Ex Parte Wheeler

Patent Trial and Appeal Board

Sep 15, 2014

12801432 (P.T.A.B. Sep. 15, 2014)

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.
12/801,432 06/09/2010 Dale Owen Wheeler JR. 2010001 7527
7590 09/15/2014
David E. Wheeler
1905 Sunrise St. NW
North Canton, OH 44720
EXAMINER
HARTMANN, GARY S
ART UNIT PAPER NUMBER
3671
MAIL DATE DELIVERY MODE
09/15/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DALE OWEN WHEELER JR.
____________________

Appeal 2012-008774
Application 12/801,4321
Technology Center 3600
____________________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellant identifies the real party in interest as the inventor, Dale Owen
Wheeler, Jr. Appeal Br. 3.
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Application 12/801,432

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, and 4–8.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
According to the Specification, Appellant invented “traffic
channelizers, lane markers and signs, and specifically flexible markers and
signs with replaceable shafts.” Spec. ¶ 1. Claim 1, which we reproduce
below as representative of the claims on appeal, is the sole independent
claim.
1. An apparatus for marking traffic lanes
comprising an upright flexible marker (10)
connected to a mounting base (18, 24) by a flexible
hinge (22) which is capable of bending at about
90° relative to the upright position of flexible
marker (10) at 360° around mounting base (18,
24), wherein marker (10) is tubular and is adapted
to fit over upper portion (26) of flexible hinge (22),
said apparatus being mountable on a surface using
an adhesive or by connecting with bolts, wherein
said flexible hinge and flexible marker, and said
flexible hinge and mounting base are each non-
threaded and are each adapted to fit one inside the
other, and wherein said flexible marker is held in
place on said flexible hinge using a bolt (14) and,
wherein said flexible hinge is connected to said
mounting base using anchor (62) which passes
through both sides of mounting base (18,24) and

2 Our decision will refer to Appellant’s Specification (“Spec.,” filed June 9,
2010), Appeal Brief (“Appeal Br.,” Mar. 12, 2012), and Reply Brief (“Reply
Br.,” filed May 4, 2012), as well as the Examiner’s Answer (“Answer,”
mailed Apr. 18, 2012).
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flexible hinge (22) traversing 65% to 85% of the
diameter or the width of the mounting base and is
removable, whereupon flexible hinge (22) is
separable from said mounting base (18,24).
REJECTION AND PRIOR ART
The Examiner rejects claims 1, 2, and 4–8 under 35 U.S.C. § 103(a) as
unpatentable over Hughes (US 5,197,819, iss. Mar. 30, 1993), Weibye (US
6,099,412, iss. Aug. 8, 2000), and O’Donnell (US 4,004,545, iss. Jan. 25,
1977). Answer 4–6.

ANALYSIS
Initially, we note that the Examiner applies two different rationales for
rejecting each of claims 1, 2, and 4–8, although both rationales rely on
Hughes, Weibye, and O’Donnell. For the following reasons, we sustain the
rationale discussed on pages 4–5 in the Grounds of Rejection section of the
Examiner’s Answer. Thus, we do not find it necessary to reach the second
rationale set forth of pages 5–6 in the Grounds of Rejection section of the
Examiner’s Answer.
Appellant does not separately argue against the rejection of the
dependent claims. Thus, claims 2 and 4–8, which depend from independent
claim 1, stand or fall with the independent claim.
With respect to claim 1, Appellant argues, “Hughes does not show a
marker capable of 360 degree movement around [a] base . . . .” Appeal
Br. 10. This argument is not persuasive because the Examiner relies on
Weibye to teach this limitation. See Answer 4–5. Appellant further states,
“[a]s can be seen when comparing Hughes with the Summary of the
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Invention herein, the Hughes apparatus is more complex, less durable and
more difficult to repair than the invention instantly claimed.” Appeal
Br. 10–11; see also Reply Br. 1–2. The statement is not directed to
limitations of the claims, however. Thus, the foregoing is not persuasive of
error in the Examiner’s rejection.
Appellant argues, “Weibye has no motivation to make his marker
sturdy enough to withstand heavy traffic . . . .” Appeal Br. 11; see also
Reply Br. 2. Even assuming arguendo that this is true, claim 1 does not
recite such a limitation. See Answer 6. Appellant further argues, “Weibye
. . . does not use pins or bolts to connect his hinge (14) to marker (12) or to
hinge mount (58), and the marker can apparently be removed just by pulling
it off the mount.” Appeal Br. 11. Again, even assuming we agree with this
statement, the Examiner relies on Hughes, rather than Weibye, to teach the
“anchor” claim limitation. See Answer 4.
Appellant also argues:
There is no motivation for one skilled in the art to
look to distance markers for ways to improve
traffic markers, and if the teachings of Weibye
were followed literally, the base of the present
invention would be installed beneath the road
surface, a result that the present inventor would
prefer to avoid. Without guidance or motivation,
one would have to pick and choose which
teachings of Weibye and Hughes to use, and which
to discard, to approach something similar to the
invention instantly claimed, and would still come
up short.
Appeal Br. 11. However, the Examiner does not rely on Weibye to teach the
“mounting base” limitation, but instead relies on Hughes. See Answer 4.
Instead, the Examiner relies on Weibye to teach the “flexible hinge” claim
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limitation. See id. at 4–5. Further, in KSR the Supreme Court rejected the
Federal Circuit’s rigid application of its teaching, suggestion, or motivation
test in favor of an expansive and flexible approach. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 415 (2007). KSR emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id at 415–16, and discussed circumstances in which a patent might be
determined to be obvious without an explicit application of the teaching,
suggestion, motivation test. In particular, the Supreme Court reaffirmed that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id.
In this case, the Examiner substitutes one flexible hinge connecting a
base and a marker from Weibye in place of another flexible hinge
connecting a base and a marker as taught by Hughes. Using the flexible
hinge from Weibye with the base and marker of Hughes would have
provided the predictable result of allowing Hughes’ marker “to deflect [ ]
until it is substantially flush to the ground surface” when run over by a
vehicle, and then to “return to its upright position” when the vehicle passes.
Weibye, col. 3, ll. 25–26, 29–30. Thus, the combination of Hughes and
Weibye would have been obvious, and Appellant’s arguments are not
persuasive of error in the Examiner’s rejection.
Appellant further argues:
Contrary to the Examiner’s assertions that Hughes
embraces a single anchor, the two locking wedges
appear to be an integral part of the Hughes
construction, and the pins described are used for
securing the two locking wedges. No pins
described by Hughes, by themselves, are capable
of anchoring a marker to his hinge. Again, see
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Hughes at the paragraph bridging pages 6 and 7,
and the three following paragraphs, and the
[f]igures. This aspect of Hughes appears to be
irrelevant, and if anything, teaches away from the
invention instantly claimed. The anchor (62)
instantly claimed, ties the assembled components
of the apparatus together with simplicity and
strength. None of the cited references teach using
a single anchor that passes through both sides of
the base and both sides of the flexible hinge to
connect a hinge to a mounting base. The teachings
of Weibye would not motivate the skilled in the art
to modify the Hughes apparatus so as to achieve
the present result.
Appeal Br. 12; see also Reply Br. 3. We do not find Appellant’s arguments
to be persuasive. As the Examiner points out, the claim includes the term
“comprising,” and thus does not preclude the use of additional components,
such as Hughes’ “locking wedges,” in addition to the claimed “anchor.” For
these reasons, even if Appellant is correct that “[n]o pins described by
Hughes, by themselves, are capable of anchoring a marker to his hinge,”
such is not a requirement of claim 1. See Answer 7. Further, contrary to
Appellant’s arguments, each of the locking pins 83 of Hughes does in fact
appear to connect the base and flexible hinge (see Hughes, Fig. 2), and thus
it is Appellant’s conjecture that both or even one pin of Hughes is incapable
of connecting the base and flexible hinge together. Based on the foregoing,
we are not persuaded by Appellant’s arguments that the rejection is in error.
Appellant’s further arguments also are unpersuasive. For example,
Appellant argues that it would not have been obvious to modify Hughes and
Weibye, in light of the teaching of O’Donnell, so that “a marker is primarily
connected to an apparatus by placing the marker over a tubular flexible
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hinge.” Appeal Br. 13. The Declaration of the inventor, Dale Owen
Wheeler, Jr., filed on April 5, 2011 (“Decl.”), sets forth purported
advantages provided by an arrangement in which a marker fits over (instead
of inside) a flexible hinge. See, e.g., point 2 of the Declaration. Such an
arrangement, however, is shown by O’Donnell. See Answer 5, 7–8, citing
O’Donnell, Fig. 1. Presumably, advantages provided by Appellant’s
arrangement would have been provided by O’Donnell, which shows a
similar arrangement. See Decl. (“2. If the marker is made to fit inside the
hinge [which does not occur in O’Donnell or the claimed device], it will
need substantial reinforcement, which adds substantially to the cost of
manufacture.”) (“4. Manufacturing the marker to fit over the o.d. of the
hinge ensures that any forces striking the marker will be transferred
substantially evenly to the hinge throughout its circumference, making it
more likely that the hinge will flex as intended, thereby absorbing the energy
of the impact.”). The Declaration does not opine that it would not have been
obvious to modify Hughes and Weibye to include the arrangement of
O’Donnell. Further, substituting the arrangement of O’Donnell, where a
marker fits over a flexible hinge that is connected to a base, in place of the
arrangements of Hughes and Weibye where markers fit within flexible
hinges, is a substitution of one known arrangement for another arrangement,
and simply provides an alternate arrangement for connecting the base and
marker. See KSR at 415–416. For these reasons, Appellant’s arguments of
error are therefore unpersuasive.
Based on the foregoing, we sustain the Examiner’s rejection of claims
1, 2, and 4–8 as unpatentable based on the combination of Hughes, Weibye,
and O’Donnell.
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Application 12/801,432

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DECISION
The Examiner’s rejection of claims 1, 2, and 4–8 under 35 U.S.C.
§ 103(a) 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)(1)(iv).

AFFIRMED

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