Ex Parte Meyer

Board of Patent Appeals and Interferences

Oct 30, 2008

10166635 (B.P.A.I. Oct. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN H. MEYER
____________

Appeal 2008-1858
Application 10/166,635
Technology Center 3600
____________

Decided: October 30, 2008
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and JOHN C.
KERINS, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
John H. Meyer (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 22, 26-30, 32, and 33. Claims 31 and
34 stand objected to as depending from a rejected claim. The Examiner has
withdrawn the rejection of claim 35 under 35 U.S.C. § 112 (Advisory Action
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mailed February 5, 2007) and indicated that it is allowable. No other claims
are pending. We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002).
Independent claims 22, 29, and 32, reproduced below, are illustrative
of the claimed invention.
The Invention
Appellant’s claimed invention is directed to a connection assembly for
connecting shoring beams of a shoring arrangement. As illustrated in Figure
2, the connection assembly includes two connectors 29, 30 having main
bodies 40, 70 with openings to receive shoring beams and connected via a
connecting pin 100 through tabs 32, 34, 36. As illustrated in Figure 1,
Appellant’s disclosure is directed to temporary shoring arrangements for
shoring up an excavation site (Specification 1:4-5).
22. A corner connection for connecting shoring
beams of a temporary shoring arrangement, said
comer connection comprising:
a first shoring beam connector including a
hollow main body portion formed along a first
longitudinal axis and an opening situated at one
longitudinal end of said main body portion,
wherein said main body portion is adapted to
slidably receive, through said opening, a respective
end portion of one of said shoring beams; and
a tab extending from said main body
portion, said tab having an aperture located therein
adapted to receive a connecting pin;
a second shoring beam connector including
a hollow main body portion formed along a second
longitudinal axis and an opening situated at one
longitudinal end of the main body portion of the
second connector, wherein the main body portion
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of the second connector is adapted to slidably
receive, through said opening of the second
connector, an end portion of a respective one of
said shoring beams; and a first tab extending from
the main body portion of the second connector,
said first tab having an aperture located therein
adapted to receive the connecting pin whereby the
first and second shoring beam connectors are
capable of withstanding hydraulic pressure
associated with the temporary shoring
arrangement.
29. An apparatus for joining at least two wales of a
shoring system comprising:
(a) a first substantially rigid end-cap adapted
to enclose an end of a first horizontally disposed
wale, said first end-cap having a horizontally
extending flange with a first vertically disposed
aperture cut there through;
(b) a second substantially rigid end-cap
adapted to enclose an end of a second horizontally
disposed wale, said second end-cap having a
horizontally extending flange with a second
vertically disposed aperture cut there through of
substantially the same diameter of said first
vertically disposed aperture;
(c) a locking pin dimensioned to be
slideably received by said first and second
vertically disposed apertures when said first and
second vertically disposed apertures are in
substantial alignment with one another;
wherein a leading end of said first
horizontally disposed wale and a leading end of
said second horizontally disposed wale are
oriented in substantially perpendicular fashion to
one another and in relative proximity so that said
horizontally extending flange of said first end-cap
and said horizontally extending flange of said
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second end-cap overlap when said first and second
vertically disposed apertures are substantially
aligned with one another to permit said locking pin
to be slideably received therein securing said
apparatus together.
32. An apparatus for joining at least two wales of a
shoring system comprising:
(a) a first substantially rigid end-cap adapted
to engage an end of a horizontally disposed, fixed
length wale, said first end-cap having a
horizontally extending flange with a first vertically
disposed aperture cut there through;
(b) a second substantially rigid end-cap
adapted to engage an end of a second horizontally
disposed, fixed length wale, said second end-cap
having a horizontally extending flange with a
second vertically disposed aperture cut there
through of substantially the same diameter of said
first vertically disposed aperture;
(c) a locking pin dimensioned to be
slideably received by said first and second
vertically disposed apertures when said first and
second vertically disposed apertures are in
substantial alignment with one another;
wherein said first horizontally disposed,
fixed length wale and said second horizontally
disposed, fixed length wale are oriented in
substantially perpendicular fashion to one another
and in relative proximity to one another so that
said horizontally extending flange of said first end-
cap and said horizontally extending flange of said
second end-cap overlap when said first and second
vertically disposed apertures are substantially
aligned with one another to permit said locking pin
to be sideably [sic: slideably] received therein
securing said apparatus together whereby said first
and second wales, when respectively capped with
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said first and second end-caps, are interconnected
in the absence of welding.
The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Kranick US 2,690,326 Sep. 28, 1954
Reid US 4,208,038 Jun. 17, 1980
French US 4,398,840 Aug. 16, 1983
Ferrarin US 5,593,143 Jan. 14, 1997
Purvis US 5,683,074 Nov. 4, 1997
Harris GB 2,166,774 A May 14, 1986

The following rejections under 35 U.S.C. § 102(b) are before us for
review.
(1) Claims 22, 27, 29, 30, 32, and 33 as anticipated by French;
(2) Claims 22, 27, 29, 30, 32, and 33 as anticipated by Reid;
(3) Claims 22, 27, 29, 30, 32, and 33 as anticipated by Purvis;
(4) Claims 22, 26-30, 32, and 33 as anticipated by Ferrarin; and
(5) Claims 22, 27, 29, 30, 32, and 33 as anticipated by Kranick.
The following rejections under 35 U.S.C. § 103(a) are also before us
for review.
(6) Claims 26 and 28 as unpatentable over French in view of Harris
and
(7) Claims 26 and 28 as unpatentable over Reid in view of Harris.
We refer to the Examiner’s Answer (“Answer”), mailed October 19,
2007 for the Examiner’s position and to the Appeal Brief (“Appeal Br.”),
filed February 28, 2007, and Reply Brief (“Reply Br.”), filed November 29,
2007, for the Appellant’s position with regard to these rejections.

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THE ISSUES
The issues in this appeal are:
• whether the connectors for fencing taught in French, Reid, Ferrarin,
and Kranick, and the connectors for a temporary guardrail system of
Purvis are “shoring beam connectors” and “capable of withstanding
hydraulic pressure associated with the temporary shoring
arrangement” as called for in claim 22;
• whether claims 29 and 32 actually require wales and, if so, whether
the frame members, fence rails, guardrails, fence posts, and braces
of French, Reid, Purvis, Ferrarin, and Kranick are “wales”; and
• whether the Examiner erred in determining it would have been
obvious to add a second tab to the French or Reid connector, in view
of Harris.

FINDINGS OF FACT
FF1 Appellant does not define “shoring beam” or “shoring beam
connector” in the Specification or in the briefs.
FF2 Appellant’s Specification indicates that federal and state governments
have set up requirements for all excavation sites to avoid cave-ins, but
does not specify what those requirements are, aside from the
requirement that “excavation sites be prepared with some type of
shoring” (Specification 2:1-6).
FF3 Each excavation site is unique (Specification 2:10 to 3:24).
FF4 Neither Appellant's claims nor Appellant's Specification limits the
scope of the invention to particular shoring arrangement depths or
conditions.
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FF5 Appellant has presented no evidence that a “shoring beam” or
“shoring beam connector” has an art-recognized definition that
specifies a minimum magnitude, type, or direction of force that it
must withstand.
FF6 The ordinary and customary meaning of “shore” is: “a supporting
post or beam with auxiliary members, esp. one placed obliquely
against the side of a building, a ship in drydock, or the like; prop;
strut” or “to support by or as if by a shore or shores; prop (usually fol.
by up): to shore up a roof; government subsidies to shore up falling
corn prices.” http://dictionary.reference.com/browse/shore (last
visited Oct. 13, 2008).
FF7 Appellant does not use the term “wale” in the Specification, much less
define it.
FF8 The ordinary and customary meaning of “wale” is “Engineering,
Building Trades. a horizontal timber or other support for reinforcing
various upright members, as sheet piling or concrete form boards, or
for retaining earth at the edge of an excavation.”
http://dictionary.reference.com/browse/wale (last visited Oct. 13,
2008).
FF9 Appellant copied claims 29-34 from US Patent 6,267,538 (claims 1-3
and 5-7), now expired.
FF10 French teaches a frame connection assembly for a fence gate which
enables positioning the frame members of the gate at preselected
angles relative to one another so as to minimize gaps between the gate
and the supporting surface (col. 1, ll. 6-11).
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FF11 French's connection assembly includes first and second brackets 22,
22' each comprising a receptacle 24, 24' and a connector member 30,
30". The connector members have openings 34, 36 and 38, 38'
formed therein for passage of bolt 42. (French, figs. 1-3.)
FF12 French’s receptacles 24, 24' receive frame members 12, 14,
respectively (French, col. 3, ll. 9-15, col. 3, ll. 59-62, fig. 1).
FF13 Reid teaches a connector assembly for connecting fence rails 11
together, the connector assembly including two end caps 13 for
receiving rails 11, with lugs 14 provided on each end cap (Reid, col.
2, ll. 36-47, figs. 1 and 6). Lugs 14 have openings formed therein for
receipt of a nut and bolt assembly 15 (col. 2, ll. 54-55, figs. 4 and 5).
FF14 Reid teaches alignment of the lug openings for receipt of bolt
assembly 15 in an orientation such that the rails received in the end
caps 13 are oriented perpendicularly relative to one another (figs. 1, 3,
5, and 6).
FF15 Purvis teaches a temporary guardrail system comprising rails 16
including hollow external segments 16e adapted to receive internal
rail segments 16d (Purvis, col. 5, ll. 11-13). Each external rail
segment 16e has an extension bracket 16c attached thereto by means
such as weldment, with a mounting aperture 16f formed in the
extension bracket for receipt of a threaded fastening stud 19 (Purvis,
col. 4, ll. 59-65; fig. 7).
FF16 As illustrated in Figure 2, Purvis’s extension brackets permit rail
segments to be connected to one another so as to be oriented
perpendicularly relative to one another when the mounting apertures
are aligned for receipt of a threaded fastening stud therein.
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FF17 Purvis’s guardrail system is designed and fabricated to withstand at
least two hundred pounds of pressure without failing (Purvis, col. 1, ll.
24-29, col. 6, ll. 22-24).
FF18 Ferrarin teaches a fence post connector 46 used to attach braces 20,
22, 24 to each other and to fence posts (Ferrarin, col. 1, ll. 6-8) at any
desired angle, including 90 degrees (col. 5, ll. 9-11).
FF19 Ferrarin’s connector 46 includes collars 60, 62 for receiving the
braces 20 and tabs 74, 76, 84, 86 provided with openings for receipt of
bolt 90 (col. 4, ll. 22-44).
FF20 Ferrarin’s braces are used to generally support the fence to, for
example, prevent animals from breaking out of the fence or support
the weight of snow when the fence is acting as a snow barrier
(Ferrarin, col. 1, ll. 19-23).
FF21 Kranick teaches a connector for attaching bracing frames 61 to fence
posts so as to withstand a strike from a vehicle without damage to the
fence (Kranick, col. 1, ll. 7-10, col. 4, ll. 4-5).
FF22 Kranick’s connector comprises end cap fitting 66 with one or more
apertured lugs 67 and end fitting 70 with apertured end lugs 71
secured by bolts 72 to the lugs 67 of fitting 66 (Kranick, col. 4, ll. 18-
21 and 24-29, fig. 7).
FF23 The connectors of French, Reid, Purvis, Ferrarin, and Kranick
inherently are capable of withstanding some degree of force, whether
from hydraulic pressure or other sources. Otherwise, they could not
function as connectors for holding members in position relative to one
another. The posts, rails, braces, frames, and guard rails of these
references also inherently are capable of withstanding some degree of
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force, whether from hydraulic pressure or other sources. These
capabilities are supported by the express teachings of Purvis, Ferrarin,
and Kranick, as noted in our findings (FF17, FF20, and FF21) above,
that connectors and frame members of fences and guardrails are
designed and fabricated to withstand forces applied thereto.
FF24 Harris teaches a connection arrangement for a waling system
comprising telescopic units A wherein two parallel lugs 5 are
provided on one of the connectors and receive a lug 4 of the mating
connector member therebetween (Harris 1:58-64, fig. 5). The lugs 4,
5 are apertured to permit coupling by heavy duty steel pins 6 (Harris
1:65-67).
FF25 Harris, French and Reid all address the problem of connecting shoring
beams, in one form or another, together, and thus would have
commended themselves to an inventor’s attention in considering the
problem of connecting shoring beams together.

PRINCIPLES OF LAW
When construing claim terminology in the United States Patent and
Trademark Office (USPTO), claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
In considering the issue of whether a claim copied from an issued
patent is patentable in light of prior art, the PTO must interpret the claim in
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light of the specification in which it appears. Rowe v. Dror, 112 F.3d 473,
479 (Fed. Cir. 1997).
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, there must be no
difference between the claimed invention and the reference disclosure, as
viewed by a person of ordinary skill in the field of the invention. Scripps
Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir.
1991). It is not necessary that the reference teach what the subject
application teaches, but only that the claim read on something disclosed in
the reference, i.e., that all of the limitations in the claim be found in or fully
met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772
(Fed. Cir. 1983).
Section 103 forbids issuance of a patent
when “the differences between the subject matter
sought to be patented and the prior art are such that
the subject matter as a whole would have been
obvious at the time the invention was made to a
person having ordinary skill in the art to which
said subject matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 1739.
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
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bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740. We must ask whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id.
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. In re Clay, 966
F.2d 656, 658-59 (Fed. Cir. 1992).
“A reference is reasonably pertinent if, even
though it may be in a different field from that of
the inventor's endeavor, it is one which, because of
the matter with which it deals, logically would
have commended itself to an inventor's attention in
considering his problem.” In other words,
“familiar items may have obvious uses beyond
their primary purposes.”
In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007)
(citations omitted).

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ANALYSIS
The Anticipation Rejections
Appellant’s arguments in contesting each of the five anticipation
rejections are essentially the same. Appellant presents arguments with
respect to each of the independent claims 22, 29, and 32, with the dependent
claims standing or falling with the independent claim from which they
depend.1
Turning first to independent claim 22, Appellant argues that the
Examiner fails to accord the terminology “shoring beam connector” the
ordinary and customary meaning it would have to a person of ordinary skill
in the art (Appeal Br. 8-9, 14-15, 20-21, 27, and 32; Reply Br. 2, 4, 6, 8, and
10). According to Appellant, shoring beams are well known in the
construction/excavation arts as having a certain strength and size to
withstand substantial loads, and the shoring beam connectors, tabs, and pin
must likewise comprise structure sufficient to support such shoring beams
(Appeal Br. 7, 13, 19, 25, and 31). Appellant’s position is that French’s
fence gate frame members, Reid’s fence rails, Purvis’s guardrails, Ferrarin’s
fence braces and posts, and Kranick’s bracing frames and posts are not
“shoring beams” and that, consequently, the connector members of these
references are not “shoring beam connectors.” Appellant additionally argues
that the Examiner fails to construe the limitation in claim 22 that the shoring

1 Appellant does not specifically mention claims 26 and 28 in the arguments
presented for rejection (4). This is ostensibly an inadvertent error, in light of
the inclusion of claims 26 and 28 in the main heading for the arguments
directed to this rejection (Appeal Br. 23). We therefore credit Appellant’s
argument directed to claims 22 and 27 as also being directed to claims 26
and 28, which also depend from independent claim 22.
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beam connectors be “capable of withstanding hydraulic pressure associated
with the temporary shoring arrangement” in light of Appellant’s
Specification and the plain meaning of “temporary shoring arrangement”
(Appeal Br. 8, 14, 20, 26, and 32-33).
Appellant does not specifically define “shoring arrangement,”
“shoring beam,” or “shoring beam connector” in either the Specification or
the Appeal Brief or Reply Brief as being limited to particular shoring
arrangement depths or conditions or to structures capable of withstanding a
specified minimum magnitude, type, or direction of force (FF1 through
FF4). Moreover, Appellant has presented no evidence that a “shoring beam”
or “shoring beam connector” has an art-recognized definition that specifies a
minimum magnitude, type, or direction of force that it must withstand (FF5).
We therefore construe “shoring beam” consistent with Appellant’s
Specification and in accordance with its accepted meaning in the art as a
post or beam that props up or provides support to a structure (FF6). We
likewise construe a “temporary shoring arrangement” as an arrangement
wherein posts or beams are used to prop up or provide support to a structure.
French’s fence gate frame members, Reid’s fence rails, Purvis’s
guardrails, Ferrarin’s fence braces and posts, and Kranick’s bracing frames
and posts are posts or beams that prop up or provide support to fencing or
guardrail structures in which they are incorporated (FF10 through FF22).
Moreover, the connectors and the fence posts, braces, and guardrails of these
references are capable of receiving some degree of force, whether from
hydraulic pressure or other sources (FF23). Claim 22 does not specify the
magnitude or direction of hydraulic pressure that the connectors must be
capable of withstanding. Therefore, each of the connectors of French, Reid,
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Purvis, Ferrarin, and Kranick is a “shoring beam connector” that is “capable
of withstanding hydraulic pressure associated with the temporary shoring
arrangement” as called for in claim 22.
Appellant objects that the Examiner construes the term “shoring beam
connector” differently in the present application than in another application
that ultimately issued as US 6,416,259 (Appeal Br. 7, 13, 19-20, 25-26, and
32). This line of argument is unconvincing. We are not constrained by the
Examiner’s prior position in construing the term “shoring beam.” Nor is the
construction of claim terminology accorded by an examiner in one
application or patent controlling in another application. Rather, as noted
above, when construing claim terminology in the USPTO, we must give
claims their broadest reasonable interpretation consistent with the
specification, reading claim language in light of the specification as it would
be interpreted by one of ordinary skill in the art. Claims are not to be
interpreted during proceedings in the USPTO “in the same manner as judges
who, post-issuance, operate under the assumption the patent is valid.” To do
so would be inconsistent with the role assigned to the USPTO in issuing
patents. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). For the
reasons discussed above, we find no error in the Examiner’s interpretation of
“shoring beam connector” in light of Appellant’s Specification.
In light of the above, Appellant’s arguments fail to demonstrate error
in the rejections of claim 22 or the dependent claims standing or falling with
claim 22 as anticipated by French, Reid, Purvis, Ferrarin, and Kranick. We
thus sustain the rejections of claims 22 and 27 as anticipated by French,
Reid, Purvis, and Kranick and the rejection of claims 22 and 26-28 as
anticipated by Ferrarin.
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Turning next to independent claim 29, Appellant argues that none of
French, Reid, Purvis, Ferrarin, and Kranick discloses “shoring systems
having first and second end-caps with horizontally extending flanges
‘wherein a leading end of [a] first horizontally disposed wale and a leading
end of [a] second horizontally disposed wale are oriented in substantially
perpendicular fashion’ as is required by claims 29 and 30” (Appeal Br. 10,
16, 22, 28, and 34). Likewise, with respect to independent claim 32,
Appellant argues that none of French, Reid, Purvis, Ferrarin, and Kranick
discloses “shoring systems having first and second end-caps with
horizontally extending flanges ‘wherein [a] first horizontally disposed, fixed
length wale and [a] second horizontally disposed, fixed length wale are
oriented in substantially perpendicular fashion to one another and in relative
proximity to one another’ as is required by claims 32 and 33” (Appeal Br.
11, 17, 23, 29, and 35). According to Appellant, the Examiner fails to give
the term “wale” its ordinary and customary meaning in the art (Appeal Br.
10, 11, 16, 17, 22, 23, 28, 29, 34, and 36).
Appellant’s arguments are not commensurate with the scope of claims
29 and 32. Specifically, neither claim 29 nor claim 32 positively recites a
shoring system. Rather, claims 29 and 32 are directed to an “apparatus for
joining at least two wales of a shoring system.” Nor does either claim 29 or
claim 32 positively recite a wale. The final paragraph of each of claims 29
and 32 is merely functional language setting forth a structural relationship
that must be achievable by the first and second end caps and locking pin of
the apparatus for joining at least two wales. Each of French (FF10), Reid
(FF14), Purvis (FF16), Ferrarin (FF18), and Kranick (FF22) either expressly
teaches alignment of the mounting openings or apertures for receipt of a
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mounting bolt or stud in an orientation such that the posts, rails, or braces
received in the connectors are oriented perpendicularly relative to one
another or at least teaches connector pairs having such capability.
Moreover, the connectors and posts, rails, frame members, and braces of
French, Reid, Purvis, Ferrarin, and Kranick support the fence or guardrail
system against applied forces (FF23) and thus comprise a shoring system as
that term is ordinarily and customarily understood (FF6).
Moreover, even assuming the “wales” alluded to in the final
paragraph of claims 29 and 32 are positively recited as part of the claimed
invention, the posts, rails, frame members, and braces of French, Reid,
Purvis, Ferrarin, and Kranick are “wales” as we construe that term.
Specifically, as discussed above, Appellant does not even use the term
“wale” in the Specification, much less define it (FF7).2 Nor does Appellant
limit the scope of the invention to structures capable of withstanding a
specified magnitude, type, or direction of force (FF4, FF5). We thus
construe “wale” in accordance with its ordinary and customary definition,
and consistent with the Specification of the present application, as a support
for reinforcing various upright members (FF8). The posts, rails, frame
members, and braces of the applied references certainly meet that definition
in that they are supports for reinforcing the fencing or guardrail systems in
which they are incorporated.

2 The term “wale” was introduced into the application when Appellant
copied claims 29-34 from US Patent 6,267,538 (claims 1-3 and 5-7) (FF9).
As noted above, such claims are interpreted in light of the specification in
which they appear, not the specification of the patent from which they were
copied.
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In light of the above, Appellant’s arguments do not demonstrate error
in the rejections of independent claims 29 and 32 as anticipated by French,
Reid, Purvis, Ferrarin, and Kranick. We sustain the rejections of claims 29
and 32, and claims 30 and 33, which stand or fall with claims 29 and 32,
respectively, as anticipated by French, Reid, Purvis, Ferrarin, and Kranick.

The Obviousness Rejections
In contesting the obviousness rejections, Appellant argues for claims
26 and 28 together as a group. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii) (2007), we select claim 26 to decide the appeal of these
rejections, with claim 28 standing or falling with claim 26.
In rejecting claims 26 and 28 under 35 U.S.C. § 103(a), the Examiner
finds that neither French nor Reid teaches a second tab on one of the
connectors, but contends that it would have been obvious to modify either
French or Reid to include a second tab as taught by Harris to “provide a
robust connection” (Answer 7, 8). Appellant argues that the Examiner fails
to provide proper motivation for either combination (Appeal Br. 37, 41) and
at least implies that Harris is not analogous art to Appellant’s invention
(Appeal Br. 38-39, 42-43). Appellant further argues that the Examiner fails
to set forth any argument for reasonable expectation of success in making
the combination (Appeal Br. 39 and 43). Additionally, Appellant reiterates
the arguments that the Examiner has failed to properly construe the
requirement that the shoring beam connector be “capable of withstanding
hydraulic pressure associated with the temporary shoring arrangement”
(Appeal Br. 40 and 44).
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For the reasons discussed above with respect to the rejections of claim
22, Appellant fails to convince us the Examiner erred in construing the
limitations of shoring beam connectors “capable of withstanding hydraulic
pressure associated with the temporary shoring arrangement.” Nor do we
agree with Appellant that Harris is not analogous art to Appellant’s
invention. First, Harris is directed to a waling system (FF24), which is
squarely within Appellant’s field of endeavor. Second, Harris addresses the
same problem addressed by Appellant, namely, connecting shoring beams
together. In this regard, we also observe that both French and Reid also
address the same problem, namely, connecting shoring beams, in the form of
fence gate frame members and rails, together. Accordingly, Harris, French
and Reid all would have commended themselves to an inventor’s attention in
considering this problem (FF25).
To the extent that Appellant urges us to apply a rigid formula in
obviousness determinations requiring demonstration of a teaching,
suggestion, or motivation to combine known elements, such an approach has
been expressly rejected in favor of a more flexible approach. KSR, 127 S.
Ct. at 1741. While there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of 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.”
Id.
The modification proposed by the Examiner is simply the addition of
a second tab on one of the connector members of either French or Reid to
provide a more robust connection, an expected and predictable result of
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Application 10/166,635

20
increasing the thickness of the structure into which the securing bolt is
received. This is nothing more than the predictable use of prior art elements
according to their established functions. Appellant’s arguments do nothing
to convince us the Examiner erred in determining that the subject matter of
claim 26 would have been obvious.
In light of the above, we sustain the rejections of claim 26, and claim
28 standing or falling with claim 26, as unpatentable over French and Harris
and as unpatentable over Reid and Harris.

DECISION
We sustain all of the Examiner’s rejections. The decision of the
Examiner to reject claims 22, 26-30, 32, and 33 is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

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