Thomas RUSSELL

Patent Trials and Appeals Board

Jul 8, 2021

2020001999 (P.T.A.B. Jul. 8, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/622,138 06/14/2017 Thomas E. RUSSELL 08960001US 1075
62008 7590 07/08/2021
MAIER & MAIER, PLLC
345 SOUTH PATRICK STREET
ALEXANDRIA, VA 22314
EXAMINER
CHAPMAN, JEANETTE E
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
07/08/2021 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):
docket@maierandmaier.com
maierandmaier_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS E. RUSSELL

Appeal 2020-001999
Application 15/622,138
Technology Center 3600
____________

Before BRUCE T. WIEDER, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner’s decision rejecting claims 7 and 9–14.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The real party in interest herein is the Inventor and
Applicant, Thomas Russell.” Appeal Br. 2.
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ILLUSTRATIVE CLAIM
7. A solar array, comprising:
a solar panel;
a rack configured to support the solar panel;
a plurality of supporting posts, each supporting post
comprising an I-beam having a size of W6, the plurality of
supporting posts constructed from at least a grade 80 steel and
having a yield strength of at least 80ksi.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gandara US 5,628,495 May 13, 1997
Petersen et al.
(“Petersen”)
US 2003/0098096 A1 May 29, 2003
Kufner US 2011/0272367 A1 Nov. 10, 2011
Sachdev et al.
(“Sachdev”)
US 2016/0145731 A1 May 26, 2016
Hess et al. (“Hess”) US 2016/0230474 A1 Aug. 11, 2016

REJECTIONS2
I. Claim 9 is rejected under 35 U.S.C. § 112(b) as indefinite.

2 In addition to presently enumerated rejections, the Non-Final Office Action
(mailed May 29, 2019, hereinafter “Non-Final Act.”) alternatively rejects the
claims of this Appeal under 35 U.S.C. § 103 as unpatentable, based upon the
references cited in Rejection IV together with “Snyder et al. (US
6,219,990).” Non-Final Act. 9–11. In response to the Appellant’s
arguments, regarding this alternative rejection, the Examiner’s Answer
states: “The Snyder reference is not applicable as not being applied as a
reference against the claims.” Answer 21. We regard the Examiner’s
statement as expressly indicating the withdrawal of the alternative rejection.
See 37 C.F.R. § 41.39(a)(1) (“An examiner’s answer is deemed to
incorporate all of the grounds of rejection set forth in the Office action from
which the appeal is taken . . ., unless the examiner’s answer expressly
indicates that a ground of rejection has been withdrawn.”)
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II. Claims 7, 9–12, and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over the Applicant’s admitted prior art (“AAPA”) (Figure 2 of
Appellant’s Specification),3 Petersen, and Hess.
III. Claim 13 is rejected under 35 U.S.C. § 103 as unpatentable
over AAPA, Hess, Petersen, and Sachdev.
IV. Claims 7 and 9–14 are rejected under 35 U.S.C. § 103 as
unpatentable over Kufner, AAPA, and Gandara.4
The Appellant raises a concern, as to whether the Examiner is
advancing a rejection based upon a reference (ArcelorMittal International,
Structural Shapes, (2012) (“ArcelorMittal”)), which was provided to the
Appellant by the Office on August 5, 2019 in regard to a related application
(Application No. 15/645,069). See Appeal Br. 19–21; Reply Br. 14–15.
ArcelorMittal is not cited in the Non-Final Office Action that is the basis for
this Appeal. Further, the Examiner’s Answer does not identify any new
ground of rejection (based upon ArcelorMittal or otherwise) in accordance
with 37 C.F.R. § 41.39(a)(2). Thus, no rejection based upon ArcelorMittal
is before us on appeal.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.

3 With regard to the related text, we refer, herein, to the “Substitute
Specification — Clean Copy” filed on March 14, 2019.
4 We regard the omission of claim 13, in the description of Rejection IV
(Non-Final Act. 6), as an inadvertent error. See id. at 8.
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ANALYSIS
Indefiniteness
Dependent claim 9 stands rejected under 35 U.S.C. § 112(b) as
indefinite.
Claim 9 recites:
9. The solar array of claim 7, wherein each supporting
post in of the plurality of supporting posts is disposed
proximate to either of: a first narrow end of the solar array, and
a second narrow end of the solar array, and
wherein the solar array further comprises a plurality of
inside supporting posts, each of the plurality of inside
supporting posts disposed between the plurality of supporting
posts.
The Examiner maintains that claim 9 is indefinite, on account of the
recitation “each supporting post in of the plurality of supporting posts is
disposed proximate to either of: a first narrow end of the solar array, and a
second narrow end of the solar array.” Non-Final Act. 3. According to the
Examiner, this recitation “leads to uncertainty because the claim
encompasses all the posts being located only at one narrow end of the
array.” Id. “As such,” the Examiner continues, “it is unclear if this was the
intended scope.” Id. The Examiner ponders: “Does the device not have
posts on the second end?” Id.
Disputing the rejection, the Appellant argues:
Claim 9 specifically provides a limitation applying to
each supporting post in a plurality of supporting posts which
have been claimed as having particular attributes. The
limitation specifically provides that each [supporting] post may
be in one of two locations: a particular [supporting] post may
be in location A (the first end of the structure) or, alternatively,
the particular [supporting] post may be in location B (the
second end of the structure).
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Appeal Br. 5.
We agree with the Appellant. The rejection focuses on the following
language of claim 9: “wherein each supporting post . . . is disposed
proximate to either of: a first narrow end of the solar array, and a second
narrow end of the solar array.” Precisely as the Appellant argues (see
Appeal Br. 5–6), each “supporting post” is “disposed proximate to” “a first
narrow end of the solar array” or “a second narrow end of the solar array.”
As the Appellant points out (id. at 6) the claim language does not preclude
the presence of “supporting posts” at both the “first narrow end” as well as
the “second narrow end.” The Specification reinforces this understanding,
by reference to Figure 6 having “the piles 602 on the outside ends 606 of the
solar array 300.” Spec. ¶ 94. In the Figure 6 embodiment, the two opposing
“outside ends 606” may be regarded as claim 9’s “first narrow end of the
solar array” and “second narrow end of the solar array.”
In view of the foregoing, we are persuaded that the Examiner erred in
rejecting claim 9 under 35 U.S.C. § 112(b).
Obviousness
Our evaluations of the obviousness rejections turn upon the adequacy
of the Examiner’s reasons for combining certain teachings of the cited
references — specifically, the reasons for employing “at least a grade 80
steel and having a yield strength of at least 80ksi [kilopounds per square
inch]” as supporting elements for solar panels, as recited in claim 7 (the sole
independent claim in this Appeal).
The Appellant’s Specification addresses the role of such a grade of
steel, in regard to the disclosed subject matter, pointing out that “several
terms of art are explicitly defined herein for ease of reference”:
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In particular, the “ultimate tensile strength” of a material is
defined as the maximum stress a material withstands when
subjected to an applied load. Dividing the load at failure by the
original cross sectional area determines the value. The “yield
strength” of a material is defined as the point at which the
material exceeds the elastic limit and will not return to its
original shape or length if the stress is removed. This value is
determined by evaluating a stress-strain diagram produced
during a tensile test.
Spec. ¶ 34. The Specification states that, “where possible, solar piles” for
supporting solar arrays,” are standard guardrail posts” — i.e., “I-beams . . .
hav[ing] a steel KSI grade of 50.” Id. ¶ 10. However, factors such as “the
ground forces that are applicable to the site’s location, the density of the soil
that the beams will be driven into, and the other properties of the soil,”
might necessitate the use of alternatives. Id. The Specification discloses
“[a]n alternative post or pile system for the foundation of a solar array,”
wherein, “in an exemplary embodiment, grade 80 may be used.” Id. ¶¶ 18–
19.
Rejections II and III
In regard to one combination of references applied to independent
claim 7, the Examiner states that the Petersen reference “discloses it is
known to utilize grade 80 steel with Ksi of at least 80 in an underground
corrosive environment for the benefits of greater strength and toughness.”
Non-Final Act. 4 (citing Petersen ¶ 3). The Examiner also cites the Hess
reference, stating that it “discloses a riser 100 made of grade
80[ ]steel[ ](80ksi tensile/yield strength).” Id. The Examiner states:
It would have been obvious to construct the piles of 80 grade
steel (80ksi tensile/yield strength) in order to impart more
strength and durability to the same capable of withstanding
harsh weather conditions. To further explain, the examiner is
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merely pointing out that it is known to form grade 80 steel into
support type structures and utilize them in underground
corrosive environments, which is analogous to Applicant’s
invention.
Id.
Among the Appellant’s arguments, in regard to the combination of
references used in in Rejections II and III, the Appellant contends that the
Examiner has not provided an adequate reason to combine Petersen or Hess
with the AAPA.
As to the Petersen reference, the Appellant disputes the Examiner’s
position (Non-Final Act. 4) that Petersen teaches the use of any type of steel
in an “underground corrosive environment” — the Examiner’s basis for
combining Petersen with the AAPA. The Appellant contends that “the
Petersen reference discloses a method for producing the wall of a large
diameter pipe/attached fittings, used to resist high internal pressures used in
the transport of natural gas or crude oil.” Appeal Br. 6. Petersen’s third
paragraph — which the Examiner relies upon (Non-Final Act. 4) —
“provides that the current steel used to produce the outer wall of the pipe and
pipe fittings is grade 80, and Petersen’s process teaches that a stronger steel
with a minimum ultimate tensile strength of at least 105 may be used.”
Appeal Br. 6 (citing Petersen ¶ 3). Yet, the Appellant argues, Petersen lacks
any teaching relating to an underground and/or corrosive environment — let
alone, the materials suitable for such an environment:
In no case is Petersen described as being underground, or
in an “underground corrosive environment.” Nothing in the
specification of Petersen mentions the pipe being underground,
and there is no depiction of the pipe provided in the Figures of
Petersen that shows the pipe as being underground. There is no
citation, in the outstanding Office Action, to any disclosure of
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Petersen or any other evidence that indicates that the pipe
should be wholly or partially buried. Likewise, Petersen does
not mention “corrosion” as being a factor in its design, and in
fact does not mention it at all. As such, Petersen does not
disclose that it is known to use grade 80 steel in an underground
corrosive environment, because Petersen is using grade 80 steel
for an entirely different use than resisting corrosion, and does
not contemplate an underground corrosive environment at all.
Id. at 7–8.
Because the Examiner ascribes to Petersen the proposed teaching that
grade 80 steel withstands corrosive underground environments (see Non-
Final Act. 4), the Appellant regards the Examiner’s analysis as combining
Hess’ teachings with the AAPA, “in order to ‘impart more strength and
durability [for] withstanding harsh weather conditions,’ rather than to protect
against underground corrosion.” Appeal Br. 13 (quoting Non-Final Act. 4).
Yet, the rejection does not expressly identify a reason for combining
Hess with other prior art teachings. Moreover, Hess discloses a marine riser
for a “deep-water drilling operation” (Hess ¶ 1), which the Appellant argues
“is not exposed to harsh weather conditions,” because “an underwater
structure would inherently be protected from almost all harsh weather
conditions” (Appeal Br. 13).
The Examiner’s Answer addresses the Appellant’s points with a series
of unsupported general assertions, e.g., “steel is a known non-corrosive
metal which lends itself to be used above ground and below ground to
withstand weather conditions and soil corrosion.” Answer 15.
Such unsupported and conclusory assertions do not support an
adequate reason for combining reference teachings. The Supreme Court has
explained that “rejections on obviousness grounds cannot be sustained by
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mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Indeed, as the
Federal Circuit has said, without an adequately supported reason for
combining the teachings of references, “we are left with only hindsight
bias.” Metalcraft of Mayville, Inc., v. The Toro Co., 848 F.3d 1358, 1367
(Fed. Cir. 2017). “[W]hile we understand that ‘[t]he obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
suggestion, and motivation,’ we also recognize that we cannot allow
hindsight bias to be the thread that stitches together prior art patches into
something that is the claimed invention.” Id. (quoting KSR, 550 U.S. at
419).
Accordingly, we do not sustain the rejection of independent claim 7
and dependent claims 9–14, under 35 U.S.C. § 103, set forth in Rejections II
and III.
Rejection IV
In Rejection IV, the Examiner relies upon the Gandara reference for
the teaching of 80 ksi steel. Non-Final Act. 7 (citing Gandara col. 6, l. 37).
In regard to combining this teaching with those of other cited references, the
Examiner states:
[I]t would have been obvious to utilize grade 80 steel with at
least 80 ksi yield strength in order to account for higher wind
loads of 100 mph as taught by Gandara (col 6, line 40) and
upon consideration of high wind prone areas such as tornado or
hurricane areas would further utilize higher strength/grade steel.
Furthermore, one of ordinary skill would readily recognize that
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utilizing a higher grade steel as an alternative to a lower grade
steel doesn’t produce any unexpected results.
Id.
Disputing the rejection, the Appellant points out that Gandara teaches
80 ksi steel in 14-gauge sheet-metal form, rather than the claimed I-beam
configuration; hence, the Examiner’s reason for combining Gandara with
other references (i.e., withstanding high wind loads) does not apply to the
combination of elements recited in claim 7:
The use of a stronger sheet metal, rather than a thicker post
material, is noted [in Gandara] to be particularly due to the
desire to fabricate the entire design using contour roll forming
techniques, rather than being based on any other considerations.
As such, it does not appear that Gandara would teach the
use of grade 80 steel outside of the context of sheet metal being
used. If there is no need to fabricate the entire design via
contour roll forming techniques, the motivation to use grade 80
steel in the fence posts is lost, and there is no reason to use this
material rather than thicker steel of a lower grade, or another
material entirely.
Appeal Br. 17–18 (citing Gandara col. 6, ll. 27–30, 35–37).
In the Answer, the Examiner characterizes the Appellant’s argument
as “too limiting,” because “fences and like structures such a[s] supports for
solar panels use that same materials for the properties that material provides
to the structure.” Answer 21. Further,
[t]he examiner is not bodily incorporating the teaching of one
reference into another; just the materials and their use in the
building industry which is broad and expansive; Appellant’s
piecemeal analysis of references makes no sense because
Appellant reasons for combining teaches [sic] are not the
method used by the examiner; Again high strength steel have
been well known in the art and used for their strength and
inherent anti-corrosive properties.
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Id.
The problem noted above, in regard to Rejections II and II, applies
equally to the Examiner’s reliance on Gandara. That is, rather than a
specific finding that Gandara teaches the use of 80 ksi steel in the manner
claimed, the analysis resorts to generic (and unsupported) statements about
what would have been “known in the art.” Answer 21. As discussed above,
the lack of particular findings, in order to support a reason to combine the
references’ teachings, invites a conclusion based upon hindsight.
Accordingly, we do not sustain the rejection of independent claim 7
and dependent claims 9–14, under 35 U.S.C. § 103, set forth in Rejection IV.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
9 112(b) Indefiniteness 9
7, 9–12, 14 103 AAPA, Petersen,
Hess
7, 9–12,
14
13 103 AAPA, Hess,
Petersen, Sachdev
13
7, 9–14 103 Kufner, AAPA,
Gandara
7, 9–14
Overall
Outcome
7, 9–14

REVERSED