Ex Parte Nelson

Board of Patent Appeals and Interferences

Nov 24, 2008

09961483 (B.P.A.I. Nov. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________ 6
7
Ex parte JAMES J. NELSON 8
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10
Appeal 2008-3051 11
Application 09/961,483 12
Technology Center 3600 13
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Decided: November 24, 2008 16
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Before JENNIFER D. BAHR, LINDA E. HORNER, and 20
JOHN C. KERINS, Administrative Patent Judges. 21
22
HORNER, Administrative Patent Judge. 23
24
DECISION ON APPEAL 25
STATEMENT OF CASE 26
James J. Nelson (Appellant) appeals the rejection of claims 30 and 27
32-39 under 35 U.S.C. § 134 (2002).1 We have jurisdiction under 35 U.S.C. 28
§ 6(b) (2002). 29
30

1 Claims 1-29, 31, and 40-42 are cancelled.
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SUMMARY OF DECISION 1
We AFFIRM-IN-PART. 2
3
THE INVENTION 4
Appellant's claimed invention relates to a heating control system for 5
the screed of a paving machine (Spec. ¶ 01). The device includes multiple, 6
independently controlled heating elements within a single screed plate to 7
permit selective heating of the plate (Spec. ¶ 05). Claims 30 and 32, 8
reproduced below, are representative of the subject matter on appeal: 9
30. A heating control system for a screed assembly 10
of a paving machine, the screed assembly 11
including a plurality of screed plates, said heating 12
control system comprising: 13
a first heating element operatively 14
positioned with respect to one of the plurality of 15
screed plates; 16
a second heating element operatively 17
positioned with respect to the same one of the 18
plurality of screed plates as the first heating 19
element, the first and second heating elements both 20
being configured to apply heat to the same one of 21
the plurality of screed plates; 22
an electrical power supply; 23
a plurality of switches, each operable to 24
selectively electrically connect said power supply 25
to the first heating element and to the second 26
heating element; 27
a controller connected to said plurality of 28
switches to selectively operate said plurality of 29
switches to selectively connect said power supply 30
to the first and second heating elements such that 31
only one of the first heating element and the 32
second heating element is energized at a time; and 33
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a warm-up switch, operable to cause the 1
controller to simultaneously energize both the first 2
heating element and the second heating element. 3
32. A heating control system for heating a single 4
screed plate selected from among a plurality of 5
screed plates included on a paving machine screed, 6
comprising: 7
a first heating element operatively 8
positioned with respect to the single screed plate; 9
a second heating element operatively 10
positioned with respect to the same single screed 11
plate as the first heating element, the first and 12
second heating elements both being configured to 13
apply heat to the single screed plate; and 14
a controller configured to selectively 15
energize the first heating element and the second 16
heating element such that there is at least some 17
period of time when heat is applied to the single 18
screed plate from only one of the first heating 19
element and the second heating element. 20
21
THE REJECTIONS 22
The Examiner relies upon the following evidence: 23
Erasmus US 6,421,594 B1 Jul. 16, 2002
24
Appellant seeks our review of the following rejections: 25
1. The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as being 26
unpatentable over Erasmus and the knowledge of a person of ordinary skill 27
in the art. 28
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2. The Examiner rejected claims 32-39 under 35 U.S.C. § 102(b) as 1
anticipated by Erasmus.2 2
ISSUES 3
The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as 4
unpatentable over Erasmus and rejected claims 32-39 under 35 U.S.C. 5
§ 102(b) as anticipated by Erasmus (Ans. 3-4). For both rejections, 6
Appellant contends Erasmus does not disclose a single screed plate from 7
among a plurality of screed plates, where the single screed plate has multiple 8
heating elements that can be selectively energized (App. Br. 6-10). 9
The issues before us are: 10
Has Appellant shown the Examiner erred in concluding that it would 11
have been obvious to one having ordinary skill in the art at the time of the 12
invention to make such a single screed plate in view of the teachings of 13
Erasmus? 14
Has Appellant shown the Examiner erred in finding that Erasmus 15
discloses a single screed plate from among a plurality of screed plates, where 16
the single screed plate has multiple heating elements that can be selectively 17
energized? 18
19
FINDINGS OF FACT 20
We find that the following enumerated facts are supported by at least 21
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 22

2 While the Examiner cites to 35 U.S.C. § 102(b) as the basis for this
rejection, it appears that the appropriate basis for the rejection is 35 U.S.C.
§ 102(e).
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1427 (Fed.Cir. 1988) (explaining the general evidentiary standard for 1
proceedings before the Office). 2
1. Erasmus describes a method of heating the paving screed 3
of a road finisher (Erasmus, col. 1, ll. 6-7). 4
2. Erasmus discloses a paving screed with a plurality of 5
electrical heating elements (Erasmus, col. 1, ll. 6-12). 6
3. Erasmus describes a microprocessor management section 7
M within control device C that monitors the operational 8
parameters of the paving screed and controls the heating 9
elements through a plurality of relays (Erasmus, col. 4, ll. 10
21-24; col. 3, ll. 41-45; see also S1 and S2 in Figure 2). 11
4. Erasmus teaches the working components of a paving 12
screed may be comprised of: tamper bars, smoothing 13
sole plates, and occasionally, pressing bars, all of which 14
must be heated (Erasmus, col. 3, ll. 35-38). 15
5. Erasmus teaches several combinations of smoothing sole 16
plates may be incorporated into the paving screed 17
including: 18
a. a paving screed comprised of left and right 19
paving “screed halves“ (Erasmus, claims 5 and 13; col. 2, 20
ll. 20-21; see also screed halves 3 and 4 at Erasmus, col. 21
3, l. 33); and 22
b. a screed comprised of left and right “screed 23
halves”, and additional screed plates designated by 24
Erasmus as “broadening parts“ 5, 6, that are depicted as 25
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extensions of the smoothing sole plates of screed B 1
(Erasmus, col. 4, ll. 50-52; Figure 1). 2
6. Erasmus teaches that various components of the paving 3
screed may be selectively heated (Erasmus, col. 6, ll. 22-4
36). 5
7. Erasmus's device improves efficiency through reduced 6
energy consumption by selectively, rather than 7
simultaneously, energizing heating elements in portions 8
of the paving screed (Erasmus, col. 1, ll. 28-36). 9
8. Erasmus does not expressly teach a smoothing sole plate 10
with a plurality of heating elements within a single plate 11
that are independently controlled within that given plate. 12
9. Appellant's device attempts to solve the problem of 13
inefficient energy use and draining of the power supply 14
by selectively heating portions of the paving screed plate 15
(Spec. ¶¶ 04 & 05). 16
10. A person of ordinary skill in the art, at the time of the 17
invention, would have known that screeds may be 18
composed of a plurality of plates (Spec. ¶ 03). 19
20
PRINCIPLES OF LAW 21
Anticipation 22
“A claim is anticipated only if each and every element as set forth in 23
the claim is found, either expressly or inherently described, in a single prior 24
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 25
628, 631 (Fed. Cir. 1987). 26
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1
Obviousness 2
“Section 103 forbids issuance of a patent when ‘the differences 3
between the subject matter sought to be patented and the prior art are such 4
that the subject matter as a whole would have been obvious at the time the 5
invention was made to a person having ordinary skill in the art to which said 6
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 7
1734 (2007). The question of obviousness is resolved on the basis of 8
underlying factual determinations including (1) the scope and content of the 9
prior art, (2) any differences between the claimed subject matter and the 10
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called 11
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 12
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these 13
questions might be reordered in any particular case, the [Graham] factors 14
continue to define the inquiry that controls.”) 15
In KSR, the Supreme Court emphasized “the need for caution in 16
granting a patent based on the combination of elements found in the prior 17
art,” id. at 1739, and discussed circumstances in which a patent might be 18
determined to be obvious. In particular, the Supreme Court emphasized that 19
“the principles laid down in Graham reaffirmed the ‘functional approach’ of 20
Hotchkiss, 11 How. 248.” KSR, 127 S. Ct. at 1739 (citing Graham, 383 U.S. 21
at 12), and reaffirmed principles based on its precedent that “[t]he 22
combination of familiar elements according to known methods is likely to be 23
obvious when it does no more than yield predictable results.” Id. The Court 24
explained: 25
When a work is available in one field of endeavor, 26
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design incentives and other market forces can 1
prompt variations of it, either in the same field or a 2
different one. If a person of ordinary skill can 3
implement a predictable variation, § 103 likely 4
bars its patentability. For the same reason, if a 5
technique has been used to improve one device, 6
and a person of ordinary skill in the art would 7
recognize that it would improve similar devices in 8
the same way, using the technique is obvious 9
unless its actual application is beyond his or her 10
skill. 11
Id. at 1740. The operative question in this “functional approach” is thus 12
“whether the improvement is more than the predictable use of prior art 13
elements according to their established functions.” Id. 14
15
ANALYSIS 16
1. Rejection of claim 30 under 35 U.S.C. § 103(a) as being unpatentable 17
over Erasmus. 18
Our analysis is guided by the four-part test of Graham. Graham, 383 19
U.S. at 17-18; see also KSR, 127 S. Ct. at 1734 (“While the sequence of 20
these questions might be reordered in any particular case, the [Graham] 21
factors continue to define the inquiry that controls.”) 22
Looking to the scope of the prior art, Erasmus discloses a plurality of 23
screed plates, such as screed halves 3 and 4, and broadening parts 5 and 6 24
(Fact 5). Second, Erasmus teaches a system for providing heat to the 25
plurality of plates (Facts 1-4). Finally, Erasmus teaches that the heating 26
system can selectively energize some heating elements without energizing 27
all (Fact 6). 28
Appellant asserts that the prior art differs from the claimed invention, 29
in that screed halves 3 and 4 of Erasmus each have plural heating elements, 30
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but the plural heating elements on each half are connected to a single relay 1
so that all elements within a given plate turn on and off in unison, and the 2
device cannot selectively energize heating elements within a given single 3
plate (App. Br. 6-9). 4
We agree with Appellant that Erasmus differs from the claimed device 5
in that manner (Fact 8). This does not end the inquiry, however, because the 6
rejection before us is one of obviousness. Thus, we must consider 7
adaptation of Erasmus based on the knowledge of a person of ordinary skill 8
in the art. “The person of ordinary skill in the art is a hypothetical person 9
who is presumed to know the relevant prior art.” In re GPAC, 57 F.3d 1573, 10
1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan 11
Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). We consider the cited 12
prior art as representative of the level of ordinary skill in the art. 13
A person of ordinary skill in the art would have known, based on the 14
teaching of Erasmus, that selective rather than simultaneous heating of 15
screed components improves the efficiency of a paving screed through 16
energy conservation (Fact 7). A person of ordinary skill in the art would 17
also have known that it was common in the art to use a plurality of plates in 18
a screed (Facts 4, 5, and 10). Appellant’s invention sought to address the 19
similar problem of inefficient energy usage: “[h]eating the entire screed 20
plate or several screed plates simultaneously drains the power supply“ (Fact 21
9). 22
The difference between the solution disclosed in Erasmus and the 23
solution claimed by Appellant is that Erasmus selectively heats separate 24
screed plate halves, while Appellant selectively heats a single plate. If, 25
however, the screed halves 3 and 4 of Erasmus were modified to be a single 26
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plate, then portions of that single plate could be selectively heated (elements 1
within a plate could be independently operated rather than in unison). This 2
modification to Erasmus could be accomplished using the same heating 3
elements, relays, and supply lines taught by Erasmus. These components 4
would still operate in the same manner. The only change would be that the 5
heating elements would be mounted on a single plate instead of on two plate 6
halves. 7
The foreseeable result is that the modified device would heat portions 8
of the screed plate independently and alternatingly to conserve energy. This 9
modification is nothing more than the use of a known technique and known 10
components, according to their established function with a predictable 11
outcome. See KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. at 1740. In other 12
words, Appellant's claimed device is created by making the screed halves 3 13
and 4 of Erasmus into a single screed plate. The mere integration of two 14
parts, such as making two screed plates into one, is an obvious variation of 15
the system of Erasmus. See In re Fridolph, 309 F.2d 509, 512-13 (CCPA 16
1962). 17
Appellant alternatively attacks the conclusion of obviousness by 18
pointing out that if the screed halves 3 and 4 of Erasmus are seen as one 19
plate, then that device no longer has a plurality of plates, as required by the 20
claim. This argument is unpersuasive. Erasmus teaches the device may 21
have additional broadening plates, thus giving the device a plurality of plates 22
as required by the claim (Fact 5b), and the use of a plurality of plates in a 23
screed was well known in the art (Facts 4, 5, and 10).3 24

3 Appellant has not presented any objective evidence of secondary
considerations for our review.
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We therefore agree with the Examiner that the claimed subject matter 1
would have been obvious at the time the claimed device was made to a 2
person of ordinary skill in the art in view of the teachings of Erasmus. 3
4
2. Rejection of claims 32-39 under 35 U.S.C. § 102(b) as anticipated by 5
Erasmus. 6
As in the previous argument, Appellant contends the claimed device is 7
not anticipated by Erasmus because Erasmus fails to disclose a single screed 8
plate having heating elements that can be selectively energized, as recited in 9
claim 32 (App. Br. 6). 10
Based on our analysis of the first rejection, supra, we find that 11
Erasmus does not disclose having independently-operable heating elements 12
within a single screed plate (Fact 8). Rather, for the device of Erasmus to 13
meet the limitations of the system of claim 32, it requires an obvious 14
modification. Because we find that Eramus does not disclose every element 15
of the claimed system, we conclude that Appellant has demonstrated that the 16
Examiner erred in the rejection of claim 32 and its dependent claims 33-39. 17
18
CONCLUSIONS 19
Appellant has failed to show that the Examiner erred in rejecting 20
claim 30 under 35 U.S.C. § 103(a) as unpatentable because it would have 21
been obvious to one having ordinary skill in the art to make such a single 22
screed plate in view of the teachings of Erasmus. However, Appellant has 23
shown that the Examiner erred in rejecting claims 32-39 under 35 U.S.C. 24
§ 102(b) as anticipated by Erasmus because Erasmus does not disclose a 25
single screed plate having heating elements that can be selectively energized. 26
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DECISION 1
We affirm the Examiner's rejection of claim 30. We reverse the 2
Examiner's rejection of claims 32-39. 3
No time period for taking any subsequent action in connection with 4
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 5
§ 1.136(a)(1)(iv) (2007). 6
7
AFFIRMED-IN-PART 8
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FINNEGAN, HENDERSON, FARABOW, 17
GARRETT & DUNNER, LLP 18
901 NEW YORK AVENUE, NW 19
WASHINGTON DC 20001-4413 20