Ex Parte Charles et alDownload PDFPatent Trial and Appeal BoardSep 27, 201714513354 (P.T.A.B. Sep. 27, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/513,354 10/14/2014 Bryan I. CHARLES 070121.1036 6310 21003 7590 09/29/2017 RAKFR ROTTST T P EXAMINER 30 ROCKEFELLER PLAZA MATTEI, BRIAN DAVID 44TH FLOOR NEW YORK, NY 10112-4498 ART UNIT PAPER NUMBER 3633 NOTIFICATION DATE DELIVERY MODE 09/29/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): DLNYDOCKET@BAKERBOTTS.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRYAN I. CHARLES, ROGER W. BARR, KEVIN W. SMITH, ANTHONY J. PEACHEY, TIMOTHY A. FISHER, HAROLD DALE MATHIAS, JUSTIN EUGENE MOON, and GABRIEL PATRICK BLASI (Applicant: EMEH, Inc.) Appeal 2017-004137 Application 14/513,354 Technology Center 3600 Before JOSEPH L. DIXON, MICHAEL J. STRAUSS, and JOSEPH P. LENTIVECH, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1—4, 13, 16—18, 21, 23, 24, 26—28, and 30. Claims 19, 29, and 31 have been withdrawn. Final Act. 2. Claims 22 and 25 have been indicated as being allowable. See Final Act. 2. Claims 5— 12, 14, 15, and 20 have been cancelled. App. Br. 13—14 (Claims App’x). We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. Appeal 2017-004137 Application 14/513,354 STATEMENT OF THE CASE Appellants ’ Invention Appellants’ invention generally relates to a stair expansion joint system with freedom of movement between landings. Spec. 11. Claim 1, which is illustrative, reads as follows: 1. A stair system with freedom of movement between landings associated therewith, the stair system comprising: a connection system configured to connect stairs to a landing associated with a construction, wherein the connection system structurally supports the stairs for safe egress over the stairs while concurrently supporting movement between the landing and a second landing associated with the construction by the stairs in at least one dimension, and wherein the movement supports inter-story drift between the landing and the second landing and removes some force translation between the landing and the second landing, wherein the connection system comprises a sliding base assembly consisting of a plurality of plates configured to support horizontal and vertical movement of the stairs relative to the landing, wherein the stairs are substantially fixed between the landing and the second landing, wherein the plurality of plates consists of a first plate connected to the stairs, a second plate connected to the landing, and a third plate between the first plate and the second plate, wherein the stairs are moveable relative to the landing based on the third plate, wherein the third plate comprises two sides each directly disposed to the first plate and to the second plate and each of the two sides is a same material, and wherein the stairs are diagonal relative to the first plate. 2 Appeal 2017-004137 Application 14/513,354 Rejections Claims 1—4, 16, 17, 23, 24, 26—28, and 30 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Hanson (US 3,805,464; issued Apr. 23, 1974) and Andra et al. (GB 976,069; published Nov. 25, 1964) (“Andra”). Final Act. 3—7. Claims 13 and 21 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Hanson, Andra, and Walkingshaw et al. (US 2010/0117312 Al; published May 13, 2010) (“Walkingshaw”). Final Act. 7—8. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hanson, Andra, and DeGood (US 4,642,953; issued Feb. 17, 1987). Final Act. 8. ANALYSIS Appellants argue independent claims 1 and 16 together. App. Br. 7— 10; Reply Br. 1—2. Appellants do not separately argue claims 2—4, 13, 16— 18, 21, 23, 24, 26—28, and 30. See id. We select claim 1 as representative, and claims 2—4, 13, 16—18, 21, 23, 24, 26—28, and 30 stand or fall with claim 1. 37C.F.R. §41.37(c)(l)(iv). Issue 1 Appellants contend the combination of Hanson and Andra fails to teach or suggest “the plurality of plates consists of a first plate ... a second plate . . . and a third plate;” “wherein the third plate comprises two sides each directly disposed to the first plate and to the second plate and each of the two sides is a same material;” and “wherein the stairs are diagonal 3 Appeal 2017-004137 Application 14/513,354 relative to the first plate,” as recited in claim 1. App. Br. 7—8; Reply Br. 1— 2. Appellants argue Andra is cited to teach plates connected to a structure. Andra teaches slide bearings between concrete structural parts at sliding faces. Andra is cited specifically at FIG. 5 for connectivity between the plates and the stairs (however Andra is a structural face, not stairs). Importantly, the specific embodiment of FIG. 5 in Andra does not suggest “wherein the stairs are diagonal relative to the first plate.” Further, the specific embodiment of FIG. 5 in Andra includes 5 total plates (elements 2, 3, 13, 16, and 11). Appellants’ Claims 1 and 16 are specific to three plates (“consists of a first, second, and third plate”). Hanson clearly teaches the stairs resting (unattached) to the landing, i.e., Hanson teaches the lower staircase is adapted to rest upon floor 14. App. Br. 7. Appellants further argue “Hanson simply suggests stairs resting on the landing with no physical connection, i.e., the stairs simply rest on the floor” and “Andra teaches slide bearings between sliding facings of concrete structures.” App. Br. 8 (citing Spec., Fig. 11; Hanson, Fig. 1; Andra, Fig. 5). According to Appellants Andra fails to teach or suggest the claimed first, second, and third plates because “the specific embodiment of FIG. 5 in Andra includes 5 total plates (elements 2, 3, 13, 16, and 11)” (App. Br. 7—8 (citing Andra, Fig. 5)) and because the limitation “is explicitly contradicted by Andra FIGS. 1 and 2” (Reply Br. 1). Appellants further argue Andra fails to teach or suggest “wherein the stairs are diagonal relative to the first plate,” as recited in claim 1, because “the plates in Andra are not diagonal relative to the structure; they are both in the same plane.” App. Br. 8. We do not find Appellants’ arguments persuasive. The Examiner finds: Andra teaches placing three bearing plates used to make a sliding connection between facings of concrete structures [wjhile Hanson clearly discloses a concrete stair that allows for sliding 4 Appeal 2017-004137 Application 14/513,354 movement between a concrete landing and a bottom of the stair (Fig 2) (column 2, lines 60-64). When the plates of Andra are placed underneath the stair of Hanson in the combination of references, the limitation “wherein the stairs are diagonal relative to the first plate” will clearly be met. Ans. 3; see also Andra, Fig. 1. Appellants’ arguments fail to address the Examiner’s findings regarding the combined teachings of the references. Nor do Appellants’ arguments address the Examiner’s finding (Ans. 3) that Andra’s disclosure of placing three bearing plates used to make a sliding connection between facings of concrete structures taken in combination with Hanson’s disclosure of a concrete stair that allows for sliding movement between a concrete landing and a bottom of the stair teaches or suggests the disputed limitations. Appellants’ argument (App. Br. 7—8) regarding Figure 5 of Andra as failing to teach or suggest the claimed first, second, and third plates is not persuasive because the Examiner relies on the embodiment shown in Figures 1 and 2 of Andra, not the embodiment shown in Figure 5. Ans. 2—3. Appellants’ argument (Reply Br. 1), regarding Figures 1 and 2 of Andra are not persuasive because Appellants have not explained how Figures 1 and 2 of Andra contradict the disputed limitation. See 37 CFR § 41.37(c)(l)(iv) (“The arguments shall explain why the examiner erred as to each ground of rejection contested by [Ajppellant. . . . [A]ny arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”) (emphasis added.) Moreover, arguments not made are deemed waived. See id', cf. In re Baxter TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an [Ajppellant, looking for nonobvious distinctions over the prior art.”). 5 Appeal 2017-004137 Application 14/513,354 Further, we agree with the Examiner (Ans. 3) that “Figures 1 and 2 of Andra clearly show a first plate 3, second plate 1 and third plate 2” and, therefore, teaches or suggests “the plurality of plates consists of a first plate ... a second plate . . . and a third plate,” as recited in claim 1. For the foregoing reasons, we are not persuaded the Examiner erred in finding the combination of Hanson and Andra teaches or suggests the disputed limitations. Issue 2 Appellants contend the combination of Hanson and Andra is improper. App. Br. 9-10; Reply Br. 2. In particular, Appellants contend “there is no suggestion to combine Hanson and Andra.” App. Br. 9. In this regard, Appellants argue: Neither Hanson nor Andra suggests seismic protection for stairs. Hanson, leaving the stairs simply resting, unattached to the lower landing has no protection from seismic events. In fact, this configuration is contrary to regulations related to seismic protection and is more dangerous during earthquakes, i.e., no fixed connection that could result in more damage in an earthquake. Andra suggests slide bearings between structural walls. Again, there is no suggestion of seismic protection and is more dangerous during earthquakes, i.e., no fixed connection that could result in more damage in an earthquake. Appellants further submit the only suggestion for using slide bearings to provide seismic protection to stairs is found in Appellants’ Specification, thereby constituting impermissible hindsight. App. Br. 9. Appellants further argue the claimed invention meets a long-felt need which was recognized, persistent, and not solved by others. App. Br. 9-10 (citing 37 C.F.R. § 1.132 Declaration filed May 9, 2016 6 Appeal 2017-004137 Application 14/513,354 (“Declaration”)). We do not find Appellants’ contentions persuasive. Contrary to Appellants’ arguments, “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). The Examiner has provided articulated reasoning with a rational underpinning explaining why one skilled in the art would have found it obvious to combine the teachings of Hanson and Andra. See Final Act. 4; Ans. 3^4. Placing the slide bearing plates of Andra between the stair and landing of Hanson would have predictably used prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. The Examiner’s findings are reasonable because the skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle” since the skilled artisan is “a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420, 421. Appellants do not present persuasive evidence showing that the resulting arrangement was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19). We are also not persuaded by Appellants’ contention regarding the claimed invention meeting a long-felt need which was recognized, persistent, and not solved by others. App. Br. 9-10. We have reviewed the Declaration and find the statements included therein to be conclusory and fail to provide any factual evidence supporting Appellants’ conclusion of non-obviousness based upon long-felt need. See Declaration 1—3. The 7 Appeal 2017-004137 Application 14/513,354 Declaration provides “there has been a lack of interest or lack of appreciation of seismic stairs;” “[f]or lack of interest, there has not been an interest in costly solutions for protecting stairs;” and “Applicants[] have developed seismic protection for stairs which is cost effective and installable in multi-story structures.” Declaration 3. However, the Declaration does not include any evidence in support of these conclusory statements. As such, we find the statements to be of little probative value. For the foregoing reasons, we are not persuaded the Examiner erred in combining Hanson and Andra. CONCLUSION For the reasons discussed supra, we are not persuaded the Examiner erred in rejecting claim 1; and claims 2—4, 13, 16—18, 21, 23, 24, 26—28, and 30, which fall therewith. DECISION We affirm the Examiner’s rejection of claims 1—4, 13, 16—18, 21, 23, 24,26-28, and 30. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation