Ex Parte Swearingen et alDownload PDFPatent Trial and Appeal BoardMay 31, 201814591640 (P.T.A.B. May. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/591,640 01/07/2015 26831 7590 06/04/2018 CHAMBLISS, BAHNER & STOPHEL, P.C. 605 Chestnut Street Suite 1700 CHATTANOOGA, TN 37450 FIRST NAMED INVENTOR David Swearingen 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. 1470500-1401 2096 EXAMINER RISIC, ABIGAIL ANNE ART UNIT PAPER NUMBER 3671 NOTIFICATION DATE DELIVERY MODE 06/04/2018 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): patents@chamblisslaw.com ccharniak@chamblisslaw.com USPTO@dockettrak.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID SWEARINGEN and MIKEL A. BLANK Appeal2017-006110 Application 14/591,640 Technology Center 3600 Before JOHN C. KERINS, EDWARD A. BROWN, and BRANDON J. WARNER, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE David Swearingen and Mikel A. Blank ("Appellants") 1 seek review under 35 U.S.C. § 134(a) of the Examiner's decision, as set forth in the Final Office Action dated April 22, 2016 ("Final Act."), rejecting claims 1-9 under 35 U.S.C. § 103 as unpatentable over Lamb (US 8,021,078 B2, issued Sept. 20, 2011), Elwick (US 3,211,461, issued Oct. 12, 1965), and Campbell (US 5,533,829, issued July 9, 1996). We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellants identify Roadtec, Inc., as the real party in interest. Appeal Br. 2. Appeal 2017-006110 Application 14/591,640 CLAIMED SUBJECT MATTER Claims 1 and 6 are independent. Claim 1 illustrates the claimed subject matter, and is reproduced below. 1. An asphalt paving machine comprising: (a) a hopper that is adapted to receive asphalt material; (b) a distributing auger that is adapted to distribute asphalt material onto a roadway to be paved; ( c) a hopper conveyor that is adapted to carry asphalt material from the hopper to the distributing auger, said hopper conveyor having: (i) a rear end that is adjacent to and disposed above the distributing auger; (ii) an outside edge; ( d) a flow diverter that is adapted to divert asphalt material being carried by the hopper conveyor away from the outside edge of said hopper conveyor. Appeal Br. 32 (Claims App.). ANALYSIS Appellants argue for the patentability of claims 1-9 as a group. Appeal Br. 21-28. We select claim 1 as representative, and claims 2-9 stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner finds that Lamb discloses most limitations recited in claim 1, but does not disclose diverter plates. Final Act. 2. The Examiner finds, however, that Elwick teaches a flow diverter including diverter plates (panels 50, 51 ). Id. The Examiner concludes that it would have been obvious to modify Lamb's asphalt paving machine to include diverter plates, as taught by Elwick, "to guide the material to the augers and away from the end of the sidewalls." Id. 2 Appeal 2017-006110 Application 14/591,640 Appellants' sole argument presented against the rejection is that Elwick does not qualify as analogous art with respect to the claimed invention, and thus, cannot properly be used as a reference. Appeal Br. 22. The Examiner disagrees with this position. Ans. 3--4. Accordingly, the dispositive issue in this appeal is whether Elwick qualifies as analogous prior art. The test for determining whether a prior art reference is analogous art 1s: "( 1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). "A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem." Id. Field of Endeavor We need not address Appellants' argument that Elwick is not in the same field of endeavor as the claimed invention because, as discussed below, we are unpersuaded that Elwick is not reasonably pertinent to the problem addressed by the inventors. Appeal Br. 23; Reply Br. 3. Problem Appellants submit that asphalt material contained in the hopper of an asphalt paving machine tends to separate into non-homogenous size fractions of aggregates as the asphalt material is carried by the hopper conveyor to the distributing auger. Appeal Br. 24. Appellants contend that 3 Appeal 2017-006110 Application 14/591,640 this non-homogenous asphalt material tends to flow along the outside edges of hopper conveyors to the distributing auger. Id. According to Appellants, this flow tendency will tend to result in non-homogenous asphalt material being discharged onto the roadway by the distributing augers. Id. In support, Appellants cite to paragraph 6 of the Declaration Under 37 C.F.R. § 1.132 of David Swearingen ("Deel."). Appellants state that the problem faced by the inventors "is that of segregation of asphalt material into non- homogeneous size fractions as the asphalt material is carried by the hopper conveyor from the hopper of an asphalt paving machine to a distributing auger that is disposed below the end of the conveyor." Id. at 25. Appellants assert "[t]his problem is unique to the asphalt paving field." Id. It is Appellants' position that Elwick does not address this problem, stating "it is clear that the diverging plates of Elwick are directed to the problem of directing material being moved on a wide conveyor towards and into contact with a narrower, centrally-located distributing device in order that the distributing device may flail the material upwardly and over the side wall of the material spreader." Id. at 26. Appellants contend that a person of ordinary skill in the art "would likely consider art relating to the conveyance of asphalt material, a homogeneous mixture of an asphaltic binder and aggregates of various sizes, to be pertinent to the problem of preventing the segregation of such material into nonhomogeneous size fractions as it is conveyed out of a hopper." Id. at 27 ( emphasis added). Appellants assert that a person of ordinary skill in the art would not be expected to consider Elwick pertinent to the problem of preventing segregation of asphalt materials being conveyed from a hopper by a conveyor. Id. at 27-28 (citing Deel. ,r,r 10-11). 4 Appeal 2017-006110 Application 14/591,640 The Examiner disagrees with Appellants' definition of the problem they are concerned with. Ans. 4. The Examiner submits that Appellants have defined the problem "very narrowly" as "directing asphalt material away from the side edges of a hopper to ensure a homogenous mixture of asphalt paving material." Id. The Examiner finds that Appellants are instead concerned with the broader or more general problem of "directing the flow of material away from the sidewalls of a hopper toward the center of a distributing device." Id. The Examiner determines that the devices of Appellants and Elwick "aim to direct the flow of material away from the side edges of the hopper and toward the center of the hopper where it is to be discharged on the distributing device." Id. Thus, the Examiner finds, Elwick is concerned with the problem addressed by Appellants. In our view, the Examiner has the better position. Elwick is not required to be within the same field of endeavor as the claimed invention, or to address the exact same problem as the inventors, to qualify as analogous prior art. Clay, 966 F.2d at 659. In light of these principles, we are unpersuaded by Appellants' argument that Elwick is not reasonably pertinent to the problem they address. Initially, we disagree with Appellants' contention that the Examiner has admitted Elwick is not reasonably pertinent to the problem faced by the inventors. See Appeal Br. 28. According to Appellants, the Examiner's statement, "the Elwick hopper contains a different material and has a different reason for funneling the material to the center of the hopper, it nevertheless functions to move the material away from the hopper walls and toward the center of the hopper," amounts to such an admission. Id.; see Adv. Act. (mailed July 26, 2016) (emphasis added). We disagree because it 5 Appeal 2017-006110 Application 14/591,640 is the Examiner's stated position that Elwick is concerned with the same problem faced by the inventors. Ans. 4. To the extent Appellants are contending that Elwick must disclose the same reason for directing the material to the center of the hopper as Appellants do, in order to be reasonably pertinent to the problem faced by the inventors, we disagree. Regarding Appellants' contention that a person of ordinary skill in the art "would likely consider art relating to the conveyance of asphalt material" (Appeal Br. 27), to the extent Appellants are implying that a person of ordinary skill in the art would consider only this particular art, we disagree. Appellants have not provided persuasive evidence to show that the problem addressed by the claimed invention is so unique to the asphalt paving field that consideration of other material distribution or spreading devices must be excluded. See Appeal Br. 25. But even assuming Appellants' problem is unique to this field, a reference is not required to disclose the exact same problem, in the same field of endeavor, as Appellants, to qualify as analogous art. Rather, persons of ordinary skill in the art can look to any art that is reasonably pertinent to Appellants' problem, without being limited by the field of endeavor of the art. Clay, 966 F.2d at 659. Contrary to Appellants' restrictive view as to what constitutes analogous prior art with respect to Appellants' claimed invention, we are instructed: The Supreme Court's decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the scope of analogous art broadly, stating that ''familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 402 ( emphasis added). Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). 6 Appeal 2017-006110 Application 14/591,640 Although Elwick does not disclose an asphalt paving machine or conveying asphalt material, limiting the problem to Appellants' purported field of endeavor would effectively conflate the two-prong analogous art test to just the field of endeavor test. We also agree with the Examiner that Appellants have defined the problem too narrowly. Ans. 4. Elwick describes that "[ m ]aterial moving rearwardly by the flights 43 of the conveyor will be directed centrally at the rear end of the conveyor by the panels 50, 51." Elwick, col. 3, 11. 1-21, Fig. 1. We agree with the Examiner that the devices of Appellants and Elwick more broadly "aim to direct the flow of material away from the side edges of the hopper and toward the center of the hopper where it is to be discharged on the distributing device." Ans. 4. Additionally, Elwick's panels 50, 51 would be able to push or direct coarse aggregates that flow along outside edges of the hopper toward the center, causing such coarse aggregates to mix with other aggregates to produce a more homogenous mixture for discharging from the hopper. Here, because of the matter with which Elwick deals, Elwick "logically would have commended itself to an inventor's attention in considering his problem." Clay, 966 F.2d at 659. Accordingly, we are not persuaded that Elwick fails to qualify as analogous prior art with respect to the claimed asphalt paving machine recited in claim 1. As Appellants do not apprise us of any error in the Examiner's rationale for combining the teachings of Elwick with Lamb and Campbell, we sustain the rejection of claim 1. Claims 2-9 fall with claim 1. 7 Appeal 2017-006110 Application 14/591,640 DECISION The rejection of claims 1-9 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended according to 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation