Ex Parte Koivunen

Patent Trial and Appeal Board

Aug 9, 2016

12100788 (P.T.A.B. Aug. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/100,788 04/10/2008 Kari Koivunen
27557 7590 08/11/2016
BLANK ROME LLP
1825 Eye Street NW
WASHINGTON, DC 20006-5403
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.
128574.0102 6910
EXAMINER
MACARTHUR, VICTOR L
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
08/11/2016 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):
Belay@blankrome.com
W ashingtonDocketing@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARI KOIVUNEN
Appeal2013-009529
Application 12/100,788
Technology Center 3600
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-3, 5-15, and 17-20 as unpatentable under 35 U.S.C.
§ 103(a) over Finnish Patent Application No. 20011883, filed Sept. 4, 2001,
(hereinafter "F-883") and European Patent Application No. EP 1288382 A2,
published Mar. 5, 2003, (hereinafter "EP-382"). 1 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant Kari Koivunen is listed as the sole inventor on both F-883 and
EP-382.
Appeal2013-009529
Application 12/100,788
THE INVENTION
Appellant's invention relates to joints for concrete pilings. Spec. i-f 2.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A joint for concrete pile sections, each section having
first and second ends, comprising:
a first end plate having a substantially planar surface for
connecting to the first end of the first concrete pile section,
compnsmg:
a plurality of spaced apart lock rods (5a) extending from
and substantially perpendicular to the first end plate, wherein
each of the plurality of spaced apart lock rods has a crosswise
through-hole (6a);
a plurality of spaced apart lock sockets (7a) extending
from and substantially perpendicular to the first end plate,
wherein each of the plurality of lock sockets has a cavity
forming sleeve with a peripheral notch portion cut into at least
part of the end of the sleeve and has axially-aligned crosswise
through-holes (23) on opposite walls of the sleeve, wherein the
peripheral notch portion attaches to the first end plate; and
an axially-extending pin-receiving member (8a, 9a)
interconnected between the crosswise through-holes (23) of at
least two of the plurality of lock sockets, wherein the member
extends substantially parallel to the plane of and across a width
of the first end plate;
a second end plate for connecting to a second end of a
second concrete pile section, wherein the second end plate is of
the same construction as the first end plate;
wherein when each of the plurality of spaced apart lock rods
(5a) of the first end plate are fully inserted into respective ones
of the plurality of spaced apart lock sockets (7b) on the second
end plate, the axis of the pin-receiving member (8b, 9b) of the
second end plate is eccentrically offset but substantially parallel
with the axis of the crosswise through holes (6a) of the lock
rods of the first end plate such that when a locking pin (lOa) is
inserted into the pin-receiving member of the first and second
end plates, it is deflected and causes the first and second
concrete pile sections to be pre-tensioned.
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Appeal2013-009529
Application 12/100,788
OPil'.rION
Appellant argues claims 1-3, 5-15, and 17-20 as a group. Appeal
Br. 13-15. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
The Examiner finds that F-883 discloses all of the elements of claim 1
except that it lacks a peripheral notch. Final Action 4. The Examiner relies
on EP-382 as disclosing a notch in a concrete piling joint. Id. (citing EP-
382, Figs. 2--4, and 8); see also Ans. 3. 2 The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to modify F-883 to have a notched connection. Id.
According to the Examiner, a person of ordinary skill in the art would have
done this to increase the strength and securement of the connection. Id. The
Examiner adds that using a notch was a known design choice and that a
person of ordinary skill in the art would have recognized that a notched
connection between a socket and plate is stronger and more secure than a
non-notched connection since the notched connection provides direct contact
support on two perpendicular planes whereas a non-notched connection
provides contact on a single plane.
Appellant traverses the Examiner's rejection by arguing that F-883
does not disclose the peripheral notch element, a point already conceded by
the Examiner. Appeal Br. 13. In response, the Examiner points out that the
rejection is based on a combination of F-883 and EP-382 and that EP-382
2 In the Final Rejection, the Examiner stated that EP-382, Fig. 2, showed a
notch where 40 receives 42b. Final Action 4. In the Answer, the Examiner
stated that the notch is where 40 receives 21b. Ans. 3. We view the
Examiner's statement in the Answer as correcting an inadvertent
typographical error in the Final Rejection.
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Appeal2013-009529
Application 12/100,788
teaches a notched connection. Ans. 5. Otherwise, the Examiner finds, and
Appellant does not dispute, that F-883 suggests peripheral notches on male
connectors where element 5b receives element 3b in Figure 2. Id. at 2.
Appellant's argument based on the alleged lack of a peripheral notch
in F-883 is not persuasive. It is well settled that non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413,
425 (CCPA 1981). Appellant does not dispute that EP-382 exhibits a
peripheral notch where cylinder 40 receives joining element 21 b, and does
not address the Examiner's combination applying this teaching.
Next, Appellant lists a number of alleged differences between the
claimed invention and EP-382, including EP-382's annular spring locking
ring inside of a cavity with a corresponding groove that receives the locking
ring. Appeal Br. 13. Appellant relies on such differences as showing that
the feature relied on by the Examiner as a "peripheral notch" serves a
different purpose in EP-382 than the peripheral notch of claim 1. Id. This
argument is not persuasive as claim 1 does not require the peripheral notch
to perform any particular function and, thus, Appellant's argument is not
commensurate with the scope of claim 1. Moreover, in any event, it is not
necessary for the prior art to serve the same purpose as that disclosed in
Appellant's Specification in order to support the conclusion that the claimed
subject matter would have been obvious. See In re Linter, 458 F.2d 1013,
1016 (CCP A 1972) ("A reference may be read for all that it teaches,
including uses beyond its primary purpose."). In re Mouttet, 686 F.3d 1322,
1331 (Fed. Cir. 2012) (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
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Appeal2013-009529
Application 12/100,788
418--421 (2007)). The Examiner's finding that EP-382 discloses a
peripheral notch within the meaning of claim 1 is supported by a
preponderance of the evidence.
Appellant argues that a person of ordinary skill in the art would not
have relied on EP-382 to modify the joint disclosed in F-883. Appeal
Br. 14. Appellant contends that F-883 does not call for additional strength
or securement beyond what is already disclosed and, therefore, one of
ordinary skill would not have been motivated to add additional features.
Appellant's arguments concerning motivation to combine are not persuasive.
An implicit motivation to combine exists when the improvement is
technology-independent and the combination of references results in a
product or process that is more desirable, for example because it is stronger,
cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.
Dystar Textilfarben GmBH & Co. v. CH Patrick Co., 464 F.3d 1356, 1368
(Fed. Cir. 2006).
Because the desire to enhance commercial opportunities by
improving a product or process is universal-and even
common-sensical-we have held that there exists in these
situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves.
Id. Here, the fact that the Examiner's proposed combination would tend to
make the product stronger is sufficient to support the Examiner's rejection.
Finally, Appellant argues that the Examiner's rationale for combining
the references reflects hindsight reasoning. Appeal Br. 14. This argument
lacks merit. The Examiner articulated a sufficient non-hindsight reason to
combine the references. See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir.
2016) (Appellant's hindsight argument of no moment where the Examiner
provides a sufficient, non-hindsight reason to combine the references.).
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Appeal2013-009529
Application 12/100,788
In the Reply Brief, Appellant raises, for the first time, an argument
that the Examiner should essentially be estopped from contending that the
claims are obvious on account of statements that the Examiner made in
imposing a restriction requirement on certain species disclosed in
Appellant's application during prosecution. See Reply Br. 2-3. This
argument was not raised in the Appeal Brief and, therefore, the Examiner
has not been provided with an opportunity to respond to it. Appellant's
estoppel argument is untimely and will not be considered. 37 C.F.R.
§ 41.41(b )(2) (argument raised for the first time in reply will not be
considered). We sustain the Examiner's unpatentability rejection of claims
1-3, 5-15, and 17-20.
DECISION
The decision of the Examiner to reject claims 1-3, 5-15, and 17-20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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