Ex Parte Van Laecken

Patent Trial and Appeal Board

Jul 19, 2018

12948438 (P.T.A.B. Jul. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/948,438 11/17/2010
44088 7590
Kaufhold Dix Patent Law
P. 0. BOX 89626
SIOUX FALLS, SD 57109
07/23/2018
FIRST NAMED INVENTOR
Chad Wyman Van Laecken
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.
BBD1132 3846
EXAMINER
MISA,JOAND
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
07/23/2018 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):
j ason@kaufboldlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHAD WYMAN VAN LAECKEN
Appeal2017-010294
Application 12/948,438
Technology Center 3600
Before: DANIELS. SONG, LISA M. GUIJT, and NATHAN A. ENGELS,
Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
Final Office Action (hereinafter also "Final Act.") rejecting claims 1, 3-12,
14, 16, and 18-20 in the present application (Appeal Brief (hereinafter
"App. Br.") 2). 1 We have jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We AFFIRM.
1 The Appeal Brief states that claims 3, 7, 8, and 14 have been canceled but
this statement appears to be in err in view of the Summary of the Claimed
Subject Matter and inclusion of these claims in the Claims Appendix (App.
Br. 2-5, Claims App'x).
Appeal2017-010294
Application 12/948,438
The claimed invention is directed to a snow removal device
(Abstract). Independent claim 1 illustrative of the invention reads as follows
(App. Br. 9, Claims App'x):
1. A snow removal attachment device used in combination
with a piece of snow removal equipment, comprising:
a rubberized pushing tool that is disposed in front of said
snow removal attachment device that pushes and moves snow
while being used in combination with said snow removal
equipment, said rubberized pushing tool being made from a
recycled tire section such that a cross-sectional shape of said
recycled tire section taken radially with respect to a center of a
tire from which the recycled tire section is derived is
substantially U-shaped wherein a sidewall portion of said
recycled tire section is positioned to define a planar bottom
surface of said rubberized pushing tool extending from a
concavely arcuate medial section of said recycled tire section;
a mounting and quick release support bracket that
removably mounts and secures said rubberized pushing tool to
said snow removal equipment; and
a plurality of fasteners and a quick release plate attaches
said mounting and support bracket to said snow removal
equipment.
Independent claim 6 is substantively the same as claim 1 except that
claim 6 is directed to a silage moving attachment device (App. Br. 10-11,
Claims App'x). Independent claim 12 is a method of using a rubberized
snow removal or rubberized silage moving attachment of claims 1 or 6 (App.
Br. 11-12, Claims App'x).
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Application 12/948,438
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv); In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010
(precedential)).
Objections to the Specification
In the Final Office Action, the Examiner objects to the Specification
of the present application, finding that because it does not disclose the terms
"cross-sectional shape," "U-shaped," "a sidewall portion," "a planar bottom
surface," and "a concavely arcuate medial section" recited in independent
claims 1, 6, and 12, proper antecedent bases are not provided for these terms
(Final Act. 2). The Appellant argues that such features are disclosed in the
various figures, which form part of the disclosure, and that "it is assumed
amendment to the specification may be made in the event the substantive
grounds for rejection are successfully overcome." (App. Br. 6). The
Appellant does not seek any particular action by the Board, and as the
Examiner correctly notes, "specification objections are not an appealable
matter." (Ans. 2). Accordingly, this issue is not properly before us for
review. In re Watkinson, 900 F.2d 230, 233 (Fed. Cir. 1990) (explaining
that the Board has no jurisdiction for matters within the discretion of the
Examiner and not tantamount to a rejection of claims).
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Appeal2017-010294
Application 12/948,438
Obviousness Rejection
The Examiner rejects claims 1, 3-12, 14, 16, and 18-20 under 35
U.S.C. § 103(a) as obvious over the combination of Mensch (US 4,819,349,
iss. Apr. 11, 1989) in view of Church (US 281,752, iss. July 24, 1883) or
Munson (US 1,671,836, iss. May 29, 1928) (Final Act. 2).
The Appellant argues the independent claims collectively. Therefore,
we select independent claim 1 as representative, with independent claims 6
and 12 standing or falling with claim 1. In addition, the Appellant relies on
dependency on one of the independent claims for the patentability of the
rejected dependent claims (App. Br. 8). Accordingly, the dependent claims
also stand or fall with their corresponding independent claims from which
they depend.
As to independent claim 1, the Examiner finds that Mensch discloses
each of the recited limitations except that in Mensch, the tire section has "a
I-shaped instead of a U-shaped cross-sectional shape." (Final Act. 3). To
remedy this deficiency, the Examiner further finds that:
Both Church and Munson teach that it is old and well
known in the snow removing art for a snow removal or snow
plow (L2 of Church or 10 of Munson) to have a U-shaped
cross-sectional shape, with a planar bottom surface, in order to
better scoop and collect snow.
(Final Act. 3).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to:
modify the I-shaped cross sectional of the recycled tire section
of Mensch to replicate the shape of an actual snow plow, which
has a U-shaped cross sectional shape and a planar bottom
surface, as taught by both Church and Munson since designing
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Appeal2017-010294
Application 12/948,438
a snow removal device to have a U-shaped cross sectional
shape is old and well known in the snow removal art in order to
improve its function of scooping, collecting, and removing of
snow and/or silage.
Due to the combination of Mensch and Church or
Munson, a sidewall portion of said recycled tire section will
define the planar bottom surface and extend from a concavely
arcuate medial section of the tire section.
(Final Act. 3--4).
Initially, in an apparent reference to the Advisory Action dated
November 10, 2015, in which the Examiner declined to enter an amendment
submitted after the Final Office Action, the Appellant states that it "is unsure
how the proposed amendments in the response to the final office action
would not have simplified the issues for appeal." (App. Br. 7). However,
similar to the above noted objection to the Specification, the Appellant does
not seek a specific action by the Board, and non-entry of a proposed
amendment is not an appealable matter. Accordingly, this issue is also not
properly before us.
As to the substance of the rejection, the Appellant argues that "[t]he
cited references do not disclose, teach or suggest having the planar bottom
surface as claimed in combination with a semi[ -]circular shape as in the
present invention." (App. Br. 7). However, this argument is not persuasive
because it argues the references separately and does not take into account
what the collective teachings of the prior art would have suggested to one of
ordinary skill in the art. See In re Keller, 642 F.2d 413,425 (CCPA 1981);
In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986). As noted above, the
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Application 12/948,438
rejection is based on modifying the device of Mensch in view of either
Church or Munson (Final Act. 3--4).
The Appellant also argues that modification of Mensch would not be
obvious because Mensch is "specifically designed to scrape offal in a farm
environment" and "teaches formation of the device by cutting through the
tread to give the specific shape allowing the scraping edge to work as a
squeegee." (App. Br. 7). According to the Appellant, the proposed
modification to the device of Mensch would render it "unsuitable for the
squeegee effect the device is specifically designed to provide" and change
the principle of operation (App. Br. 7). In that regard, the Appellant argues
that although the modified Mensch "may still be used for moving offal, the
design would be inferior to the Mensch design for that purpose." (App. Br.
7).
We are unpersuaded by the Appellant's arguments. As the Examiner
explains, "U-shaped cross sectional shape is old and well known in the
scraper and plow art, as is supported by and shown in the inventions of
Munson and Church, which provides a more effective function of collecting
and moving materials, such as snow or silage." (Ans. 5). In that regard, we
also agree with the Examiner's finding that "[ e ]ven with the modified U-
shaped cross sectional shape, the surface of the scraper contacting the
ground ... would still act like a squeegee or have a squeegee effect, and
therefore [ would] not chang[ e] the principle operation of the device of
Mensch." (Ans. 5).
As to the assertion that the modified device would be inferior, we note
that the Appellant does not provide any evidence in support thereof, and
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Application 12/948,438
attorney argument cannot take the place of record evidence. See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). In addition, the fact that a
particular art or combination of art may be inferior is not dispositive as to
obviousness. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (approving the
use, as evidence of obviousness, of a reference that described a certain
embodiment as inferior but still usable); In re Fulton, 391 F.3d 1195, 1200
(Fed. Cir. 2004) ("[C]ase law does not require that a particular combination
must be the preferred, or the most desirable, combination described in the
prior art in order to provide the motivation for the current invention.").
The Appellant argues that the Examiner's analysis in the rejection
mistakes capability for obviousness and cites to various case law that stands
for the well-known proposition that mere probabilities or possibilities are
inadequate to establish inherency (App. Br. 8). The Appellant's argument
appears to be that the rejection is improper because if the device of Mensch
is modified as suggested by the rejection, it does not necessarily/inherently
result in a device that provides the squeegee effect described in Mensch.
However, the Appellant's argument based on inherency is misdirected
and factually unsupported. Firstly, as the Examiner explains, the "rejection
does not rely on 'probabilities or possibilities' but rather on what the art as a
whole teaches and would suggest to one skilled in the art," the secondary
references establishing that "U-shaped member as a plow is an old and well
known shape." (Ans. 5). Secondly, the case law the Appellant cites in
support pertain to a situation in which a recited claim limitation is not
necessarily/inherently disclosed in the applied prior art, which is not
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Application 12/948,438
dispositive to the facts of the present case because the claims at issue do not
recite a limitation regarding squeegeeing or a squeegeeing effect. 2
In view of the above, we agree with the Examiner that the claimed
invention would have been obvious and within the skill of those in the art as
it simply substitutes "one know[ n] plow design for another equally well
known plow design that would yield predictable results." (Ans. 5). KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007).
Accordingly, because we find the Appellant's arguments
unpersuasive, we affirm the Examiner's obviousness rejection of claim 1, as
well as claims 3-12, 14, 16, and 18-20 that fall with claim 1.
CONCLUSION
The Examiner's rejection of claims 1, 3-12, 14, 16, and 18-20 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
2 Moreover, we discern no factual basis for the Appellant's assertion that a
"squeegee effect" would not be attained if the device of Mensch were
modified as suggested, because when such modified device of Mensch
would be used, its lower edge surface would still contact the ground surface,
thereby providing a scraping or squeegee effect, notwithstanding that the
angle of such contact may not be at 90 degrees.
8