8:5-6). Claim 9 adds any manner of end cap of a filament bundle which can be frictionally retained in the top end opening after the stake has been driven into the terrain, forming any manner of “indicator flag†which can be used as any manner of “grade marker†as specified in the preamble. Thus, the end cap bundle of filaments can be held together in any manner and can be of any shape which fits in the top end opening of the tubular stake (see Specification, e.g., 9:4-15). The plain language of claim 14 specifies a method comprising the steps of, among other things, providing a tubular stake and driver combination as also specified in claims 1 and 9, and using the same with a hand tool to drive the stake body into terrain. 8 Appeal 2007-2121 Application 10/705,083 We find no specific definition of the preambular term “grade marker†in the written description in the Specification, and the disclosure of a generic “marker stake†includes “a variety of applications such as tent stakes, as trail or backpack marking devices, as markers for sports fields, as roadside markers, etc.†(Specification 7:4-14). Indeed, Appellant describes prior art “grade markers†as including stakes with “a brightly painted top,†an attached “flag,†and “a bundle of brightly colored, polymer filaments†attached by a metal band or clip or by a tape wrap, and similarly describes the claimed stakes (id. 1-2 and 9:12-15). Thus, the term “grade marker†requires only that the tubular stake must be marked with some kind of signal in any noticeable manner. Furthermore, the transitional term “comprising†opens these claims to include stakes and drivers having additional features as well as methods of driving the same having additional steps than specifically required. See, e.g., Vehicular Technologies Corp. v. Titan Wheel Int’l, Inc., 212 F.3d 1377, 1383, 54 USPQ2d 1841, 1845 (Fed. Cir. 2000); Genentech, Inc. v. Chiron Corp., 112 F.3d 4954, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997); In re Baxter, 656 F.2d 679, 686 210 USPQ 795, 802 (CCPA 1981). We agree with the Examiner’s findings of fact, to which we add the following. We find Smith would have additionally disclosed to one of ordinary skill in this art a tool to transmit a driving force to, e.g., spikes and stakes, including a hollow tubular stake which can be inserted into a predrilled hole in a landscape timber and driven into the ground (Smith, e.g., col. 1, ll. 9-12, col. 2, ll. 10-18, and Figs. 1 and 4). The tool has pointed lower shaft 22 for insertion into tubular stake 14; upper head portion 20 for 9 Appeal 2007-2121 Application 10/705,083 receiving and conveying an impact; a contacting and flaring portion 24 which contacts the upper edge of the tubular stake, flaring its upper edge under force to the extent permitted by flare limiting stop 32; and flattening wall member 25 with surface 26 for compressing material 16 through which stake 14 is driven (id., col. 1, ll. 23-39, col. 2, l. 18, to col. 3, l. 2, and Figs. 1-4). We find no disclosure in Smith specifying the material used to form the tubular stake and the driver. Smith discloses a method for using the combination of tubular stake and driver tool by applying a striking force to the head portion of the tool (col. 3, ll. 3-27, and Figs. 1-43). We determine one of ordinary skill in this art would have reasonably inferred from Smith that any suitable material can be used for the tubular stake and the driver, and the striking force can be applied with a hand tool by a user without the necessity for bending.2 We find Gipp would have additionally disclosed to one of ordinary skill in this art a boundary marker which has base 10 with flange 16 which provides “a wider drive surface†and pointed surface 18 for easy surface penetration; post 22 attached to base 10 via spring 20; and flag 30 comprising a bundle of elongated plastic filaments 32 tightly bunched at one end and either affixed to post 22 or forcefully inserted into top end opening 22b of axial bore 24b of post 22 of flexible boundary marker 10 to be 2 It is well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in this art would have reasonably been expected to draw therefrom, see In re Fritch, 972 F.2d 1260, 1264-265, 23 USPQ2d 1780, 1782-783 (Fed. Cir. 1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985). 10 Appeal 2007-2121 Application 10/705,083 frictionally retained therein, or can be adhesively held in bore 24b (Gipp, col. 2, ll. 1-12, col. 2, l. 60, to col. 3, l. 60, and Fig. 1). Gipp discloses that base 10 is PVC pipe and post 22 is PVC tubing (id., col. 3, ll. 61-66). We find Roger would have additionally disclosed to one of ordinary skill in this art that the apparatus for driving tube 1 into the ground by a hammer pressed against pile-driving head 2 bearing against a bearing surface such as annular collar 4 formed inside the bottom of tube 1, wherein head 2 is fitted with leading penetration point 6 (Roger, e.g., Abstract, col. 2, ll. 4- 19, col. 2, l. 66, to col. 3, l. 16, and Fig. 1). We find Anglea would have additionally disclosed to one of ordinary skill in this art body 12 of a material which can be deformed to fit into opening 14 of hollow receptacle 16 in an anchor of a base employed on a playing field to mark the location of the base, wherein body 12 is frictionally retained in receptacle 16 and includes a flexible indicator 32 made of bristle- like members 34 (Anglea, e.g., Abstract, and col. 2, ll. 5-41, and col. 2, l. 66, to col. 3, l. 53, and Figs. 1-2). Anglea discloses that indicator 32 can be secured to body 12 by clamps and adhesive (id., col. 3, l. 56, to col. 3, l. 11). We determine the combined teachings of Smith, Selby, Clarke, Gipp, and Roger and further with Anglea, the scope of which we determined above, provide convincing evidence supporting the Examiner’s case that the claimed invention encompassed by claims 1, 9, and 14, as we interpreted these claims above, would have been prima facie obviousness to one of ordinary skill in the marker arts involving terrain familiar with the use of 11 Appeal 2007-2121 Application 10/705,083 hollow tubes and receptacles for holding bundles of filaments or bristles as marker signals. We are of the opinion Appellant’s contentions do not successfully rebut the prima facie case. We do not agree with Appellant that the applied references cannot be combined on the basis of “grade marker stakes†since, on this record, we determine that a grade stake is any stake that can be driven into terrain and marked with a signal in any noticeable manner, and one of ordinary skill in this art would have recognized that the disclosures of each of the applied references is pertinent to these functions. See, e.g., In re Kahn, 441 F.3d 977, 985-88, 78 USPQ2d 1329, 1334-337 (Fed. Cir. 2006). Appellant has not established the metal forming the spikes of Selby and Clarke affect the structure of the spikes. We determine one of ordinary skill in this art would have recognized that the slight flare imparted to the tubular stake by Smith’s driver is similar to the frusto-conical wall region taught by Clarke and would have modified Smith’s tubular stake with this structural feature. Indeed, surface 26 of flattening wall member 25 of Smith’s driver would function with a tubular stake having Clarke’s frusto-conical wall region. In this respect, Appellant has not established PVC taught by Gipp to be useful for a pointed end base having a flange for a wide drive surface as well as a tubular body, would not have been used by one of ordinary skill in this art to form Clarke’s frusto-conical wall region in modifying Smith’s tubular stake. Indeed, Smith does not disclose the material to be used for the stake and driver, and thus, as we pointed out above, this person would have selected any reasonable material suitable for the purpose in which the stake and driver are to be used. 12 Appeal 2007-2121 Application 10/705,083 We are also unconvinced by Appellant’s contentions that one of ordinary skill in this art would not have extended the pointed end of shaft 22 of Smith’s driver slightly from the bottom end opening of Smith’s tubular stake to provide penetration into the ground. Indeed, we notice and Appellant acknowledges in the Specification (Specification 7:7-14 and Fig. 8) that stakes are well known to generally have a pointed surface for penetration as illustrated by Gipp’s base. While one of ordinary skill in this art would have known from Smith and Roger that a tube can be driven into ground, this person would have recognized that the assistance of a driver with a penetrating point as shown by Roger would provide penetration similar to a penetration point on a common pointed stake. Appellant has not established that the location of the drive surface on the tubular stake to be struck by the driver or the type of hammer used as the drive results in the capability of the penetrating point to penetrate the ground in a different manner than if the drive surface was at the top end of the tubular stake. We determine one of ordinary skill in the art would have used Anglea’s end cap having a filament bundle as a marker signal in the top end opening of Smith’s tubular stake, frictionally held in place as shown by Anglea. We find no limitation in claim 9 requiring the end cap must be capable of removal from the stake as Appellant argues. See In re Self, 671 F.2d 1344, 1348-349, 213 USPQ 1, 5 (CCPA 1982). We further determine that Gipp also would have suggested the use of an end cap of a filament bundle as a marker signal in Smith’s tubular stake to this person. With respect to claim 14, one of ordinary skill in this art practicing the use of Smith’s tubular stake and driver would have used a hand tool to drive the 13 Appeal 2007-2121 Application 10/705,083 stake via the driver into the ground and would further have practiced this method with the stake and driver of Smith modified as suggested by the other applied references. Accordingly, we are of the opinion that prima facie one of ordinary skill in this art routinely following the combined teachings of Smith, Selby, Clarke, Gipp, and Roger and further with Anglea would have reasonably arrived at the claimed invention encompassed by claims 1, 9, and 14, including all of the limitations thereof arranged as required therein, without recourse to Appellant’s Specification. See, e.g., KSR Int’l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (2007) (a patent claiming a combination of elements known in the prior art is obvious if the improvement is no more than the predictable use of the prior art elements according to their established functions); Kahn, 441 F.3d at 985-88, 78 USPQ2d at 1334-337; Pro-Mold & Tool Co. v. Great lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ 1626, 1629-630 (Fed. Cir. 1996) (“In this case, the reason to combine [the references] arose from the very nature of the subject matter involved, the size of the card intended to be enclosed.â€); In re Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888-889 (Fed. Cir. 1991) (“The extent to which such suggestion [to select elements of various teachings in order to form the claimed invention] must be explicit in, or may be fairly inferred from, the references, is decided on the facts of each case, in light of the prior art and its relationship to the applicant’s invention.â€); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988);3 In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981);4 3 The consistent criterion for determination of obviousness is 14 Appeal 2007-2121 Application 10/705,083 see also In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable expectation of success.†(citations omitted)). Accordingly, based on our consideration of the totality of the record before us, we have weighed the evidence of obviousness found in the combined teachings of Smith, Selby, Clarke, Gipp, and Roger, and further with Anglea, with Appellant’s countervailing evidence of and argument for nonobviousness and conclude that the claimed invention encompassed by appealed claims 1, 3 through 6, 9, and 14 through 17 would have been obvious as a matter of law under 35 U.S.C. § 103(a). The Primary Examiner’s decision is affirmed. whether the prior art would have suggested to one of ordinary skill in the art that [the claimed process] should be carried out and would have a reasonable likelihood of success, viewed in light of the prior art. [Citations omitted] Both the suggestion and the expectation of success must be founded in the prior art, not in the applicant’s disclosure. Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531. 4 The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Keller, 642 F.2d at 425, 208 USPQ at 881. 15 Appeal 2007-2121 Application 10/705,083 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) (2007). AFFIRMED cam Whitaker, Chalk, Swindle & Sawyer, LLP 3500 City Center Tower II 301 Commerce Street Fort Worth, TX 76102-4186 16 Copy with citationCopy as parenthetical citation