Ex Parte Cox et al

Patent Trial and Appeal Board

Jun 17, 2016

12648499 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/648,499 12/29/2009
28278 7590 06/21/2016
BORDEN LADNER GERVAIS (Vancouver)
1200 WATERFRONT CENTRE
200 BURRARD ST., P.O. BOX 48600
VANCOUVER, BC V7X 1 T2
CANADA
FIRST NAMED INVENTOR
Martin Cox
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PAT 102034-2 3922
EXAMINER
LAUX, JESSICA L
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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):
IPMailVancouver@blg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN COX and BRIAN MAVER
Appeal2013-008422
Application 12/648,499 1
Technology Center 3600
Before NINA L. MEDLOCK, BART A. GERSTENBLITH,
CYNTHIA L. MURPHY, Administrative Patent Judges.
GERSTENBLITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Martin Cox and Brian Maver ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1---6 and 16-18. We
have jurisdiction under 35 U.S.C. § 6(b ).
1 Appellants identify "COX METALWORKS INC." as the real party in
interest. Appeal Br. 1.
Appeal2013-008422
Application 12/648,499
Claimed Subject Matter
Claim 1 is the sole independent claim on appeal. Claim 1 is
representative of the claimed subject matter and is reproduced below.
1. A walkway system comprising:
a plurality of support assemblies, each support assembly
comprising a pair of spaced apart beam support plates on an
upper side thereof;
a plurality of pairs of beams, each pair of beams
supported by pairs of spaced apart beam support plates of at
least two support assemblies;
a plurality of cross members extending between lower
portions of the pairs of beams, the cross members having
rounded upper surfaces configured to support one or more
cables resting thereupon; and,
a plurality of decking members extending between the
pairs of beams, the decking members secured to upper sides of
the beams,
whereby the cross members, beams and decking members
cooperate to form a partial enclosure for the cables, thereby
eliminating the need for a separate cable tray.
Appeal Br. 18, Claims App.
Rejections
Appellants seek review of the following rejections:
I. Claims 1 and 182 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement;
II. Claims 1--4 and 16-183 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kuhlman (US 4,087,977, iss. May 9, 1978); and
2 The Examiner's rejection initially included claim 17 based on the language
"wherein the cross members are spaced less than 30 cm apart," but the
§ 112 rejection of claim 17 was withdrawn in the Answer. Ans. 11.
3 The Examiner's heading for this rejection states that "Claims 1--4, 18 are
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Application 12/648,499
III. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kuhlman and Conn (US 5,816,010, iss. Oct. 6, 1998).
SUMMARY OF DECISION
We AFFIRM. We enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b) against claims 2---6, 16,
and 17 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
ANALYSIS
Re} ection I - Lack of Written Description Support for Claims 1 and 18
The Examiner finds that Appellants' Specification lacks written
description support for the phrases "having rounded upper surfaces," as
recited in claim 1, and "generally circular cross section," as recited in
claim 18. Ans. 5.
Appellants argue that support for these limitations is provided in
Figures 3 and 11. Appeal Br. 6. Appellants' Appeal Brief includes enlarged
views of the cross members from these two figures. Id. at 7-8. Appellants'
enlargement of Figure 11 is reproduced below:
rejected" (Final Act. 4 (mailed Sept. 21, 2012)), but the body of the rejection
also addresses claims 16 and 17 (id. at 6-7) and the Office Action Summary
indicates that claims 1---6 and 16-18 are rejected (id. at 1 ). Appellants
recognize that claims 16 and 17 are rejected hereunder. See Appeal Br. 13
("Claim 1, and claims 2-14 and 16-18 that depend therefrom, are thus
patentable over Kuhlman .... "). Accordingly, we consider the Examiner's
omission of claims 16 and 1 7, in the heading, an oversight.
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Application 12/648,499
Enlal'ged view of FIG. 11, showing rounded cross member (A} and square
horioml'ltal brace {B)
An enlarged view of Figure 11 provided by Appellants with annotations
added to show a cross member "A" and a horizontal brace "B." Id. at 8.
Appellants assert that one of ordinary skill in the art would understand, when
viewing cross member "A" and horizontal brace "B," that cross member "A"
has a rounded upper surface or generally circular cross-section whereas
horizontal brace "B" has a flat top and square edges. Id. at 9.
In response, the Examiner maintains that "the drawings [ d]o not
clearly show that those members are rounded or circular." Ans. 5. The
Examiner further indicates that "[t]he scope and detail cannot be ascertained
from the figures and there is no support in the specification." Id. at 11.
In their Reply Brief, Appellants contend that Figures 3 and 11 provide
"sufficient detail that one skilled in the art can reasonably conclude that the
inventor had possession of the claimed invention." Reply Br. 1.
"[T]he description must 'clearly allow persons of ordinary skill in the
art to recognize that [Appellants] invented what is claimed."' Ariad
Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane) (quotation and citation omitted). "[T]he test for sufficiency is whether
the disclosure ... reasonably conveys to those skilled in the art that the
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Application 12/648,499
inventor had possession of the claimed subject matter as of the filing date."
Id. (citations omitted).
Here, neither the term "rounded" nor the phrase "circular
cross-section" appears in the Specification. As reflected above, Appellants
rely solely upon Figures 3 and 11 as conveying possession of these claim
elements. As noted by the Examiner, however, the shape of the cross
members, however, is not clearly shown in Figures 3 and 11. Although we
agree that the figures show that horizontal brace 114 has a flat top, the shape
of the cross members is not nearly as clear. Nor do any of the figures
illustrate a cross-section of the cross members. Thus, based on the record
before us, the Examiner has shown by a preponderance of the evidence that
the phrases "rounded upper surface," recited in claim 1, and "generally
circular cross-section," recited in claim 11, lack adequate written description
support. Accordingly, we affirm the Examiner's rejection of claims 1
and 18.
New Ground of Rejection -
Lack of Written Description Support for Claims 2-6, 16, and 17
Claims 2---6, 16, and 17 depend from claim 1 and, thus, include
claim 1 's recitation of "cross members having rounded upper surfaces." See
Appeal Br. 18-20, Claims App. As noted above, the Examiner rejected
claim 1 as lacking written description support, but did not reject dependent
claims 2---6, 16, and 17 based on their dependency from claim 1. Because a
dependent claim includes the language of the claim from which it depends,
we hereby enter a new ground of rejection of claims 2---6, 16, and 17 under
35 U.S.C. § 112, first paragraph, for lack of written description support for
the reasons explained in the context of Rejection I.
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Rejection II - Obviousness over Kuhlman
The Examiner concludes that Kuhlman would have rendered the
subject matter of claims 1--4 and 16-18 obvious to one of ordinary skill in
the art at the time of invention. Ans. 5-8. With respect to claim 1, the
Examiner finds that Kuhlman discloses most of the elements of the claim,
but does not "expressly disclose that the cross members have a rounded
upper surface or a circular cross section." Id. at 6. Rather, the Examiner
finds that Kuhlman "discloses that they are square or rectangular." Id. The
Examiner, however, determines that
[a ]t the time the invention was made, it would have been
an obvious matter of design choice to a person of ordinary skill
in the art to use rounded or circular cross members because
applicant has not disclosed that the shape provides an advantage,
is used for a particular purpose, or solves a stated problem.
Id. Additionally, the Examiner stated that"[ o ]ne of ordinary skill in the art
... would have expected Kuhlman's cross member, and applicant's
invention[,] to perform equally well with either the shape taught by
Kuhlman or the claimed rounded/ circular shape because both would perform
the same function of supporting cables equally well .... " Id.
Appellants raise several arguments in response to this rejection. 4 We
address each. First, Appellants contend that Kuhlman fails
4 Appellants do not separately argue claims 2--4 and 16-18. Appeal Br. 10-
16. We select claim 1 as representative. Accordingly, claims 2--4 and 16-
18 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). In their Reply
Brief, Appellants raise new arguments directed to claims 16 and 1 7. See
Reply Br. 4--5. These arguments were not raised in the Appeal Brief and are
not responsive to an argument raised in the Examiner's Answer. Appellants
do not assert that they can show, or have shown, good cause for including
new arguments in their Reply Brief. Accordingly, we do not consider
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Application 12/648,499
to teach or suggest a plurality of cross members extending
between lower portions of the pairs of beams, the cross
members having rounded upper surfaces configured to support
one or more cables resting thereupon, and whereby the cross
members, beams and decking members cooperate to form a
partial enclosure for the cables, thereby eliminating the need
for a separate cable tray, as set forth in independent claim 1.
Appeal Br. 11. Specifically, Appellants contend that, even though the
Examiner relies upon Kuhlman's elements 22, 24, and 26 as disclosing cross
members, only element 24 extends between the lower side bars, but
element 24 is "too far apart[ 5J for supporting cables, unless the cables are
very rigid or accompanied by a supporting structure such as a cable tray."
Id. at 11-12.
The Examiner responds by noting that "[ t ]he claim does not require a
specific dimension" for the cross members. Ans. 12. The Examiner finds
that "there are many factors in determining whether the cables are capable of
being supported, such as rigidity/flexibility of the cable, how taught the
cable is, [and] the length of the cable ... none of which is specified in the
claim." Id. Rather, the Examiner explains that "[t]he claim only broadly
requires that the cable are [sic] capable of being supported, which they are
since they can be strung/laid/hung/draped/etc. over the cross members." Id.
In their Reply Brief, Appellants assert that "a distance of 10 feet or
greater between end bars (24) is not sufficient to support cables." Reply
Br. 4. Appellants contend that this distance is too far, "particularly in the
Appellants' arguments directed solely to claims 16 and 17. 37 C.F.R.
§ 41.41(b)(2).
5 Appellants contend that Kuhlman's lower end bars 24 are spaced "10-20
feet apart." Appeal Br. 11.
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context of Kuhlman wherein the underside of the dock is exposed to waves."
Id.
Appellants' argument is not persuasive. Claim 1 is directed to a
walkway system comprising "cross members ... configured to support one
or more cables resting thereupon ... and, ... whereby the cross members,
beams and decking members cooperate to form a partial enclosure for the
cables, thereby eliminating the need for a separate cable tray." Appeal
Br. 18, Claims App. As noted above, the Examiner finds that Kuhlman's
walkway meets the structural limitations of the claim, with the exception
indicated above, including that it is configured to support one or more cables
and that the various members cooperate to form a partial enclosure. 6
Although Appellants argue that 10 feet is too great a distance to support
cables, Appellants' argument is contingent upon the structure of the cables.
Specifically, Appellants state "unless the cables are very rigid." Appeal
Br. 12. Claim 1 does not positively recite cables, nor does it positively recite
any structural aspect of any cables. Accordingly, the walkway system of
claim 1 reads on a walkway system that is configured to support one or more
very rigid cables. Thus, Appellants' arguments do not distinguish the recited
elements of claim 1 from the structure of Kuhlman as identified by the
Examiner. 7
6 To the extent Appellants argue that Kuhlman does not disclose members
that cooperate to form a partial enclosure, we agree with the Examiner that
Kuhlman's walkway, as shown in the figures, discloses this element of the
claim.
7 Additionally, we note that claim 1 does not exclude walkway systems over
water, such as docks, as disclosed by Kuhlman.
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Application 12/648,499
Second, Appellants argue that
a person of skill in the art would not look to a dock system,
such as that described in Kuhlman, for guidance in constructing
a walkway system for supporting cables. Similarly, a person of
skill in the art would not consider modifying a dock system as
described by Kuhlman to support cables under the planks due to
the potential hazard posed by having the cables so close to the
water.
Appeal Br. 10, 12-13.
The Examiner considers Appellants' argument as challenging whether
Kuhlman is analogous art. Ans. 10. The Examiner finds that the claimed
invention and the invention described in Kuhlman are from the same field of
endeavor-walkway systems. Id. Specifically, the Examiner finds that boat
docks, such as that disclosed in Kuhlman, "are generally recognized as being
walkway systems that extend above water out to a desired location on the
water spaced from the land. This certainly falls into the category of a
walkway system." Id. (emphasis added).
We agree. Appellants' Specification states that "[t]he invention
relates to walkways." Spec. i-f 2. Kuhlman discloses a "dock system,"
which, as the Examiner found, is a walkway over water. Kuhlman [54]; see
id. at Fig. 1. Accordingly, the Examiner's finding that the claimed invention
and dock system of Kuhlman are from the same field of endeavor is
supported by a preponderance of the evidence.
With respect to Appellants' argument that one of ordinary skill in the
art would not "consider modifying a dock system as described by Kuhlman
to support cables," the Examiner's rejection does not propose modifying
Kuhlman to support cables. See Ans. 5-7. Rather, the Examiner finds that
Kuhlman discloses each structural element of claim 1, with the exception of
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Application 12/648,499
a cross member having a rounded upper surface, and that Kuhlman's
structure is capable of supporting cables as well as the structure recited in
claim 1. Id. at 6. Accordingly, Appellants' argument that one of ordinary
skill in the art would not have been motivated to modify Kuhlman in this
manner is not responsive to the rejection before us. 8
Thus, we sustain the Examiner's rejection of claims 1--4 and 16-18.
Rejection III- Obviousness over Kuhlman and Conn
The Examiner concludes that the combination of Kuhlman and Conn
would have rendered obvious the subject matter of claims 5 and 6 to one of
ordinary skill in the art at the time of the invention. Ans. 8-10.
Claim 5
The Examiner finds that Kuhlman does not expressly disclose the
elements recited in claim 5. Id. at 8-9. The Examiner finds that Conn
discloses "a first type of decking member having a pair of webs extending
downwardly near an edge to define flanges and a second type of decking
member having interlocking features extending outward and downwardly
from edges to connect with the first type (as noted in the figures)." Id. at 9.
The Examiner determines that it would have been obvious to one of ordinary
skill in the art "to modify the decking planks of Kuhlman to have the
claimed first and second interlocking features as disclosed by Conn to
8 Even if claim 1 were construed such that cables are a required structural
element of the claim, the Examiner's reasoning provides support for the
finding that it would have been obvious to include cables with Kuhlman's
dock system "as it is often desirable to provide electricity or other out to the
end of the dock for example to run a motorized winch, provide music or
lighting at the end of the dock." Ans. 10.
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facilitate assembly and disassembly and create a secure decking surface."
Id.
Appellants raise several arguments in response to the rejection,
including that "Conn does not teach or suggest two different types of
decking members, with ... both edges of one type configured to be held
under the edges of the other type." Appeal Br. 15. Appellants contend that,
contrary to the Examiner's finding, "Conn discloses a construction panel
with a connector on one edge and a receiver on the opposite edge, such that
the construction panel can interlock with adjacent panels." Id.
The Examiner responds that "the claim only requires that decking
members comprise a first and second type member" and does not "require
that the first and second type members are on separate decking members."
Ans. 12. The Examiner then finds "the first type decking member to be the
portion as seen in for example figure 3 and the second type decking member
to be the portion as seen in for example figure 2 where each of these
members are on a decking member." Id. The Examiner further notes that
"[ e Jach of these types of decking members are different even though they
are on the same decking panel." Id.
Claim 1 recites "a plurality of decking members extending between
the pairs of beams." Appeal Br. 18, Claims App. Claim 5 depends from
claim 1 and further recites "wherein the decking members comprise a
plurality of first-type decking members and a plurality of second-type
decking members." Id. at 19. Claim 5 further recites that the first-type
decking members have "a pair of flanges" and the second-type decking
members have "interlocking features," where the "interlocking features
compris[ e] portions configured to be held under the flanges." Id.
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The Examiner's interpretation of claim 5 is erroneous. Claim 5 does
not recite that the decking members comprise two types of "members," the
claim recites that the decking members comprise two types of "decking
members." In other words, it is the decking member itself that is recited as
being of two types, not a "member" or portion of the "decking member."
The Examiner's interpretation of claim 5 leads the Examiner to find
erroneously that one of Conn's decking members discloses both types of the
claimed decking members.
Additionally, the Examiner's interpretation of "decking member" in
claim 5 runs afoul of the Examiner's interpretation of "decking member" in
claim 1, which recites that the decking members extend between the pair of
beams. Were the Examiner correct that a portion of a decking member
could constitute the first-type and second-type decking members of claim 5,
those decking members would not extend between the pair of beams as
required by claim 1.
Accordingly, we do not sustain the Examiner's rejection of claim 5.
Claim 6
Appellants argue claim 6 together with the rejection of claims 1--4 and
16-18 and do not argue the patentability of claim 6 in response to the
Examiner's rejection based on Kuhlman and Conn. See Appeal Br. 13
(referring to dependent claims 2-14), 14 (addressing the rejection of claim 5
under this ground, but not claim 6). For the reasons discussed in the context
of Rejection I, Appellants' argument are not persuasive. Accordingly, we
sustain the rejection of claim 6.
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Rejoinder of Claims 7-14
Appellants request that claims 7-14 "be rejoined when claim 1 is
found allowable." Appeal Br. 17. Claims 7-14 are not on appeal before us,
and we, therefore, do not consider those claims. Further, because we sustain
the Examiner's written description and obviousness rejections of claim 1,
Appellants' request is moot.
DECISION
We affirm the Examiner's decision rejecting claims 1 and 18 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We enter a new ground of rejection of claims 2---6, 16, and 17 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We affirm the Examiner's decision rejecting claims 1--4 and 16-18
under 35 U.S.C. § 103(a) as unpatentable over Kuhlman.
We reverse the Examiner's decision rejecting claim 5 under 35 U.S.C.
§ 103(a) as unpatentable over Kuhlman and Conn.
We affirm the Examiner's decision rejecting claim 6 under 35 U.S.C.
§ 103(a) as unpatentable over Kuhlman and Conn.
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)(l )(iv).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
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Application 12/648,499
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and
state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon \~1hich rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED; 37 C.F.R. § 41.50(b)
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