Ex Parte Hayhurst

Patent Trial and Appeal Board

Jun 15, 2016

12470882 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/470,882 0512212009
55740 7590
Gesmer Updegrove LLP
40 Broad Street
BOSTON, MA 02109
06/15/2016
FIRST NAMED INVENTOR
John Franklin Hayhurst
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.
HGF.9053 4751
EXAMINER
CHIN-SHUE, AL VIN CONSTANTINE
ART UNIT PAPER NUMBER
3634
MAILDATE DELIVERY MODE
06/15/2016 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 FRANKLIN HAYHURST
Appeal2014-007063
Application 12/470,882
Technology Center 3600
Before JOHN C. KERINS, BRANDON J. WARNER, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Franklin Hayhurst (Appellant1) appeals under 35 U.S.C. § 134
from the Examiner's October 7, 2013 Final Rejection of claims 20-24.2
App. Br. 2. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellant, the real party in interest is Donut Safety Systems
Ltd. App. Br. 2.
2 Claims 1-19 are canceled. Id. at 13.
Appeal2014-007063
Application 12/470,882
SUMMARY OF INVENTION
Appellant's invention is directed to "a device to enable personnel or
other loads to descend from an elevated position at a controlled and variable
speed." Spec. 3 1, 11. 15-16. Claim 20, reproduced below from pages 13-14
(Claims Appendix) of the Appeal Brief, is illustrative of the claimed subject
matter:
20. A descending device to enable personnel or other loads to
descend from an elevated position at a controlled and variable
speed, comprising:
a tape having an upper end provided with means of
attachment of said tape to a fixed point at said elevated
position, said tape being of sufficient length to permit a
required descent distance;
a container wherein said tape beyond said upper end is
stored, said tape within said container being folded and not
being wound upon a reel or axle, said container having a
restricted opening in the form of an elongated feed slot for
controlled pay-out of said tape there through and through which
the tape exits the container;
a restraining member to which the load may be attached,
said restraining member having therein a series of parallel
elongate slots through which said tape, between said upper end
and said container, passes in alternate directions, one or more
edges of each said slot defining a contact surface providing
frictional engagement for said tape as said restraining member
with said load attached descends along said tape; and
a separate retarding device positioned on said tape
enclosed within said container, said retarding device being of
substantially rigid material, being larger than said restricted
opening of said container and being provided with a pair of
substantially parallel elongate slots and a bridge between said
slots over which said tape passes in its passage between said
3 As used herein, "Spec." refers to the Substitute Specification filed on July
29, 2009.
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Application 12/470,882
slots and prior to reaching the restricted opening, at least one of
said pair of slots of said retarding device being of lesser width
than said tape, said separate retarding device being fixed to the
inside of the container parallel to said elongated tape feed slot
of said container, thereby to provide that the restraining
member, the separate retarding device and said restricted
opening together provides sufficient retardation of the
controlled pay-out of the tape ensuring that escaping personnel
that are unconscious and thus unable to control the descent are
safeguarded, minimizing the possibility of further injury by
impacting upon the ground at an uncontrolled rate.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Constantinis US 5, 107, 9 5 6
Hwang US 7,963,370 B2
Dale CA 2,115,187 Al
REJECTIONS
Apr. 28, 1992
June 21, 2001
Aug. 9, 1995
I. Claims 20-24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dale, Constantinis, and Hwang.
II. Claims 20-24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Constantinis and Hwang.
III. Claims 20-24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Constantinis, Dale, and Hwang.
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Application 12/470,882
ANALYSIS
The Hayhurst Declaration
Appellant relies on the Declaration under 37 C.F.R. § 1.132 of John
Hayhurst that was submitted on Feb. 3, 2012 (the "Declaration") throughout
the Appeal Brief. As an example, Appellant argues that "[t]he Hayhurst
Declaration details the significance of the differences of the use of cables
and ropes as opposed to tapes, and explains the complexities of seeking to
provide a device that safely provides a controlled descent for unconscious
personnel." App. Br. 7 (citing Declaration i-fi-f l-7, 13).
In general, the Declaration summarizes and makes assertions about
the references cited in the Final Office Action. For example, the Declaration
states that "[t]he device of the Constantinis et al. patent uses a restraining
member 12 that provides a rate of descent that is suitable for certain
applications such as rapid descents (e.g., 19 feet/sec.) from an oil rig
platform over water" (Declaration i14), and "[s]uch devices of Hwang
provide motivation to design personal descending devices that require the
user to reduce the rate of descent" (id. i-f 12). The Declaration also makes
statements regarding Appellant's invention. See, e.g., id. i-fi-15-7. We have
carefully considered this Declaration, but do not find it persuasive of
nonobviousness.
We initially note that the Declaration is by the Inventor/ Appellant
and, as such, is less persuasive than that of a disinterested person. See In re
McKenna, 203 F.2d 717, 720 (CCPA 1953) ("an affidavit by an applicant or
co-applicant as to the advantages of his invention is less persuasive than one
made by a disinterested person"). Moreover, we note that the Declaration
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Application 12/470,882
presents only opinion without supporting factual evidence. For example,
although the Declaration purports that "conventional wisdom prior to the
invention [recognized] that the use of a restraining/retarding unit located out
of sight, inside the container, may risk of jamming of the line, especially
when the line is in the form of a tape" (Declaration i-f 13), no factual support
for this statement is provided. Thus, we accord the Declaration little value.
See In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992) (finding declarations
offering only opinion evidence and lacking factual support to have little
value); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,
294 (Fed. Cir. 1985) ("Lack of factual support for expert opinion going to
factual determinations, however, may render the testimony of little probative
value in a validity determination."); In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1368 (Fed. Cir. 2004) ("the Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations") (citing Velander v.
Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)).
Rejection I-Obviousness Based on Dale, Constantinis, and Hwang
The Examiner finds that Dale discloses the invention substantially as
claimed in independent claim 20, including, inter alia, a line such as a tape
and a retarding device (fabric washer 32)4 located with a container, but does
not disclose that
the retarding device is provided with a pair of apertures though
[sic] both of which the line passes, from one to the other, and a
bridge between said pair of apertures, over which the line
4 Parentheticals refer to the terminology of the cited references.
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Application 12/470,882
passes in its passage between the apertures, the tape being
stored in a container in a folded manner, and the retarding
device being fixed to the inside of the container.
Final Act. 2-3. To cure these deficiencies, the Examiner turns to the
teachings in Constantinis and Hwang. Id. at 3. The Examiner finds that
Constantinis teaches the claimed retarding device (restraining member 12)
and storage of a tape within a container in a folded manner, and that Hwang
"teaches the provision of a retarding member affixed within a container with
the slots of the retarding member being parallel to his feed slot." Id. It
would have been obvious to a skilled artisan, according to the Examiner, to:
1) use the Constantinis retarding device in place of the Dale fabric washer
and to provide the Dale rope in the form of a tape folded within a container
because it would merely be "the substituted use of one known element for
another, using known methods with no change in their respective functions";
and 2) "affix the retarder device to the container with the slots being parallel
to the feed slot, as taught by Hwang, to enable fixed predetermined location
of the retarder." Id. at 4.
Appellant first argues that although Dale discloses a "fabric washer
that is friction fitted around the rope (1) within the case (21 )[,] [i]t is not
stated, however, how such a fabric washer might provide retardation; the
Dale reference discloses only that the fabric washer retains friction in case
the slot wears." App. Br. 6. Appellant also contends that:
Although it was known to use ropes or cables with restraining
means within an enclosure (Hayhurst Declaration, i-f7 - i-f 11 ),
this provided no motivation for using a tape with a retarding
device enclosed within a container due to the safety concerns
regarding jamming and pay-out (Hayhurst Declaration, i-f9 -
i-f 13).
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Application 12/470,882
Id. at 7. We find these arguments unpersuasive because Appellant
previously recognized that Dale discloses the use of a tape with a retarding
device enclosed within a container:
Canadian Patent No. 2,115,187 [(Dale)] also discloses a
descending device to enable personnel or other loads to descend
from an elevated position at a controlled speed, comprising a
restraining member to which the load may be attached and
having therein a series of apertures through which passes in
alternate directions a line such as a tape or rope, one or more
edges of each aperture defining a contact surface providing
frictional engagement for the line as the load descends, means
for attachment of the line to a fixed point at said elevated
position, and a container for a store of the line sufficient to
permit the required descent. This device may have a retarding
device in the form of a fabric washer positioned on the line at a
predetermined location within the container to retard the
passage of the line through the apertures of the restraining
member.
Spec. 2, 11. 10-19 (emphasis added). Appellant's arguments in contradiction
to the admissions in the Specification are not convincing. Furthermore, as
noted by the Examiner-and Appellant-Dale discloses placement of a
fabric washer around the line in his container "to retain friction in case the
slot 23 wears," so Dale explicitly discloses using the fabric washer as a
separate retarding device within the container. See Dale 5, 1. 35---6, 1. 3; Ans.
15; App. Br. 6. Thus, Dale's fabric washer 32 serves as a back-up to slot 23,
which exerts friction against the rope exiting case 21. See Dale 5, 11. 12-17.
Appellant next argues that Constantinis discloses "no retardation
device disclosed within the container (20)" and "provides no motivation for
a system that provides sufficient retardation of the controlled pay-out of a
tape to ensure that unconscious personnel that are unable to control their
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Application 12/470,882
descent are safeguarded, minimizing the possibility of further injury by
impacting upon the ground at an uncontrolled rate." App. Br. 6. This
argument is unconvincing because the Examiner did not rely on Constantinis
to provide such motivation. See Ans. 16. Moreover, as discussed below,
Constantinis does provide such motivation.
Finally, Appellant argues that "[ n ]one of the cited references provides
a system that ensures that unconscious personnel are safeguarded" (App. Br.
7) and "[p ]roviding the combination of retarding elements as claimed was in
no way obvious again given the significant concerns of a tape becoming
jammed within an enclosure" (id. at 8). We find this argument to be
unpersuasive, as the Examiner set forth such motivation in the Final Office
Action. See Final Act. 3--4. Furthermore, Constantinis discloses "a
descending device to enable personnel or other loads to decend [sic] from an
elevated position at a controlled and variable speed" (Constantinis col. 1, 11.
29-31 (emphasis added)) and that "the user may ... simply allow [the tape]
to payout at the controlled rate determined by the restricted opening 40 in
the bag" (id. at col. 3, 11. 50-54 (emphasis added)). Thus, Constantinis fairly
discloses controlled descent that does not require user intervention. In other
words, Constantinis discloses a descending device that ensures unconscious
personnel are safeguarded during descent.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claim 20 as being obvious over Dale, Constantinis,
and Hwang. Appellant does not make any other substantive argument
regarding the rejection of claims 21-24, each of which depends directly
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Application 12/470,882
from claim 20. See App. Br. 12. Therefore, we likewise sustain the
rejection of claims 21-24.
Rejection 11---0bviousness Based on Constantinis and Hwang
The Examiner finds that Constantinis discloses the invention
substantially as claimed in independent claim 20, except for "a retarding
member in the container." Final Act. 5---6. To cure this deficiency, the
Examiner relies on Hwang to teach "the provision of a retarding member
affixed within a container with the slots of the retarding member being
parallel to his feed slot to retard passage of a line from within a container."
Id. at 6. The Examiner concludes that a skilled artisan "could have
combined the elements as claimed, or substituted one known element for
another, using known methods with no change in their respective functions,"
and that it would have been obvious to such an artisan to: 1) affix a
retarding device within the Constantinis container "to fn.1strate passage of
the tape therethrough" (id.) because "[ s ]uch a combination would have
yielded predictable results to one of ordinary skill in the art at the time the
invention was made, since the elements perform as expected and thus the
results would be expected" (id.); and 2) "modify the slots to be of a width
less than that of the tape, as is conventional, to frustrate passage of the tape
therethrough" (id. at 7).
Appellant first argues that Constantinis "provides no motivation for a
system that provides sufficient retardation of the controlled pay-out of a tape
to ensure that unconscious personnel that are unable to control their descent
are safeguarded, minimizing the possibility of further injury by impacting
upon the ground at an uncontrolled rate." App. Br. 8. This argument is
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Application 12/470,882
unconvincing because, as discussed above, Constantinis does disclose such
motivation.
Appellant further argues that because it "is directed to a device that
employs a cable," Hwang
would not have caused one skilled in the art to have chosen
such elements of Hwang to include in a system of Constantinis
et al. since the use of a cable already has a significantly reduced
chance of jamming, and its applicability for use with a tape is
not apparent.
Id. at 8-9 (citing Declaration i-fi-1 8, 9). We are not persuaded by this
argument. Hwang's friction-inducing structure 33 is not provided to prevent
jamming; rather, such structure "generates sufficient friction to safely lower
a person from any altitude in a structure 15 (FIG. 5) to the ground 17."
Hwang col. 3, 11. 50-51. To the extent that Appellant might be intimating
that use of Hwang's friction-inducing structure with a tape, rather than a
cable, would result in a jam, we find such unsupported assertions
unconvincing. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(holding that attorney arguments or conclusory statements are insufficient to
rebut a prima facie case of obviousness).
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claim 20 as being obvious over Constantinis and
Hwang. Appellant does not make any other substantive argument regarding
the rejection of claims 21-24, each of which depends directly from claim 20.
See App. Br. 12. Therefore, we likewise sustain the rejection of claims
21-24.
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Application 12/470,882
Rejection III-Obviousness Based on Constantinis, Dale, and Hwang
Claims 20--22
The Examiner finds that Constantinis discloses the invention
substantially as claimed in independent claim 20, except for "a retarding
device in the container." Final Act. 7-8. To cure this deficiency, the
Examiner turns to the teachings of Dale and Hwang. Id. at 8. The Examiner
finds that Dale teaches "the placement of a retarder in a container," and that
Hwang "teaches the provision of a retarding [device] affixed within a
container with the slots being parallel to his feed slot to retard passage of a
line from within a container." Id. It would have been obvious to a skilled
artisan, according to the Examiner, to: 1) affix a slotted retarder in the
Constantinis container because "[ s ]uch a combination would have yielded
predictable results to one of ordinary skill in the art at the time the invention
was made, since the elements perform as expected and thus the results would
be expected"; and 2) "modify the slots to be of a width less than that of the
tape, as is conventional, to frustrate passage of the tape therethrough." Id. at
8-9.
Appellant argues that Dale "specifically discloses employing a user
actuated braking mechanism. The Dale reference discloses that users may
control their decent [sic] along the rope to ground by employing a twisting
motion." App. Br. 10. We find this argument unpersuasive. While
Appellant provides no citation within Dale that "specifically discloses" such
a user-actuated braking mechanism, it appears that Appellant relies on the
following language, which includes the only mention of "twist":
In use, the reel of rope is thrown out the window, the
rope unwinding to the ground. The person places his weight on
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Application 12/470,882
or through the sling, and using the handle to either suspend at
least part of his weight, and/or in a twisting motion, controls his
descent along the rope to the ground.
Dale 1, 11. 25-30. Appellant's reliance on this language is misplaced,
however, because this portion of Dale is addressing a shortcoming in the
prior art, not his invention. Furthermore, Dale's brake is described as "a
block of material such as aluminum, hardwood or the like containing a
plurality of holes 7. The rope passes sinuously through the holes which
provide friction against the sides thereof." Id. at 3, 1. 35--4, 1. 3. Thus,
Dale's brake 5 appears to function without user intervention, and Appellant
does not persuasively indicate otherwise.
Appellant also argues that Dale "provides no motivation to modify the
system of Constantinis et al. to provide a system in which escaping
personnel that are unconscious and thus unable to control their descent are
safeguarded." App. Br. 10. This argument is unconvincing because the
Examiner did not rely on Dale to provide such motivation. See Ans. 23.
Next, Appellant argues that:
No combination of the Dale, Hwang and Constantinis
et al. references provides motivation for a descending device
that includes features that provide sufficient retardation of the
controlled pay-out of a tape that no separate user actuated brake
or braking action is required, providing that the descending
device is usable by personnel that are injured or are
unconscious. Each of the Dale, Hwang and Constantinis et al.
references discloses additionally employing a user actuated
brake.
App. Br. 11. This argument is unpersuasive for the reasons detailed above,
the fact that such devices may additionally include a user-actuated brake
notwithstanding.
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Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claim 20 as being obvious over Constantinis, Dale,
and Hwang. Appellant does not make any other substantive argument
regarding the rejection of claims 21 and 22, each of which depends directly
from claim 20. See App. Br. 12. Therefore, we likewise sustain the
rejection of claims 21 and 22.
Claims 23 and 24
Claim 23 depends directly from claim 20 and further requires that
"said container includes and is closed by a flexible flap and said retarding
device is fixed to said flexible flap." App. Br. 14. Claim 24 depends
directly from claim 20 and further requires that "said container includes and
is closed by two flexible flaps, one of which overlaps the other when said
container is closed, and wherein said retarding device is fixed to said flexible
Cl~-" T,l ~<- 1 ~
llilJJ. 1U. dl 1.J.
Appellant argues that "[ n Jo combination of the Dale, Constantinis et
al. and Hwang references discloses providing a separate retarding device
within a container that is fixed to a flexible flap that encloses the container."
App. Br. 11; see also id.at 12. We find this argument unpersuasive because,
as noted by the Examiner, Constantinis discloses such slotted flexible flaps
and Hwang teaches placement of a retarding device adjacent to the container
opening. See Ans. 25.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claims 23 and 24 as being obvious over Constantinis, Dale, and
Hwang.
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DECISION
The Examiner's decision to reject claims 20-24 is 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)(l )(iv).
AFFIRMED
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