Ex Parte Pacheco

Patent Trial and Appeal Board

Jul 29, 2016

12971984 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/971,984 12/17/2010 Carlos Pacheco
27128 7590 08/02/2016
HUSCH BLACKWELL LLP
190 Carondelet Plaza
Suite 600
ST. LOUIS, MO 63105
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.
713939.46 9027
EXAMINER
KENNEDY, JOSHUA T
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
pto-sl@huschblackwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARLOS PA CHECO 1
Appeal2014-002386
Application 12/971,984
Technology Center 3600
Before LYNNE H. BROWNE, MICHELLE R. OSINSKI and
MARK A. GEIER, Administrative Patent Judges.
GEIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's rejection of claims 1, 2, 5-12, 18-20, and 22. 2 Appeal Br. 5.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is 1461043 Ontario
Limited. Appeal Br. 3.
2 Appellant cancelled claims 1 7 and 21. Appeal Br. 3. Appellant withdrew
claims 3, 4, and 13-16. Id. The foregoing claims are not before us on this
Appeal.
Appeal2014-002386
Application 12/971,984
THE CLAIMED SUBJECT MATTER
The claimed subject matter "relates to a fence post cap." Spec. i-f 2.
Claim 1 is representative and recites:
1. A fence post cap, comprising:
a thin-walled cap portion above a plurality of depending
thin walls, each wall of said walls joined at opposed ends to an
adjacent wall of said walls;
a first wall of said walls having an inwardly and upwardly
extending thin-walled first protrusion with a first upper edge
providing a mouth between said first wall and said first upper
edge;
a second wall of said walls, opposed to said first wall,
having an inwardly and upwardly extending thin-walled second
protrusion with a second upper edge providing a mouth between
said second wall and said second upper edge;
each wall of said walls being planar and terminating at a
basal free edge.
THE REJECTIONS ON APPEAL
The Examiner rejected claims 1, 2, 5, and 9 as unpatentable under 35
U.S.C. § 103(a) over Buhrts (US 6,662,515 B2; iss. Dec. 16, 2003) and
Acton (US 4,789,138; iss. Dec. 6, 1988). 3
3 Although the Examiner's heading identifies this rejection as applicable to
claims 1, 2, 5, 9--12, and 20, the body only addresses claims 1, 2, 5, and 9.
See Non-Final Act. 3--4. Moreover, the Examiner relies upon the additional
reference from Le Vey when discussing the rejections of claims 10-12 and
20. See id. at 5-9. Accordingly, we determine that the Examiner's inclusion
of claims 10-12 and 20 in the heading of this rejection is a typographical
error. See also Appeal Br. 5 (identifying the rejection over Buhrts and
Acton as applicable only to claims 1, 2, 5, and 9).
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Application 12/971,984
The Examiner rejected claims 10-12 and 20 as unpatentable under 35
U.S.C. § 103(a) over Buhrts, Acton, and Le Vey (US 6,152,667; iss. Nov. 28,
2000).
The Examiner rejected claims 6-8 as unpatentable under 35 U.S.C.
§ 103(a) over Buhrts, Acton, and Meyer (US 3,869,760; iss. Mar. 11, 1975).
The Examiner rejected claims 18, 19, and 22 as unpatentable under 35
U.S.C. § 103(a) over Buhrts, Acton, Le Vey, and Meyer.
ANALYSIS
Claim 1
Appellant first argues that Buhrts teaches away from the Examiner's
combination of Buhrts with Acton because Buhrts "teaches the possibility of
a separate mechanical fastener" and therefore "teaches away from an
integral mechanical fastener." Appeal Br. 9 (citing Buhrts 2:43--45).
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). "A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
'criticize, discredit, or otherwise discourage' investigation into the invention
claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391F.3d1195, 1201 (Fed
Cir. 2004)).
Appellant has not identified anything in Buhrts that would "'criticize,
discredit, or otherwise discourage' investigation into the invention claimed."
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Application 12/971,984
See DePuy, 567 F.3d at 1327 (citing Fulton, 391 F.3d at 1201). As noted by
the Examiner, while Buhrts' specific examples are "nails, screws, pins, [and]
clamps," Buhrts also discloses that "other appropriate mechanical fastening
means may be used." Ans. 10 (quoting Buhrts, 2:43--45). Accordingly, we
see no disclosure in Buhrts that would discourage one of skill in the art from
using a fastener that is integrated with the post cap.
Appellant next contends that Buhrts is "directed primarily to a
synthetic wood cap" and therefore "the skilled person would be directed by
the teachings of Buhrt[ s] to employ a modification suited to use with
synthetic wood caps." Appeal Br. 9 (citing Buhrts, 1:10-15, 2:10-11).
Appellant contends this is contrary to the language of claim 1 that requires
"a first wall of said walls having an inwardly and upwardly extending thin-
walled first protrusion with a first upper edge providing a mouth between
said first wall and said first upper edge" which "is not a construction suited
to synthetic wood." Appeal Br. 9--10.
Appellant's argument does not apprise us of error. In particular, we
note that Buhrts states that its "cap can be made from other plastic
formulations and/or materials, e.g., wood or metal." Buhrts, 4:48--49; see
also Ans. 11. Accordingly, as Buhrts is not limited to synthetic wood
materials, Appellant's argument that synthetic wood materials are not
compatible with the claimed configuration is not persuasive.
For the foregoing reasons, we sustain the Examiner's rejection of
claim 1.
Claims 2, 5, and 9
Appellant argues claims 2, 5, and 9 on the same basis as claim 1.
Appeal Br. 10. For the reasons stated with respect to claim 1, we also
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Application 12/971,984
sustain the Examiner's rejection of claims 2, 5, and 9.
Claim 10
Appellant first reiterates the teach-away argument made with respect
to claim 1 regarding Buhrts' identification of separate mechanical fasteners.
Appeal Br. 11. For the reasons stated with respect to claim 1, Appellant's
argument here also does not apprise us of error.
Appellant next makes an argument that Buhrts' focus on "a synthetic
wood post cap" teaches away from claim 10 's recitation of "a unitary
structure fabricated of sheet metal" having the additional features recited in
claim 10. Id. at 11-12. For the reasons stated with respect to claim 1, in
particular the fact that Buhrts indicates that its cap can be made of metal,
Appellant's argument here also does not apprise us of error.
Appellant also argues that:
because Acton's tabs are joined to the side walls along their
bottom edge and are biased inwardly; outward prying would
release the tabs. In contrast, LeVey's hemispherical bosses are
fixed, they are not biased inwardly. Therefore, they are not
amenable to being pried outwardly to allow release [of] the tabs.
Therefore, it is submitted that Acton teaches away from the
modification proposed by the Examiner as such a modification
runs contrary to a stated object of the invention of Acton and
eliminates an advantage of Acton. For this reason, it is submitted
that it would not be obvious to one skilled in the art to modify
the protrusions of Acton with the teachings of Le Vey as proposed
by the Examiner.
Appeal Br. 13.
Appellant's arguments do not apprise us of error. In particular, we
note that Appellant's arguments focus on features not recited in the claims.
Appellant nowhere identifies claim language that requires that a portion of
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Application 12/971,984
the claimed cap must be amenable to being pried outwardly. See id. at 12-
13. Indeed, it is not clear why such a feature has any relevance to the claim
at issue.
For the foregoing reasons, we sustain the Examiner's rejection of
claim 10.
Claims 11 and 12
Appellant argues claims 11 and 12 on the same basis as claim 10.
Appeal Br. 13. For the reasons stated with respect to claim 10, we also
sustain the Examiner's rejection of claims 11 and 12.
Claim 20
Appellant first reiterates the teach-away argument made with respect
to claim 1 regarding Buhrts' identification of separate mechanical fasteners.
Appeal Br. 14. For the reasons stated with respect to claim 1, Appellant's
argument here also does not apprise us of error.
AppeUant next makes an argument that Buhrts' focus on "a synthetic
wood post cap" teaches away from claim 20 's recitation of "depending thin
walls; a first wall of said walls having an inwardly extending thin-walled
first dimple" having the additional features recited in claim 20. Id. at 14.
For the reasons stated with respect to claim 1, Appellant's argument here
also does not apprise us of error.
Appellant also reiterates the teach-away argument regarding Acton's
biased tabs made with respect to claim 10. Appeal Br. 15. For the reasons
stated with respect to claim 10, Appellant's argument here also does not
apprise us of error.
Claims 6-8
Appellant argues claims 6-8 on the same basis as claim 1. Appeal Br.
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16. For the reasons stated with respect to claim 1, we also sustain the
Examiner's rejection of claims 6-8.
Claims 18, 19, and 22
Appellant argues claims 18 and 19 on the same basis as claim 10 and
claim 22 on the same basis as claim 20. Appeal Br. 16. For the reasons
stated with respect to claims 10 and 20, respectively, we also sustain the
Examiner's rejection of claims 18, 19, and 22.
DECISION
We AFFIRM the Examiner's rejection of claims 1, 2, 5-12, 18-20,
and 22 under U.S.C. § 103(a).
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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