Ex Parte Foley

Patent Trial and Appeal Board

Jun 7, 2018

13699759 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/699,759 11/26/2012
20210 7590 06/11/2018
DA VIS & BUJOLD, P.L.L.C.
112 PLEASANT STREET
CONCORD, NH 03301
FIRST NAMED INVENTOR
James Foley
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.
THOLAM P516US 9189
EXAMINER
OMGBA, ESSAMA
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
06/11/2018 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):
patent@nhpat.com
tclark@nhpat.com
mbujold@nhpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES FOLEY
Appeal2017-003786
Application 13/699,759
Technology Center 3700
Before JOHN C. KERINS, KEN B. BARRETT, and ANTHONY KNIGHT,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James Foley (Appellant) appeals under 35 U.S.C. § 134(a) from a final
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2017-003786
Application 13/699,759
THE INVENTION
Appellant's invention is directed to a method of positioning metal plates in
preparation for welding. Claim 1, reproduced below, is illustrative:
1. A method of positioning metal plates in preparation for
welding, comprising:
providing a first metal plate, with at least one integrally formed
protruding ear positioned along a peripheral edge of the first metal
plate and extending parallel to the first metal plate, the ear having a
retainer receiving opening;
providing a second metal plate, with at least one ear receiving
opening extending through the second metal plate from a first face to
a second face;
inserting the ear of the first metal plate through the ear
receiving opening of the second metal plate; and
inserting a pressure exerting retainer into the retainer receiving
opening of the ear to prevent the ear from being withdrawn from the
ear receiving opening and to draw the first metal plate and the second
metal plate together in preparation for welding.
REJECTIONS
The Examiner rejects:
(i) claims 1-3 and 5-11under35 U.S.C. § 103(a) as being unpatentable over
Kelly (US 6,135,666, issued October 24, 2000) in view of Donovan (US
2003/0129025 Al, published July 10, 2003); and
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Application 13/699,759
(ii) claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Kelly in
view of Donovan and further in view of Moser (US 7 ,044,677 B2, issued May 16,
2006).
ANALYSIS
Rejection (i)-claims 1-3 and 5-11 over Kelly in view of Donovan
Appellant presents arguments for independent claim 1, but presents no
separate arguments for the remaining claims subject to this rejection. The claims
will be treated as a group, with claim 1 being representative. Claims 2, 3 and 5-11
stand or fall with claim 1.
The Examiner finds that Kelly discloses a method of positioning metal plates
in preparation for welding that meets all of the limitations set forth in claim 1, with
the exception of the step of inserting a pressure exerting retainer into the retainer
receiving opening of the ear to prevent the ear from being withdrawn from the ear
receiving opening and to draw the first metal plate and the second metal plate
together. Final Act. 2-3. The Examiner cites to Donovan as disclosing the step of
inserting a pressure exerting retainer or wedge 3 into a retainer receiving opening 5
of ear or peg 4 to prevent the ear from being withdrawn from ear receiving opening
8 and to draw first metal plate 1 and second metal plate 2 together. Id. at 3. The
Examiner concludes that it would have been obvious to modify the method of
Kelly to replace twisting tab 6 of Kelly with the ear and retainer (peg 4 and wedge
3) of Donovan as an alternative way of securely positioning the metal plates, i.e. as
a substitution of locking mechanisms. Id. at 3.
Appellant contends that a claim element is missing from the combination of
Kelly and Donovan, asserting that "[i]nstead of drawing plates together, Kelly and
Donovan merely teach applying a clamping force." Br. 3. In response, the
Examiner quotes paragraph 31 of Donovan, which discloses that the tapered wedge
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Application 13/699,759
3 compresses the mounting plate 2 and tile 1. Ans. 6. In apparent agreement with
the Examiner's finding that Donovan teaches compressing the plates, Appellant
states that "the wedge is inserted into the peg merely as a way to compress the
plates together". Br. 4.
Appellant does not provide an explanation of why compressing plates
together as taught in the Donovan reference is different than drawing plates
together as recited in claim 1. Paragraph 3 8 of the Specification discloses that
plates 12, 14 are assembled together to the position shown in Figure 2 and then
wedge 16 is inserted as seen in Figure 3. Figure 2 appears to show the plates being
in contact with one another prior to inserting the wedge, 1 and inserting the wedge
into the assembled plates as shown in figure 3 would, just as in Donovan, compress
the plates together. Appellant appears to be attempting to draw a distinction
between compressing plates together and drawing plates together, but does not
point to any evidence of such a distinction. It is not clear that the term "draw" in
the context of the present application means anything other than "to pull together";
which is done as well in the act of compressing two plates together. The
arguments therefore do not apprise us that a claim element is missing from the
combination of Kelly and Donovan.
Appellant next argues that the claimed design has advantages, such as
allowing a greater force to be applied to correct misalignment between the plates.
Br. 4. Even assuming that to be the case, 2 this does not provide any basis as to
why the obviousness rationale should be regarded as erroneous.
1 The Specification notes that the components are preferably prepared having tight
dimensional tolerances, and, when so prepared, the assembly of the components
results in self-positioning. Spec. para. 37-38.
2 We note that Appellant does not specify a comparative structure over which the
claimed design provides the purported advantages.
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Application 13/699,759
Appellant further argues, "Kelly and Donovan are solutions directed to
different problems." Br. 4. Appellant contrasts the disclosures of Kelly and
Donovan, by observing that Kelly is directed to joining members that are to be
welded together, whereas "Donovan teaches an attachment that is designed to be
used in place of welding ... Appellant respectfully submits that [paragraph 0006
of Donovan] relates to welding the wedge in place within the peg, and that is
merely tack welding." Br. 5.
These arguments fail to acknowledge the Examiner's findings regarding the
combined teachings of the references. The Examiner finds that Kelly discloses a
method of positioning metal plates together in preparation for welding, and that
Donovan teaches an alternative way of securely positioning metal plates. Final
Act. 2-3. The obviousness rationale is to the effect that one skilled in the art
would use the locking mechanism of Donovan in the system of Kelly "as an
alternative way of securely positioning the metal plates," regardless as to whether
they are to subsequently be welded together. Final Act. 3. In this regard, the
Examiner further explains, "both Kelly et al. and Donovan clearly teach quick and
easy non-permanent attachment systems. Further, Donovan teaches that his
attachment system can be used in any application where it is desirable to fixedly
attach panels or tiles to any surface in any environment (paragraph [0012])." Final
Act. 6.
In view of the above, although Appellant's arguments appear to be correct
that Donovan does not pertain to holding plates for the purpose of welding those
plates together, this does not detract from the obviousness rationale. The
arguments do not acknowledge or traverse the finding that one skilled in the art
would understand the peg and wedge configuration of Donovan as a way of
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Application 13/699,759
securing metal plates, and do not persuasively explain why the substitution of
known securing mechanisms would not have been obvious to one skilled in the art.
Appellant further differentiates the disclosure of Donovan from that of Kelly
by pointing out that the former discloses a face-to-face attachment of plates,
whereas the latter discloses an edge-to-face attachment of plates. Br. 5. Appellant
maintains that the two different relative orientations of the plates involve certain
technical tradeoffs including "providing a better hold between the adjacent plates
with less localized force that may cause bending" in the face-to-face attachment of
Donovan, and "provid[ing] the most localized and direct transfer of force" in the
edge-to-face configuration of Kelly. Br. 5-6.
There is no evidence in the record to show that a skilled artisan would have
viewed the securing mechanism of Donovan to be unsuitable for an edge-to-face
attachment. There is also no evidence in the record to show that a skilled artisan
would have viewed the cam surfaces of Kelly as being "more suited" to an edge-
to-face attachment than the configuration of Donovan. Attorney argument
advanced on behalf of Appellant does not serve as probative evidence in
establishing these points. Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052,
1068 (Fed. Cir. 2005) (unsubstantiated attorney argument is no substitute for
competent evidence).
Appellant finally argues that "the modification suggested by the Examiner
would complicate the attachment taught by Kelly as it would require additional
parts and additional steps and appears to be motivated solely based upon hindsight.
The modification to Kelly would also require an additional object to be
manipulated while making the connection." Br. 6.
It is not self-evident that the proposed substitution of securing mechanisms
would be viewed by a skilled artisan as adding complexity, because the proposed
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substitution involves the replacement of some components with other components.
Using the wedge and ear described in Donovan as a substitute for the securing
mechanism of Kelly would eliminate the need for a twist tab as disclosed in Kelly.
Even if a skilled artisan would view the substitution as being more complex than
the configuration of Kelly, this finding would not be dispositive. Modifications
which make a device more complex are not necessarily nonobvious, even when a
prior art reference advocates simplicity. Allied Erecting v. Genesis Attachments,
825 F.3d 1373, 1381 (Fed. Cir. 2016)("[A] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily obviate
motivation to combine.").
In view of the foregoing, we are not apprised of error in the rejection of
claim 1 over Kelly and Donovan. The rejection of claim 1 is sustained. Claims 2,
3, and 5-11 fall with claim 1.
Rejection (ii) - claim 4 over Kelly in view of Donovan and Moser
Appellant presents no arguments specific to this ground of rejection. We,
therefore, assume that the arguments directed to the rejection of claim 1 are
intended to apply to this rejection as well.
For the reasons discussed above, we are not apprised of error in the
rejection, and rejection (ii) is therefore sustained.
DECISION
The rejections of claims 1-11under35 U.S.C. § 103(a) are 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
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