Ex Parte LeonhardtDownload PDFPatent Trial and Appeal BoardMar 16, 201814059704 (P.T.A.B. Mar. 16, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/059,704 757 7590 BGL P.O. BOX 10395 CHICAGO, IL 60610 10/22/2013 03/16/2018 FIRST NAMED INVENTOR PATRICK A. LEONHARDT 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. 33-1394 1566 EXAMINER SETLIFF, MATTHIEU F ART UNIT PAPER NUMBER 3679 MAILDATE DELIVERY MODE 03/16/2018 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 PATRICK A. LEONHARDT Appeal2017-003369 Application 14/059,704 Technology Center 3600 Before STEFAN STAICOVICI, KEN B. BARRETT, and ANTHONY KNIGHT, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Patrick A. Leonhardt ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision in the Final Action (dated Apr. 25, 2016, hereinafter "Final Act.") rejecting under 35 U.S.C. § 103(a) claims 1-19 and 26-32 as being unpatentable over Albritton (US 6,398, 192 B 1, iss. June 4, 2002) and Thompson et al. (US 5,664,905, iss. Sept. 9, 1997, hereinafter 1 Energy Absorption Systems Inc. is identified as the real party in interest in Appellant's Appeal Brief (filed Sept. 13, 2016, hereinafter "Appeal Br."), at page 1. Appeal2017-003369 Application 14/059,704 "Thompson"). 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). SUMMARY OF DECISION We REVERSE. INVENTION Appellant's invention relates to "a frangible post used in a guardrail system." Spec. para. 2. Claims 1, 12, and 26 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A guardrail anchor comprising: a one-piece, monolithic frangible post comprising a cable anchor adapted to capture and hold an anchor cable, wherein the one-piece, monolithic frangible post is breakable from an intact anchor configuration to a releasable configuration during an axial impact, wherein the one-piece, monolithic frangible post comprises completely separated upper and lower portions when in the releasable configuration; and wherein the one-piece frangible post comprises a laterally extending hinge member extending through a hinge opening formed in the one-piece, monolithic frangible post, wherein the one-piece, monolithic frangible post experiences tension forces upstream of the hinge opening and compression forces at the hinge member during the axial impact. 2 Claims 20-25, 33, and 34 are canceled. Appeal Br. 20, 21 (Claims App'x.). 2 Appeal2017-003369 Application 14/059,704 ANALYSIS The Examiner finds that Albritton discloses a frangible post (elongated member) 26, 2 8 having most of the limitations of independent claims 1, 12, and 26, but "does not expressly disclose the frangible post being a one-piece, monolithic frangible post." Final Act. 2-3 (citing Albritton, Figs. 5-8). Nonetheless, the Examiner finds that: ( 1) Thompson discloses "a similar frangible post that is a one-piece monolithic construction in order to provide for greater control of the collapse of the posts under a known impact load." Id. at 3 (citing Thompson, col. 1, 11. 52-55, Fig. 2); (2) "[A] one-piece construction, in place of separate elements fastened together, is a design consideration within the skill of the art." Id. (citing In re Kohno, 391F.2d959 (CCPA 1968); In re Larson, 340 F.2d 965 (CCPA 1965)); and (3) "[O]ne having ordinary skill in the art would recognize that the use of a one-piece, monolithic frangible post instead of a multiple piece frangible post, would have multiple obvious benefits, including but not limited to, easier installation and lower cost due to fewer components." Id. Thus, the Examiner concludes that [I]t would have been obvious to one having ordinary skill in the art to modify the frangible post of Albritton to be of one-piece, monolithic construction in order to provide for greater control of the collapse of the posts under a known impact load, as taught by Thompson and because one-piece construction, in place of separate elements fastened together, is a design consideration within the skill of the art, and because the use of the use of a one-piece, monolithic frangible post instead of a 3 Appeal2017-003369 Application 14/059,704 multiple piece frangible post, would be easier to install and be of lower cost due to fewer components. Id. at 4. Appellant argues that the Examiner's reasoning for making the post of Albritton as one-piece, namely, to "provide for greater control of the collapse," lacks rational underpinings because it would require for the entire post of Albritton, as modified by Thompson, to fail, rather than just shear bolt 223, hence "introduce[ing] less control and predictability, not more." Appeal Br. 5---6 (citing Albritton, Fig. 5); see also Reply Brief 5 (filed Jan. 3, 2017, hereinafter "Reply Br."). Appellant explains that because Albritton's post "fails through shear [of bolts 223, 231] ... which is directly contrary to the post of Thompson, which fails through buckling," modifying Albritton's post to be a "one-piece" post, as taught by Thompson, would change the principle of operation of Albritton's post. Appeal Br. 9--10. Thus, according to Appellant, "Albritton clearly teaches away from the use of a monolithic post" because "the entire premise of Albritton is to provide a two-piece post that may be separated [into pieces] by way of a joining fastener 223 that fails in shear" so that the pieces can be reused. Appeal Br. 5, 8 (citing Albritton, col. 1, 11. 62---64, col. 2, 11. 57---61, col. 11, 11. 25--40). Thus, Appellant contends that "Albritton ... criticize[s], discredit[s] and otherwise discourages the solution claimed" of a one-piece, monolithic frangible post. Id. at 9 (citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). 4 Appeal2017-003369 Application 14/059,704 In response, the Examiner points to Appellant's footnote on page 4 of the Brief3 and states that "the claim language 'one-piece, monolithic' is broad enough to encompass multi-piece constructions that are connected by welding, mechanical connection (like that of a bolt), or other such devices." Examiner's Answer 3 (dated Nov. 3, 2016, hereinafter "Ans."). Thus, the Examiner determines that "Albritton may in fact anticipate at least independent claims 1 and 12" because (1) members 26, 28 "are connected by [a] mechanical connection (e.g. a bolt)" or (2) because upper member 26, bolts 223, 231, and cable anchor 306 may constitute a "one-piece, monolithic frangible post." Id. We do not agree with the Examiner that Appellant's footnote on page 4 of the Brief broadens the scope of a "one-piece, monolithic" post to include a post made from more than one element. Rather, we agree with Appellant that a reasonable interpretation is that "other components may be connected" to a "one-piece, monolithic" post. Reply Brief 3 (filed Jan. 3, 2017, hereinafter "Reply Br."). In other words, having other separate and distinct elements connected to a "one-piece, monolithic" post does not change the structure of the post from being "one-piece" to being made from more than one element. As such, Appellant is correct in that the phrase "one-piece, monolithic" as applied to a "frangible post" (as per claims 1 and 26) or a "frangible elongated member" (as per claim 12) excludes a post or 3 Appellant asserting: "Of course, it should be understood that 'one-piece, monolithic frangible posts' having other components connected thereto, whether by welding, mechanical connection, or other such devices, are covered by, and do not avoid, the noted claim language." 5 Appeal2017-003369 Application 14/059,704 elongated member that "can be made of more than one piece." Reply Br. 3. Such an interpretation is consistent with Appellant's Specification, which describes a post as being "one-piece" and having various weakening features that "form a zone or line of weakness." Spec. paras. 10, 29, Figs. 1, 3, and 4. Hence, as Albritton's upper and lower portions 26, 28 are joined mechanically by coupling mechanism 29, we do not agree with the Examiner's position that Albritton's post 26, 28 constitutes a "one-piece, monolithic" frangible post (as per claims 1 and 26) or a frangible elongated member (as per claim 12). See Ans. 3; see also Albritton, Fig. 6. We also do not agree with the Examiner's alternative interpretation that only upper portion 26 of Albritton's post 26, 28 in combination with bolts 223, 231, and cable anchor 306 form a "one-piece, monolithic" post. See Ans. 3. Such an interpretation is contrary to Albritton, which explicitly describes post 18 as including upper portion 26, lower portion 28, and coupling mechanism 29. See Albritton, col. 6, 11. 9-11. The Examiner further asserts "there is no express disclosure in Albritton that teaches away from the use of a 'one-piece, monolithic' design." Ans. 6. According to the Examiner, "[i]f Albritton were modified in the manner proposed ... the post of Albritton would still function as a frangible post at least because both Albritton and Thompson are both concerned with frangible posts." Id. In other words, the Examiner contends that "the operation, understanding, and expectations of 6 Appeal2017-003369 Application 14/059,704 Albritton would be the same if Albritton were modified to be a 'one-piece, monolithic' design, namely, the post would still be a frangible post that would separate at a point of weakness." Id. We do not agree with the Examiner's position for the following reasons. First, although we appreciate that the resulting post of Albritton, as modified by Thompson, would still function as a frangible post, nonetheless, Appellant correctly contends that the Examiner's reasoning for combining the teachings of Albritton and Thompson is inadequate. See Appeal Br. 9; Reply Br. 5. The Supreme Court has verified "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this case, the Examiner has not adequately explained what in the prior art would have prompted a person having ordinary skill in the art to modify Albritton's two-piece post to be a "one-piece, monolithic" post, as taught by Thompson. The Examiner has not provided any findings that Albritton's two-piece post has a problem with controlling the collapse of the post under a known impact load such that providing a "one-piece, monolithic" post, as taught by Thompson, would provide for "greater control" (see Final Act. 4). Rather, as Appellant astutely notes, Albritton's two-piece post already controls collapse adequately due to shearing of bolts 223, 231. See Appeal Br. 5 (citing Albritton, col. 11, 11. 25--40). Hence, the Examiner's articulated reason for combining the disclosures of Albritton and Thompson, namely, "to provide for greater control of the collapse of the posts under a known impact load," 7 Appeal2017-003369 Application 14/059,704 is not supported by a preponderance of the evidence. See Final Act. 4 (emphasis added). Secondly, we appreciate the Examiner's position that "a one-piece construction, in place of separate elements fastened together, is a design consideration within the skill of the art." Final Act. 3. We further appreciate that Albritton's two-piece post, when modified according to Thompson, to be a "one-piece, monolithic" post "would still be a frangible post that would separate at a point of weakness." See Ans. 6. However, although in appropriate circumstances, a modification of prior art teachings may be a matter of design choice, nonetheless, a proposed change that results in a different structure and function may not be an obvious design choice. See Flour Tee, Corp. v. Kappas, 499 Fed. Appx. 35, 41--42 (Fed. Cir. 2012). Here, Appellant is correct in that the structure and function of Albritton's two-piece post differs from that of Thompson's one-piece post in that Albritton's post fails in shear due to shearing of bolts 223, 231, whereas Thompson's post fails by buckling of faces 18, 19 at notches 16, 17. See Final Act. 5-6 (citing Albritton, col. 11, 11. 25--40; Thompson, col. 4, 11. 13- 15). As the structure of Albritton's two-piece post differs from that of Thompson's one-piece post, we further agree with Appellant that the failure mode of the resulting post of Albritton, as modified by Thompson, would differ from that of Albritton's post, because the post would fracture or would be tom from its base, rather than precisely separate along shear bolts 223, 231. See Appeal Br. 6 (citing Thompson, col. 4, 11. 18-23). Moreover, the resulting post of Albritton, as modified by Thompson, would not provide a 8 Appeal2017-003369 Application 14/059,704 post with reusable parts, which Albritton explicitly discloses as the object of its invention. See Albritton, col. 2, 11. 50-54 and 57-61. As such, the Examiner has not adequately explained why a skilled artisan would have modified Albritton's two-piece post with Thompson's one-piece post as a mere design choice when the modification would change the structure and operation of Albritton's post. Merely asserting that the change is an obvious design choice is insufficient. See Cutsforth, Inc. v. MotivePower, Inc., 636 F. App'x. 575, 578 (Fed. Cir. 2016) (unpublished) (stating that a particular placement of an element is a design choice does not make it obvious; a reason must be offered as to why a skilled artisan would have made the specific design choice). Lastly, we appreciate the Examiner's position, that "a one-piece, monolithic frangible post ... [has] multiple obvious benefits, including but not limited to, easier installation and lower cost due to fewer components." See Final Act. 3. However, the Examiner has not provided any findings to support such an assertion, especially as Albritton explicitly discloses that its two-piece post generates "cost savings ... by reusing the upper and lower portions [26, 28] after an impact ... [and] replacing only the shear bolts." Albritton, col. 11, 11. 59---61; see also id. at col. 2, 11. 59---61 ("support post ... which is cheaper and more reusable than previous designs."). In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103(a) of independent claims 1, 12, and 26, and their respective dependent claims 2-11, 13-19, and 27-32 as unpatentable over Albritton and Thompson. 9 Appeal2017-003369 Application 14/059,704 SUMMARY The Examiner's decision to reject claims 1-19 and 26-32 is reversed. REVERSED 10 Copy with citationCopy as parenthetical citation