Ex Parte Turner

Patent Trial and Appeal Board

Oct 31, 2014

12411671 (P.T.A.B. Oct. 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 BARRY S. TURNER
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Appeal 2012-006424
Application 12/411,671
Technology Center 3600
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Before JENNIFER D. BAHR, JOHN C. KERINS, and
THOMAS F. SMEGAL, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Barry S. Turner (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s final rejection of claims 2–15, the only claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2012-006424
Application 12/411,671

2
THE INVENTION
Appellant’s invention is directed to a car wash conveyor dolly.
Independent claim 2, reproduced below, is illustrative:
2. A car wash conveyor dolly adapted to move along and
in rolling relation to a conveyor track comprising:

an axle;

at least one pair of cylindrical stainless steel journals
mounted on said axle and having external bearing surfaces;

at least one pair of rollers mounted on said journal
surfaces for rotation relative thereto, wherein said journals
exhibit a surface structure produced by nitrocarburizing and
polishing prior to assembly; and

wherein the rollers are polymeric.

THE REJECTIONS
The Examiner has rejected:
(i) claims 2–7 under 35 U.S.C. § 103(a) as being unpatentable over
Belanger (US 7,243,605 B1, issued July 17, 2007) in view of Wahl (US
5,735,971, issued Apr. 7, 1998) and Reitsch (US 6,186,073 B1, issued Feb.
13, 2001); and
(ii) claims 8–15 under 35 U.S.C. § 103(a) as being unpatentable over
Belanger in view of Wahl, Kunst (US 4,292,094, issued Sept. 29, 1981),
Cowan (US H1512, published Jan. 2, 1996) and Reitsch.
The Examiner has withdrawn, on appeal, a rejection of claims 1, 11,
12, 14, and 15 under 35 U.S.C. § 103(a) as being unpatentable over Belanger
and Wahl. Ans. 4, 5.
Appeal 2012-006424
Application 12/411,671

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ANALYSIS
Claims 2–7--Obviousness--Belanger/Wahl/Reitsch
The Examiner finds that Belanger discloses a car wash conveyor dolly
having an axle, journals, and rollers, as claimed, but does not disclose the
types of materials used to make the journals (stainless steel, with a
nitrocarburized and polished surface) and rollers (polymeric). Ans. 5. The
Examiner maintains that nitrocarburized, case-hardened stainless steel is a
well-known material, as evidenced in Wahl, and that it would have been
obvious to make the journals in Belanger, which the Examiner characterizes
as being subjected to high wear and a highly corrosive environment, from a
nitrocarburized case-hardened stainless steel, so as to prolong the service life
of the components. Id. at 5–6. The Examiner further asserts that it would
have been obvious to polish these stainless steel journals “so as to clean
and/or to shine the parts for improved appearance and/or smooth operation.”
Id. at 6.
The Examiner additionally turns to Reitsch as teaching the use of
polymeric rollers on car wash conveyor dollies, and maintains that it would
have been obvious to use the same on the Belanger dolly, to obtain the
“expected advantages of the known or commercially available plastic, such
as lighter weight, good flexibility, and [high] corrosion resistance and
durab[ility].” Ans. 6.
Appellant argues that the Examiner has made two different
obviousness determinations, neither of which considers the invention as a
whole. Appeal Br. 12. Appellant posits that the Examiner has not shown
that a person of ordinary skill in the art would have found it obvious to
Appeal 2012-006424
Application 12/411,671

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perform a nitrocarburizing heat treatment on a stainless steel journal
knowing that the journal would be interfaced with a plastic roller. Id.
In this regard, the two separate proposed modifications amount to the
use of impermissible hindsight reconstruction in piecing together portions of
individual references in order to come up with a structure meeting the
limitations of claim 2. The Examiner states that the reason to nitrocarburize
the proposed stainless steel journal to be used in Belanger is to prolong the
service life of the journal, because the journal will be subject to high wear
and will be placed in a highly corrosive environment. Ans. 5–6. However,
the Examiner has failed to address whether, with the further proposed
modification to employ a presumably relatively softer polymeric roller on
the journal, the journal truly would be subject to high wear. Instead, wear
occurring as a result of the two materials being in frictional engagement
would appear to most likely occur on the roller and not the journal.
Similarly, if foreign objects are encountered between the journal and roller,
it would appear that the polymeric roller would bear the brunt of any wear
that might occur. Further, it does not appear that the Examiner has
considered whether a case-hardened stainless steel might, simply by having
an increased surface hardness, accelerate the wear on the polymer roller
moving thereabout. As far as the structure being employed in a highly
corrosive environment, the Examiner has cited to no evidence that
nitrocarburizing a stainless steel bearing would enhance its corrosion
resistance in any particular environment.
As such, the Examiner’s reasons to make the two proposed
modifications lack the necessary rational underpinnings and are a product of
hindsight reconstruction. Accordingly, we do not sustain the rejection of
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Application 12/411,671

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claim 2 as being unpatentable over Belanger, Wahl, and Reitsch. Claims 3–
7 either depend from claim 2, or contain at least the same limitations as are
found in claim 2, and the same rejection of those claims is also not
sustained.
Claims 8–15--Obviousness--Belanger/Wahl/Kunst/Cowan/Reitsch
Claims 8–15 contain the same limitations as does claim 2 with respect
to providing a nitrocarburized stainless steel bearing and a polymeric roller
thereon. The Examiner does not rely on Kunst or Cowan to remedy the
above-noted deficiencies in the proposed combination of Belanger, Wahl,
and Reitsch. The rejection of claims 8–15 is thus not sustained for the
reasons identified above.

DECISION
The rejection of claims 2–7 as being unpatentable over Belanger,
Wahl, and Reitsch is reversed.
The rejection of claims 8–15 as being unpatentable over Belanger,
Wahl, Kunst, Cowan, and Reitsch is reversed.

REVERSED

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