Ex Parte Paton-Ash et al

Patent Trial and Appeal Board

Nov 15, 2017

13065152 (P.T.A.B. Nov. 15, 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.
13/065,152 03/15/2011 Gregory Roy Paton-Ash STRATA-6 DIV 8965
7590 11/15/2017
Ansel M. Schwartz
Suite 304
201 N. Craig Street
Pittsburgh, PA 15213
EXAMINER
SAFAVI, MICHAEL
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
11/15/2017 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 GREGORY ROY PATON-ASH and
JOHN JOSEPH REINMANN, JR.
____________________

Appeal 2015-007782
Application 13/065,152
Technology Center 3600
____________________

Before LINDA E. HORNER, KEN B. BARRETT, and
GEORGE R. HOSKINS, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Gregory Roy Paton-Ash and John Joseph Reinmann, Jr. (Appellants)
seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims
1, 3–8, 11, 12, and 14–16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2015-007782
Application 13/065,152

2

THE INVENTION
Appellants’ claimed invention pertains to “mine support cribs having
reduced amounts of wood or material.” Spec. 1. Method claim 1 and
apparatus claim 7 are independent. Claim 7, reproduced below with
paragraphing and indentions added, is illustrative of the subject matter on
appeal.
7. A mine roof support crib comprising:
a plurality of chocks that are connected together through notches
in the chocks to form at least three planes and are able to support
load from the mine roof wherein each notch having only one
edge,
each chock having
a primary piece having a top and a bottom,
a first block and a second block disposed on the top and
bottom, respectively, and
means for attaching the first block and second block to the
primary piece,
an outward surface of the first block and second block
defining the edge of a first notch and of a second notch of
each chock, respectively,
each notch has either a spacer or a bar pin or a staple
defining a receive zone with the edge of the corresponding
notch, the receive zone receiving a notch of an adjacent
chock; and
a top portion, which includes a grout bladder or a wedge, on the
chocks which fits between the chocks and a roof of the mine so
the chocks are prestressed.
Br. 44–45 (Claims Appendix).
Appeal 2015-007782
Application 13/065,152

3

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
De Garay US 1,331,186 Feb. 17, 1920
Rothenberg, Jr. US 4,521,203 June 4, 1985
Reinmann US 5,746,547 May 5, 1998
Cole US 4,905,409 Mar. 6, 1990
Sharp GB 2 335 678 A Sept. 29, 1999

The following Examiner’s rejections are before us for review:
1. Claims 1, 3–8, 11, 12, and 14–16 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as the
invention;
2. Claims 1, 3, 7, 8, 11, 12, and 14–16 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Reinmann, Rothenberg, and
either Cole or De Garay; and
3. Claims 1, 3, 7, 8, 11, 12, and 14–16 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Sharp and Reinmann.
ANALYSIS
A. The Indefiniteness Rejection1
Independent claim 1 recites a “notch with only one edge” and “each
notch has a stop that is either a spacer or a bar pin or a staple defining a

1 We understand the Examiner to have withdrawn the indefiniteness
rejection associated with the recitation in claim 1 of “supporting a load from
the roof of the mine with the additional chocks and the first, second, third
and fourth chocks.” Compare Final Act. 3 with Ans. 2–3 (restating the
indefiniteness ground but omitting this basis); see also Ans. 10 (withdrawing
Appeal 2015-007782
Application 13/065,152

4

receive zone with the edge of the corresponding notch.” Br. 42 (Claims
Appendix). Independent claim 7 recites similar language except it does not
use the term “stop.” Id. at 44. The Examiner determines that the
independent claims and those depending therefrom are indefinite because it
is not clear how a notch can have only one edge. Final Act. 3. The
Examiner further determines that, as a result, the “receive zone” cannot be
determined. Id.
Appellants note that the claims also recite that a block defines the
edge of a notch. See Br. 15; see also Claim 7 (“an outward surface of the
first block . . . defining the edge of a first notch”). Appellants argue that one
of ordinary skill in the art would understand what is meant by an edge of a
notch together with a stop (a spacer, bar pin, or staple) defining a “receive
zone.” Br. 15. In so arguing, Appellants note that the stop forms another
edge of the respective notch. Id. (“claim [7] does define another edge as
being formed not of the chock itself but defined by either a spacer or a bar
pin or a staple”). Thus, Appellants appear to concede that a given notch has
at least two edges. This is in contrast to the claim’s recitation that each
notch has “only one edge.” Accordingly, we agree with the Examiner that
the claims lack clarity concerning the “only one edge” language, and we
therefore sustain the indefiniteness rejection of claims 1, 3–8, 11, 12, and
14–16 in that regard. We, however, determine that the meaning of the
“receive zone” is adequately clear from the claim language when read in

the written description rejection concerning the same recitation and setting
forth the Examiner’s interpretation of the phrase).
Appeal 2015-007782
Application 13/065,152

5

light of the Specification, even if the “edge” is unclear. Accordingly, we do
not sustain the indefiniteness rejection as to the “receive zone” phrase.
The Examiner also rejects dependent claim 5 as indefinite because,
according to the Examiner, it is not clear as to how claim 5 further limits
claim 1 from which it depends. Final Act. 3–4. Appellants do not challenge
the Examiner’s position, stating “[i]n regard to Claim 5, it should be
canceled and will be canceled when this application is allowed.” Br. 18. As
such, we summarily sustain the rejection of claim 5.
B. The Obviousness Rejection Based on Reinmann, Rothenberg, and
either Cole or De Garay
Apparatus claim 7 pertains to a mine support crib formed, in part,
from interconnected chocks, where each chock is formed from three stacked
and attached blocks (i.e., a primary piece and first and second blocks) and
where each chock has a notch with either a spacer, a bar pin, or a staple and
thereby defining a receive zone to receive a notch of an adjacent chock.
There also is a grout bladder or wedge that fits between the chocks and the
roof of the mine. The Examiner finds that Reinmann’s single-piece chock
has the general configuration of the claimed chock. See Final Act. 5–6, 7.
The Examiner relies on Rothenberg for the teaching of forming a chock by
attaching top and bottom blocks to a primary piece so as to create notches.
Id.; see also Ans. 11 (“Rothenberg, Jr. had been utilized to teach that
structural form elements can be made with multiple pieces and particularly
that an upper raised portion and a lower raised portion can be formed by
attaching separate upper and lower pieces, or blocks.”). The Examiner
points to Cole and, alternatively, De Garay as disclosing attaching two
timbers to form a notch for an overlapping arrangement of timbers. Final
Appeal 2015-007782
Application 13/065,152

6

Act. 6. The Examiner reasons, relying on the references’ teachings, that it
would have been obvious to form Reinmann’s chock from multiple pieces—
as in Rothenberg—to form desired notches without the need of milling or
routing. Id. at 6–7.
Appellants first argue “the applied art of record does not teach or
suggest ‘each notch has either a spacer or a bar pin or a staple defining a
receive zone with the edge of the corresponding notch’ where the ‘receive
zone receives a notch of another chock.’” Br. 19. This conclusory assertion
is not persuasive as Appellants do not explain adequately this argument or
indicate any purported error in the Examiner’s position and proposed
combination regarding the feature. See Final Act. 6.
Appellants next address independent apparatus claim 7, arguing that
“there is no teaching, suggestion or motivation to combine the teachings.”
Br. 19. Appellants acknowledge that such a teaching, suggestion, or
motivation need not be explicit in the references. Id. (citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398 (2007)); see also KSR, 550 U.S. at 418 (The
Court stating that an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”). Appellants impliedly argue that a
determination of obviousness requires a motivation that “come[s] from
recognizing the problem that the claimed invention solves,” which,
according to Appellants, is “not enough material present to form a one-piece
chock.” Br. 19; see also id. at 26 (“In order for [one skilled in the art] to
even conceive of the present invention, he would have had to first recognize
the problem of there not being enough material present out of which to form
Appeal 2015-007782
Application 13/065,152

7

a single one-piece chock.”). This is an incorrect statement of the law as KSR
stands for the opposite proposition. See KSR, 550 U.S. at 420 (“The first
error . . . was to foreclose this reasoning by holding that courts and patent
examiners should look only to the problem the patentee was trying to
solve.”). Rather, “the problem motivating the patentee may be only one of
many addressed by the patent’s subject matter[;] [t]he question is not
whether the combination was obvious to the patentee but whether the
combination was obvious to a person with ordinary skill in the art.” Id. We
are not persuaded that the proposed modification would result from only
hindsight (Br. 21, 27) as the Examiner’s reasoning has rational
underpinnings based on the teachings of the cited prior art references.
We also are not persuaded by Appellants’ argument that the
Examiner’s reasoning is flawed because the amount of time to mill out a
notch would be small in comparison to the time to form the chock of the
claim, which “requires the individual pieces of wood or material to have to
be gathered up and individually cut to size and then each component to have
to be individually attached.” Br. 20. Even if the assertions underlying this
time comparison are accepted as true, a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate any or all reasons to combine teachings. See Winner Int’l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349, n.8 (Fed. Cir. 2000).
Appellants next argue that “the risk of failure of any component
which is attached by glue or nails or wires[2] under the loads from a mine

2 Appellants’ Specification identifies, as the “attaching means,” a nail or
wire. Spec. 5, 8. The Specification indicates that the use of such is well
Appeal 2015-007782
Application 13/065,152

8

roof, possibly resulting in the death of miners would preclude one skilled in
the art from obviously doing so.” Br. 20. Appellants provide mere attorney-
argument and no persuasive evidence to support the implied proposition that
one of ordinary skill in the art would deem a multi-component chock to be
unacceptable for use in a mine. Cf. Sharp, Abstr., 13 (disclosing a
multi-component chock for use in a mine where the horizontal components
“are joined together by conventional fixing means” such as nails and
adhesives). To the extent Appellants argue that Reinmann’s disclosure of a
single-piece chock teaches away from a multi-piece chock, we are not
persuaded as Appellants do not direct our attention to any disparagement of
such in Reinmann. See Br. 20–21; see also Declaration of Clifford A.
McCartney dated Aug. 14, 2012 (“McCartney Decl.”) 6 (asserting that
Reinmann, “by teaching that the chock 10 is formed in one piece, it actually
teaches away from applicants’ claimed invention.”).
Appellants, relying on the Declaration of Clifford A. McCartney,
argue that Rothenberg, Cole, and De Garay are non-analogous art. Br. 21–
26; Br., Ex. E (McCartney Decl.). Appellants’ arguments are based on the
assertion that the references “have nothing to do with mine cribs of the
claimed invention” and “have nothing to do with mining equipment [or] the
safety issue that is predominant in the design of mining equipment.” Id. at
21–22. Appellants’ arguments and the corresponding declaration testimony
are not persuasive. “[F]amiliar items may have obvious uses beyond their

known in the art. Id. at 8 (“The first block 36 and the second block 38 are
attached to the primary piece 30 by nails 56 or by spinning wire 58 through
the wood, as is well known in the art.”).
Appeal 2015-007782
Application 13/065,152

9

primary purposes, and in many cases a person of ordinary skill will be able
to fit the teachings of multiple patents together like pieces of a puzzle.”
KSR, 550 U.S. at 420. The cited references pertain to construction
techniques for structures involving interlocking and/or overlapping
components. Even Rothenberg, which Appellants characterize as pertaining
to a toy construction kit (Br. 23–24), discloses the construction of life-size
forts and the like from interlocking “logs” (albeit logs made from
honeycomb sandwich kraft paper). Rothenberg, 1:14–18, 40–54; 2:16–18.
All of the references are, at least, reasonably pertinent to the problem with
which Appellants’ invention is directed–the construction of an interlocking
structure for supporting a load. We note that Rothenberg, the play fort
reference, is, like Appellants’ invention, concerned with weight bearing
strength. Rothenberg, 1:52–54. Further, the Declarant’s testimony is
undermined by his assertions regarding Rothenberg. McCartney Decl. 4.
The Declarant testifies that Rothenberg teaches that the play structures are
formed without fasteners, adhesives, and tools, and “no one skilled in the art
would look to the teachings of Rothenberg, Jr., because the elements of the
construction kit are not taught to be attached as required by the claimed
invention.” Id.; see also Br. 23–24 (relying on this testimony for the
proposition that the Examiner has ignored “the risk of death” because “the
components used to form the chock [in Rothenberg] could come apart and
fail.”). However, and as the Examiner notes (Ans. 11), Rothenberg refers to
the assembly of the fort without tools and fasteners—by interlocking the
chocks much like Appellants’ claimed invention—not the assembly of the
individual chocks. Rothenberg, Abstr. The components of the chock are
Appeal 2015-007782
Application 13/065,152

10

adhered to each other. Ans. 11 (citing Rothenberg 2:38–51); see also
Rothenberg, 2:22–23, 31–34.
Appellants do not apprise us of error in the Examiner’s determination
that the subject matter of claim 7 would have been obvious. Accordingly,
we sustain the rejection of claim 7 as unpatentable over Reinmann,
Rothenberg, and either Cole or De Garay.
Appellants argue that independent claim 1 is patentable for the same
reasons offered for independent claim 7. As discussed above, we have not
found those arguments to be persuasive. Appellants also argue that
“[m]oreover, Claim 1 is separately and additionally patentable because
Claim 1 is a method claim and the very steps themselves and the context and
application of the steps must be given weight.” Br. 29 (citing Joy Techs.,
Inc. v. Flakt, Inc., 6 F.3d 770 (Fed. Cir. 1993)).3 This is unpersuasive as it
merely is a proposition of law without application to the facts of this case,
and Appellants fail to direct our attention to any erroneous treatment of the
method claim by the Examiner.
Dependent claim 14 recites “the height of the spacer, bar pin or staple
is less than the rise of the edge of the corresponding notch.” Br. 45 (Claims
Appendix); see also id. at 28. We are unable to discern any discussion of
this claim by the Examiner in the Final Action, and therefore cannot sustain
the rejection as to that claim. See Final Act. 5–7.

3 The Joy Technologies case states: “[T]he sale of equipment to perform a
process is not a direct infringement of the process within the meaning of
[35 U.S.C.] section 271(a).” Joy Techs., Inc., 6 F.3d at 774.
Appeal 2015-007782
Application 13/065,152

11

Appellants’ assertions regarding the remaining claims subject to this
rejection either rely on the unpersuasive arguments made in the context of
claim 7 or amount to a recitation of the claim features and a “naked
assertion” that the features are not found in the cited prior art. Br. 27–30.
Such statements of the latter kind do not constitute a separate argument for
patentability of the subject claims pursuant to 37 C.F.R. § 41.37(c)(1)(iv).
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the
Board had reasonably interpreted the same language in the prior rule under
37 C.F.R. § 41.37(c)(1)(vii) as requiring “more substantive arguments in an
appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art”).
Accordingly, we also sustain the rejection of claims 3, 8, 11, 12, 15, and 16
as unpatentable over Reinmann, Rothenberg, and either Cole or De Garay.
C. The Obviousness Rejection Based on Sharp and Reinmann
The Examiner relies on Sharp for the disclosure of much of the
claimed subject matter. Final Act. 8–9. The Examiner relies on Reinmann’s
teaching that it was known to prestress chocks in a mine via the use of a
grout bladder or wedge, and reasons that it would have been obvious to
apply that teaching to Sharp’s mine crib. Id. at 9–10.
Appellants argue that “Sharp specifically identifies Reinmann and
teaches away from the teachings of Reinmann” and that “Sharp specifically
teaches that mine support cribs of the prior art have major disadvantages.”
Br. 31; see id. at 31–33. To the extent that this is an argument that Sharp, as
a general matter, teaches away from the use of a prior art crib, it is not
Appeal 2015-007782
Application 13/065,152

12

persuasive as the Examiner’s proposed combination utilizes Sharp’s chock
and crib, not that of the prior art. Final Act. 8–9.
Appellants also argue that Sharp’s use of a variable height chock to
eliminate the need for a height-compensating wedge or grout bag teaches
away from the use of a wedge or grout bag. Br. 33–35. We do not find this
argument persuasive, and agree with the Examiner (Final Act. 12–13) that
Sharp is identifying the costs and benefits of various options known to the
person of ordinary skill in the art and does not discourage one from selecting
the wedge/grout option such that it renders the subject matter non-obvious.
We note that the use of a wedge or grout bladder to prestress a mine crib was
known in the art and, therefore, any purported “teaching away” would not
remove that knowledge from the mind of the ordinary artisan. In this case, a
known, purportedly less-than-ideal-solution is not a non-obvious one.
Additionally, we do not find persuasive Appellants’ implied argument,
relying on the McCartney Declaration, that the use of Sharp’s crib system
and the use of a wedge or grout bladder are mutually exclusive. See Br. 35.
Notwithstanding Sharp’s height variability of the chocks (which would be a
function of the available layers forming the chock), it still is possible that the
crib may not be exactly the height of the mine, and thus height compensation
and prestressing via, e.g., a wedge may be a desired option.
We are not persuaded by Appellants’ argument that “Sharp does not
recognize the problem that the claimed invention solves, which is to use
individual pieces to form a chock when there is not enough material around
to form a chock from a single piece of wood” (Br. 35, see also id. at 37) for
the reasons given above with the discussion of KSR. Further, the
Examiner’s rejection starts with Sharp’s multi-component chock and does
Appeal 2015-007782
Application 13/065,152

13

not propose modifying the chock itself. See Final Act. 8–10. We also note
that Sharp offers several reasons why the multi-component crib member is
advantageous over the prior art chocks cut from solid blocks. See, e.g.,
Sharp 8–9.
Appellants next argue that Sharp, by the use of end blocks having a
large surface area, teaches away from “very small components,” namely the
recited staple, bar pin, or spacer. Br. 35–36. This argument is not
commensurate in scope with the claim language as the claims do not specify
the size of the components. Also, Appellants do not explain why Sharp’s
end block member 7 would not be considered the recited “spacer.” See Final
Act. 8.
We have considered Appellants remaining arguments for claim 7
(Br. 37–38), which are similar to those made in the context of the
obviousness rejection discussed above, and do not find them persuasive of
error.
Appellants do not apprise us of error in the Examiner’s determination
that the subject matter of independent claim 7 would have been
obvious. Accordingly, we sustain the rejection of claim 7 as unpatentable
over Sharp and Reinmann.
For independent claim 1, Appellants repeat the same or similar
arguments addressed already including the assertion that the claim
additionally is patentable as a method claim and relying on Joy
Technologies, Inc. Br. 39–40. We again do not find these arguments to be
persuasive, and we sustain the rejection of claim 1 as obvious over Sharp
and Reinmann.
Appeal 2015-007782
Application 13/065,152

14

As with the prior rejection, we are unable to discern any discussion of
the limitation of claim 14 in the Final Action. See Final Act. 8–10.
Accordingly, we cannot sustain the rejection of claim 14 as obvious over
Sharp and Reinmann.
Appellants’ assertions regarding the remaining claims subject to this
rejection either rely on the unpersuasive arguments made in the context of
claim 7 or amount to a recitation of the claim features and a “naked
assertion” that the features are not found in the cited prior art. Br. 38–41.
These statements do not constitute a separate argument for patentability. See
In re Lovin, 652 F.3d at 1357. Accordingly, we also sustain the rejection of
claims 3, 8, 11, 12, 15, and 16 as unpatentable over Sharp and Reinmann.
CONCLUSIONS
We conclude that the Examiner did not err in rejecting: 1) claims 1,
3–8, 11, 12, and 14–16 as being indefinite; 2) claims 1, 3, 7, 8, 11, 12, 15,
and 16 as being unpatentable over Reinmann, Rothenberg, and either Cole or
De Garay; and 3) claims 1, 3, 7, 8, 11, 12, 15, and 16 as being unpatentable
over Sharp and Reinmann.
We do not sustain the rejection of claim 14 as obvious over
Reinmann, Rothenberg, and either Cole or De Garay or as obvious over
Sharp and Reinmann.
DECISION
The decision of the Examiner to reject claims 1, 3–8, 11, 12, and 14–
16 is affirmed.
Appeal 2015-007782
Application 13/065,152

15

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED