Ex Parte Paton-Ash et al

Patent Trial and Appeal BoardNov 15, 2017

13065152 (P.T.A.B. Nov. 15, 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. 13/065,152 03/15/2011 Gregory Roy Paton-Ash STRATA-6 DIV 8965 7590 11/15/2017 Ansel M. Schwartz Suite 304 201 N. Craig Street Pittsburgh, PA 15213 EXAMINER SAFAVI, MICHAEL ART UNIT PAPER NUMBER 3631 MAIL DATE DELIVERY MODE 11/15/2017 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 GREGORY ROY PATON-ASH and JOHN JOSEPH REINMANN, JR. ____________________ Appeal 2015-007782 Application 13/065,152 Technology Center 3600 ____________________ Before LINDA E. HORNER, KEN B. BARRETT, and GEORGE R. HOSKINS, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Gregory Roy Paton-Ash and John Joseph Reinmann, Jr. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1, 3–8, 11, 12, and 14–16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2015-007782 Application 13/065,152 2 THE INVENTION Appellants’ claimed invention pertains to “mine support cribs having reduced amounts of wood or material.” Spec. 1. Method claim 1 and apparatus claim 7 are independent. Claim 7, reproduced below with paragraphing and indentions added, is illustrative of the subject matter on appeal. 7. A mine roof support crib comprising: a plurality of chocks that are connected together through notches in the chocks to form at least three planes and are able to support load from the mine roof wherein each notch having only one edge, each chock having a primary piece having a top and a bottom, a first block and a second block disposed on the top and bottom, respectively, and means for attaching the first block and second block to the primary piece, an outward surface of the first block and second block defining the edge of a first notch and of a second notch of each chock, respectively, each notch has either a spacer or a bar pin or a staple defining a receive zone with the edge of the corresponding notch, the receive zone receiving a notch of an adjacent chock; and a top portion, which includes a grout bladder or a wedge, on the chocks which fits between the chocks and a roof of the mine so the chocks are prestressed. Br. 44–45 (Claims Appendix). Appeal 2015-007782 Application 13/065,152 3 THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: De Garay US 1,331,186 Feb. 17, 1920 Rothenberg, Jr. US 4,521,203 June 4, 1985 Reinmann US 5,746,547 May 5, 1998 Cole US 4,905,409 Mar. 6, 1990 Sharp GB 2 335 678 A Sept. 29, 1999 The following Examiner’s rejections are before us for review: 1. Claims 1, 3–8, 11, 12, and 14–16 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention; 2. Claims 1, 3, 7, 8, 11, 12, and 14–16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Reinmann, Rothenberg, and either Cole or De Garay; and 3. Claims 1, 3, 7, 8, 11, 12, and 14–16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Sharp and Reinmann. ANALYSIS A. The Indefiniteness Rejection1 Independent claim 1 recites a “notch with only one edge” and “each notch has a stop that is either a spacer or a bar pin or a staple defining a 1 We understand the Examiner to have withdrawn the indefiniteness rejection associated with the recitation in claim 1 of “supporting a load from the roof of the mine with the additional chocks and the first, second, third and fourth chocks.” Compare Final Act. 3 with Ans. 2–3 (restating the indefiniteness ground but omitting this basis); see also Ans. 10 (withdrawing Appeal 2015-007782 Application 13/065,152 4 receive zone with the edge of the corresponding notch.” Br. 42 (Claims Appendix). Independent claim 7 recites similar language except it does not use the term “stop.” Id. at 44. The Examiner determines that the independent claims and those depending therefrom are indefinite because it is not clear how a notch can have only one edge. Final Act. 3. The Examiner further determines that, as a result, the “receive zone” cannot be determined. Id. Appellants note that the claims also recite that a block defines the edge of a notch. See Br. 15; see also Claim 7 (“an outward surface of the first block . . . defining the edge of a first notch”). Appellants argue that one of ordinary skill in the art would understand what is meant by an edge of a notch together with a stop (a spacer, bar pin, or staple) defining a “receive zone.” Br. 15. In so arguing, Appellants note that the stop forms another edge of the respective notch. Id. (“claim [7] does define another edge as being formed not of the chock itself but defined by either a spacer or a bar pin or a staple”). Thus, Appellants appear to concede that a given notch has at least two edges. This is in contrast to the claim’s recitation that each notch has “only one edge.” Accordingly, we agree with the Examiner that the claims lack clarity concerning the “only one edge” language, and we therefore sustain the indefiniteness rejection of claims 1, 3–8, 11, 12, and 14–16 in that regard. We, however, determine that the meaning of the “receive zone” is adequately clear from the claim language when read in the written description rejection concerning the same recitation and setting forth the Examiner’s interpretation of the phrase). Appeal 2015-007782 Application 13/065,152 5 light of the Specification, even if the “edge” is unclear. Accordingly, we do not sustain the indefiniteness rejection as to the “receive zone” phrase. The Examiner also rejects dependent claim 5 as indefinite because, according to the Examiner, it is not clear as to how claim 5 further limits claim 1 from which it depends. Final Act. 3–4. Appellants do not challenge the Examiner’s position, stating “[i]n regard to Claim 5, it should be canceled and will be canceled when this application is allowed.” Br. 18. As such, we summarily sustain the rejection of claim 5. B. The Obviousness Rejection Based on Reinmann, Rothenberg, and either Cole or De Garay Apparatus claim 7 pertains to a mine support crib formed, in part, from interconnected chocks, where each chock is formed from three stacked and attached blocks (i.e., a primary piece and first and second blocks) and where each chock has a notch with either a spacer, a bar pin, or a staple and thereby defining a receive zone to receive a notch of an adjacent chock. There also is a grout bladder or wedge that fits between the chocks and the roof of the mine. The Examiner finds that Reinmann’s single-piece chock has the general configuration of the claimed chock. See Final Act. 5–6, 7. The Examiner relies on Rothenberg for the teaching of forming a chock by attaching top and bottom blocks to a primary piece so as to create notches. Id.; see also Ans. 11 (“Rothenberg, Jr. had been utilized to teach that structural form elements can be made with multiple pieces and particularly that an upper raised portion and a lower raised portion can be formed by attaching separate upper and lower pieces, or blocks.”). The Examiner points to Cole and, alternatively, De Garay as disclosing attaching two timbers to form a notch for an overlapping arrangement of timbers. Final Appeal 2015-007782 Application 13/065,152 6 Act. 6. The Examiner reasons, relying on the references’ teachings, that it would have been obvious to form Reinmann’s chock from multiple pieces— as in Rothenberg—to form desired notches without the need of milling or routing. Id. at 6–7. Appellants first argue “the applied art of record does not teach or suggest ‘each notch has either a spacer or a bar pin or a staple defining a receive zone with the edge of the corresponding notch’ where the ‘receive zone receives a notch of another chock.’” Br. 19. This conclusory assertion is not persuasive as Appellants do not explain adequately this argument or indicate any purported error in the Examiner’s position and proposed combination regarding the feature. See Final Act. 6. Appellants next address independent apparatus claim 7, arguing that “there is no teaching, suggestion or motivation to combine the teachings.” Br. 19. Appellants acknowledge that such a teaching, suggestion, or motivation need not be explicit in the references. Id. (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)); see also KSR, 550 U.S. at 418 (The Court stating that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). Appellants impliedly argue that a determination of obviousness requires a motivation that “come[s] from recognizing the problem that the claimed invention solves,” which, according to Appellants, is “not enough material present to form a one-piece chock.” Br. 19; see also id. at 26 (“In order for [one skilled in the art] to even conceive of the present invention, he would have had to first recognize the problem of there not being enough material present out of which to form Appeal 2015-007782 Application 13/065,152 7 a single one-piece chock.”). This is an incorrect statement of the law as KSR stands for the opposite proposition. See KSR, 550 U.S. at 420 (“The first error . . . was to foreclose this reasoning by holding that courts and patent examiners should look only to the problem the patentee was trying to solve.”). Rather, “the problem motivating the patentee may be only one of many addressed by the patent’s subject matter[;] [t]he question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art.” Id. We are not persuaded that the proposed modification would result from only hindsight (Br. 21, 27) as the Examiner’s reasoning has rational underpinnings based on the teachings of the cited prior art references. We also are not persuaded by Appellants’ argument that the Examiner’s reasoning is flawed because the amount of time to mill out a notch would be small in comparison to the time to form the chock of the claim, which “requires the individual pieces of wood or material to have to be gathered up and individually cut to size and then each component to have to be individually attached.” Br. 20. Even if the assertions underlying this time comparison are accepted as true, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine teachings. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349, n.8 (Fed. Cir. 2000). Appellants next argue that “the risk of failure of any component which is attached by glue or nails or wires[2] under the loads from a mine 2 Appellants’ Specification identifies, as the “attaching means,” a nail or wire. Spec. 5, 8. The Specification indicates that the use of such is well Appeal 2015-007782 Application 13/065,152 8 roof, possibly resulting in the death of miners would preclude one skilled in the art from obviously doing so.” Br. 20. Appellants provide mere attorney- argument and no persuasive evidence to support the implied proposition that one of ordinary skill in the art would deem a multi-component chock to be unacceptable for use in a mine. Cf. Sharp, Abstr., 13 (disclosing a multi-component chock for use in a mine where the horizontal components “are joined together by conventional fixing means” such as nails and adhesives). To the extent Appellants argue that Reinmann’s disclosure of a single-piece chock teaches away from a multi-piece chock, we are not persuaded as Appellants do not direct our attention to any disparagement of such in Reinmann. See Br. 20–21; see also Declaration of Clifford A. McCartney dated Aug. 14, 2012 (“McCartney Decl.”) 6 (asserting that Reinmann, “by teaching that the chock 10 is formed in one piece, it actually teaches away from applicants’ claimed invention.”). Appellants, relying on the Declaration of Clifford A. McCartney, argue that Rothenberg, Cole, and De Garay are non-analogous art. Br. 21– 26; Br., Ex. E (McCartney Decl.). Appellants’ arguments are based on the assertion that the references “have nothing to do with mine cribs of the claimed invention” and “have nothing to do with mining equipment [or] the safety issue that is predominant in the design of mining equipment.” Id. at 21–22. Appellants’ arguments and the corresponding declaration testimony are not persuasive. “[F]amiliar items may have obvious uses beyond their known in the art. Id. at 8 (“The first block 36 and the second block 38 are attached to the primary piece 30 by nails 56 or by spinning wire 58 through the wood, as is well known in the art.”). Appeal 2015-007782 Application 13/065,152 9 primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420. The cited references pertain to construction techniques for structures involving interlocking and/or overlapping components. Even Rothenberg, which Appellants characterize as pertaining to a toy construction kit (Br. 23–24), discloses the construction of life-size forts and the like from interlocking “logs” (albeit logs made from honeycomb sandwich kraft paper). Rothenberg, 1:14–18, 40–54; 2:16–18. All of the references are, at least, reasonably pertinent to the problem with which Appellants’ invention is directed–the construction of an interlocking structure for supporting a load. We note that Rothenberg, the play fort reference, is, like Appellants’ invention, concerned with weight bearing strength. Rothenberg, 1:52–54. Further, the Declarant’s testimony is undermined by his assertions regarding Rothenberg. McCartney Decl. 4. The Declarant testifies that Rothenberg teaches that the play structures are formed without fasteners, adhesives, and tools, and “no one skilled in the art would look to the teachings of Rothenberg, Jr., because the elements of the construction kit are not taught to be attached as required by the claimed invention.” Id.; see also Br. 23–24 (relying on this testimony for the proposition that the Examiner has ignored “the risk of death” because “the components used to form the chock [in Rothenberg] could come apart and fail.”). However, and as the Examiner notes (Ans. 11), Rothenberg refers to the assembly of the fort without tools and fasteners—by interlocking the chocks much like Appellants’ claimed invention—not the assembly of the individual chocks. Rothenberg, Abstr. The components of the chock are Appeal 2015-007782 Application 13/065,152 10 adhered to each other. Ans. 11 (citing Rothenberg 2:38–51); see also Rothenberg, 2:22–23, 31–34. Appellants do not apprise us of error in the Examiner’s determination that the subject matter of claim 7 would have been obvious. Accordingly, we sustain the rejection of claim 7 as unpatentable over Reinmann, Rothenberg, and either Cole or De Garay. Appellants argue that independent claim 1 is patentable for the same reasons offered for independent claim 7. As discussed above, we have not found those arguments to be persuasive. Appellants also argue that “[m]oreover, Claim 1 is separately and additionally patentable because Claim 1 is a method claim and the very steps themselves and the context and application of the steps must be given weight.” Br. 29 (citing Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770 (Fed. Cir. 1993)).3 This is unpersuasive as it merely is a proposition of law without application to the facts of this case, and Appellants fail to direct our attention to any erroneous treatment of the method claim by the Examiner. Dependent claim 14 recites “the height of the spacer, bar pin or staple is less than the rise of the edge of the corresponding notch.” Br. 45 (Claims Appendix); see also id. at 28. We are unable to discern any discussion of this claim by the Examiner in the Final Action, and therefore cannot sustain the rejection as to that claim. See Final Act. 5–7. 3 The Joy Technologies case states: “[T]he sale of equipment to perform a process is not a direct infringement of the process within the meaning of [35 U.S.C.] section 271(a).” Joy Techs., Inc., 6 F.3d at 774. Appeal 2015-007782 Application 13/065,152 11 Appellants’ assertions regarding the remaining claims subject to this rejection either rely on the unpersuasive arguments made in the context of claim 7 or amount to a recitation of the claim features and a “naked assertion” that the features are not found in the cited prior art. Br. 27–30. Such statements of the latter kind do not constitute a separate argument for patentability of the subject claims pursuant to 37 C.F.R. § 41.37(c)(1)(iv). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had reasonably interpreted the same language in the prior rule under 37 C.F.R. § 41.37(c)(1)(vii) as requiring “more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). Accordingly, we also sustain the rejection of claims 3, 8, 11, 12, 15, and 16 as unpatentable over Reinmann, Rothenberg, and either Cole or De Garay. C. The Obviousness Rejection Based on Sharp and Reinmann The Examiner relies on Sharp for the disclosure of much of the claimed subject matter. Final Act. 8–9. The Examiner relies on Reinmann’s teaching that it was known to prestress chocks in a mine via the use of a grout bladder or wedge, and reasons that it would have been obvious to apply that teaching to Sharp’s mine crib. Id. at 9–10. Appellants argue that “Sharp specifically identifies Reinmann and teaches away from the teachings of Reinmann” and that “Sharp specifically teaches that mine support cribs of the prior art have major disadvantages.” Br. 31; see id. at 31–33. To the extent that this is an argument that Sharp, as a general matter, teaches away from the use of a prior art crib, it is not Appeal 2015-007782 Application 13/065,152 12 persuasive as the Examiner’s proposed combination utilizes Sharp’s chock and crib, not that of the prior art. Final Act. 8–9. Appellants also argue that Sharp’s use of a variable height chock to eliminate the need for a height-compensating wedge or grout bag teaches away from the use of a wedge or grout bag. Br. 33–35. We do not find this argument persuasive, and agree with the Examiner (Final Act. 12–13) that Sharp is identifying the costs and benefits of various options known to the person of ordinary skill in the art and does not discourage one from selecting the wedge/grout option such that it renders the subject matter non-obvious. We note that the use of a wedge or grout bladder to prestress a mine crib was known in the art and, therefore, any purported “teaching away” would not remove that knowledge from the mind of the ordinary artisan. In this case, a known, purportedly less-than-ideal-solution is not a non-obvious one. Additionally, we do not find persuasive Appellants’ implied argument, relying on the McCartney Declaration, that the use of Sharp’s crib system and the use of a wedge or grout bladder are mutually exclusive. See Br. 35. Notwithstanding Sharp’s height variability of the chocks (which would be a function of the available layers forming the chock), it still is possible that the crib may not be exactly the height of the mine, and thus height compensation and prestressing via, e.g., a wedge may be a desired option. We are not persuaded by Appellants’ argument that “Sharp does not recognize the problem that the claimed invention solves, which is to use individual pieces to form a chock when there is not enough material around to form a chock from a single piece of wood” (Br. 35, see also id. at 37) for the reasons given above with the discussion of KSR. Further, the Examiner’s rejection starts with Sharp’s multi-component chock and does Appeal 2015-007782 Application 13/065,152 13 not propose modifying the chock itself. See Final Act. 8–10. We also note that Sharp offers several reasons why the multi-component crib member is advantageous over the prior art chocks cut from solid blocks. See, e.g., Sharp 8–9. Appellants next argue that Sharp, by the use of end blocks having a large surface area, teaches away from “very small components,” namely the recited staple, bar pin, or spacer. Br. 35–36. This argument is not commensurate in scope with the claim language as the claims do not specify the size of the components. Also, Appellants do not explain why Sharp’s end block member 7 would not be considered the recited “spacer.” See Final Act. 8. We have considered Appellants remaining arguments for claim 7 (Br. 37–38), which are similar to those made in the context of the obviousness rejection discussed above, and do not find them persuasive of error. Appellants do not apprise us of error in the Examiner’s determination that the subject matter of independent claim 7 would have been obvious. Accordingly, we sustain the rejection of claim 7 as unpatentable over Sharp and Reinmann. For independent claim 1, Appellants repeat the same or similar arguments addressed already including the assertion that the claim additionally is patentable as a method claim and relying on Joy Technologies, Inc. Br. 39–40. We again do not find these arguments to be persuasive, and we sustain the rejection of claim 1 as obvious over Sharp and Reinmann. Appeal 2015-007782 Application 13/065,152 14 As with the prior rejection, we are unable to discern any discussion of the limitation of claim 14 in the Final Action. See Final Act. 8–10. Accordingly, we cannot sustain the rejection of claim 14 as obvious over Sharp and Reinmann. Appellants’ assertions regarding the remaining claims subject to this rejection either rely on the unpersuasive arguments made in the context of claim 7 or amount to a recitation of the claim features and a “naked assertion” that the features are not found in the cited prior art. Br. 38–41. These statements do not constitute a separate argument for patentability. See In re Lovin, 652 F.3d at 1357. Accordingly, we also sustain the rejection of claims 3, 8, 11, 12, 15, and 16 as unpatentable over Sharp and Reinmann. CONCLUSIONS We conclude that the Examiner did not err in rejecting: 1) claims 1, 3–8, 11, 12, and 14–16 as being indefinite; 2) claims 1, 3, 7, 8, 11, 12, 15, and 16 as being unpatentable over Reinmann, Rothenberg, and either Cole or De Garay; and 3) claims 1, 3, 7, 8, 11, 12, 15, and 16 as being unpatentable over Sharp and Reinmann. We do not sustain the rejection of claim 14 as obvious over Reinmann, Rothenberg, and either Cole or De Garay or as obvious over Sharp and Reinmann. DECISION The decision of the Examiner to reject claims 1, 3–8, 11, 12, and 14– 16 is affirmed. Appeal 2015-007782 Application 13/065,152 15 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