Ex Parte Heselden

Patent Trial and Appeal Board

Sep 26, 2016

13302671 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/302,671 11/22/2011
38598 7590 09/28/2016
ANDREWS KURTH KENYON LLP
1350 I STREET, N.W.
SUITE 1100
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
James Heselden
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.
1021-075 CONT 8611
EXAMINER
SINGH, SUNIL
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
DCIPDOCKETING@andrewskurth.com
PTODC@andrewskurth.com
PTOL-90A (Rev. 04/07)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES HESELDEN
Appeal2015-000060
Application 13/302,671
Technology Center 3600
Before MICHAEL L. HOELTER, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 28--41, which
are all the claims pending in the application. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Hesco Bastion Limited. App. Br.
3.
Appeal2015-000060
Application 13/302,671
Claimed Subject Matter
Claim 41, reproduced below with disputed limitations emphasized, is
illustrative of the claimed subject matter.
41. A gabion comprising opposed side walls comprising a
plurality of side wall sections each comprising one or more side
wall elements, the side wall section of each side wall being
connected together at spaced intervals by a plurality of partition
walls extending between the opposed side walls such that spaces
between neighbouring partition walls define, together with
opposed side wall sections of the side walls, individual
compartments of the gabion, adjacent side wall sections, side
wall elements and partition walls being connected to one another
by pivotal connections enabling the gabion to be folded between
fully flattened and deployed configurations, wherein at least one
of said pivotal connections is between connected side wall
elements and is an openable connection which allows a first
neighbouring side wall element to open a compartment through
the side wall of the gabion, by becoming disconnected from a
second neighbouring side wall element, to allow access from the
side of the gab ion to any contents of the gab ion compartments.
Rejections
Claims 29--41 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Heselden (WO 00/40810, published July 13, 2000), and specifically the
teachings related to Figures 1, 2a, and 2b in view of the teachings related to
Figures 3 and 4. Final Act. 2-5.
Claims 28--41 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Heselden, and specifically the teachings related to Figures 7 and 8 in
view of the teachings related to Figures 3 and 4. Final Act. 5-8.
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Appeal2015-000060
Application 13/302,671
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments (App. Br. 9-24; Reply Br. 2-11). We are not persuaded by
Appellant's arguments. We adopt as our own the findings and conclusions
set forth by the Examiner in the action from which this appeal is taken and
set forth in the Answer (see Ans. 2-23). We highlight and address specific
arguments, findings, and conclusions for emphasis as follows.
Obviousness rejection based on Heselden
Figures 7 and 8 and Figures 3 and 4
Appellant argues claims 28--41 as a group. App. Br. 9-18. We select
claim 41 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds Appellant's prior application, Heselden, teaches a
gabion with side walls connected by pivots "A" shown in Figure 7, which is
reproduced below with Figure 8. Final Act. 5---6.
Figure 7 depicts in plan view a cage structure with pivots
"A" along the side walls, and Figure 8 shows how the
cage structure can be folded to flattened form for
transportation. Heselden 5---6, 10.
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Appeal2015-000060
Application 13/302,671
The Examiner further finds Heselden teaches that a pivotal connection
between connected wall elements can be a releasable connection. Final Act.
6 (citing Heselden 2-10, Figs. 3--4). Heselden's Figure 4, which is
reproduced below, depicts a releasable pivotal connection between wall
segments (e.g., between wall segments 32A and 32B at the left end of the
gabion).
Figure 4 shows an enlarged section of Heselden's
cage structure.
Appellant argues Figures 3 and 4 of Heselden do not teach using
releasable connections in the side panels of a gabion and do not provide any
motivation for a person of ordinary skill in the art to replace the pivot points
"A" in Heselden's Figures 7 and 8 with the releasable connections "B" in
Figures 3 and 4. App. Br. 10.
We agree with the Examiner's finding that substituting Heselden's
releasable pivots for the non-releasable pivots in Heselden would have
yielded predictable results. Final Act. 6; Ans. 4. We further agree with the
Examiner's conclusion of obviousness of claim 41 (Final Act. 6), because
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Appeal2015-000060
Application 13/302,671
the substitution of a releasable pivot for a non-releasable pivot is a simple
substitution of one element for another known in the field, yielding
predictable results. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) ("The Court recognized that when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result."). In addition, we agree with the Examiner that one of
ordinary skill in the art would have recognized that making the non-
releasable pivots in Heselden releasable "would allow one to rapidly
disassemble the gabion structure for compact storage." Final Act. 8.
Appellant contends the modification of Heselden is not a simple
substitution because in order to allow access from the side of the gabion to
any contents of the gab ion compartments, one would have to replace the
pivotal connection A in each compartment of Heselden's gabion with
Heselden's releasable or openable connection B. App. Br. 11. Appellant
argues this modification is a complete redesign of Heselden that changes the
function of the gabion and greatly increases the difficulty and complexity of
gabion dismantling and removal. Id.
Appellant's arguments do not apprise us of error in the Examiner's
rejection of claim 41. We agree with the Examiner that the number of pivots
to be substituted is not dispositive. See Ans. 8. Substituting one type of
pivot for another, even if there are several pivots, is a simple substitution
yielding the predictable results identified by the Examiner. We also agree
with the Examiner that one of ordinary skill in the art would have recognized
that making more pivots in Heselden releasable or openable adds to the
flexibility in removing or disassembling the Heselden gabion and does not
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Appeal2015-000060
Application 13/302,671
make disassembly more difficult. Ans. 6-7. Appellant's argument to the
contrary (App. Br. 14, 18) incorrectly assumes that the unzipping feature
described in Heselden would be impossible after substituting releasable
pivots for the fixed pivots.
Appellant also contends the claimed gabion solved a previously
unknown problem, namely, how to replace or repair damaged gabion
sections. App. Br. 16-17. Appellant's assertion is unsupported, and the
Examiner finds one of ordinary skill in the art would have recognized the
predictable result of being able to easily replace a damaged panel section by
disconnecting or releasing the damaged section from its adjacent pivotally
connected sections. Ans. 4. In addition, the Examiner identifies other
predictable results that would have motivated one of ordinary skill in the art
to add additional releasable pivots. As the Examiner finds, one of ordinary
skill in the art would have recognized that additional releasable pivots would
allow for dismantling Heselden' s gab ion into smaller sections, which
predictably allows for storage in smaller areas. Final Act. 6; Ans. 4, 6.
Accordingly, for the reasons discussed above and by the Examiner,
we are not apprised of error in the Examiner's rejection of claims 28--41
under 35 U.S.C. § 103(a) as unpatentable over Heselden, and specifically the
teachings related to Figures 7 and 8 in view of the teachings related to
Figures 3 and 4. Thus, we sustain the rejection of claims 28--41.
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Appeal2015-000060
Application 13/302,671
Obviousness rejection based on Heselden
Figures 1, 2a, and 2b and Figures 3 and 4
Appellant argues the rejection of claims 29--41 over Heselden's
teachings related to Figures 1, 2a, and 2b in view of the teachings related to
Figures 3 and 4 is in error for the same reasons as those related to the
rejections based on Heselden's Figures 7 and 8, discussed above. App. Br.
19-21. For the same reasons discussed above, we are not apprised of error
in the Examiner's rejection of claims 29--41under35 U.S.C. § 103(a) as
unpatentable over Heselden, and specifically the teachings related to Figures
1, 2a, and 2b in view of the teachings related to Figures 3 and 4. Thus, we
sustain this rejection of claims 29--41.
Request for withdrawal of finality
Appellant also requests withdrawal of finality of the Final Action.
App. Br. 21-23. As noted by the Examiner, this is a petitionable matter not
within the jurisdiction of the Board. Ans. 22.
DECISION
We affirm the Examiner's decision to reject claims 28--41.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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