Ex Parte Thacker et al

Patent Trial and Appeal Board

Aug 15, 2017

14025894 (P.T.A.B. Aug. 15, 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.
14/025,894 09/13/2013 Steve Howard Thacker STHA.00017 7734
7590 08/15/2017
Miohael f amernn
EXAMINER
Suite 100-459 CAHN, DANIEL P
4100 West El Dorado Parkway
McKinney, TX 75070 ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
08/15/2017 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 STEVE HOWARD THACKER, JOHNNY CURTIS,
and YATES HAYMAN
Appeal 2017-004223
Application 14/025,8941
Technology Center 3600
Before JOSEPH L. DIXON, LARRY J. HUME, and AARON W. MOORE,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Next Generation
Scaffold Services Inc. App. Br. 2.
Appeal 2017-004223
Application 14/025,894
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[] to
scaffolds and scaffold anchor points." Spec. 2,1. 11.
Exemplary Claims
Claims 1 and 20, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
1. A magnetic scaffold tie, comprising:
a base platform having an upper planar face and a lower
open face and at least one sidewall;
at least one magnet coupled between the upper planar
portion and lower open face;
proximate an end of the at least one sidewall, a release
bar coupled to a release mechanism operable to release the
magnetic scaffold tie from a surface to which it is magnetically
coupled;
a coupling extension, having a first end coupled to and
extending substantially orthogonally from the upper planar face
of the base platform and a second end of the coupling extension
coupled to a scaffold coupling mechanism; and
the scaffold coupling mechanism.
2 Our decision relies upon Appellants' Appeal Brief ("Br.," filed
July 22, 2016); Examiner's Answer ("Ans.," mailed Nov. 29, 2016); Final
Office Action ("Final Act.," mailed Mar. 10, 2016); and the original
Specification ("Spec.," filed Sept. 13, 2013). We note Appellants did not
file a Reply Brief in response to the factual findings and legal conclusions in
the Examiner's Answer.
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11. A magnetic scaffold tie, comprising:
a base platform having an upper planar face and a lower
open face and four sidewalls forming a generally rectangular
shape;
a plurality of magnets coupled between the upper planar
portion and lower open face and aligned within the sidewalls',
proximate an end of the sidewall, a release bar coupled to
a release mechanism operable to release the magnetic scaffold
tie from a surface to which it is magnetically coupled;
a coupling extension comprised of two portions, the first
portion having a first end coupled to and extending
substantially orthogonally from the upper planar face of the
base platform and a second end coupled to a first end of a
shock absorbing portion, the second end of the shock absorbing
portion having a scaffold coupling mechanism', and
the scaffold coupling mechanism further comprising a
clamp or half clamp.
20. A method for anchoring a scaffold to a structure,
comprising:
coupling a magnetic member within a base platform to a
structure',
extending an extension member orthogonally from the
base platform;
coupling a clamp on a distal end of the extension member
to a scaffold member.
3
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Application 14/025,894
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Bailey
Thompson
Morrison
Friedrich et al. ("Friedrich '273")
Archer
Harney
Friedrich ("Friedrich '035")
US 3,675,735
US 4,396,092
US 5,950,760
US 6,471,273 B1
US 2007/0278038 Al
US 2008/0179477 Al
US 7,544,035 B1
July 11, 1972
Aug. 2, 1983
Sept. 14, 1999
Oct. 29, 2002
Dec. 6, 2007
July 31, 2008
June 9, 2009
Rejections on Appeal
Rl. Claims 1, 3, 4, and 6—8 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Archer, Friedrich, and
Morrison. Final Act. 5.
R2. Claims 2 and 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Archer, Friedrich '035, Morrison, and
Harney. Final Act. 8.
R3. Claims 5 and 9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Archer, Friedrich '035, Morrison, and
Friedrich '273. Final Act. 9.
R4. Claims 11—15 and 17—19 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Archer, Friedrich '273,
Thompson, and Morrison. Final Act. 10.
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R5. Claim 16 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Archer, Friedrich '273, Thompson,
Morrison, and Bailey. Final Act. 13.
R6. Claim 20 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Archer and Morrison. Id.
CLAIM GROUPING
Based on Appellants' arguments (Br. 6—22), we decide the appeal of
obviousness Rejection R1 of claims 1, 3, 4, 6, and 8 on the basis of
representative claim 1; and we decide Rejection R1 of separately argued
claim 7, infra. We decide the appeal of obviousness Rejection R4 of
claims 11—15 and 17—19 on the basis of representative claim 11. We decide
Rejection R6 of separately argued claim 20, infra. Remaining claims 2, 5, 9,
10, and 16 in Rejections R2, R3, and R5, not argued separately or
substantively, stand or fall with the respective independent claim from which
they depend.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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We disagree with Appellants' arguments with respect to claims 1—20
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments. We highlight
and address specific findings and arguments regarding claims 1,7, 11,
and 20 for emphasis as follows.
1. $ 103 Rejection R1 of Claims E 3, 4, 6, and 8
Issue 1
Appellants argue (Br. 6—13) the Examiner's rejection of claim 1 under
35 U.S.C. § 103(a) as being obvious over the combination of Archer,
Friedrich, and Morrison is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a "magnetic scaffold tie" that includes, inter alia, "a base
platform having an upper planar face and a lower open face and at least one
sidewall," and "at least one magnet coupled between the upper planar
portion and lower open face," as recited in claim 1?
Analysis
Appellants contend, "Archer fails to teach a base platform having a
magnet on one side of the base platform and the coupling extension on the
other side of the base platform" (Br. 6), and "Archer does not teach a magnet
in the same or similar position as that claimed by the Applicants. Because it
cannot perform the function of the present invention it is not a proper
reference to be applied to the Applicants' invention." Br. 7. Appellants
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conclude their analysis of Archer by alleging, "[bjecause there is nothing in
Archer that could be construed to be a magnet on the lower face of a base
platform, the use of Archer in an obviousness rejection should be
withdrawn." Br. 8.
Appellants further allege "Friedrich ['035] is non-analogous art to
Applicants' invention" (Br. 9) because (1) "a magnetic scaffold tie is wholly
unrelated to a manhole cover remover, a device that is magnitudes larger
than a magnetic scaffold tie and has an entirely different function and
purpose;" (2) "[t]he present invention is meant to be attached to a structure
(e.g., metal wall) and is held stationary while scaffolding is attached to the
scaffold coupling mechanism;" (3) "[t]he substantially larger invention of
Friedrich is meant to attach to a manhole cover as to move the manhole
cover from a street orifice;" and (4) "[a] person of ordinary skill would not
reasonably be expected to look to a manhole cover remover for a solution to
couple a scaffold tie to a metal wall." Br. 10 (citing In re Bigio, 381 F.3d
1320 (Fed. Cir. 2004)). Appellants also assert that "[t]he use of Friedrich
['035] suggests that impermissible hindsight has been used to obtain the
Applicants' invention" (Br. 11), and "[t]here is no teaching, suggestion or
motivation to combine the Archer and Friedrich references and the resulting
combination of Archer with Friedrich elements would not have been
understood to produce predictable results by someone of skill in the art." Br.
12.
With respect to the teachings and suggestions of Morrison, Appellants
merely allege "Morrison does not overcome the deficiencies of Archer and
Friedrich." Id.
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We first note the test for obviousness is what the combined teachings
of the prior art would have suggested to the hypothetical person of ordinary
skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
In response to Appellants' first argument regarding the purported
deficiencies of Archer, the Examiner finds:
[T]he language argued by the appellants, "Archer fails to teach
'a base platform having a magnet on one side of the base
platform and the coupling extension on the other side of the
base platform'" is not recited in claim 1. Having said that, the
combination of applied reference teaches this unclaimed
limitation in such a way that the examiner finds that these
arguments do not appear to be commensurate in scope with the
rejection as applied since the examiner relied upon a secondary
reference [Friedrich (US Patent 7544035)] in combination with
Archer to teach the limitations as actually claimed. It is noted
that Archer teaches its base 120 and connector 140 as using
"corresponding magnet/electromagnet components" [see
paragraphs 39 and 54 - the quote being from paragraph 54 and
further discussed throughout the specification (note this was
discussed in the Final Action as well)], more importantly, the
examiner has provided Friedrich '035 (which the appellants
arguments seem to ignore here) to add the claimed positioning
detail of the magnetic housing (inevitably having the claimed
subject matter of "an upper planar face and a lower open face at
least one sidewall with at least one magnet coupled between the
upper planar portion and lower open face" as claimed) and
structure as well as the release mechanism claimed.
Ans. 3.
Having noted that Archer does teach the aspect of
magnet(s), it must not be ignored that Friedrich '035 is
combined with Archer for at least the non-limiting reason of
positioning the magnet(s) taught by Archer as being within an
"upper planar face and a lower open face" of the base 120 of
Archer in order to meet the limitations of the claim language.
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Once this combination is applied, all of the elements of the
instant invention as claimed are taught by the applied
references.
Ans. 4.
We agree with the Examiner's findings. Appellants' "arguments fail
from the outset because . . . they are not based on limitations appearing in
the claims." In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Additionally,
Appellants' contention does not persuade us of error on the part of the
Examiner because Appellants are responding to the rejection by attacking
the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
With respect to the non-analogous art argument,
[t]wo separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citation omitted).
We agree with the Examiner that Friedrich '035 is reasonably
pertinent to Appellants' problem because the claimed invention and
Friedrich '035
are both solving the particular problem of quickly and easily
removably attaching elements. The appellants are concerned
with quickly and easily removably attaching a first element to a
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surface with a magnet while Friedrich '035 is similarly
concerned with quickly and easily removably attaching a first
element to a surface with a magnet.
Ans. 8.
Accordingly, based upon the unrebutted findings above, on this
record, we are not persuaded of error in the Examiner's reliance on the
combined teachings and suggestions of the cited prior art combination to
teach or suggest the disputed limitations of claim 1, nor do we find error in
the Examiner's resulting legal conclusion of obviousness. Therefore, we
sustain the Examiner's obviousness rejection of independent claim 1, and
grouped claims 3, 4, 6, and 8, which fall therewith. See Claim Grouping,
supra.
2. $103 Rejection R1 of Claim 7
Issue 2
Appellants argue (Br. 13—14) the Examiner's rejection of claim 7
under 35 U.S.C. § 103(a) as being obvious over the combination of Archer,
Friedrich, and Morrison is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the "magnetic scaffold tie of claim 6" that includes all further
limitations as recited in claim 7?
Analysis
Appellants contend:
Claim 7 includes the further element of, inter alia, a
circular cylinder, a longitudinal portion of interior of the
circular cylindrical being fixedly coupled to the rotatable shaft
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to form a lobe and the release bar. Friedrich does not disclose
this element. Figure 7 A of Friedrich discloses a wheel used to
wheel the much larger manhole cover remover into position and
the wheel is used to raise and lower the magnet of Friedrich
into position[.] Notably, the wheel of Friedrich does not include
a longitudinal portion of interior of the circular cylindrical
being fixedly coupled to the rotatable shaft to form a lobe.
(Friedrich, figure 7A).
Br. 13-14.
In response to Appellants' arguments, the Examiner finds Friedrich
'035 teaches
these elements in parallel to the way the appellants disclose
these elements in the original disclosure, it is noted that these
elements are not clearly shown in the drawings or explained in
a way that the detail requires more than what Friedrich shows in
Figures such as 7A, 7B or even Figures such as 2 and 4 for
example. In this case, include a longitudinal portion of interior
of the circular cylindrical being fixedly coupled to the rotatable
shaft to form a lobe. Such as seen at 114 of Fig. 7A for
example. Note that this is merely one non-limiting example
based on what is detailed by the appellants['] disclosure.
Ans. 9. We agree with the Examiner's findings, which remain unrebutted by
Appellants.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitations of claim 7, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 7.
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3. $103 Rejection R4 of Claims 11—15 and 17—19
Issue 3
Appellants argue (Br. 6—13) the Examiner's rejection of claim 11
under 35 U.S.C. § 103(a) as being obvious over the combination of Archer,
Friedrich '273, Thompson, and Morrison is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a "magnetic scaffold tie" that includes, inter alia, "a base
platform having an upper planar face and a lower open face and four
sidewalls forming a generally rectangular shape; [and] a plurality of magnets
coupled between the upper planar portion and lower open face and aligned
within the sidewalls," and "a coupling extension comprised of two portions,
the first portion having a first end coupled to and extending substantially
orthogonally from the upper planar face of the base platform and a second
end coupled to a first end of a shock absorbing portion, the second end of the
shock absorbing portion having a scaffold coupling mechanism," as recited
in claim 11?
Analysis
Similar to claim 1, Issue 1, supra, Appellants contend Archer does not
teach a base platform or a plurality of magnets in the correct position as
required by claim 11. Br. 16. Further, Appellants contend "Friedrich" is
non-analogous art and is thus not a valid reference in a § 103 rejection. Id.
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Again, Appellants are arguing the references separately, when the
rejection is for obviousness under § 103 and what the combination of prior
art references would have suggested to a person of ordinary skill in the art.4
For the reasons stated above with respect to Issue 1, we are not
persuaded by Appellants' arguments concerning the teachings and
suggestions of Archer.
Moreover, with respect to Appellants' arguments concerning the
availability of "Friedrich" as a prior art reference,5 we note Appellants'
arguments are misplaced, because Friedrich '273 is cited by the Examiner in
Rejection R4, while Friedrich '035, incorrectly argued by Appellants in
Rejection R4, and argued in Rejection Rl, is only relied upon by the
Examiner in Rejection Rl. Thus, Appellants' arguments concerning
"Friedrich" are not persuasive of Examiner error.
Appellants further allege Thompson does not teach or suggest "a
coupling extension" including "a second end coupled to a first end of a
shock absorbing portion, the second end of the shock absorbing portion
having a scaffold coupling mechanism." Br. 17—18. Appellants assert "[t]he
coil spring of Thompson is not an adjunct to a shock absorbing mechanism"
(Br. 18), and "[bjecause Thompson does not disclose a shock absorber
mechanism in combination with a magnetic scaffold tie, the use of
Thompson in an obviousness rejection should be withdrawn." Id.
4 The Examiner finds, "[t]he 2nd Friedrich '237 shows plurality of magnets
(ref #21) in every Figure." Ans. 13 (emphasis omitted).
5 Appellants state, "[a]s described in Section A of this Brief, Friedrich is
non-analogous art to Applicants' invention and hence is not a competent
reference." Br. 16. Appellants refer to Friedrich '035, and not Friedrich
'273.
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Appellants further argue Thompson does not make up for the purported
deficiencies of Archer and Friedrich. Id.
We agree with the Examiner's finding and conclusion:
In this case, one of ordinary skill in the art would have provided
a scaffold tie or any similar scaffold structure with a shock
absorbing mechanism such as taught by Thompson in order to
provide the predictable and expected result of being able to vary
the length of the structure and/or provide some abortion as
needed, whether from force or during attachment and/or
removal. Furthermore, the appellants argue that "the coil spring
of Thompson is not an adjunct to a shock absorbing
mechanism", however, the examiner stresses that the claims as
recited should be interpreted with broadest reasonable
interpretation as claimed and the examiner finds that a spring is
reasonably considered to be 'a shock absorbing mechanism'.
Ans. 15.
We agree with the Examiner because, under the broadest reasonable
interpretation, the recited "shock absorbing portion" broadly but reasonably
reads on Thompson's disclosed spring. We note Appellants have not cited to
a definition of "shock absorbing portion" in the Specification that would
preclude the Examiner's broader reading.6 Ans. 15.
6 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitations of claim 11, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 11, and grouped
claims 12—15 and 17—19, which fall therewith. See Claim Grouping, supra.
4. $103 Rejection R6 of Claim 20
Issue 4
Appellants argue (Br. 20—22) the Examiner's rejection of claim 20
under 35 U.S.C. § 103(a) as being obvious over the combination of Archer
and Morrison is in error. These contentions present us with the following
issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the step of "coupling a
magnetic member within a base platform to a structure," as recited in
claim 20?
Analysis
Appellants' arguments are along the same lines as in Issue 1, Rejection
Rl, supra. Br. 21. Appellants argue "Archer fails to disclose a base
platform that is even remotely similar to that used in the method of
Claim 20." Id.
However, we note Appellants' arguments are not commensurate with
the scope of method claim 20, which recites:
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20. A method for anchoring a scaffold to a structure,
comprising:
coupling a magnetic member within a base platform to a
structure;
extending an extension member orthogonally from the
base platform;
coupling a clamp on a distal end of the extension member
to a scaffold member.
Claims App'x. We find no specific recited structure in claim 20 that would
support Appellants' contentions and further note Appellants are arguing the
references separately. See Br. 21—22.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 20, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 20.
5. Rejections R2, R3, and R5 of Claims 2, 5, 9, 10, and 16
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R2, R3, and R5 of claims 2, 5, 9, 10, and 16 under
§ 103 (see App. Br. 14—15, 20), we sustain the Examiner's rejection of these
claims. Arguments not made are waived.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections R1
through R6 of claims 1—20 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
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DECISION
We affirm the Examiner's decision rejecting claims 1—20.
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). See 37
C.F.R. §41.50(f).
AFFIRMED
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