Ex Parte Stearns et alDownload PDFPatent Trial and Appeal BoardMar 22, 201814644872 (P.T.A.B. Mar. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/644,872 03/11/2015 Jim Stearns 32118 7590 03/26/2018 LAMBERT & ASSOCIATES 92 STATE STREET BOSTON, MA 02109-2004 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. 15-012-JS 1004 EXAMINER BRADFORD, CANDACE L ART UNIT PAPER NUMBER 3634 NOTIFICATION DATE DELIVERY MODE 03/26/2018 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): info@ lambertpatentlaw. com PTOL-90A (Rev. 04/07) STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JIM STEARNS, MICHAEL MCDERMOTT, CHRISTOPHER CONLEY, STEVE CONLEY JR., CORI AMADON, FRANCIS GREENWOOD, and BERNARD GREANEY Appeal 2017-006116 Application 14/644,872 1 Technology Center 3600 Before EDWARD A. BROWN, WILLIAM A. CAPP, and ANTHONY KNIGHT, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jim Steams 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 April 6, 2016 ("Final Act."), rejecting claims 1, 4--7, 11-18, 20, and 21. 2 We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Appellants identify Jim Steams as the real party in interest. Appeal Br. 2. 2 Claims 10 and 19 are cancelled (Appeal Br. (Claims App)), and claims 2, 3, 8, and 9 stand objected to as being dependent upon a rejected base claim, but are indicated to contain allowable subject matter (Final Act. 8). Appeal 2017-006116 Application 14/644,872 CLAIMED SUBJECT MATTER Claim 1, reproduced below, illustrates the claimed subject matter. 1. A fall protection system comprising: an interior safety net, the interior net positioned across an interior span of a structure, the structure comprised of a plurality of vertical columns, each of the plurality of columns having an I-shaped cross section such that flanges extend away from two sides of each of the columns; a hoisting block directly attached to at least one flange of a first column of the plurality of columns, the hoisting block positioned above the interior safety net; a cable having a first end attached to the interior safety net and a second end, the cable disposed through the hoisting block such that the interior safety net is slideable upward and downward with relation to the first column based on movement of the cable. Appeal Br. (Claims App). REJECTIONS 3 1. Claims 1, 20, and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Simon (US 4,351,413, issued Sept. 28, 1982) and Brickman (US 4,732,234, issued Mar. 22, 1988). 2. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over Simon, Brickman, and McCarthy. 3 The non-statutory double patenting rejections of claims 11, 12, and 14--18 as unpatentable over claims 1-7 of Steams (US 9,038,777 B2, issued May 26, 2015), and of claim 13 as unpatentable over claims 1-7 of Steams in view of McCarthy (US 2009/0159369 Al, published June 25, 2009) have been withdrawn. Ans. 3. 2 Appeal 2017-006116 Application 14/644,872 3. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable over Simon, Brickman, and Jones (US 2,450,595, issued Oct. 5, 1948). 4. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over Simon, Brickman, Jones, and Halligan (US 4,986,389, issued Jan. 22, 1991). ANALYSIS Rejection 1- Claims 1, 20, and 21 over Simon and Brickman For claim 1, the Examiner finds that Simon discloses a fall protection system comprising an interior safety net (landing net 18), a structure comprised of vertical columns (posts 12, 14), a hoisting block (guide pulley 66), and a cable (cord 82) having a first end attached to the interior safety net and a second end, wherein the cable is disposed through the hoisting block such that the interior safety net is slideable upward and downward with relation to a column based on movement of the cable. Final Act. 2-3 (citing Simon, Figs. 1, 3). The Examiner finds that Simon does not disclose that the vertical columns have an I-shaped cross section. Id. at 3. The Examiner also finds that Brickman teaches a safety net system comprising a plurality of columns 42 having an I-shaped cross section, as claimed. Final Act. 3 (citing Brickman, Fig. 4). The Examiner states that "[t]he utility of columns having [an] I-shaped cross section is old and well known in the art to provide a stiff beam with the least amount of material." Id. Therefore, the Examiner concludes, it would have been obvious to one of ordinary skill in the art to replace the columns of Simon with columns 3 Appeal 2017-006116 Application 14/644,872 having an I-shaped cross section, as taught by Brickman, to provide stiff beams with the least amount of material. Id. Appellants contend that a person of ordinary skill in the art would not have combined the teachings of Simon and Brickman as proposed by the Examiner to create the claimed invention because this would cause Simon to be unsatisfactory for its intended purpose of damping a fall impact of a falling object. Appeal Br. 6, 8. Appellants assert that the Examiner's proposed substitution would not have been obvious because there is no reason to change Simon's specialized columns to an I-beam column, which could not function like Simon's columns. Id. at 7. As noted by Appellants, Simon states that "[a]n important feature of the present invention resides in the damping system which is connected to landing net 18 so that an object which impacts landing net 18 is decelerated at a controlled rate." Id. (citing Simon, col. 5, 11. 23-26). Appellants reference Figure 9 of Simon, showing float 76 supported in fluid 74 in the interior of post 14. Id. Appellants assert that Simon requires specialized fluid-filled posts and structures contained within the posts to provide damping absorption of a falling impact on a fall area. Id. at 8. Appellants contend that replacing Simon's posts with Brickman's I-beam columns could not provide this damping absorption function. Id. The Examiner responds that "I-beams are well known in the art to be sturdy, solid beams that provide a frame work to support a net or other horizontal elements attached." Ans. 4. The Examiner submits that, although the proposed modification of Simon would result in "less damping," "one of ordinary skill in the art would balance any tradeoffs in damping with benefits of simplicity and strength and, if needed, add simple springs or 4 Appeal 2017-006116 Application 14/644,872 damping cylinders to the connections between the net and the beams if needed." Id. The Examiner maintains that "[t]he inherent give and resilience of the fabric net provides some damping, as do the tendons or cords, and the steel I-beams provide strength so that cross-bracing 16 would be unnecessary, so the combination would have advantages where portability is important." Id. (emphasis added). Appellants reply that, rather than providing "less damping," the proposed modification of Simon would provide "no practical damping." Reply Br. 5. We agree with Appellants that the Examiner has not provided evidence to establish that the modified Simon device would provide any particular level of damping. And even assuming that, in the modified landing net assembly of Simon, "the fabric net [would provide] some damping, as [would] the tendons or cords," as the Examiner submits (Ans. 4 (emphasis added)), we agree with Appellants that the Examiner does not explain adequately how such reduced damping capability would be sufficient. Indeed, the Examiner appears to acknowledge that additional modifications of Simon would be needed to restore the damping capabilities that would be lost by the proposed modification. But as noted by Appellants, the Examiner does not provide evidence that supports further modifying the landing net assembly of Simon by "add[ing] simple springs or damping cylinders to the connections between the net and the beams," as suggested by the Examiner. Reply Br. 5. The Examiner also submits that "the safety net device of Simon supports a safety net even ifthe water level is low/empty." Ans. 4--5. In reply, Appellants assert that the water-filled state of the posts is required in Simon for operation. Reply Br. 3. In support, Appellants provide a copy of 5 Appeal 2017-006116 Application 14/644,872 Figure 9 of Simon, and, for comparison, a modified version of Figure 9, in which water has been drained from within column 14 and float 7 6 is located in contact with guide pulley 56. Id. at 3--4. Appellants contend that such modification would result in a clear change in the function of the float damping structure, and prevent Simon from operating as intended. Id. at 4. We agree with Appellants. Even assuming Simon's safety net device could support a safety net when the water level is "low/empty," as the Examiner states (Ans. 4--5), the proposed modification would still eliminate the capability to fill the posts of Simon with any amount of water, as Brickmans' columns 42 are not disclosed to contain, or even to be able to contain, water for any purpose. Consequently, the proposed modification of Simon would completely eliminate the damping effects provided by the fluid damping system. Additionally, Appellants contend that the Examiner's proposed modification of Simon to include I-shaped columns is improper because Simon could then no longer provide its primary principle of operation, which is to use the specialized posts to provide a damped landing area for the damping of absorption of objects (items or persons) falling on the landing area. Appeal Br. 9--10. Appellants assert that Simon requires the columns to be filled with a fluid and contain a damping structure including a float and cables within the columns. Id. The Examiner responds that replacing the posts of Simon with the I-beams of Brickman would not change the principle of operation. Ans. 4. Appellants reply that Simon requires fluid filled columns for proper operation of the net. Reply Br. 3. We are persuaded by Appellants that the Examiner's proposed modification also would leave Simon no longer able to provide a damped 6 Appeal 2017-006116 Application 14/644,872 landing area for the damping of absorption of objects falling on the landing area. Appeal Br. 9-10. Indeed, the proposed modification would result in Simon being unable to operate as it was designed to operate, which weighs against obviousness. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (A proposed combination of references is improper if it "would require a substantial reconstruction and redesign of the elements shown in [a reference] as well as a change in the basic principles under which [the reference's] construction was designed to operate."). The Examiner has not explained adequately how the proposed modification of Simon with Brickman's beams having an I-shaped cross section to provide stiff beams with the least amount of material (Final Act. 3) would outweigh the designed purpose of Simon's liquid-filled posts to provide a damped landing area for the damping of absorption of objects falling on the landing area. As such, the Examiner's proposed modification of Simon lacks an adequate reason with rational underpinning. Thus, we do not sustain the rejection of claim 1, or of claims 20 and 21 depending therefrom, as unpatentable over Simon and Brickman. Rejection 2- Claim 4 over Simon, Brickman, and McCarthy Rejection 3 - Claims 5 and 6 over Simon, Brickman, and Jones Rejection 4- Claim 7 over Simon, Brickman, Jones, and Halligan The Examiner's additional reliance on McCarthy (Final Act. 3--4), Jones (id. at 4--5), or Jones and Halligan (id. at 5) fails to cure the deficiencies in the rejection of claim 1, from which claims 4--7 depend. Accordingly, we do not sustain the rejections of claims 4--7 for the same reasons as for claim 1. 7 Appeal 2017-006116 Application 14/644,872 DECISION The rejections of claims 1, 4--7, 20, and 21 are reversed. REVERSED 8 Copy with citationCopy as parenthetical citation