Ex Parte Ingham

Board of Patent Appeals and Interferences

Oct 26, 2011

10792458 (B.P.A.I. Oct. 26, 2011)

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.
10/792,458 03/03/2004 Terry L. Ingham 2690-000001 4925
27572 7590 10/27/2011
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
TRAN, HANH VAN
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
10/27/2011 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 TERRY L. INGHAM
____________________

Appeal 2009-009613
Application 10/792,458
Technology Center 3600
____________________

Before STEVEN D.A. McCARTHY, KEN B. BARRETT,
and FRED A. SILVERBERG, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Terry L. Ingham (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-7, 9, 11, 12, and 21-25. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Appeal 2009-009613
Application 10/792,458

2
THE INVENTION
Appellant’s claimed invention pertains to a pallet having at least one
of the decks made from sheet molding compound (SMC). Spec. 3, para.
[0006]. Claim 1, reproduced below, is representative of the subject matter
on appeal.
1. A pallet comprising:
a first deck having a substantially rectangular frame
made of sheet molding compound that includes a thermosetting
resin and continuous unidirectional aligned reinforcing fibers
therein;
a second deck; and
a plurality of members connecting the first and second
decks together to form a pallet,
wherein the continuous unidirectional aligned reinforcing
fibers extend substantially the entire length of the frame and are
parallel to the frame, at least one of the fibers being at least 1
inch in length.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Krause US 4,451,528 May 29, 1984
Ruma US 5,687,652 Nov. 18, 1997
Hale US 6,564,725 B2 May 20, 2003
Ehnert US 6,838,148 B1 Jan. 4, 2005
Gehrig (as translated) DE 40 26 786 A1 Feb. 27, 1992

Before us for review is the Examiner’s rejection of claims 1-7, 9, 11,
12, and 21-25 under 35 U.S.C. § 103(a) as being unpatentable over Hale,
Gehrig, Ehnert, Ruma, and Krause.

Appeal 2009-009613
Application 10/792,458

3
OPINION
Appellant presents certain arguments for all of the rejected claims
before listing the claims individually and by groups under subheadings.
App. Br. 8-10. Out of an abundance of caution, we treat independent claims
1, 21, and 24 as being argued separately. App. Br. 11-14. As to the
remaining claims, all of which are dependent claims, we do not consider
Appellant to offer separate arguments for patentability. See App. Br. 11-14
(making the naked assertion that “the cited art does not appear to disclose or
suggest the following italicized language in the claims,” followed by
quotations of claim language.); 37 C.F.R. § 41.37(c)(1)(vii) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”) Therefore, the dependent
claims stand or fall with the respective independent claim.
Appellant’s claim 1 calls for a pallet comprising two decks connected
by a plurality of members, and for the first deck to be made of SMC. The
Examiner found that Hale discloses a plastic pallet having the claimed pallet
structural components (i.e. decks and connecting members) but does not
disclose that the pallet is made from the claimed SMC material. Ans. 3-4.
The Examiner further found that Gehrig teaches that it is well known to
make a pallet from an SMC material that includes a thermosetting resin and
reinforcing fibers, “wherein using sheet molding compound provides a pallet
having good physical and mechanical properties over a wide range of
temperatures, with superior resistance to surface damage.” Ans. 4.
Appellant does not appear to contest these findings by the Examiner. The
Examiner concluded that:
Appeal 2009-009613
Application 10/792,458

4
Therefore, it would have been obvious to modify the structure
of Hale by having the pallet being manufactured from sheet
molding compound which includes a thermosetting resin and
reinforcing fibers of glass fibers in order to provide a pallet
having good physical and mechanical properties over a wide
range of temperatures, with superior resistance to surface
damage, as taught by Gehrig, since both teach alternate
conventional material using to manufacture a pallet, thereby
providing structure as claimed.
Id. The Examiner relies on the tertiary references – Ehnert, Ruma and
Krause – to show the high level of skill and knowledge in the SMC art,
particularly with regard to the selection of fiber percentages, length, and
orientation to obtain desired properties. See Ans. 4-5, 6-7. We have
considered Appellant’s arguments, but have not been persuaded that the
Examiner’s conclusion of obviousness with respect to independent claims 1
and 21 is erroneous. Contra App. Br. 10 (Appellant asserting that the
Examiner’s rejection is based on “solely … picking and choosing teachings”
from the references rather than providing a reason to combine the teachings).
Appellant’s arguments (App. Br. 8-10) regarding the purported
shortcomings of each individual reference are not persuasive of error in the
obviousness rejection. The Examiner is correct that “one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references.” Ans. 5 (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981) and In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986)).
We also are not persuaded by the argument (App. Br. 8) that Hale
teaches away from the use of SMC material (containing a thermosetting
resin) by the disclosure of the advantages of using a thermoplastic resin in a
pallet. Appellant does not point to any part of Hale that criticizes, discredits
Appeal 2009-009613
Application 10/792,458

5
or discourages the claimed invention. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004) (“the prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed.”) Furthermore, the Examiner made the uncontested
findings that Gehrig and Ruma disclose the use of SMC in pallets. Ans. 4,
6; see App. Br. 9. In light of this, we also are not persuaded by Appellant’s
contention (App. Br. 10) that there is no apparent reason to use SMC in a
pallet such as Hale’s.
Appellant asserts that there are distinctions between the Examiner’s
proposed combination and the subject matter of independent claims 1 and
21. App. Br. 11, 13. However, Appellant fails to address the Examiner’s
findings and reasoning directed to the purported distinctions. See Ans. 7-8.
As such, Appellant has not cogently pointed out an error in the rejection of
claims 1 and 21.
Claim 24 calls for the SMC material of the lower deck to contain
about 20-40% unidirectional aligned fibers and about 10-30% randomly
oriented fibers. Appellant argues that the specific ratio of unidirectional and
randomly oriented fibers is not disclosed or suggested by the combination of
references. App. Br. 14. The Examiner does not adequately explain how the
claimed combination of percentages is disclosed or rendered obvious by the
cited references. See Ans. 5 (the Examiner indicating that the proposed
modification results in unidirectional fibers in one deck and the randomly
oriented fibers in a second deck, rather than both in the lower deck as
claimed). As such, we cannot sustain the rejection of independent claim 24
or of claim 25, which depends therefrom.
Appeal 2009-009613
Application 10/792,458

6
DECISION
The decision of the Examiner to reject claims 1-7, 9, 11, 12, and 21-
23 is affirmed. The decision of the Examiner to reject claims 24 and 25 is
reversed.
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)(1)(iv).

AFFIRMED-IN-PART

mls