Ex Parte King

Patent Trial and Appeal Board

Aug 21, 2018

14266905 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/266,905 05/01/2014
34082 7590 08/23/2018
ZARLEY LAW FIRM P.L.C.
CAPITAL SQUARE
400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350
FIRST NAMED INVENTOR
Jesse King
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.
P07663US1 7625
EXAMINER
OQUENDO, CARIB A
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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
following e-mail address(es):
kconrad@zarleylaw.com
crasmussen@zarleylaw.com
emarty@zarleylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JESSE KING 1
Appeal2017-009997
Application 14/266,905
Technology Center 3600
Before STEVEN D.A. McCARTHY, JEREMY M. PLENZLER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant, Jesse King, appeals under 35 U.S.C. § 134 from the
Examiner's decision to reject claims 1-5, 7, 8, and 10. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appeal Brief does not include a statement of the real party in interest.
We understand the real party in interest to be the inventor, Jesse King. See
37 C.F.R. § 41.37(c)(l)(i).
Appeal2017-009997
Application 14/266,905
CLAIMED SUBJECT MATTER
The claims are directed to a floating dock system. Spec. 1:9-10.
Claim 1, reproduced below with emphasis added, is illustrative of the
claimed subject matter:
1. A dock system, comprising:
a frame made of tubing;
a conduit welded to and extending down a length of the
frame;
a plurality of planks attached transversely across the
frame; and
a plurality of floats secured to the frame and are partially
submerged in a body of water.
Appeal Br. 6 (Claims App.).
PRIOR ART RELIED UPON BY THE EXAMINER
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Holmgren
Nelson
Bigler
US 5,655,850 Aug. 12, 1997
US 7,509,916 Bl Mar. 31, 2009
US 2009/0283025 Al Nov. 19, 2009
Interlake Lifts and Docks - Boat Lifts
(http://www.interlakeliftsanddocks.com/page 13. php ( via Internet Archive
WayBackMachine Mar. 1, 2010) (last accessed Aug. 25, 2015, made of
record on Sept. 11, 2015)) ("Interlake").
REJECTIONS 2
(I) Claims 1 and 10 are rejected under 35 U.S.C. § 103 as
unpatentable over Holmgren and Bigler.
2 The Final Office Action includes a rejection of claim 9 under 35 U.S.C.
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Application 14/266,905
(II) Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over
Holmgren, Bigler, and Nelson.
(III) Claims 3-5, 7, and 8 are rejected under 35 U.S.C. § 103 as
unpatentable over Holmgren, Bigler, Nelson, and Interlake.
OPINION
Rejection (!); Claims 1 and 10
Appellant argues claims 1 and 10 as a group. Appeal Br. 2--4. We
select claim 1 as a representative claim, and claim 10 stands or falls with
claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). As such, our analysis focuses on the
subject matter of claim 1. Appellant's Summary of the Claimed Subject
Matter for claim 1 refers to Figure 3, which we reproduce below.
§ 112(b ). See Final Act. 2. However, claim 9 was cancelled in an
Amendment filed on November 8, 2016, which the Advisory Action, dated
December 2, 2016, indicates was entered. See Adv. Act. 2.
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Application 14/266,905
Appellant's Figure 3 depicts conduit 25 as part of a dock system 10 without
planks. Spec. 2:15-16, 31-32.
The Examiner finds Holmgren discloses many of the elements recited
in claim 1, but does not disclose a conduit welded to and extending down a
length of the frame. Final Act. 3. Nonetheless, the Examiner finds that
Bigler discloses conduit 20 located in a similar dock system (floating dock
10). Id. (citing Bigler ,r 29, 3 Figs. 1, 2). The Examiner determines that it
would have been obvious to a person of ordinary skill in the art to modify
the dock of Holmgren to include a conduit as taught by Bigler in order to
"provide a passage for electrical cables or the like." Id.
Regarding the requirement in claim 1 that the conduit be welded to the
frame, the Examiner finds that a person of ordinary skill in the art would
know "that connecting methods such as welding, clamps, bolts, and
equivalents are known means to fixedly connect ... [two] pieces together."
Id. at 3--4. The Examiner determines that it would have been obvious to
weld conduit to the frame of the dock taught by Holmgren "to reduce [any]
sound of the conduit moving and contacting other elements or to prevent
[the] service conduit from sliding, etc." Id. at 4.
Appellant contends, "the conduit 20 disclosed by Bigler is not a part
of the invention, but rather an example of equipment that may be passed
through the underfloor passage 19 of the invention during use, such as
service materials." Appeal Br. 2. Therefore, according to Appellant,
"Bigler fails to disclose a dock system comprising a conduit welded to and
extending down a length of the frame as required by ... [ claim 1]." Id.
3 As Bigler provides paragraph numbering rather than column and line
numbering, our citations to Bigler refer to paragraph numbers rather than
column and line numbers as set forth in the Final Office Action.
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Application 14/266,905
In response, the Examiner reiterates the findings of fact and rationale
set forth in the Final Office Action and uses the term "attached conduits" in
referring to conduits 20 of Bigler. Ans. 2 (citing Bigler ,r,r 29, 40, Figs. 1,
2).
In reply, Appellant asserts that the Examiner erred in finding that
Bigler discloses "attached conduits." Reply Br. 2.
Appellant's argument on this point is unavailing because, as Appellant
acknowledges, Bigler discloses conduit 20 disposed within passages 19. It is
this disclosure in Bigler that the Examiner relies upon in rejecting claim 1,
not whether this disclosure is considered by Bigler to be inventive.
Additionally, we are not apprised of Examiner error in relation to whether
conduits 20 in Bigler's dock are "attached." In this regard, Bigler states:
The decking floor members 16, as shown in FIG. 2, are
concrete tiles which have a flat top surface which may be casted
with rib formations, not known but obvious to a person skilled in
the art, to provide an anti-slipping surface and the bottom surface
is formed with transverse concave formations 70 to receive and
retain conduits 20 thereunder.
Bigler ,r 40 (bolding omitted, emphasis added). We reproduce Figure 2 of
Bigler below.
/ ()
Figure 2 of Bigler "is a transverse section view through the floating dock
structure showing concrete decking tiles supported between stringers and the
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Application 14/266,905
side rail members." Bigler ,r 15. Thus, Bigler retains4 conduits 20 in
passages 19, and, contrary to Appellant's argument (Reply Br. 2), Bigler's
use of passages 19 does not teach "the exact opposite" of conduits 20 being
"attached."
Appellant next argues that, as neither Holmgren nor Bigler discloses a
conduit welded to the frame of a dock, "the relevant facts could only have
been retrieved from Applicant's own disclosure on the basis of improper
hindsight." Appeal Br. 3.
The Examiner responds by noting that although Bigler does not teach
that conduits 20 are welded, Bigler teaches that other components in its dock
are welded. Ans. 3 ( citing Bigler ,r 3). Based on this disclosure, the
Examiner finds "by only looking at the disclosure of Bigler one skilled in the
art would have been motivated to use welding to attach two elements
together in a dock system." Id. at 3.
The Examiner has the better position on this point. In the Final Office
Action, the Examiner found that welding was a known substitute for
clamping two pieces together. See Final Act. 3--4. Appellant does not
contest this finding. See Appeal Br. 2--4. Figure 2 and paragraph 40 of
Bigler make clear that transverse concave formations 70 in decking floor
members 16 retain conduits 20 in passages 19. In light of the retention
structure disclosed in Bigler, the Examiner's determination that it would
have been obvious to weld the conduits 20 in the dock of Holmgren "to
reduce sound of the conduit moving and contacting other elements or to
4 One online definition of "retain" from Merriam-Webster's Online
Dictionary is "to hold secure or intact." Merriam-Webster.com
(http://www.merriam-webster.com/dictionary/retain) (last accessed Aug. 9,
2018).
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Appeal2017-009997
Application 14/266,905
prevent service conduit from sliding" (Final Act. 4) is supported by rational
underpinnings.
Appellant next argues that the Examiner's proposed combination of
Holmgren and Bigler renders the dock of Bigler unsatisfactory for its
intended use and changes its principle of operation. Appeal Br. 3--4; see
also Reply Br. 2 ("modifying Bigler with welded service conduits ...
renders the cited reference[] unsatisfactory .... Specifically, Bigler
indicates that one inventive feature is the presence of the underfloor
passages, which permit, not obstruct, the passage of incoming vessels'
service conduits and materials. See [0001 ]").
This argument is unavailing because the rejection of claim 1 modifies
the dock system of Holmgren to include the teaching in Bigler regarding
conduits, not the other way around. See Final Act. 3--4. Thus, whether
Bigler's dock would be rendered unsatisfactory for its intended use by some
hypothetical modification is not relevant to the Examiner's rejection of
claim 1.
We have considered all of Appellant's arguments, but the Examiner
has the better position. Accordingly, we sustain the rejection of claims 1 and
10 as unpatentable over Holmgren and Bigler.
Re} ections (II) and (III)
Appellant makes no additional arguments for the patentability of
dependent claims 2-5, 7, and 8. See Appeal Br. 5. Accordingly, these
claims fall with independent claim 1.
DECISION
The Examiner's decision to reject claims 1-5, 7, 8, and 10 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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