Ex Parte SherstadDownload PDFPatent Trial and Appeal BoardAug 26, 201412204607 (P.T.A.B. Aug. 26, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte MATTHEW CARLYLE SHERSTAD ________________ Appeal 2012-007621 Application 12/204,607 Technology Center 3600 ________________ 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 We AFFIRM-IN-PART 1 The Examiner has withdrawn the stated rejections of claims 8‒13.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. Appeal 2012-007621 Application 12/204,607 2 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. Appeal 2012-007621 Application 12/204,607 3 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. Appeal 2012-007621 Application 12/204,607 4 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. Appeal 2012-007621 Application 12/204,607 5 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.” Appeal 2012-007621 Application 12/204,607 6 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. Appeal 2012-007621 Application 12/204,607 7 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. Appeal 2012-007621 Application 12/204,607 8 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 Klh Copy with citationCopy as parenthetical citation