Ex Parte Goodman

Patent Trial and Appeal Board

Aug 17, 2017

13829584 (P.T.A.B. Aug. 17, 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.
13/829,584 03/14/2013 Jeffrey Charles Goodman 065648-0001 8615
19227 7590
Dykema Gossett PLLC
10 South Wacker Drive
Suite 2300
Chicago, IL 60606
EXAMINER
KWIECINSKI, RYAN D
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
08/21/2017 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):
ipmail @ dykema. com
szeller @ dykema. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY CHARLES GOODMAN
Appeal 2016-006859
Application 13/829,584
Technology Center 3600
Before JOSEPH L. DIXON, DENISE M. POTHIER, and
LARRY J. HUME, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 4—12, and 16. Claims 13—15 (directed to a U-shaped spike and method of
securing landscape edging strip) are withdrawn from consideration. Claims
2 and 3 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-006859
Application 13/829,584
The claims are directed to an anchor spike for landscape edging.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An anchor spike for use with landscape edging, the
anchor spike comprising:
an elongate shaft;
a head located at a first end of the elongate shaft; and
a tip section located at a second end of the elongate shaft
and arranged at an angle to the elongate shaft, the angle between
the elongate shaft and the tip section being between 10° and 25°,
wherein the tip section is configured to cause an angle of
entry of the anchor spike to change as the anchor spike is driven
into the ground.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Foster US 72,276 Dec. 17, 1867
Daggett US 204,425 June 4. 1878
Howes US 490,439 Jan. 24, 1893
Holub US 2005/0016574 A1 Jan. 27, 2005
REJECTIONS
The Examiner made the following rejections:
Claims 1, 4, 5, 10, 11, and 16 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Holub.
Claims 1, 4, 7—12, and 16 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Daggett.
Claims 5 and 6 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Daggett in view of Howes.
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Claims 1, 4, 10-12, and 16 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Foster.
ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 2—11) in light
of Appellant’s contentions in the Appeal Brief (App. Br. 3—15) and the
Reply Brief (Reply Br. 1—4) that the Examiner has erred, as well as the
Examiner’s response (Ans. 2—9) to Appellant’s arguments in the Appeal
Brief. We disagree with Appellant’s conclusions.
We concur with the conclusions reached by the Examiner, and adopt
as our own (1) the findings and reasons set forth by the Examiner in the
Action from which this appeal is taken (Final Act. 2—11), and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief (Ans. 2—9).
We highlight and amplify certain teachings and suggestions of the
references, as well as certain ones of Appellant’s arguments as follows
unless otherwise noted. We do not consider arguments that Appellant could
have made but chose not to make in the Briefs, and we deem any such
arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We address Appellant’s arguments in the order set forth in the Appeal
Brief.
Independent Claim 1
Holub
With respect to the rejection of independent claim 1 over the Holub
reference, Appellant contends the Examiner’s claim mapping is
unreasonable. (App. Br. 4). Appellant contends the Examiner cannot
reasonably map Holub’s short vane 6 to the claimed elongated shaft because
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“the short vane 6 is clearly set off from the shaft 2.” (App. Br. 4.)
Moreover, in Appellant’s view, the Examiner’s interpretation of Holub
ignores that claim 1 requires “the tip section be located ‘at the second end of
the elongate shaft’” and Holub’s teaching that “the insertion leading edge 7
is part of the short vane 6, separate from the penetration end 3.” (App.
Br. 4). We disagree with the Appellant and find Appellant’s arguments are
not commensurate in scope with the express language of independent
claim 1. We find the head and tip are defined relative to the elongated shaft,
but do not necessarily require only the elongated shaft to form the anchor
spike.
Appellant further contends the Examiner has not provided any factual
basis for the conclusions regarding the remainder of the claim limitations.
(App. Br. 4). We disagree with Appellant and find the Examiner’s rejection
clearly states a correlation of the claimed limitations to the anchor spike of
the Holub reference. (Final Act. 2—3). Consequently, Appellant’s argument
does not show error in the Examiner’s findings of fact or conclusion of
obviousness of independent claim 1. Additionally, Appellant contends the
“Examiner has not cited any factual basis for the conclusion that the
configuration of Holub will ‘cause an angle of entry of the anchor spike to
change as the anchor spike is driven into the ground.’” (App. Br. 4—6).
We disagree with Appellant, and find the Examiner has provided a
convincing line of reasoning. (Ans. 3). The Examiner maintains:
Firstly the stake will enter into the ground straight coinciding
with penetration end 3. Next, the portion 7 will attempt to follow
the opening formed by penetration end 3, and will therefore
change the angle of entry of the stake. Further, the limitation
“configured to cause an angle of entry of the anchor spike to
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change” is a functional recitation and the spike of Holub is
capable of performing the functional step.
(Ans. 3).
Appellant responds by merely disputing the Examiner’s identification
of the intended use or functional limitation, but not disputing the Examiner’s
analysis of the change in angle as the spike penetrates into the ground.
(Reply Br. 1). Consequently, Appellant has not shown error in the
Examiner’s factual findings or conclusion of obviousness. Appellant argues
the Examiner offers no facts to support the assertion regarding the tip section
angle being between 10° and 25°. (App. Br. 5).
We disagree with Appellant and find Holub discloses a general
background of ground stakes, which vary in size and shape for different
uses. (Holub Tflf 28—32). We agree with the Examiner that Holub teaches or
at least suggests the recited angle being between and 10° and 25°.
“In general, an applicant may overcome a prima facie case of
obviousness by establishing ‘that the [claimed] range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.’ That same standard applies when, as here, the applicant
seeks to optimize certain variables by selecting narrow ranges from broader
ranges disclosed in the prior art. Moreover, the applicant's showing of
unexpected results must be commensurate in scope with the claimed range.”
In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1383 (Fed. Cir.
2003)-
“The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. . . . [I]n such a situation, the applicant must show that the particular
range is critical, generally by showing that the claimed range achieves
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unexpected results relative to the prior art range.” In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990) (citations omitted).
We find Appellant has provided insufficient evidence of criticality of
the recited range of angles for the tip section. Additionally, Appellant has
not identified any support in the Summary of the Claimed Subject Matter for
the claimed range. Appellant identifies paragraph 34 of the Specification for
this limitation, but we find no support in that paragraph for the expressed
range. We note paragraph 33 includes a discussion of “the angle a [alpha] is
about 15°, but in other embodiments the angle may be at least 5° and as
much as 30°,” but does not identify the criticality of the claimed range. (But
see original claim 3 for the claimed range).
Additionally, we further find skilled artisans would have realized that
the angle of the tip section would additionally be dictated/impacted by the
type of “ground” material that the anchor spike is driven into along with the
other relative dimensions of the spike, as clearly suggested in the general
discussion in the background of the Holub reference regarding the
displacement of soil. (Holub 1 5—7). In particular, Holub discloses anchor
stakes driven into hard soil, which would have suggested to ordinarily
skilled artisans that soil types/use along with length and dimensions of the
stakes have an impact on the entry angle at which the anchor spike is driven
into the ground.
Appellant further contends the Examiner’s obviousness rejection is
based upon speculation. (App. Br. 5—6). Appellant specifically contends
“Holub makes no mention of a change to the angle of entry of the stake
caused by the insertion leading edge.” (App. Br. 5). We agree with
Appellant that Holub does not explicitly discuss this feature, but the
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Examiner provides a convincing a line of reasoning which Appellant has not
rebutted sufficiently. (Ans. 3). Consequently, we disagree with Appellant,
as discussed above, and find the Examiner has provided factual findings and
reasonable inferences based upon basic engineering principles understood by
ordinarily skilled artisans discussed above to support the conclusion of
obviousness. Additionally, the Examiner finds “the limitation ‘configured
to cause an angle of entry of the anchor spike to change’ is a functional
recitation and the spike of Holub is capable of performing the functional
step.” (Ans. 3). We agree with the Examiner and find Appellant’s argument
does not show error in the Examiner’s factual findings or the conclusion of
obviousness.
Daggett
With respect to independent claim 1, Appellant contends “[t]he claim,
however, requires that the tip section be arranged ‘at an angle’ to the
elongate shaft, which is not the same as a ‘regular curve.’ Thus, Daggett
does not disclose an anchor spike having a tip section arranged at an angle to
the elongate shaft.” (App. Br. 6). We disagree with Appellant, and find that
at any point, the tip section is at an angle with respect to the spike’s shaft.
We find the language of independent claim 1 does not set forth that the angle
must remain constant throughout the entire tip section. Consequently,
Appellant’s argument does not show error in the Examiner’s factual findings
or conclusion of obviousness.
Appellant presents similar arguments for Daggett as those set forth
with respect to Holub concerning changing the angle of entry of the anchor
spike. (App. Br. 6—7). The Examiner maintains:
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[T]he limitation is intended use/functional limitation and does
not further define the actual structure of the spike itself.
Secondly, clearly the spike of Daggett is formed with a curved
tip, the angle of entry of the stake into a hole will change as the
curved tip is driven through the ground. A curved tip is not going
to be driven straight vertically into the ground. The tip may enter
at 90 degrees to the ground surface, but the stake will surely
change with the curvature of the tip.
(Ans. 4). We agree with the Examiner and find Daggett would change the
angle of entry, as the force applied to the end A would be translated along
the length of the spike to the angled end F based upon simple
physics/dynamics with the transfer of the forces along the elongated shaft as
understood by the ordinary artisan. (See Figures 1 and 2).
With respect to Appellant’s arguments regarding the specific angle of
the tip, we find the “regular curve” contains a range of angles at points along
the curve from zero through the claimed range. (See Figures 1 and 2).
Additionally Daggett discloses “[t]he improvements over the straight
wooden pin are, first, the facility with which the metallic pin enters the
ground.” (Daggett col. 2).
Similarly, as discussed above with respect to Holub regarding the
angle of the tip section, the ground material would have been a consideration
which skilled artisans would have recognized in determining the optimum or
effective entry angle for any specific use. We refer to the above discussion
for details. As a result, Appellant’s arguments do not show error in the
Examiner’s findings of fact or conclusion of obviousness of independent
claim 1.
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Foster
With respect to independent claim 1, Appellant contends the rejection
is improper because Foster is not analogous art to the claimed invention.
(App. Br. 7-8).
The field of endeavor in Foster is unmistakably railroad spikes,
which are driven into wood cross-ties and have a head that comes
into contact with the rails that it must contain. (See, e.g., Foster,
p. 1.) The field of use of the Appellant's invention is an anchor
spike used in conjunction with an edging strip to retain paver
bricks in place. The anchor spike of the Appellant's invention is
specifically designed to be driven through an aperture in an
edging strip and into a base of gravel. (See, Spec. ]Hf [0038]-
[0039], [0044].) Foster and the present invention are not within
the same field of endeavor.
(App. Br. 8).
We disagree with Appellant and find Appellant’s argument is not
commensurate in scope with the express language of independent claim 1
which does not set forth details of the edging strip, paver bricks, or base of
gravel. (App. Br. 8—9).
With respect to Appellant’s arguments regarding the preamble reciting
“an anchor spike for use . . . ,” Examiner finds “the intended use of the
[railroad] spike and of the present spike, are just that, intended uses of a
similar product (especially regarding claimed limitations).” (Ans. 5—6).
That is, the landscape edging is not required structurally by claim 1
because the body of the claim sets forth the complete structural and
functional limitations of the “anchor spike” without tying any limitations
back to “landscape edging.” See Pitney Bowes, Inc. v. Hewlett-Packard Co.,
182 F.3d 1298, 1305 (Fed. Cir. 1999) (“If. . . the body of the claim fully and
intrinsically sets forth the complete invention, including all of its limitations,
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and the preamble offers no distinct definition of any of the claimed
invention’s limitations, but rather merely states, for example, the purpose or
intended use of the invention, then the preamble is of no significance to
claim construction because it cannot be said to constitute or explain a claim
limitation.”). Accordingly, we do not give the “for use with landscape
edging” language patentable weight and disagree with Appellant that this
language distinguishes the claim over Foster. Consequently, we agree with
the Examiner that Foster is analogous art.
Additionally, Appellant argues the problem addressed by the claimed
invention. (App. Br. 8—9). Appellant specifically argues:
The instant invention seeks to solve, inter alia, the problem of
prior art anchor spikes failing to hold a landscape edging strip
against an installation of paver bricks over time. The instant
invention further seeks to avoid a problem encountered by other
attempts at a solution, namely that driving a prior art anchor spike
at an angle causes the edging strip to pull away from the paving
bricks. (See Spec., pp. 2-4, [0006] - [0010].)
In order to address these particular problems, the inventor
had to consider the interaction of the claimed anchor spike with,
in the case of paver brick installation, the gravel bed upon which
the paver bricks were placed.
(App. Br. 8). We find the teachings of Foster to be reasonably pertinent to
the claimed invention because Foster teaches to anchor a railway plate and
rail to secure the rail to some medium on the ground. See generally Foster.
The Examiner finds:
Foster is directed to teaching a spike, a spike having all of the
structural details of the claimed invention sans the teaching of
the specific angle of the tip. When installing a landscaping
edging one could use any type of item as a stake in order to secure
the edging to the ground. A "railroad" spike having the same
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structural limitations as the claimed stake can function in the
same way as the claimed invention and therefore is analogous
art.
(Ans. 5). We agree with the Examiner.
Appellant further argues “Foster is concerned with spikes that are
driven into wood cross-ties and retain iron rails for trains. It is unreasonable
to assume that an inventor dealing with the problem of anchor spikes for
paver bricks would look to art related to railroad spikes being driven into
wood cross-ties.” (App. Br. 9).
We disagree with Appellant and find the teachings of Foster to be
reasonably pertinent to securing some article to the ground or another
medium. We find that it would have been readily apparent to those with
skill in the art that various considerations for anchoring would have been
known to those of ordinary skill in the art. Consequently, we find
Appellant’s general contention to be unpersuasive of error in the Examiner’s
reliance upon Foster to teach and suggest the claimed invention.
Appellant further contends “the inventor had to consider the
interaction of the claimed anchor spike with, in the case of paver brick
installation, the gravel bed upon which the paver bricks were placed.” (App.
Br. 9). Appellant’s argument again is not commensurate in scope where the
claim does not set forth a method of installation nor set forth in the gravel
medium in which the unclaimed paver bricks are installed.1 Therefore,
Appellant’s argument does not show error in the Examiner’s reliance upon
Foster to evidence the obviousness of independent claim 1.
1 We note that independent claim 15 is withdrawn from consideration and
directed to a “method of securing a landscape edging strip in the ground.”
(App. Br. 18-19).
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Appellant relies upon similar arguments, advanced with respect to
Daggett, concerning the tip section is arranged at an angle to the elongated
shaft. (App. Br. 9-10). Again, we find Appellant’s argument to be
unpersuasive. We find the tip of Foster is at “an angle” at point C to the
elongated shaft (curved shank). Additionally, as discussed above, we find
the angle of the curved shank would translate the applied force at the head A
to provide a change in the angle of entry at point C as the spike is driven
based on simple physics of the forces applied to the shaft recognized by an
ordinarily skilled artisan. As a result, Appellant’s arguments do not show
error in the Examiner’s findings of fact or conclusion of obviousness of
independent claim 1.
Claims 4, 7—9, and 12
Appellant generally contends these claims depend directly from
claim 1, and the rejections thereof are similarly deficient for the same
reasons. (App. Br. 10). We find Appellant’s argument is not a specific
argument for patentability. Consequently, Appellant does not show error in
the Examiner’s findings of fact or conclusion of obviousness of the
dependent claims.
Claims 10 and 11
Appellant specifically contends “none of the references actually teach
or suggest the claimed ‘chamfered’ or ‘beveled’ sides recited in the claims,
and the Examiner has failed to provide any support for the assertions
otherwise.” (App. Br. 11). We disagree. We adopt the Examiner’s
interpretation of “beveled” and “chamfered” as “a slanted surface or edge on
a piece of wood, glass, etc.” (Ans. 7.) We agree with the Examiner that
each of the references disclose a tip that has a blade edge formed by two
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slanted surfaces or edges. Appellant has not identified any specific portion
of the Specification which defines or limits the context of the claim
terminology. The Examiner maintains Appellant has set forth no definition
in the Specification. (Ans. 7). The Examiner further maintains both terms
have similar definitions of “slanting sides.” (Ans. 7). We agree with the
Examiner’s finding.
Additionally, we find that the background of Appellant’s
Specification discloses “[standard anchor spikes have a pointed tip at one
end formed by chamfering the cylinder on four sides, essentially resulting in
a pyramid shape.” (Spec. 7). Consequently, we agree with the Examiner
that chamfering and beveling the tip of the anchor was well-known at the
time of the invention. We find Appellant’s general contentions do not show
error in the Examiner’s factual findings or conclusion of obviousness that
the prior art teaches and fairly suggests chamfering and beveling a blade
edge.
Holub
With respect to dependent claims 10 and 11, Appellant argues the
claims together. We select dependent claim 10 as the representative claim
for the group and address Appellant’s arguments thereto. 37 C.F.R.
§ 41.37(c)(l)(iv). With respect to the Holub reference, Appellant contends
Figure 1A of the Holub reference discloses a point rather than a blade edge
and that paragraph 29 of Holub indicates that the point is at the end of the
cylindrical structure without any ability to have chamfered or beveled sides.
(App. Br. 11).
We disagree with Appellant and find the background of the Holub
reference discloses variations in the formation of tip section depending on
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the diameter of the wire used and cost of the additional processing. (Holub
129, Figs. 1A and IB). We find the prior art clearly evidences a balancing
between the processing costs and the added functionality of having a blunt
edge or varied degrees of sharpening.
Additionally, we find the Adams Design patent 377,076 (cited in
Holub 16) discloses an anchor spike with four beveled or chamfered sides
with a rounded end was known.
As a result, we find it was within the level of skill in the art to sharpen
the tip of blunt wire by chamfering or beveling either completely to a point
or partially. Therefore, we find Appellant’s argument to be unpersuasive of
error in the Examiner’s factual findings or conclusion of obviousness, and
we sustain the rejection of dependent claims 10 and 11.
Daggett
Appellant contends Figure 1 of Daggett at best “show[s] that the
bottom end of the pin is rounded.” However, Appellant notes Daggett’s
specification discloses the “surfaces of the pin are flat,” which suggests the
edges, including the bottom end of the pin, are also flat. According to
Appellant, “nothing in [Daggett’s] [specification or figures suggest the end
of the pin has chamfered or beveled sides.” (App. Br. 11).
The Examiner finds:
[T]he angled tip of the stake is tapered both in width and in
thickness, and therefore Daggett teaches both a chamfer or bevel
on the main from and back surfaces of the angled tip and also a
chamfer or bevel on the sides surfaces of the angled tip, since
both the front and rear surfaces and the side surfaces are angled
toward one another, forming an relative angle of less than 90
degrees.
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(Ans. 7). We agree with the Examiner. As a result, we sustain the
obviousness rejection of claims 10 and 11 based upon the Daggett reference.
Foster
With respect to dependent claims 10 and 11, Appellant argues the
claims together. We select dependent claim 10 as the representative claim
for the group and address Appellant’s arguments thereto. 37 C.F.R.
§ 41.37(c)(l)(iv). Appellant specifically contends “Foster contains no
disclosure or teaching that the end of the spike has either chamfered or
beveled sides.” (App. Br. 12). The Examiner maintains, in “Foster, the
front and rear surfaces of Foster merge to form a point on the angled tip of
the stake, thereby forming a chamfered tip and/or a beveled tip.” (Ans. 7).
We agree with the Examiner and find no specific details recited in the
language of representative claim 10 as to the shape or formation of the
chamfered sides to form the blade edge. As a result, Appellant’s general
argument does not show error in the Examiner’s factual findings or
conclusion of obviousness of representative dependent claim 10.
Appellant generally contends the Examiner has not considered
Appellant’s Specification regarding the interpretation of beveled and
chamfered, but Appellant does not identify any specific definition or
lexicography in the Specification. (Reply Br. 4). Therefore, Appellant’s
general argument does not show error in the Examiner’s findings of fact or
conclusion of obviousness.
Independent Claim 16
With respect to claim 16, Appellant generally controverts the
Examiner’s identification of the preamble as non-limiting and directed to an
intended field of use. Appellant contends the preamble limits the structure
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and that the preamble is more than a mere statement of purpose and is
essential to particularly point out the invention defined in the claims. (App.
Br. 12—14). We agree with the Examiner that the claim language “for use
with an edging strip to retain paver bricks” and the “wherein” limitation
containing “the change in the angle of entry causing the anchor spike to push
the edging strip closer to the paver bricks being retained by the edging strip”
merely provides descriptive use and adverbial phrases further describing
future actions, but do not necessarily limit the recited structure of the
claimed “anchor spike.”
We note that such ntended use limitations do not limit the scope of the
claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp.,
320 F.3d 1339, 1345 (Fed. Cir. 2003). If the prior art structure is capable of
performing the intended use, it meets the claim limitation. A claim
containing a “recitation with respect to the manner in which a claimed
apparatus is intended to be employed does not differentiate the claimed
apparatus from a prior art apparatus” if the prior art apparatus teaches all the
structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647, 1648
(BPAI 1987). Similarly, while features of an apparatus may be recited either
structurally or functionally, claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function. In
re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). “[AJpparatus claims
cover what a device is, not what a device does.'” Hewlett-Packard Co. v.
Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). As a result, we
find Appellant’s reliance upon this non-structural language does not
differentiate from or distinguish over the prior art references.
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Appellant relies upon the arguments advanced with respect to
independent claim 1 regarding Holub, Daggett or Foster and provides no
specific argument for patentability beyond reliance upon the preamble and
the “wherein” limitation. Therefore, Appellant has not shown error in the
Examiner’s findings of fact or conclusion of obviousness, and we sustain the
rejection of independent claim 16 over Holub, Daggett, or Foster as
discussed above with respect to independent claim 1.
Dependent Claims 5 and 6
With respect to dependent claim 5, Appellant does not specifically
dispute the Examiner’s obviousness rejection of dependent claim 5 based
upon Holub alone which clearly teaches and suggests the use of a circular
wire. (Holub 7, 17—19, 29, 31, 33). Therefore, we summarily sustain the
rejection of dependent claim 5 over Holub.
With respect to dependent claims 5 and 6, Appellant argues the claims
together. We select dependent claim 5 as the representative claim for the
group and address Appellant’s arguments thereto. 37 C.F.R.
§ 41.37(c)(l)(iv). The Examiner sets forth the rejection based upon the
broadest reasonable interpretation, identifies that the claim language does
not define the parameters of the cross-section, and discusses the combination
of the Daggett and Howes references. (Ans. 8—9).
Appellant contends, as argued with respect to the Foster reference
above, the Howes reference is not analogous art. (App. Br. 15).
We disagree with Appellant for similar reasons addressed above with
respect to the Foster reference, and find the Howes reference is analogous art
for similar reasons set forth above.
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Appellant further contends the Howes reference further identifies the
advantages of the elliptical cross-section versus the round cross section.
(App. Br. 15). We find that the Howes reference additionally discloses:
[T]he body, though usually rectangular, has been made of
different cross - sections including both round and elliptical. The
generally recognized advantage of the round section spike, as
compared with one of rectangular section is, that it avoids cutting
and splitting the wood in to which it is driven. This advantage
also exists with the elliptical section with the further advantages,
first that the latter cannot turn in driving as will the round section
spike, and second that it has greater capacity to resist outward
strains brought intermittently upon the rail by the passage of
trains.
(Howes col. 1,11. 12—25). Therefore, we find the Howes reference teaches
and fairly suggests the use of anchors with circular, elliptical, and
rectangular cross sections where each has its own benefits and trade-offs.
While the Howes reference illustrates the elliptical cross-section and its
benefits, the Howes reference does not teach away from the well-known use
of circular or round cross sections. (See also Spec. 7 and the Holub general
disclosure of wire based stock used for anchors as well known in the anchor
art.)
Additionally, Appellant contends the Examiner’s proffered definitions
may result in the broadest definition but not the broadest reasonable
definition. (Reply Br. 4). We disagree with Appellant and find the
Examiner has explained the line of reasoning and the combination of prior
art teachings. Consequently, we find Appellant’s argument does not show
error in the Examiner’s factual findings or conclusion of obviousness of
representative dependent claim 5.
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Appeal 2016-006859
Application 13/829,584
Appellant generally contends the Examiner has not considered
Appellant’s Specification regarding circular cross section in interpreting the
claimed invention. We find Appellant does not identify any specific
definition or limiting lexicography in the Specification. (Reply Br. 4).
Therefore, Appellant’s general argument does not show error in the
Examiner’s factual findings or conclusion of obviousness of representative
dependent claim 5 and dependent claim 6 grouped therewith.
CONCLUSIONS
The Examiner did not err in rejecting claims 1, 4, 5, 10, 11, and 16
based upon obviousness over Holub. The Examiner did not err in rejecting
claims 1, 4, 7—12, and 16 are rejected over Daggett. The Examiner did not
err in rejecting claims 1, 4, 10—12, and 16 over Foster. The Examiner did
not err in rejecting claims 5 and 6 over Daggett in view of Howes.
DECISION
For the above reasons, we sustain all of the Examiner’s obviousness
rejections with the exception of the obviousness rejection of claims 10
and 11 based upon the Daggett alone. Because we have sustained at least
one rejection on all claims, we designate this decision as an affirmance.2
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
2 “The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim.” 37 C.F.R. § 41.50(a)(1).
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