Ex Parte Bailey

Patent Trial and Appeal Board

Dec 4, 2012

10550239 (P.T.A.B. Dec. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ALEXANDER W. M. BAILEY
__________

Appeal 2010-009676
Application 10/550,239
Technology Center 3600
___________

Before JAMESON LEE, SALLY C. MEDLEY, and JONI Y. CHANG,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 2 and 4-19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The Applied Prior Art
Dash PCT/AU85/00159
(WO 86/00866) Feb. 13, 1986
Sanders U.S. 4,240,360 Dec. 23, 1980
Brown U.S. 1,360,720 Nov. 30, 1920

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The Rejections on Appeal
Claims 2, 9-14, and 16-18 were rejected under 35 U.S.C. § 103 as
obvious over Dash and Brown.
Claims 4-8 and 15 were rejected under 35 U.S.C. § 103 as obvious
over Dash and Sanders.
While the rejection is nominally stated as based on Dash and Sanders,
our review of the Examiner’s discussion reveals that the rejection is really
based on Dash, Brown, and Sanders, and that Appellant did not think
otherwise. The Examiner consistently referred to Dash, “as modified” to
render obvious claim 18, and claim 18 was rejected over Dash and Brown.
Accordingly, we will regard the rejection of claims 4-8, and 15, as
based on Dash, Brown, and Sanders.
Claim 19 was finally rejected under 35 U.S.C. § 103 as obvious over
Dash, Brown, and Sanders.
The Invention
The claimed invention is a metal pallet. Pallets are used for
storing and transporting goods and are known to have been made of
wood, metal, or plastic. (Spec: 1:6-7; 1:23-24). Claims 18 and 19 are
the only independent claims. Claim 19 particularly recites a
detachable-component metal pallet. Claim 18 is reproduced below:
18. A metal pallet having:

a top deck of sheet metal;

a bottom deck of sheet metal spaced from the top deck;

at least two longitudinally elongated bearers each formed
of sheet metal and secured to and extending transversely
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between the decks so that the top deck is supported on the
bottom deck; and wherein

each bearer has a first and second longitudinally
extending bearer portion, with each portion being secured to
said decks and extending separately transversely between said
decks and wherein each portion has a longitudinally extending
top web secured to the top deck, a longitudinally extending
bottom web secured to the bottom deck, a longitudinally
extending central web extending generally normal to said
decks, and longitudinally extending inclined web portions
securing the central web to the top and bottom webs, each
inclined web portion being inclined to the decks by an acute
angle.

The claimed pallet includes a top deck, a bottom deck, and two
longitudinally elongated bearers secured to and extending transversely
between the two decks. A disclosed embodiment is illustrated in Figure 2:

Figure 2 shows a perspective view of a disclosed pallet embodiment
The illustrated pallet 1 includes bottom deck 10, top deck 5, and two
longitudinally extending bearer portions 15. Each bearer 15 is secured to the
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two decks, extends separately transversely between them, and is more
closely illustrated in Figure 1 reproduced below:

Figure 1 illustrates a perspective view of a disclosed bearer

As is required by claim 18, each bearer 15 has a longitudinally
extending top web 20 secured to the top deck, a longitudinally extending
bottom web 25 secured to the bottom deck, a longitudinally extending
central web 30 extending generally normal to the decks, and longitudinally
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extending inclined web portions 35 securing the central web to the top and
bottom webs. The inclined web portions 35 are inclined by an acute angle.
DISCUSSION
A. The Obviousness Rejection of Claims 2,
9-14, and 16-18 over Dash and Brown

The Examiner determined that Dash discloses a metal pallet
comprising a top deck, a bottom deck, and two elongate bearers 13 securing
the top and bottom decks together. (Ans. 3:7-8). Appellant does not dispute
that finding. The Examiner determined that each bearer in Dash includes a
first and second portion between the top and bottom decks and that each
portion has a top web and a bottom web connected to a central web by
respective inclined portions. (Ans. 3:11-12). Appellant also does not
dispute that finding. Other than the foregoing, the Examiner determined that
the bearer of Dash does not satisfy the other requirements of claim 18.
For all of the claim features directed to each bearer and how it is
disposed with respect to the top and bottom decks, the Examiner relied on
Brown’s disclosure of a metal support bar placed between a top and bottom
surface. The Examiner reasoned that it would have been obvious to one
with ordinary skill in the art to use Brown’s metal support bar in place of
each bearer in Dash, and concluded that the resulting structure satisfies all
requirements of claim 18.
Brown’s invention is a metal support and it is stated that the object of
Brown’s invention is “to provide a metal bar structure which combines
strength with lightness of weight, and which is especially adapted for use as
a spar in wings, fuselages, struts, and the like in the construction of
aeroplanes.” (Brown 1:9-17). Independent claim 1 of Brown begins with
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the preamble: “A bar of the character described, ….” Thus, Brown’s
invention is directed to a support bar which is “especially adapted for use as
a spar in wings, fuselages, struts, and the like in the construction of
aeroplanes.” Figure 1 of Brown is reproduced below:

Figure 1 illustrates a perspective view of Brown’s metal bar
Appellant does not dispute that Brown’s metal support bar is intended
for placement between a top surface and a bottom surface. Appellant further
does not dispute that Brown’s metal support bar, when used in the place of
each bearer 13 in Dash, satisfies all the features of independent claim 18
directed to the shape and construction of all the elements disposed between
and secured to a top and a bottom deck of a pallet. As is shown in Brown’s
Figure 1, the metal bar includes first and second bearer portions 1 and 2
which extend separately transversely between a top plate 3 and bottom plate
4. (Brown 1:30-34). Each bearer portion 1 and 2 has top and bottom webs 6
secured to top and bottom plates 3 and 4. (Brown 1:50 to 2:1). As shown,
each bearer has a central web 5 and non-labeled inclined webs between the
central web 5 and top and bottom webs 6.
The Examiner reasoned that because Dash and Brown teach
alternative metal support bar used for the same intended purpose of
supporting a load, it would have been obvious to one with ordinary skill in
the art to modify Dash’s pallet by using Brown’s specific bar structure in
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between the top and bottom decks, in place of the bearer structure of Dash.
(Ans. 4:22 to 5:2). The Appellant disagrees and advances several
arguments. We have considered the arguments and are unpersuaded. Any
argument not raised by Appellant is considered as waived. As discussed
below, Appellant has not shown error in the appealed rejections.
To facilitate a visual comparison, we place Appellant’s Figure 1 and
Brown’s Figure 1 side-by-side:

On Left: Figure 1 shows an embodiment of Appellant’s bearer
On Right: Figure 1 shows an embodiment of Brown’s bar

Appellant asserts that the Examiner provided no reasoning on why
one with ordinary skill in the art would use the metal support bar of Brown
as an alternative substitute for the metal bearer of Dash or rational
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underpinning to support the conclusion of obviousness. (Brief 9:15-19).
That is incorrect. As we noted above, the Examiner reasoned that because
Dash and Brown teach alternative metal support bar used for the same
intended purpose of supporting a load, it would have been obvious to one
with ordinary skill in the art to modify Dash’s pallet by using Brown’s
specific bar structure in between the top and bottom decks, in place of the
bearer structure of Dash. (Ans. 4:22 to 5:2).
Appellant argues that one with ordinary skill in the art would not have
considered employing a support bar for an aircraft structure, such as a wing,
as the bearer between the decks of a pallet for carrying heavy objects, and
that one with ordinary skill in the art would have recognized that an aircraft
spar is subjected to completely different loads and requirements than the
bearer between the decks of a pallet and that the engineering problems for
the two are very different. (Brief 9:27 to 10:3).
Appellant also argues that the bearer structure of Dash is different and
is more suitable for use on a pallet for carrying heavy loads and therefore
one with ordinary skill in the art would not have known to substitute
Brown’s different bar structure for Dash’s bearer. (Brief 10:4-8). In that
regard, Appellant asserts that one with ordinary skill would not have been
certain whether Brown’s support bar could support a heavy load carried on
top of Dash’s pallet. (Brief 10:8-11). Appellant further points to the
presence of a stiffening bar 9 along Brown’s support bar as an indication that
Brown’s support bar is unsuitable for use as support between the top and
bottom decks of a pallet for carrying heavy loads. (Brief 10:11-15).
The above-noted arguments and positions of Appellant are misplaced.
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Brown’s disclosed metal support bar is not limited for use on an
airplane structure, and also not merely as support between the top and
bottom surfaces of an aircraft’s wing. Brown describes only that its
invention is specially adapted for use as a spar in wings, fuselages, struts and
the like in the construction of airplanes. (Brown 1:15-17). It does not limit
the use of its support bar to that specialized environment or describe that its
support bar is unsuitable for use in other applications, and its claims are not
limited to use of the support bar for construction of an airplane.
Also, an aircraft’s wings themselves present a load for the support
bars of Brown. Appellant’s claims do not specify a particular minimum
requirement for the extent of the load the claimed pallet must be able to
carry. A pallet made to carry a light load is nonetheless still a pallet. It is
merely speculative to state that Brown’s metal bar is not useable as support
structure in a pallet. Moreover, mere argument of counsel cannot take the
place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775,
782 (CCPA 1977).
Additionally, Appellant’s claims do not exclude the presence of a
support bar in addition to a main bar. Brown also describes its additional
support bar only as an optional element which need not be included. (Brown
2:59-62). The evidence simply does not support Appellant’s contention that
Brown’s metal bar is incapable of supporting a load when used in a pallet.
For all of the foregoing reasons, it is misplaced for Appellant to
restrict the teachings of Brown to application in an aircraft setting. The
Examiner is correct that Brown discloses a metal support bar structure
generally for carrying a load. In any event, even if Brown discusses its
invention only in an aircraft setting, a prior art reference must be considered
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for everything it teaches by way of technology and is not limited to the
particular invention it is describing and attempting to protect. EWP Corp. v.
Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985).
Appellant asserts that Brown constitutes nonanalogous art because its
disclosure is not pertinent to the problem with which Appellant’s inventors
are concerned. (Brief 11:6-8). The argument is without merit. Appellant
states that the particular problem with which Appellant was concerned is the
construction of a light-weight, high-strength pallet in which each of the two
portions of the bearer contacts both decks with longitudinally extending
webs secured to the top and bottom decks, and has a longitudinally central
web extending generally normal to the decks. (Brief 11:8-12). The problem
as stated by Appellant is unduly narrow. In the specification, the sole stated
objective of the invention is this: “It is an object of the present invention to
overcome or ameliorate some of the disadvantages of the prior art, or at least
to provide a useful alternative.” (Spec. 1:29-30).
Thus, the problem with which Appellant is concerned is as broad as to
provide a useful alternative to the prior art pallet structures. And some of
the disadvantages of prior art pallets are stated by Appellant as follows:
“expensive to manufacture; require repeated repair; are limited to standard
sizes; have protruding fixings or connections; are limited in the amount they
can carry; are easy to damage or break; are heavy; difficult to attach
additional components when required; absorb moisture, liquids and odours;
are a fore risk; can have termite and insect contaminations; splinter easily;
the nails can loosen; have a short life span and the timber used is generally
used from hardwood forests.” (Spec. 1:12-22). Appellant also states that
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metal and plastic pallets have many disadvantages similar to those of wood
pallets. (Spec. 1:23-24).
Appellant states that the forces applied to wings and other aircraft
structure components are far more complex than the reasonably straight
forward compressive forces applied to pallets. (Brief 11:13-14). While that
is true, it does not mean Brown’s bar is not reasonably pertinent to
improving the structure of prior art pallets in some way or to provide an
alternative structure thereto. At a minimum, the light weight aspect of
Brown’s device is reasonably pertinent to the problem of reducing the
weight of conventional pallets, and the load supporting character of Brown’s
device is reasonably pertinent to the general goal of providing an alternative
to the structure of prior art pallets. Moreover, as we have already discussed
above, Brown’s disclosure is not limited to applications in aircraft structures.
The aircraft application is merely one preferred embodiment, while the
invention as a whole is generally applicable for providing support to a load.
The general application adds even more pertinence to Brown’s disclosure.
Furthermore, Brown states that its goal is to provide a metal bar
structure which combines light weight and strength. (Brown 1:9-14). On
that basis alone Brown is reasonably pertinent to a problem with which
Appellant was concerned, as we have pointed out and discussed above.
Appellant argues that the individual elements of the claimed
combination are very old and been known for a long time. The theory is that
if it were obvious to form the claimed combination, the combination would
have been made a long time ago. The argument is without merit. Almost all
inventions are made or assembled from known components or materials. It
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is baseless to assume that to invent a patentable combination one must have
invented some of the combination’s component parts or materials.
Appellant argues that significant modifications would have to be
made in order to make the combination proposed by the Examiner. The
argument is misplaced. “Significant’ is a relative term and is not meaningful
here unless the prior art presents a nonenabling disclosure for the claimed
invention. Appellant does not assert that one with ordinary skill in the art
would not have been capable of constructing the combination as proposed by
the Examiner.
We have considered all other arguments of the Appellant, none of
which is persuasive. In particular, we reject Appellant’s contention that the
rejection is based on hindsight. The Examiner has articulated reasoning with
rational underpinnings to support the rejection, as we have discussed above.
For the foregoing reasons, Appellant has not shown error in the
rejection of claim 18.
Appellant does not separately argue the merits of claims 9-14, 16, and
17, which depend directly or indirectly claim 18, apart from the merits of
claim 18. Accordingly, for the same reasons as those discussed above with
respect to claim 18, Appellant has not shown error in the rejection of claims
9-14, 16, and 17.
Claim 2 depends on claim 18 and further recites that the central webs
of the first and second portions of each bearer are “releasably securable
together.” We have read the Examiner’s statement of the rejection of claim
2 contained in the Final Rejection. The Examiner pointed out that Brown in
column 1, lines 40-43, discloses that the central webs of the first and second
portions are secured together by riveting, spot welding, or any other means
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that performs the function. (Non-Final Rej. 9:5-6).
According to the Examiner, a connection by riveting and any other
means which performs the securing function is a description that meets the
claim requirement of the central webs being releasably securable together.
(Non-Final Rej. 9:5-7). The Examiner implicitly determined that releasably
securable fastening devices were well known in the art. It is the Examiner’s
position that in light of Brown’s disclosure of using a rivet or any means that
performs the function to secure the central webs, it would have been obvious
for one of ordinary skill in the art to use a releasably securable attachment
means to secure the central webs to each other.
Appellant seems to argue that rivets are not necessarily a releasable
connection. That is true. But Appellant does not dispute that releasably
securable fastening means for webs or plates were well known in the art.
That is the underlying basis and rationale for the Examiner’s position.
Appellant does not represent that such releasably securable fastening means
were not known to one with ordinary skill in the art. We agree with the
Examiner that in light of Brown’s disclosure of using any known means that
performs the securing function for the central webs, it would have been
obvious to one with ordinary skill in the art to use a releasably securable
fastening means for that purpose. It matters not that neither Dash nor Brown
expressly discloses such a releasably securable fastening means, because the
Examiner has taken the position, not disputed by Appellant, that releasably
securable fastening means were well known to one with ordinary skill in the
art. The evidence does not show that employment of releasably securable
fastening means in Brown for securing the central webs would have
rendered the resulting structure inoperable.
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Appellant has not shown error in the rejection of claim 2.
B. The Obviousness Rejection of
Claims 4-8, and 15 over Dash, Brown, and Sanders

Each of claims 4-8 and 15 depends either directly or indirectly on
independent claim 18. Claim 4 depends on claim 18 and recites that the top
and bottom webs are releasably secured to the decks. Claim 5 depends on
claim 18 and recites that the webs are releasably securable to at least one of
the decks and each other by fastening means. Each of claims 6-8 depends on
claim 5. Claim 15 depends on claim 18 and recites that the pallet includes a
sheet material secured to at least one of the top and bottom decks.
We have read that portion of Appellant’s brief directed to claims 4-8
and 15 and do not see any portion addressing the Examiner’s reasoning with
respect to the limitation added by claim 15. Thus, the patentability of claim
15 has not been argued separately from that of claim 18. Appellant has not
persuaded us of any error in the rejection of claim 15.
To account for the releasably securable feature added by claim 4 and
claim 5, the Examiner relied on the teachings of Sanders. Sanders discloses
a pallet including a supporting deck and sheet metal supporting feet
connected to the deck. (Sanders Abstract). Specifically, the Examiner
determined (Ans. 5:9-16):
Sanders teaches the idea of using releasable fastening
means of rivets or removable clips for securing elements of a
metal; wherein the releasable fastening means allows the pallet
[of Sanders] to [be] knocked-down for spaced saving purpose.
Therefore, it would have been obvious to modify the structure
of Dash, as modified [by Brown], by providing releasable
fastening means of threaded fasteners or rivets in order to allow
the pallet to [be] knocked-down for spaced saving purpose, as
taught by Sanders et al, since both teach alternate conventional
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pallet structure, used for the same intended purpose, thereby
providing structure as claimed.

The Appellant has not disputed the above-noted finding of the
Examiner that Sanders teaches the use of releasable fastening components
for securing together the elements in a metal pallet, resulting in a structure
that can be broken down for space saving purposes. Thus, that fact is taken
as true. Instead, Appellant argues the different pallet structure between that
of Sanders and that resulting from a combination of Dash and Brown,
“without” regard to whether the various webs in the support bar or bearer are
releasably securable in the different manners as are required by claims 4-8.
Appellant’s argument is without merit. One cannot attack references
individually where the rejection is based on a combination of references. In
re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co. Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner relied on Sanders only for
its general teaching of using releasably securable fastening means in a pallet
so that all components of a pallet can be broken down if necessary to save
space. That general teaching is non-specific to any particular structural
arrangement of a pallet. Sanders does not also have to teach what the
combination of Dash and Brown already teaches. Appellant further argues
that one would have seen no relevance in Sanders for application in Dash as
modified by Brown. The argument is unpersuasive, because it would have
been readily apparent to one with ordinary skill in the art that if Sanders’
pallet can benefit from being able to be broken-down for space saving
purposes, so would the pallets of Dash as modified by Brown. Appellant has
not adequately explained why one with ordinary skill would not have
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recognized that the space saving aspect of Sanders can be applied to Dash as
modified by Brown.
We have addressed only the arguments raised by Appellant. For the
foregoing reasons, Appellant has not persuaded us of any error in the
rejection of claims 4-8.
C. The Obviousness Rejection of Claim 19
over Dash, Brown, and Sanders

Claim 19 is an independent claim. It is directed to a metal pallet
comprising a sheet metal bottom deck spaced apart from a generally parallel
top deck. It also requires two elongate bearers between the top and bottom
decks which extend in parallel to the decks. Each bearer has a first and a
second portion extending lengthwise parallel to the top and bottom decks.
Each of the first and second portions has a top web, a central web, and a
bottom web, as well as inclined portions connecting the top web to the
central web and the central web to the bottom web. The first and second
portions are aligned such that the central webs abut each other and are
oriented perpendicularly to the top and bottom decks. The top and bottom
webs are generally parallel to the top and bottom decks. For the foregoing
limitations, the Examiner relied on the same combined teachings of Dash
and Brown that were relied on to support the rejection of claim 18.
For claim 19, Appellant makes the same arguments it has made for
claim 18 and states that claim 19 is not obvious over Dash and Brown for the
same reasons why claim 18 is not obvious over those same references.
(Brief 17:5-8). However, we have already rejected Appellant’s arguments,
as explained above in the above discussion for claim 18.
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Several additional features are present in claim 19 but not in claim 18.
Specifically, according to claim 19, the central webs must be releasably
securable to each other; the top web must be releasably securable to the top
deck; the bottom webs must be releasably securable to the bottom deck; the
top and bottom decks are releasably secured together. Thus, the top deck,
the bottom deck, and the first and second portions are all configured to be
able to be detached and replaced by replacement components. To account
for those limitations, the Examiner relied on Sanders the same way Sanders
was relied on to account for the releasably securable features of claims 4-8.
In that connection, Appellant makes the same arguments it has made for
claims 4-8. However, we have already rejected Appellant’s arguments in the
above discussion for claims 4-8. Sanders does not have to disclose that
which is disclosed by the combined teachings of Dash and Brown.
Appellant asserts that the Examiner failed to address the claim
requirement that the top deck, the bottom deck, and the first and second
portions of the bearers are all able to be detached and replaced by
replacement components. The argument is without merit. The claim
limitation does not actually require the presence of replacement parts. It is
only necessary that the recited elements are capable of being detached and
replaced by replacement parts. Thus, because all the parts meet the various
requirements of being releasably securable to other parts, they are capable of
being detached and replaced by replacement parts.
For all of the foregoing reasons, we are not persuaded of error in the
rejection of claim 19.
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CONCLUSION
The rejection of claims 2, 9-14, and 16-18 under 35 U.S.C. § 103 as
obvious over Dash and Brown is affirmed.
The rejection of claims 4-8 and 15 under 35 U.S.C. § 103 as obvious
over Dash, Brown, and Sanders is affirmed.
The rejection of claim 19 under 35 U.S.C. § 103 as obvious over
Dash, Brown, and Sanders 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).

AFFIRMED