Ex Parte Venegas

Board of Patent Appeals and Interferences

Jan 30, 2008

10427059 (B.P.A.I. Jan. 30, 2008)

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FRANK VENEGAS, JR.
____________________

Appeal 2007-4348
Application 10/427,059
Technology Center 3600
____________________

Decided: January 30, 2008
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Before: TERRY J. OWENS, JENNIFER D. BAHR, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 (2002) from the final
rejection of claims 1-3 and 5-11. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

Appeal No. 2007-4348
Application 10/427,059

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The Appellant’s invention relates to an ultra high-security guard rail
system including “coverings to disguise and/or beautify the barrier system.”
(Specification 2, ll. 2-4). Independent claim 1 is representative of the
Appellant’s claims and reads as follows:

1. An ultra high-security guard rail
system, comprising:
a plurality of vertical metal pipes, wherein a
portion of the pipe is buried one or more feet
below the ground surface, and a portion of the pipe
remains exposed above ground;
one or more horizontal metal pipes
interconnected to the vertical metal pipes; and
a cover having two opposing sides and a top
to visually obscure the pipes.

Claims 1 and 5-11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Batcheller (U.S. Patent 4,122,631) and Lewis (U.S. Patent
3,993,289) in view of Terio (U.S. Patent 4,780,020) and Diana (U.S. Patent
4,665,673). Alternatively, claims 1 and 5-11 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Batcheller and Griffith (U.S. Patent
2,402,393) in view of Terio and Diana. Claim 2 is rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Batcheller and either Lewis or Griffith
in view of Terio, Diana and Wolgamot (U.S. Patent 5,660,021). Claim 3 is
rejected under 35 U.S.C. § 103(a) as being unpatentable over Batcheller and
either Lewis or Griffith in view of Terio, Diana and Venegas (U.S. Patent
5,354,037).
We affirm.
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ISSUE
The issue in this appeal is whether modifying the pipe rail
construction disclosed in Batcheller to include “a cover having two opposing
sides and a top to visually obscure the pipes” would have been obvious to
one having ordinary skill in the art at the time of the invention.

FINDINGS OF FACT
The record supports the following findings of fact (“FF”) by a
preponderance of the evidence.
1. Batcheller discloses a pipe rail and gate construction for a
platform or balcony. The pipe rail consists of tubular posts “set in
conventional fashion by a grout 14 in holes 15” in a supporting surface of
the platform or balcony. (Batcheller, col. 2, ll. 39-44). Tubular rails extend
between the tubular posts. Fittings connect the rails to the posts.
(Batcheller, col. 2, ll. 45-52). A gate structure formed from tubular elements
and fittings provides a closure for a doorway between two adjacent posts.
(Batcheller, col. 2, ll. 44-45 and 55-67). In other words, Batcheller describes
a rail and gate construction including sections with fixed tubular rails
surrounding a gated section forming a doorway through the construction.
2. Lewis discloses a modular fence designed for ease of erection,
change and removal. (Lewis, col. 1, ll. 5-8). The fence includes fence posts
formed from metal pipe received in wooden shells. (Lewis, col. 2, ll. 24-42
and col. 3, ll. 6-12). Rails consisting of relatively thin, rectangular boards
hang between the posts by means of tongues mounted in slots in the shells of
the posts. (Lewis, col. 2, ll. 16-23 and col. 4, ll. 3-33).
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3. Lewis teaches that, “[a]t the desired, predetermined location for
a corner post 22 the preassembled post shell with base attached is placed in a
vertical position and a metal pipe 40 is inserted in the longitudinal passage
45 of the post and through the hole in the base. While the post is held
vertical, the pipe is driven into the ground to the desired depth. A depth of
about two feet is usually sufficient . . . .” (Lewis, col. 3, ll. 37-46).
4. Griffith discloses a fence post setting apparatus mounted on a
dump truck having a hydraulically-actuated mechanism for raising and
tipping the bed of the truck. (Griffith, col. 2, ll. 22-31). The apparatus
includes five-inch wide channel bar secured at one end to the tail-gate of the
dump truck. (Griffith, col. 2, l. 45 – col. 3, l. 4). When the bed of the dump
truck is lifted, the channel bar pivots so that the free end of the bar presses
the fence post into the ground. (Griffith, col. 3, ll. 5-24). Griffith teaches
that the required depth to which fence posts should be buried is “two feet or
more.” (Griffith, col. 1, ll. 20-29; col. 3, ll. 17-24; and col. 4, ll. 19-32).
5. Terio discloses a vehicle barrier including vertically oriented I-
beams. (Terio, col. 1, ll. 53-55 and col. 2, ll. 18-23). Aluminum honeycomb
shock absorbing material is bound against the central web of each I-beam by
cables strung between adjacent I-beams. (Terio, col. 2, ll. 43-57).
6. Terio suggests that, “[i]n order that the barrier be more
esthetically pleasing it would be possible to slide a decorative panel into
position between adjacent I-beams as shown in Fig. 1.” (Terio, col. 4, l. 67 –
col. 5, l. 1). Figure 1 is reproduced below:
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Figure 1 is a perspective view of Terio’s barrier with a panel 40 positioned
in front of the cables between two adjacent I-beams. The panel as depicted
in Fig. 1 appears to be prismatic with two opposing sides, one side facing
toward the cables and the other facing away, as well as a top. Terio teaches
that the panel “would not only make the gate more pleasing to look at but
would hide the functioning components of the barrier from view to protect
them from weather and from scrutiny by potential terrorists.” (Terio, col. 4,
ll. 2-4).
7. Diana discloses a method for molding a concrete barrier with
monolithic surface ornamentation. More specifically, the reference teaches
molding “New Jersey” style highway traffic barriers with “highly decorative
and aesthetically pleasing artificial stone (or brick or block)” surfaces.
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(Diana, col. 1, ll. 7-12 and col. 4, ll. 52-59). Diana teaches that forming
surface ornamentation on concrete slabs, buildings structure and the like to
provide an aesthetically pleasing appearance at relatively low cost is
desirable. (E.g., Diana, col. 1, ll. 13-28).
8. Wolgamot discloses a security door including layers of material
designed to frustrate different methods for breaching the door. (Wolgamot,
col. 1, ll. 44-55). The door includes a stainless steel skin covering a
corrugated stainless steel reinforcement. (Wolgamot, col. 9, l. 59 – col. 10,
l. 9). The reference teaches that “[f]urther reinforcement is provided by a
layer of pipe elements 62 arranged at discrete locations within the door. By
filling these pipes, typically 1˝ of diameter, with concrete 64 cutting and
flame resistance is again increased.” (Wolgamot, col. 10, ll. 26-29).
9. Venegas discloses a guardrail assembly including two or more
upright stanchions consisting of metal pipe surrounded by plastic sheaths.
Horizontal rails formed from metal pipe received in plastic pipe extend
between the upright stanchions. (Venegas, col. 3, l. 41 – col. 4, l. 2).
Venegas teaches forming the metal pipe and stanchions from steel (Venegas,
col. 5, ll. 25-28) and that steel guardrails are “quite strong” (Venegas, col. 1,
ll. 13-17).

PRINCIPLES OF LAW
A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
“the differences between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordinary skill in the
art to which said subject matter pertains.” In Graham v. John Deere Co.,
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383 U.S. 1 (1966), the Supreme Court set out factors to be considered in
determining whether claimed subject matter would have been obvious:

Under § 103, the scope and content of the prior art
are to be determined; differences between the prior
art and the claims at issue are to be ascertained;
and the level of ordinary skill in the pertinent art
resolved. Against this background the obviousness
or nonobviousness of the subject matter is
determined.

Id., 383 U.S. at 17.

ANALYSIS
A. The Subject Matter of Claims 1 and 5-11 is Obvious from Batcheller
and either Lewis or Griffith in View of Terio and Diana
Claims 1 and 5-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Batcheller (U.S. Patent 4,122,631) and Lewis (U.S. Patent
3,993,289) in view of Terio (U.S. Patent 4,780,020) and Diana (U.S. Patent
4,665,673). Alternatively, claims 1 and 5-11 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Batcheller and Griffith (U.S. Patent
2,402,393) in view of Terio and Diana. The Appellant did not provide
separate arguments addressing the patentability of the dependent claims.
Therefore, the Board will decide the patentability of claims 1 and 5-11 as a
group, independent claim 1 being deemed representative of the group.
37 C.F.R. § 41.37(c)(vii) (2007).
The first two steps in determining whether the Examiner has
established a prima facie case of obviousness are to determine the scope and
content of the prior art; and to ascertain the differences between the prior art
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and the claims at issue. Batcheller teaches a pipe rail and gate construction
including a plurality of vertical metal pipes, wherein a portion of the pipe is
buried below the supporting surface, and a portion of the pipe remains
exposed above the supporting surface; and one or more horizontal metal
pipes interconnected to the vertical metal pipes. (FF 1). Batcheller’s rail
and gate construction differs from the guard rail recited in claim 1 in that
Batcheller’s construction does not necessarily include vertical metal pipes
having portions buried one or more feet below the ground surface. The
Examiner found that both Lewis and Griffith individually teach this element.
(Ans. 4). Batcheller’s construction also lacks “a cover having two opposing
sides and a top to visually obscure the pipes.” The Examiner found that this
element is taught in Terio and Diana. (Id.).
The final step in determining whether the Examiner has established a
prima facie case of obviousness is to determine whether the Examiner
articulated reasons why the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a whole
would have been obvious to a person having ordinary skill in the art. For
example, “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 Int’l Co. v. Teleflex Inc., 127
S.Ct. 1727, 1739 (2007).
Lewis and Griffith each teach that vertical posts for fences ordinarily
are buried at least two feet into the ground. (FF 3 and 4). These teachings
would have suggested improving Batcheller’s guard rail by burying the
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tubular posts two or more feet under the ground for sufficient structural
stability. (Ans. 4).
Terio suggests installing a panel in front of a barrier to make the
barrier more pleasing to the eye, to protect the barrier from weather and to
hide the functioning components from scrutiny by potential terrorists. (FF
7). One of ordinary skill in the art would have found it obvious to install a
panel before a section of Batcheller’s rail and gate construction having fixed
tubular rails so as to obtain the advantages taught by Terio. (Ans 4, 7). This
panel would form “a cover having two sides and a top” obscuring the posts
and rails in these sections.
The Appellant contends that Terio’s panels are not a “cover” as
recited in claim 1. (Br. 3). The basis for this argument appears to be that
Terio’s panels do not encompass a top portion of Terio’s I-beams. ‘During
examination, ‘claims . . . are to be given their broadest reasonable
interpretation consistent with the specification, and . . . claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art.’” In re American Acad. of Science Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833
(Fed. Cir. 1990)). The common meaning of “cover” is “something that
protects, shelters or guards.” WEBSTER’S THIRD NEW INTERNATIONAL
DICTIONARY at 524 (G. & C. Merriam Co. 1971) (“cover,” entry 2, def. 1).
This definition is consistent with the disclosure of the present specification.
(See, e.g., Specification 2, ll. 10-11 and 3, ll. 13-15). While Figs. 3-6 of the
present application appear to show particular covers which encompass top
portions and opposing sides of the vertical and horizontal pipes, nothing in
the specification expressly or impliedly limits the subject matter of the
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claims to guard rails having covers which overlie top portions of the vertical
pipes. We agree with the Examiner’s conclusion (Ans. 7) that a panel such
as that taught in Terio placed in front of a guard rail falls within the scope of
the word “cover” as used in claim 1.
The Appellant contends that Terio’s panels do not have a “top.” (Br.
3). We agree with the Examiner’s finding (Ans. 7) that the panel has a top
surface (FF 6).
The teachings of either Lewis or Griffith along with the teachings of
Terio and Diana would have suggested modifying Batcheller’s guard rail so
as to fall within the scope of claim 1. Hence, the Examiner has shown that
claim 1 is prima facie obvious. The Appellant has submitted no evidence
sufficient to rebut the prima facie case. On the record before us, the
Appellant has failed to show that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a). Dependent claims 5-11 fall with claim 1.

B. The Subject Matter of Claim 2 is Obvious from Batcheller and
either Lewis or Griffith in View of Terio and Diana and Further in
View of Wolgamot and the Subject Matter of Claim 3 is Obvious from
Batcheller and either Lewis or Griffith in View of Terio and Diana
and Further in View of Venegas
The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as being
unpatentable over Batcheller and either Lewis or Griffith in view of Terio
and Diana as applied to claim 1 and further in view of Wolgamot. In
addition, the Examiner rejected claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over Batcheller and either Lewis or Griffith in view of Terio
and Diana as applied to claim 1 and further in view of Venegas. The
Appellant has not shown that the Examiner erred in rejecting claim 1. In
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addition, the Appellant has not presented any separate argument as to the
patentability of claims 2 and 3 if the subject matter of claim 1 is determined
to have been obvious. Therefore, the Appellant has not shown that the
Examiner erred in rejecting claims 2 and 3 under section 103(a).

CONCLUSION OF LAW
On the record before us, the Appellant failed to show that the
Examiner erred in rejecting claims 1-3 and 5-11 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 1-3 and 5-11 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) (2007).

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AFFIRMED

JRG

GIFFORD, KRASS, SPRINKLE, ANDERSON
& CITKOWSKI, P.C.
P.O. BOX 7021
TROY, MI 48007-7021
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