Ex Parte Venegas

Board of Patent Appeals and Interferences

Feb 8, 2008

10360140 (B.P.A.I. Feb. 8, 2008)

UNIT ED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FRANK VENEGAS, JR.
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Appeal No. 2007-4115
Application No. 10/360,140
Technology Center 3600
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Decided: February 8, 2008
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Before TERRY J. OWENS, MURRIEL E. CRAWFORD and
HUBERT C. LORIN, Administrative Patent Judges.
OWENS, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant appeals from a rejection of claims 1-3, 5-9, 16 and 17. Claims
4, 12-15 and 18-21 stand withdrawn from consideration by the Examiner. Claims
10 and 11 have been canceled.
THE INVENTION
The Appellant claims a hand rail system or assembly. Claim 1 is illustrative:
1. A hand rail system comprising:

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Application 10/360,140
at least two spaced apart vertical rails having upper and lower ends;

at least two spaced apart horizontal rails engaged with the vertical rails and
positioned above the lower ends of the vertical rails;

a plurality of slip-on structural fittings for engaging the horizontal rails with
the vertical rails, each fitting having a securing mechanism that secures the
rails to the fitting; and

a plastic coating covering and sealing the vertical and horizontal rails and
the structural fittings.

THE REFERENCES
Bobrowski US 3,342,457 Sep. 19, 1967
Rauterkus US 5,270,412 Dec. 14, 1993
Venegas ‘739 US 5,396,739 Mar. 14, 1995
Parisien US 5,474,279 Dec. 12, 1995
Venegas ‘457 US 6,283,457 Sep. 4, 2001

THE REJECTIONS
Claims 1-3, 5-11, 16 and 17 stand rejected under the judicially created
doctrine of obviousness-type double patenting over claims 1-21 of Venegas ‘457 in
view of Rauterkus, and stand provisionally rejected under the judicially created
doctrine of obviousness-type double patenting over claims 1-24 of application no.
09/815,628 (abandoned Nov. 3, 2005) in view of Rauterkus. The claims stand
rejected under 35 U.S.C. § 103 as follows: claims 1-3, 5, 6, 8 and 16 over
Bobrowski in view of Venegas ‘739; claim 7 over Bobrowski in view of
Venegas ‘739 and Parisien; claim 9 over Bobrowski in view of Venegas ‘739 and
Rauterkus; claim 16 over Venegas ‘739 in view of Bobrowski; and claim 17 over
Venegas ‘739 in view of Rauterkus.

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OPINION
We affirm the Examiner’s rejections except for the provisional rejection
under the judicially created doctrine of obviousness-type double patenting over
claims 1-24 of application no. 09/815,628 which is moot because that application
has been abandoned.
Obviousness-type double patenting rejection
The Appellant does not include the obviousness-type double patenting
rejection in the “Grounds of Objection/Rejection to be Reviewed on Appeal”
section of the Brief (Br. 3), and does not address that rejection.1 The Appellant did
not respond on the record after being informed in the Examiner’s Answer that the
obviousness-type double patenting rejection has not been withdrawn (Ans. 2-4).
Hence, the record indicates that the Appellant has acquiesced in the obviousness-
type double patenting rejection. Accordingly, we summarily affirm that rejection.
Rejections under 35 U.S.C. § 103
Claims 1-3, 5, 6, 8 and 16
The Appellant states that claims 2, 3, 5, 6, 8 and 16 stand or fall with claim
1, which is the sole independent claim in this group (Br. 3). We therefore limit our
discussion to claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2007).
Bobrowski discloses a guardrail assembly (10) of the type generally used
adjacent heavily trafficked pedestrian areas such as automatic doorways (col. 1, ll.
10-12). The guardrail assembly has a flat, thin panel member (16) mounted within
and entirely enclosed by a frame (18) comprising a handrail (24) at the top and

1 Citations herein to the Brief are to the Appellant’s Supplemental Corrected Brief
filed April 20, 2006.
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terminal rails (26, 28) on the bottom and side (col. 1, ll. 51-70; fig. 1).2 The
handrail and the bottom terminal rail are joined to a plurality of vertically disposed
support posts or balusters (20) by fittings that provide a smooth slip fit between
them and the rails and balusters (col. 1, l. 72 – col. 2, l. 6). The rails and balusters
preferably are extruded aluminum having an anodized or satin finish, and the
fittings preferably are die cast aluminum alloy (col. 1, ll. 66-71; col. 2, ll. 11-14;
col. 3, ll. 54-60).
Venegas ‘739 discloses a guardrail assembly wherein the rails are covered
with a plastic sheath that eliminates the need to repaint the rails due to weather
conditions and impact damage (abstract; col. 1, ll. 33-37, 40-42, 55-64).
The Appellant argues that one of ordinary skill in the art would not have
covered Bobrowski’s aluminum structure with Venegas 739’s plastic sheath
because Bobrowski’s preferred satin-finished anodized aluminum rails would not
need painting, and Bobrowski’s aluminum fittings would require little maintenance
(Br. 4). As stated by the Supreme Court in See KSR Int’l. Co. v. Teleflex Inc., 127
S.Ct. 1727 (2007), “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 127 S.Ct. at 1740. Venegas 739’s
plastic sheath would improve Bobrowski’s guardrail structure by preventing
denting and damage to both the guardrail structure and devices that impact it such
as shopping carts, and by enabling the guardrail structure to retain its structure and
color throughout its lifetime of use (Venegas ‘739, col. 1, ll. 55-64). Also, the use
of the Venegas 739’s plastic sheath on Bobrowski’s guardrail assembly would
eliminate the expense of Bobrowski’s anodizing and satin finish application. Thus,

2 The panel member can be omitted (col. 1, ll. 53-57).
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Bobrowski and Venegas’739 would have led one of ordinary skill in the art,
through no more than ordinary creativity, to cover Bobrowski’s guardrail structure
with Venegas 739’s plastic sheath. See KSR., 127 S.Ct. at 1741 (In making the
obviousness determination one “can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ”). That is particularly
so in view of Bobrowski’s teaching that the guardrail assembly can be made of any
suitable structural material (col. 3, ll. 54-55). Such materials appear to include
metals that, unlike Bobrowski’s preferred satin-finished anodized aluminum, are
not rust resistant.
The Appellant argues that Bobrowski refers to aluminum as a structural
material and that plastic is not a structural material in the context of a guardrail
(Br. 4). In Bobrowski’s aluminum guardrail covered by Venegas 739’s plastic
sheath, the aluminum would be the structural material. The function of the plastic
sheath would be not to provide structure but, rather, as pointed out above, would be
to provide weather resistance without the need for anodizing the aluminum and
applying a satin finish thereto, and to prevent impact damage to the guardrail
assembly and devices that impact it.
For the above reasons we are not convinced of reversible error in the
rejection of claims 1-3, 5, 6, 8 and 16 under 35 U.S.C. § 103.
Claim 7
Claim 7 requires that the hand rail system includes a mesh screen infill
material.
Parisien discloses a fence, sound barrier, guardrail or the like comprising
line posts and top and bottom rails for supporting panels, wire mesh, boards,
pickets or fence material (abstract).
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The Appellant argues, in reliance upon Venegas 739’s column 2, line 61 to
column 3, line 2, that using Parisien’s wire mesh as the infill in the
Bobrowski/Venegas ‘739 guardrail would render it unsatisfactory for
Venegas 739’s intended purpose of moisture impermeability (Br. 5). The moisture
impermeability referred to by the Appellant is the result of partitions 40 and 42
pressing weather stripping 38 between the partitions and U-shaped channel 32 (col.
2, l. 68 – col. 3, l. 2; figs. 2, 3). The teaching by Venegas ‘739 that the guardrail
must be resistant to both weather conditions and denting and impact damage (col.
1, ll. 55-64) would have led one of ordinary skill in the art, through no more than
ordinary creativity, to use a strong wire mesh instead of Venegas ‘739’s plastic for
the infill in applications where resistance to weather conditions is relatively
unimportant, such as an indoors environment, but resistance to impact by devices
such as shopping carts is more important.
Hence, we are not persuaded of reversible error in the rejection of claim 7.
Claim 9
Claim 9 requires that the plastic coating in claim 1 is a spray on polyurea.
Rauterkus discloses a polyurea dispersion that protects metals from
corrosion (abstract; col. 3, ll. 11-20; col. 5, ll. 40-47; col. 9, ll. 31-35).
The Appellant argues that applying Rauterkus’s polyurea to the
Bobrowski/Venegas ‘739 guard rail would be redundant (Br. 6). Rauterkus’s
teaching that the polyurea provides surprisingly good anti-corrosive effect on metal
surfaces (col. 5, ll. 36-47) would have led one of ordinary skill in the art, through
no more than ordinary creativity, to use, in addition to Venegas ‘739’s plastic
sheath, a coating of Rauterkus’s polyurea on Bobrowski’s guard rails to provide
additional corrosion protection.
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We therefore are not convinced of reversible error in the rejection of claim
9.
Claim 16
The Appellant argues that “[b]oth Bobrowski and Venegas [‘739] already
have a sturdy, easily erected, adjustable guardrail system, thereby rendering the
Examiner’s reason for combining the references moot” (Br. 6). Bobrowski’s
fittings would have enabled Venegas ‘739’s rails to be easily assembled in the
manner taught by Bobrowski (col. 3, ll. 24-53). Hence, one of ordinary skill in the
art would have been led by the applied references, through no more than ordinary
creativity, to use Bobrowski’s fittings on Venegas ‘739’s guardrail to provide that
benefit.
Accordingly, we are not convinced of reversible error in the rejection of
claim 16.
Claim 17
The Appellant argues that “[d]espite the teachings of Rauterkus, it would not
be obvious to provide a urea spray-on plastic coating to the metal components of
the rail system of Venegas ‘739, since there is no teaching from the prior art to do
so” (Br. 7). “[T]he [obviousness determination] 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.” KSR, 127 S.Ct. at 1741. Venegas ‘739’s teaching that
forming the infill partitions of a polymerized material such as plastic or Kydex® is
merely a preference (col. 2, ll. 63-65) would have indicated to one of ordinary skill
in the art that the partitions can be made of other materials used in guardrails such
as the metal of which the rails are made (col. 1, ll. 55-59), especially where more
sturdy partitions are desired. Rauterkus’s teaching that the polyurea provides
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surprisingly good anti-corrosive effect on metal surfaces (col. 5, ll. 36-47) would
have led one of ordinary skill in the art, through no more than ordinary creativity,
to coat Venegas ‘739’s metal parts with Rauterkus’s polyurea to provide its
anticorrosive benefit along with that of Venegas ‘739’s plastic sheath.
Therefore, we are not persuaded of reversible error in the rejection of claim
17.

DECISION
The rejection of claims 1-3, 5-11, 16 and 17 under the judicially created
doctrine of obviousness-type double patenting over claims 1-21 of US 6,283,457 in
view of Rauterkus, and the rejections under 35 U.S.C. § 103 of claims 1-3, 5, 6, 8
and 16 over Bobrowski in view of Venegas ‘739, claim 7 over Bobrowski in view
of Venegas ‘739 and Parisien, claim 9 over Bobrowski in view of Venegas ‘739
and Rauterkus, claim 16 over Venegas ‘739 in view of Bobrowski, and claim 17
over Venegas ‘739 in view of Rauterkus are affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED

JRG

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