Ex Parte Garcia et al

Patent Trial and Appeal Board

Dec 18, 2018

14706669 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/706,669 05/07/2015 Luis Garcia
24978 7590 12/20/2018
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
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.
4443.120234 9185
EXAMINER
HIJAZ, OMAR F
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUIS GARCIA and BHUPENDRA KENJALE
Appeal2018-005192 1
Application 14/706,6692
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1--4, 6-8, and 10-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
BACKGROUND
According to Appellants, "[t]he present invention relates to a retaining
plate for a fence post." Spec. ,r 1.
1 Our decision references the Appeal Brief ("Appeal Br."), filed Oct. 18,
2017, the Reply Brief ("Reply Br."), filed Apr. 20, 2018, the Examiner's
Answer ("Ans."), mailed Feb. 23, 2018, and the Final Office Action ("Final
Act."), mailed Feb. 9, 2017.
2 According to Appellants, the real party in interest is W. Silver, Inc.
Appeal Br. 1.
Appeal2018-005192
Application 14/706,669
CLAIMS
Claims 1 and 13 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A retention plate for a T -shaped fence post, the post
having a region configured to be inserted into soil and having
securing protrusions formed thereon, the retention plate
compnsmg:
a plate body including central openings aligned along a
centerline of the plate body,
the plate body having a periphery with a top edge, a bottom
edge and two side edges, the two side edges being parallel to one
another,
the plate body having a plurality of additional openings
therein, other than the central openings, configured and arranged
to increase a resistance to said plate from being extracted from
the soil, at least two of the additional openings being arranged
with one opening of the at least two additional openings
positioned along each of the two side edges, the at least two
additional openings being formed in the plate body between a
line extending along one of the side edges and the centerline of
the plate body, and,
the plate body being completely planar and having no
portions with bends or protrusions.
Appeal Br., Claims App. A-1.
REJECTIONS
1. The Examiner rejects claims 1--4, 7, 8, and 11 under 35 U.S.C. § 103 as
unpatentable over Chrisman3 in view of Johnston. 4
3 Chrisman, US 5,395,093, iss. Mar. 7, 1995.
4 Johnston, US 2,809,809, iss. Oct. 15, 1957.
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Application 14/706,669
2. The Examiner rejects claims 6 and 10 under 35 U.S.C. § 103 as
unpatentable over Chrisman in view of Johnston and Jones. 5
3. The Examiner rejects claim 12 under 35 U.S.C. § 103 as unpatentable
over Chrisman in view of Johnston and Ashworth. 6
4. The Examiner rejects claims 1--4, 7, 8, 11, 13-17, and 19 under
35 U.S.C. § 103 as unpatentable over Chrisman in view ofintagliata. 7
5. The Examiner rejects claims 6 and 10 under 35 U.S.C. § 103 as
unpatentable over Chrisman in view of Intagliata and Jones.
6. The Examiner rejects claim 12 under 35 U.S.C. § I03(a) as unpatentable
over Chrisman in view of Intagliata and Ashworth.
DISCUSSION
Rejections 1-3
Claims 1--4, 7, 8, and 11
In rejecting claim 1 over Chrisman in view of Johnston, the Examiner
acknowledges that:
Chrisman fails to disclose the plate body having a plurality
of additional openings therein, other than the central openings,
configured and arranged to increase a resistance to said plate
from being extracted from the soil, at least two of the additional
openings being arranged with one opening positioned along each
of the two side edges, the at least two additional openings being
formed in the plate body between a line extending along one of
the side edges and the centerline of the plate body.
Final Act. 3. The Examiner finds that Johnston teaches a lawn edger with a
plurality of openings including "at least two of the additional openings being
5 Jones, US 1,499,933, iss. July 1, 1924.
6 Ashworth, US 3,286,416, iss. Nov. 22, 1966.
7 Intagliata et al., US 2015/0096260 Al, pub. Apr. 9, 2015.
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Application 14/706,669
arranged with one opening positioned along each of the two side edges" and
"formed in the plate body between a line extending along one of the side
edges and the centerline of the plate body." Id. (citing Johnston Fig. 4). The
Examiner indicates that the line extending along a side edge of Johnston's
device is a line intersecting the points of Johnston's barbs 20, which extend
from stake 14. See id. at 12.
We are persuaded of reversible error to the extent Appellants argue
that the Examiner has not established that the proposed combination would
result in a device as claimed. See Reply Br. 7-8. In particular, we agree that
the Examiner has not established that the resulting combination would result
in openings along the parallel side edges of Chrisman. Id. We determine
that the Examiner's reasoning only supports the conclusion that it would
have been obvious to modify Chrisman to include barbs as presented in
Johnston, i.e., barbs that extend away from what one of ordinary skill in the
art would reasonably consider the side edges of Johnston. The Examiner
does not explain why a person of ordinary skill in the art would have found
it obvious, based on Johnston, to incorporate openings into the parallel side
edges of Chrisman, rather than simply adding barbs to the side edges, as
taught by Johnston.
Based on the foregoing, we are persuaded of reversible error in the
rejection of claim 1 over Chrisman in view of Johnston. Accordingly, we do
not sustain this rejection of claim 1. We also do not sustain the rejection of
dependent claims 2--4, 7, 8, and 11 for the same reasons.
Claims 6, 10, and 12
The Examiner does not rely on Jones or Ashworth in a manner that
cures the deficiency in the rejection of claim 1 over Chrisman and Johnston,
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Application 14/706,669
as discussed above. Thus, we also do not sustain the rejection of claims 6
and 10 over Chrisman in view of Johnston and Jones, or the rejection of
claim 12 over Chrisman in view of Johnston and Ashworth.
Rejections 4-6
Claims 1--4, 7, 8, and 11
In the Answer, the Examiner sets forth a new ground of rejection for
independent claim 1 over Chrisman in view of Intagliata. See Ans. 3-5. We
are persuaded of reversible error in the rejection of claim 1, as discussed
below.
Here, the Examiner relies on the same findings with respect to
Chrisman as those set forth above with respect to the rejection of claim 1
over Chrisman in view of Johnston. Ans. 3--4. However, the Examiner
relies on Intagliata as disclosing a ground anchor with additional openings
on the side edges. Id. at 4--5 (citing Intagliata Fig. 4). The Examiner
concludes it would have been obvious to include such side openings in
Chrisman "in order to further restrict upward movement of the post in order
to make the post more stable." Id. at 4.
We are persuaded of reversible error to the extent Appellants argue
that the Examiner has not established that the proposed combination would
result in a device as claimed. See Reply Br. 5---6. Specifically, we agree
with Appellants that Intagliata discloses only openings on edges that are not
parallel to the centerline of the body. See Intagliata Fig. 4. The Examiner
relies on these openings, but the Examiner does not provide a reason why
the combination with Chrisman would result in openings along the edges of
Chrisman that are parallel with each other and to the centerline of the body,
as required by claim 1. Chrisman and Intagliata disclose similarly shaped
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Application 14/706,669
bodies with side edges that are parallel and another set of side edges that are
angled toward each other. See, e.g., Chrisman Fig. 1; Intagliata Fig. 4.
Intagliata only teaches openings that are located on the angled side edges
and not on the parallel edges. Although the Examiner provides a reason for
including openings in Chrisman, the Examiner does not explain why it
would have been obvious to locate these openings on the parallel side edges
of Chrisman rather than the angled side edges. Thus, we conclude that the
Examiner has failed to adequately establish the combination proposed would
result in a device as claimed.
Accordingly, we do not sustain the rejection of claim 1 as obvious
over Chrisman in view of Intagliata. For the same reasons, we do not
sustain the rejection of dependent claims 2--4, 7, 8, and 11.
Claims 6, 10, and 12
The Examiner does not rely on Jones or Ashworth in a manner that
cures the deficiency in the rejection of claim 1, as discussed above. Thus,
we also do not sustain the rejection of claims 6 and 10 over Chrisman in
view of Intagliata and Jones, or the rejection of claim 12 over Chrisman in
view of Intagliata and Ashworth.
Claims 13-20
With respect to independent claim 13, the Examiner finds that
Chrisman teaches a retention plate for a T-shaped fence post as claimed
except that "Chrisman fails to disclose the side edges of the plate body
having a plurality of recesses." Final Act. 7-8. The Examiner finds that
Intagliata discloses a ground anchor with side edges having a plurality of
recesses configured as claimed. Id. at 8. The Examiner concludes that it
would have been obvious to modify Chrisman' s retention plate to include
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Application 14/706,669
recesses as taught by Intagliata "in order to further restrict upward
movement of the post to make the post more stable." Id.
We agree with and adopt the Examiner's findings and conclusions
with respect to claim 13. See Final Act. 7-8; see also Ans. 10-11.
With respect to this rejection, Appellants argue that Intagliata teaches
away from the proposed combination and that the combination "would
frustrate the purpose of Intagliata to provide a plastic plate." Appeal Br. 15-
18. We are not persuaded of error. Notably, although Intagliata discusses
certain disadvantages of using metal plates and advantages of using plastic
plates, Intagliata nonetheless discloses that "[t]he anchor may be made ...
from other types of materials, such as other polymers, metal or wood."
Intagliata ,r 3 5. Thus, we do not agree that Intagliata would discourage the
use of openings and barbs in plates made of metal or that the use of metal
would frustrate the purpose of Intagliata's device.
Based on the foregoing, we are not persuaded of error and we sustain
the rejection of claim 13. We also sustain the rejections of claims 14--20,
which depend from claim 13 and for which Appellants do not provide
separate arguments.
CONCLUSION
We REVERSE the rejections of claims 1--4, 6-8, and 10-12. We
AFFIRM the rejections of claims 13-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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