Ex Parte Delafield et al

Patent Trial and Appeal Board

Jun 19, 2018

12698554 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/698,554 02/02/2010
95450 7590 06/21/2018
NEW RIVER VALLEY INTELLECTUAL
PROPERTY LAW, PC
1750 Kraft Drive
Suite 2200
BLACKSBURG, VA 24060
FIRST NAMED INVENTOR
Warren Delafield
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.
DELF-101 4229
EXAMINER
MCMAHON, MATTHEW R
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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):
MICHELE.MA YBERRY@NRVIPLA W.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WARREN DELAFIELD, ROGER D. CLARK JR., and
JEFFREY DELAFIELD
Appeal2017-003737
Application 12/698,554
Technology Center 3600
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
SEAN P. O'HANLON, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Warren Delafield et al. ("Appellants") 1 seek review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action
dated March 30, 2016 ("Final Act."), rejecting claims 1, 4--7, 9, 21, 22, and
24--32, which are the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 The Appeal Brief identifies Appellants as the real parties in interest. Br. 3.
Appeal2017-003737
Application 12/698,554
CLAIMED SUBJECT MATTER
Claim 1 is representative, and is reproduced below:
1. A modular fencing system comprising:
one or more upright vertical post members;
hollow bodied upper and lower horizontal guardrails with
a longitudinal panel-receiving channel having an opening with a
width sized for receiving an edge of a panel insert;
one or more panel inserts comprising:
a solid sheet of cellular polyvinyl chloride (PVC)
with four panel edges, a front surface, and a back surface;
the four panel edges comprising planar upper and
lower edges the same width or smaller than the width of the
panel-receiving channels;
the front surface or the back surface having partial
or complete voids in or through the panel insert, which
collectively account for less than about 50% of the front surface
or the back surface measured by surface area;
a planar border disposed around a perimeter of each
of the front surface and the back surface, wherein in an area
between one of the panel edges and one of the voids the planar
border is disposed in a single plane; and
wherein, upon installation in the guardrails and upon
receiving a load normal to a panel insert at its center sufficient to
displace the panel 1 inch or greater, the panel exhibits recovery
from displacement of 95% or higher.
Br. 19 (Claims App.).
REJECTIONS
1. Claims 1, 4, 21, 22, and 24--32 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Murdaca (US 6,029,954, issued Feb. 29,
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Application 12/698,554
2000), Andrade (US 2005/0191466 Al, published Sept. 1, 2005), Burkart
(US 2006/0175594 Al, published Aug. 10, 2006), and Huang (US
2008/0277639 Al, published Nov. 13, 2008).
2. Claim 5 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Murdaca, Andrade, Burkart, Huang, and Wallick (US 4,959,107, issued
Sept. 25, 1990).
3. Claim 6 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Murdaca, Andrade, Burkart, Huang, and Breisch (US 4,124,093, issued
Nov. 7, 1978).
4. Claim 7 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Murdaca, Andrade, Burkart, Huang, Wallick, and Breisch.
5. Claim 9 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Murdaca, Andrade, Burkart, Huang, and Batcheller (US 4,690,383,
issued Sept. 1, 1987).
ANALYSIS
Rejection 1
For claim 1, the Examiner finds that Murdaca discloses a modular
fencing system comprising vertical post members (posts 22), upper and
lower horizontal guardrails ( upper railing 16 and lower railing 18) with a
panel-receiving channel (inserts 50, 52), and panel inserts (plates 21 ). Final
Act. 2-3 (citing Murdaca, Figs. 2, 5-7). The Examiner finds that Murdaca
does not disclose several limitations recited in claim 1, and relies on
Andrade, Burkhart, and Huang to address these omissions. Id. at 3-5.
More particularly, the Examiner finds that Murdaca does not disclose,
inter alia, the limitations of the "wherein" clause in claim 1. Final Act. 3.
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Application 12/698,554
This limitation requires, "upon installation in the guardrails and upon
receiving a load normal to a panel insert at its center sufficient to displace
the panel 1 inch or greater, the panel exhibits recovery from displacement of
95% or higher." Br. 19 (Claims App. ( emphasis added)). To address this
omission, the Examiner relies on Burkhart to teach a fencing system with
PVC components that exhibit deflection recovery of nearly 95%. Final Act.
4 (citing Burkhart ,r 8, Tables 1-6). Based on this teaching, the Examiner
determines that "the deflection recovery of such a fencing system is known
in the art as a result effective variable." Id. Therefore, the Examiner
concludes, it would have been obvious to design the fence system of
Murdaca such that "the panel exhibits recovery from displacement of one
inch or greater of 95% or higher" because discovering an optimum value of
a result effective variable involves only routine skill in the art. Id. ( citing In
re Boesch, 617 F.2d 272 (CCPA 1980)).
Appellants contend that Burkart does not disclose that "a panel
exhibits recovery from displacement of 95% or higher," as claimed. Br. 9.
Rather, Appellants contend, Burkhart discloses only recovery of a rail, not a
panel. Id. at 10. Appellants also contend that the test performed on the rail
in Burkhart does not use "a load normal to a panel at its center" and the load
applied in Burkhart is not "sufficient to displace the panel 1 inch or greater,"
as claimed. Id. at 10-11 (citing Burkhart ,r 104, Table 6).
In response, the Examiner explains that Burkart is not relied on to
disclose a recovery from displacement of "95% or higher," as claimed. Ans.
3. Rather, Burkart is relied on "to show that recovery from displacement is
an important feature of a fencing system and thus is properly considered a
result effective variable." Id.
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Application 12/698,554
Regarding the Examiner's reliance on Burkhart, Appellants contend
that "[a] variable must first be recognized as one which achieves a
recognized result before concluding that optimization of the variable
constitutes routine experimentation." Br. 11 (citing In re Antonie, 559 F.2d
618 ( CCP A 1977) ). Appellants contend that the Examiner has not shown
what recognized result is achieved by optimizing the strength feature of the
claims, and, accordingly, has not shown that a recovery of 95% or higher is a
result effective variable. Id.
Appellants' contentions are persuasive. Regarding the Examiner's
position, the applicable legal principles are as follows:
"[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation." [In re] Aller, 220 F.2d [ 454,]
456 [(CCPA 1955)]. This rule is limited to cases in which the
optimized variable is a "result-effective variable." In re Antonie,
559 F.2d 618, 620 (CCPA 1977); see [In re] Boesch, 617 F.2d
[272,] 276 [(CCPA 1980)] ("[D]iscovery of an optimum value of
a result effective variable ... is ordinarily within the skill of the
art.").
In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012).
Burkhart discloses that Tables 1 to 3 show the test results from a test
of a first specimen of rail assemblies 204, wherein a uniform horizontal
design load was applied on the top rail 26a. Burkhart ,r 72. Burkhart
describes, "[ e Jach simulation applied equal loads at two or four points
equally distributed across the rail 26a of the specimen as shown in FIGS. 17
and 18." Id. Burkhart discloses that Tables 4 to 6 show the test results from
a test of a second specimen of rail assemblies 204, wherein a uniform
downward sloping design load was applied on the top rail 26a. Id. ,r 104.
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Application 12/698,554
According to the Examiner, "the teachings of Burkhart as it relates to
the importance of the deflecting recovery of a fencing system are still valid,
regardless of the specific type of fence or part of fence assembly measured."
Ans. 5 (emphasis added). However, the Examiner does not identify any
disclosure in Burkhart, or provide any other evidence, that establishes the
test results shown in Tables 1 to 6, which indicate the measured
displacement and recovery of the top rail of a rail assembly resulting from
applying a "uniform horizontal design load" or a "uniform downward
sloping design load" to the top rail, are also "valid" with respect to any other
part( s) of the rail assemblies, much less to a panel having the claimed
features. Accordingly, the Examiner's finding is not supported by a
preponderance of the evidence.
We are persuaded by Appellants that the Examiner has not identified
sufficient evidence to support the position that the claimed "recovery from
displacement" of the panel insert is a result-effective variable before
invoking "routine optimization" reasoning. Br. 11. See Antonie, 559 F .2d at
620 (finding no disclosure of the relationship between the recited variable
and the result in the prior art). Accordingly, we agree with Appellants that
the Examiner has not articulated an adequate reason with a rational
underpinning why one of ordinary skill in the art would have optimized the
claimed "recovery from displacement" of a panel insert, in light of the test
results shown in Tables 1 to 6 of Burkhart, to have the claimed value. See
Reply Br. 3--4.
For these reasons, we do not sustain the rejection of claim 1, or of
claims 4, 21, 22, and 24--32 depending therefrom, as unpatentable over
Murdaca, Andrade, Burkart, and Huang.
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Rejections 2-5
The Examiner's further reliance on one or more of Wallick, Breisch,
and Batcheller to reject dependent claims 5-7 and 9 does not cure the above-
discussed deficiencies in the rejection of parent claim 1. See Final Act. 9-
12. Accordingly, we do not sustain the rejections of claims 5-7 and 9.
DECISION
We reverse the rejections of claims 1, 4--7, 9, 21, 22, and 24--3 2.
REVERSED
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