Ex Parte Lorenzo et alDownload PDFPatent Trial and Appeal BoardJun 21, 201312258698 (P.T.A.B. Jun. 21, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES M. LORENZO, ROBERT A. PYLES and RAYMOND L. GOODSON ____________ Appeal 2011-004859 Application 12/258,698 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, LYNNE H. BROWNE and MITCHELL G. WEATHERLY, Administrative Patent Judges. BROWNE, Administrative Patent Judge DECISION ON APPEAL Appeal 2011-004859 Application 12/258,698 2 STATEMENT OF THE CASE James M. Lorenzo et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Claim 1 is reproduced below: 1. A method of mounting a blast-resistant barrier comprising attaching the barrier to a semi-rigid metallic frame along a first two parallel sides of the barrier with a second two parallel sides being unconstrained, wherein the barrier is from about 0.375 inches to about 1.5 inches in thickness and includes at least one polycarbonate sheet. PRIOR ART DeLong US 5,142,997 Sep. 1, 1992 Miller US 6,622,607 B1 Sep. 23, 2003 Martin US 7,493,844 B2 Feb. 24, 2009 GROUNDS OF REJECTION 1. Claims 1-4, 7-15, 17, 18 and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Miller and Martin. 2. Claims 5, 6, 19 and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Miller and DeLong. Appeal 2011-004859 Application 12/258,698 3 OPINION Rejections Based on Miller and Martin Appellants argue claims 1-4, 7-15, 17, 18 and 21 as a group. See App. Br. 3-5. We select independent claim 1 as the representative claim and claims 2-4, 7-15, 17, 18 and 21 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Miller discloses all of the limitations of independent claim 1 except that “Miller fails to disclose the frame as being formed of steel or aluminum, or the barrier as polycarbonate.” Ans. 4. The Examiner finds that Miller discloses the limitations on the manner in which the barrier of claim 1 is mounted to the frame in one of two alternative ways. Id. The Examiner finds that if Miller’s “bottom plate 114 was the only height required or desired, then the upper plate 112 and frame strip 130 could be eliminated, thus leaving a second (top) side of the barrier unconstrained.” Id. This is consistent with Miller’s single-pane/no cross- track embodiment. Miller 3:51-55. Alternatively, the Examiner finds “if the ‘barrier’ is considered the entire bullet resistant pane structure being held by the frame (i.e. panes 112, 114 and cross-track 130) then the basic claimed structure is anticipated since the frame holds the ‘barrier’ on only two sides and has the top and bottom free.” Id. Appellants argue that the Examiner’s first alternative finding that the upper plate 112 and frame strip could be eliminated is speculative and amounts to hindsight reconstruction. See Br. 4. We disagree. Appellants have not explained why the Examiner’s position is unreasonable. Nor have Appellants explained why the Examiner’s alternative reading of Miller discussed supra, does not meet the claim limitations at issue. Accordingly, Appeal 2011-004859 Application 12/258,698 4 Appellants’ argument is unpersuasive. Appellants argue that “the examiner must show reasons that the skilled artisan, confronted with the same problems as the inventor and with no knowledge of the claimed invention, would select the elements from the cited prior art references for combination in the manner claimed.” Br. 4. Appellants’ argument relies upon an incorrect legal standard. It is not necessary for the prior art to serve the same purpose as that disclosed in Appellants’ Specification in order to support the conclusion that the claimed subject matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972); see also KSR Int’l Co., 550 U.S. 398, 419 (2007) (“[N]either the particular motivation nor the avowed purpose of the [Appellants] controls” in an obviousness analysis). Accordingly, Appellants’ argument is not persuasive. Appellants argue that the Examiner has failed to provide a teaching or motivation for eliminating the top panel and frame strip. Br. 4. This argument is foreclosed by KSR, in which the Court rejected the rigid requirement of a teaching or suggestion or motivation to combine known elements in order to show obviousness. KSR Int’l Co., 550 U.S. at 415. The Court noted that 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.” Id. at 418. Appellants argue that Martin’s frame is rigid. The Examiner has relied upon Miller, rather than Martin to teach the semi-rigid frame. See Ans. 4-5. Martin is relied upon merely to teach that use of the claimed materials would have been obvious to one of ordinary skill in the art at the Appeal 2011-004859 Application 12/258,698 5 time of the invention. Id. Appellants’ argument is unconvincing as it is not responsive to the rejection as articulated by the Examiner. For these reasons, we sustain the Examiner’s rejection of claim 1 and claims 2-4, 7-15, 17, 18 and 21 which depend therefrom and were not argued separately. Rejections Based on Miller and DeLong With respect to claims 5, 6, 19 and 20, Appellants argue that “[t]he deficiencies of Miller have been detailed hereinabove . . . Miller fails to teach or suggest the instantly claimed invention. Further, Delong fails to add the missing teaching or suggestion to lead one of ordinary skill in the art to the instantly recited invention.” Br. 6. As we have found no deficiencies in Miller, this argument is not persuasive. For this reason, we sustain the Examiner’s rejection of claims 5, 6, 19 and 20. DECISION The Examiner’s rejections of claims 1-21 are AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED mls Copy with citationCopy as parenthetical citation