Ex Parte Wheatley et al

Patent Trial and Appeal Board

May 3, 2016

11754144 (P.T.A.B. May. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111754,144 0512512007
27572 7590 05/05/2016
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
FIRST NAMED INVENTOR
Donald E. Wheatley
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.
8454-000002/US 6830
EXAMINER
HARTMANN, GARY S
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
05/05/2016 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):
troydocketing@hdp.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD E. WHEATLEY and TODD JACKSON
Appeal2014-003900
Application 11/754,144
Technology Center 3600
Before LYNNE H. BROWNE, JEREMY M. PLENZLER, and
ERIC C. JESCHKE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Donald E. Wheatley and Todd Jackson (Appellants) appeal under 35
U.S.C. § 134 from the rejection of claims 1--4 and 6-30. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Appeal2014-003900
Application 11/754,144
CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus of sealing seams in
segmented bridges. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A seal sealing a seam between abutting concrete road
segments, the concrete road segments each having a top surface,
each top surface being substantially in the same plane, the seal
comprising an epoxy adhesive in contact with the concrete road
segments and a woven member, the woven member comprising
carbon fiber bundles, the woven member in contact with and
bonded to the top surfaces of the concrete road segments on
opposite sides of the seam and extending across said seam.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jacob
Barroso
Sugimoto
Clapp
us 5,026,609
us 5,630,677
us 6,004,888
US 6,450, 729 B 1
REJECTIONS
June 25, 1991
May 20, 1997
Dec. 21, 1999
Sept. 17, 2002
Claims 1--4, 7-12, and 14--29 stand rejected under 35 U.S.C § 103(a)
as unpatentable over Sugimoto, Jacob, and Barroso.
Claims 6, 13 and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sugimoto, Jacob, Barroso, and Clapp.
DISCUSSION
Rejection I
Appellants argue claims 1-3, 7-12, 14--17, 19-22, and 24--29
together. See Appeal Br. 6-10. We select independent claim 1 as the
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Application 11/754,144
illustrative claim, and claims 2--4, 7-12, and 14--29, stand or fall with claim
1.
Noting that "Sugimoto discloses a fabric for reinforcement for a
structure rather than a reinforcement for a seal between structures,"
Appellants argue that "Sugimoto fails to teach or suggest a seal for sealing a
seam or gap between concrete road/bridge segments including a woven
member including carbon fiber bundles in contact with and bonded to the
top surface of the concrete road segments." Appeal Br. 7 (emphasis
omitted); see also Reply Br. 4.
Appellants' argument is not responsive to the rejection as articulated
by the Examiner, which relies upon the combined teachings of Sugimoto and
Barroso to meet this limitation. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., 800 F .2d 1091,
1097 (Fed. Cir. 1986). Thus, Appellants do not apprise us of error.
Noting that "Barroso discloses a method of repair of cracked
pavement including filling the crack with an adhesive mixture of roofing
materials and placing a flat molded cap or mat 24 over the adhesive,"
Appellants argue that "the cap 24 in Barroso is only intended to be a
temporary protective surface to allow the adhesive to cure" and that "[ t ]here
is no suggestion in Barroso for using a permanent cap or mat structure that
would be permanently embedded in and reinforce the adhesive within the
crack." Appeal Br. 8; Reply Br. 5---6.
As noted by the Examiner (see Ans. 8), claim 1 does not require a
permanent cap. Accordingly, Appellants' argument is not commensurate in
scope with the claim, and thus, does not demonstrate error in the rejection.
See In re Self, 671F.2d1344, 1348 (CCPA 1982) (limitations not appearing
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Application 11/754,144
in the claims cannot be relied upon for patentability). Further, we are not
aware of any requirement that a prior art reference suggest the modification
proposed in the rejection. See KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398,
419 (2007) ("In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
[Appellants] controls."); see also In re Linter, 458 F.2d 1013, 1016 (CCPA
1972). Thus, Appellants do not apprise us of error.
In addition, Appellants argue that "the method of Jacob is
contradictory to the method of Barroso in that Jacob relates to a complicated
multi-ply laminate treatment applied to a crack in an old road surface and
over which a new layer of asphalt is applied, whereas Barroso relates to
filling of a crack." Appeal Br. 9; Reply Br. 7 (emphasis omitted).
As noted by the Examiner, claim 1 does not preclude a layer of
asphalt. See Ans. 8. Moreover, as further explained by the Examiner, the
rejection relies upon Barroso to teach "the claimed configuration. Jacob has
only been used as a teaching that a material similar to that of Sugimoto can
be applied to cracks." Id. Appellants do not explain why Jacob's material
cannot be used in Sugimoto' s device. Appellants' contention that "[ n ]either
of the references relate to sealing of a seam between road/bridge segments
that incorporates an epoxy adhesive reinforced by a woven member
comprising carbon fiber bundles" (Appeal Br. 9--10; Reply Br. 7) is not well
taken, as again Appellants' argument is addressed to the references
individually, and does not address their combined teachings. Thus,
Appellants do not apprise us of error.
For these reasons, we sustain the Examiner's decision rejecting claim
1, and claims 2, 3, 7-12, 14--1 7, 19--22, and 24--29.
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Application 11/754,144
Regarding claims 4, 18, and 23, Appellants argue that "the disclosure
in Sugimoto relates entirely to reinforcing a concrete structure and not to a
seal between concrete bridge segments." Appeal Br. 10; Reply 9.
As noted by Appellants, Sugimoto states, "[ s ]ocial problems have
recently arisen from the brittleness and durability of cement structures, for
example, destruction of bridges caused by earthquakes, rust formation on
reinforcing bars caused by the neutralization of concrete, the fatigue of
reinforcing steels caused by a sharp increase in traffic volumes, and the
like." Sugimoto 1:15-20; see Appeal Br. 10; see also Reply Br. 9. As noted
by the Examiner, Sugimoto also states, "[t]he present invention relates to a
fibrous sheet for structure reinforcement and a structure reinforced with the
same. The present invention relates in more detail to a fibrous sheet for
structure reinforcement most suitable for reinforcing not only general
structures but also piers and floor systems of elevated structures." Sugimoto
1: 6-11; see Ans. 6. The Examiner is correct that when considered together,
these paragraphs suggest that Sugimoto' s device is applicable to the elevated
concrete "floor system" of bridges.
Appellants raise new arguments in the Reply Brief. See Reply Br. 7,
8. In accordance with 37 C.F.R. § 41.41(b)(2), lacking a showing of good
cause, we do not consider the arguments raised in the Reply Brief that are
not responsive to an argument raised in the Answer.
For this reason, we sustain the Examiner's decision rejecting claims 4,
18, and 23.
Rejection II
Appellants do not address the rejection of claims 6, 13, and 30.
Accordingly, we summarily sustain the Examiner's decision rejecting these
claims.
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Application 11/754,144
DECISION
The Examiner's rejections of claims 1--4 and 6-30 are 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)(l)(iv).
AFFIRMED
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