11561930 (B.P.A.I. Nov. 16, 2010)

Ex Parte Forrer

Board of Patent Appeals and InterferencesNov 16, 2010

11561930 (B.P.A.I. Nov. 16, 2010)

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. 11/561,930 11/21/2006 Douglas S. Forrer PTH-20405/08 8346 25006 7590 11/17/2010 GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C PO BOX 7021 TROY, MI 48007-7021 EXAMINER SINGH, SUNIL ART UNIT PAPER NUMBER 3672 MAIL DATE DELIVERY MODE 11/17/2010 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 DOUGLAS S. FORRER ____________ Appeal 2009-008603 Application 11/561,930 Technology Center 3600 ____________ Before: JENNIFER D. BAHR, JOHN C. KERINS, and STEVEN D.A. McCARTHY, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL1 1The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. Â§ 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. Â§ 41.52, begins to run from the "MAIL DATE" (paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-008603 Application 11/561,930 2 STATEMENT OF THE CASE Douglas S. Forrer (Appellant) appeals under 35 U.S.C. Â§ 134 (2002) from the Examiner's decision rejecting under Â§ 103(a) claims 1-11 as unpatentable over Heenan (US 3,332,327, iss. Jul. 25, 1967) and Boedeker Plastics, Acrylic (Polymethyl-Methacrylate) Specifications (retrieved from http://web.archive.org/web/19990922052609/http://www.boedeker.com/acry l_p.htm) (last visited Jul. 30, 2004) or Canadian Building Digest, CBD-157. Properties and Behaviour of Plastics (Nat'l Research Council Canada, Jan. 1, 1973) (retrieved from http://irc.nrc-cnrc.gc.ca/cbd/cbd157e.html) (last visited Apr. 21, 2005) and claim 12 as being unpatentable over Heenan, Coderre (US 6,325,515 B1, iss. Dec. 4, 2001), and Boedeker or Canadian Building Digest. We have jurisdiction over this appeal under 35 U.S.C. Â§ 6 (2002). Claim 1 (emphasis added) is representative of the claimed invention: 1. A reflective pavement marker shell comprising: at least one side wall having a reflective portion, and forming an interior cavity, said reflective portion having an inner surface partially defining said cavity, said shell formed of a po1ymer selected from the group consisting of polyacrylate and polycarbonate, said polymer having a tensile strength of greater than 10,000 pounds per square inch and a flexural modulus of greater than 450,000 pounds per square inch. SUMMARY OF DECISION We AFFIRM. Appeal 2009-008603 Application 11/561,930 3 OPINION In rejecting claims 1-11, the Examiner found that Heenan describes a reflective pavement marker shell as claimed, but does not specify that the shell's material, methyl methacrylate, has the particular claimed properties regarding tensile strength and flexural modulus. Ans. 3-4. However, the Examiner found that Boedeker describes that polymethyl-methacrylate (PMMA) has a tensile strength of 8-11 ksi and a flexural modulus of 350- 500 ksi, which overlap the claimed ranges. Ans. 4. The Examiner found that tensile strength and flexural modulus are important properties to consider when making reflective pavement markers to withstand oncoming traffic, and thus concluded that it would have been obvious to utilize a PMMA having a tensile strength over 10 ksi and a flexural modulus over 450 ksi, as described in Boedeker, as the methyl methacrylate in Heenan. Id. Appellant does not appear to contest that the Examiner has made a prima facie case of obviousness, but argues that the case of obviousness is rebutted by Appellant's showing of unexpected results. Appeal Br. 5. Thus, the first issue is whether Appellant has presented evidence of unexpected results that outweighs the evidence of obviousness of the claimed subject matter. "A greater than expected result is an evidentiary factor pertinent to the legal conclusion of â€¦ obviousness [of the claimed subject matter]." In re Corkill, 771 F.2d 1496, 1501 (Fed. Cir. 1985) (citing United States v. Adams, 383 U.S. 39, 51-52 (1966). In cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, it has consistently been held that "the applicant must show that the particular range is critical, generally by showing that the claimed range Appeal 2009-008603 Application 11/561,930 4 achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Appellant considers the unexpected result in the present case to be that, if a plastic is used in the marker having the specified tensile strength and flexural modulus claimed, then, unexpectedly, FDOT (Florida Department of Transportation) will place the marker on a qualified products list. See Appeal Br. 7. However, Appellant has not put forth any evidence that the claimed range is critical, that the result (the unconditional approval by FDOT) is unexpected2, or that the result, even if unexpected, has anything to do with the claimed ranges. The evidence submitted by Appellant includes a qualified products list for raised reflective pavement markers approved by the FDOT. A product apparently manufactured by the assignee of the present application is listed, without any limitation listed in the "Comments and Limitations" section. Two other manufacturer's products are listed as having "Conditional Approval." Appellant provides no evidence showing the basis for the decision of the FDOT to approve Appellant's product, or for the FDOT decision to grant conditional approval to the other two products. Appellant provides no evidence that the approval has anything to do with the claimed ranges. Appellant provides no evidence that the other products' conditional approvals had anything to do with a deviation from the claimed ranges3. 2 Indeed, it appears to be common sense and expected that a stronger and more durable plastic would produce a better roadway reflective marker as one would expect it to yield a longer service life than weaker or more brittle materials. See Ans. 4 ("polyacrylate having [the claimed ranges] â€¦ will withstand constant contact of oncoming traffic[,] which generate[s] extreme loading"). 3 Appellant indicates that the approval process is 2 years. Appeal Br. 6, 7. Both 3M's and Apex's products were submitted for approval less than 2 Appeal 2009-008603 Application 11/561,930 5 Arguments relying on factually unsupported assumptions to rebut a prima facie case of obviousness "can hardly be considered factual evidence." See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Thus, Appellant has not established that the claimed ranges of tensile strength and flexural modulus produce unexpected results. After having carefully weighed both the evidence of obviousness relied upon by the Examiner and the rebuttal evidence provided by Appellant,4 it is our conclusion that, on balance, the evidence of obviousness outweighs the evidence of nonobviousness, and that, accordingly, the Examiner did not err in concluding that the subject matter of claim 1 would have been obvious. As such, we sustain the Examiner's rejection of claim 1 as obvious in view of the reflective pavement marker of Heenan as modified with the particular material of Boedeker. Appellant argues claims 1-11 as a group. Claims 2-11 fall with claim 1 accordingly. 37 C.F.R. Â§ 41.37(c)(1)(vii) (2010). The Examiner rejected claim 12 as obvious in view of Heenan, Coderre, and Boedeker. Ans. 5. The Examiner found that a step of forming the marker of Heenan is inherent because, in order to exist, the marker must be somehow formed. Ans. 6, 9. Appellant re-iterates that the Examiner's years from the report creation date. Thus, it could reasonably be inferred that the reason for the conditional approval indicated on the Qualified Products list of Jun. 4, 2007 included in the Evidence Appendix to Appellant's Appeal Brief is merely that the entire 2 year testing timeframe had yet to pass as of the report creation date, not that the products had been deemed to be inferior, as alleged by Appellant (Appeal Br. 7). 4 See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) and Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). Appeal 2009-008603 Application 11/561,930 6 prima facie case is rebutted by the evidence of unexpected results presented above. Appeal Br. 9. This argument is unpersuasive for the reasons explained above. Appellant further alleges that the prior art "does not teach or suggest the elements of the process of claim 12." Id. However, Appellant does not specifically identify any error in the Examiner's findings (Ans. 9) or the Examiner's conclusion of obviousness. Thus, we are not persuaded that the Examiner erred in rejecting claim 12 as obvious. DECISION We affirm the Examiner's decision regarding claims 1-12. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(1)(iv) (2007). AFFIRMED hh GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C P.O. BOX 7021 TROY, MI 48007-7021