Ex Parte Gibbs et al

Board of Patent Appeals and Interferences

Mar 20, 2012

10904871 (B.P.A.I. Mar. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte EDWARD L. GIBBS, FRED L. GIVENS,
and GARY W. VONNAHME
____________________

Appeal 2010-011507
Application 10/904,871
Technology Center 3600
____________________

Before: JOHN C. KERINS, STEVEN D.A. McCARTHY, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-8, 10-13, 15, 16, 19-23, 36-43, 48-52, 62, 63, 66-69, 71-73, 78, 80, 82-84,
133-143, 145-149, 152-155, 164, 165, 167, 171, 173, 177, and 179-198. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

THE INVENTION
Appellants’ claimed invention “relates generally to barriers to
pedestrians or vehicles, and more particularly to fences and fence
components formed with rails and upright members that are tiltable with
respect to each other.” Spec. 1, para. [2]. Independent claim 1, reproduced
below, is representative of the claimed subject matter:
1. A barrier, comprising:
a plurality of rails disposed in spaced and parallel
relationship, each rail comprising:
an elongate web having a plurality of
longitudinally spaced openings formed therein;
a pair of opposed side walls extending from the
web to define a rail channel; and
a plurality of longitudinally spaced planar and
unperforated tabs, each tab tiltable relative to the web
and extending within the rail channel from a position at
or adjacent the web and situated adjacent a corresponding
web opening in a one-to-one relationship; and
a plurality of upright members, each upright member
extending in transverse relationship to the plural rails, with a
mechanical connection formed between each upright member
and each rail at the tab.

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REJECTIONS
Appellants seek review of the following rejections:
1. Claims 188-190 and 193-195 under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellants regard as the invention.1
2. Claims 1-5, 16, 19, 22, 23, 136, 165, 181, 184, 188, 193, and 194
under 35 U.S.C. § 102(b) as anticipated by Brown (US 3,717,964; iss. Feb.
27, 1973).2
3. Claims 193 and 194 under 35 U.S.C. § 102(b) as anticipated by
Hawkins (US 2,563,530; iss. Aug. 7, 1951).
4. Claims 196 and 197 under 35 U.S.C. § 102(b) as anticipated by
O’Sullivan (US 4,723,760; Feb. 9, 1988).
5. Claims 6-8, 10-13, 15, 36-43,48, 49, 52, 133, 137, 140-143, 147-
149, 164, 171, 182, 185, and 189 under 35 U.S.C. § 103(a) as obvious over
Brown and Wick (TOOL AND MANUFACTURING ENGINEERS HANDBOOK,
(Charles Wick & Raymond F. Veilleux eds., 4th ed., 1987)).
6. Claim 167 under 35 U.S.C. § 103(a) as obvious over Brown and
Gibbs (US 6,969,051 B1; iss. Nov. 29, 2005).
7. Claims 1-5, 16, 19-23, 135, 136, 165, 181, 184, 188, 191, 193 and
194 under 35 U.S.C. § 103(a) as obvious over O’Sullivan and Hawkins.3

1 The Examiner withdrew the rejection of claims 180-187. Ans. 3.
2 The Examiner withdrew the rejection of claims 196 and 197 as anticipated
by Brown. Ans. 3.
3 Appellants mistakenly list claim 139 instead of claim 193 in the heading of
their discussion of this rejection, but properly identify the claim in the body
of the argument. App. Br. 23.
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8. Claims 6-8, 10-13, 15, 36-43, 48-52, 133, 137, 139-143, 146-149,
164, 171, 182, 185, 189, and 192 under 35 U.S.C. § 103(a) as obvious over
O’Sullivan, Hawkins, and Wick.
9. Claims 62, 63, 66, 71-73, 82-84, 134, 152-155, 177, 180, 183, 186,
187, 190 and 195 under 35 U.S.C. § 103(a) as obvious over O’Sullivan,
Hawkins and Hebda (US 4,883,256; iss. Nov. 28, 1989).4
10. Claims 67-69, 78, 80, 138, and 145 under 35 U.S.C. § 103(a) as
obvious over O'Sullivan, Hawkins, Hebda, and Wick.5
11. Claim 167 under 35 U.S.C. § 103(a) as obvious over O’Sullivan,
Hawkins, and Gibbs.
12. Claim 173 under 35 U.S.C. § 103(a) as obvious over O’Sullivan,
Hawkins, Gibbs, and Wick.
13. Claim 198 under 35 U.S.C. § 103(a) as obvious over O’Sullivan
and Hebda.
14. Claim 179 under 35 U.S.C. § 103(a) as obvious over O’Sullivan,
Hawkins, Hebda, and Gibbs.

OPINION
1. Claims 188-190 and 193-195 as indefinite
Claim Construction
The Examiner concluded that claims 188-190 and 193-195 are
indefinite for the reason that the term “in flush relationship”6 is unclear

4 We combine what the Examiner expressed as two rejections. See Ans. 21-
22, 24-27.
5 We combine what the Examiner expressed as two rejections. See Ans. 22,
27-29.
6 The Specification does not define, nor even use, the claim term “flush
relationship.”
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because, as shown in Figures 6 and 7, the tab of the rail is only in point
contact at projection 46 (also known as a weldable projection) while
“something that is flush makes a continuous surface on a plane or in
contact.” Ans. 4, 30. Presumably, the Examiner meant that “flush” is
commonly defined as “having or forming a continuous plane or an unbroken
surface.” See Ans. 4, 30; see also WEBSTER’S UNABRIDGED DICTIONARY
(1996) (“flush,” adj. definition 4a). The Specification describes and depicts
the first surface 42 of tab 40 joined to a surface of its associated upright
member 20. Spec. 13, para. 83; fig. 6. Thus, the Specification describes that
a surface of the tab joins or contacts a surface of the upright member so that
the surfaces overlap (lie in parallel planes).7 Thus, the Examiner’s definition
is inconsistent with the Specification because it refers to surfaces that form a
continuous plane or unbroken surface, not surfaces that overlap (i.e.,
surfaces that lie in the same plane rather than parallel).
Appellants contend, and we agree, that “flush” means, “directly
abutting or immediately adjacent,” as in “a sofa flush against the wall,” and
that nothing in the Specification is inconsistent with this meaning.8 App. Br.
10. See also WEBSTER’S UNABRIDGED DICTIONARY (1996) (“flush,” adj.
definition 4b “directly abutting or immediately adjacent to”).
Claims 188, 190, and 193-195
The Examiner’s rejection presumes that the tab of claims 188, 190,
and 193-195 includes a projection (e.g., projection 46). See Ans. 4-5; see
also Figs. 6-7. These claims do not call for the tab to include a projection,
and the Examiner’s reasoning is thus inapplicable to these claims.

7 The Examiner’s definition fits the example of two sheets of paneling
positioned next to each other on a wall to form a continuous plane.
8 This interpretation of “flush relationship” is used for other claims subject
to this appeal.
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Claim 189
Claim 189 depends from independent claim 36. Claim 189 calls for
each upright member to be laterally joined by a weldable projection to a
corresponding tab of the rail in flush relationship thereto. The Specification
describes that each upright member 20 is laterally joined by a weldable
projection 469 to a corresponding tab 40 of rail 18. See Spec. 12-13, [para
82]; figs. 6-8; see also App. Br. 2 (identifying weldable projection 46 as the
subject matter of claim 36). Weldable projection 46 may consist of one or
more ridges situated on tab 40. Spec. 13, [para 84]; figs. 6-8. Thus, a
portion of the tab (projection 46 that becomes weld 50) directly abuts
upright member 20. In light of these disclosures, a person of ordinary skill
in the art would understand what is claimed is that tab 40 (at weld 50) abuts
upright member 20. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806
F.2d 1565, 1576 (Fed. Cir. 1986) (“A decision on whether a claim is invalid
under § 112, 2d ¶, requires a determination of whether those skilled in the art
would understand what is claimed when the claim is read in light of the
specification.” (citations omitted)).
Claim 195
The Examiner also concluded that claim 195 is indefinite for a second
reason, namely, because it is unclear if the “plurality of longitudinally
spaced tabs” refers to the tabs recited in independent claim 193, or are
additional tabs, and a person of ordinary skill in the art would not know if
some or all of the tabs are tiltable. Ans. 5, 31. Independent claim 193 is
directed to a barrier comprising at least one rail that includes, “a plurality of
longitudinally spaced tabs, each tab tiltable relative to the web of the rail and

9 Projection 46 is heated and at least partially melted using electrical
resistance to form welds 50. Spec. 14, para. [89]; figs. 6, 7.
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extending with the rail channel.” Claim 195 depends from claim 193, and
adds that the at least one rail comprises a plurality of rails that include “a
plurality of longitudinally spaced tabs, each tab tiltable relative to the web of
the rail and extending with the rail channel.” Though claim 195 is not a
model of clarity, a person of ordinary skill in the art would understand that
the plurality of longitudinally spaced tabs of the plurality of rails of claim
195 are each tiltable relative to the web of the rail, and further would
understand that because claim 195 uses the claim term “comprising,” the rail
may include other unrecited elements, such as untiltable tabs. Consequently,
we agree with Appellants that the Examiner identified an issue of breadth,
not of clarity. App. Br. 11-12; Reply Br. 2-3; see In re Gardner, 427 F.2d
786, 788 (CCPA 1970) (“Breadth is not indefiniteness.”).
Thus, we cannot sustain the rejection of claims 188-190 and 193-195.

2. Claims 1-5, 16, 19, 22, 23, 136, 165, 181, 184, 188, 193, and 194 as
anticipated by Brown
Independent claims 1 and 193, call for a rail having a plurality of
longitudinally spaced tabs that are each tiltable relative to the web of the rail.
The Examiner found that Brown discloses an elongate web (A1) with a
plurality of longitudinally spaced openings (A3), each opening having a
planar tab (stop or tab 77) that is tiltable because it is made of a thin metal.10
Ans. 5-6, 31-35.
Brown does not explicitly disclose that tab 77 is tiltable. Brown,
passim. Brown discloses a method of making frames utilizing web-to-web
contact between beams and welds designed to provide strengthened frames

10 Reference numerals A1and A3 are from the Examiner’s annotated version
of Brown’s Figure 17. See Ans. 5.
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that distribute loads effectively. Col. 1, ll. 24-25, 34-35, 44-50, 57-62.
Specifically, tab 77 of beam 46 is welded to web 102 of beam 50 at 104 and
106, producing an unexpectedly strong weld. Col. 6, ll. 1-8; figs. 17-18.
Further, the upper and lower flanges 108, 110 of beam 46 are welded to the
upper and lower flanges 116, 118 of beam 50 (at 120, 122, 124, and 126).
Col. 6, ll. 9-24; fig. 18. The six welds joining Brown’s beam 46 to cross
beam 50 prevent tab 77 from tilting. Consequently, we agree with
Appellants that Brown does not disclose a tab (tab 77) that is tiltable as
called for in independent claims 1, and 193. App. Br. 12-15; Reply Br. 3-5.
As such, we cannot sustain the rejection of independent claims 1 and
193, and their respective dependent claims 2-5, 16, 19, 22, 23, 136, 165,
181, 184, 188, and 194 as anticipated by Brown.

3. Claims 193 and 194 as anticipated by Hawkins
Independent claim 193 requires each of a plurality of upright members
to be joined to a corresponding tab, “in flush relationship.”11 The Examiner
found that Hawkins discloses a plurality of upright members (picket 52) that
are laterally joined to a corresponding tab (lip 51) such that the tab (lip 51)
and the upright member (picket 52) are disposed in flush relationship. Ans.
7, 36. Appellants argue that Hawkins’s lip and picket are not in a “flush
relationship” as claimed because the lip contacts the picket at a “single point
of tangency.” App. Br. 15-18; Reply Br. 5.
Hawkins’s lower rail 48 is a channel with its web facing upwards, and
includes an opening 49 having a downturned lip 51 which is “substantially
tangential” to the surface of square picket 52. Col. 3, ll. 31-34; col. 4, l. 6-

11 Appellants argue claims 193 and 194 as a group, and we select claim 193
as representative. App. Br. 15-18; see 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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16; fig. 9. Thus, lip 51 directly abuts the surface of picket 52.12
Consequently, we agree with the Examiner’s finding that Hawkins’s lip 51 is
in a flush relationship with the picket 52. See Ans. 7, 36; contra App. Br.
15-18; Reply Br. 5-6. We thus sustain the rejection of claims 193 and 194.

4. Claims 196 and 197 as anticipated by O’Sullivan
Independent claim 196 and its dependent claim 197 call for a barrier
panel having a plurality of upright members, “characterized by upper ends
that define the uppermost extent of the barrier panel.” The Examiner found
that O’Sullivan discloses a barrier panel defined by a plurality of upright
members (tubular pickets 16) and the three lowermost rails (tubular rails 14).
Ans. 8-9. This anticipation rejection is facially deficient because it proposes
to modify O’Sullivan’s panel by removing the uppermost of the four rails
(tubular rails 14), or to ignore the existence of that uppermost rail. See Ans.
8 (referring to “three rails 14 closest to bottom as seen in fig. 1”).
Further, O’Sullivan discloses a section of fence assembly 10 having a
plurality of upright members (tubular pickets 16) and four rails (tubular rails
14). Col. 2, ll. 25-26, 35-38, 59-65; fig. 1. O’Sullivan’s upright members
(tubular pickets 16) terminate within the uppermost rail (tubular rail 14) so
that the upright members (tubular pickets 16) do not define the uppermost
extent of the barrier panel. Fig. 1. Consequently, we agree with Appellants
that O’Sullivan does not disclose a plurality of upright members
“characterized by upper ends that define the uppermost extent of the barrier

12 The intersection of the curved surface of the lip 51 and the surface of the
picket 52 is a line, not a, “single point” as Appellants allege. App. Br. 18.
Further, even if lip 51 contacts picket 52 at a single point, the surfaces still
directly abut and thus are in a flush relationship. See claim construction,
supra.
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panel,” as called for in claims 196 and 197. As such, we cannot sustain the
rejection of claims 196 and 197.

5. Claims 6-8, 10-13, 15, 36-43, 48, 49, 52, 133, 137, 140-143, 147-149,
164, 171, 182, 185, and 189 as obvious over Brown and Wick
Each of these claims calls for a rail having a plurality of tabs that are
tiltable relative to the web of the rail. Here, the Examiner relied on the
finding in the second rejection, supra, that Brown discloses a tab (tab 77)
that is tiltable as claimed. Ans. 9. The Examiner found that Brown fails to
disclose a weldable projection, and concluded that it would have been
obvious to modify Brown’s tab (tab 77) to include a weldable projection to
concentrate electrical current to make resistance welds to join components to
the rail. Ans. 10. Attachment of Brown’s tab (tab 77) by a weldable
projection rather than a weld, does not alter our conclusion, supra, that
Brown’s tab (tab 77) is not tiltable as claimed. See App. Br. 20-21; Reply
Br. 7-8. As such, we cannot sustain the rejection of claims 6-8, 10-13, 15,
36-43, 48, 49, 52, 133, 137, 140-143, 147-149, 164, 171, 182, 185, and 189.

6. Claim 167 under 35 U.S.C. § 103(a) as obvious over Brown and Gibbs
Claim 167 calls for a rail having a plurality of tabs that are tiltable
relative to the web of the rail. The Examiner relied upon the same erroneous
finding that Brown discloses a tab (tab 77) that is tiltable with respect to the
web of the rail discussed, supra. See Ans. 13, 37-38; App. Br. 21-22; Reply
Br. 7-8. As such, we cannot sustain the rejection of claim 167.

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7. Claims 1-5, 16, 19-23, 135, 136, 165, 181, 184, 188, 191, 193, and 194
as obvious over O’Sullivan and Hawkins
Claims 1-5, 16, 19-23, 135, 136, 165, 181, 184, 188, and 191
Independent claim 1 calls for a rail having a plurality of unperforated
tabs. The Examiner found that O’Sullivan discloses the barrier of claim 1
except that O’Sullivan’s tabs (flaps 14c) include perforations for connection
of the tab to the upright members (pickets 16). Ans. 14. The Examiner
found that Hawkins discloses connection of tabs (lips 51) to upright
members (picket 52) by a weld (weld at 53). Id. The Examiner concluded
that it would have been obvious to connect O’Sullivan’s tabs (flaps 14c) to
the upright members (pickets 16) using a weld, as taught by Hawkins, thus
obviating the need for perforation in the tabs (flaps 14c). Id.
The claimed rail forms an inverted U (an elongate web and a pair of
opposed side walls), while O’Sullivan’s rail (tubular rail 14) has a closed
cross section (rectangular cross section). Fig. 6; O’Sullivan, col. 2, ll. 39-40;
fig. 3. The significance is that the claimed rail permits access to the upright
members on the side opposite the web, while O’Sullivan’s rail (rail 14) does
not permit such access. For this reason, we agree with Appellants that the
proposed modification would not have been obvious because use of a
conventional fillet weld, as disclosed by Hawkins, to weld O’Sullivan’s tab
(flap 14c) to the upright member (picket 16) would necessitate insertion of
welding equipment and filler material through the end of O’Sullivan’s rail
14, which is approximately six feet in length. O’Sullivan, col. 2, l. 30; App.
Br. 23-25 (providing a more detailed explanation, and citing Modern
Welding regarding conventional fillet weld methodology).
The Examiner contends that Appellants’ argument is unpersuasive
because the proposed modification is not a bodily incorporation, and because
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a person of ordinary skill in the art “would be fully capable of choosing
welding techniques suitable for the O’Sullivan rail and/or modifying the rail
to suit known welding techniques.” Ans. 38. Though not a bodily
incorporation, the Examiner proposes to use Hawkins’s welding technique
on O’Sullivan’s barrier.13 Appellants convincingly explained why such
technique would not have been obvious, and the Examiner’s conclusory
assertion that a person of ordinary skill would find a way is unpersuasive.
Consequently, we agree with Appellants that a person of ordinary skill in the
art would not have made the proposed combination.
As such, we cannot sustain the rejection of independent claim 1 or its
dependent claims 2-5, 16, 19-23, 135, 136, 165, 181, 184, 188, and 191.
Claims 193 and 194
While independent claim 193 and its dependent claim 194 do not call
for unperforated tabs, the rejection of these claims relies upon the same
erroneous combination of Hawkins and O’Sullivan. As such, we cannot
sustain the rejection of claims 193 and 194.

8. Claims 6-8, 10-13, 15, 36-43, 48-52, 133, 137, 139-143, 146-149, 164,
171, 182, 185, 189, and 192 as obvious over O’Sullivan, Hawkins, and Wick
For each of these claims, the Examiner concluded that it would have
been obvious to connect O’Sullivan’s tab (flap 14c) to each upright member
(picket 16) using a weldable projection and resistance welding as taught by
Wick. Ans. 17. As explained in the analysis of the seventh rejection, supra,
O’Sullivan’s rail has a closed cross section. As Appellants point out,
O’Sullivan’s configuration prevents access to properly resistance weld the

13 The Examiner presents no contradictory evidence or reasoning to show
that Hawkins’s weld is not a conventional fillet weld.
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tab (flap 14c) to the upright member (picket 16). App. Br. 27-29. We agree
that a person of ordinary skill in the art would not have made the proposed
combination. As such, we cannot sustain the rejection of claims 6-8, 10-13,
15, 36-43, 48-52, 133, 137, 139-143, 146-149, 164, 171, 182, 185, 189, and
192 over O’Sullivan, Hawkins, and Wick.

9. Claims 62, 63, 66, 71-73, 82-84, 134, 152-155, 177, 180, 183, 186, 187,
190 and 195 over O'Sullivan, Hawkins and Hebda
Claims 62, 63, 66, 71-73, 82-84, 134, 152-155, 177, 180, 190 and 195
Appellants argue claims 62, 63, 66, 71-73, 82-84, 134, 152-155, 177,
180, 190 and 195 as a group, and we select claim 62 as representative. App.
Br. 29-37; see 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found that O’Sullivan discloses the subject matter of
claim 62 except the rails having a mouth situated opposite the web (an
inverted U-shape) and each of the tabs being welded to a corresponding
upright member. Ans. 24-25. The Examiner found that Hawkins discloses
the use of a weld to connect upright members to a rail, and concluded that it
would have been obvious to connect O’Sullivan’s tabs (flaps 14c) to the
upright members (pickets 16) using a weld as taught by Hawkins. Ans. 25.
The Examiner found that Hebda discloses rails having a U-shape, and
concluded that it would have been obvious to modify O’Sullivan’s rails (rail
14) to have a U-shape, as taught by Hebda, “to minimize material cost.” Id.
Appellants present a variety of arguments to support their contention
that the proposed combination would not have been obvious in light of the
combined references. App. Br. 29-37; Reply Br. 10-13.
Appellants argue that welding Hebda’s picket (upright member) to a
rail is incompatible with Hebda’s system. App. Br. 32. This argument is
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unpersuasive because it fails to address the Examiner’s articulated rejection.
The rejection relies upon Hebda for a rail having an inverted U-shaped cross
section, not for the connection between the upright member and rail.
Appellants argue that a person of ordinary skill in the art would not
have made the proposed modification because it would be inconsistent with
multiple layers of anti-tampering protection as taught in O’Sullivan and
Hebda. App. Br. 32-33. O’Sullivan and Hebda do not disclose or suggest
that any features are intended to thwart tampering. For that reason,
Appellants’ argument is unpersuasive. To the extent that Appellants’
argument is a contention that welding is a less desirable method of attaching
the upright members (pickets 16) to the tabs (flaps 14c) than O’Sullivan’s
rod 18, we disagree. Hawkins discloses that welding is a suitable method of
attaching upright members (picket 52) to tabs (lip 51). Hawkins, col. 3, ll.
21-24; fig. 9.
Appellants argue that modifying O’Sullivan’s tubular rail 14 into an
inverted U-shaped rail would reduce rigidity and strength. App. Br. 33. Our
reviewing court recognized that a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate any or all reasons to combine teachings. See Winner Int’l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”). A person of ordinary skill in the art
would select a U-shaped rail having sufficient rigidity and strength for the
application. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (It
is proper to “take account of the inferences and creative steps that a person
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of ordinary skill in the art would employ.”). See also id. at 421 (“A person
of ordinary skill is also a person of ordinary creativity, not an automaton.”).
Appellants argue that the Examiner did not offer proof to support the
assertion that a rail having an inverted U-shaped cross section, as disclosed
by Hebda, would minimize cost. App. Br. 33 (citing MPEP § 2144.03). The
Examiner did not conclude that the proposed modification would minimize
overall cost; rather, the Examiner concluded the modification would reduce
material cost. Ans. 39. Appellants’ argument is unpersuasive because it
does not address the rejection as articulated by the Examiner.
Appellants offer evidence of secondary considerations of obviousness,
and argue that if the claimed invention were simply an obvious variation of
O’Sullivan it would have been created years ago. App. Br. 33-39; Reply Br.
11-13. Specifically, Appellants argue the fencing industry has long needed a
rackable14 barrier that is both durable and cost-effective. App. Br. 33.
Appellants describe that typical prior art rackable systems were assembled in
the field using screws that later experienced significant weathering, or were
assembled in-shop rather than on-site, promoting inaccuracy. App. Br. 34-
35. Appellants assert that although the industry was initially skeptical, the
product achieved commercial success. App. Br. 35-37.
Regarding evidence of a long-felt need in the industry for a durable,
cost effective barrier, Appellants first present evidence that prior to the
claimed device, the industry did not offer a steel, welded, rackable design.
See, e.g., Lee Decl., para. 4; Smith Decl., para. 5; Lott Decl., para. 4.
However, claim 62 does not require that the barrier be formed of steel. For

14 “Rackable” means the structure is angularly adjustable. O’Sullivan, col.
1, ll. 6-10. In other words, the fence can adjust angularly so that the pickets
remain vertical even if the rails are not horizontal. See Fig. 10.
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that reason, this evidence is not commensurate in scope with the claimed
barrier and lacks the required nexus. See In re GPAC, Inc., 57 F.3d 1573,
1580 (Fed. Cir. 1995).
Establishing long-felt need requires objective evidence that an art-
recognized problem existed in the art for a long period of time without
solution. The evidence must show that the need was a persistent one that
was recognized by those of ordinary skill in the art. In re Gershon, 372 F.2d
535, 539 (CCPA 1967). The declarations do not establish how long the need
existed. The declarations also do not provide evidence of the efforts and
resources expended during that time in attempts to solve the problem, or that
other tried and failed to solve the problem.
O’Sullivan’s rackable barrier can be assembled in-shop and includes
tabs (flaps 14c) secured to the upright members (pickets 16) using rod 18
rather than mechanical fasteners. Col. 1, ll. 6-10, 45-49; col. 3, ll. 3-14; figs.
1-4. It appears the need for a rackable barrier that can be assembled in-shop
and includes fasteners that will not weather (between the upright members
and the tabs) was satisfied before invention by Appellants. See Newell Co.
v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988).
As such, Appellants failed to provide objective evidence sufficient to
establish the existence of a long-felt need or to establish that Appellants’
claimed invention satisfied any such long-felt need.
Regarding commercial success, Appellants present evidence
purporting to show commercial success of the Montage ATF (all terrain
fence) line of products, an ornamental fence product offered by Ameristar
Fence Products, Inc. Meek Decl., paras. 1, 4. The line of Montage ATF
products are rackable barriers with pickets attached to the rotatable tabs of
the rails by resistance welds. Meek Decl., para. 4.
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Appellants’ evidence regarding the Montage ATF line of products
with rotatable tabs is not commensurate in scope with claim 62, which does
not require that the tabs be tiltable or rotatable.15 For this reason, Appellants
have not established a sufficient nexus between the sales data and the
barrier’s features. See Joy Techs. Inc. v. Manbeck, 751 F. Supp. 225, 229
(D.D.C. 1990) (Features responsible for commercial success were recited
only in allowed dependent claims, and thus evidence of commercial success
was not commensurate in scope with the broad claims at issue.).
Appellants’ evidence of a nexus between the claimed features and
commercial success is insufficient in another aspect. Ameristar’s Montage
ATF includes a twenty year warranty while a comparable Ameristar product
(Aegis) includes a 10 year warranty. Meek Decl., paras. 10, 17. Thus, it is
unclear if sales of Montage ATF products are based on the claimed features
or on the warranty. Mr. Meek states that sales of an Ameristar aluminum
fence product having a lifetime warranty dropped during the period that
sales of Montage ATF products increased, and from this, Mr. Meek
concludes that the success of Montage ATF products is not due to the
warranty. Meek Decl., para. 17. Just as an inventor’s opinion as to the
purchaser’s reason for buying the product is insufficient to demonstrate a
nexus between sales and the claimed invention, Mr. Meek’s conclusion that
sales of Montage ATF products are not due to the warranty does not
demonstrate a nexus between the sales and the features of the claimed
invention. See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). Our

15 Claim 63, which depends from claim 62, adds that the tabs are tiltable.
See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir.
2004) (“the presence of a dependent claim that adds a particular limitation
gives rise to a presumption that the limitation in question is not present in
the independent claim”).
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inquiry is whether the sales of Montage ATF are attributable to claimed
features, and Appellants’ comparison to sales of another Ameristar product
sheds little if any light on that inquiry.
Even if we were to find a sufficient nexus between this evidence of
commercial success and the claimed invention, Appellants provide evidence
regarding gross sales of Ameristar’s Montage ATF, but do not provide
evidence of market share of Montage ATF products.16 Meek Decl., paras. 4,
5, 8. Gross sales figures do not show commercial success absent evidence of
market share. Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015,
1026-27 (Fed. Cir. 1985).
As such, Appellants failed to set forth sufficient evidence of
commercial success.
Appellants’ evidence of nonobviousness is weak at best. Having
considered all the evidence presented by Appellants against obviousness and
weighing all the evidence anew, it is our conclusion that the evidence for
obviousness outweighs the evidence against obviousness. See In re Fenton,
451 F.2d 640, 643 (CCPA 1971) (the court balanced the Office’s case
against the strength of appellant’s objective evidence of non-obviousness.).
As such, we sustain the rejection of claim 62 over O’Sullivan,
Hawkins and Hebda, and claims 63, 66, 71-73, 82-84, 134, 152-155, 177,
180, 190 and 195 fall with claim 62.

16 Appellants provide evidence that Ameristar’s market share of ornamental
fencing (including rackable and non-rackable products) rose from 6.3% to
10.5% from the introduction of the Montage ATF line in April 2005 until
May of 2007. Meek Declaration at paras. 1, 8. However, this does not
permit calculation of the market share of Montage ATF products as would
be relevant to our inquiry.
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Claims 183, 186, and 187
Claims 183, 186, and 187 include the limitation that the upright
members define the uppermost extent of the barrier panel. Consequently,
the rejection of these claims suffers from the same shortcoming as that of the
fourth rejection, supra. Contra Ans. 27. As such, we cannot sustain the
rejection of claims 183, 186, and 187 over O’Sullivan, Hawkins and Hebda.

10. Claims 67-69, 78, 80, 138, and 145 over O’Sullivan, Hawkins, Hebda,
and Wick
Appellants argue claims 67-69 and 80 as a group, and we select claim
67 as representative. App. Br. 40-42; see 37 C.F.R. § 41.37(c)(1)(vii)
(2011). Appellants argue that the proposed modification “reeks of hindsight
reconstruction.” App. Br. 41. This is unpersuasive because Appellants do
not address the Examiner’ rationale. See Ans. 27-28.
Appellants then repeat the arguments regarding O’Sullivan’s tubular
structure and commercial success used against claim 62 in the ninth
rejection. For the reasons explained supra those arguments are also
unconvincing here. We sustain the rejection of claims 67-69 and 80.
Claims 78, 13817, and 145 include the limitation that the tab include a
weldable projection. Regarding these claims, Appellants additionally argue
that an artisan would have no reason to form a projection on O’Sullivan’s
tab because O’Sullivan’s tubular rails are unsuitable for assembly with
welding equipment. App. Br. 42. This argument is unpersuasive because
the proposed combination relies on Hebda’s inverted U-shaped rail (upper
rail 12), not O’Sullivan’s rail. Ans. 27 (relying upon the rejection as

17 Appellants reference to claim 136 is a typographical error and is intended
to refer to claim 138. App. Br. 42.
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articulated in the ninth rejection). We sustain the rejection of claims 78 and
145.

11. Claim 167 over O'Sullivan, Hawkins, and Gibbs
We cannot sustain the rejection of claim 167 because it relies upon the
same erroneous combination of O’Sullivan and Hawkins18 used for the
seventh rejection. See Ans. 22-23.

12. Claim 173 over O’Sullivan, Hawkins, Wick, and Gibbs
We cannot sustain the rejection of claim 173 because it relies upon the
same erroneous combination of O’Sullivan, Hawkins and Wick used for the
eighth rejection.19 Ans. 23.

13. Claim 198 as obvious over O’Sullivan and Hebda
Claim 198 depends from independent claim 196, and calls for a
barrier panel having a plurality of upright members “characterized by upper
ends that define the uppermost extent of the barrier panel.” We cannot
sustain the rejection of claim 198 because it is based on the same erroneous
finding regarding O’Sullivan used in the fourth rejection.20 Ans. 23-24, 42.

14. Claim 179 over O’Sullivan, Hawkins, Hebda, and Gibbs
Claim 179 depends from claim 177, which depends from claim 62.
Appellants rely upon the same arguments used against the rejection of claim
62 in the ninth rejection. App. Br. 46-47. For the reasons explained in the

18 The modification based on Gibbs does not correct this deficiency.
19 The modification based on Gibbs does not correct this deficiency.
20 The rejection does not propose to modify O’Sullivan’s barrier panel to
remove the uppermost rail (14).
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analysis of the ninth rejection, supra, those arguments are also unconvincing
here. As such, we sustain the rejection of claim 179.

DECISION
1. We reverse the Examiner’s decision to reject claims 188-190 and
193-195 as indefinite.
2. We reverse the Examiner’s decision to reject claims 1-5, 16, 19,
22, 23, 136, 165, 181, 184, 188, 193, and 194 as anticipated by Brown.
3. We affirm the Examiner’s decision to reject claims 193 and 194 as
anticipated by Hawkins.
4. We reverse the Examiner’s decision to reject claims 196 and 197
as anticipated by O’Sullivan.
5. We reverse the Examiner’s decision to reject claims 6-8, 10-13, 15,
36-43, 48, 49, 52, 133, 137, 140-143, 147-149, 164, 171, 182, 185 and 189
as obvious over Brown and Wick.
6. We reverse the Examiner’s decision to reject claim 167 as obvious
over Brown and Gibbs.
7. We reverse the Examiner’s decision to reject claims 1-5, 16, 19-23,
135, 136, 165, 181, 184, 188, 191, 193, and 194 as obvious over O’Sullivan
and Hawkins.
8. We reverse the Examiner’s decision to reject claims 6-8, 10-13, 15,
36-43, 48-52, 133, 137, 139-143, 146-149, 164, 171, 182, 185, 189, and 192
over O’Sullivan, Hawkins, and Wick.
9. We affirm the Examiner’s decision to reject claims 62, 63, 66, 71-
73, 82-84, 134, 152-155, 177, 180, 190 and 195 over O’Sullivan, Hawkins
and Hebda, and reverse the Examiner’s decision to reject claims 183, 186,
and 187 over O’Sullivan, Hawkins and Hebda.
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10. We affirm the Examiner’s decision to reject claims 67-69, 78, 80,
138 and 145 over O’Sullivan, Hawkins, Hebda, and Wick.
11. We reverse the Examiner’s decision to reject claim 167 over
O’Sullivan, Hawkins, and Gibbs.
12. We reverse the Examiner’s decision to reject claim 173 over
O’Sullivan, Hawkins, Wick, and Gibbs.
13. We reverse the Examiner’s decision to reject claim 198 over
O’Sullivan and Hebda.
14. We affirm the Examiner’s decision to reject claim 179 over
O’Sullivan, Hawkins, Hebda, and Gibbs.

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) (2011).

AFFIRMED-IN-PART

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