Ex Parte Reed et al

Patent Trial and Appeal Board

Oct 23, 2018

14013999 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/013,999
35979 7590
Bracewell LLP
P.O. Box 61389
FILING DATE
08/29/2013
10/25/2018
Houston, TX 77208-1389
FIRST NAMED INVENTOR
Max W. Reed
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.
0071548.000024 7791
EXAMINER
TRAN,UYENM
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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):
docketing@bracewell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAX W. REED and BRIAND. KIRTLAND
Appeal2017-011828
Application 14/013 ,999 1
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-9 and 17-23.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the Applicant, JSI Equipment Solutions LLC, which,
according to the Appeal Brief, is the real party in interest (Appeal Br. 1 ).
Appeal 2017-011828
Application 14/013,999
Independent claim 1 below is illustrative of the subject matter on
appeal ( emphases added):
1. A solar panel array system comprising:
a plurality of vertical posts;
a torque tube supported on upper ends of the vertical
posts, the torque tube having a longitudinal axis;
the torque tube having a cross-sectional configuration
having an exterior surface with more than four flat sides; and
a photo-voltaic module clamp assembly having an upper
portion with a contact surface in abutment with one of the flat
sides, the clamp assembly having a lower portion having two
upper ends, each of the upper ends comprising a connector
secured to the upper portion of the clamp assembly on opposite
sides of the torque tube, the lower portion of the clamp
assembly extending downward from the upper portion around
and completely under the torque tube, securing the clamp
assembly to the torque tube, the lower portion having a
plurality of flanks that mate with some of the flat sides of the
exterior swface of the torque tube to transfer torque between
the clamp assembly and the torque tube.
The Examiner maintains the following rejections2 :
(a) claims 1-7 and 9 under 35 U.S.C. § 103 as being unpatentable
over Plesniak (US 2013/0153007 Al, published June 20, 2013) ("Plesniak")
in view of Bilsing (US 2006/0245824 Al, published Nov. 2, 2006)
("Bilsing"), Cunningham (US 6,250,591 B 1, issued June 26, 2001)
("Cunningham"), and Cole et al. (US 2012/0180845 Al, published July 19,
2012) ("Cole");
2 We refer to the Specification, filed Aug. 29, 2013 ("Spec."); the Appeal
Brief, filed June 14, 2017 ("Appeal Br."); the Examiner's Answer, mailed
Aug. 25, 2017 ("Ans."), and the Reply Brief filed Sept. 27, 2017 ("Reply
Br.").
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Application 14/013,999
(b) claims 8 and 17-20 under 35 U.S.C. § 103 as being
unpatentable over Plesniak, Bilsing, Cunningham, and Cole and further in
view of Szuba (US 2013/0020835 Al, published Jan. 24, 2013) ("Szuba");
(c) claims 21 and 23 under 35 U.S.C. § 103 as being unpatentable
over Plesniak, Bilsing, Cunningham, and Cole and further in view of
Ciasulli et al. (US 2011/0265860 Al, published Nov. 3, 2011) ("Ciasulli");
and
(d) claim 22 under 35 U.S.C. § 103 as being unpatentable over
Plesniak, Bilsing, Cunningham, Cole, and Ciasulli and further in view of
Szuba.
ANALYSIS
§ 103 Rejection over Plesniak, Bilsing, Cunningham, and Cole
Claims 1-7 and 9 are rejected under 35 U.S.C. § 103 as being
unpatentable over Plesniak in view of Bilsing, Cunningham, and Cole.
Appellant's principle argument on appeal is that the applied
references do not disclose or suggest a solar panel array having the torque
tube and the photo-voltaic module clamp assembly recited in claim 1
(Appeal Br. 8-21; Reply Br. 1--4). For instance, Appellant contends
Plesniak does not disclose how its supports are connected to a torque tube,
inner ends of Plesniak' s supports do not extend completely under the torque
tube because there is a gap on the lower side, Plesniak never uses the term
"clamp," Plesniak does not describe what the supports would look like if the
torque tube were octagonal, and it would not have been obvious to modify
Plesniak to make the supports extend completely under the tube without
impermissible hindsight (Appeal Br. 10-14).
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Appellant's arguments are unpersuasive. Figure 2 of Plesniak is
reproduced below.
220
FIG. 2
Figure 2 depicts an embodiment of a torque tube.
Plesniak discloses a torque tube 200 with one or more supports 202
along its length (Plesniak ,r 33). Plesniak discloses that the torque tube 200
may have an octagonal cross-section (id. ,r 28) and the supports "may have
any cross sectional shape including but not limited to circles, ellipses, ovals,
triangles, quadrilaterals, pentagons, hexagons, octagons, H-shapes, T-shapes,
C-shapes or any other shape including those described elsewhere herein" (id.
i133).
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Application 14/013,999
The Examiner finds that the supports have upper and lower portions
and function as a clamp (Ans. 22). As shown in Figure 2 above, the
supports 202 engage the torque tube 200 on several sides. An annotated
copy of Plesniak' s Figure 4 is reproduced herein to further illustrate upper
and lower portions of Plesniak' s supports.
Lower Portion
430b
Upper Portions
430a
FIG.4
Figure 4 depicts a torque tube embodiment with outriggers.
Claim 1 does not recite a frame of reference or orientation to limit
where "upper" or "lower" would be located for the clamp assembly (e.g.,
relative to where photovoltaic panels would be mounted). Plesniak's
supports include upper portions and lower portions, such as relative to a
selected frame of reference (i.e., designating the top of Figure 4 as down and
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the bottom of Figure 4 as up in view of the lack of orientation or frame of
reference in claim 1 ). Therefore, we make the following comments as
though the embodiment of Figure 4 were upside down. 3
We agree that Plesniak' s supports have upper and lower portions but
that the supports would also function according to the recitations of claim 1.
As illustrated above in the annotated copy of Figure 4, supports 402 include
an upper portion having a contact surface that abuts a side of the torque tube
400 and a lower portion extending downward (in the frame of reference
described above) from the upper portion and completely under the torque
tube 400.
The lower portion would also have a plurality of flanks that mate with
some of the flat sides of the exterior surface of the torque tube when the
latter has an octagonal cross section. Although Plesniak does not explicitly
disclose the structure of the supports when the torque tube and the supports
each have an octagonal cross section, Plesniak suggests that the supports
3 Alternatively, it would have been obvious to extend the lateral portions
engaging the sides of the torque tube (the support portions having
semicircular shapes in the embodiments of Figures 2 and 4 of Plesniak) so
there is a connection between them ( e.g., to provide more engagement
between the torque tube and support and more stiffness for the support by
eliminating the gap depicted in Plesniak's drawings). Appellant argues there
would have been no reason to make such a modification ( Appeal Br. 12) but
this is unpersuasive in view of the knowledge and creativity of one of
ordinary skill in the art. The determination of obviousness must take into
account not only the teachings within the references, but the knowledge and
creativity of the ordinary artisan (In re Samour, 571 F.2d 559, 562 (CCPA
1978); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (In an
obviousness assessment, skill is presumed on the part of the artisan, rather
than the lack thereof.)). "A person of ordinary skill is also a person of
ordinary creativity, not an automaton" (KSR Int'!. Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007)).
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would have surfaces that abut and mate with flat sides of the exterior surface
of the torque tube, as recited in claim 1. The supports depicted in Figures 2
and 4 of Plesniak have portions that abut the exterior surface of the torque
tube with some surfaces (e.g., those of the annotated lower portion) having
shapes mirroring that of the torque tube exterior so the surfaces mate with
one another. Thus, Plesniak suggests that if an octagonal shape is used for
the torque tube and support, as taught by Plesniak, the octagonal support
would also have surfaces abutting and mating with the exterior of a torque
tube, as recited in claim 1.
In view of the above, we see no need to include Bilsing in the § 103
rejection of claim 1. We do not view this as requiring a new ground of
rejection because the basis of the rejection (i.e., § 103) has not changed, the
rejection uses evidence and findings used by the Examiner (i.e., Plesniak's
supports function as a clamp and have upper and lower portions), and
Appellant has had a fair opportunity to react to this rejection (In re Kronig,
539 F.2d 1300, 1302----1303 (CCPA 1976); see also Ex parte Devicor Aied.
Products, 2011 \iVL 686736 (BPAI 2011))). Specifically, Appellant has
argued Plesniak does not disclose a clamp assembly or one including an
upper portion or lower portion, as recited in claim 1 (Appeal Br. 10-14 ).
With regard to a connector secured to the upper portion of the clamp
assembly, the Examiner finds Cunningham discloses such a configuration
for a clamp (Ans. 4-5). Although it is unclear that Cunningham's disclosure
is necessary because Plesniak appears to suggest a connector at the upper
ends of the upper portion of supports (see the "holes" in the annotated copy
of Figure 4 above), Cunningham shows it was known to use a connector to
connect portions of a clamp assembly (i.e., the screw or bolt depicted at the
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end of the clamp 8 over the pipe 5 in Cunningham's Figure 2).
Appellant asserts Cunningham is non-analogous art because
Cunningham regards securing an electrical line pipe or gas line pipe to a
building roof and addresses problems with such pipes separating from a roof
support (Appeal Br. 18). This is unpersuasive because Cunningham's
solution of securing clamp portions together (i.e., via the screw or bolt
depicted in Figure 2 for clamp 8) would have commended itself to the
inventors' attention in considering the problem of how to secure the upper
and lower portions of a clamping assembly together. "A reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor's endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor's attention in
considering his problem" (In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)).
If a reference disclosure relates to the same problem as that addressed by the
claimed invention, "that fact supports use of that reference in an obviousness
rejection. An inventor may well have been motivated to consider the
reference when making his invention." Id.
The Examiner finds Plesniak does not disclose a plurality of vertical
posts, as recited in claim 1 (Ans. 5). The Examiner correctly finds Cole
discloses the use of plural vertical posts for a solar energy collector (id.;
Cole ,r,r 3, 47, Fig. 3) and concludes it would have been obvious to modify
Plesniak to use multiple vertical posts (Ans. 5---6). Appellant argues Cole
does not disclose or suggest the claimed clamp assembly (Appeal Br. 19) but
does not address the Examiner's findings and conclusion regarding Cole.
In addition, Appellant asserts copying of Appellant's invention as
evidence of non-obviousness (id. 21-28; Reply Br. 4--7). To the extent the
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Declaration of Max. W. Reed under 37 C.F.R. § 1.132 (hereafter
"Declaration") and Appellant's arguments show the claimed invention was
copied by another, Appellant has not pointed to any evidence showing that
the other manufacturer copied Appellant's invention after expending great
effort to develop their own solution. See Pentec, Inc. v. Graphic Cntrls.
Corp., 776 F.2d 309, 317 (Fed. Cir. 1985) (alleged copying is not persuasive
of nonobviousness when the copy is not identical to the claimed product, and
the other manufacturer has not expended great effort to develop its own
solution); Vandenberg v. Dairy Equip. Co., a Div. of DEC Int'!, Inc., 740
F.2d 1560, 1567 (Fed. Cir. 1984) (evidence of copying found particularly
persuasive where copyist had itself attempted for a substantial length of time
to design a similar device, and failed).
Based on the foregoing, the Appellant's evidence of non-obviousness
is entitled to little weight. A preponderance of the evidence supports the
Examiner's obviousness determination for claim 1.
In addition, we emphasize that, although secondary considerations
such as unexpected results must be taken into account, they do not
necessarily control the obviousness conclusion. Sud-Chemie, Inc. v.
Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) ("evidence of
unexpected results and other secondary considerations will not necessarily
overcome a strong prima facie showing of obviousness"); Agrizap, Inc. v.
Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (Secondary
considerations "including substantial evidence of commercial success,
praise, and long-felt need, were inadequate to overcome a strong showing of
primary considerations that rendered the claims at issue invalid."); Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) ("[T]his secondary
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consideration does not overcome the strong showing of obviousness in this
case. Although secondary considerations must be taken into account, they
do not necessarily control the obviousness conclusion").
Here, the evidence of obviousness is strong relative to and outweighs
Appellant's alleged copying evidence, since the applied prior art evinces the
known use of an octagonal shaped tube and clamp support for a solar panel.
Appellant does not argue claims 2-7 and 9 separately from claim 1
(Appeal Br. 7-9).
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103(a) rejection of claims 1-7 and 9.
§ 103 Rejections of Claims 8 and 17-23
Claims 8 and 17-20 are rejected under 35 U.S.C. § 103 are rejected as
being unpatentable over Plesniak, Bilsing, Cunningham, and Cole and
further in view of Szuba.
Claims 21 and 23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Plesniak, Bilsing, Cunningham, and Cole and further in
view of Ciasulli.
Claim 22 is rejected under 35 U.S.C. § 103 as being unpatentable over
Plesniak, Bilsing, Cunningham, Cole, and Ciasulli and further in view of
Szuba.
Appellant does not argue claims 8 and 19, 20, 22, and 23 separately
from claim 1 (Appeal Br. 8-21). As discussed above, Appellant's
arguments do not identify a reversible error in the rejection of claim 1.
Appellant states that claim 1 7 requires a torque tube to have eight flat
sides, claims 18 and 21 require flanks of the clamp assembly to join each
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other at 45 degree angles, and Plesniak does not disclose or suggest the latter
(id. IO, 13-14). As discussed above with regard to the rejection of claim 1,
Plesniak discloses a torque tube that can have an octagonal cross section
(Plesniak ,r 28). Such a torque tube would have eight flat sides, as recited in
claim 1 7. For claims 18 and 21, Figures 2 and 4 of Plesniak depict torque
tubes having circular cross sections with regular, symmetrical shapes. This
would have suggested that an octagonal cross-section would also have a
regular, symmetrical shape (e.g., not an irregular shape that is asymmetrical
relative to an axis or plane). A natural consequence of an octagonal cross
section having a regular, symmetrical shape is that its internal angles would
be 45 degrees each (i.e., 360° divided by 8 angles= 45° each). Thus,
Appellant's arguments have not identified a reversible error.
Therefore, we sustain the § 103 rejections of claims 8 and 17-23.
DECISION
The Examiner's rejection of claims 1-9 and 17-23 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).
AFFIRMED
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