Ex Parte Thomson

Patent Trial and Appeal Board

Jul 5, 2018

14171772 (P.T.A.B. Jul. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/171,772 02/03/2014
104982 7590 07/09/2018
Waller Lansden Dortch & Davis, LLP
511 Union Street
Suite 2700
Nashville, TN 37219
FIRST NAMED INVENTOR
Matt Thomson
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.
020301.51000 2162
EXAMINER
W ALRAED-SULLIV AN, KYLE
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
07 /09/2018 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):
patentdocket@wallerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATT THOMSON
Appeal2016-004581
Application 14/171,772
Technology Center 3600 1
Before EDWARD A. BROWN, ARTHUR M. PESLAK, and
SEAN P. O'HANLON, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Matt Thompson ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-12. An oral hearing pursuant to
37 C.F.R. § 41.47 was held on June 28, 2018. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Matt Thompson.
Appeal Br. 2.
Appeal2016-004581
Application 14/171,772
THE CLAIMED SUBJECT MATTER
Appellant's invention is directed "to structures for storing items such
as equipment, materials, and/or people." Spec. i-f 3. Claims 1 and 6 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. A concrete storage facility comprising:
a first pre-stressed concrete side panel having a first
upright edge and a first panel flange extending substantially
perpendicularly from the first upright edge of the first side panel;
a second pre-stressed concrete side panel positioned
opposite the first pre-stressed concrete side panel, the second side
panel having a second upright edge and a second panel flange
extending from the second upright edge, the second panel flange
extending toward the first panel flange;
a first angle bracket on the first side panel, the first angle
bracket including a first bracket flange protruding from the first
angle bracket substantially parallel to the first panel flange;
a first flange gap between the first bracket flange and the
first panel flange;
a second angle bracket on the second side panel, the
second angle bracket including a second bracket flange
protruding from the second angle bracket substantially parallel
to the second panel flange;
a second flange gap between the second bracket flange and
the second panel flange; and
a pre-stressed concrete door having a first upright door
edge slidably disposed in the first flange gap and a second
upright door edge slidably disposed in the second flange gap,
wherein the pre-stressed concrete door is configured to be
lifted upwardly relative to the first and second side panels to open
the door.
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Application 14/171,772
REJECTIONS 2
1) Claims 1-8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Joern (US 1,511,613, issued Oct. 14, 1924), Graboyes (US
2007/0277458 Al, published Dec. 6, 2007), and Rodgers (US
4,120,133, issued Oct. 17, 1978).
2) Claims 9-12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Joern, Graboyes, Rodgers, and Pellegrene (US 7,963,073 Bl,
issued June 21, 2011).
DISCUSSION
Rejection 1
The Examiner finds that Joern discloses a concrete storage facility as
recited in claim 1 except it "fails to disclose the door as concrete and fails to
disclose wherein the concrete panels are pre-stressed." Final Act. 3--4. The
Examiner finds that "Graboyes discloses a door made of concrete." Id. at 5
(citing Grabo yes, Fig. 1, i-f 6). The Examiner reasons that it would have been
obvious to modify the metal door 23 of Joern "to be made of concrete in
order to increase structural durability, strength or to achieve a certain level
of fireproofing." Id. The Examiner further finds that Rodgers discloses
concrete panels that are pre-stressed. Id. The Examiner concludes that it
would have been obvious "to modify the concrete panels of Joern with the
pre-stressed concrete panels of Rodgers et al in order to control cracking,
allow for use of a lighter or more slender panel, or to lower construction
costs." Id.
2 The Examiner withdrew a rejection of claim 7 as indefinite under
35 U.S.C. § 112, second paragraph. Ans. 2; Final Act. 2.
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Application 14/171,772
Appellant first contends that the Examiner has not considered the
disclosure of Graboyes as a whole and, when properly considered, Grabo yes
teaches away from the claimed invention. Appeal Br. 7-11. In support of
this contention, Appellant argues that "the only place where concrete is
mentioned anywhere in Graboyes is the Background section where Graboyes
identifies the problems associated with concrete as a door material - stating
that concrete is not a good solution for a moveable door due to its weight."
Id. at 7 (citing Graboyes, i-fi-1 6-7). Appellant then argues that Graboyes
"clearly criticizes, discredits, or otherwise discourages the use of concrete as
a material for a door" when it "states ... that known fireproof doors made of
concrete 'can be so heavy in weight that they can be opened and closed only
with extreme effort.'" Id. at 9 (citing Graboyes, i1 7). The Examiner
responds that Graboyes discloses a concrete door in paragraph 6 "and
notably states that use of a concrete door is beneficial as it is a
nonflammable material," and that"[ c ]oncrete as a door material is very well
known." Ans. 4. Further, the Examiner notes that "Graboyes merely states
that use of a nonflammable material such as concrete 'becomes heavy and is
not conducive to a decorative environment' (emphasis added)." Id. at 5.
"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." DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citation
omitted). A reference does not teach away "if it merely expresses a general
preference for an alternative invention but does not 'criticize, discredit, or
otherwise discourage' investigation into the invention claimed." Id. at 1327
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Application 14/171,772
(citation omitted). In this case, Graboyes discloses that doors made of
concrete were known in the art and states that "[i]f the door is made of a
nonflammable material, such as metal or concrete . ... it becomes heavy."
Grabo yes i-f 6 (emphasis added). Grabo yes does not state that "concrete is
not a good solution for a moveable door due to its weight" as Appellant
asserts. Appeal Br. 7. Graboyes discloses that "as with most doors, there is
always a compromise in door thickness, materials, and overall weight." Id.
Considering the overall disclosure in Graboyes also including the positive
aspects of a concrete door, Appellant does not adequately explain why
Grabo yes' reference to concrete doors either discredits or discourages one of
ordinary skill in the art from investigating the use of a concrete door.
Graboyes, at most, merely expresses a preference for materials other than
concrete for decorative environments. We, thus, are not persuaded that
Graboyes teaches away from the claimed invention. See Allied Erecting v.
Genesis Attachments, 825 F.3d 1373, 1389 (Fed. Cir. 2016) ("[a] given
course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate motivation to combine") (citations
omitted).
Appellant next contends that "the prior art is still devoid of any
suggestion, teaching, or motivation that it is desirable to lift a concrete door
upwardly." Appeal Br. 12. The Examiner responds that the prior art may
not disclose "a concrete door that is configured to be lifted upwardly in a
single reference," but Joern "discloses a door that is configured to be lifted
upwardly [and] Graboyes discloses a concrete door." Ans. 6; Final Act. 4.
Appellant does not dispute these findings by the Examiner. Rather,
Appellant's argument amounts to an attack on the references individually
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Application 14/171,772
while the rejection is based on the combined teachings of Joern and
Grabo yes and, thus, does not apprise us of Examiner error. See In re Keller,
642 F.2d 413, 425 (CCPA 1981) (One cannot show nonobviousenss by
attacking references individually when the rejection is based on a
combination of references.).
Appellant next contends that modifying Joern to include a concrete
door would render Joern unsatisfactory for its intended purpose. Appeal Br.
15. Appellant argues that Joern discloses that its sliding doors "must be easy
to operate, i.e., 'be readily shifted to open position' such that 'the contents of
the container may be readily drawn out through the front door."' Id. (citing
Joern, p. 2, 11. 39--40). Appellant then argues that because Graboyes teaches
that concrete doors "may be operated 'only with extreme effort,' ... if Joern
were modified with a concrete door, the door would be operated 'only with
extreme effort' which would obviate the intent of Joern to provide a
container which may be 'readily emptied' and to provide a door that is
'readily shifted to open position."' Id. at 15-16. The Examiner responds
that Joern' s door "as modified to be made of the concrete of Grabo yes, is
still operable to be vertically lifted, regardless of weight, while displaying
qualities such as high strength, durability, and flame resistance" and the
modification "does not render Joern unsatisfactory for its intended purpose."
Ans. 10.
If a proposed modification would render the prior art unsatisfactory
for its intended purpose, then the modification is not "obvious unless the
prior art suggested the desirability of the modification." In re Gordon, 733
F. 2d 900, 902 (Fed. Cir. 1984). In Gordon, the claims were directed to a
blood filter assembly and were rejected based on a prior art reference to a
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Application 14/171,772
strainer for removing dirt and water from gasoline. Id. at 901. The rejection
was premised on turning the prior art apparatus upside down. Id. at 902.
The Federal Circuit noted that the prior art apparatus "would be rendered
inoperable for its intended purpose" if turned upside down and reversed the
rejection. Id. In this case, Appellant does not argue that Joern's door would
no longer be able to function as a vertically operable door if concrete were
substituted for metal as the material of the door, but rather argues that it
would require extreme effort to operate the as-modified door. This
argument is not persuasive for two reasons. First, it is based on speculation
because Joern does not disclose or suggest the weight of its metal door or
limit the amount of effort required to operate the metal door. Accordingly,
Appellant has not provided any persuasive argument or evidence to show
that making Joern's door from concrete rather than metal would necessarily
result in the as-modified door requiring extreme effort to operate. Second,
the rejection is not based on the bodily incorporation of the prior art concrete
doors disclosed in Graboyes into Joern's structure. See In re Nievelt, 482
F.2d 965, 968 (CCPA 1973) ("Combining the teachings of references does
not involve an ability to combine their specific structures."). Rather, the
Examiner's proposed modification merely substitutes one door material
(concrete) for another (metal) in Joern. Appellant's contention, thus, does
not apprise us of Examiner error.
Appellant next contends that neither Rodgers nor any other cited
reference teaches a door or a side panel made from pre-stressed concrete.
Appeal Br. 16. Appellant admits that Rodgers discloses pre-stressed
concrete panels. Id. at 17 (citing Rodgers, 3:54--55). Appellant then argues
that Rodgers also "discloses panel sections that are made of post-tensioned
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concrete, not pre-stressed concrete." Id. The Examiner responds that while
"[t]he prior art may be devoid of a teaching of a pre-stressed concrete panel
or door in a single reference," the rejection is based on the combined
teachings of Joern, Graboyes, and Rodgers. Ans. 10. The Examiner also
notes that "Rodgers clearly discloses pre-stressed concrete." Id. at 12; Final
Act. 5. Appellant's contention is not persuasive because it is based on an
attack on the references individually while the rejection is based on the
combined teachings of J oem, Grabo yes, and Rodgers.
We have considered all of Appellant's arguments and are not
persuaded of Examiner error in the rejection of claim 1, and, therefore, we
sustain this rejection. Appellant does not provide separate argument for the
patentability of any one of claims 2-5, which depend from claim 1. Appeal
Br. 19. We, thus, sustain the rejection of claims 2-5 for the same reasons.
With respect to independent claim 6 and claims 7 and 8, which depend from
claim 6, Appellant relies on the same arguments as for claim 1. Id. We,
thus, also sustain the rejection of claims 6-8.
Rejection 2
Claims 9-12 depend directly or indirectly from claim 6. Appeal Br.
23 (Claims App.). For these dependent claims, Appellant relies on the same
arguments as for claim 6. Id. at 20. We, thus, sustain the rejection of claims
9-12 for the same reasons stated above.
DECISION
The Examiner's decision rejecting claims 1-12 is affirmed.
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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)(l )(iv).
AFFIRMED
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