Ex Parte Sharp et al

Patent Trial and Appeal Board

Feb 26, 2014

12371735 (P.T.A.B. Feb. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GRAHAM T. SHARP, SEAN BILLINGHAM, and
JOHN M. WALTON
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Appeal 2012-001628
Application 12/371,735
Technology Center 3600
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Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001628
Application 12/371,735

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A post for use with a road safety barrier having a plurality of
wire ropes each rope supported by a plurality of posts, the post
comprising:
a post member adapted to be secured on or in the ground,
the post member having a first side and a second side;
wherein the first side defines a first groove adapted to
receive and support a first wire rope; and
such that the first wire rope is released from the groove
when a vertical force is exerted on the first wire rope.

Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Wogerbauer
Mueller
Jehu
Stacey
US 3,266,778
US 3,351,322
GB 1,103,873
US 5,039,066
Aug. 16, 1966
Nov. 7, 1967
Feb. 21, 1968
Aug. 13, 1991

Appeal 2012-001628
Application 12/371,735

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Rejections
Appellants request our review of the following rejections:1
I. Claims 1, 2, 6-9, 12, and 13 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Stacey.2
II. Claims 1-3, 6-10, 12-15, 17, 19, and 20 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Jehu.3
III. Claims 4, 5, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jehu in view of Wogerbauer.
IV. Claims 11 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jehu in view of Mueller.

1 The Examiner’s Answer states that every ground of rejection set forth in
the Office Action from which the appeal is taken is maintained, except for
grounds “listed under the subheading ‘WITHDRAWN REJECTIONS’” and
that any new grounds of rejection “are provided under the subheading ‘NEW
GROUNDS OF REJECTION.” Ans. 3-4. As the Answer includes neither a
“WITHDRAWN REJECTIONS” subheading nor a “NEW GROUNDS OF
REJECTION” subheading, we understand the grounds of rejection set forth
in the Office Action dated January 11, 2011, (hereinafter “Office Action”),
from which Appellants took their appeal, to be unchanged by the Answer,
with the exception of the rejection of claims 2 and 14 under 35 U.S.C. § 112,
second paragraph, which the Examiner explicitly states has been withdrawn.
Ans. 10.
2 The Examiner states at page 4 of the Answer that claims 1-4, 6-10, 12-15,
17, 19, and 20 are subject to this rejection. These claims are not the ones
identified as subject to this rejection in the Office Action or in the Appeal
Brief. As indicated above, the rejections set forth in the Office Action and
not expressly withdrawn in the Answer are the rejections before us in this
appeal.
3 The Examiner states at page 6 of the Answer that claims 1, 2, 5-9, 11-16,
19, and 20 are subject to this rejection. These claims are not identified in the
Office Action or in the Appeal Brief. As indicated above, the rejections set
forth in the Office Action and not expressly withdrawn in the Answer are the
rejections before us in this appeal.
Appeal 2012-001628
Application 12/371,735

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OPINION
Rejection I
In addressing the rejection of claims 1, 2, 6-9, 12, and 13, Appellants
reference independent claims 1, 9, and 12 and provide the same arguments
for each claim. App. Br. 6-10. In particular, Appellants argue:
[E]ach of the rejected independent claims require a structure
within the post to “receive and support a wire rope”, defined as
a groove, notch, and longitudinally oriented groove,
respectively. This structure, which will be referred to as a
“groove” for ease of reference, is a claimed part of the post in
independent claims 1, 9 and 12.
Id. at 7. We therefore select claim 1 to decide the merits of the rejection as
to claims 1, 2, 6-9, 12, and 13. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
As recognized by Appellants and the Examiner, the propriety of
Rejection I hinges on the limitation in claim 1 that “the first side defines a
first groove adapted to receive and support a first wire rope.” The Examiner
finds that Stacey discloses this limitation. Ans. 5, 12-13. Stacey supports
this finding at column 2, lines 18-22, which states:
Location means may be provided on each side of the post for
the lower cables permitting relative motion between the posts
and the cables. These locating means may be grooves formed in
the post or other suitable abutments, rings or hooks.
Appellants point out that their Specification defines the groove as
“shallow and longitudinally oriented grooves/depressions or notches 20.”
App. Br. 8; see Spec., para. [0025]. They argue that this is different from the
structure depicted in the drawings of Stacey, asserting they “are clearly
external hooks” and are “attached to the sides of the posts.” App. Br. 8, 9
(citing Stacey, col. 4, ll. 59-64). The cited passage in Stacey states:
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Application 12/371,735

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The height of the lower cables is controlled by abutments,
grooves or hooks attached to the sides of the posts and are
arranged so that the cable can slide along the edge of the post
when positioning the ropes and when tensioning.

Col. 4, ll. 59-64 (emphasis added). Appellants conclude that “[a]s the
Examiner's allegation that the grooves of the Appellants' invention are
shown in Stacey is unsupported, the Examiner's allegation that the grooves
are shown at structure 12, 13, 14 cannot be said to satisfy the claim of
anticipation.” App. Br. 9.
Appellants’ arguments overlook the disclosure relied upon by the
Examiner and disclosed in Stacey in the above-quoted passage at column 2,
lines 18-22. The passage unequivocally and unambiguously states that the
“[l]ocating means” may be “grooves formed in the post.”
In view thereof, and because Appellants do not contest the Examiner’s
contention that the other elements of the claim are disclosed in Stacey,
Appellants’ arguments do not apprise us of error in the Examiner’s rejection
of claim 1 as anticipated by Stacey.
Moreover, the Examiner correctly points out that claim 1 does not
specify how “the first side [of the post] defines a first groove,” and does not
preclude any structural feature in connection with this recitation. Ans. 12.
In particular, we note that claim 1 does not define a shape of the post or its
first side, and does not restrict the post to a one-piece, monolithic structure.
For these additional reasons, Appellants’ arguments do not apprise us
of error in the Examiner’s rejection.
We sustain the rejection of claims 1, 2, 6-9, 12, and 13 as anticipated
by Stacey.

Appeal 2012-001628
Application 12/371,735

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Rejection II
Appellants argue claims 1-3, 6-10, 12-15, 17, 19, and 20 as a group.
App. Br. 10-11. We therefore select claim 1 to consider the merits of this
rejection. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
As with Rejection I, the point of contention between Appellants and
the Examiner concerns the limitation “the first side defines a first groove
adapted to receive and support a first wire rope.” Appellants argue that
Jehu’s post 13 has a passage 65 at the top and a bracket 63 welded to the
side of the post 13 to form a slot 64; that this slot 64 is external from the post
itself; that passage 65 and slot 64 support cables 60 and 61; and that the
“posts of Jehu neither comprise nor define a groove or notch formed in the
post adapted to receive and support a cable.” App. Br. 10-11.
As pointed out above in our discussion of the rejection based on
Stacey, claim 1 does not specify how “the first side [of the post] defines a
first groove,” and does not preclude any structural feature in connection with
this recitation. See Ans. 13. In particular, as noted above, claim 1 does not
define a shape of the post or its first side, and does not restrict the post to a
one-piece, monolithic structure.
Thus, Appellants’ arguments are not commensurate with the scope of
claim 1 and consequently do not apprise us of error in the Examiner’s
rejection of claim 1 as anticipated by Jehu. We sustain the rejection of
claims 1-3, 6-10, 12-15, 17, 19, and 20 under 35 U.S.C. § 102(b) as
anticipated by Jehu.

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Rejection III
As noted above, Rejection III is directed to claims 4, 5, and 18.
Claims 4 and 18 depend indirectly from claims 1 and 12, respectively, and
claim 5 depends directly from claim 1. These three dependent claims further
define the location of first and second grooves.
In contesting this rejection, Appellants argue that Wogerbauer does
not cure the deficiency asserted against Rejection II. See App. Br. 12-13.
This argument is not convincing, because, as discussed above, we find no
such deficiency in Rejection II.
Appellants additionally argue that Wogerbauer discloses clamping the
wires to the stakes to prevent movement of the wires relative to the stakes,
and thus teaches away from Appellants’ claims requiring the rope to be
released from the post when a vertical force is exerted on the rope. App. Br.
12.
Appellants’ argument is not convincing. The Examiner does not
propose to modify Jehu to allow for release of the cables. The Examiner
finds this feature in Jehu. Ans. 7; see Jehu, p. 4, ll. 109-17. The Examiner
relies upon Wogerbauer only for its teachings directed to locations of the
wires. Ans. 9. Moreover, in any event, Wogerbauer does not criticize or
discredit the type of cable support feature disclosed by Jehu and claimed by
Appellants, and thus does not teach away from the claimed invention. Prior
art does not teach away from claimed subject matter merely by disclosing a
different solution to a similar problem unless the prior art also criticizes,
discredits, or otherwise discourages the solution claimed. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004).
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We sustain the rejection of claims 4, 5, and 18 as unpatentable over
Jehu and Wogerbauer.
Rejection IV
In contesting this rejection, Appellants essentially reiterate their
arguments against Rejection II, adding that Mueller does not make up for
these asserted deficiencies. See App. Br. 13-16. These arguments do not
apprise us of error in the Examiner’s rejection, for the reasons discussed
above.
Thus, we sustain the rejection of claims 11 and 16 as unpatentable
over Jehu and Mueller.
DECISION
The Examiner’s decision rejecting claims 1-20 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).

AFFIRMED

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