Ex Parte Waugh

Board of Patent Appeals and Interferences

Oct 12, 2011

11458407 (B.P.A.I. Oct. 12, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/458,407 07/19/2006 Tom W. Waugh WAUGH-001-US 8735
62008 7590 10/12/2011
MAIER & MAIER, PLLC
1000 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
WENDELL, MARK R
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
10/12/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TOM W. WAUGH
____________________

Appeal 2010-002310
Application 11/458,407
Technology Center 3600
____________________

Before: JOHN C. KERINS, MICHAEL W. O’NEILL, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002310
Application 11/458,407
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
29-371. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

The claims are directed to a centrifugally cast pole and method. Claim
29, reproduced below, is illustrative of the claimed subject matter:
29. A centrifugally cast, hollow pole comprising:
an elongated, hollow pole member which is formed by
centrifugal casting so as to have a substantially uniform wall
thickness throughout the long axis of said pole member, said
pole member comprising a textured external surface that is
formed by centrifugal casting.

REJECTION
Claims 29-37 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Waugh (U.S. 5,784,851, issued Jul. 28, 1998) in view of
Noirot (U.S. 6,739,103 B1, issued May 25, 2004) and Maybee
(U.S. 7,022,270 B2, issued Apr. 4, 2006).

OPINION
Appellant argues claims 29-37 as a group. Br. 4-9. We select claim
29 as the representative claim, and claims 30-37 stand or fall with claim 29.
See 37 C.F.R. § 41.37(c)(1)(vii).
Noirot discloses an elongated centrifugally cast hollow column, (read
as the claimed pole member) having “substantially uniform wall thickness
throughout its periphery and straight sides 3.” Noirot, col. 2, ll. 44-45.

1 Appellant renumbered claims 1-5, 7-9 and 28 as claims 29-37 without a
formal amendment. We refer to claims 29-37 throughout this Decision.
Appeal 2010-002310
Application 11/458,407
3
Appellant contends that “the multi-sided column (1) described in Noirot
merely has a uniform thickness along the periphery, or along a plane that is
substantially perpendicular to the long axis of the column (1)” and thus does
not disclose a uniform thickness “throughout the long axis of the pole
member.” Br. 6 (emphasis omitted). Appellant ignores the “and straight
sides 3” portion of Noirot’s disclosure. Noirot’s sides 3 extend both along
the periphery and along the long axis of the column. The phrase “and
straight sides” would be redundant if it only referred to the direction along
the periphery since the periphery is mentioned immediately prior to that
phrase. Thus, we decline to accept Appellant’s proposed interpretation of
Noirot and find that Noirot’s straight sides 3 have a substantially uniform
wall thickness throughout the entire side including “throughout the long
axis” thereof.
The Examiner states that “smooth is considered a texture.” Ans. 4.
However, we agree with Appellant that, when read in light of the
Specification, “textured” does not include a smooth surface. Br. 7. The
Specification indicates that “texturing” requires further enhancement of a
cast pole such as providing pimples. Cf. figs. 1 and 6, Spec. 4:9-11, 6:3-7,
10:14-16. This interpretation is consistent with the understanding of one of
ordinary skill in the art as evidenced by Maybee. See col. 1, ll. 40-42
(categorizing “smooth contours” and “textures” as different outside
surfaces).
In rejecting claim 29, the Examiner does not rely solely on the
proposed construction of “textured” as including a smooth surface. The
Examiner also cites Maybee as teaching that it was known in the art to place
textures on such surfaces and concludes that such a modification would have
been obvious in order to provide a more aesthetically appealing structure.
Appeal 2010-002310
Application 11/458,407
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Ans. 4-5. We agree with this alternative rationale articulated by the
Examiner. In the “Background of the Invention” section, Maybee
acknowledges that forming poles by centrifugal casting techniques was
known in the art, that such poles may have textures on the outside surfaces,
and that it was known in the art that the interior surface of a mold dictates
the outside surface of the pole. Col. 1, ll. 40-57, col. 2, ll. 22-27. While
Maybee’s invention is concerned with providing a separate jacket coupled to
the pole to provide surface features (Br. 7; Maybee, col. 3, ll. 42-56) “‘[t]he
use of patents as references is not limited to what the patentees describe as
their own inventions . . . they are part of the literature of the art, relevant for
all they contain.’” In re Heck, 699 F.2d 1331, 1332-33 (Fed. Cir. 1983)
(citation omitted). Incorporating a mold interior that produces a texture on
the outside surface of the pole in a centrifugal casting process amounts to
applying a known technique to a known device in order to yield the
predictable result of providing a more aesthetically appealing structure, and,
therefore, would have been obvious to one having ordinary skill in the art.
Appellant contends that the Examiner’s proposed combination would
not yield the claimed subject matter which requires the textured external
surface to be “formed by centrifugal casting.” Br. 8-9. The Examiner
correctly identifies “formed by centrifugal casting” as a product-by-process
limitation and correctly notes that the standard for determining patentability
of such claims is based upon the structure of the end product and not the
process by which it is formed. Appellant does not provide persuasive
arguments to demonstrate how the claimed end product structurally differs
from one in which other methods are used to form the textured external
surface. However, in light of our discussion supra, we see no need to rely
upon this rationale to demonstrate that the subject matter of claim 29 would
Appeal 2010-002310
Application 11/458,407
5
have been obvious to one having ordinary skill in the art. Maybee may
render obvious placing a separate jacket having a textured outer surface
around an existing pole, but this does not establish that Maybee would not
also render obvious modifying the interior of the Waugh or Noirot molds in
order to produce a product that is both structurally indistinguishable from the
claimed subject matter and produced by the same process.
We note that Waugh does not appear to disclose anything relevant to
the subject matter defined by claim 29 that is not disclosed by Noirot. While
we need not rely on, or subscribe to, all of the Examiner’s factual findings or
alternative claim constructions to sustain the Examiner’s rejection, this does
not raise any new issues to which Appellant has not already been afforded a
fair opportunity to respond. See In re Kronig, 539 F.2d 1300, 1302-03
(CCPA 1976); see also In re Bush, 296 F.2d 491, 496 (CCPA 1961).

DECISION
The Examiner’s rejection of claims 29-37 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).

AFFIRMED

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