Ex Parte Flaherty et al

Patent Trial and Appeal Board

Sep 18, 2017

13310265 (P.T.A.B. Sep. 18, 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.
13/310,265 12/02/2011 John P. Flaherty 766P001C4 2517
42754 7590 09/18/2017
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
09/18/2017 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 2016-008182
Application 13/310,265
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 rejection2 under 35 U.S.C.
§ 103(a) of claims 1 and 2 as unpatentable over Trafixigns (GB 433,732,
pub. Aug. 20, 1935) and Szekely (US 5,303,669, iss. Apr. 19, 1994).3 We
have jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is ADA Solutions,
Incorporated. Appeal Br. 3.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated February 9, 2015 (“Final Act.”).
3 Claim 3 was canceled. See Amendment filed December 30, 2014.
Appeal 2016-008182
Application 13/310,265
We AFFIRM.4
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.5
1. A replaceable, wet-set tactile warning surface unit embedded
in concrete, comprising:
a unitary resinous composite body defining an upper
surface and a lower surface, the body comprising a series of
raised projections on its upper surface, a plurality of projecting
asperities disposed on the upper surface and on the top of the
raised projections, and a plurality of spaced through-holes
passing through the body; anchor members coupled to the unit
below the through-holes by fasteners that pass through the
through-holes; a flange extending from the lower surface at or
near each side of the unit; and a bottomless vent along each of
the sides and located underneath the body that allows air to
escape from underneath the unit when it is installed in said
concrete and that prevents the body from being permanently
embedded in said concrete; said concrete supporting said lower
surface of said unit, wherein the region between said lower
surface and said concrete is devoid of air cavities, and each said
bottomless vent is filled with said concrete.
4 Appellants state that this appeal is related to Inter partes Reexamination
No. 95/001,775 of U.S. 8,028,491 B2, which is a continuation of U.S.
7,779,581 B2; to Appeal 2016-007606 in Application 13/251,620; Appeal
2016-8180 in Application 13/310,248; and Appeal 2016-008183 in
Application 13/310,291. Appeal Br. 4.
5 We note that Inter partes Reexamination Certificate No. U.S. 7,779,581
Cl, issued July 13, 2015, claim 1—reciting substantially the same
replaceable, wet-set tactile warning surface unit for installation in fresh
concrete, as recited in appealed claim 1—was canceled, inter alia, for being
anticipated by Trafixigns. See Action Closing Prosecution, mailed July 3,
2012, at pages 15—17 and 59—60.
2
Appeal 2016-008182
Application 13/310,265
ANALYSIS
Obviousness of Claims 1 and 2 over Trafixigns and Szekely
Appellants argue claims 1 and 2 together in contesting the rejection of
these claims as obvious over Trafixigns and Szekely. See Appeal Br. 7—12;
Reply Br. 5—6. We select claim 1 as the representative claim for this group,
and claim 2 stands or falls with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Trafixigns discloses substantially all the
limitations of a replaceable, wet-set tactile warning surface unit (panel) as
recited by claim 1, including, inter alia, a unitary body, spaced through-
holes passing through the body, “anchor members (21) coupled to the unit
below the through-holes by fasteners that pass through the through-holes,”
and
a bottomless vent (10) located underneath the body and
extending essentially up to the lower surface (see Fig. 2) that
allows air to escape from underneath the unit when it is installed
in concrete and that prevents the body from being permanently
embedded in concrete (functional language fully capable of
being met by the prior art).[6]
Final Act. 3. The Examiner also points out that “each said bottomless vent
is filled with said concrete (page 2, lines 95-100, [because] the tile is keyed
to the surface of the road, which means the bottomless vent is filled with the
concrete).” Id. at 3^4.
Although acknowledging “Trafixigns does not specifically disclose
that the tile is embedded in concrete,” the Examiner reasons that because
6 It is well established that “[a]n intended use or purpose usually will not
limit the scope of the claim because such statements usually do no more than
define a context in which the invention operates.” Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003).
3
Appeal 2016-008182
Application 13/310,265
“the anchors may be embedded in the concrete (page 2, line 1), and the panel
may be ‘keyed’ to the surface of the road (page 2, line[s] 95-100).” Id. at 4.
From the foregoing, the Examiner reasons that it would have been
obvious “to have the panel embedded in concrete as a common medium for
the embedding of the anchors,” noting that “it is common knowledge in the
art to have drivable surfaces made of concrete.” Id. at 4. Furthermore, the
Examiner explains that “embedding the member in concrete results in said
concrete supporting said lower surface of said unit, wherein the region
between said lower surface and said concrete is devoid of air cavities (this
would occur due to vents 10).” Id. at 5.
While also acknowledging that Trafixigns does not disclose the panel
being made of resinous composite, the Examiner finds “Szekely discloses a
similar panel that is made from a thermoset plastic composite (Col 5, lines
13-20), which typically exists in a resinous form,” and that it would have
been obvious “to have the panel [of Trafixigns] made of a resinous
composite, as such materials are well known in the art for strength,
durability and resistance to corrosion.” Id. at 4.
In taking issue with the analysis and conclusions presented in the
Final Office Action, Appellants first point out that “there is no disclosure or
suggestion in Trafixigns that the region between the lower surface and the
concrete is devoid of air cavities,” contending “Trafixigns clearly teaches
away from this feature,” because of the washers illustrated in Figure 8 of
Trafixigns. Appeal Br. 8. Appellants continue by contending that the
embodiment of Figure 8 “would not function if no air were present under
the plate, and if the concrete under the plate supported the lower surface of
the plate.” Id. at 10.
4
Appeal 2016-008182
Application 13/310,265
However, we agree with the Examiner that Appellants argue “an
embodiment in Trafixigns that was not of consideration by the [Examiner] in
rejection,” pointing out the washers (i.e., washers 26) in Figure 8 “are not
required, as exemplified [by Figure] 7,” and explaining that “Trafixigns is
clear: ‘the plate may be positioned in or on the road.’” Ans. 6—7 (citing
Trafixigns, p. 2,11. 29-30). Appellants also do not explain how optional
washers 26 teach away from having no air cavities between a warning
panel’s lower surface and the road. “A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Appellants next contend “the alleged ‘vents’ of Trafixigns are never
filled with concrete, and never would be,” reasoning that “filling them with
concrete would cause them to fail for their intended purpose of keying the
unit or positioning the unit on the rods or bars.” Appeal Br. 10.
However, the Examiner has the better position, first pointing out that
“Trafixigns is clear: the recesses, ‘may either act to key the plate ... or
may act as positioning means for rods or bars,”’ further explaining that “[a]s
a result of this language, rods or bars are not required.” Ans. 7 (citing
Trafixigns, p. 2,11. 97—100). The Examiner also reasons that Appellants’
position as to the meaning of “keys” is misplaced, explaining that
[t]he term “keying” (or “key” as a verb) means when the plate is
pressed into the substrate, the substrate fills the voids and gaps
in the portion of the plate that is in contact with the substrate,
hence “keying” the plate to the road. In other words, the substrate
conforms to the shape of the object pressed into it, or is “keyed”
to it.
5
Appeal 2016-008182
Application 13/310,265
Id.
The Examiner continues by explaining that as illustrated in Figure 2,
“recess (10) in Trafixigns has a border that is flush with the lower surface of
the plate,” so that “by logic and understanding of the rules governing fluid
mechanics, as the plate is forced into the substrate (e.g., concrete) and keyed
to the surface of the road, air would necessarily travel the path of least
resistance, which would be through the recesses (10),” so that “[t]he recess
would clearly achieve the claimed limitation.” Ans. 8.
Although not disputing “that the phrase ‘key the plate to the surface of
the road’ means [to] position the plate to the surface of the road,” Appellants
“vigorously disagree that this in any way suggests pressing the plate into the
substrate, or that if the plate is pressed into the substrate, the substrate fills
the voids and gaps in the portion of the plate that is in contact with the
substrate as the Examiner alleges.”7 Reply Br. 6. Appellants, however, do
not provide sufficient evidence for this contention, and a preponderance of
evidence supports the Examiner’s determination that Trafixigns’ plate is
meant to key with the road surface (such that air is vented from recesses 10
upon installation)—not to provide air cavities. See In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984) (“Arguments and conclusions unsupported by
factual evidence carry no evidentiary weight.”).
7 Appellants also contend that the claims require that the plate “be flush with
the surface of the road.” Reply Br. 6. However, Appellants’ contention is
unavailing as it is not commensurate with the scope of claim 1, which is not
so limited. Appeal Br. 13 (Claims App.). As we are instructed by our
reviewing court, “limitations are not to be read into the claims from the
[Specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
6
Appeal 2016-008182
Application 13/310,265
Notably, the structure of Trafixigns’ recesses 10 and Appellants’ slots
16 (i.e., as depicted in Figure 10 of the Specification) are substantially the
same, nor do Appellants identify any structural differences between
Trafixigns’ recesses 10 and Appellants’ slots 16. Statements of use or
purpose do not make a claim to a known structure patentable. See In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (Holding that the
appellants’ contention that the claimed structure will be used in a way not
taught by the prior art reference does not have patentable weight if the
structure is already known.).
Appellants next contend “the claims require a unitary resinous
composite body defining an upper surface and a lower surface,” while
Trafixigns “is a steel plate the upper surface of which is a vitreous material.”
Appeal Br. 11—12. In particular, Appellants argue that “[cjompletely lacking
in Trafixigns is any teaching or suggestion to make the body . . . from a
fiber-reinforced resin composite material.” Id. at 12.
However, Appellants are simply attacking Trafixigns in isolation for
lacking support for findings not relied upon by the Examiner, rather than
addressing the Examiner’s combination of Trafixigns and Szekely.
Nonobviousness cannot be established by attacking references individually
when the rejection is predicated upon a combination of prior art disclosures.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Szekely,
not Trafixigns, was cited for disclosing a “similar panel that is made from a
thermoset plastic composite.” See Final Act. 4. As the Examiner again
explains, “[i]t would be obvious to make the panel in Trafixigns from the
material in Szekely for the reasons provided.” Ans. 9.
7
Appeal 2016-008182
Application 13/310,265
Based on the foregoing, we sustain the Examiner’s rejection of claims
1—4 over Trafixigns and Szekely.
DECISION
We AFFIRM the Examiner’s rejection.
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).
AFFIRMED
8