Ex Parte Young

Board of Patent Appeals and Interferences

Apr 10, 2007

10345461 (B.P.A.I. Apr. 10, 2007)

The opinion in support of the decision being entered today was not written 1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
30
31
32
33

for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WARREN F. YOUNG
____________________

Appeal 2007-0009
Application 10/345,4611
Technology Center 3600
____________________

Decided: April 10, 2007
____________________

Before: MURRIEL E. CRAWFORD, STUART S. LEVY, and
LINDA E. HORNER, Administrative Patent Judges.

LEVY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection
of claims 1, 2, 4, and 5. Claim 3 has been allowed (Br. 1). We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

1 Application filed January 17, 2003. The real party in interest is the
inventor (Br. 1).
Appeal 2007-0009
Application 10/345,461

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
30
31
32
33
34
Appellant invented a fence where the fence posts and fence rails are
made of steel. (Specification 1). The fence is designed so that all the rails
may be pushed snugly against each other in the in-line post. (Specification
3). To prevent someone from stealing the rails by removing spacer 16
(figure 9), a post cap 18 is provided with a lock thereon. (Specification 6).
Claim 1 is representative of the invention and reads as follows:
1. An interlocking and anti-theft steel fencing system
comprising a plurality of tubular steel posts vertically supported
from a ground and horizontally spaced and a plurality of
horizontal tubular steel rails connected between the posts, at
least one of the posts being an in-line post, the in-line post
being provided with opposite vertical side portions, the in-line
post having openings on one side portion and openings on an
opposite side portion for receiving therein the ends of rails
which connect to the in-line post, the openings being of
essentially the same shape as the outside shape of the horizontal
rails but being slightly larger to permit canting of the ends of
the rails in the openings, the rails being fitted into the in-line
post so that the rails coming in from opposite sides of the in-
line post through the openings are in abutting relation within
the in-line post, at least one of said posts constituting an end
post, the end post having openings along one side surface
portion only of the end post for receiving therein the ends of
rails connected to the end post, the openings on the end post
being of the same shape and slightly larger than the outer
periphery of the rails connecting into the end post, the end post
having its rails extending inwardly less than the full width of
the end post, a vertical spacer extending essentially the full
height of the end post between the ends of the rails and the
inside portion of the end post opposite from the openings
therein, a post cap received over the top of the end post when
the spacer is in position; and means for locking the post cap
securely in place on the top of the end post.

2
Appeal 2007-0009
Application 10/345,461

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
The Examiner rejected claims 1, 2, 4, and 5 under 35 U.S.C. § 103(a)
(2004). The Examiner asserts (Answer 2-3) that the grounds of rejection of
claims 2, 4, and 5 have not been withdrawn by the Examiner, but are not
under review on appeal because these claims have not been presented for
review in Appellant's Brief. In the Brief (p. 1) Appellant asserts that claims
1, 2, 4, and 5 are appealed. As Appellant only argues the rejection of claim
1, we find that dependent claims 2, 4, and 5 are before us for decision on
appeal and rise or fall with the rejection of claim 1.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gerstner US 2,800,305 Jul. 23, 1957

Bright US 3,921,960 Nov. 25, 1975

Pettit US 4,722,514 Feb. 02, 1988

Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Pettit, Gerstner, and Bright.
Appellant contends that the claimed subject matter would not have
been obvious. More specifically, Appellant contends (Br. 5) that the prior
art does not suggest abutting rails (Br. 5-6) and that the ribs 43 on the post
cap 37 of Pettit do not constitute a means for locking the post cap. The
Examiner contends (Answer 4-5) that Pettit fails to disclose that the posts
and rails are made of steel, and Pettit fails to disclose that the rails are in
abutting relationship. To make up for these deficiencies of Pettit, the
3
Appeal 2007-0009
Application 10/345,461

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
Examiner turns to Bright for a suggestion of steel posts and rails, and turns
to Gerstner for a suggestion of abutting rails.
We reverse.
ISSUE
Has Appellant shown that the Examiner erred in holding that the
combined teachings and suggestions of Pettit, Bright, and Gerstner would
have suggested to an artisan the subject matter of claim 1?

FINDINGS OF FACT
Based upon a preponderance of the evidence, we make the following
findings of fact:
1. Appellant invented a fence having fence posts and fence rails made
of steel. (Specification 1).
2. The fence is designed so that all the rails may be pushed snugly
against each other in the in-line post. (Specification 3).
3. To prevent someone from stealing the rails by removing spacer 16
(Fig. 9), a post cap 18 is provided with a lock thereon.
(Specification 6).
4. Purely by way of example, the lock consists of a shaft 26 which
extends from the side of post 22 horizontally below the upper end
of the post. On the end of the shaft, a finger 28 having a hook 30 is
mounted. (Id.).
5. Pettit discloses that even though the parts have beveled end
portions for insertion into holes or other portions in an extremely
4
Appeal 2007-0009
Application 10/345,461

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
simple matter, notwithstanding the beveled ends, the parts have a
friction fit with each other. (Pettit, col. 1, ll. 24-29).
6. It is further disclosed that when assembled, the fence will be
extremely sturdy to prevent the parts from rattling when subjected
to wind forces, but the parts will be able to move relative to each
other to allow for expansion and contraction. (Pettit, col. 1, ll. 17-
23).
7. Bars 30 and 31 prevent removal of subassemblies 26 from the
posts. (Pettit, col. 4, ll. 41-43).
8. Ribs 43 are formed on inside surfaces of cap 37, and result in caps
being held in position "with a good tight friction fit." (Pettit, col. 5,
ll. 5-19).
9. Gerstner discloses a fence having what appears to be abutting rails
as shown in Fig. 3.
10. Bright discloses a fence having rails and posts made of steel.
(Bright, col. 3, ll. 30 and 31).

PRINCIPLES OF LAW
On appeal, Appellant bears the burden of showing that the Examiner
has not established a legally sufficient basis for combining the teachings of
the applied prior art. Appellant may sustain this burden by showing that,
where the Examiner relies on a combination of disclosures, the Examiner
failed to provide sufficient evidence to show that one having ordinary skill
in the art would have been motivated to combine the references as suggested
5
Appeal 2007-0009
Application 10/345,461

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
to make Appellant’s invention. See United States v. Adams, 383 U.S. 39
(1966); In re Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick, Co., 464 F.3d 1356, 1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir.
2006). The mere fact that all the claimed elements or steps appear in the
prior art is not per se sufficient to establish that it would have been obvious
to combine those elements. United States v. Adams, id; Smith Industries
Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d
1415, 1420 (Fed. Cir. 1999).

ANALYSIS
We note at the outset Appellant's statement (Br. 8) that "[t]he use of
the term 'steel' in applicant's claims is merely didactic and is not intended to
impart any patentable weight to the claims." From the description in Bright
of having fence posts and rails of steel, and the above statement by
Appellant, we find that an artisan would have been motivated to make the
fence rails and posts of Pettit out of steel, to prevent rusting.
In addition, although we find from the description in Pettit that the rails have
a friction fit with each other and that they are able to move relative to each
other to allow for expansion and contraction, we find no clear teaching that
the rails would abut one another during expansion. We would have to resort
to unfounded speculation to find that the rails between the line posts of Pettit
abut one another during expansion periods, as advanced by the Examiner
(Answer 6). However, from the disclosure of Pettit (fact 6) that the fence
6
Appeal 2007-0009
Application 10/345,461

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
parts will not rattle when subjected to wind forces, and the illustration in
Gerstner that appears to show abutting rails (fact 9), we find that an artisan
would have been motivated to use abutting rails in Pettit.
Turning to the contention of whether the ribs 43 of Pettit constitute a
lock, we are cognizant of the Examiner's assertion that Appellant's
Specification refers to the described lock as being "[p]urely by way of
example" (fact 4). However, considering that disclosure with the previous
recitation in the Specification that the lock is provided to prevent someone
from stealing the rails, we interpret the reference to the lock being "[p]urely
by way of example" to mean that other locks may be used. The friction fit
cap of Pettit is not a lock, as the cap can be removed by pulling it off or
pushing or prying it off, such as with a screwdriver and hammer. Because
the lock is provided to prevent stealing the fence, we find that a friction fit is
insufficient to meet the limitations of claim 1. It follows that we agree with
Appellant (Br. 5) that the combined teachings and suggestions of the prior
art would not have suggested all of the language of claim 1.

CONCLUSION OF LAW
On the record before us, Appellant has shown that the Examiner has
erred in rejecting claim 1 under 35 U.S.C. § 103(a) as being unpatentable
over Pettit in view of Bright and Gerstner. In addition, we cannot sustain the
rejection of dependent claims 2, 4, and 5 because the Examiner has not
shown how the additional references make up for the basic deficiency of
Pettit, Bright, and Gerstner. We observe that Cain, U.S. Patent 5,593,141,
relied upon by the Examiner to reject claim 2, does show a padlock locking a
7
Appeal 2007-0009
Application 10/345,461

1
2
3
4
5
6
7
8
9
10
post cap. However, from our review of the reference, we find that Cain
describes a lock on a gate post, to prevent the gate from being opened, and
does not describe a cap on the fence post, or that the lock is to prevent the
fence rails from being stolen. Accordingly, we find that the teachings and
suggestions of Cain fail to make up for the basic deficiencies of the prior art
applied against claim 1.
DECISION
The Examiner's rejection of claims 1, 2, 4, and 5 under 35 U.S.C.
§ 103(a) is Reversed.

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
REVERSED

vsh

William S. Dorman
830 Beacon Building
406 South Boulder
Tulsa OK 74103
8