Ex Parte Sten et al

Patent Trial and Appeal Board

Dec 17, 2013

12099966 (P.T.A.B. Dec. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ODED STEN and KURT G. CONTI
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Appeal 2012-002350
Application 12/099,966
Technology Center 3600
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Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
BEVERLY M. BUNTING, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Oded Sten and Kurt G. Conti (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting under 35 U.S.C. § 102(b)
claims 1-3 and 8-10 as anticipated by McConville (US 5,048,640, issued
Sep. 17, 1991) and under 35 U.S.C. § 103(a) claims 3-8 and 10-20 as
unpatentable over McConville. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).

INVENTION
Appellants’ invention relates to “temporary work platforms and debris
collection/prevention system installed under bridges.” Spec. 1, para. [0002].
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A removable debris catching and support structure
for attachment underneath a bridge comprising:
one or more pre-assembled modules wherein each
module comprises an underlying grid and one or more panels
attached to the top of the underlying grid; and
vertical supports connected to the perimeter of the one or
more modules for suspending the one or more modules from
the underside of a bridge, wherein the vertical support are of
sufficient height to allow a worker to move more freely under
the bridge when suspended from the bridge.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
The anticipation rejection based upon McConville
Appellants have not presented arguments for the patentability of
claims 2, 3, and 8-10 apart from claim 1. See Br. 6-11. Therefore, in
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accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2, 3, and 8-10 standing or falling with claim 1.
Appellants argue that McConville fails to teach (1) “one or more pre-
assembled modules” (see Br. 8-9); (2) “vertical supports connected to the
perimeter of the one or more modules for suspending the one or more
modules from the underside of a bridge” (see Br. 10); and (3) “vertical
supports that are of sufficient height to allow a worker to move more freely
under the bridge when suspended from the bridge” (see Br. 11). However,
to the extent that Appellants’ arguments are directed specifically to Figure 1
of McConville, they are, as noted by the Examiner, not commensurate with
the Examiner’s rejection. Ans. 9 (“[Applicants’] arguments are directed to
the wrong embodiment.”) That is, the Examiner relied on the embodiment
of Figure 2 of McConville to reject claim 1 as anticipated by McConville,
while Appellants’ arguments are directed towards the embodiment of Figure
1. For example, Appellants argue that “McConville does not disclose, ‘one
or more pre-assembled module,’ because “McConville is not a modular
platform but must be assembled on site, between the work site beams on
which it will rest.” Br. 9. Such argument appears to be drawn to the
embodiment of Figure 1, which shows placing platform module 22 onto
frame assembly 18. However, the embodiment of Figure 2, which the
Examiner relied on, describes platform module 86, 92 suspended in its final
position, which denotes that it “must be assembled prior to being capable of
supporting the worker (12).” Ans. 7. Furthermore, although Appellants
refer to suspension members 84, which the Examiner interpreted as the
claimed vertical supports,” nonetheless, Appellants refer once more to the
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embodiment of Figure 1 when interpreting “transverse frame member 20” as
the perimeter of the structure to which the vertical supports are connected.
See Br. 10. In conclusion, we agree with the Examiner that the limitations
recited above are shown in Figure 2 of McConville, which specifically
teaches:
1) the one or more pre-assembled modules,
which corresponds to a grid (support beams 92)
and panels (deck 86);
2) vertical supports (84) connected to the
perimeter (via 106) of the modules for suspending
the modules (86, 92) from the underside of a
bridge (column 1, lines 7-10); and
3) wherein the vertical supports (84) are of
sufficient height to allow a worker (12) to move
more freely under the bridge when suspended by
the bridge (Figure 2).
Ans. 6.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 1, with claims 2, 3, and 8-10 falling with claim 1, as anticipated by
McConville.

The obviousness rejection based upon McConville
Appellants have not presented arguments for the patentability of
claims 3-8, 10, 11, and 14-20 apart from claim 12. See Br. 6-11. Therefore,
we select claim 12 as the representative claim to decide the appeal of the
rejection of these claims, with claims 3-8, 10, 11, and 14-20 standing or
falling with claim 12. In view of Appellants’ arguments, we will address the
rejection of claim 13 separately.

Claims 3-8, 10-12, and 14-20
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The Examiner concluded that because McConville discloses the
claimed structure, “it would have been obvious to one of ordinary skill in the
art at the time the invention was made to have performed the process steps in
order to have obtained the structure shown in Figure 2.” Ans. 10.
In response, Appellants argue that because “the structure recited in the
steps of claim 12 is different from the structure discloses in McConville for
the reasons discussed above for Claim 1,” the steps of independent claim 12
“cannot be performed with the structure of McConville.” Br. 12.
Thus, Appellants’ arguments are similar to the arguments set forth
supra with respect to the rejection of claim 1. See Br. 11-13. However, for
the same reasons, we are not persuaded. Moreover, although we appreciate
that platform module 86, 92 is not fixedly secured to the underside of the
bridge, independent claim 12 does not require a fixed connection, but merely
that it be secured to the underside of the bridge. It is well established that
limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). In this case,
we agree with the Examiner that, “McConville meets the recitation of
‘securing’ since the platform module [86, 92] would simply fall if it was
unsecured.” Ans. 10.
We thus sustain the rejection of claim 12, with claims 3-8, 10, 11, and
14-20 falling with claim 12, as unpatentable over McConville.

Claim 13
Appellants specifically argue that “[t]he McConville structure is on
rollers” and a person of ordinary skill in the art “would not attach two or
more structures that are on rollers,” as called for by claim 13. Br. 14. We
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are not persuaded, because we agree with the Examiner that since
McConville’s “platform (18, 20) is attached to the underside of the bridge,”
this platform reasonably constitutes the claimed “platform previously
attached to the underside of the bridge.” Ans. 10. Claim 13 does not require
attaching a platform module to another platform module, as Appellants
appear to argue, but rather, attaching a platform module to a “platform
previously attached to the underside of the bridge.” As such, we likewise
sustain the rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable
over McConville.

SUMMARY
The Examiner’s decision to reject claims 1-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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