Ex Parte Gibbs et al

Patent Trial and Appeal Board

Oct 23, 2017

14014538 (P.T.A.B. Oct. 23, 2017)

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.
14/014,538 08/30/2013 Edward L. Gibbs A084 4193
21454 7590 10/25/2017
GARY PFTFR SON
EXAMINER
211 N. ROBINSON AVE., MACARTHUR, VICTOR L
SUITE 450
OKLAHOMA CITY, OK 73102 ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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):
GP@GARYPETERSON.COM
indianmeridian @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD L. GIBBS, FRED L. GIVENS,
and GARY W. VONNAHME
Appeal 2015-003462
Application 14/014,538
Technology Center 3600
Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.
KAUFFMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 106—125. Ans. 3—13. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
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Application 14/014,538
CLAIMED SUBJECT MATTER
Appellants’ claimed invention “relates generally to barriers1 2to
pedestrians or vehicles, and more particularly to fences and fence
components formed with rails and upright members that are tiltable with
respect to each other.” Spec. 1,12.
When the fence is installed on a slope, an installer may adjust the
upright members of a “rackable” or “gradable” fence to be vertical. See
Spec. 11 8—9, Fig. 10; O’Sullivan, 1:5—9; App. Br. 17 (“rackable”), 18
(“gradable”). We reproduce below Appellants’ Figures B and C to contrast
a nonrackable fence to a rackable fence.
Figure B (left) illustrates a nonrackable fence, and Figure C (right) illustrates
a rackable fence. App. Br. 5—6. Although none of the claims recite
explicitly that the barrier is “rackable” or “gradable,” such adjustability is
provided by the claimed configuration of a tiltable tab and the associated
connection to each upright member.
1 A fence panel is a type of barrier. Abstract.
2
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Application 14/014,538
Appellants’ claimed invention includes a plurality of rails and upright
members. We reproduce Figure 1 of the application at hand below.
Figure 1 is a front elevation view of a section of fence 10 that includes a
plurality of rails 18 and a plurality of upright members 20. Spec. 10, 65,
68.
3
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Application 14/014,538
Figure 3 of Appellants’ claimed invention follows.
r
L
Figure 3 is a cross-sectional view of rail 18. Spec. 112.2 Each rail 18
includes elongate web 22 and pair of spaced and opposed sidewalls 24, 26
that form U-shaped rail channel 28. Id. 170. Plurality of tabs 40 are formed
in longitudinally spaced relationship in each rail 18. Id. 1 80.
Upright members 20 extend in transverse relationship to rails 18 to
form a barrier. Spec. 179. Each upright member 20 is mechanically
connected (e.g., a resistance weld) to each rail 18 at a tab 40, and is tiltable
with respect to rail 18 within an angular adjustment range. Id. 79-81.
2 Paragraph 12 states that the view is of the rail shown in Figure 3; however,
based on content, it is actually of the rail shown in Figure 2.
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Application 14/014,538
Claims 106 and 117 are independent. Claims 107—116 depend from
independent claim 106, and claims 118—125 depend from claim 117. Claim
106, reproduced below, is illustrative of the claimed subject matter:
106. A barrier comprising:
a plurality of identically sized steel rails disposed in
spaced and parallel relationship, each rail comprising:
an elongate web;
a pair of spaced side walls that depend from the web and
cooperate with the web to define a rail channel having a mouth
situated opposite the web; and
a plurality of longitudinally spaced tabs, each tab tiltable
relative to the web and extending within the rail channel from a
position at or adjacent the web; and
a plurality of steel upright members, each upright member
tiltable relative to the webs of the rails and extending in
transverse relationship to the plural rails, with a weld formed
between each upright member and each rail at a tab of that rail;
in which the mouths of the plurality of rails open in the
same direction.
REJECTIONS3
Claims 106—125 are rejected under 35 U.S.C. § 103(a) over
O’Sullivan, Hawkins, and Hebda.4 Ans. 3—12.
Claims 106—125 are rejected under 35 U.S.C. § 103(a) over
O’Sullivan, Hawkins, Hebda, and Gibbs.5 Ans. 13.
3 The Examiner withdrew some of the rejections. See Ans. 2.
4 O’Sullivan (US 4,723,760; issued Feb. 9, 1988), Hawkins (US 2,563,530;
issued Aug. 7, 1951), and Hebda (US 4,883,256; issued Nov. 28, 1989).
5 Gibbs (US 6,969,051 Bl; issued Nov. 29, 2005).
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Appeal 2015-003462
Application 14/014,538
ANALYSIS
A. Introduction
The application at hand is a continuation of Application 10/904,871
(“the parent application”). The Board entered a decision regarding the
parent application on March 22, 2012 (“the prior Decision,” or “Dec.”). The
parent application subsequently issued as U.S. Patent No. 8,523,150.6
In the Office Action that is the subject of this appeal, the Examiner
incorporates several documents from the parent application: the Final
Rejection dated October 21, 2009 (“Fin. Rej. dated Oct. 21, 2009”); the
Examiner’s Answer dated May 25, 2010; the prior Decision; and, the Final
Rejection dated February 28, 2013 (“Fin. Rej. dated Feb. 28, 2013”). See
Fin. Rej. dated April 2, 2014, at 3—5.
The Examiner concluded that the subject matter of claims 106—125
would have been obvious over either (1) O’Sullivan, Hawkins, and Hebda,
or (2) O’Sullivan, Hawkins, Hebda, and Gibbs. Ans. 3—13.
Appellants contend that secondary considerations of long-felt but
unsatisfied need, skepticism, and commercial success, illustrate how both
rejections are the result of improper hindsight. App. Br. 14—15, 50—51, 57—
58.
As evidence of secondary considerations, Appellants submitted six
declarations that discuss the Montage All Terrain Fence (ATF)7 product
line, a line of fences that Appellants contend are covered by the challenged
6 The parent application claims benefit of 60/522,769 (filed Nov. 4, 2004)
and 60/553,658 (Mar. 15, 2004).
7 See App. Br. 31, Fn. 3.
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Application 14/014,538
claims. See, e.g., First Meek Decl. 14; Second Meek Deck Tflf 3—6.8 The six
declarations are the Declaration of Rich Lee (Lee Decl.), the Declaration of
Michael D. Smith (Smith Deck), the Declaration of Mike Irwin (Irwin
Deck), the Declaration of Ed Lott (Lott Deck, the First Declaration of Mark
A. Meek (First Meek Deck), and the Second Declaration of Mr. Meek
(Second Meek Deck).9 Appellants submitted the first five of these
declarations in the parent application (i.e., all but the Second Meek
Declaration). Appellants contend that the Examiner did not properly
evaluate the evidence of secondary considerations in several respects. App.
Br. 25—27. For the reasons that follow, we agree.
B. Skepticism Evidence
The Examiner states that Appellants’ declarations are not persuasive
because
the declarations were not expressed ‘before these inventors
proved him wrong’ in accordance with MPEP 716.0510 but were
rather all signed and dated in 2007 (i.e., after applicant's
invention of welding pickets to a rail via tabs).
Fin. Rej. 6-7 (emphasis added). By interpreting that the declarations must
be expressed prior to the time of the invention, the Examiner is requiring
that the evidence of skepticism (the declarations) have been in existance
before the time of the invention.
8 Paragraph 6 of the Second Meek Declaration is mistakenly numbered as
paragraph 26.
9 The First Meek Declaration is dated June 20, 2007, and the Second is dated
Feb. 7, 2014. Pages 16—19 of the Second Meek Declaration are unnumbered
and are labeled as Exhibit 1 and Exhibit 2.
10 Meaning the Manual of Patent Examining Procedure (“MPEP”) § 716.05.
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We disagree with that interpretation. Skepticism must relate to a
belief from before the time of the invention, but that belief may be
documented later in time. See generally Cardiac Pacemakers, Inc. v. St.
Jude Medical, Inc., 381 F.3d 1371, 1376 (Fed. Cir. 2004) (witness testimony
given at trial and after the time of the invention was probative of
skepticism). Indeed, the ordinary course of events would be that the
skepticism is documented (such as in a declaration) after the time of the
invention rather than contemporaneously. Here, the evidence in question
was created in 2007, after the time of the invention, but that evidence relates
to the declarant’s belief at the time of the invention. See, e.g., Lee Decl. 14
(explaining that he was initially skeptical prior to seeing the Montage ATF);
Lott Decl. THf 3—4 (discussing his belief prior to creation of the Montage
ATF); First Meek Decl. 19 (stating that at a fencing show in 2005,
fencing installers repeatedly expressed amazement that a fence could be
welded and rackable). Consequently, we agree with Appellants that the
Examiner erred by asserting that skepticism must precede the critical date of
the invention. See App. Br. 33—34.
Additionally, Appellants contend that the Examiner erred by asserting
that Appellants did not submit evidence of skepticism as required by MPEP
§ 716.01 (c)I and II. App. Br. 34 (citing Fin. Rej. 6—7). We agree with
Appellants that the Declarations in question are in fact evidence. Therefore,
the Examiner’s determination that Appellants did not submit evidence is
incorrect.
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C. Commercial Success
The Examiner asserts that the Board considered the Declarations in
the parent case and those Declarations did not alter the Board’s
conclusion that the claims were unpatentable. See Fin Rej. Dated Apr. 2,
2014 at 8; Ans. 22—23 (emphasizing that the same ground of rejection was
involved).
This analysis is incorrect in two respects. First, the analysis in the
parent application related to claims having a different scope. Specifically,
the prior Decision determined that the five declarations were not
commensurate in scope with the claims, because the claims did not
require the barrier to be made of steel and did not require the tabs to be
tiltable or rotatable. See Dec. 15—17. Here, in contrast, the claims require
both that the barrier is made of steel and that the tabs are tiltable or
rotatable. The Examiner responds to Appellants’ argument by asserting
that the art, statute and rationale in the parent case and the case at hand
are identical, and for that reason, the rejections are sufficient. Ans. 16—
17. This is not persuasive. While there are similarities between the
rejections, the Examiner’s analysis is still deficient because the Examiner
did not account for the difference in claim scope in the nexus analysis. In
light of this, we agree with Appellants that the Examiner erred by refusing
to consider the Declarations on the basis that the evidence lacked nexus to
the claimed invention. App. Br. 36—38.
Second, the Examiner’s generic reference to “the declarations” does
not account for the fact that the Second Meek Declaration was submitted
in the case at hand but not in the parent application. Indeed, the Examiner
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does not refer to the Second Meek Declaration in either the Office Action
that is the subject of this appeal or the Examiner’s Answer. Therefore,
the record does not reflect that the Examiner considered this evidence.
See MPEP § 716.01(B).
Beyond this, as detailed below, the Examiner applied the wrong
standard regarding nexus.
When analyzing the nexus of the evidence of commercial success to
the claimed subject matter, the Examiner states that the “sales data are not
clearly linked solely to any one specific claimed feature.” Fin. Rej. dated
Apr. 2, 2014, 7; see also Ans. 21 (repeating this language and underlining
“solely to any one specific claimed feature”). Similarly, the Examiner states
that the five Declarations do not properly show “that the commercial success
is due to any one limitation in particular free of any other possible causes.”
Ans. 15.
Contrary to what is suggested by the Examiner’s statements,
Appellants need not demonstrate that success is attributable only to claimed
features. Continental Can Co. USA, Inc., v. Monsanto Co., 948 F.2d 1264,
1273 (Fed. Cir. 1991) (“It is not necessary [] that the patented invention be
solely responsible for the commercial success, in order for this factor to be
given weight appropriate to the evidence, along with other pertinent
factors.”). Rather, the objective evidence must be reasonably commensurate
in scope with the claims. See Institut Pasteur & Universite Pierre Et Marie
Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013) (quoting Rambus
Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)); see also App. Br. 43^44
(asserting the Examiner applied the wrong standard).
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D. Long Felt But Unresolved Need
The Examiner did not give weight to Appellants’ Declarations, in part,
because, according to the Examiner, “[t]he test for obviousness is not that a
single inventor anticipate all features of the the claim in a single
embodiment.” Fin. Rej. 6. We agree with Appellants that while historical
failure by others to anticipate is not dispositive of obviousness, that does not
mean that such evidence can be ignored. See App. Br. 25.
E. Summary
As detailed above, the Examiner’s reasons for affording no weight
or ignoring Appellants’ evidence are incorrect. Further, the Examiner
relied on our previous decision without accounting for the difference in
claim scope, provided no indication that the Second Meek Declaration
was considered, and applied the wrong standard for nexus.
The lack of evidence that the Examiner considered the Second
Meek Declaration is significant because that Declaration contains
evidence of commercial success in terms of market share. Specifically,
Mr. Meek states that Appellants’ share of the ornamental fencing market
grew from about 6% in 2004 to around 23% by February of 2014. Second
Meek Decl. 19. Mr. Meek also states that in this same time frame,
Appellants’ market share of the steel ornamental fencing market grew from
10% to 29.5%, and the rackable steel ornamental fencing segment of the
ornamental fencing market grew from under 10% to about 80%. Id. at ||
11—12, and 15.
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CONCLUSION
In light of the fact that the Examiner relied on improper legal
standards and failed to document consideration of certain evidence, the
Examiner has not demonstrated that the evidence of obviousness outweighs
the evidence against it.
DECISION
We reverse the Examiner’s decision to reject claims 106—125 under
35 U.S.C. § 103(a) both over O’Sullivan, Hawkins, and Hebda, and over
O’Sullivan, Hawkins, Hebda, and Gibbs.
REVERSED
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