Ex Parte Ritz

Board of Patent Appeals and Interferences

Mar 13, 2009

10184021 (B.P.A.I. Mar. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES D. RITZ
____________

Appeal 2008-4060
Application 10/184,021
Technology Center 3600
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Decided:1 March 13, 2009
____________

Before LINDA E. HORNER, JOHN C. KERINS, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Charles D. Ritz (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 30, 31, 33, 35, 37-56, and 58,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is a method for increasing the
capacity and stability of a single-pole tower. Spec. 1, ll. 16-18. Claim 30,
reproduced below, is representative of the subject matter on appeal.
30. A method for increasing a capacity and
stability of a previously erected single pole cellular
tower, said previously erected single pole cellular
tower comprising a pole anchored to a foundation,
said method comprising the steps of:
positioning at least one sleeve around said
pole such that the capacity and stability of said
previously erected single pole cellular tower is
increased; and
attaching cellular communication equipment
to said pole after said positioning step.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Konopinski US 985,605 Feb. 28, 1911
Bhame US 5,880,701 Mar. 9, 1999
The Appellant seeks review of the rejection of claims 30, 31, 33, 35,
37-56, and 58 under 35 U.S.C. § 103(a) as unpatentable over Konopinski
and Bhame.
ISSUES
The Examiner found it would have been obvious to use the pole of
Konopinski, before or after reinforcing, to support cellular
telecommunications equipment, as taught by Bhame, because poles such as
that of Konopinski are commonly used to support a wide variety of utilities,
telecommunications equipment being one of them. Ans. 3-4.
The Appellant contends that the combination is improper because one
of ordinary skill in the art would be discouraged from using Konopinski’s
pole for the purpose of supporting the antenna module described by Bhame.
App. Br. 9; Reply Br. 3. The Appellant also submitted evidence of
secondary considerations of non-obviousness. App. Br. 9-11; Reply Br. 3-4;
and Declaration by Charles Ritz, dated August 29, 2005 (Ritz Decl.).
The issue presented by this appeal is:
Has the Appellant shown that the Examiner erred in determining that
one having ordinary skill in the art would have been led to add the cellular
telecommunications equipment of Bhame to the pole of Konopinski?
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FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Konopinski discloses a pole protector used to protect and reinforce
a pole or pile while it is standing in the ground. Konopinski, p. 1,
ll. 8-11.
2. Konopinski does not disclose the use to which such a pole or pile
is put, does not disclose any dimensions of the pole or pile, and
does not disclose what type of equipment may be attached to such
a pole or pile. Konopinski, passim.
3. The pole depicted in the Figures of Konopinski appears to be made
of wood. Konopinski, Figs. 1-5.
4. Konopinski discloses that “a sleeve 10, preferably of metal and
made in longitudinal sections is applied to the pole at the ground
line and at a point where it is worn away or decay has started
which would endanger the pole and be very apt to permit of its
breaking at that point.” Konopinski, p. 1, ll. 35-41.
5. Bhame discloses multiple dual polarization antenna panels co-
located on a common monopole or lattice-type tower. Bhame, col.
1, ll. 5-8.
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6. Bhame describes that standard commercially available monopole
or lattice-type towers rise up to 175 feet above ground level.
Bhame, col. 1, ll. 23-25.
7. Bhame teaches that “[t]he maximum number of antenna panels
which may be placed on any given tower is oftentimes limited by
that particular tower’s maximum wind loading capability[, which]
is a measure of the structural strength of the tower.” Bhame, col.
2, ll. 31-36.
8. Bhame discloses an antenna mounted system “which allow[s] a
new or existing lattice-type or monopole tower, particularly a
tower originally designed to carry a horizontal antenna support
framework, to carry two or more antenna modules of the present
invention without the need for structural modifications, thus
allowing two or more service providers to co-locate their antenna
panels on new or existing towers and transceiver sites[.]” Bhame,
col. 3, ll. 23-30.
9. Bhame discloses its antenna modules 10 attached to a standard
commercially available monopole tower 14 of the type commonly
found at a wireless telecommunications site. Bhame, col. 5, ll. 32-
35.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
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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., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at ___, 127 S. Ct. at 1734
(“While the sequence of these questions might be reordered in any particular
case, the [Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at ___, 127 S. Ct. at 1739, and discussed circumstances in which a
patent might be determined to be obvious. In particular, the Supreme Court
emphasized “functional approach” in which the operative question is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. at ___, 127 S. Ct. at
1740.
The Supreme Court stated that “[f]ollowing these principles may be
more difficult in other cases than it is here because the claimed subject
matter may involve more than the simple substitution of one known element
for another or the mere application of a known technique to a piece of prior
art ready for the improvement.” Id. The Court explained:
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Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the
effects of demands known to the design
community or present in the marketplace; and the
background knowledge possessed by a person
having ordinary skill in the art, all in order to
determine whether there was an apparent reason to
combine the known elements in the fashion
claimed by the patent at issue.
Id. at ___, 127 S. Ct. at 1740-41. The Court noted that “[t]o facilitate
review, this analysis should be made explicit.” Id. (citing In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”)). However, “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.

ANALYSIS
The methods of independent claims 30, 37, 41, 45, 46, 52, and 58
recite at least the steps of positioning a sleeve around a pole to increase the
capacity of the pole and attaching cellular communication equipment or
telecommunication equipment to the pole. Claims 31, 33, and 35 depend
from claim 30, claims 38-40 depend from claim 37, claims 42-44 depend
from claim 41, claims 47-51 depend from claim 46, and claims 53-56
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depend from claim 52, and thus contain the limitations of their respective
independent claims.
The Examiner’s proposed combination of adding the cellular antenna
panels of Bhame to the poles of Konopinski involves more than the simple
substitution of one known element for another or the mere application of a
known technique to a piece of prior art ready for the improvement. As such,
the Examiner must articulate reasoning with some rational underpinning to
support the legal conclusion of obviousness.
The Examiner based the legal conclusion of obviousness on the
reasoning that it would have been obvious to use the pole of Konopinski to
support cellular telecommunications equipment, such as that disclosed in
Bhame, because “poles such as that of Konopinski are commonly used to
support a wide variety of utilities, telecommunications equipment being one
of them.” Ans. 4. The Examiner has not, however, established on the record
to what uses the poles of Konopinski were put, and we did not find any
disclosure in Konopinski describing the use to which such a pole or pile is
put, any dimensions of the pole or pile, or what type of equipment may be
attached to such a pole or pile (Fact 2). Further, the pole depicted in the
Figures of Konopinski and as described in the written description appears to
be made of wood (Facts 3 & 4). As such, it is not clear from the facts
established on the record that Konopinski’s pole would be suitable for
supporting the cellular antenna panels of Bhame. Further, Bhame discloses
that its antenna modules are attached to a standard commercially available
monopole tower of the type commonly found at a wireless
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telecommunications site, such towers commonly rising up to 175 feet above
ground level (Facts 6-9). As such, we fail to see how one having ordinary
skill in the art, upon reading the disclosure of Bhame, would have been led
to attach its antenna panels to the pole of Konopinski.
Because we have determined that the Examiner failed to articulate a
reason with a rational underpinning to support the combination of the
teachings of the prior art in the manner claimed, we need not address the
evidence of secondary considerations of non-obviousness submitted by the
Appellant.

CONCLUSIONS
The Appellant has shown that the Examiner erred in determining that
one having ordinary skill in the art would have been led to add the cellular
telecommunications equipment of Bhame to the pole of Konopinski.

DECISION
The decision of the Examiner to reject claims 30, 31, 33, 35, 37-56,
and 58 is reversed.

REVERSED

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vsh

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