Ex Parte Sherstad

Patent Trial and Appeal Board

Aug 26, 2014

12204607 (P.T.A.B. Aug. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MATTHEW CARLYLE SHERSTAD
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Appeal 2012-007621
Application 12/204,607
Technology Center 3600
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Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
LISA M. GUIJT, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1‒7 and 20‒281. App. Br. 5. Claims 14‒19 have been
canceled. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART

1 The Examiner has withdrawn the stated rejections of claims 8‒13. Ans. 4.
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THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to barriers to pedestrians or
vehicles, and more particularly to fences and fence components.” Spec.
para. 2. Independent claim 1 is illustrative of the claims on appeal and is
reproduced below:
1. A barrier formed from an elongate rail and a
plurality of vertical upright members, wherein the elongate rail
includes a web and a pair of opposed side walls which extend
from the web to define a rail channel, wherein each upright
member includes an aperture formed therein, and further
including an individual clip associated with each one of the
plurality of vertical upright members, each clip including a
flange, wherein a pin extends from the flange of each clip, and
wherein the pin is inserted into the aperture of the associated
upright member, wherein each upright member, with its
associated clip, is at least partially situated within the rail
channel, and the clip is welded to an inside surface of the rail
channel.

REFERENCES RELIED ON BY THE EXAMINER
Strome US 6,568,658 B2 May 27, 2003
Zen US 6,752,385 B2 June 22, 2004
Gibbs2 US 2005/0092978 A1 May 5, 2005
Gibbs3 US 2005/0199864 A1 Sept. 15, 2005

THE REJECTIONS ON APPEAL
Claims 1, 3‒7, 20, and 22‒26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zen and Strome. Ans. 6.
Claims 2 and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zen, Strome, and Gibbs. Ans. 13.

2 Identified by the Examiner as “Gibbs.” Ans. 5.
3 Identified by the Examiner as “Gibbs II.” Ans. 5.
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Claims 27 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zen, Strome, and Gibbs II. Ans. 13.

ANALYSIS
The rejection of claims 1, 3‒7, 20, and 22‒26
as being unpatentable over Zen and Strome
Appellant combines arguments for independent claims 1 and 20 and
also combines arguments for claims 7 and 20. App. Br. 12‒18. We address
the three claims 1, 7, and 20 as follows with dependent claims 3‒6 and 22‒
26 standing or falling with their respective parent claim. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner primarily relies on Zen for disclosing the claimed
limitations but acknowledges that Zen does not disclose (a) “an individual
clip being associated with each one of the plurality of vertical upright
members” because Zen discloses “a single clip (10)” “associated with all the
vertical upright members (2),” and (b) “the clip (10) being welded” to the
inside channel surface. Ans. 6, 7.
With respect to claim 1 and regarding (a) above, the Examiner
provides alternate rationales in that, first, it would have been obvious “to
modify [Zen’s] single clip connecting all of the upright members by
separating the clip into individual clips, each associated with an individual
upright member” because “in the event of a broken clip, only a single piece
associated with a single upright would need replacing rather than having to
replace the one clip connected to all of the uprights.” Ans. 7. The Examiner
concludes that such separation into individual clips would have been
obvious because doing so would have “minimiz[ed] repair costs” based on
the above reason. Ans. 7 (see also Ans. 15 for a discussion of KSR Int’l Co.
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v. Teleflex Inc., 550 U.S. 398 (2007) and “taking into account ‘the inferences
and creative steps that a person of ordinary skill in the art would employ”).
Additionally, the Examiner finds the disclosure of (a) to be obvious
“because it has been held that constructing a formerly integral structure in
various elements requires only routine skill in the art. Nerwin v.
Erlichmann, 168 USPQ 177, 179.” Ans. 7. Regarding the “welded”
limitation identified in (b), the Examiner relies on Strome for teaching that
“welding is a commonly used method of connecting [fence] components.”
Ans. 7.
The Examiner’s rationale regarding claim 20 varies from that
expressed supra regarding claim 1. Ans. 9‒11. This is because claim 20 is
directed to a clip “supporting an opposed pair of spaced apart pivot pins”
and the Examiner provides a first reason to modify Zen to have “a pair of
opposed pins” “rather than a single pin” so as to “minimiz[e] repair costs.”
Ans. 11. However, as above, the Examiner also provides an alternate basis
of obviousness based on Nerwin and further relies on Strome for teaching
welding. Ans. 10, 11.
Appellant does not dispute the welding teachings of Strome but
instead contends that “the Examiner relies SOLELY on [the] citation to
Nerwin v. Erlichman.” App. Br. 12. Appellant explains that prior Board
decisions have held that Nerwin “reflects a discredited per se rule for
obviousness and cannot be relied upon as support for this obviousness
rejection.” App. Br. 13; see also App. Br. 14, 15 and Reply Br. 6, 7.
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To the extent the Examiner solely relies upon a per se rule of
obviousness, we would agree with Appellant’s assertion. 4 However, here,
the Examiner provides alternate reasons for the conclusions of obviousness
which Appellant does not address and, regarding the assertion of a per se
rule, an explanation has been provided by the Examiner indicating why it
would have been obvious to modify the single clip and pin of Zen (i.e., to
“minimize[e] repair costs”). Ans. 7, 11. In other words, Appellant does not
dispute the underpinning of the Examiner’s alternate rationales for the clip
and pin, nor does Appellant explain how such findings fail to apply to the
facts at hand as per MPEP § 2144 (see, e.g., Reply Br. 7, 8). In short, we are
not persuaded that the Examiner solely stated and applied a per se rule as
Appellant asserts. App. Br. 12‒14.
Appellant further contends that the Examiner relied on “hindsight”
(App. Br. 15, 16, Reply Br. 7) but nowhere does Appellant identify where
Appellant’s Specification discusses or even suggests making the clips and
pins separate in order to “minimiz[e] repair costs” as concluded by the
Examiner. Ans. 7, 11. In other words, Appellant does not indicate where or
how the Examiner’s rationale is gleaned only from Appellant’s own
disclosure nor does Appellant explain how the Examiner’s rationale relies on

4 MPEP § 2144 provides guidance that “[w]hen considering obviousness,
Office personnel are cautioned against treating any line of reasoning as a per
se rule.” “So, for example, automating a manual activity, making portable,
making separable, reversing or duplicating parts, or purifying an old product
may form the basis of a rejection. However, such rationales should not be
treated as per se rules, but rather must be explained and shown to apply to
the facts at hand” (emphasis added). “Simply stating the principle (e.g., ‘art
recognized equivalent,’ ‘structural similarity’) without providing an
explanation of its applicability to the facts of the case at hand is generally
not sufficient to establish a prima facie case of obviousness.”
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knowledge that is beyond the level of ordinary skill at the time of the
invention. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971).
We additionally note that Appellant’s Specification states that “a
sequential assembly operation of the rails, clips and uprights may be
needed” and that such an assembly operation “is not described herein in
detail since such would be understood by one skilled in the art.” Spec. para.
34. We thus understand Appellant to be acknowledging that a sequential
assembly operation involving individual components is well-known. This
well-known knowledge would appear to bolster the Examiner’s conclusions
that separating a single component into individual components, and
sequentially constructing a device based on such individual components, is
well within the ability of one skilled in the art.
Appellant’s Reply Brief also addresses what is understood by
Appellant as being “an additional/alternative ground for sustaining the
rejection of claim 1” which is separate from the reasons discussed supra.
Reply Br. 4‒6. However, Appellant’s focus on this “additional/alternative
ground” is not persuasive that the Examiner’s previously expressed
rationales are in error.
Accordingly, we sustain the Examiner’s rejection of claims 1 and 20
and dependent claims 3‒6 and 22‒26.
Appellant further presents arguments regarding claims 7 and 20. App.
Br. 16‒18, Reply Br. 8, 9. Appellant contends that “with the Zen
configuration, no provision is made for permitting the removal of the
vertical upright member.” Reply Br. 8; see also Reply Br. 9. However,
Appellant does not indicate where this alleged distinction is a claimed
limitation and hence this contention is not persuasive of Examiner error.
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Appellant also repeats the contentions discussed above concerning “the
Examiner rel[ying] SOLELY on [the] citation to Nerwin.” App. Br. 17.
This argument is not persuasive with respect to claim 20 as discussed supra;
however, the same analysis is not applicable to the Examiner’s specific
rejection of claim 7. Ans. 8, 9. This is because with respect to claim 7, the
Examiner did not provide an alternate reason for the use of multiple pins
instead of Zen’s single pin so as to minimize repair costs; instead, it appears
that the Examiner does rely on Nerwin as a per se rule.5 Ans. 9. As stated
supra, such reliance, without providing a further explanation of the
application of this rule to the facts at hand, or without providing articulated
reasoning with rational underpinning, is insufficient for a conclusion of
obviousness. For this reason, we sustain the Examiner’s rejection of claim
20, and reverse the Examiner’s rejection of claim 7.

The rejection of claims 2 and 21
as being unpatentable over Zen, Strome, and Gibbs
Appellant presents no argument regarding the Examiner’s rejection of
claims 2 and 21. Accordingly, the Examiner’s rejection of these claims (i.e.,
Ans. 13) is sustained.

The rejection of claims 27 and 28
as being unpatentable over Zen, Strome, and Gibbs II

5 In the Examiner’s Response section, the Examiner further states that it
would have been obvious “because such a modification would yield no more
than predictable results.” Ans. 17. Appellant explains how the invention
achieves an “unpredictably different result.” Reply Br. 9. Regardless, the
Examiner’s stated rationale seems to be predicated upon the use of multiple
pins and, regarding claim 7, the Examiner’s sole basis of multiple pins being
obvious in light of Zen’s single pin is a reliance on Nerwin, whose use as a
per se rule is improper.
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The Examiner acknowledges that “Zen does not disclose a top surface
of the clip being welded to the inside surface of the web of the elongate rail
[Claim 27] or that the weld be a projection weld [Claim 28].” Ans. 13. The
Examiner relies on Gibbs II for teaching these limitations and provides a
reason for combining Gibbs II with Zen. Ans. 14. Appellant does not
dispute the Examiner’s findings based on Gibbs II but instead argues that the
clip in Gibbs II “is a fixed mounting clip incapable of forming a pivoting
member.” App. Br. 21. The Examiner is not relying on Gibbs II for
teaching a pivoting member. Ans. 14. Appellant further contends that
“there is no motivation or reason to form the weld at any other location than
at [Zen’s] groove 45.” App. Br. 21. However, Appellant does not explain
how the reason to form the weld as claimed, as expressed by the Examiner,
is wrong or faulty. Ans. 14. Accordingly, we sustain the Examiner’s
rejection of claims 27 and 28.

DECISION
The Examiner’s rejections of claims 1‒6 and 20‒28 are affirmed.
The Examiner’s rejection of claim 7 is reversed.
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-IN-PART

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