Ex Parte Grossman et al

Patent Trial and Appeal Board

Nov 26, 2012

10981413 (P.T.A.B. Nov. 26, 2012)

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.
10/981,413 11/04/2004 Rodney B. Grossman 9948-000053 6581
27572 7590 11/26/2012
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
LAUX, JESSICA L
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
11/26/2012 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 RODNEY B. GROSSMAN and JUSTIN M. HOLMES
____________

Appeal 2010-009809
Application 10/981,413
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
BART A. GERSTENBLITH, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Rodney B. Grossman and Justin M. Holmes (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision finally rejecting under 35
U.S.C. § 103(a) claims 1-13, 15, 16, 18-22, and 24-26 as unpatentable over
Appellants’ Admitted Prior Art1 (Appellants’ Specification, paras. [0002]-
[0006] and Figures 1, 2, 3A, 3B, and 3C) and Guenther (US 4,287,691,
issued Sep. 8, 1981). Claims 14, 17, and 23 have been canceled.
Appellants present additional evidence in the Declaration filed on
June 3, 2009 under 37 C.F.R. § 1.132 of Rodney B. Grossman (hereafter
referred to as “Grossman Declaration”).2
We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a granular material storage container
100 including a foundation 102, a peripheral wall 104, a plurality of vertical
stiffeners 106, and a horizontal connector 180 that extends between two
vertical stiffeners 106 and connects peripheral wall 104 to foundation 102.
Spec. 6-7, paras. [0026] and [0027] and fig. 4.
Claims 1 and 25 are illustrative of the claimed invention and read as
follows:
1. An above ground granular material storage container
comprising:
a foundation for the granular material storage container having
a surface at about ground level or above;

1 Hereafter referred to as “AAPA.”
2 The Declarant, Mr. Rodney B. Grossman, is also a co-inventor in the
instant application. See Grossman Declaration, para. 6.
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a substantially circular peripheral wall supported on the surface
of the foundation;
a plurality of separate vertical stiffeners, the stiffeners being
attached to the peripheral wall;
a plurality of base plates, each base plate being coupled to a
lower end of one of the vertical stiffeners and attached to the
foundation; and
a horizontal connector having a flange attached to the surface of
the foundation and connecting the peripheral wall to the foundation,
the flange located between the base plates of at least a first and a
second vertical stiffener of the plurality of vertical stiffeners, the
horizontal connector having a size and configuration sufficient to
withstand a load transfer of shear forces generated by single pass
sweeping away from the peripheral wall and to the foundation.

25. A granular material storage container comprising:
a foundation;
a substantially circular peripheral wall supported on the
foundation;
a plurality of vertical stiffeners, the stiffeners being attached to
the peripheral wall; and
a horizontal connector connecting the peripheral wall to the
foundation and extending between at least a first and a second vertical
stiffener of the plurality of vertical stiffeners, the horizontal connector
operable for load transfer from the peripheral wall to the foundation
during single pass sweeping of shear forces directed primarily along
the peripheral wall,
wherein the peripheral wall of the storage container has at least
one localized area of maximum shear load, further wherein the
horizontal connector is attached about a location of the localized area
of maximum shear load as predicted from a starting point of single
pass sweeping.

SUMMARY OF DECISION
We AFFIRM and ENTER NEW GROUNDS OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

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ANALYSIS
Claims 1-13, 15, 16, 18-22, and 24
Appellants argue the rejection under 35 U.S.C. §103(a) of claims 1-
13, 15, 16, 18-22, and 24 together as a group. Br. 9. Therefore, in
accordance with 37 C.F.R. 41.37(c)(1)(vii)(2011), we have selected claim 1
as the representative claim to decide the appeal, with claims 2-13, 15, 16,
18-22, and 24 standing or falling with claim 1.
Appellants argue that: (1) the angle iron 23 of Guenther does not
inherently “withstand a load transfer of shear forces generated by single pass
sweeping” (Br. 11-13) and (2) the Examiner arrives at the conclusion of
obviousness due to impermissible hindsight (Br. 13-14).

Appellants’ First Argument
The Examiner found that, because angle iron 23 of Guenther has the
same shape and is used in the same manner as Appellants’ claimed
horizontal connector, “the horizontal connector of Guenther would
inherently be capable of the same use and functional limitations as
Appellant’s horizontal connector.” Ans. 7.
In response, Appellants argue that because both AAPA and Guenther
“are silent concerning single pass sweeping and the transfer of shear forces
generated from such sweeping,” there exists only a possibility that the bin
structure of AAPA as modified by Guenther would “be able to withstand a
load transfer of shear forces generated by single pass sweeping as claimed.”
Br. 12; see also Grossman Declaration, paras. 13 and 14. Thus, according to
Appellants, a horizontal connector (as per independent claims 1 and 24) or a
secondary support structure (as per independent clam 15) that is capable to
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withstand and transfer shear forces generated by single pass sweeping “is not
disclosed, suggested, or inherent in the cited prior art.” Br. 12.
Although we appreciate Appellants’ inherency argument, nonetheless,
once the USPTO establishes a prima facie case of anticipation based on
inherency, the burden shifts to the applicant to prove that the prior art does
not possess the characteristic at issue. See In re King, 801 F.2d 1324, 1327
(Fed. Cir. 1986). This is the case whether the rejection is based on
inherency under 35 U.S.C. § 102, prima facie obviousness under 35 U.S.C.
§ 103, or both jointly or alternatively. See In re Best, 562 F.2d 1252, 1255
(CCPA 1977). Here, we agree that the Examiner is on solid ground in
finding sufficient structural similarity between the claimed horizontal
connector and the angle iron of Guenther such that the recited functional
limitations would also be present in the angle iron of Guenther. Similar to
Appellants’ claimed horizontal connector, Guenther discloses an angle iron
23 having a horizontal flange 25 connected to a surface of foundation 28 and
a vertical flange 24 that connects grain bin wall 21 to foundation 28.
Compare Figure 4 of Appellants’ Drawings with Guenther, col. 2, ll. 51-60
and fig. 1. The similar structure and use of the angle iron 23 of Guenther
provides a reasonable basis for us to support the Examiner’s determination
that angle iron structure 23 of Guenther is capable of withstanding and
transferring shear forces generated by single pass sweeping, so as to shift the
burden to Appellants to show that this is not the case. As such, Appellants
have the burden of establishing that those features would not be present. In
re Spada, 911 F.2d 705, 708 (Fed Cir. 1990)(“[W]hen the PTO shows sound
basis for believing that the products of the applicant and the prior art are the
same, the applicant has the burden of showing that they are not.”) However,
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Appellants have not come forward with adequate evidence to satisfy this
burden. See also Ans. 7-8. The Grossman Declaration does not provide any
objective evidence to show that angle iron structure 23 of Guenther is not
capable of withstanding and transferring shear forces generated by single
pass sweeping. Accordingly, we adopt the Examiner’s finding that angle
iron 23 of Guenther is able “to withstand a load transfer of shear forces
generated by a single pass sweeping,” as called for by independent claim 1.

Appellants’ Second Argument
Appellants argue that because Guenther (1) “does not relate to the
strength of a grain bin” and (2) does not disclose “resisting forces directed
against the wall of a grain bin,” the Examiner arrives at the conclusion of
obviousness due to impermissible hindsight. Br. 13; see also Grossman
Declaration, paras. 8 and 9. According to Appellants, “[t]here is no reason
why one skilled in the art looking for a structure to handle single pass
sweeping loads would consider the Guenther moisture shield relevant to his
problem.” Br. 14.
We are not persuaded by Appellants’ argument because the Examiner
is not proposing to include the moisture shield 29 of Guenther in the grain
bin of AAPA, but rather iron angle 23. See, e.g., Ans. 3-4. Furthermore, the
Examiner has provided a reason (using an angle iron) with rational
underpinning (“provide a secure and strong connection between the granular
material container and the foundation”). See Ans. 4; In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require]
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v.
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Teleflex, Inc., 550 U.S. 398, 418 (2007)). The Examiner is merely including
angle iron 23 of Guenther in the granular material storage bin of AAPA,
which would not have been uniquely challenging to a person of ordinary
skill in the art because it is no more than “the mere application of a known
technique to a piece of prior art ready for the improvement.” Id. at 417. An
improvement that is nothing more than the predictable use of prior art
elements according to their established functions is likely to be obvious. Id.
Moreover, the property “to withstand a load transfer of shear forces
generated by single pass sweeping” would have flowed naturally from the
shape, material, and dimensions of angle iron 23 of Guenther in combination
with the granular material storage bin of AAPA. See Ex Parte Obiaya, 227
USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
otherwise be obvious.”). Thus, Appellants have not persuasively argued that
the Examiner’s conclusion lacks rational underpinning.
Lastly, Appellants argue that, “[t]here has been a long-felt need and
desire for a large commercial grain bin having the appropriate wall strength
in order to sustain and resist the shear forces presented with the use of a
single pass auger.” Grossman Declaration, para. 12. However, the
Grossman Declaration fails to provide any objective evidence that a long-felt
need has existed for such a grain bin or that others in the industry have made
attempts to solve the articulated problem and failed.3 The Grossman

3 The relevance of long-felt need to the issue of obviousness depends
on several factors. First, the need must have been a persistent one that was
recognized by those of ordinary skill in the art. See Orthopedic Equip. Co.
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Declaration merely indicates that prior to the claimed granular material
storage container multiple passes of an auger were required because “prior
art grain bins would only resist a certain amount of shear forces,” which
does not by itself lead to the conclusion that there had been a long-felt need
for a granular material storage container as claimed. See Grossman
Declaration, para. 11. As such, like the Examiner, we find that the
Grossman Declaration fails to provide objective indicia sufficient to
overcome the Examiner’s findings supporting the conclusion that the claim
would have been obvious to a person of ordinary skill in the art at the time
of invention. Ans. 8-9.
In conclusion, for the foregoing reasons, the rejection of independent
claim 1, and claims 2-13, 15, 16, 18-22, and 24 standing or falling with
claim 1, under 35 U.S.C. § 103(a) as unpatentable over AAPA and Guenther
is sustained.

Claims 25 and 26
With respect to independent claims 25 and 26, Appellants argue that,
“the combined references further fail to disclose or suggest attaching a
horizontal connector about a localized area of maximum load as predicted
from a starting point of single pass sweeping as recited in these claims.” Br.
12-13.

v. All Orthopedic Appliances, Inc., 707 F.2d 1376 (Fed. Cir. 1983). Second,
the long-felt need must not have been satisfied by another before the
invention by applicant. See Newell Companies v. Kenney Mfg. Co., 864
F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce another supplied the key element,
there was no long-felt need or, indeed, a problem to be solved”.). Third, the
invention must in fact satisfy the long-felt need. See In re Cavanagh, 436
F.2d 491 (CCPA 1971).
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At the outset, we agree with Appellants that the Examiner has not
made any findings with respect to these limitations of claims 25 and 26.
However, we find that AAPA discloses formation of an asymmetrical pile of
grain 72 with a horizontal force H. See Spec., para. [0004] and Figure 2 of
Appellants’ Drawings. A person of ordinary skill would have readily
appreciated that an asymmetrical pile of grain would in turn exert an
asymmetrical loading on AAPA’s grain bin 50. An artisan must be
presumed to know something about the art apart from what the references
disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Thus, because
AAPA is subjected to asymmetrical loading, we find that AAPA discloses “a
localized area of maximum load,” as called for by independent claims 25
and 26. Furthermore, it would have been obvious as a matter of common
sense to position angle iron 23 of Guenther in the area where an
asymmetrical pile of grain 72 is formed in AAPA’s grain bin 50 in order to
strengthen the connection in a “localized area of maximum shear load.” See
Perfect Web Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir.
2009) (the examiner when analyzing the evidence may employ common
sense not inconsistent with the ordinary level of knowledge and skill in the
art at the time of the invention). Thus, a person of ordinary skill in the art
would have known that this modification would have provided a secure
connection between the grain bin wall and the foundation in a specific
location that is subject to a higher load due to asymmetrical loading of the
grain bin.
Accordingly, we shall sustain the rejection of claims 25 and 26 over
the combined teachings of AAPA and Guenther. However, we denominate
the affirmance of the rejection of these claims as NEW GROUNDS OF
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REJECTION pursuant to 37 C.F.R. § 41.50(b), because our analysis relies
upon facts and reasoning that the Examiner did not use.

SUMMARY
The Examiner’s decision to reject claims 1-13, 15, 16, 18-22, and 24-
26 is affirmed.
For the reasons discussed above, we denominate our affirmance of the
rejection of claims 25 and 26 as new grounds of rejection pursuant to 37
C.F.R. § 41.50(b).
Regarding the affirmed rejection(s) that have not been denominated as
new grounds of rejection, 37 C.F.R. § 41.52(a)(1) provides that
“Appellant[s] may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
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(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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