Ex Parte Creighton

Patent Trial and Appeal Board

Mar 25, 2013

11552633 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GEORGE S. CREIGHTON
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Appeal 2011-001081
Application 11/552,633
Technology Center 3600
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Before: LINDA E. HORNER, BRETT C. MARTIN, and BART A.
GERSTENBLITH, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
George S. Creighton (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-28.1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant’s invention is directed generally to railway cars
manufactured with self piercing rivets. Spec. 1, ll. 15-18. Claim 9,
reproduced below, is illustrative of the claimed subject matter:
9. A railway car operable to carry coal and having a railway
car underframe and at least one sidewall assembly comprising:
the railway car underframe having a first longitudinal
edge and a second longitudinal edge with the at least one
sidewall assembly disposed along one of the longitudinal edges
of the railway car underframe;
the at least one sidewall assembly formed in part from a
plurality of side sheets and a plurality of support posts;
one end of each support post attached to the one
longitudinal edge of the railway car underframe;
the side sheets formed from steel;
the support posts formed from steel;
each support post having a first surface and a second
surface;

1 The Notice of Appeal states that Appellant appeals from the last decision
of the Examiner, in which the Examiner rejected claims 1-28. In the Appeal
Brief, however, Appellant appeals only claims 1-7, 9-17, and 19-27. App.
Br. 6, 12. Appellant submitted an amendment-after-final on January 11,
2010 seeking to cancel claims 8, 18, and 28. The Examiner refused entry of
this amendment, so claims 8, 18, and 28 are still pending. We understand
Appellant to have withdrawn the appeal as to claims 8, 18, and 28.
Consistent with the holding of BPAI precedential opinion Ex Parte Ghuman,
88 USPQ2d 1478, 1480 (BPAI 2008) (non-appealed claims must be
canceled), the Examiner should cancel non-appealed claims 8, 18, and 28.
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a plurality of self piercing rivets attaching portions of the
side sheets with the first surface of associated support posts;
each self piercing rivet having a first end and a second
end with a respective head disposed on the first end of each self
piercing rivet; and
each head recessed into adjacent portions of the
associated side sheet to minimize potential problems with water
freezing around the head of one or more self piercing rivets.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Creighton US 7,261,044 B2 Aug. 28, 2007

Doidge Fastenings Ltd. (hereafter “Doidge”), Selfpierce Rivets,2 found at:
http://www.doidge.com/original/english/selfpierce.html (last visited March
22, 2013) (hereafter “Doidge”).
THE REJECTION ON APPEAL
The Examiner made the following rejection:
Claims 1-28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Creighton and Doidge. Ans. 3.

ANALYSIS
Appellant argues the claims subject to the first ground of rejection as a
group. We select claim 9 as representative. See 37 C.F.R. § 41.37(c)(1)(vii)

2 The copy of Doidge used by the Examiner includes the date 10/11/2004 on
its face and is dated as such on the Examiner’s Notice of References Cited of
August 5, 2008.
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(2011).3 Accordingly, claims 1-8 and 10-28 stand or fall together with claim
9.
Appellant first argues that Creighton does not show the limitation of
claim 1 (which also appears in claim 9) requiring “one end of each support
post attached to the one longitudinal edge of the railway car underframe.”
App. Br. 16. Appellant asserts that this feature is not present in Creighton
because support post 156 “is not attached to the longitudinal edge of the
railway car underframe” because it is “attached to several intervening parts.”
Id. Appellant then provides an explanation of Creighton’s Figure 5. Id. As
the Examiner explains, by way of describing Creighton’s Figure 4 instead,
“support post (156) is attached to the car underframe (200).” Ans. 5. The
Examiner goes on to point out that “Appellant continues to argue that there
is not a direct connection between the support post (156) and the underframe
(200), however, the claim does not call for a direct connection.” Ans. 5-6.
As the Examiner also notes, regardless, “a direct connection is shown in the
figure below [Figure 4] by the bolts (as labeled).” Ans. 6. We agree with
the Examiner that Figure 4 of Creighton shows the support post 156 directly
connected to the car underframe 200 by the bolts as labeled in the
Examiner’s annotated figure, and thus we find the Examiner has shown by a
preponderance of the evidence that this limitation is met.

3 This rule provides, “Any claim argued separately should be placed under a
subheading identifying the claim by number. Claims argued as a group
should be placed under a subheading identifying the claims by number.”
Appellant fails to provide any subheadings as required by the rules, and
simply present arguments directed to the rejection of claims 1-7, 9-17, and
19-27 under the heading “Argument.” App. Br. 16-18. Having failed to set
forth the proper subheadings to identify any claims separately argued, we
treat all the claims subject to the rejection on appeal as having been argued
as a group.
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Appellant also argues that Creighton does not teach the limitation
from claim 1 of “the side sheets formed from materials selected from the
group consisting of aluminum and steel.” App. Br. 17. Claim 9 includes a
similar limitation, but specifically requires the material be steel. As
explained infra, regardless of the recitation of steel alone or as an alternative
to aluminum, Creighton teaches this limitation. Appellant argues that the
Examiner’s citation of column 5, lines 25-40 of Creighton, which states
“[s]teel alloys and aluminum alloys are examples of metals which may be
used to form end sheets for a boxcar,” does not support the finding that
Creighton meets this limitation because this cited section refers to end
sheets, not side sheets. Id. Appellant then selectively cites column 8, lines
47-50 where Creighton discloses “sidewall assemblies 150 and 152 may
include a plurality of support posts 156, side sheets 160 formed from metal
alloys and side sheets 170 formed from fiber reinforced plastic.” Creighton
also discloses, however, “[s]teel alloys and aluminum alloys are examples of
metals which may be used to form side sheets for a boxcar incorporating
teachings of the present invention.” Creighton, col. 5, lines 14-16; see also
lines 9-24. Contrary to Appellant’s selective citation to Creighton,
Creighton does teach the claimed material for side sheets. Accordingly, we
do not find this argument persuasive.
Appellant next argues that “[t]he final office action fails to cite a
disclosure for the limitation, ‘at least one support post formed from a
material different from a material selected to form the side sheets.’” App.
Br. 17. This limitation appears only in claim 1 and is not found in
representative claim 9. Thus, this argument is not persuasive as to error in
the Examiner’s rejection of the representative claim.
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Appellant further argues:
Creighton does not disclose, “each self piercing rivet having a
first end and a second end with a respective head disposed on
the first end of each self piercing rivet,” or, “each head recessed
into adjacent portions of the associated side sheet to minimize
potential problems with water freezing around the head of one
or more self piercing rivets.” For at least this additional reason,
Independent Claims 9 and 10 are allowable over the cited
references.
App. Br. 17-18. The Examiner relies not on Creighton for the teaching with
respect to the self-piercing rivets, but on Doidge. Ans. 4. In the Reply
Brief, Appellant restates that Creighton fails to disclose the limitation at
issue regarding the rivets. Reply Br. 3. Even though Appellant does not
acknowledge Doidge in the argument, the Examiner responds to Appellant’s
remaining arguments as to the structure required by reproducing a Figure
from Doidge juxtaposed with a figure from Appellant’s drawings showing
the rivets at issue. Ans. 7. These two figures are nearly identical in
disclosure and clearly show that Doidge’s rivet includes the claimed first
end/head 201b, second end 202b, and that the rivet is recessed as claimed.
We see no error in the Examiner’s finding regarding Doidge’s rivets vis-à-
vis the claims. Accordingly, we sustain the Examiner’s rejection of claim 9
as obvious over Creighton and Doidge. Based upon Appellant’s claim
grouping of all claims together, we further sustain the rejection of claims 1-8
and 10-28 as well.
DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1-28.
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).
Appeal 2011-001081
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AFFIRMED

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