Ex Parte Dagher et al

Patent Trial and Appeal Board

May 1, 2013

11043420 (P.T.A.B. May. 1, 2013)

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.
11/043,420 01/26/2005 Habib J. Dagher 1-26207 4757
4859 7590 05/02/2013
MACMILLAN SOBANSKI & TODD, LLC
ONE MARITIME PLAZA FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604-1619
EXAMINER
KATCHEVES, BASIL S
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
05/02/2013 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 HABIB J. DAGHER, ERIC N. LANDIS, and
IMAD W. EL CHITI
____________________

Appeal 2011-001728
Application 11/043,420
Technology Center 3600
____________________

Before: CHARLES N. GREENHUT, BRETT C. MARTIN, and
NEIL A. SMITH, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001728
Application 11/043,420
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 30
and 37.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a rapidly-deployable lightweight load
resisting arch system. Claim 37, reproduced below, is illustrative of the
claimed subject matter:
37. A load resisting system comprising:
a plurality of arched hollow tubular structural members,
each tubular structural member substantially oriented in a plane,
wherein each tubular structural member is aligned and
substantially parallel with an adjacent tubular structural
member, wherein the tubular structural members are formed of
a fiber reinforced polymer material, wherein the hollow tubular
structural members are reinforced by a filling of at least one
reinforcing material consisting only of materials selected from
the group including non-shrink concrete, expansive concrete,
non-shrink grout, expansive grout, non-shrink polymer,
expansive polymer, and sand, and wherein each reinforced
structural member has a strength and stiffness greater relative to
a non-reinforced structural member, and wherein each tubular
structural member is attached to an adjacent tubular structural
member.

1 Since Appellants argue independent claims 30 and 37 it is likely
Appellants believed the dependent claims would stand or fall therewith.
Since non-appealed claims are generally subject to cancellation (See MPEP
§ 1215.03; see also Ex parte Ghuman, 88 USPQ2d 1478 (BPAI 2008))
express clarification is generally preferable. We treat any arguments as to
the remaining claims as waived.
Appeal 2011-001728
Application 11/043,420
3

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Swenson
Petty
Arnold
US 3,203,143
US 3,278,116
DE 20208538
Aug. 31, 1965
Oct. 11, 1966
Nov. 20, 2003

REJECTIONS
Claims 7, 14, 28, 30-32 and 35-38 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Swenson and Petty. Ans. 4.
Claims 4, 5, 33, and 34, are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Swenson, Petty and Arnold. Ans. 6.

OPINION
Claims 30 and 37 are argued as a group and we select claim 37 as
representative. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner correctly found that Swenson discloses the basic device
claimed without filling ribs 11, which are interpreted by the Examiner as the
recited “arched hollow tubular structural members,” with any of the recited
materials. The Examiner cites Figure 7 and the associated description of
Petty to demonstrate that it was known in the art to fill hollow tubular
members such as Petty’s rib forms 32 with sand. In the Final Rejection the
Examiner concludes that “[i]t would have been obvious to one having
ordinary skill in the art at the time the invention was made to modify
Swenson by adding sand inside the tubes, as disclosed by Petty, in order to
further increase the structural strength of the tubes.” Final Rej. 2-3.
Appellants dispute this conclusion, correctly pointing out that Petty
Appeal 2011-001728
Application 11/043,420
4
expressly states that the primary reason for adding substances such as sand is
not increasing the strength of the ribs. App. Br. 12, 13. In the Examiner’s
Answer the Examiner alludes to the fact that the motivation for the
Examiner’s proposed modification is not strength per se, but stiffness or
rigidity—the feature expressly taught as desirable by Petty. Petty, col. 1, ll.
26-28.
It is true that the skilled artisan would understand strength and
stiffness to have different meanings. The former relates to the ability to
withstand loading, the latter the ability to resist deflection under it.2
However, we must conclude that the skilled artisan would also understand
that filling Swenson’s hollow tubes with sand would increase both strength
and stiffness, even if Petty only expressly discusses a desire to increase
stiffness. The fill sand would both distribute the load over a greater area and
resist deformation of the tubes.3 Such a modification would further at least
Swenson’s goal of shielding the contents of the structure from deleterious
substances such as snow. See Swenson col. 1, ll. 41-46.
Appellants next take issue with the fact that Petty’s ribs are disposed
perpendicular to, as opposed to along, the circumference of Petty’s ring 20.

2 See, e.g., “strength” and “rigidity” in DICTIONARY OF ENGINEERING TERMS,
Butterworth-Heinemann (retrieved from
http://www.credoreference.com/entry/bhidet/strength_in_engineering_scienc
e and
http://www.credoreference.com/entry/bhidet/rigidity_modulus_of_in_engine
ering_science, respectively.)
3 We note that Arnold, which fills arches 12 with concrete (Abst.; figs 5-6),
also demonstrates that it was known to make a similar modification. We
leave the applicability of this reference to the independent claims for the
Examiner’s consideration in any further prosecution. While the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See MPEP 1213.03.
Appeal 2011-001728
Application 11/043,420
5
App. Br. 12. Appellants contend that such an orientation would render
Petty’s teachings inapplicable to Swenson’s arch-defining ribs 11 and that
applying Petty’s teachings to Swenson would yield a structure wherein
Petty’s sand-filled ribs are arranged perpendicular to Swenson’s arched ribs,
as opposed to the claimed subject matter. Appellants essentially repeat the
same argument couched different ways. App. Br. 14.
As the Examiner points out (Ans. 7-8), Appellants are addressing a
position never taken by the Examiner. Showing that a particular combination
of references renders some unclaimed subject matter obvious does not,
without more, support the conclusion that the claimed subject matter would
have been nonobvious in view of those same references. It is the teaching of
the sand-filling technique upon which the Examiner bases the conclusion of
obviousness, not the specific structural arrangement of Petty. Combining the
teachings of references does not require combination of their specific
structures. In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).

DECISION
The Examiner’s rejection of claims 30 and 37 under 35 U.S.C.
§ 103(a) as unpatentable over Swenson and Petty is affirmed. The rejections
of claims 4, 5, 7, 14, 28, 31-36, and 38, which have not been argued by
Appellants, are summarily 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED
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