Ex Parte Remington et alDownload PDFPatent Trial and Appeal BoardDec 15, 201613677720 (P.T.A.B. Dec. 15, 2016) Copy Citation 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. 41353.0013 5217 EXAMINER LE, MARK T ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 13/677,720 11/15/2012 45684 7590 12/15/2016 ROGER A. GILCREST ICE MILLER LLP 250 WEST STREET SUITE 700 COLUMBUS, OH 43215-7509 James A. Remington 12/15/2016 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 JAMES A. REMINGTON, KARL E. AXTHELM, and PHILLIP R. MERRIFIELD Appeal 2014-009643 Application 13/677,720 Technology Center 3600 Before LINDA E. HORNER, MICHELLE R. OSINSKI, and JEFFREY A. STEPHENS, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James A. Remington et al. (Appellants)1 appeal under 35 U.S.C. § 134 from the Examiner’s final decision rejecting claims 5—22, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Cleveland Track Material, Inc. Appeal Br. 3. Appeal 2014-009643 Application 13/677,720 THE CLAIMED SUBJECT MATTER Claims 5,10, and 15 are independent. Claim 5, reproduced below, is illustrative of the claimed subject matter on appeal. 5. A rail brace configured to buttress, when in a first orientation, a first rail type when said first rail type is placed on a brace plate so as to present juxtaposed (a) a first head fishing surface contact area., (b) a first base fishing surface contact area, and (ej a first brace plate contact surface, and configured to buttress, when in a second orientation, a second rail type different from said first rail type when said second rail type is placed on said brace plate so as to present jux taposed (a) a second head fishing surface contact area, (b) a second base fishing surface contact area, and (c) a second brace plate contact surface, said rail brace comprising: a first side wall; a. second side wall spaced from said first side wall; an upwardly facing top surface; a first rail type head fishing surface contact area configured to contact a head of said first rail type; a first rail type base fishing surface contact area, configured to contact a base of said first rail type; a second rail type head fishing surface contact area configured to contact a head of said second rail type; a second rail type base fishing surface contact area configured to contact a base of said second rail type; a first rail type brace plate contact surface configured to contact said brace plate; and a second rail type brace plate contact surface configured to contact said brace plate. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Barr US 346,979 Aug. 10, 1886 Haight US 717,845 Jan. 6, 1903 Morse US 871,232 Nov. 19, 1907 Ollendick US 2007/0246558 A1 Oct. 25, 2007 2 Appeal 2014-009643 Application 13/677,720 REJECTIONS I. Claims 5, 6, 8—16, and 18—22 stand rejected under 35 U.S.C. § 102(b) as anticipated by Barr. Final Act. 2—\. II. Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Barr and one of Ollendick, Morse, and Haight. Id. at 4—5. OPINION Rejection I Claims 5, 6, 8, 9, 15, 16, 18, 19, and 22 The Examiner finds that Barr discloses all of the limitations of independent claims 5 and 15, including, inter alia, surface contact areas configured to contact a first rail type, a second rail type, or a brace plate. Final Act. 2-4. In particular, the Examiner finds that Barr’s rail brace A is “capable of being rotated to a second orientation as shown below to possibly support a second rail type.” Ans. 2 (citing Examiner-annotated Figures as set forth on page 3 of the Answer) (emphasis omitted). In making this finding, the Examiner reasoned, and we agree, that claims 5 and 15 do not include structural limitations (e.g., size or shape) with regard to the first and second rail types. See Final Act. 5 (stating that “[t]he environments of the first rail type and the second rail type ... are not parts of the instant claimed invention that is specific to only the rail brace”). Appellants argue that Barr is a “simple rail brace capable of only one orientation.” Appeal Br. 12 (discussing independent claim 5); see also id. at 16 (discussing independent claim 15). Appellants argue that in order “to form an anticipatory rejection in view of the single-orientation rail brace of Barr,’ ’ the Examiner fabricated a second rail type having “unique 3 Appeal 2014-009643 Application 13/677,720 dimensions” that does not actually exist. Reply Br. 3^4. We are not persuaded of Examiner error. As stated above, the claims do not include specific parameters for a second rail type, and Patent Owner has not persuasively explained why Barr’s rail brace is incapable of being configured to contact a head and base of a second rail type when utilized with the particularly dimensioned second rail type as illustrated by the Examiner. See Ans. 3. Appellants also argue that Barr’s rail brace is not capable of contacting a brace plate “as no brace plate is disclosed by Barr.” Appeal Br. 13,17 (emphasis omitted). This argument is not persuasive because it does not address the rejection as articulated by the Examiner. The rejection does not rely on Barr having a brace plate, but rather on Barr’s rail brace being capable of contacting an appropriately configured brace plate. See Ans. 7. Appellants have not persuasively explained why Barr’s rail brace is not capable of contacting a brace plate as shown in the Examiner’s annotated drawings on page 3 of the Answer. Appellants also argue that the Examiner “has failed to show ‘a second rail type brace plate contact surface,’ as required by claims 5 and 15.” Reply Br. 4. In particular, Appellants allege that the Examiner has pointed to “the edge of the upwardly-inclined stay ‘c’” for this feature, but the claims require a three-dimensional surface as opposed to a mere two-dimensional edge. Id. We are not persuaded of Examiner error in that Appellants’ argument fails to address the Examiner’s additional finding, as found in the annotated figure on the lower half of page 3 of the Answer, that points to the underside of upwardly-inclined stay “c,” which is a three-dimensional surface area. See Ans. 3. The Examiner indicates that this underside of 4 Appeal 2014-009643 Application 13/677,720 upwardly-inclined stay “c,” as found in the annotated figure on the lower half of page 3 of the Answer, “can be used as [the] [second] rail type brace plate contact surface.” Id. For the foregoing reasons, we sustain the rejection of independent claims 5 and 15 under 35 U.S.C. § 102(b) as anticipated by Barr. We also sustain the rejection of claims 6, 8, 9, 16, 18, 19, and 22 which depend therefrom and for which Appellants present no new arguments or reasoning beyond that which we found unpersuasive in connection with the independent claims. See Appeal Br. 11—17. Claims 10—14, 20, and 21 Independent claim 10 recites that the rail brace comprises “a top surface first end configured to directly contact a head of [a] rail” and “a top surface second end configured to directly contact a stop block assembly, wherein said top surface first end is parallel to said top surface second end.” Appeal Br. 20 (Claims App.). The Examiner finds that because “the rail brace of Barr has parallel end surfaces with a configuration that is capable for uses in contacting . . . stop block assembly engagement surfaces for first and second rail types, the instant claimed intended use limitations are considered met.” Ans. 5. More particularly, the Examiner points to a first and second “edge surface” of Barr’s rail brace as being parallel to each other. Id. at 3 (see annotations accompanying Examiner-annotated drawings). Appellants argue that “Barr fails to disclose any rail brace capable of ‘directly contacting] a stop block assembly,’” because Barr’s brace “is retained by spikes driven through the brace A.” Appeal Br. 14. This argument is not persuasive because it fails to address the rejection as 5 Appeal 2014-009643 Application 13/677,720 articulated by the Examiner. The rejection does not rely on Barr’s utilization of a stop block assembly, but rather on Barr’s rail brace being capable of contacting an appropriately configured stop block assembly. Ans. 7. As to Barr’s rail brace being capable of contacting an appropriately configured stop block assembly, Appellants argue that “a ‘stop block assembly’ includes at least two parts” and “two or more parts cannot be placed at the second end of the rail brace A.” Appeal Br. 14. This assertion is not persuasive of error as it amounts to mere attorney argument unsupported by objective evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (citation omitted) (“Attorney’s argument in a brief cannot take the place of evidence.”). Without evidence, we are not persuaded that Barr’s rail brace is incapable of contacting an appropriately configured, two-part stop block assembly. Appellants further argue that Barr’s top surface first end configured to directly contact a head of a rail is not parallel to Barr’s top surface second end configured to directly contact a stop block assembly. Appeal Br. 14; Reply Br. 4—5. Appellants have not persuasively explained why the Examiner’s findings with respect to the two identified “edge surface[s]” being “parallel to” each other is in error. See Ans. 3. More particularly, we determine that the first and second edge surfaces identified by the Examiner in the annotated drawings on page 3 of the Answer are at least as parallel as the top surface first end and top surface second end 62, 70 as disclosed in the Specification and as referenced by Appellants when explaining the claimed subject matter. See Appeal Br. 8 (citing 125 and “items 62 and 70 in Figs. 2, 3, and 6”). In view of what Appellants have disclosed as ends that are 6 Appeal 2014-009643 Application 13/677,720 parallel to each other, we are not persuaded that the Examiner erred in finding that the identified “edge surface[s]” are parallel to each other. For the foregoing reasons, we sustain the rejection of independent claim 10 under 35 U.S.C. § 102(b) as anticipated by Barr. We also sustain the rejection of claims 11—14, 21, and 22 which depend therefrom and for which Appellants present no new arguments or reasoning beyond that which we found unpersuasive in connection with the independent claim. Appeal Br. 14-15. Rejection II Claims 7 and 17 depend from independent claims 5 and 15, respectively. Appeal Br. 20, 22 (Claims App.). Appellants’ arguments in support of the patentability of claims 7 and 17 relate to the perceived deficiencies in Barr in the disclosure of the subject matter of independent claims 5 and 15. Id. at 17. Because we have found no such deficiencies in Barr, we are not persuaded of error in the Examiner’s rejection of dependent claims 7 and 17. Accordingly, we sustain the rejection of claims 7 and 17 under 35 U.S.C. § 103(a) as unpatentable over Barr and one of Ollendick, Morse, and Haight. DECISION The Examiner’s decision to reject claims 5, 6, 8—16, and 18—22 under 35 U.S.C. § 102(b) as anticipated by Barr is affirmed. The Examiner’s decision to reject claims 7 and 17 under 35 U.S.C. § 103(a) as unpatentable over Barr and one of Ollendick, Morse, and Haight is affirmed. 7 Appeal 2014-009643 Application 13/677,720 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation