Ex Parte InghamDownload PDFBoard of Patent Appeals and InterferencesOct 26, 201110792458 (B.P.A.I. Oct. 26, 2011) Copy Citation 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 Copy with citationCopy as parenthetical citation