Ex Parte Gutierrez

Patent Trial and Appeal Board

Sep 10, 2015

12775817 (P.T.A.B. Sep. 10, 2015)

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.
12/775,817 05/07/2010 Miguel Osvaldo Gutierrez Safetymaker-31 1943
39703 7590 09/10/2015
C. JAMES BUSHMAN
1001 West Loop South
Suite 810
HOUSTON, TX 77027
EXAMINER
MASINICK, JONATHAN PETER
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
09/10/2015 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 MIGUEL OSVALDO GUTIERREZ
____________

Appeal 2013-009237
Application 12/775,817
Technology Center 3600
____________

Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 4, 7–10, and 13–17.2 We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).

We AFFIRM.

1 “The Assignee, Safety Maker, Inc., is the only real party in interest.”
(Appeal Br. 3.)
2 Claims 2, 3, 5, 6, 11, and 12 have been canceled. (Appeal Br. 5.)
Appeal 2013-009237
Application 12/775,817

2
STATEMENT OF THE CASE
The Appellant’s invention relates “to an apparatus for erecting a
temporary guardrail on a stair.” (Spec. 1, lines 5–6.)

Illustrative Claim3
1. An apparatus for use in erecting a temporary guardrail
having a stair stringer having a first engagement surface, a
bottom edge and a top edge, and a second spaced engagement
surface comprising:
an elongated stanchion having a front side and a back
side;
a first jaw assembly operatively attached to said
stanchion, said first jaw assembly including a first head portion
adapted to operatively engage said first engagement surface of
said stair stringer proximal said bottom edge thereof; and a first
compression assembly attached to said first head portion and
operative to apply a compressive force to the back side of said
stanchion to urge said stanchion against the first engagement
surface of said stringer, wherein said first head portion is L-
shaped and includes a first flange portion for engaging said first
engagement surface of said stringer, and a first leg portion
attached to said first flange portion, said first leg portion
including a first shank portion extending from said first leg
portion through said front and back sides of said stanchion, and
a first tightener connected to said first shank portion and
engaging said second engagement surface to urge said first
shank portion in a direction away from said first flange portion
to thereby compressively urge said first flange portion into
engagement with said first engagement surface of said stringer;
a second, spaced jaw assembly, operatively attached to
said stringer, said second jaw including a second head portion,
adapted to operatively engage said first engagement surface of
said stringer proximal said top edge thereof; and a second

3 This illustrative claim is quoted from the Claims Appendix (“Claims
App.”) set forth on pages 19–23 of the Appeal Brief.
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Application 12/775,817

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compression assembly attached to said second head portion and
operative to apply a compressive force to the back side of said
stanchion to urge said stanchion against the first engagement
surface of said stringer, wherein said second head portion is L-
shaped and includes a second flange portion for engaging said
first engagement surface of said stringer, and a second leg
portion attached to said second flange portion, said second leg
portion including a second shank portion extending from said
second leg portion through said front and back sides of said
stanchion and a second tightener operatively connected to said
second shank portion and engaging said second engagement
surface to urge said second shank portion in a direction away
from said second flange portion to thereby compressively urge
said second flange portion into engagement with said first
engagement surface of said stringer; and
at least one bracket operatively attached to said stanchion
and axially spaced from said second jaw, said bracket being
adapted to receive a temporary rail member.

References
Rickmeyer US 2,332,471 Oct. 19, 1943
Thornley US 2,332,447 Oct. 19, 1943
Buehler US 3,018,077 Jan. 23, 1962
Taylor US 5,119,612 June 9, 1962
Allenbaugh US 6,679,482 B2 Jan. 20, 2004

Rejections4
The Examiner rejects claims 1, 4, 7–10, 13, and 15–17 under
35 U.S.C. § 103(a) as unpatentable over Buehler and Thornley. (Final
Act. 3.)
The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Buehler, Thornley, and Allenbaugh. (Id. at 11.)

4 The Examiner withdraws the rejection of claims 5 and 6 under 35 U.S.C.
§ 112, fourth paragraph. (Answer 2.)
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Application 12/775,817

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ANALYSIS
Claims 1 and 16 are the independent claims on appeal, with the rest of
the appealed claims (i.e., claims 4, 7–10, 13–15, and 17) depending
therefrom. (Claims App.) Independent claims 1 and 16 each recite a
“guardrail,” a “stair stringer,” an “elongated stanchion” (e.g., a post), and
“jaw assembl[ies].” (Id.)

Independent Claims 1 and 16
Buehler discloses a guardrail wherein a post 13 is connected to a stair
stringer 11 with a mounting device 14. (See Buehler, col. 2, lines 27–30;
Fig. 1.) Thornley discloses a scaffold wherein jaw assemblies 41 are used to
anchor a post 34 to the relevant structure. (See Thornley, col. 2, lines 41–60;
Figs. 1 and 8.) The Examiner determines it would have been obvious to
modify Buehler’s guardrail by replacing mounting device 14 with
Thornley’s jaw assemblies 41 so as to provide “a more secure connection”
of post 13 to stair stringer 11. (Final Act. 6; Answer 4.)5
The Appellant advances arguments premised upon the Examiner’s
proposed modification compromising the vertical adjustability of post 13 in
Buehler’s guardrail. (Id. at 12–17.) We are not persuaded by these

5 In Thornley’s scaffold, jaw assemblies 41 anchor post 34 to a rail 40. (See
Thornley, col. 2, lines 38–60.) In the Appeal Brief, the Appellant queries
the relevance of using Thornley’s jaw assemblies 41 to connect Buehler’s
hand rail 12 to post 13. (See Appeal Br. 13–14) The Examiner clarifies that
the reliance on Thornley “has nothing to do with the attachment of the rails
to the posts.” (Answer 4.) Instead, “Thornley is relied upon to teach onto
the base reference (Buehler) a connection between the stanchion (post) and
the stringer using the L-shaped locking bolts (41) and not to teach the
attachment of the upper 2x4 rails to the stanchion (post).” (Id.)
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arguments because one of ordinary skill in the art would have known the
pros (i.e., a more secure connection of post 13) and cons (i.e., a possible
compromise of vertical adjustment of post 13) of this modification. (See
Answer 4–5.) As such, one of ordinary skill in the art would have opted for
jaw assemblies 41 if the need for a secure connection of post 13 had
outweighed the post-adjustment advantages provided by Buehler’s mounting
device 14.
We agree with the Appellant that, in Buehler’s mounting device 14,
collars 25 provide vertical adjustability for posts 13. (See Appeal Br. 12.)
Indeed, in Buehler’s disclosed mounting device 14, posts 13 “can be locked
at any desired level in the collars 25” by set screws 29. (Buehler, col. 3,
lines 41–43, Figs. 5 and 6.)
We also agree with the Appellant the vertical adjustability of posts 13,
and particularly their on-the-job adjustability, is what the Buehler inventor
regarded as his contribution to the guardrail art. (See Appeal Br. 12.)
Buehler expressly states that “[a] feature of the invention is the provision of
a wide degree of vertical adjustment for the post to accommodate variations
in handrail levels,” and that “[a]nother feature of the invention resides in
‘on-the-job’ adjustability for stair railing installations.” (Buehler, col. 1,
lines 37–43.)
We further agree, at least arguendo, that the Examiner’s proposed
modification of Buehler’s guardrail could result in a compromise of the
vertical adjustability of posts 13. (See e.g., Appeal Br. 15.) Specifically, for
example, the range of vertical adjustment possible for posts 13 could be
reduced. Additionally or alternatively, the ease of an on-the-job vertical
adjustment of posts 13 could be moderated.
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Application 12/775,817

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However, we disagree with the Appellant that Buehler “expressly
teaches away from using an apparatus such as disclosed in Thornley in order
to secure the posts 13.” (Appeal Br. 15.) If vertical adjustment of posts 13
is necessary or desired, Buehler teaches using a post-securing device having
features (i.e., collars 25) that provide such vertical adjustability. But
Buehler does not criticize, discredit, or otherwise discourage a post-securing
device without such features if the vertical adjustment of posts is not of
concern when the guardrail is being erected.
We additionally disagree with the Appellant that the Examiner’s
modification “effectively renders the Buehler invention inoperable” and
would require “a complete redesign of the Buehler assembly.” (Appeal
Br. 15.) The Examiner’s modification to Buehler’s guardrail may omit
elements (i.e., collars 25) which the Buehler inventor regarded as his
contribution to the art, and this modification may compromise the
adjustment-related advantages that these elements provide. However, the
Appellant does not adequately explain why, when the modified version of
Buehler’s guardrail is erected, the retained elements (e.g., handrail 12,
posts 13) would not operate on the same principles as before. See e.g. In re
Umbarger, 407 F.2d 425, 430–31 (CCPA 1969) (“It is true that such
substitution omits the [element] on which [the inventor in the primary
reference] apparently regarded as his contribution to the art along with such
advantages as it might provide. However, the modified apparatus is clearly
obvious in view of the prior art and the retained [elements] will operate
therein on the same principles as before.”).
As such, we are not persuaded by the Appellant’s arguments that the
Examiner errs in determining it would have been obvious to modify
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Buehler’s guardrail to replace its mounting device 14 with jaw assemblies.
Thus, we sustain the Examiner’s rejection of independent claims 1 and 16.

Dependent Claim 4
Claim 4 depends from independent claim 1 and requires a jaw
assembly to be “longitudinally adjustable along [a] stanchion.” (Claims
App.) The Examiner finds that such longitudinal adjustment can be
achieved in the modified version of Buehler’s guardrail by drilling a hole
into post 13 “at any desired height.” (Answer 4–5.) The Examiner also
evidences (via Taylor) that drilling such a hole “is routine at job sites.”
(Advisory Act. 2.) The Examiner further finds that “if the stanchion is
adjustable along the jaw assemblies, then the reverse must also be true: that
the jaw assemblies are adjustable along the stanchion.” (Answer 5.) The
Appellant’s arguments do not adequately address these findings by the
Examiner. (See Appeal Br. 17.) Thus, we sustain the Examiner’s rejection
of dependent claim 4.

Dependent Claims 7–10, 13, 15, and 17
These dependent claims are not argued separately or further, so they
fall with independent claims 1 and 16. Thus, we sustain the Examiner’s
rejection of dependent claims 7–10, 13, 15, and 17.

Dependent Claim 14
The Appellant argues only that Allenbaugh does not cure the above-
discussed deficiencies in the Examiner’s combination of Buehler and
Thornley. (Appeal Br. 17.) As we do not find this combination deficient,
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Application 12/775,817

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we are not persuaded by this argument and we sustain the Examiner’s
rejection of dependent claim 14.

DECISION
We AFFIRM the rejection of claims 1, 4, 7–10, and 13–17.
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).

AFFIRMED

JRG