Ex Parte Montgomery et al

Patent Trial and Appeal Board

Sep 27, 2017

14128427 (P.T.A.B. Sep. 27, 2017)

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.
14/128,427 12/20/2013 Brian C. Montgomery H29504-HON10513P00401US 6115
93730 7590 09/29/2017
HONEYWELL/WOOD PHILLIPS
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
CHIN-SHUE, ALVIN CONSTANTINE
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
ksanderson@woodphillips.com
patentservices-us @ honey well, com
docketing @ woodphillips .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN C. MONTGOMERY,
JUSTIN SHANE PATTON, and PRESTON L. ANDERSON
Appeal 2017-001914
Application 14/128,427
Technology Center 3600
Before JOSEPH L. DIXON, LARRY J. HUME, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-001914
Application 14/128,427
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—13, 16, and 18—24. Claims 25—41 have been withdrawn, and
claims 14, 15, and 17 have been allowed. We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part.
THE INVENTION
The application is directed to “[a] post system for use in fall
protection [that] includes a connector to connect to a structure and a support
in operative connection with a lifeline to maintain the lifeline at a first height
above the structure” where “[w]hen a first threshold force is experienced on
the lifeline, the support is operable to lower the lifeline to a second height
which is lower than the first height.” (Abstract.) Claims 1 and 23,
reproduced below, exemplify the subject matter on appeal:
1. A post system for use in fall protection, comprising:
a connector to connect to a structure, a support in operative
connection with a lifeline to maintain the lifeline at a first height
above the structure until a first threshold force is experienced on
the lifeline, upon experiencing the threshold force the support
being operable to lower the lifeline to a second height which is
lower than the first height, the ratio of a change in effective
length of the lifeline resulting from the lowering of the lifeline to
a change in height resulting from lowering of the lifeline being
less than 1.
23. A post system for use in fall protection, comprising:
a connector to connect to a structure; a support in operative
connection with the lifeline to maintain the lifeline at a first
1 Appellants identify Honeywell International Inc. as the real party in
interest. (See App. Br. 1.)
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Application 14/128,427
height above the structure until a first threshold force is
experienced on the lifeline, upon experiencing the threshold
force the support being operable to lower the lifeline to a second
height which is lower than the first height, the support
comprising an angled moveable member to which the lifeline is
operatively connected and which extends at an angle that is not
parallel to the horizontal and vertical directions, the movable
member moving relative to the structure upon the lifeline
experiencing the first threshold force to lower the lifeline to the
second height.
THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Zambelli et al.
Copin
Lara
Parker et al.
US 6,412,230 B1
EP 1 500 755 Al
US 2008/0251320 Al
US 2009/0194366 Al
July 2, 2002
Jan. 26, 2005
Oct. 16, 2008
Aug. 6, 2009
THE REJECTIONS2
1. Claims 23 and 24 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Copin. (Final Act. 2—3; Ans. 6—7.)
2. Claims 1—8, 18, 19, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Copin. (See Final Act. 4—5; Ans. 7—8.)
3. Claims 1—8 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lara. (Final Act. 5—6; Ans. 9.)
2 Rejections of claims 1—8, 18, 19, 21, and 22 as anticipated by Copin and of
claims 1—8, 18, 23, and 24 as anticipated by Lara have been withdrawn.
(Ans. 4.)
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Application 14/128,427
4. Claims 9—11 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lara and Parker. (Final Act. 6—7; Ans. 10.)
5. Claims 9—11 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Copin and Parker. (Final Act. 7—8; Ans. 11.)
6. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Copin, Parker, and Zambelli. (Final Act. 8; Ans. 11—12.)
ANALYSIS
Anticipation of Claims 23 and 24 by Copin
Claim 23 is directed to a fall protection system that includes “a
support... to maintain the lifeline at a first height. . . until a first threshold
force is experienced [and] upon experiencing the threshold force ... to
lower the lifeline to a second height. . . lower than the first height,” where
“the support compris[es] an angled moveable member to which the lifeline is
operatively connected and which extends at an angle that is not parallel to
the horizontal and vertical directions.” Appellants identity the angled
member as, for example, item 1620 in their Figure 16B, circled below:
1600
510
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1634
1650 jt#******.
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Figure 16B
Figure 16B is a side view of a support and energy absorber system.
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Appeal 2017-001914
Application 14/128,427
The Examiner finds Copin to teach the claimed angled member, in
particular in support 13, shown in Figures 3 and 4:
Copin’s Figures 3 and 4
Appellants assert that the “Examiner’s reliance on Figs. 3 and 4 is in
error” because those figures “show the structure of Copin after the support in
Copin has been displaced by the threshold force, whereas it is clear from the
claim language and from the disclosure that the ‘angle movable member’ is
structure that exists prior to the threshold force being applied to the post
system.” (Reply Br. 3,3 emphasis omitted.)
Although we agree that the Specification does describe and show the
angled moveable member as existing before actuation, and that Copin’s
Figures 3 and 4 show the state after actuation, the temporal aspect argued by
3 Appellants also ask that “[t]o the extent that the Board seeks to allow this
new argument by the Examiner, it is respectfully requested that it be treated
as new grounds.” (App. Br. 3.) It is unclear what Appellants mean by
“treating” the rejection as a new ground. In any event, we note that “[a]ny
request to seek review of the primary examiner’s failure to designate a
rejection as a new ground of rejection in an examiner’s answer must be by
way of a petition to the Director . . . filed within two months from the entry
of the examiner’s answer and before the filing of any reply brief.” 37 C.F.R.
41.40(a). Here, two months have passed and a reply brief has been filed.
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Application 14/128,427
Appellants is not a feature of claim 23. Although Appellants assert that it “is
clear from the claim language and from the disclosure” that the angled
member “is a structure that exists prior to the threshold force being applied
to the post system” (Reply Br. 3), they do not identify any particular claim
language that supports their position. Because we are unpersuaded that the
claims are so limited, we sustain the Section 102 rejection of claim 23, as
well as the same rejection of claim 24, which is not separately argued.
Obviousness of Claims 1—8,18,19, 21, and 22 Based on Copin
Claim 1 recites a post system with a support that maintains a lifeline
at a first height until a threshold force is experienced on the lifeline, causing
the support to lower the lifeline to a lower height, where “the ratio of a
change in effective length of the lifeline resulting from the lowering of the
lifeline to a change in height resulting from lowering of the lifeline [is] less
than 1.”
Regarding the change in the length-to-height ratio, the Examiner cites
the MPEP to the effect that “changes in design such as size, shape and
making something integral are merely obvious design choices and such
changes have no patentable significance unless a new and unexpected result
is produced.” (Ans. 8.) The Examiner then finds
the claimed ratio and the height of the intermediate member are
merely a matter of design choice, respectively, and it would be
obvious to one of ordinary skill in the art to make the system of
Copin to comprise the claimed ratio and height, respectively, as
this being no more than an obvious design choice not expected
to produce any new or unexpected result or that which cannot be
determined through routine experiment and optimization.
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Application 14/128,427
(Id. ) The Examiner additionally finds paragraph 125 of the Specification to
“acknowledge[] that those skilled in the art can readily determine the
optimum [ratio] using known engineering principles.” (Ans. 20.)
We agree that, there being no evidence of a new or unexpected result,
the claimed ratio is obvious as a matter of design choice. Although
Appellants argue this finding is “conclusory” and has “no supporting
rationale” (see App. Br. 7—8), they fail to articulate any reason, or identify
any evidence showing, why a change from the ratio that would exist in
Copin to the claimed ratio is anything more than a routine design choice.
Appellants’ argument that “the change in effective length of the
lifeline is clearly a combination of the movement of both the left-hand and
right-hand supports ... of Copin, not just the left-hand support (16) as
erroneously asserted by the Examiner” (Reply Br. 5) is not persuasive
because the claim concerns the change in height and length associated with
“a connector,” not multiple connectors. Alternately, we would sum the
change in length and the change in height associated with each connector to
reach the same result.
Appellants additionally argue that (a) “[t]here is nothing in paragraph
[125] that asserts or admits that the claimed ratio of AL/AH was known to
those skilled in the art or readily determined by those skilled in the art,” and
(b) “[i]t is clear from Figs. 1 and 3 [of Copin] that the combined change in
length of the left-hand and right-hand supports ... is significantly greater
than the change of height. . . and that accordingly, the ratio of AL/AH is
greater than one, rather than less than one as recited in the claims.” (Reply
Br. 4—5.) We find argument (a) insufficient to establish error because it fails
to confront the core finding that it would have been obvious “to make the
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Application 14/128,427
system of Copin to comprise the claimed ratio and height” because such a
modification would be “no more than an obvious design choice not expected
to produce any new or unexpected result or that which cannot be determined
through routine experiment and optimization.” (Ans. 8.) Appellants’
argument (b) is not persuasive because it addresses Copin as though it was
alleged to anticipate, where the present rejection is premised on it being
obvious to modify what is shown in Copin’s figures.
For these reasons, we sustain the rejection of claim 1 as obvious in
view of Copin, as well as the obviousness rejections of claims 2—8, 18, 19,
21, and 22, which are not argued separately.
Obviousness of Claims 9—11 and 16
in View of Copin and Parker
Claim 9 depends, ultimately, from claim 1 and recites that the energy
absorber added in claim 8 includes a metal strap with a particular
configuration, including a spiral coil.
The Examiner finds Parker (which has a disclosure that overlaps that
of the instant application, including the portion regarding the strap) to
disclose the claimed strap and that it would have been obvious “to have
substituted an energy absorber connector, as taught by Parker, for that of
Copin, by the substituted use of one known equivalent connecting element
for another for its known advantages, and since it would have provided the
predictable results of absorbing energy in his system.” (Ans. 11.)
Appellants argue (a) “Copin already provides energy absorbing
structure . . . and there is no indication that the substitution of Parker’s
structure . . . would have somehow been an improvement over the already
provided ‘absorption of energy due to the fall of a person’”; (b) addition of
the structure of Parker “would have produced a ratio of AL/AH much much
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Application 14/128,427
greater than the ratio recited in the rejected claims because the structure of
Parker clearly provides a very large increase in the effective length of the
lifeline in response to the fall of a user”; (c) the modification would “alter a
fundamental operating principal of Copin by providing an entirely new
component at the top of Copin’s post to absorb the energy from a user’s fall
in addition to the components in Copin intended to absorb that energy (sheer
pin 21 and deformable structures 19)”; and (d) “the provision of an energy
absorber connector, as taught by Parker, to connect the lifeline of Copin to
his post would require the separation of a support post (13) from the base
component (10).” (App. Br. 9-10.)
We find Appellants’ arguments unpersuasive, for the following
respective reasons: (a) we see no reason why the presence of some existing
absorbing structure would preclude one of skill in the art from seeking to
add additional protections to the system; (b) the additional length provided
by the Parker absorber is not relevant to the claimed ratio, which only
concerns the “change in effective length of the lifeline resulting from the
lowering of the lifeline'1'’ and the “change in height resulting from lowering of
the lifeline”; (c) an addition of additional protection would augment Copin’s
system but not change its fundamental operating principle; and (d) we fail to
see why connecting Copin’s lifeline to his post would require the separation
of a support post from the base component or, even if it did, why what
would be a problem of a magnitude sufficient to prevent the combination.
We accordingly sustain the rejection of claim 9 obvious in view of
Copin and Parker, as well as the obviousness rejections of claims 10, 11, and
16, which are not argued separately.
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Application 14/128,427
Obviousness of Claims 12 and 13
in View of Copin, Parker, and Zambelli
Claim 12 also ultimately depends from claim 1 and adds “a post
member connected to the structure via the connector and extending from the
structure, the support comprising a stationary member attached to the post
member, wherein the moveable member is pivotably connected to the
stationary member.” The Examiner relies on “Zambelli [as] showing] a
post system having a support member (at 2) supported by a post (at 40)
connected to a structure by a connector (at 30).” (Ans. 12.)
Appellants argue “the rejection is improper for the reasons stated . . .
in connection with claims 8 and 11.” (App. Br. 13.) Appellants do not,
however, separately argue claims 8 and 11. To the extent Appellants meant
to refer to arguments made in connection with claim 9, we are not persuaded
of Examiner error for the reasons stated above. As no other argument is
offered for claim 12, the Section 103 rejection of that claim is sustained.
Appellants additionally argue with respect to claim 13 that “the
references taken alone or together fail to show the first connector section of
the energy absorber extending over the very first end of the moveable
member to connect to the lifeline.” (App. Br. 13.) We agree with
Appellants that the Examiner’s findings are insufficient to establish how the
combination teaches or suggests the features of claim 13 and, therefore,
decline to sustain the rejection of claim 13 under Section 103.
Obviousness of Claims 1—8 and 18 in View of Lara
The Examiner finds that Lara shows a post system for use in fall
protection that includes “a connector (at 13) to connect to a structure (15),
[and] a support (4) in operative connection with a lifeline” to maintain the
lifeline at a first height “wherein the support comprises a moveable member
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Application 14/128,427
(4) to which the lifeline is connected, the movable member moving relative
to the structure upon the lifeline experiencing the first threshold force to
lower the lifeline to the second height.” (Ans. 9.) As with the rejection
based on Copin, the Examiner finds the claimed ratio as obvious matter of
design choice. {Id. at 9—10.)
Appellants argue “Figs. 2-5 of Lara all illustrate that the force applied
to the post of Lara is in a somewhat upward direction, not in a vertically
downward direction as asserted by the Examiner.” (Reply Br. 6.) This
assertion is not persuasive because the claim does not concern itself with the
direction of the force, and Figures 3 to 5 in particular show the top of the
support, to which the lifeline is attached, being lowered relative to the
attachment point upon the application of force.
Appellants additionally argue (a) “the ratio of the change of length of
the lifeline to the change of height of the lifeline is much, much greater
than 1, which is completely the opposite of what is recited in the claims the
Examiner is improperly attempting to reject,” and (b) “the Examiner’s
assertion about paragraph [125] is clearly a mischaracterization, and does
absolutely nothing to overcome the failings of the rejections based on Lara.”
(Reply Br. 6—7.) We find these arguments unpersuasive for the same
reasons we found them unpersuasive when offered in response to the Copin
rejection.
We accordingly sustain the rejection of claims 1—8 and 18 under
Section 103 in view of Lara.
Obviousness of Claims 9—11 and 16
in View of Lara and Parker
Appellants argue the addition of Parker’s energy absorber to Lara
would be “an improper modification of Lara because the rejection would
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Application 14/128,427
require a complete change in the principle of operation of Lara.” (App. Br.
10.) Appellants argue Lara is about “adjusting the frictional force between
the two parts” and “[t]he rejection proposes to alter this fundamental
principle of operation of Lara by substituting in the energy absorber of
Parker et al, which does not rely on friction and does not provide any ‘means
for adjusting the frictional force’ as expressly identified in Lara as its
operating principle. Such modifications are expressly prohibited under the
case law and the MPEP.” (Id. at 10-11, emphasis omitted.)
We agree that Lara describes the use of friction between the cable 5
and jaws 9a and 9b for energy absorption. We do not agree, however, that
the substitution of Parker’s coiled strap energy absorber for Lara’s friction
energy absorber would impermissibly change Lara’s principal of operation,
as the modified device would still perform the primary function of absorbing
energy in a system using a lifeline.
Because we are unpersuaded by Appellants’ argument, we sustain the
Section 103 rejection of claim 9, as well as the rejection of claims 10, 11,
and 16, which are not separately argued.
DECISION
We affirm the rejections of claims 1—12, 16, and 18—24, and we
reverse the rejection of claim 13.
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-IN-PART
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