Ex Parte Buhamad

Patent Trial and Appeal Board

Nov 14, 2014

12706858 (P.T.A.B. Nov. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte OMAR A. BUHAMAD
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Appeal 2012-010843
Application 12/706,858
Technology Center 3600
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Before MICHAEL L. HOELTER, LYNNE H. BROWNE and
THOMAS F. SMEGAL, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Omar A. Buhamad (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claim 7 under 35 U.S.C. § 103(a),
as unpatentable over Tu (US 5,864,990, iss. Feb. 2, 1999), Olyott (US
2,553,934, iss. May 22, 1951), Gustafson (US 2, 584,124, iss. Feb. 5, 1952)
and Bravo (US 2008/0023075 A1, pub. Jan. 31, 2008). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
An understanding of the invention can be derived from a reading of
claim 7, the only claim on appeal, which is reproduced below.
7. In combination, a removable cover for a manhole and an
anti-theft device for preventing unauthorized removal of said
removable cover, said combination comprising:
a fixed iron frame having a peripheral flange with an
upper surface and a lower surface and securely bounding an
access opening to said manhole, and said fixed iron frame made
of hot dipped heavily zinc coated medium carbon steel with
from 0.30 to 0.45% by wgt. carbon with zinc of not less than a
thickness of from 75 to 120 microns and said fixed iron frame
being embedded within a mass of concrete on the ground;
said removable cover having an outer rim and a plurality
of parallel cross bars that extend from one side of the rim to the
opposite side thereof defining a plurality of alternating
openings in said removable cover, and wherein said rim and
said cross bars are each made of medium carbon steel with from
about 0.30% by wgt. to about 0.45% by wgt. carbon and having
a zinc coating of about 75 to 120 microns, and wherein said rim
has a thickness of about 20 mm and said cross bars have a
thickness of about 10 mm and wherein said removable cover is
configured and dimensioned to pivotally mount within said
fixed iron frame at one end, and one of said plurality of cross
bars having a bolt-receiving bore therethrough;
said anti-theft device comprising a first U-shaped shackle
having a pair of arms and an open end bounding said cross bar
having a bolt-receiving bore therethrough, and a bolt extending
through said pair of arms and said bolt receiving bore for
removably securing said first U-shaped shackle to said cross bar
with said bolt;
a second generally U-shaped shackle having a first end
and a second end, said first end secured to said lower surface of
said peripheral flange and said second end extending at a
clearance distance from said peripheral flange;
a chain having a plurality of links attached to said first U-
shaped shackle at one end, and attached to said second U-
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shaped shackle at an opposing end, and having a sufficient
length of about 400 cm. to permit said removable cover to
pivotally raise above from said fixed iron frame;
said first and second of said U-shaped shackles and said
chain are each made of medium carbon steel with 0.30% by
wgt. to 0.45% by wgt. carbon that have been hot dipped to
provide a coating of zinc having a thickness of from 75 to 120
microns and wherein said shackles have a diameter of at least
16 mm and said chain has a working load of more than seven
tons; and
wherein said fixed iron frame and said removable cover
each have a rectangular shape.

ANALYSIS
Obviousness of claim 7 over Tu, Olyott, Gustafson, and Bravo.
Appellant states that the Examiner’s rejection is based on four cited
references including
a device for lifting cable reels (Gustafson 1952), a drain board
for gutters that includes a pivotal mounting bracket (Tu 1999), a
spill containment device (Bravo et al. 2008) without an anti-
theft device and a manhole cover construction (Olyott 1951)
namely a safety device in which the cover element has only
limited upward movement when it is lifted by an explosion.

Appeal Br. 6.

Appellant then argues that “the aforementioned rejection is based on
the hindsight from reading Applicant’s specification” Id at 7. We do not
agree that the Examiner’s rejection is an improper hindsight reconstruction
as it does not include knowledge gleaned only from the Appellant’s
disclosure, but rather takes into account the teachings of Tu, Olyott,
Gustafson, and Bravo, i.e., knowledge which was within the level of
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ordinary skill at the time the claimed invention was made. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971(“[a]ny judgment on
obviousness is in a sense necessarily a reconstruction based on hindsight
reasoning”).
In particular, the Examiner has provided the necessary factual support
to reach a conclusion of obviousness. For example, the Examiner noted that
Tu teaches a removable cover for a manhole having a
fixed iron frame with a peripheral flange with the cover having
an outer frame and a plurality of cross bars and a chain attached
to the cover and the frame.
Olyott teaches a manhole with a frame and a cover and
two shackles and a chain connecting the cover to the frame.
Gustafson teaches a u-shaped shackle having a pair of
arms having an open end bounding a cross bar having a bolt
extending through the arms and the cross bar.
Bravo teaches it is known to make manhole or vault
components out of a carbon steel having a zinc coating.

Answer 4. In employing the above, the Examiner’s rationale is that it
would have been obvious “to substitute the eye bolt and chain of
Olyott for the chain assembly of Tu;” that it would have been obvious
“to substitute the u-shaped shackle of Gustafson for the eye bolts of
Olyott;” and that it would have been obvious “to select known
material on the basis of its suitability for the intended use as a matter
of obvious design choice.” Final Office Action mailed Nov. 2, 2011,
pg. 3‒4.
Accordingly, the Examiner concludes that “it would be reasonable for
one of ordinary skill in the art at the time of the invention to connect the
chain of Tu using u-shaped shackles as taught by Olyott and Gustafson.
Further, Bravo teaches it is known to make manhole components out of
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carbon steel with a zinc coating and therefore would consider making the
manhole components of Tu out of carbon steel with a zinc coating as well.”
Answer 4.
While acknowledging that “there may be a degree of compatibility
between the Tu reference for a drain board wherein the cover board is
pivotally secured in a mounting bracket that permits the fixed pivot pole and
a movable pivot rod to be movably mounted in a completely different
construction and a typical manhole cover as disclosed in a 48 year earlier
publication of Olyott”, Appellant contends that “there is no suggestion
whatsoever in Tu to construct a device according to Applicant’s unique
combination of elements” Appeal Br. 9. We disagree.
Appellant misreads the Examiner’s rejection which is based on the
chain assembly illustrated in Figure 1 of Tu. See Final Action, pgs. 2-3. The
Examiner further points out that “Tu teaches a removable cover for a
manhole having a ….frame …and a chain attached to the cover and the
frame”. Ans. 4. See also Tu, col. 1, lines 25−29 where Figure 1 is described
as illustrating a mounting bracket and cover board that “are locked together
by chain 51 to prevent the cover board[s] from being stolen by burglars”1.
Hence, Tu discloses a chain assembly and Appellant does not identify the
Examiner’s error in substituting “the eye bolt and chain of Olyott for the
chain assembly of Tu.” Final Action, pg. 3.
Appellant also argues that neither Tu nor Olyott “suggest to a person
of ordinary skill in the art to combine Tu and Olyott with elements from a
cable lifting device of Gustafson or the spill containment device of Bravo[]

1 In an appeal under 35 U.S.C. § 134(a), it is the Examiner’s final rejection
that we review. See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990).
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which has an entirely different construction” Id. Thus, Appellant is simply
attacking Gustafson and Bravo in isolation, rather than as combined with Tu
and Olyott. However, 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., 800 F.2d 1091,
1097 (Fed. Cir.1986). Further, Appellant does not identify the Examiner’s
error in substituting “the u-shaped shackle of Gustafson for the eye bolts of
Olyott.” Final Action, pg. 3.
As previously pointed out, the Examiner relies on Gustafson for
teaching u-shaped shackles and on Bravo for teaching the use of carbon steel
with a zinc coating for manholes while relying on Tu and Olyott for teaching
manholes and frames attached by a chain. While Bravo does not specifically
disclose manholes, the Supreme Court noted that an obviousness analysis
“need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellant continues by contending that “there is no suggestion in the
cited prior art or in the knowledge generally available to one of ordinary
skill in the art to modify or combine the teachings of the cited references”
Appeal Br.10. However, to the extent that Appellant is arguing that there is
no teaching or suggestion to combine the references, this argument is
foreclosed by KSR, in which the Court rejected the rigid requirement of a
teaching or suggestion or motivation to combine known elements in order to
show obviousness. Id at 415. Furthermore, we note that “any need or
problem known in the field of endeavor at the time of invention and
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addressed by the patent can provide a reason for combining the elements in
the manner claimed.” Id at 420. Additionally, Appellant does not explain
how the claimed structure does “more than yield a predictable result” in
view of the Examiner’s stated substitution of parts. Id at 416.
Appellant also argues that claim 7 recites a “unique combination of
elements” Appeal Br. 11. However, the mere existence of differences
between the prior art and the claimed structure does not establish
nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976). The issue is
“whether the difference between the prior art and the subject matter in
question ‘is a differen[ce] sufficient to render the claimed subject matter
unobvious to one skilled in the applicable art.’” Dann, 425 U.S. at 228
(citation omitted) (finding system for automatic record keeping of bank
checks and deposits obvious in view of nature of extensive use of data
processing systems in banking industry and “closely analogous” patent for
an automatic data processing system used in a large business organization
for keeping and updating system transaction files for each department of the
organization).
Appellant introduces a new argument in the Reply Brief at page 3,
contending that “[t]he alleged teaching of Tu refers to the prior art and
actually teaches away from that approach”, i. e., a manhole cover and frame
attached by a chain, further quoting from column 1, lines 26-43 of Tu.
However, this new assertion is not in response to any finding set forth
in the Examiner’s Answer, and is thus untimely and waived. 37 C.F.R. §
41.37(c)(1)(vii) (second sentence); see also In re Hyatt, 211 F.3d 1367, 1373
(Fed. Cir. 2000) (an argument not first raised in the brief to the Board is
waived on appeal); cf. Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI
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2010) (informative) (“Properly interpreted, the Rules do not require the
Board to take up a belated argument that has not been addressed by the
Examiner, absent a showing of good cause.”) See also Optivus Tech., Inc. v.
Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not
raised by an appellant in its opening brief . . . is waived.") (citations and
quotation marks omitted). Thus we find this new argument for asserting
error is waived. See 37 C.F.R. § 41.41(b) (2).
Appellant continues by alleging, inter alia, that
there is nothing whatsoever to disclose or suggest wherein said
first and second U-shapes shackles and said chain are each
made of medium carbon steel with 0.30% by wgt. to 0.45% by
wgt. carbon that had been hot dipped to provide a coating of
zinc having a thickness of from 75 to 120 microns and wherein
said shackles have a diameter of at least 16 mm and said chain
has a working load of more than 7 tons.
Reply Br. 10. See also Reply Br. at 3−10.
However our reviewing court has held that “the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.” In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011).
For the foregoing reasons, we sustain the Examiner’s rejection under
35 U.S.C. §103(a) of claim 7 over Tu, Olyott, Gustafson, and Bravo.
DECISION
We AFFIRM the Examiner’s rejection.

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

Ssc