Ex Parte Bianchi

Patent Trial and Appeal Board

Apr 21, 2017

14016354 (P.T.A.B. Apr. 21, 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.
14/016,354 09/03/2013 Tamo P. Bianchi 040746.00061 3257
26712 7590 04/25/2017
HODGSON RUSS LLP
THE GUARANTY BUILDING
140 PEARL STREET
SUITE 100
BUFFALO, NY 14202-4040
EXAMINER
MASINICK, JONATHAN PETER
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
04/25/2017 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):
ipdocketing @ hodgsonrus s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL, SON & CO., LIMITED, and TAMO P. BIANCHI
Appeal 2015-003712
Application 14/016,354
Technology Center 3600
Before ROBERT L. KINDER, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 6, 7, 9, 10, and 16 under 35 U.S.C. § 103(a)
as being unpatentable over King (US 2002/0081152 Al, pub. June 27, 2002)
and Pujol-Barcons (US 4,534,446, iss. Aug. 13, 1985). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Oct. 9, 2014), Reply Brief (“Reply Br.,” filed Feb. 4,
2015), and Specification (“Spec.,” filed Sept. 3, 2013), and to the
Examiner’s Answer (“Ans.,” mailed Dec. 9, 2014) and Final Office Action
(“Final Act.,” mailed May 16, 2014).
2 According to the Appellants, the real party in interest is Samuel, Son &
Co., Limited. Appeal Br. 2.
Appeal 2015-003712
Application 14/016,354
STATEMENT OF THE CASE
The Appellants’ “invention relates generally to guardrails (also
referred to as fences or barriers) placed alongside roads and highways to
stop errant vehicles, and more particularly to an improved support post for
use in constructing such guardrails.” Spec. 11.
Claim 6 is the only independent claim on appeal, is representative of
the subject matter on appeal, and is reproduced below:
6. A guardrail assembly comprising:
first and second vertical guardrail posts spaced
from one another, each guardrail post comprising an
elongated one-piece roll-formed metal body including a
front wall defining an attachment face, a pair of opposing
side walls orthogonal to the front wall, a first pair of
inverted comers respectively connecting the pair of side
walls to the front wall, and a second pair of inverted
comers respectively extending from the pair of side walls
to define a rear access opening opposite the front wall;
and
a horizontal rail connected to the front wall of each
of the first and second guardrail posts.
Appeal Br. 9, Claims App.
ANALYSIS
The Appellants argue claims 6, 7, 9, 10, and 16 as a group. Appeal
Br. 3. We select claim 6 as representative of the group; claims 7, 9, 10, and
16 stand or fall with claim 6. See 37 C.F.R. § 41.37(c)(l)(iv).
After careful consideration and review of the arguments presented in
the Appellants’ Appeal and Reply Briefs, we disagree with the Appellants’
contention that the Examiner’s erred in the rejection of claim 6. We add the
following for emphasis.
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Appeal 2015-003712
Application 14/016,354
The Examiner finds that King discloses the guardrail assembly of
claim 6 comprising first and second guardrail posts spaced from one another,
and a horizontal rail connected to the front walls of the posts. Final Act. 2.
The Examiner acknowledges King does not disclose each post comprising
the elongated one-piece roll-formed metal body with front and side walls
and inverted comers as claimed, but relies on Pujol-Barcons for this. Id. at
2—3. The Examiner determines that it would have been obvious to one of
ordinary skill in the art to have modified King such that the posts have the
shape and configuration of the posts of Pujol-Barcons “for the purpose of
providing an internal space within the post to allow the bolted attachment of
a member to the center of the attachment face to provide a centered and
stable connection.” Id. at 3.
The Appellants do not dispute the factual findings of the Examiner
regarding what King and Pujol-Barcons disclose, but contend that the
Examiner’s rejection of claim 6 is in error because Pujol-Barcons is not
analogous art and because the Examiner’s rationale for combing the art
“provides no predictable or expected advantage over the prior art.” Appeal
Br. 3—8 (emphases omitted). We do not agree.
We find unpersuasive the Appellants’ argument that Pujol-Barcons is
not analogous art. See Appeal Br. 3—6. We disagree with the Appellants’
characterization of the field of endeavor as “highway guardrails.” Id. at 3^4.
The Specification states, under the heading “Field of the Invention,” that the
“invention relates generally to guardrails” placed alongside highways, “and
more particularly to an improved support post for use in constmcting such
guardrails.” Spec. 11 (emphases added). The Specification further
provides, under the heading “Summary of the Invention,” “[a] highway
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Appeal 2015-003712
Application 14/016,354
guardrail post” generally comprising an elongated metal body, inverted
comers, and rear edges, as recited in claim 6. Spec. 17 (emphasis added).
The Specification refers to a post over sixty times throughout. For example,
as the Appellants point out (Appeal Br. 5), the Specification provides
“[gjuardrail posts 10 of the present invention have improved performance
during installation over prior art guardrail posts.” Spec. 123. Further,
claim 6 is directed to an assembly that comprises posts. Pujol-Barcons is
similarly directed to vertical rails, i.e., posts, fixed to a stmcture. See Pujol-
Barcons, Fig. 1, and col. 1,11. 43—51. Thus, we find supported the
Examiner’s finding that Pujol-Barcons is in the Appellants’ field of
endeavor of posts. See Ans. 3^4. As such, Pujol-Barcons is analogous art.3
We are also unpersuaded by the Appellants’ arguments that the
Examiner’s rationale is insufficient. See Appeal Br. 6—8. The Appellants’
argument that the Examiner’s rationale “provides no predictable or expected
advantage over the prior art,” because the Examiner’s reason for combining
the art “loses all credibility because the purpose of providing internal space
had already been addressed within the guardrail art” (id. at 6—7) is not
supported by factual evidence. The Specification depicts in Figures 2A-C,
as prior art, C-channel, U-channel, and sigma channel posts formed from
3 We do not agree with the Examiner’s secondary rationale “that if the
reference has been deemed ‘materially relevant’ [i.e., submitted in an IDS]
by Applicant then it must also follow that it is considered to be analogous art
to the claimed invention by Appellant.” Ans. 3. The standards for
determination of whether prior art is analogous and whether an applicant
should submit a reference pursuant to the duty of disclosure are distinct and
should not be conflated. See 37 C.F.R. § 1.56.
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Appeal 2015-003712
Application 14/016,354
steel, but does not implicitly or explicitly state that the structure of the prior
art addressed the purpose of internal space. See Spec. 1 6
The Appellants’ statements that: (1) “[t]here is no good reason of
record” why one would choose “a more complex configuration to provide
internal space when simpler configurations were already known” (Appeal
Br. 7); (2) “[t]he hollow cruciform post configuration would not be a strong
as a solid I-Beam” (Reply Br. 4); and (3) providing means for attaching to
the side is “unrealistic” because “zoning laws would prevent a highway from
being directly adjacent [to] a structure” (id. at 5) are attorney arguments (see
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)) that do not adequately
address the Examiner’s stated rationale of providing space “to allow the
bolted attachment of a member to the center of the attachment face to
provide a centered and stable connection” (Final Act. 3). The Appellants’
argument that “if the posts are attached to a structure as taught by Pujol-
Barcons, the front wall of the post to which the claimed horizontal rail is
connected is flush against the structure, leaving no space for the horizontal
rail” (Reply Br. 5) is unpersuasive at least because it is not supported by
factual evidence, and because the Examiner’s rejection is not based upon a
bodily incorporation of Pujol-Barcons’s system into King’s guardrail posts.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981). As discussed above, the
Examiner modifies King’s post to have the body of Pujol-Barcons’s posts,
with front wall 103 that attaches to the horizontal rail. See Final Act. 3.
This would still provide space within the post for the Examiner-stated
benefit of “allowing] a bolted attachment.” Id. The Appellants do not
assert or provide evidence that the proposed modification would have been
beyond the capabilities of one of ordinary skill in the art.
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Application 14/016,354
We further find unpersuasive the Appellants’ argument that the
Examiner improperly relies on hindsight. Appeal Br. 8. The Appellants
have not persuasively shown why the Examiner’s articulated reason for
combining the art is ineffective to support the conclusion of obviousness and
is gleaned only from the Appellants’ disclosure. See In re McLaughlin, 433
F.2d 1392, 1395 (CCPA 1971).
Thus, we are not persuaded of error on the part of the Examiner in the
rejection of independent claim 6. We, therefore, sustain the Examiner’s
rejection of claim 6 and of claims 7, 9, 10, and 16, which fall with claim 6.
DECISION
The Examiner’s rejection of claims 6, 7, 9, 10, and 16 under 35 U.S.C.
§ 103(a) 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)(l)(iv).
AFFIRMED
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