Ex Parte Flaherty et al

Patent Trial and Appeal Board

Sep 20, 2017

13251620 (P.T.A.B. Sep. 20, 2017)

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.
13/251,620 10/03/2011 John P. Flaherty 766P001C2 9613
42754 7590 09/20/2017
Nields, Lemack & Frame, LLC
176 E. Main Street
Suite #5
Wes thorough, MA 01581
EXAMINER
GILBERT, WILLIAM V
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
09/20/2017 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 JOHN P. FLAHERTY and WILLIAM SCOTT OBER
Appeal 2016-007606
Application 13/251,620
Technology Center 3600
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John P. Flaherty and William Scott Ober (Appellants)1 seek our
review under 35 U.S.C. § 134 of the Examiner’s rejections2 under 35 U.S.C.
§ 103(a) of claims 16—23 as unpatentable over Trafixigns Limited (GB
433,732, pub. Aug. 20, 1935).3 We have jurisdiction under
35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is ADA Solutions, Inc.
Appeal Br. 3.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated December 12, 2014 (“Final Act.”).
3Claims 1—15 and 24-45 have been cancelled. Final Act. 2.
Appeal 2016-007606
Application 13/251,620
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to 37 CE.R. § 41.50(b).4
CLAIMED SUBJECT MATTER
Claim 16, the sole independent claim, is reproduced below and
illustrates the claimed subject matter.5
16. A method of installing a replaceable, wet-set, tactile
warning surface unit, the unit having a body having an upper
surface, a lower surface, a perimeter flange that is thicker than
the rest of the body, a slot passing through the perimeter flange
and a through-hole from the upper to the lower surface, wherein
a series of raised projections are located on the upper surface,
comprising:
installing a fastener through the through-hole;
affixing an anchor member to the fastener, such that the
anchor member is proximate the lower surface of the body to
form an assembled unit; and
placing the assembled unit into an underlying substrate
and applying force to the top of the unit to embed the unit in the
substrate such that the unit edges are approximately flush with
the top of the surface of the substrate, wherein the force applied
to the unit allows air trapped under the unit to escape through
the slot in the perimeter flange.
ANALYSIS
4 Appellants state that this appeal is related to Inter partes reexamination no.
95/001,775 of US 8,028,491 B2, which is a continuation of US 7,779,581
B2; to Appeal 2016-008180 in Application 13/310,248; to Appeal 2016—
008182 in Application 13/310,265; and to Appeal 2016-008183 in
Application 13/310,291. See Appeal Br. 4.
5 In Inter partes Reexamination Certificate No. US 8,028,491 Cl, issued
June 12, 2017, claims 1 and 2—substantially identical to presently appealed
claims 16 and 17—were canceled for being unpatentable over Trafixigns ’483
(AU 21,483/35, published Sept. 24, 1935) and Wehmeyer (US 7,674,066
B2, issued Mar. 9, 2010).
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Appeal 2016-007606
Application 13/251,620
Obviousness of Claims 16—23 over Trafixigns Limited
We are persuaded by Appellants’ arguments that the Examiner failed
to establish a prima facie showing of obviousness of claims 16-23 over
Trafixigns Limited.
The Examiner finds that although Trafixigns Limited “does not
specifically provide the order of steps, it would have been obvious ... to
have the order as claimed because selection of any order of performing
process steps is prima facie obvious in the absence of new or unexpected
results.” Final Act. 5. More particularly, the Examiner explains that
“[pjlacing the assembled unit into the substrate, as opposed to setting the
anchors prior to embedding the panel, would result in avoiding the necessity
of having to properly align the anchors with the through holes prior to
setting,” so that “[installing the assembled unit would be less time
consuming.” Id.
In contesting the Examiner’s rejection of the claims as obvious over
Trafixigns Limited, Appellants contend, inter alia, that “there is simply no
disclosure or suggestion in Trafixigns [Limited] that the [] anchor members
are secured to the underside of the unit prior to installation of the unit, and
that the resulting preassembled unit is then embedded in the underlying
substrate.” Appeal Br. 8.
In response, the Examiner reasons that “having the claimed sequence
would be a logical one and from knowledge in the art that placing a
preassembled unit in a substrate would facilitate ease of aligning the anchors
with the holes in the unit for attachment with the bolts,” while “[pjlacing
anchors in a substrate first and then attaching a unit to the anchors could
result in misaligned holes, which would require removal and resetting,” and
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Application 13/251,620
concludes that “installing a preassembled unit would remedy any error in
misaligned openings.” Ans. 8—9.
However, Appellants contend that “[n]o reference has been applied
that discloses the knowledge recited by the Examiner” of “the installation of
a preassembled unit into wet concrete as claimed by Appellants],” and that
“[cjiting the advantage achieved by Appellants’] method, nowhere
mentioned in Trafixigns [Limited], does not magically supply this alleged
knowledge in the art.” Reply Br. 11. We agree and find that because the
Examiner’s legal conclusion of obviousness is not supported by evidence, it
cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(holding that “[t]he legal conclusion of obviousness must be supported by
facts. Where the legal conclusion is not supported by facts it cannot stand.”
(footnote omitted)).
For the foregoing reasons, we will not sustain the Examiner’s
rejection of claims 16-23 as obvious over Trafixigns Limited.
NEW GROUND OF REJECTION
Obviousness of claims 16 and 17 over Trafixigns ’4836 and Wehmeyer
(US 7,674,066 B3, issued Mar. 9, 2010).
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION of claims 16 and 17 under 35 U.S.C. § 103(a)
as being obvious over Trafixigns ’483 and Wehmeyer.
We, find that Wehmeyer clearly provides the technical teaching of
initially assembling the lugs (or anchor members) of Trafixigns ’483 to the
6 Trafixigns ’483 is the Australian counterpart to Trafixigns Limited.
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Appeal 2016-007606
Application 13/251,620
other components of the replaceable tactile tiles (or units) and then installing
the assembled unit in an underlying substrate such as fresh concrete. See
Wehmeyer, column 6, lines 30—35. Furthermore, Wehmeyer specifically
discloses that:
textured tile units [] can be detachably installed and set into
position on or in freshly poured or on hardened concrete or
other non-hardened or hardened material, such as asphalt, to be
incorporated into a surface to provide visual and tactile
warnings to the visually impaired or handicapped, or to other
pedestrians in need of warning.
(Wehmeyer, col. 2,11. 36-44, emphasis added).
Thus, we determine that “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). Furthermore, the proffered combination of Trafixigns 483 and
Wehmeyer would not be “uniquely challenging or difficult for one of
ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher—Price, Inc.,
485 F. 3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Thus
we find that it would have been obvious to one skilled in the art at the time
of the invention to detachably install and set into position on or in freshly
poured concrete the unit disclosed by Trafixigns 483 pre—assembled as
taught by Wehmeyer.
Based on the foregoing, we reject claims 16 and 17 under 35 U.S.C.
§ 103(a) as obvious over Trafixigns 483 and Wehmeyer.
Although we have exercised our discretion under 37 C.F.R. § 41.50(b)
in rejecting only claims 16 and 17 under this new ground, we leave
dependent claims 18-23 for the Examiner’s consideration in any further
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Appeal 2016-007606
Application 13/251,620
prosecution. Although 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.
DECISION
We REVERSE the Examiner’s rejection of claims 16—23 under
35 U.S.C. § 103(a) as obvious over Trafixigns Limited.
We enter a NEW GROUND OF REJECTION of claims 16 and 17
under 35 U.S.C. § 103(a) as unpatentable over Trafixigns ’483 and
Wehmeyer.
The decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, 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
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Appeal 2016-007606
Application 13/251,620
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 which 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.
REVERSED; 37 C.F.R, $ 41.50(b)
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