Ex Parte Stearns et al

Patent Trial and Appeal Board

Mar 22, 2018

14644872 (P.T.A.B. Mar. 22, 2018)

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.
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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
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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
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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
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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
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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.
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DECISION
The rejections of claims 1, 4--7, 20, and 21 are reversed.
REVERSED
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