Ex Parte Wersching et al

Patent Trial and Appeal Board

Jul 30, 2018

14158387 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/158,387 01/17/2014 James P. Wersching
69082 7590 08/01/2018
ULMER & BERNE, LLP
ATTN: DIANE BELL
600 VINE STREET
SUITE 2800
CINCINNATI, OH 45202-2409
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.
37950-0003 1477
EXAMINER
RISIC, ABIGAIL ANNE
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
ipdocketing@ulmer.com
dgordon@ulmer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES P. WERSCHING,
GARY L. UTHE,
RICHARD W. BLOCK, and
DOUGLAS A. DOTY
Appeal2017-009567
Application 14/158,387
Technology Center 3600
Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and
SEAN P. O'HANLON, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final Rejection of claims 1-19. Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b ). For the reasons explained below, we do not find
error in the Examiner's rejections. Accordingly, we AFFIRM.
Appeal2017-009567
Application 14/158,387
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "generally relates to vehicle tire deflation
devices, particularly to such devices employed by law enforcement to deflate
the tires of a vehicle." Spec. ,r 2. Apparatus claims 1 and 12, and method
claim 15, are independent. Claim 1 is illustrative of the claims on appeal
and is reproduced below.
1. A vehicle tire deflation device comprising:
a housing structure comprising a first end and a second
end·
' a core structure residing within the housing structure;
a plurality of spikes maintained by the core structure and
positioned in a predetermined orientation, such that the
predetermined orientation positions the spikes to penetrate a tire
when a vehicle travels over the vehicle tire deflation device;
and
a first end cap and a second end cap, wherein each end
cap selectively attaches to the respective ends of the housing
structure and each end cap defines an opening and comprises an
outer wall, wherein each of the openings remains generally
unobstructed and readily communicates with the interior of the
device so as to permit air to pass from the interior to the
exterior of the device, wherein the outer wall of each end cap
comprises a plurality of grip members.
REFERENCES RELIED ON BY THE EXAMINER
Reisman
Greves et al.
Groen et al.
Kami en chick
us 5,322,385
us 5,330,285
us 5,820,293
us 6,024,510
THE REJECTIONS ON APPEAL
June 21, 1994
July 19, 1994
Oct. 13, 1998
Feb. 15,2000
Claims 1---6, 9, and 12-18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Groen and Kamienchick.
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Application 14/158,387
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Groen, Kamienchick, and Greves.
Claims 7, 10, 11, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Groen, Kamienchick, and Reisman.
ANALYSIS
The rejection of claims 1-6, 9, and 12-18
as unpatentable over Groen and Kamienchick
Appellants argue the rejection of claims 1-6, 9, and 12-18 together.
Br. 14--18. We select independent apparatus claim 1 for review, with the
remaining claims standing or falling with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Claim 1 is directed to a tire deflation device containing "spikes to
penetrate a tire when a vehicle travels over the" device. Claim 1 recites end
caps attached to the device and that "each end cap defines an opening"
stating, "wherein each of the openings remains generally unobstructed." 1
The Examiner relies primarily on Groen for such teachings, but
acknowledges that "Groen fails to teach the opening is generally
unobstructed." Final Act. 2-3. The Examiner relies on Kamienchick's
disclosure of opening or vent 5 in Kamienchick' s speed restriction device for
such teachings. See Final Act. 3; Ans. 3. Thereafter, the Examiner provides
a reason why it would have been obvious to combine Groen's tire deflation
device with Kamienchick's opening, i.e., "to allow the device to easily
deflate when contacted by a vehicle wheel." Final Act. 3.
1 This recitation to an opening being "generally unobstructed" refers to the
situation of "when a vehicle travels over the vehicle tire deflation device."
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Application 14/158,387
Appellants contend, "The Combination of Groen and Kamienchick is
Improper," stating that they both fail to disclose the limitation where "each
of the openings remains generally unobstructed." Br. 16-17. Appellants
acknowledge that Kamienchick's vent 5 allows air to escape as internal
pressure increases due to a vehicle passing thereover (see Kamienchick
2:44--47), but Appellants contend, "[t]hese vents control the rate of air flow
based on predetermined or adjusted aperture settings, and thus, are not
openings which are 'generally unobstructed."' Br. 17.
Kamienchick expressly discloses that when a vehicle is traveling at an
appropriate speed over the device, "the vent ( 5) allows for a relatively free
flow of the air" to escape causing Kamienchick's device to "collapse[] under
the weight of the vehicle."2 Kamienchick 2:62----67. In view of
Kamienchick' s teaching of "a relatively free flow" of air from the device,
Appellants do not explain how Kamienchick fails to disclose the above
limitation directed to "generally unobstructed." See also Ans. 3.
Accordingly, Appellants' contention that the Examiner improperly relied
upon the combination of Groen and Kamienchick is not persuasive.
Appellants further contend, "Kamienchick teaches away from the
combination with Groen as suggested by the Examiner" and that "[i]t is
improper to combine references where the references teach away from their
combination." Br. 17 (citation omitted). However, we are instructed that a
teaching away requires a reference to actually criticize, discredit, or
otherwise discourage investigation into the claimed solution. See In re
2 Kamienchick also teaches that when the vehicle is traveling at an excessive
speed, "the vent ( 5) will not suffice for a through exhaustion of the air from
the device" causing the passing vehicle to "be rocked by the still present
hump." Kamienchick 3:3-17.
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Application 14/158,387
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We are further instructed not
to "read into a reference a teaching away from a process where no such
language exists." DyStar Textilfarben GmbH v. CH Patrick Co., 464
F.3d 1356, 1364 (Fed. Cir. 2006). On this point, the Examiner explains that
"Groen's device is meant to deflate when struck by a vehicle so Groen does
not teach away from adding a vent hole to the device to assist in deflation."3
Ans. 3. Appellants do not dispute this or otherwise identify any criticism,
discrediting, or discouragement that might lead one skilled in the art away
from combining Groen and Kamienchick. Accordingly, Appellants'
contention that "Kamienchick teaches away" from such a combination
(Br. 1 7) is not persuasive of Examiner error.
Appellants also contend, "[t]he objective addressed by Kamienchick
is different than that of Groen" and that "[ t Jo modify the teachings [ of]
Groen with Kamienchick would require [] a fundamental change in how the
vehicle tire deflation device of Groen functions." Br. 18. First, the question
is not whether the respective "objective" of each reference is the same or not
(i.e., a reference is good for all that it teaches); instead, the question is
whether the Examiner provided articulated reasoning with rational
underpinning to combine such references in a manner sufficient enough to
support a finding of obviousness. See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398,418 (2007); see also In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir.
2017). Belden Inc., v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
provides the following additional guidance, "obviousness concerns whether
a skilled artisan not only could have made but would have been motivated to
3 To be clear, Groen teaches that its outer cover 18 is "collapsible." Groen
2:55-56, 4:31-32; 5:8-9; 5:45.
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Application 14/158,387
make the combinations or modifications of prior art to arrive at the claimed
invention."
Second, as explained by the Examiner, "the modification of Groen
with Kamienchick only includes the teaching of using unobstructed holes to
allow air to be released from inside" Groen's device. Ans. 3. "The
[E]xaminer is simply using the Kamienchick reference for the teaching of
including unobstructed holes to help the device deflate" and "including a
hole in the device of Groen would not destroy the functionality of the Groen
device and would in fact assist the device in deflating to allow the spikes to
penetrate a violating vehicle." Ans. 4. In summation, Appellants do not
explain how, "[b ]ecause the objectives and functionality of the devices of
Groen and Kamienchick are different," the addition of a vent to Groen's
device would require "a fundamental change in how the vehicle tire
deflation device of Groen functions." Br. 18.
Accordingly, and based on the record presented, we are not persuaded
by Appellants' contention that "one skilled in the art would not be
motivated" to combine Groen and Kamienchick. We thus are not persuaded
the Examiner erred in combining these references, or in concluding that
claim 1 is obvious in view of their combination. See Final Act. 2-3.
Consequently, we sustain the Examiner's rejection of claims 1---6, 9, and 12-
18 as being obvious over Groen and Kamienchick.
The rejection of (a) claim 8 as unpatentable over Groen, Kamienchick, and
Greves; and (b) claims 7, 10, 11, and 19 as unpatentable over Groen,
Kamienchick, and Reisman
The Examiner relies on the additional teachings of Greves and
Reisman to render these dependent claims obvious. See Final Act. 7-9.
Appellants do not dispute such additional teachings, but instead contend that
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Application 14/158,387
this additional art "does not resolve the deficiencies of Groen and
Kamienchick" and that this additional art "does not overcome these
deficiencies." Br. 19--20. We are not appraised of any such deficiency in
the Examiner's combination of Groen and Kamienchick, and as such, we are
not persuaded that the Examiner's rejection of these dependent claims, based
on this additional art, is in error. Accordingly, we sustain the Examiner's
rejection of claims 7, 8, 10, 11, and 19 in view of their respective
combination of references.
DECISION
The Examiner's rejections of claims 1-19 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended as set forth in 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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