14596961 (P.T.A.B. Mar. 15, 2018)

Ex Parte Buehler et al

Patent Trial and Appeal BoardMar 15, 2018

14596961 (P.T.A.B. Mar. 15, 2018)

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. 14/596,961 01/14/2015 MICHAEL J. BUEHLER 14680-20 7935 757 7590 03/16/2018 BGL P.O. BOX 10395 CHICAGO, IL 60610 EXAMINER TROUTMAN, MATTHEW D ART UNIT PAPER NUMBER 3671 MAIL DATE DELIVERY MODE 03/16/2018 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 MICHAEL J. BUEHLER and AARON J. COX ____________ Appeal 2017-006590 Application 14/596,9611 Technology Center 3600 ____________ Before ANTON W. FETTING, MICHAEL C. ASTORINO, and SHEILA F. McSHANE, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the Examiner’s decision rejecting claims 24–36 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Sicking et al. (US 4,815,565, iss. Mar. 28, 1989) (“Sicking”) and Urlberger (EP 1 830 003 B1, pub. March 16, 2011). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellants, the real party in interest is Energy Absorption Systems Inc. (“EAS”). Appeal Br. 1. Appeal 2017-006590 Application 14/596,961 2 STATEMENT OF THE CASE Subject Matter on Appeal The Appellants’ “invention relates generally to a crash cushion, and in particular, to a crash cushion configured with at least one tube reinforced with a resilient segment.” Spec ¶ 2. “Crash cushions may be used alongside highways in front of obstructions such as concrete walls, toll booths, tunnel entrances, bridges and the like so as to protect the drivers of errant vehicles.” Id. at 3. Claim 24, the sole independent claim, is representative of the subject matter on appeal and is reproduced below. 24. A crash cushion comprising: a plurality of resilient, self-restoring tubes each having a center axis and comprising interior and exterior surfaces, wherein at least some of said plurality of tubes are positioned such that respective ones of said center axes are spaced apart in a longitudinal direction, wherein said center axis of at least one of said tubes is substantially perpendicular to a longitudinal axis extending in said longitudinal direction, wherein said center axis of said at least one of said tubes is substantially horizontal, and wherein said at least one of said tubes defines a vertical diametral plane intersecting and oriented substantially perpendicular to said longitudinal axis, wherein said center axis of said at least one of said tubes lies in said diametral plane; and at least a pair of resilient segments, wherein said segments of each of said pairs of segments are disposed on opposite sides of said exterior surface or said interior surface of said at least one of said tubes and intersect said diametral plane, wherein each of said segments is symmetrically secured to said at least one of said tubes relative to said diametral plane. Appeal Br., Claims App. Appeal 2017-006590 Application 14/596,961 3 ANALYSIS The Examiner relies on Sicking to teach a crash cushion having a plurality of self-restoring tubes 26. Final Act. 2; see Ans. 5; Sicking, Figs. 1–6. The Examiner does not rely on Sicking to teach a pair of resilient segments. Final Act. 2. Instead, the Examiner relies on Urlberger to teach resilient segments 5 that are positioned at the interior of a plurality of tubes of a crash cushion. Id. at 2–3; see Urlberger, Figs. 1, 2, 4a, 4b. The Examiner determines that: It would have been obvious to a person of ordinary skill in the art . . . to modify Sicking to provide resilient segments on the interior of the tubes as Urlberger has taught wherein it is old and well known in the art to provide resilient segments on the interior of crash cushion tubes to increase the performance of the tubes by allowing them to absorb more deformation energy. Final Act. 3. The Appellants argue that the foregoing does not explain how the combined teachings of Sicking and Urlberger result in “at least a pair of resilient segments,” wherein “each of said pairs of segments . . . intersect said diametral plane” and “each of said segments is symmetrically secured to said at least one of said tubes relative to said diametral plane,” as recited in claim 24. Appeal Br. 5, Claims App.; see, e.g., id. at 4 (“Pairs of segments 46 or 90 intersect the diametral plane 54 (Specification at ¶ 33[, Figs. 7, 9, 10])”). The Appellants allege that Urlberger fails to “show a pair of segments intersecting the defined diametral plane, let alone any segment that is symmetrical[ly] secured relative to the diametral plane.” Id. at 6. The Appellants’ argument is persuasive of Examiner error. Appeal 2017-006590 Application 14/596,961 4 At the outset, we note that the Examiner does not rely on either Sicking or Urlberger to teach the positioning of a segment relative to the diametral plane of Sicking’s tube. Rather, the Examiner offers various reasons supported by various legal principles why one of ordinary skill in the art would position segments –– as taught by Urlberger –– at the areas of Sicking’s tube that undergoes the most deformation. See Ans. 6–8 (The Examiner relies on rationales of “obvious to try,” “common sense,” and “routine experimentation,” and cites to Sicking’s Figure 5 to show tubes 26A in a deformed state). For the purposes of this appeal only, even if we were to agree with the Examiner’s explanation that there is a design need for additional support for the areas of Sicking’s tube that undergoes the most deformation, that explanation does not address all of the subject matter of claim 24. As discussed above, claim 24 recites “wherein each of said segments is symmetrically secured to said at least one of said tubes relative to said diametral plane.” Appeal Br., Claims App. (emphasis added). This recitation calls for a precise placement of the segments relative to the tubes’ diametral plane. For this requirement of claim 24, the Examiner determines that: it appears as though it would be obvious for a person of ordinary skill in the art to locate the reinforcing segments such that they overlap and are symmetrical about these upper and lower locations of the tube that undergo the most deformation during an impact (i.e.[,] the middles of the uppermost and bottommost portions of the tube). Ans. 8 (emphasis added). As pointed out by the Appellants, this determination relies on speculation and impermissible hindsight. Reply Br. 5. Here, the Examiner’s determination merely offers a conclusion –– Appeal 2017-006590 Application 14/596,961 5 without adequate evidence or technical reasoning –– concerning the precise placement of the segments, i.e., being symmetrically secured relative to the tube’s diametral plane. Stated otherwise, the placement of the segments at the uppermost and lowermost portions of the tube does not have to be symmetrical relative to the tube’s diametral plane to increase performance of a tube’s ability to withstand a force that deforms the tube. Thus, we do not sustain the Examiner’s rejection of claims 24–36 as unpatentable over Sicking and Urlberger. DECISION We REVERSE the Examiner’s decision rejecting claims 24–36. REVERSED