Ex Parte Paulos

Patent Trial and Appeal Board

Aug 17, 2016

12166641 (P.T.A.B. Aug. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/166,641 07/02/2008
27572 7590 08/19/2016
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
FIRST NAMED INVENTOR
Dean H. Paulos
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.
1537-000004/US 4016
EXAMINER
ADDIE, RAYMOND W
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
08/19/2016 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):
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEAN H. PAULOS
Appeal2014-003547
Application 12/166,641
Technology Center 3600
Before ANNETTE R. REIMERS, JILL D. HILL, and
THOMAS F. SMEGAL, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Dean H. Paulos (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision to reject under 35 U.S.C. § 103(a): (1) claims 1--4,
6-15, and 17-50 as unpatentable over Rosener (US 2,157,059; iss. May 2,
1939), Johnson (US 4,232,979; iss. Nov. 11, 1980), and Crafco2; and (2)
1 Appellant presents additional evidence in the Declaration of Dean H. Paulo,
the sole inventor of the subject application (hereinafter the "Paulo
Declaration") filed under 37 C.F.R. § 1.132 on Sept. 7, 2011. See Appeal Br.
31.
2 Crafco Inc., Product Data Sheet: Hot-Applied Flexible Pavement Marker
Adhesive, January 2004.
Appeal2014-003547
Application 12/166,641
claims 1, 17-20, 31-33, and 47-50 as unpatentable over Rosener, Pricone
(US 6,102,612; iss. Aug. 15, 2000), and Crafco. Claims 5 and 16 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to depressible, reflective pavement
markers. Spec. para. 1, Figs. 1, 2. Claims 1, 19, 31, and 47 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A depressible pavement marker installation
compnsmg:
a road surface having an opening with a chamfered
peripheral edge formed thereon;
a housing resiliently mounted with a compliant
adhesive in said opening such that an upper end of said
housing is positioned at or below said road surface, the
adhesive being resiliently compliant after being fully
cured \'l1ithin the opening;
a retainer threadably engaged with said housing;
a piston reciprocally movable within said housing,
said piston including an upper end normally protruding
above said housing and said road surface, said piston
being depressible downwardly in said housing to move
said upper end of said piston into said housing;
a reflector assembly mounted to said upper end of
said piston such that said reflector assembly is normally
positioned above said road surface; and
resiliently compressible means biasing said piston
upwardly to raise said upper end of said piston above
said housing and said road surface, said biasing means
substantially filling the interior of the housing.
2
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Application 12/166,641
ANALYSIS
Obviousness over Rosener, Johnson, and Crafco
Claims 1--4, 6--15, and 17-50
The Examiner finds that Rosener discloses the device of claim 1
substantially as claimed except "Rosener does not disclose ... the use of
glue." See Final Act. 2. The Examiner relies on Johnson for disclosing "it is
known to adhere pavement markers (10) with an impact-absorbing adhesive
( 15) to bond the pavement marker to the roadway." See id. at 3 (citing
Johnson, col. 7, 11. 14--24). The Examiner concludes that it would have been
obvious "to provide the pavement marker installation of Rosener with a
compliant, impact absorbing adhesive, as taught by [Johnson] in order to
reduce tire-impact related damage to the marker." Id. 3
Appellant contends that the Examiner fails to provide reasons based
on rational underpinnings to combine the teachings of Rosener and Johnson.
See Appeal Br. 12-16; see also Reply Br. 2-3. Specifically, Appellant
contends that "the Examiner has failed to articulate why modifying the
particular device of Rosener to include an adhesive [as taught by Johnson]
would reduce damage to the marker." Appeal Br. 14; see also id. at 12.
According to Appellant,
Rosener already includes adequate structure for preventing
damage to the marker. Namely, the marker of Rosener includes
a domed head (7) that deflects impact from vehicles. . . . The
domed head (7) is resiliently compressible in a downward
direction into the hole in the roadway and includes means to
allow the domed head (7) to resiliently rotate in response to
3 The Examiner relies on Crafco for disclosing "the use of a flexible,
'resiliently compliant', pavement marker adhesive." Final Act. 3.
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Application 12/166,641
glancing blows from vehicles. . . . All of these features and
functions are provided to prevent damage to the marker.
There is no evidence in the record that the marker of
Rosener would be damaged during use-much less damaged to an
extent that would motivate one skilled in the art to modify
Rosener. The Examiner has not provided any reasons why one
of ordinary skill in the art would have substituted Rosener's
means for preventing marker damage with the means of
[Johnson] or how and why such a modification would have
reduced damage to the marker, as the Examiner suggests.
Appeal Br. 13 (citing Rosener p. 1, col. 1, 11. 5--48).
Rosener discloses that (1) " [a] particular object is to provide an
improved combination of resilient supporting and stopping means for the head
of a marker of this class whereby the device is rendered more durable and
resistant to the impact of the vehicle wheels" (Rosener, p. 1 col. 1, 11. 12-16)
(emphasis added); (2) "[a] further object is to provide ... a marker [that]
permit[ s] the head to tum, momentarily under the more powerful forces
tending to rotate the head, such as those created by the impact of sno\v plov,rs,
grader blades or glancing blows from the wheels of vehicles" (Rosener, p. 1
col. 1, 11. 17-26); and (3) "[i]n the event that a snow plow or similar vehicle
should, hit one of the sockets for the reflector buttons the dome will tum and
release itself and after the vehicle has passed will return to its original
position" (Rosener, p. 1 col. 2, 11. 26-30). Rosener further discloses:
An important feature of my device is my arrangement for
resiliently retaining the head and reflector buttons against
rotation relative to the casing and thereby guarding the device
against breakage and from being loosened in the pavement by
either severe glancing blows from vehicle wheels, or in the event
that a snow plow, grader blade, or the like becomes caught in
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Application 12/166,641
one of the sockets containing a reflector button. . . . As
hereinbefore pointed out, with my resilient connection the head
frees itself by rotary movement, as well as by axial movement,
without damage or rapid wear from any of these forces.
Rosener, p. 1 col. 2, 1. 51-p. 2, col. 1. 1. 14 (emphasis added).
In this case, the Examiner does not adequately explain how modifying
the pavement marker of Rosener with the adhesive of Johnson would
"reduce damage to the marker" (see Reply Br. 2; see also Appeal Br. 12,
14) given that "Rosener already includes adequate structure for preventing
damage to the marker." See Appeal Br. 13; see also Final Act. 2-3;
Rosener, p. 1 col. 2, 1. 51-p. 2, col. 1. 1. 14. Further, given that Rosener
discloses a marker arrangement that "permit[ s] the head to tum, momentarily
under the more powerful forces tending to rotate the head, such as those
created by the impact of snow plows, grader blades or glancing blows from
the wheels of vehicles," we disagree with the Examiner that "there is no
evidence the road marker of Rosener \'l/ould not be damaged by vehicles and
snow plow blades." Ans. 3; Rosener, p. 1 col. 1, 11. 17-26. Moreover, the
Examiner does not provide any findings that Rosener recognized a problem
with the marker's rotational head arrangement. See id.; see also Final Act.
2-3. Without a persuasive articulated reasoning that is supported by a
rational underpinning for modifying the reference as proposed, the
Examiner's rejection appears to be the result of an impermissible hindsight
analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(citation omitted)) ("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
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Application 12/166,641
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.").
The Examiner appears to take an alternate position in the response to
arguments in the Final Action. Namely, at page 9 of the Final Action, the
Examiner states that "Rosener provides a depressible marker head (7) to
prevent damage to the marker head; but does not provide any protection to
the marker housing (3)." The Examiner concludes that it would have been
obvious "to bond the pavement marker of Rosener, with an impact absorbing
adhesive, as taught by [Johnson], in order to absorb impact forces applied to
the pavement marker, thereby preventing the housing of the Rosener
pavement marker from being bent, cracked or otherwise damaged by vehicle
tire impacts." Final Act. 9; see also id. at 10; Ans. 4.
Rosener discloses that housing 3 "is beneath [ imbedded in] the road
surface." Rosener, p. 1 col. 1, 11. 9-10; see also id. at p. 1 col. 1, 11. 38--40.
Given that Rosener's housing 3 is beneath (imbedded in) the road surface,
we fail to see, and the Examiner fails to articulate, how housing 3 would be
"bent, cracked or otherwise damaged by vehicle tire impacts." Final Act. 9.
Moreover, it stands to reason that Rosener's marker arrangement would
prevent breakage and damage to housing 3, as well as head 7. See Appeal
Br. 13. Based on the foregoing reasons, we agree with Appellant that the
Examiner's articulated reasons for the proposed modification lack rational
underpinnings. See Appeal Br. 12-14; see also Reply Br. 2-3.
Independent claim 4 7 calls for a device and independent claims 19
and 31 call for methods including limitations similar to those discussed for
claim 1. See Appeal Br. 24, 26-27, and 29-30 Claims App. The Examiner
relies on the same unsupported findings and conclusions for claims 19, 3 1,
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Application 12/166,641
and 47 as discussed above in claim 1. See Final Act. 2-3, 5---6. Thus, the
Examiner's findings and conclusions with respect to Rosener, Johnson, and
Crafco are deficient for claims 19, 31, and 47 as well.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claims 1, 19, 31, and 4 7 and their
respective dependent claims 2--4, 6-15, 17, 18, 20-30, 32--46, and 48-50 as
unpatentable over Rosener, Johnson, and Crafco. 4
Obviousness over Rosener, Pricone, and Crafco
Claims 1, 17-20, 31-33, and 47-50
The Examiner finds that Rosener discloses the device of claim 1
substantially as claimed except "Rosener does not disclose ... the use of
glue." See Final Act. 6-7. The Examiner finds that Pricone "teaches it is
known to glue roadway markers into a recess in a roadway, using a
bituminous adhesive or 'other suitable adhesive' in both sun country and
snow country." See id. at 12; see also id. at 7. The Examiner concludes that
it would have been obvious to bond the pavement marker of Rosener to the
recess in the pavement with a bituminous type adhesive, as taught by
Pricone, "in order to bond the marker to the roadway." Id.; see also id. at 7. 5
Appellant contends:
To support the assertion of obviousness, the Examiner has,
essentially, stated that it would have been obvious to bond the
marker of Rosener to the roadway with adhesive [as taught by
4 Because the Examiner fails to provide reasons with rational underpinnings
to support the combined teachings of Rosen, Johnson, and Crafco, we do not
reach the objective rebuttal evidence of the Paulo Declaration.
5 The Examiner relies on Crafco for disclosing "the use of a flexible,
'resiliently compliant', pavement marker adhesive." Final Act. 7; see also id.
at 12.
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Appeal2014-003547
Application 12/166,641
Pricone] in order to bond the marker to the roadway. Such,
circular reasoning does not provide any explanation as to why it
would have been obvious to bond the marker of Rosener to the
roadway, as claimed.
Furthermore, there is no evidence in the record that the
marker of Rosener would tend to become dislodged from the
roadway during use. The Examiner has not provided any reasons
why one of ordinary skill in the art would have substituted
Rosener' s adequate means for retaining the marker in the
roadway with the means of [Pricone] or how and why such a
modification would have improved retention of the marker.
Appeal Br. 17; see also id. at 18.
As discussed above, Rosener already discloses "[an] adequate means
for retaining the marker in the roadway" and an adequate marker
arrangement for preventing the marker from becoming "dislodged from the
roadway during use." See Rosener, p. 1 col. 1, 11. 12-26, p. 1 col. 2,
11. 26-30, p. 1 col. 2, 1. 51-p. 2, col. 1. 1. 14; see also Appeal Br. 17-18. The
Examiner does not provide any findings that Rosener recognized a problem
with the marker retaining arrangement. See Final Act. 6-7. Moreover,
given that Rosener's housing 3 is beneath (imbedded in) the road surface, we
fail to see, and the Examiner fails to articulate, how modifying Rosener with
the adhesive of Pricone would "improve the interconnection between the
marker body [housing 3 of Rosener] and the roadway." See Ans. 6; see also
Rosener, p. 1 col. 1, 11. 9-10, 11. 38--40. Based on the foregoing reasons, we
agree with Appellant that the Examiner's articulated reasons for the
proposed modification lack rational underpinnings. See Appeal Br. 17-18.
Additionally, we note that claim 1 calls for "a road surface having an
opening" and "a housing resiliently mounted with a compliant adhesive in
said opening." Appeal Br. 21, Claims App. (emphasis added). As noted
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Application 12/166,641
above, the Examiner finds that Pricone "teaches it is known to glue roadway
markers into a recess in a roadway, using a bituminous adhesive or 'other
suitable adhesive' in both sun country and snow country." See Final Act. 12
(emphasis added); see also id. at 7. We disagree with the Examiner's
findings for the following reasons.
Pricone discloses:
Pavement markers are specifically designed to be either "snow
country" markers, in which case the base member usually is a
metal member designed to be fitted in a specially cut recess in
the pavement and which is able to withstand the impact of
oncoming snowplow blades ... or "sun country" markers ... In
sun country markers, the base member is typically a molded
plastic housing having cube comer elements forming the
retroreflective signal means, the housing underside being filled
with epoxy; the epoxy-filled housing is adhered to the roadway
surface, such as by means of a bituminous adhesive, epoxy or
other suitable adhesive.
Pricone, col. 1, 11. 23-36 (emphasis added); see also Final Act. 12: Ans. 7;
Appeal Br. 17, note 1.
Appellant correctly points out that "[ w ]hile [Pricone] does mention
the use of bituminous adhesive in connection with 'sun country' ma[r]kers,
it does not teach its use with 'snow country' markers." Appeal Br. 17, note
1. As noted above, Pricone describes the base member of the "snow
country" marker as "a metal member designed to be fitted in a specially cut
recess in the pavement." Pricone, col. 1, 11. 23-26. Figures 3 and 4 of
Pricone, relied on by the Examiner, are illustrative of a "snowplowable
pavement marker" ("snow country" marker) and merely illustrate the
stepped lower surface of base member 40 fitted (embedded) in pavement 20.
See Pricone col. 8, 11. 32--41, Figs. 3, 4; see also Ans. 7. The Examiner does
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Application 12/166,641
not direct us to any discussion in Pricone of the "snowplowable pavement
marker" ("snow country" marker) incorporating an adhesive to join base
member (housing) 40 to pavement 20. See Final Act. 12: see also Ans. 6-7;
Appeal Br. 17, note 1. Consequently, the Examiner fails to establish by a
preponderance of the evidence that Pricone discloses that "it is known to
glue roadway markers into a recess in a roadway, using a bituminous
adhesive or 'other suitable adhesive' in ... snow country." See Final Act.
12 (emphasis added); see also id. at 7. Based on the foregoing, the
Examiner fails to establish that the combined teachings of Rosener, Pricone,
and Crafco render obvious the device of claim 1.
Independent claim 4 7 calls for a device and independent claims 19
and 31 call for methods including limitations similar to those discussed for
claim 1. See Appeal Br. 24, 26-27, and 29-30 Claims App. The Examiner
relies on the same unsupported findings and conclusions for claims 19, 3 1,
and 4 7 as discussed above in claim 1. See Final Act. 6-7. Thus, the
Examiner's findings and conclusions with respect to Rosener, Pricone, and
Crafco are deficient for claims 19, 31, and 4 7 as well.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claims 1, 19, 31, and 4 7 and their
respective dependent claims 17, 18, 20, 32, 33, and 48-50 as unpatentable
over Rosener, Pricone, and Crafco. 6
6 Because the Examiner fails to provide reasons with rational underpinnings
or sufficient evidence to support the combined teachings of Rosen, Pricone,
and Crafco, we do not reach the objective rebuttal evidence of the Paulo
Declaration.
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Application 12/166,641
DECISION
We REVERSE the decision of the Examiner to reject claims 1--4,
6-15, and 17-50.
REVERSED
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