Ex Parte Ruland et al

Patent Trial and Appeal Board

Jul 31, 2014

12317319 (P.T.A.B. Jul. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RODD R. RULAND and JERRY L. HECKMAN
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Appeal 2012-005723
Application 12/317,319
Technology Center 3600
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Before: JOHN C. KERINS, THOMAS F. SMEGAL and
BRANDON J. WARNER, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Rodd R. Ruland and Jerry L. Heckman (Appellants) seek our review
under 35 U.S.C. § 134 of the final rejection of claims 1–19. Appeal Br. 2.
Claims 20 and 21 were previously canceled. Id. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2012-005723
Application 12/317,319

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THE INVENTION
Appellants’ invention is directed to a raised flooring system. Claims 1
and 11 are independent. Claim 1 is illustrative and is reproduced below.
1. A raised floor pedestal comprising:

a base configured to sit on a floor; and

a post extending up from the base, wherein the
post comprises a metal member having a general
tube shape, wherein a top of the post forms a
support surface configured to support a portion of
a raised floor system thereon, wherein a side of the
post comprises an integrally formed ground
conductor connector piece extending therefrom,
and wherein the ground conductor connector piece
is configured to have an electrical ground
conductor electrically connected directly thereto.

THE REJECTIONS
Claims 1–3, 5–13, and 15–19 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Jakob-Bamberg (US 2003/0177723 A1, published
Sept. 25, 2003) in view of Rose (US 6,061,984, issued May 16, 2000).1
Claims 4, 5, and 14 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Jakob-Bamberg in view of Rose and Harrah (US 846,202,
issued Mar. 5, 1907).

1 The Final Office Action dated May 9, 2011, Appeal Brief, and Examiner’s
Answer list claims 1–3, 5–8, 10–13, and 15–19 as being subject to this
rejection, omitting reference to claim 9. The Examiner’s detailed grounds of
rejection over Jakob-Bamberg and Rose, however, includes findings and a
conclusion of obviousness for claim 9 as well. Answer 7. Accordingly, we
will treat claim 9 as being subject to this rejection.
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ANALYSIS
Claims 1–3, 5–13, and 15–19--§ 103(a)--Jakob-Bamberg/Rose
Appellants argue claims 1 and 6–10 as a group, and present separate
arguments for patentability directed to claims 2, 3, and 5, which depend
from claim 1. Appeal Br. 4–9. We will take claim 1 as being representative
of the grouped claims, and will separately address claims 2, 3, and 5.
Appellants present arguments for independent claim 11 under a separate
heading, and indicate that claims 16-19 stand or fall with claim 11, with
claims 12, 13, and 15 being separately argued. Id. at 9–13. We will take
claim 11 as representative of the grouped claims, and will separately address
claims 12, 13, and 15.
Claims 1 and 6–10
The Examiner finds that Jakob-Bamberg discloses a raised floor
pedestal meeting all limitations set forth in claim 1, including a base 57 and
a post 58, as well as an “integrally formed” ground conductor connector
piece 87, except that the ground conductor connector piece is disposed on
base 57, and not on a side of post 58. Answer 4–5. The Examiner cites to
Rose as disclosing a raised floor pedestal post 12 having a conductor
connector piece, element 112 in Figure 7 of Rose, extending from a side of
the post. Id. at 5. The Examiner concludes that it would have been obvious
to one ordinary skill in the art at the time the invention was made “to extend
the integral conductor connector piece of Jakob-Bamberg . . . from the side
of the post as taught by Rose to further organize the electrical ground
conductors and provide more pathways for the conductors.” Id. In response
to certain of Appellants’ arguments, the Examiner clarifies that Jakob-
Bamberg discloses that the connector piece is “integrally connected,” and
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that Rose is relied upon only for its disclosure of positioning and/or
orientation of a connector piece on a post. Answer 7–8.
Appellants maintain that the combination of Jakob-Bamberg and Rose
is improper because Rose teaches that the connectors are reconfigurable and
therefore teaches away from providing an integral conductor connector on
the post of Jakob-Bamberg. Appeal Br. 4–5. Appellants additionally argue
that reliance on Rose only as teaching the positioning of a conductor
connector on a vertical post violates the principle that a prior art reference
must be considered as a whole, including portions of the reference that teach
away from the claimed invention. Reply Br. 2–3, citing Section 2141.02(VI)
of the Manual of Patent Examining Procedure.
A reference will teach away when it suggests that the developments
flowing from its disclosures are unlikely to produce the objective of the
applicant’s invention. A statement that a particular combination is not a
preferred embodiment does not teach away absent clear discouragement of
that combination. See Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371,
1380 (Fed. Cir. 2005) (internal citations omitted). Here, Appellants have not
shown how the disclosure in Rose is indicative that the combination
proposed by the Examiner is unlikely to produce the objective of retaining
grounding cables or conductors to the vertical post of the claimed pedestal,
and therefore Appellants’ arguments that Rose teaches away from the
combination proposed by the Examiner are unpersuasive.
We are further not persuaded that the Examiner failed to consider
Rose as a whole. Appellants maintain that the Examiner indicates that “it is
irrelevant that Rose teaches away from an integral clip.” Reply Br. 2. The
Examiner made no such statement. Rather, the Examiner stated that,
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“[w]hether Rose discloses an integrally formed ground conductor connection
piece or not is irrelevant since Jakob-Bamberg . . . teaches this.” Answer 7–
8. This is not indicative that the Examiner has ignored the disclosure in
Rose that the connectors are to be reconfigurable, but rather that Rose
teaches more than one advantage that can be attained in its system. In other
words, the Examiner relies on some, but not all, of the potential benefits
resulting from the teaching in Rose that connectors may be provided on the
vertical posts of raised floor pedestals. Our reviewing court has recognized
that 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 further take issue with the Examiner’s use of the term
“integrally connected,” asserting that this term does not mean the same thing
as the term “integrally formed” used in claim 1. Appeal Br. 6. The
Examiner finds that Jakob-Bamberg discloses “an integrally formed [0081]
ground conductor connector piece (87)” extending from a base. Answer 5.
Appellants not only do not take issue with this finding, they acknowledge
that, in Jakob-Bamberg, “the grounding feature 87 is integrally and
monolithically formed on the base member.” Appeal Br. 5, citing to Jakob-
Bamberg, para. 81. Accordingly, we are not apprised of error in the
Examiner’s finding relative to the Jakob-Bamberg disclosure in this regard.
Appellants further argue that, even if it would have been obvious to
combine the teachings of Jakob-Bamberg and Rose, the result of the
combination would be a modification to the Jakob-Bamberg pedestal to
include the C-channel and adjustable or reconfigurable connector of Rose,
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which structure would not meet the claim limitation requiring an integrally
formed conductor connector piece. Appeal Br. 6. Appellants do not,
however, challenge the articulated reason for making the combination
presented by the Examiner on the basis that it is lacking in rational
underpinnings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(obviousness rejections must be supported by articulated reasoning with
some rational underpinning), cited with approval in KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). We further note that a person of ordinary
skill in the art is not compelled to blindly follow the teaching of one prior art
reference over the other without the exercise of independent judgment. See
Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
Rose teaches reconfigurable connector pieces, whereas Jakob-Bamberg
teaches integrally-formed connector pieces. There is no requirement that
specific structure of one cited reference be bodily incorporated into another
cited reference; moreover, the Examiner stated here that Rose is only relied
on for teaching positioning and/or orientation, as discussed supra.
The rejection of claim 1 is sustained. Claims 6–10 fall with claim 1.
Claims 2, 3, and 5
The Examiner cites to certain aspect of the connectors in Rose as
meeting the limitations set forth in claims 2 and 3. Answer 5. The rejection
of these claims is flawed. First, the Examiner does not explain why a person
of ordinary skill in the art would rely on Rose solely for the positioning
and/or orientation of a conductor connector piece, on the one hand (as was
the Examiner’s position with respect to claim 1), whereas, on the other hand,
the person of ordinary skill in the art would have looked to Rose for
particular structural details of the conductor connector piece. Second, the
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Examiner does not articulate any reason as to why it would have been
obvious to modify the conductor connector piece disclosed in Jakob-
Bamberg, in light of the Rose disclosure.
The rejection of claims 2 and 3 is not sustained.
For this rejection of claim 5, the Examiner notes that “the combination
of Jakob-Bamberg . . . does not disclose that the clip is an outwardly
stamped portion of the metal member, however the clips of the prior art and
the present invention are functional equivalents,” and therefore it would
have been obvious “to make the clip in any known manner.” Answer 6.
Although claim 5 does not specifically require a clip, and although the
articulated reasoning presented by the Examiner appears to omit reference to
the Rose patent, it appears that the Examiner bases this rejection on the
alleged obviousness of using a clip as generally disclosed in Rose, followed
by the assertion that a stamped portion of the post is a functional equivalent
to the Rose clip. We find the Examiner’s assertion as to functional
equivalency of the structures to be conclusory and not supported by any
specific evidence on the record as to how the structures would be seen as
equivalents to a person of ordinary skill in the art.
This rejection of claim 5 is not sustained.
Claims 11 and 16–19
Although the arguments directed to independent claim 11 are
presented separately from the arguments directed to independent claim 1, the
arguments are essentially identical. See Appeal Br. 4-7, 9-11. For the
reasons discussed above directed to claim 1, the arguments do not apprise us
of error in the Examiner’s rejection of claim 11.
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The rejection of claim 11 is sustained. Claims 16–19 fall with claim
11.
Claims 12, 13, and 15
Claims 12 and 13 parallel claims 2 and 3, but depend directly or
indirectly from claim 11 instead of claim 1. The rejection of these claims is
the same as that for claims 2 and 3, and is not sustained for the reasons set
forth above for claims 2 and 3.
Claim 15 parallels claim 5, but depends from claim 11 instead of
claim 1. The rejection of claim 5 is not sustained for the same reasons
presented above with respect to claim 5.

Claims 4, 5, and 14--§ 103(a)--Jakob-Bamberg/Rose/Harrah
Claims 4 and 14 depend from claims 2 and 12, respectively. The
Examiner does not rely on Harrah to remedy the deficiencies noted above
with respect to the rejection of claims 2 and 12. The rejection of claims 4
and 14 is thus not sustained.
For this rejection of claim 5, the Examiner relies on Harrah as
teaching a connector piece comprising a spring clip that is outwardly
stamped on a side of a post, but does not rely on Harrah as evidencing
functional equivalency between a clip as generally disclosed in Rose and
those of the present invention, as discussed in detail above. As such, Harrah
is not relied on as remedying the deficiencies in the combination of Jakob-
Bamberg and Rose noted above. Accordingly this rejection of claim 5 is
also not sustained.

Appeal 2012-005723
Application 12/317,319

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DECISION
The rejection of claims 1, 6–11, and 16–19 as being unpatentable over
Jakob-Bamberg and Rose is AFFIRMED.
The rejection of claims 2, 3, 5, 12, 13, and 15 as being unpatentable
over Jakob-Bamberg and Rose is REVERSED.
The rejection of claims 4, 5, and 14 as being unpatentable over Jakob-
Bamberg, Rose, and Harrah is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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