Ex Parte Jarvis

Patent Trial and Appeal Board

Feb 14, 2013

11385128 (P.T.A.B. Feb. 14, 2013)

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.
11/385,128 03/20/2006 James J. Jarvis 0560.0121 1783
152 7590 02/15/2013
CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP
601 SW Second Avenue
Suite 1600
PORTLAND, OR 97204-3157
EXAMINER
MCCARRY JR, ROBERT J
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
02/15/2013 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 JAMES J. JARVIS
____________________

Appeal 2010-006442
Application 11/385,128
Technology Center 3600
____________________

Before LINDA E. HORNER, PATRICK R. SCANLON, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
James J. Jarvis (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s rejection of claims 1-17 under 35 U.S.C. § 103(a) as being
unpatentable over Saxton (US 5,743,192, iss. Apr. 28, 1998) and Beckerman
(US 4,801,483, iss. Jan. 31, 1989). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

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THE INVENTION
The claimed subject matter “relates to railroad freight cars and in
particular to a freight car for carrying motor vehicles on multiple levels.”
Spec., para. [0002]. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. In combination with a railroad freight car
body for transporting automobiles, said car body
having a length, a deck having a selectively
raisable end portion comprising:
(a) a core oriented lengthwise along said
length of said car body; and
(b) a skin of fiber reinforced plastics
adhered to and surrounding said core, wherein said
core has a density less than that of said skin of
fiber reinforced plastics, and wherein said skin of
fiber reinforced plastics has a bottom surface.
ANALYSIS
Appellant argues independent claims 1, 14 and 15 as a group (App.
Br. 6, 7) and does not present any separate arguments for the patentability of
dependent claims 2-13, 16 and 17 apart from independent claim 1 (App. Br.
5-15). As such, we treat claims 1-17 as argued as a single group and select
independent claim 1 as the representative claim in accordance with 37
C.F.R. § 41.37(c)(1)(vii)(2011).
The Examiner’s view is that Saxton discloses all of the features of the
deck for an automobile-carrying railcar recited in independent claim 1
except for the raisable end portion of the deck being constructed of a core
surrounded by a skin of fiber reinforced plastics. Ans. 3. The Examiner
finds that Beckerman “discloses a composite plate comprised of a skin and a
core for supporting vehicles over openings in the ground surface.” Id. The
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Examiner concludes it would have been obvious to one of ordinary skill in
the art to make the movable deck of Saxton of composite materials as taught
by Beckerman with the expected result of lightening the deck. Ans. 4.
Appellant argues that Thoman1, a third reference which is of record in
the present application but not relied on by the Examiner, teaches away from
constructing a suspended section of a deck from a composite material. App.
Br. 5, 7, 12-14. Appellant asserts that Thoman discloses that a “composite
material, if supporting cargo, must have a metal substructure beneath it so as
to horizontally distribute the load carried upon the composite material.”
App. Br. 7 (citing Thoman, col. 11, l. 67-col. 12, l. 4; col. 12, ll. 34-42)
(emphasis added). From this, Appellant concludes that Thoman would lead
one of ordinary skill in the art away from the claimed invention because the
design requirements of automobile-carrying railcar decks prevent inclusion
of supporting substructure. App. Br. 7.
Contrary to Appellant’s contention, Thoman does not teach that
composite structure supporting cargo must have a supporting substructure.
The passages of Thoman referred to by Appellant merely describe the
substructure (particularly stringers 230) supporting the floor 100 and do not
indicate that such structure is an unconditional requirement. See Thoman,
col. 11, l. 67-col. 12, l. 4; col. 12, ll. 34-42. In fact, Thoman states “[f]or
some applications, railway car underframe 200 preferably includes a
plurality of longitudinal stringers 230,” which indicates that the stringers are
not necessary for all applications. Thoman, col. 11, ll. 11-12 (emphasis
added). Thoman thus merely expresses a preference for using a supporting
substructure in some applications and does not criticize, discredit, or

1 US 6,138,580, iss. Oct. 31, 2000.
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discourage the use of composite floors without such substructure. As such,
Thoman does not teach away from combining the teachings of Saxton and
Beckerman. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away,
however, if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).”). Therefore, Appellant’s arguments regarding Thoman
are not persuasive.
Appellant also argues that the Examiner’s rejection is improper
because the composite material of Beckerman is unrelated and not relevant
to railcar decks. App. Br. 5-6, 7. Appellant cites the 37 C.F.R. § 1.132
Declaration of the inventor, James J. Jarvis (hereinafter, the “Jarvis
Declaration”), as evidence that Beckerman’s composite material is not
relevant to automobile-carrying railcar decks. App. Br. 7-8 (citing Jarvis
Decl. 4).
We are not persuaded by this argument or the declaratory evidence.
As noted by the Examiner, the roadway cover plate disclosed by Beckerman
is relevant to automobile-carrying railcar decks because both structures
support vehicles. Ans. 4. We disagree with Appellant’s contention that this
statement by the Examiner is a “non sequitur” (App. Br. 10 n.2; Reply Br. 5)
or “absurd” (Reply Br. 7). One of ordinary skill would consider the
teachings of Beckerman in connection with Saxton and would not have
disregarded the proposed combination simply because the roadway cover
plate of Beckerman and the railcar deck of Saxton provide slightly different
automobile-carrying functions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
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398, 420 (2007) (finding error in assuming “a person of ordinary skill
attempting to solve a problem will be led only to those elements of prior art
designed to solve the same problem”). Thus, the Jarvis Declaration is not
persuasive when balanced against the disclosure in Beckerman of using
composite panels to support automobiles.
Furthermore, Appellant’s argument and the Jarvis Declaration are
based on the inaccurate supposition that Beckerman is limited to roadway
cover plates. See App. Br. 7 (Beckerman “discloses the use of a
compositely-constructed plate to cover an opening in the road”); Jarvis
Decl., para. 9 (“[t]he composite roadway covers disclosed in Beckerman are
not relevant to the design of automobile-carrying decks of railcars”).
Beckerman discloses structural composite panels 10 that “are particularly
suitable for use as roadway opening cover plates” and are provided with
anchor holes 23 “when such use is contemplated.” Beckerman, col. 6, ll. 3-
7. As such, Beckerman contemplates that the structural composite panels
can be used in applications other than roadway cover plates. In fact, the
Background of the Invention section of Beckerman describes a variety of
applications for fiber reinforced composites, including “floors of railroad
cars.” Beckerman, col. 1, ll. 60-64.
Appellant further attacks the rejection of claim 1 on the basis that the
composite material of Beckerman is not an appropriate material from which
to construct an automobile-carrying railcar deck. App. Br. 5. Specifically,
Appellant relies on the Jarvis Declaration as evidence that: (i) an
automobile-carrying railcar deck made of the composite material of
Beckerman would fail if having a thickness dictated by railcar design
tolerances, (ii) it would not be feasible to increase the thickness of a
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Beckerman composite panel to provide sufficient strength and rigidity, and
(iii) the composite panels of Beckerman lack the resistance to fatigue needed
in an automobile-carrying deck. App. Br. 8 (citing Jarvis Decl. 4-5); see
also Reply Br. 4-5.
However, we find no factual evidence in the Jarvis Declaration, such
as engineering calculations or comparative testing of Beckerman’s disclosed
composite materials, to support the opinion that the composite panels of
Beckerman likely would fail if used in automobile-carrying railcar deck.
Nor is there any factual evidence supporting the opinion that the material of
Beckerman would not be expected to have the necessary resistance to
fatigue. The lack of factual evidence with respect to resistance to fatigue is
particularly conspicuous given the Declarant’s statement that testing is
essential “because the resistance to fatigue of any particular design of
composite-constructed material is unpredictable.” Jarvis Decl., para. 8.
Therefore, we find that the opinion evidence in the Jarvis Declaration is
entitled to little, if any, weight. See In re Am. Acad. Of Sci. Tech. Ctr., 367
F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations.”).
In addition, the opinion evidence relied on by Appellant is based on
the Declarant’s consideration of only one particular embodiment described
in Beckerman; that is, the composite roadway covers that “are approximately
5’ square,” “are bolted down to the roadway on each side” and are “2”
thick.” Jarvis Decl., para. 9. However, Beckerman describes this
embodiment as only a “typical” roadway cover (col. 6, l. 14), and, as noted
supra, Beckerman’s disclosure is not limited to just roadway covers.
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Moreover, the Examiner relies on Beckerman for teaching that automobile-
supporting plates can be made of composite materials.2 Final Rej. 4.3 The
rejection is not based on replacing Saxton’s movable deck portion with the
specific composite roadway cover disclosed by Beckerman, so whether the
specific roadway cover would be unsuitable for use as an automobile-
carrying railcar deck is not probative of whether Beckerman would cause
one of ordinary skill to modify Saxton in the manner proposed. “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.” In re Keller, 642
F.2d 413, 425 (CCPA 1981) (citations omitted). The Examiner states “one of
ordinary skill would understand the need to accommodate the size and
dimension of the car and modify the movable deck of the car as needed.”
Final Rej. 4. We agree with the Examiner. An obviousness analysis “need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418. Furthermore, “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” Id. at 421.

2 We note that the actual language used by the Examiner is that Beckerman
is used “as a teaching to show that composite plates can be made of a
composite material.” We understand this statement, when taken in context,
to say that Beckerman teaches an automobile-supporting plate can be made
of a composite material.
3 As used herein, “Final Rej.” refers to the Office Action mailed March 27,
2009.
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For these reasons, we determine the Jarvis Declaration does not
sufficiently establish that the composite material of Beckerman is unsuitable
for use in an automobile-carrying railcar deck. We are thus not persuaded
by Appellant’s argument on this point.
Appellant also argues that the Examiner’s rejection lacks a supporting
rationale of obviousness. App. Br. 9-12. Appellant asserts that the
Examiner’s rejection is supported only by improper conclusory statements
(App. Br. 9) and lacks the required “predictability of success” (App. Br. 10
n.2, 12; Reply Br. 4). We disagree. The rationale given by the Examiner in
concluding that it would have been obvious to modify Saxton as taught by
Beckerman is that the modification would produce “the expected result of
lightening the deck.” Ans. 4. Given that Beckerman does disclose that use
of composite materials provides reduced-weight structures (col. 1, ll. 7-13;
col. 2, ll. 10-12), the Examiner’s rationale provides adequate reasoning
based on rational underpinnings to explain why one of ordinary skill would
have been led to modify Saxton in the manner proposed.
Accordingly, for the reasons stated above, we do not find Appellant’s
arguments persuasive and sustain the Examiner’s rejection of claim 1 as
obvious over Saxton and Beckerman. Claims 2-17 fall with claim 1.
DECISION
The Examiner’s rejection of claims 1-17 under 35 U.S.C. § 103(a) as
being unpatentable over Saxton and Beckerman is affirmed.

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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
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