Ex Parte Flaherty et al

Patent Trial and Appeal Board

Sep 18, 2017

13310248 (P.T.A.B. Sep. 18, 2017)

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.
13/310,248 12/02/2011 John P. Flaherty 766P001C3 6158
42754 7590 09/18/2017
Nields, Lemack & Frame, LLC
176 E. Main Street
Suite #5
Westborough, MA 01581
EXAMINER
GILBERT, WILLIAM V
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
09/18/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN P. FLAHERTY and WILLIAM SCOTT OBER
_____________

Appeal 2016-008180
Application 13/310,248
Technology Center 3600
____________

Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
John P. Flaherty and William Scott Ober (Appellants)1 seek our
review under 35 U.S.C. § 134 of the Examiner’s rejection2 under 35 U.S.C.
§ 103(a) of claims 1–4 as unpatentable over Trafixigns (GB 433,732, pub.
Aug. 20, 1935) and Szekely (US 5,303,669, iss. Apr. 19, 1994). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.3

1 According to Appellants, the real party in interest is ADA Solutions,
Incorporated. Appeal Br. 3.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated February 4, 2015 (“Final Act.”).
3 Appellants state that this appeal is related to Inter partes Reexamination
No. 95/001,775 of U.S. 8,028,491 B2, which is a continuation of U.S.
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Application 13/310,248

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CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.4
1. A replaceable, wet-set tactile warning surf ace unit embedded
in concrete, comprising:
a unitary resinous composite body defining an upper
surface and a lower surface, the body comprising a series of
raised projections on its upper surface, a plurality of projecting
asperities disposed on the upper surface and on the top of the
raised projections, and a plurality of spaced through-holes
passing through the body; anchor members coupled to the unit
below the through-holes by fasteners that pass through the
through-holes, the anchor members having a first portion
extending radially outward to a greater extent than a second
portion located between the first portion and the lower surface to
help embed the anchor members in said concrete; a flange
extending from the lower surface that is thicker than the distance
between the upper surface and the lower surface; and a
bottomless vent located underneath the body and extending
essentially up to the lower surface that allows air to escape from
underneath the unit when it is installed in said concrete and that
prevents the body from being permanently embedded in said
concrete; said concrete supporting said lower surface of said unit,
wherein the region between said lower surface and said concrete
is devoid of air cavities, and wherein said upper surface is
approximately flush with the top surface of the concrete
surrounding the unit.

7,779,581 B2; to Appeal 2016-007606 in Application 13/251,620; to Appeal
2016-008182 in Application 13/310,265; and to Appeal 2016-008183 in
Application 13/310,291. Appeal Br. 4.
4 We note that Inter partes Reexamination Certificate No. U.S. 7,779,581
C1, issued July 13, 2015, claim 1—reciting substantially the same
replaceable, wet-set tactile warning surface unit for installation in fresh
concrete, as recited in appealed claim 1—was canceled, inter alia, for being
anticipated by Trafixigns. See Action Closing Prosecution, mailed July 3,
2012, at pages 15–17 and 59–60.
Appeal 2016-008180
Application 13/310,248

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ANALYSIS
Obviousness of Claims 1–4 over Trafixigns and Szekely
Claims 1, 2, and 4
Appellants argue claims 1, 2, and 4 together in contesting the rejection
of these claims as obvious over Trafixigns and Szekely. See Appeal Br. 7–
14; Reply Br. 5–7. We select claim 1 as the representative claim for this
group, and the remaining claims stand or fall with claim 1. 37 C.F.R. §
41.37(c)(1)(iv). Appellants also present a separate argument for claim 3
(Appeal Br. 14–16), which we address infra.
The Examiner finds that Trafixigns discloses substantially all the
limitations of a replaceable, wet-set tactile warning surface unit (panel) as
recited by claim 1, including, inter alia, a unitary body, spaced through-
holes passing through the body, “anchor members (21) coupled to the unit
below the through-holes by fasteners that pass through the through-holes,”
and
a bottomless vent (10) located underneath the body and
extending essentially up to the lower surface (see Fig. 2) that
allows air to escape from underneath the unit when it is installed
in concrete and that prevents the body from being permanently
embedded in concrete (functional language fully capable of
being met by the prior art).[5]
Final Act. 3–4.
While acknowledging that “Trafixigns does not specifically disclose
that the tile is embedded in concrete,” the Examiner reasons that “the

5 It is well established that “[a]n intended use or purpose usually will not
limit the scope of the claim because such statements usually do no more than
define a context in which the invention operates.” Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003).
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anchors may be embedded in the concrete (page 2, line 1), and the panel
may be ‘keyed’ to the surface of the road (page 2, line[s] 95-100).” Id. at 4.
From the foregoing, the Examiner reasons that it would have been
obvious “to have the panel embedded in concrete as a common medium for
the embedding of the anchors,” noting that “it is common knowledge in the
art to have drivable surfaces made of concrete.” Id. Furthermore, the
Examiner explains that “embedding the member in concrete results in said
concrete supporting said lower surface of said unit, wherein the region
between said lower surface and said concrete is devoid of air cavities (this
would occur due to vents 10).” Id. at 5.
While acknowledging that Trafixigns does not disclose the panel
being made of resinous composite, the Examiner finds “Szekely discloses a
similar panel that is made from a thermoset plastic composite (Col 5, lines
13-20), which typically exists in a resinous form,” and that it would have
been obvious “to have the panel [of Trafixigns] made of a resinous
composite, as such materials are well known in the art for strength,
durability and resistance to corrosion.” Id. at 4.
The Examiner also finds Trafixigns discloses “that the panel is
embedded in the concrete (page 1, line 80 – page 2, line 5),” but
acknowledges that Trafixigns “does not specifically provide that the upper
surface is approximately flush with the top surface of the concrete
surrounding the unit.” Id. at 5 (emphasis added). However the Examiner
concludes that it would have been obvious “to have the panel approximately
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Application 13/310,248

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flush with the top surface of the concrete in order to provide a smooth
transition from the concrete to the panel.”6
In taking issue with the analysis and conclusions presented in the
Final Office Action, Appellants first contend that “[t]here is no disclosure or
suggestion in Trafixigns that the region between the lower surface and the
concrete is devoid of air cavities,” because “Trafixigns clearly teaches away
from this feature,” pointing to the washers illustrated in Figure 8 of
Trafixigns. Appeal Br. 7–8.
However, the Examiner responds that Appellants are not addressing
the Examiner’s rejection, pointing out the washers (i.e., washers 26) in
Figure 8 “are an optional feature,” not required by Figure 7, and that
“Trafixigns is clear: ‘the plate may be positioned in or on the road.’” Ans.
7–8 (citing Trafixigns, p. 2, ll. 29–30). Appellants also do not explain how
optional washers 26 teach away from having no air cavities between a
warning panel’s lower surface and the road. “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.” In re Gurley, 27 F. 3d 551, 553 (Fed. Cir. 1994).
Further, from the disclosure at page 2, lines 97–100 of Trafixigns,
stating “that the recesses (10), ‘may . . . act to key the plate to the surface of
the road . . . ,’” the Examiner also determines that
[t]he term “keying” (or "key" as a verb) means when the plate is
pressed into the substrate, the substrate fills the voids and gaps

6 We note that Appellants’ Specification describes prior art “units that are
“flush mounted relative to the adjacent substrate,” to offer “superior
performance.” See page 4, line 30–page 5, line 4.
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in the portion of the plate that is in contact with the substrate,
hence “keying” the plate to the road. In other words, the substrate
conforms to the shape of the object pressed into it, or is “keyed”
to it. The result is that air would not be present as applicant
argues.
Id. at 7–8.
The Examiner continues by explaining that as illustrated in Figure 2
of Trafixigns, “recess (10) has in innermost surface that is flush with the
bottom surface of the plate (as shown) and no other place in the figures, or in
the disclosure, is shown that would pocket air upon installing the plate,”
concluding that “[u]nder the rules governing fluid mechanics, the air would
escape as the plate is keyed into the surface, and thus the claimed limitation
is met.” Ans. 8–9.
Although not disputing “that the phrase ‘key the plate to the surface of
the road’ means [to] position the plate to the surface of the road,” Appellants
“vigorously disagree that this in any way suggests pressing the plate into the
substrate, or that if the plate is pressed into the substrate, the substrate fills
the voids and gaps in the portion of the plate that is in contact with the
substrate as the Examiner alleges.” Reply Br. 6. Appellants, however, do
not provide sufficient evidence for this contention, and a preponderance of
evidence supports the Examiner’s determination that Trafixigns’ plate is
meant to key with the road surface (such that air is vented from recesses 10
upon installation)—not to provide air cavities. See In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984) (“Arguments and conclusions unsupported by
factual evidence carry no evidentiary weight.”).
Notably, the structure of Trafixigns’ recesses 10 and Appellants’ slots
16 (i.e., as depicted in Figure 10 of the Specification) are substantially the
same. Statements of use or purpose do not make a claim to a known
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Application 13/310,248

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structure patentable. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997) (Holding that the appellants’ contention that the claimed structure will
be used in a way not taught by the prior art reference does not have
patentable weight if the structure is already known.).
Appellants next contend that “there is absolutely no teaching in
Trafixigns that the block or panel is embedded in the substrate such that the
unit edges are approximately flush with the top surface of the surrounding
concrete.” Appeal Br. 10. More specifically, Appellants argue that the
Examiner’s only rationale (i.e., “to have it flush would result in a smooth
transition from one surface type to the next,’”) is insufficient to establish
obviousness “when considered in light of the actual teachings of Trafixigns.”
Id. at 13. However, we find this contention to be without merit, as the
Examiner’s rationale is entirely consistent with Appellants’ description of
prior art structures. See n. 6. “When a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Appellants also contend “the claims require a unitary resinous
composite body defining an upper surface and a lower surface,” while
Trafixigns “is a steel plate the upper surface of which is a vitreous material.”
Appeal Br. 13. In particular, Appellants argue that “[c]ompletely lacking in
Trafixigns is any teaching or suggestion to make the body . . . from a fiber-
reinforced resin composite material.” Id. at 14.
However, Appellants are simply attacking Trafixigns in isolation for
lacking support for findings not relied upon by the Examiner, rather than
addressing the Examiner’s combination of Trafixigns and Szekely.
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Nonobviousness cannot be established by attacking references individually
when the rejection is predicated upon a combination of prior art disclosures.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Szekely,
not Trafixigns, was cited for disclosing a “panel that is made from a
thermoset plastic composite.” See Final Act 4. As the Examiner again
explains, “[i]t would be obvious to make the panel in Trafixigns from the
material in Szekely for the reasons provided.” Ans. 12.

Claim 3
Appellants recite the additional limitation of dependent claim 3 and
contend that “the ‘alleged vents’ of Trafixigns are never filled with concrete,
and never would be,” because “filling them with concrete would cause them
to fail for their intended purpose of keying the unit or positioning the unit on
the rods or bars.” Appeal Br. 14–15.
However, we agree with the Examiner that Appellants position is
misplaced. We adopt as our own, the Examiner’s definition of the “term
‘keying’ (or ‘key’ as a verb),” for the reasons set forth at pages 12–13 of the
Answer. Appellants have not disputed any of the Examiner’s findings in the
Answer.
Based on the foregoing, we sustain the Examiner’s rejection of claims
1–4 over Trafixigns and Szekely.

DECISION
We AFFIRM the Examiner’s rejection.
Appeal 2016-008180
Application 13/310,248

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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)(1)(iv).

AFFIRMED