11309509 (B.P.A.I. Mar. 1, 2012)

Ex Parte Harrison

Board of Patent Appeals and InterferencesMar 1, 2012

11309509 (B.P.A.I. Mar. 1, 2012)

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. 11/309,509 08/15/2006 Ronald Harrison 7314-06-06 4508 21878 7590 03/01/2012 K&L Gates LLP P.O. Box 33144 CHARLOTTE, NC 28233 EXAMINER ADDIE, RAYMOND W ART UNIT PAPER NUMBER 3671 MAIL DATE DELIVERY MODE 03/01/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte RONALD HARRISON ____________________ Appeal 2010-007119 Application 11/309,509 Technology Center 3600 ____________________ Before: CHARLES N. GREENHUT, MICHAEL C. ASTORINO, and JAMES P. CALVE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007119 Application 11/309,509 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 6. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to three ply bolted temporary road mats and apparatus for manufacturing same. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A bolted three ply temporary road mat comprising: a bottom layer of elongated spaced-apart timbers aligned in parallel equally spaced rows in a first direction; a middle layer of elongated spaced-apart timbers aligned in parallel equally spaced rows on said bottom layer extending in a second direction substantially perpendicular to said first direction; a top layer of elongated spaced-apart timbers aligned in parallel equally spaced rows on said middle layer and vertically aligned in registry with said timbers of said bottom layer, each of said timbers of each of said layers being of uniform width and thickness dimensions and being spaced apart by uniform spacings therebetween, each of said timbers of each of said layers vertically overlying one another in an array of intersections equally spaced apart in both said first and second directions; a plurality of through holes pre-formed in vertical alignment with one another through each of said timbers at each of said intersections; and bolts having threaded shanks extending through said through holes with heads engaging the upper surfaces of said timbers of said top layer; and nuts threaded on said shanks and compressively engaging the lower surfaces of said timbers of said bottom layer thereby forming a bolted composite assembly of timbers. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Waller Phillips US 4,600,336 US 5,032,037 Jul. 15, 1986 Jul. 16, 1991 Sanaee US 5,976,644 Nov. 2, 1999 Appeal 2010-007119 Application 11/309,509 3 REJECTIONS Claims 1, and 3-6 are rejected under 35 U.S.C. § 103(a) as unpatentable over Waller and Phillips. Ans. 3. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over Waller, Phillips and Sanaee. Ans. 5. OPINION Appellant argues claims 1 and 3-6 as a group. Br. 10-11. We select claim 1 as the representative claim, and claims 3-6 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2009). The Examiner correctly found that Waller discloses the basic structure claimed but with nails 17 instead of “bolts.” Ans. 3-4. The Examiner also correctly found that Phillips demonstrates that nails and bolts are art- recognized equivalents for the purpose of holding layered boards or planks together. Ans. 4 citing Phillips, col. 3, ll. 1-4. The fact that a bolt may offer certain advantages over a nail, as Appellant alleges (Br. 10-11), does not make a bolt any less equivalent as a fastener for the simple purpose of holding the boards together. Both fasteners perform the same function of holding the boards together, albeit in a slightly different way. The fact that a bolt may offer certain advantages does not demonstrate error in the Examiner’s conclusion that substituting a bolt for a nail would have been obvious. Rather, it would have provided additional motivation to make such a substitution. The Examiner correctly found, contrary to Appellant’s assertion, that by disclosing bolts, the use of pre-formed through holes for accommodating those bolts was implied by Phillips. See Ans. 8; Br. 11. Thus, we agree with the Examiner that the subject matter of claim 1 involves Appeal 2010-007119 Application 11/309,509 4 no more than the simple substitution of art-recognized equivalents in a known device and therefore would have been obvious to one having ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Regarding claim 2, Appellant contends “[a]s bamboo is a fragile and hollow wood, it is respectfully submitted that one of ordinary skill would find Sanaee to be completely irrelevant to the pending art field . . . for supporting multi-ton vehicles and equipments.” Br. 12. The Examiner cites Sanaee only to demonstrate that it was known in the art to co-extensively arrange layers, not for Sanaee’s particular material—bamboo. Ans. 5. Appellant’s contention is essentially an argument that Sanaee is non- analogous art. Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992) (citations omitted). Appellant’s contentions appear to stem from an incorrect reading of Sanaee. Sanaee is specifically directed to treating bamboo raw material by, in part, eliminating the hollow core, such that it could be used as a substitute for hardwood in flooring or any other article similarly made from wood. Sanaee, col. 1, ll. 1-45; figs. 1, 2, 6, 10. Even if not specifically designed for supporting vehicles, Sanaee’s article 10 is similar in structure to Appellant’s claimed invention because it is made of layered cores or boards 15, 20, 25. Figs. 1, 5, 7. Since that article can be used as flooring to provide support it is also similar in function and therefore within Appellant’s field of endeavor. Appeal 2010-007119 Application 11/309,509 5 See In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004). Additionally, by expressly suggesting replacing conventional layered wood structures Sanaee logically would have commended itself to an inventor’s attention in considering the problem of joining “multiple layers of heavy wood timbers in crisscrossing layers.” See Spec. [Para 3]. Thus, Sanaee is also reasonably pertinent to the particular problem with which the inventor is involved. See In re Clay, 966 F.2d at 659. For the foregoing reasons Sanaee is not non- analogous art. DECISION The Examiner’s rejections of claims 1-6 are affirmed. 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). AFFIRMED nlk