Ex Parte PowellDownload PDFPatent Trial and Appeal BoardFeb 9, 201611943810 (P.T.A.B. Feb. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111943,810 11/21/2007 5073 7590 BAKER BOTTS L.L.P. 2001 ROSS A VENUE SUITE 600 DALLAS, TX 75201-2980 02/11/2016 FIRST NAMED INVENTOR John Powell 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. 091078.1731 4141 EXAMINER AMIRI, NAHID ART UNIT PAPER NUMBER 3679 NOTIFICATION DATE DELIVERY MODE 02/11/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): ptomaill@bakerbotts.com ptomail2@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN POWELL Appeal2013-010757 Application 11/943,810 Technology Center 3600 Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and LISA M. GUIJT, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner's final rejection of claims 1, 3---6, and 8-18. Br. 2. Claims 2 and 7 have been cancelled. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. THE CLAIMED SUBJECT MATTER The disclosed subject matter relates to "a post assembly for placement upon a dirt retaining of a trench box or of a slide rail shoring system wall for supporting guardrails around an excavation site." Spec. i-f 1. Independent claim 1 is illustrative of the claims on appeal and is reproduced below: AppealNo.2013-010757 Application No. 11/943,810 1. A panel fence post assembly (20) for placement upon a retaining wall (22) having a top (24) extending between an inside surface (26) and an outside surface (28) comprising; an inverted U-shaped saddle (30) having a top portion (32) with a front leg (34) and a rear leg (36) each integrally connected to and extending from said top portion (32) and said rear leg (36) being spaced from said front leg (34) to define an opening for receiving the wall of a retaining wall (22), said saddle (30) having a constant thickness through said legs (34, 36) and said top portion (32) thereof, a post member (44) connected to and extending upwardly from said top portion (32) of said U-shaped saddle (30), a plurality of guardrail channels (70) disposed on said post member ( 44) and extending perpendicularly to said post member ( 44) for receiving and supporting guardrails, said assembly characterized by a plurality of U-shaped reinforcing plates ( 40) extending about said top portion (32) and said legs (34, 36) of said U-shaped saddle (30) and extending downwardly to an opening (S) defined by the distal ends of said legs (34, 36) with at least one of said reinforcing plates ( 40) on each side of said post member ( 44) for strength and support. REFERENCES RELIED ON BY THE EXAMINER Wernimont Brunkan Nunez Campbell Platt Hirose Shimizu us 3,361,265 us 4,899,991 us 5,645,271 US 6,367,208 Bl US 7,147,212 B2 JP 402024447A JP 2007-209706A Jan. 2, 1968 Feb. 13, 1990 July 8, 1997 Apr. 9, 2002 Dec. 12, 2006 Jan. 26, 1990 Aug.23,2007 THE REJECTIONS ON APPEAL Claims 1, 3, and 4 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hirose, Shimizu, and Brunkan. 2 AppealNo.2013-010757 Application No. 11/943,810 Claims 5-8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hirose, Shimizu, Brunkan, and Nunez. Claims 9-14 and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hirose, Shimizu, Brunkan, Nunez, and Campbell. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over Hirose, Shimizu, Brunkan, Nunez, Campbell, and Platt. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over Hirose, Shimizu, Brunkan, Nunez, Campbell, and W emimont. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over Hirose, Nunez, Brunkan, Shimizu, Campbell, W emimont, and Platt. ANALYSIS The rejection of (a) claims 1, 3, and 4 as unpatentable over Hirose, Shimizu, and Brunkan; (b) claims 5--8 as unpatentable over Hirose, Shimizu, Brunkan, and Nunez; (c) claims 9-14 and 16 as unpatentable over Hirose, Shimizu, Brunkan, Nunez, and Campbell; ( d) claim 15 as unpatentable over Hirose, Shimizu, Brunkan, Nunez, Campbell, and Platt; and (e) claim 17 as unpatentable over Hirose, Shimizu, Brunkan, Nunez, Campbell, and Wernimont Appellant states that "[ c ]laims 3---6 and 8-17 are all ultimately dependent on claim 1 and are believed to be patentable for the same reasons described above." Br. 5. Accordingly, we review the rejection of claim 1, with claims 3-6 and 8-1 7 standing or falling therewith because no other arguments for dependent claims 3---6 and 8-17 are presented for review. Independent claim 1 recites a "U-shaped saddle" designed to receive a portion of a retaining wall. Claim 1 further recites "a plurality of U-shaped reinforcing plates" that extend about the top and legs of the saddle "for strength and support." 3 AppealNo.2013-010757 Application No. 11/943,810 The Examiner relies on Hirose for disclosing a "U-shaped saddle (7)," and also "a plurality of reinforcing plates (9) extending about the top portion (7a)" of the saddle. Final Act. 2 (citations omitted). However, the Examiner acknowledges that Hirose' s reinforcing plates 9 are not also U-shaped and do not extend downwardly along the legs of the saddle as claimed. Final Act. 3; Ans. 17. Shimizu is relied on by the Examiner to teach "a U-shaped member (constituted by a body 1) having a plurality ofU-shaped reinforcing plates (4) per se which extend about a top portion and legs of the U-shaped member (1)." Final Act. 3 (citing Shimizu, Abstract, Fig. 1); see also Shimizu, Figs. 3A-3C. The Examiner additionally finds that it "is known per se to apply reinforcement to the locations desired to be reinforced." Final Act 3. In conclusion, the Examiner states that it would have been obvious "to modify the reinforcing plates of Hirose by making them U- shaped, as generally taught by Shimizu, in order to wrap around" the top and legs of the underlying structure "to provide additional rigidity and stability to the assembly." 1 Final Act. 3. The Examiner also finds that providing such reinforcement produces "no new and unexpected results." Final Act 3. Appellant disagrees contending that the addition of these reinforcing plates "produces a new result because the entire length of the legs 34, 36 are supported by the reinforcing plates 40." Br. 3--4. Appellant thereafter states 1 The Examiner also provides additional "rationales identified in the Supreme Court's KSR decision" as support for concluding that "it would have been obvious to have modified Hirose to provide the saddle (7) with reinforcement plates that not only extend along the top portion, but also to extend downwardly along the sides of the legs so as to reinforce both the top portion and the legs." Ans. 17. 4 AppealNo.2013-010757 Application No. 11/943,810 that "[t]his new result is advantageous" because it permits the assembly "to be made of a thinner material that can be cheaply and easily bent into the U- shape." Br. 4. Although Appellant's device may have advantages, the question is whether Appellant's device is non-obvious in view of the cited art and the rationales expressed by the Examiner. Addressing this, Appellant contends that Shimizu's U-shaped bands "include legs extending upwardly- not downwardly." Br. 4. However, the Examiner states that "Shimizu evidences that it is known in the art to have U-shaped reinforcing members (4)" and that "[i]t is a well-known technique, known across all mechanical arts, to add reinforcement to a desired element so as to increase the strength of that element." Ans. 17. The Examiner also states that "it is known within the level of skill to provide reinforcement plates that conform to the shape of the article desired to be reinforced." Ans. 1 7. Appellant does not persuade us of Examiner error by contending that Shimizu' s bands are illustrated as extending in a different direction. Appellant also generally contends that the Examiner relied on "impermissible hindsight" but does not specify that which the Examiner relied upon that was gleaned only from Appellant's disclosure. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellant also contends that "[t]he bands of the [Shimizu] reference function entirely differently than the U-shaped reinforcing plates of claim 1." Br. 5. However, the only function recited in claim 1 is directed to these bands providing "strength and support." Appellant does not explain how Shimizu's bands likewise fail to provide strength and support. See Shimizu i-fi-f 11, 14 (discussing item 4 for "reinforcement" purposes); see also Ans. 17 (discussing "the very definition of 'reinforcement'"). 5 AppealNo.2013-010757 Application No. 11/943,810 Appellant also states that "the Examiner is contending that it is never novel to reinforce a member, regardless of the means of reinforcement." Br. 5. This is not a correct paraphrasing of the Examiner's findings. Instead, the Examiner stated that adding reinforcement is a well-known technique (see supra) and that "[t]ogether, Hirose and Shimizu fairly suggest to one of ordinary skill in the art the provision of U-shaped plates to reinforce the entire U-shaped saddle, including the legs of the saddle." Ans. 17. Appellant does not persuade us of error on this point. In other words, Appellant does not persuade us that the Examiner erred in finding that "Hirose clearly teaches the desire to have the saddle reinforced [see Hirose' s reinforcing plate 9]. Shimizu clearly teaches that U-shaped reinforcement is notoriously old and well known per se." Ans. 17. Accordingly, and based on the record presented, we sustain the Examiner's rejections of claims 1, 3---6, and 8-17. The rejection of claim 18 as unpatentable over Hirose, Nunez, Brunkan, Shimizu, Campbell, Wernimont, and Platt Appellant repeats the "new result" argument focusing on the use of "thinner material" in Appellant's device. Br. 6. Appellant does not persuade us that the identified "new result" is either unexpected or not obvious for the reasons previously discussed. Appellant thereafter briefly addresses each of Hirose, Nunez, Brunkan, Shimizu, Campbell, W emimont, and Platt stating that "all of these references fall short of the invention ... because they fail to show reinforcing plates extending downwardly" along the legs of a U-shaped saddle as claimed. Br. 6-7. Appellant concludes that "[ s ]imilar to the invention of claim 1, the invention of claim 18 produces new results not shown in any of the prior art references cited by the 6 AppealNo.2013-010757 Application No. 11/943,810 Examiner, either individually or in combination." Br. 7. Appellant's contention is not persuasive for the reasons previously discussed. See also Ans. 18. We sustain the Examiner's rejection of claim 18. DECISION The Examiner's rejections of claims 1, 3---6, and 8-18 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)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation