Ex Parte Kerr et al

Patent Trial and Appeal Board

Aug 19, 2016

13343442 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/343,442 01/04/2012 Andrew Kerr
35161 7590 08/22/2016
DICKINSON WRIGHT PLLC
1825 Eye St., NW
Suite 900
WASHINGTON, DC 20006
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.
58092-88 4227
EXAMINER
PATEL, KIRANB
ART UNIT PAPER NUMBER
3612
MAILDATE DELIVERY MODE
08/22/2016 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 ANDREW KERR, GLEN NAYLOR, PAUL CANTIN,
TOMASZ CYCHOWSKI, KRISTOPHER EGILSON, and
JORDAN FAST
Appeal 2014-006827 1,2
Application 13/343,442
Technology Center 3600
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 18, 19, and 27-29. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Specification ("Spec.," filed Jan 4,
2012), Appeal Brief ("Appeal Br.," filed Mar. 26, 2014), and Reply Brief
("Reply Br.," filed May 26, 2014), as well as the Examiner's Answer
("Answer," mailed May 8, 2014).
2 According to Appellants, "[t]he real party in interest is New Flyer
Industries Canada ULC." Appeal Br. 3.
Appeal2014-006827
Application 13/343,442
According to Appellants, "the invention relates to bus cabin structures
having lower floors and upper floors, with transition floor modules
therebetween, the transition modules having central aisles with recessed
steps and angled front walls." Spec. i-f 1. We reproduce claim 18, below,
which is the only independent claim under appeal and is representative of
the appealed claims.
18. A bus cabin structure having a curbside wall including at
least one door frame comprising a pair of vertical door posts, and
a horizontal door header with rounded top comers merging the
header and door posts in a continuously formed inverted U-shape
free of structural joints.
Appeal Br., Claims App.
REJECTION AND PRIOR ART
The Examiner rejects claims 18, 19, and 27-29 under 35 U.S.C.
§ 103(a) as unpatentable over Perkins (US 2,356,690, iss. Aug. 22, 1944)
and Nakamura (US 7,913,505 B2, iss. l'vfar. 29, 2011). See Answer 3--4.
ANALYSIS
Based on our review of the file history, including the Examiner's
Answer and Appellants' Appeal and Reply Briefs, we determine that the
claims are obvious based on Perkins and Nakamura, and, thus, we sustain
the rejection of every claim. Further, because of the strength of the
obviousness rejection, after our review, we remain unpersuaded by
Appellants' evidence of secondary considerations.
Appellants argue that "[n]owhere does the cited art teach a bus cabin
structure including at least one door frame having rounded top comers
merging the header and door posts in a continuously formed inverted U-
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Application 13/343,442
shape." Appeal Br. 11; see also id. at 11-13. We agree with the Examiner,
however, that it would have been obvious to modify Perkins, which
discloses a bus cabin door frame fabricated from vertical door posts and a
horizontal door header, so as to be a one-piece inverted-U-shaped frame as is
taught by Nakamura (see Answer 3--4), inasmuch as "[i]t [ wa]s well known
... to eliminate comer joint failure because of stress [by] incorporat[ing] a
curvature/radius at the comer joint" as taught by Nakamura (see id. at 4--5,
citing Nakamura col. 2, 1. 62---col. 3, 1. 12).
Appellants argue that the rejection is erroneous because there is no
apparent reason to modify Perkins based on Nakamura. See Appeal
Br. 13-14. In KSR, the Supreme Court discussed circumstances in which a
patent might be determined to be obvious without an explicit teaching,
suggestion, or motivation provided by the prior art. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398 (2007). In particular, the Supreme Court
reaffirmed that "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." KSR at 416. Further, the Court stated that when considering
obviousness "the 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 at 418. In this case, the Examiner relies on Nakamura
to disclose that it was well known to provide a radiused, one-piece part to
eliminate failures associated with comer joints of a multi-piece structure.
Thus, despite Appellants' argument to the contrary, the Examiner's proposed
modification amounts to the use of a well-known structure in a way that
would yield a well-known and predictable result.
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Application 13/343,442
Finally, Appellants argue that their evidence demonstrates a long-felt
need for the claimed structure, that the claimed structure is counterintuitive,
and that the claimed structure solves problems that others have been unable
to solve, thereby negating the Examiner's conclusion that the claimed
structure is obviousness. See Appeal Br. 18-23. Although evidence
pertaining to secondary considerations must be taken into account, such
evidence does not necessarily control the obviousness conclusion. See, e.g.,
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) ("the
record establish[ ed] such a strong case of obviousness" that allegedly
unexpectedly superior results were ultimately insufficient to overcome
obviousness conclusion). Facts established by rebuttal evidence must be
evaluated along with the facts on which the conclusion of a prima facie case
was reached, not against the conclusion itself. See In re Eli Lilly & Co., 902
F.2d 943 (Fed. Cir. 1990). "[E]vidence that has been presented ... should
not be ignored, but rather should be considered on the record. However, not
all evidence need be accorded the same weight." Manual of Patent
Examining Procedure§ 2145 (8th Ed. Rev. 9, 2012). In this case, we
determine that the Examiner establishes a strong case of obviousness-as
discussed above, we determine that Appellants' stn1cture results from
modifying a multi-piece structure to be a one-piece structure that includes
sections that are radiused to avoid stress failures, which was a well-known
reason for including radiused sections.
Nonetheless, Appellants rely on an affidavit by inventor Glen Naylor
to establish long-felt, unresolved need for Appellants' claimed structure, and
that Appellants' claimed structure is counterintuitive. See Appeal
Br. 14--23; citing Affidavit of Glen Naylor dated Apr. 3, 2013 ("Affidavit").
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Application 13/343,442
We are not persuaded by the Affidavit, however. For example, even
assuming we accept as true Mr. Naylor's statements that bus cabin door
frames constructed as multi-piece welded structures are subject to failure
while frames constructed as claimed are not subject to failure (see Appeal
Br. 17-22, citing Affidavit i-fi-f 10-18), such is not evidence of a long-felt
need for door frames that are not subject to failure. Rather, even if we
further agree with Mr. Naylor's statements that frames constructed from
multiple pieces are less expensive to fabricate but more expensive to
maintain, while frames constructed as claimed are more expensive to
fabricate and less expensive to maintain and also are less expensive overall,
it may simply be a preference on the part of purchaser or manufacturers to
buy or sell a bus for an initial lower cost while deferring some costs to a
later date. Appellants' newspaper article is no more convincing of error.
Further, neither the Affidavit nor the article convinces us that the claimed
structure is counterintuitive, as opposed to being a choice made by
purchasers or manufacturers for the reasons set forth above, for example.
None of Appellants' other evidence is persuasive of error.
Thus, based on the foregoing, we sustain the obviousness rejection of
claims.
DECISION
We AFFIRM the Examiner's rejections of claims 18, 19, and 27-29
under 35 U.S.C. § 103(a).
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Appeal2014-006827
Application 13/343,442
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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