Ex Parte Noles et alDownload PDFPatent Trial and Appeal BoardDec 28, 201613693156 (P.T.A.B. Dec. 28, 2016) Copy Citation 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. 03.1017.08 8503 EXAMINER CHU, KING M ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 13/693,156 12/04/2012 53189 7590 Cooke Law Firm 13921 Hwy 105 West #339 Conroe, TX 77304 12/29/2016 Jerry W. Noles JR. 12/29/2016 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 JERRY W. NOLES, JR., DUDLEY J. PERIO, JR., and COLTON P. BRUEGMAN Appeal 2015-001347 Application 13/693,156 Technology Center 3700 Before LINDA E. HORNER, MITCHELL G. WEATHERLY, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jerry W. Noles, Jr. et al. (“Appellants”) seek review under 35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final Office Action dated March 4, 2014 (“Final Act.”) and as further explained in the Advisory Action dated June 23, 2014 (“Adv. Act.”), rejecting claims 1—6 under 35 U.S.C. § 103(a) as unpatentable over Paradis (US 6,115,984, issued Sept. 12, 2000) and Winters (US 4,860,916, issued Aug. 29, 1989). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2015-001347 Application 13/693,156 BACKGROUND The disclosed subject matter “relates to a water storage tank that can be assembled on a work site where there is a need for storing water” and, more specifically, to “a clamp specifically designed to secure the top layer sheet to the upper portion of the wall forming the tank.” Spec. Tflf 1, 5.1 Claim 1, the sole independent claim, is reproduced below: 1. A clamp for securing a flexible sheet extending over a top portion of a tank wall comprising: a first strip of flexible material, a second strip of flexible material spaced from the first strip by a plurality of spacers positioned between the strips at an upper portion thereof, the first strip, second strip and spacers forming an assembly having an open top and open bottom; and means for causing at least one of the strips to flex inwardly thereby clamping the sheet to an upper portion of the tank. DISCUSSION A. Claims 1, 2, and 4—6 Appellants present certain arguments asserting the patentability of all claims as a group. See Br. 6—8. Because Appellants also separately argue claim 3 (see id. at 8), the analysis of the arguments directed to all the claims determines the outcome for claims 1,2, and 4—6. For this group, we select 1 Citations to the Specification refer to the version dated February 25, 2013. 2 Appeal 2015-001347 Application 13/693,156 claim 1 as representative, with claims 2 and 4—6 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). In rejecting claim 1, the Examiner relied on Paradis for various limitations but found that Paradis does not teach “the following claimed limitations that are taught by Winter: means for (assumed to be a threaded rod with nut, specification Page 4, paragraph 0030) causing at least one of the strips to flex inwardly thereby clamping the sheet to an upper portion of the tank (48/49 of Winter).” Final Act. 3.2 3According to the Examiner, it would have been obvious “to modify Barrera such that a nut and a bolt was further provided in order to hold the clamp in place ([Winters,] col. 3,11. 45— 52). Paradis also teaches a fixing aperture (54) for nails, bolts or the like (col. 5,11. 17-19).” Id} First, Appellants contend that “the combined references are from non-analogous art.” Br. 6. Appellants state that Paradis teaches “a runner 10 to maintain at least two studs of a wall in a predetermined relationship” in which “[o]ne runner is attachable to the ceiling of a structure and a second runner is attached to the floor of a structure” and “[s]tuds 12 of a wall are held in place by securing the studs to the runners through apertures 54 by conventional fastening components such as screws, nails, bolts or the like.” Id. (citing Paradis, col. 5,11. 16—19). According to Appellants, “Paradis is not related in any manner to a clamping device as claimed” and “[rjunner 10 2 We understand the Examiner as citing paragraph 30 in the original Specification (dated December 4, 2012), which corresponds to paragraph 31 in the current Specification (dated February 25, 2013). 3 The Examiner states that the reference to “Barrera” was a typographical error, which should have read “Paradis-Winter[s].” Ans. 2; see also Br. 7 n.l (discussing a telephone conversation regarding the error). 3 Appeal 2015-001347 Application 13/693,156 of Paradis is in no sense a clamp nor does it function as one.” Id. Appellants also argue that “[t]he assembly disclosed by Winter[s] in FIGS. 3, 5 and 6 consists of an L-shaped member 46 and a bolt 49 and nut 49” and that “Winter[s] does not disclose two spaced apart flexible strips nor does Winters disclose any means for causing a flexible member to flex inwardly to perform a clamping action.” Id. at 7. In response, the Examiner states, “an inventor considering a clamping member for a rim or a surface would naturally look to references employing other ‘clamps, enclosure, securing members, etc . . .’ which in that case came from areas such as securing members for a large tank or an enclosing member for studs.” Ans. 3 (citing In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007)). We are not apprised of error based on Appellants’ arguments. “Two separate tests define the scope of analogous prior art: (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 Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As an initial matter, we note that the tests do not assess the relationship(s) between the relied-upon prior art, but rather, the relationship(s) between each prior art reference and the invention. See id. Thus, we are not apprised of error by the argument that “Paradis and Winters have nothing to do with each other and are from completely different art areas.” Br. 7. We turn now to Paradis. A prior art reference that satisfies either test is considered analogous art. See In re Kahn, 441 F.3d 977, 987—88 (Fed. 4 Appeal 2015-001347 Application 13/693,156 Cir. 2006). Because Paradis satisfies the second test, we will not address the first test. “If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). Here, consistent with the Examiner’s finding on this issue (Ans. 3), we consider the relied-upon aspects of Paradis to have the same purpose as the claimed invention—enclosing and securing other structures. Appellants focus not on the purpose or problem at issue, but on the application or use disclosed in Paradis—i.e., in constructing a wall. Br. 6. The test for analogous art is not so limited. See Graham v. John Deere Co., 383 U.S. 1,35 (1966) (rejecting the argument that the cited references were not “pertinent prior art” and stating that “[t]he problems confronting [the patentee] and the insecticide industry were not insecticide problems; they were mechanical closure problems”). As to the argument that “studs 12 [in Paradis] are permanently secured to the runner 10 via nails, screws or bolts” whereas “Applicants’] device releasably clamps one member to another by a clamping mechanism” (Br. 6 (emphases added)), Appellants have not shown that the use of, for example, a bolt to secure the structures in Paradis is permanent whereas the use of a bolt to secure the structures in the claimed invention is not. See Spec. H5 (“The present invention disclosed and claimed in this divisional application is a clamp specifically designed to secure the top layer sheet to the upper portion of the wall forming the tank.” (emphasis added)), 31 (discussing “threaded bolts or rods 64”). Further, even assuming this temporal distinction to exist, it does not demonstrate that Paradis relates to a different problem than the claimed invention. 5 Appeal 2015-001347 Application 13/693,156 As to Winters, again, consistent with the Examiner’s findings on this issue (Ans. 3), we consider the relied-upon aspects to have the same purpose as the claimed invention—enclosing and securing other structures.4 The arguments regarding Winters (Br. 7) do not show error in the Examiner’s position regarding analogous art, and instead, as noted by the Examiner, attack Winters individually. See Ans. 3; see also In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Second, Appellants argue that “the combination of Paradis and Winter[s] is based solely on hindsight and the examiner has not provided a legal basis or rationale for combining the references.” Br. 6. After quoting a portion of the rejection of claim 1, Appellants state, “[tjhis is not considered to be an acceptable rationale for combining the references as discussed and is clearly based upon hindsight.” Id. at 7. The Examiner states: Winters was introduced to show that a nut/bolt connection have been known in the art to perform that function and the nut/bolt construction is a known art-recognized equivalent form of connecting opposing walls of a clamp member. Therefore, because these two forms of connections were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute the fastener of Paradis for the nut/bolt connection of Winters. 4 To the extent the Examiner considers the relied-upon aspects of Winters as within the same field of endeavor as the invention—structures for securing liners to liquid holding tanks—we agree. See Ans. 3 (describing Winters as from the “area[j” of “securing members for a large tank”); see also Winters, col. 3,11. 43—52 (discussing how “[t]he liner and its buffer may be clamped in place at the top of the tank”). 6 Appeal 2015-001347 Application 13/693,156 Ans. 4. Although Appellants contend that the Examiner has failed to provide sufficient articulated reasoning as to the proposed substitution and has engaged in hindsight reconstruction, Appellants do not substantively address the reasoning provided (Final Act. 3; Ans. 4). By not addressing the reasoning provided, Appellants have not shown error in the conclusion as to obviousness. See also In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (viewing an “impermissible hindsight” argument as “essentially a repackaging of the argument that there was insufficient evidence of a motivation to combine the references”). Third, Appellants argue that “the examiner has not interpreted [A]pplicant[s’] claim in a manner consistent with Applicants’] disclosure.” Br. 6. Appellants contend that, in Paradis, “[t]here is no teaching or disclosure of the spacer, nut and bolts arrangement of claim 1 that can reasonably be read on [A]pplicant[s’] means for causing one of the flexible strips to move inwardly thereby clamping the flexible sheet to the wall.” Id. Appellants also argue that “Winters only discloses an F-shaped member and a bolt and nut 48 and 49 which secure the flexible sheets and the wall of the tank together” and that “[n]o part of the attachment assembly of Winters flexes at all.” Id. at 7. According to Appellants, neither reference “teaches a clamping action caused by flexing one of two spaced strips toward each other.” Id. We are not apprised of error based on these arguments. Claim 1 recites, inter alia, “means for causing at least one of the strips to flex inwardly thereby clamping the sheet to an upper portion of the tank.” Br. 9 (Claims App.). For a prior art element to satisfy a means-plus-fimction 7 Appeal 2015-001347 Application 13/693,156 limitation, as permitted by former 35 U.S.C. § 112, sixth paragraph, the prior art element must either be the same as the disclosed structure or be an “equivalent[] thereof.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). Here, the Examiner relies on modifying Paradis by substituting the “nut/bolt connection of Winters” (i.e., elements 48 and 49) for “fastener member (54)” of Paradis. See Ans. 4. As noted by the Examiner (Final Act. 3; Ans. 2), the relied-upon structure from Winters is one of the structures disclosed in the Specification for performing the function at issue. See Spec. 131. We turn now to the function required by the limitation at issue. If the Patent Office has reason to believe that a functional limitation recited “may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). Here, we determine that the Examiner’s findings support a prima facie case that the relied-upon aspects of the modified device can inherently perform the functions recited. See Ans. 4 (“The Paradis-Winters combination as outlined above would cause a clamping action and would flex members 22 and 42, when the combination is viewed as a whole.”); Final Act. 2—3. In response, Appellants have not shown that the relied-upon aspects of the modified device do not inherently provide the recited functions. See Schreiber, 128 F.3d at 1478. For example, Appellants provide no evidence or technical reasoning to support the assertion that “a fastener positioned within aperture 54 of Paradis would not cause a clamping action and would 8 Appeal 2015-001347 Application 13/693,156 not inherently flex members 22 and 42 to flex inwardly.” Br. 7. Further, many of Appellants’ arguments set forth above attack the references individually. See In re Merck & Co., 800 F.2d at 1097. For these reasons, we sustain the rejection of independent claim 1. Claims 2 and 4—6 fall with claim 1. B. Claim 3 In rejecting claim 3, the Examiner made certain findings regarding Winters and concluded that “[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to modify Paradis-Winter such that a bolt and a nut for [sic] provided for reasons stated above in Claim 1.” Final Act. 3^4. Appellants argue that “there is no basis for having a rod that would extend through both flexible strips and a nut threaded on the bolt as claimed in claim 3” and that “Paradis already provides a fastener through aperture 54 and there is no need to provide a further fastener.” Br. 8. We are not apprised of error based on the first argument because, as noted by the Examiner, “Paradis teaches that the fastener member (54) is able to connect the opposing two walls (22’s, col. 5,11. 20-28).” Ans. 4. Thus, after the proposed substitution, the modified device would satisfy the limitation at issue. See also Final Act. 3 (finding that “Winter[s] further teaches that the means for causing at least one of the strips to flex inwardly comprises at least one threaded rod extending through the strips”). We are also not apprised of error based on the second argument. The Examiner now clarifies the prior statement regarding “a nut and bolt was further provided” (Final Act. 3) as intending “to state that the fastener (54, of Paradis) was substituted with an art-recognized equivalent structure.” 9 Appeal 2015-001347 Application 13/693,156 Ans. 4. To the extent Appellants contend that the presence of fastener member 54 in Paradis undermines the proposed substitution, we note that the substitution of one known element for another to obtain predictable results is an accepted rationale for demonstrating obviousness. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”). For these reasons, we sustain the rejection of claim 3. DECISION We AFFIRM the decision to reject claims 1—6 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation