12873627 (P.T.A.B. Feb. 12, 2016)

Ex Parte Flaherty et al

Patent Trial and Appeal BoardFeb 12, 2016

12873627 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/873,627 09/01/2010 John P. Flaherty 42754 7590 02/12/2016 Nields, Lemack & Frame, LLC 176 E. Main Street Suite #5 Westborough, MA 01581 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 766P002 5687 EXAMINER GILBERT, WILLIAM V ART UNIT PAPER NUMBER 3649 MAILDATE DELIVERY MODE 02/12/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte JOHN P. FLAHERTY and WILLIAM SCOTT OBER Appeal2014-000542 Application 12/873,627 Technology Center 3600 Before: CHARLES N. GREENHUT, MARK A. GEIER, and JASON W. MELVIN, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1- 22. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. The claims are directed to a universal radius tactile warning surface product. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A radial tactile warning surface (TWS) product, comprising: Appeal2014-000542 Application 12/873,627 an outer edge, formed as an arc of a first circle having a first radius, an inner edge formed as an arc of a second circle, having a second radius, two sides connecting said outer edge and said inner edge, an upper surface having a plurality of elevated domes, wherein the center-to-center spacing of each pair of adjacent domes is within a predetermined range; and a lower surface, wherein at least one of said upper or lower surface comprises a plurality of markings indicating where said radial TWS product may be cut, such that cutting said radial TWS product along one of said plurality of markings creates a derivative radial TWS product; wherein each of said plurality of markings is used to create a different derivative radial TWS product, such that each of said derivative radial TWS products may be used with other like derivative radial TWS products to create a tactile warning surface having a unique effective radius. REJECTIONS Claims 1-7 and 17-22 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Wehmeyer (US 2007/0092335 Al, pub. Apr. 26, 2007) in view of Young (US 2008/0197328 Al, pub. Aug. 21, 2008) and Gleeson (US 6,760,978 B2, iss. July 13, 2004). Claims 8-16 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Wehmeyer in view of Young. OPINION [T]he precise language of 35 U.S.C. Â§ 102 that '(a) person shall be entitled to a patent unless,' concerning novelty and unobviousness, clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103. 2 Appeal2014-000542 Application 12/873,627 In re Warner 379 F.2d 1011, 1016 (CCPA 1967). Included in this factual basis is a determination as to the scope of prior art to be considered. Graham v. John Deere Co. 383 U.S. 1 (1966). This inquiry involves determining whether prior art references are "analogous." In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citations omitted). Id Two criteria have evolved for determining whether prior art is analogous: ( 1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In rebuttal to Appellants' assertion that Young is nonanalogous art, the Examiner relies on the fact that with respect to Young, "the [E]xaminer did not focus on the method of making the panels, but the final shape of the panels themselves" in order to conclude that Young is in the same field of endeavor. Ans. 5. As Appellants correctly point out, what the Examiner did or did not focus on, is not dispositive as to the inquiry set forth above. Reply Br. 6. Young relates to a method of bending hardwood flooring. Youngpassim. The Examiner has not persuasively established that, without the benefit of hindsight, it should be considered as within the scope of prior art relevant to an obviousness analysis for the tactile warning surface of the present application. Each of the Examiner's rejections relies upon at least one teaching from Young. See Final Act. 3-17. Accordingly, the Examiner's rejections cannot be sustained. 3 Appeal2014-000542 Application 12/873,627 DECISION The Examiner's rejections are reversed. REVERSED cda 4