Ex Parte Thacker et al

Patent Trial and Appeal BoardAug 15, 2017

14025894 (P.T.A.B. Aug. 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. 14/025,894 09/13/2013 Steve Howard Thacker STHA.00017 7734 7590 08/15/2017 Miohael f amernn EXAMINER Suite 100-459 CAHN, DANIEL P 4100 West El Dorado Parkway McKinney, TX 75070 ART UNIT PAPER NUMBER 3634 MAIL DATE DELIVERY MODE 08/15/2017 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 STEVE HOWARD THACKER, JOHNNY CURTIS, and YATES HAYMAN Appeal 2017-004223 Application 14/025,8941 Technology Center 3600 Before JOSEPH L. DIXON, LARRY J. HUME, and AARON W. MOORE, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 1â€”20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Next Generation Scaffold Services Inc. App. Br. 2. Appeal 2017-004223 Application 14/025,894 STATEMENT OF THE CASE2 The Invention Appellants' disclosed embodiments and claimed invention "relate[] to scaffolds and scaffold anchor points." Spec. 2,1. 11. Exemplary Claims Claims 1 and 20, reproduced below, are representative of the subject matter on appeal (emphases added to contested limitations): 1. A magnetic scaffold tie, comprising: a base platform having an upper planar face and a lower open face and at least one sidewall; at least one magnet coupled between the upper planar portion and lower open face; proximate an end of the at least one sidewall, a release bar coupled to a release mechanism operable to release the magnetic scaffold tie from a surface to which it is magnetically coupled; a coupling extension, having a first end coupled to and extending substantially orthogonally from the upper planar face of the base platform and a second end of the coupling extension coupled to a scaffold coupling mechanism; and the scaffold coupling mechanism. 2 Our decision relies upon Appellants' Appeal Brief ("Br.," filed July 22, 2016); Examiner's Answer ("Ans.," mailed Nov. 29, 2016); Final Office Action ("Final Act.," mailed Mar. 10, 2016); and the original Specification ("Spec.," filed Sept. 13, 2013). We note Appellants did not file a Reply Brief in response to the factual findings and legal conclusions in the Examiner's Answer. 2 Appeal 2017-004223 Application 14/025,894 11. A magnetic scaffold tie, comprising: a base platform having an upper planar face and a lower open face and four sidewalls forming a generally rectangular shape; a plurality of magnets coupled between the upper planar portion and lower open face and aligned within the sidewalls', proximate an end of the sidewall, a release bar coupled to a release mechanism operable to release the magnetic scaffold tie from a surface to which it is magnetically coupled; a coupling extension comprised of two portions, the first portion having a first end coupled to and extending substantially orthogonally from the upper planar face of the base platform and a second end coupled to a first end of a shock absorbing portion, the second end of the shock absorbing portion having a scaffold coupling mechanism', and the scaffold coupling mechanism further comprising a clamp or half clamp. 20. A method for anchoring a scaffold to a structure, comprising: coupling a magnetic member within a base platform to a structure', extending an extension member orthogonally from the base platform; coupling a clamp on a distal end of the extension member to a scaffold member. 3 Appeal 2017-004223 Application 14/025,894 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Bailey Thompson Morrison Friedrich et al. ("Friedrich '273") Archer Harney Friedrich ("Friedrich '035") US 3,675,735 US 4,396,092 US 5,950,760 US 6,471,273 B1 US 2007/0278038 Al US 2008/0179477 Al US 7,544,035 B1 July 11, 1972 Aug. 2, 1983 Sept. 14, 1999 Oct. 29, 2002 Dec. 6, 2007 July 31, 2008 June 9, 2009 Rejections on Appeal Rl. Claims 1, 3, 4, and 6â€”8 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Archer, Friedrich, and Morrison. Final Act. 5. R2. Claims 2 and 10 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over the combination of Archer, Friedrich '035, Morrison, and Harney. Final Act. 8. R3. Claims 5 and 9 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over the combination of Archer, Friedrich '035, Morrison, and Friedrich '273. Final Act. 9. R4. Claims 11â€”15 and 17â€”19 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over the combination of Archer, Friedrich '273, Thompson, and Morrison. Final Act. 10. 4 Appeal 2017-004223 Application 14/025,894 R5. Claim 16 stands rejected under 35 U.S.C. Â§ 103 as being unpatentable over the combination of Archer, Friedrich '273, Thompson, Morrison, and Bailey. Final Act. 13. R6. Claim 20 stands rejected under 35 U.S.C. Â§ 103 as being unpatentable over the combination of Archer and Morrison. Id. CLAIM GROUPING Based on Appellants' arguments (Br. 6â€”22), we decide the appeal of obviousness Rejection R1 of claims 1, 3, 4, 6, and 8 on the basis of representative claim 1; and we decide Rejection R1 of separately argued claim 7, infra. We decide the appeal of obviousness Rejection R4 of claims 11â€”15 and 17â€”19 on the basis of representative claim 11. We decide Rejection R6 of separately argued claim 20, infra. Remaining claims 2, 5, 9, 10, and 16 in Rejections R2, R3, and R5, not argued separately or substantively, stand or fall with the respective independent claim from which they depend.3 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. Â§ 41.37(c)(l)(iv). 3 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. Â§ 41.37(c)(l)(iv). In addition, when Appellants do not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). 5 Appeal 2017-004223 Application 14/025,894 We disagree with Appellants' arguments with respect to claims 1â€”20 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We highlight and address specific findings and arguments regarding claims 1,7, 11, and 20 for emphasis as follows. 1. $ 103 Rejection R1 of Claims E 3, 4, 6, and 8 Issue 1 Appellants argue (Br. 6â€”13) the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Archer, Friedrich, and Morrison is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a "magnetic scaffold tie" that includes, inter alia, "a base platform having an upper planar face and a lower open face and at least one sidewall," and "at least one magnet coupled between the upper planar portion and lower open face," as recited in claim 1? Analysis Appellants contend, "Archer fails to teach a base platform having a magnet on one side of the base platform and the coupling extension on the other side of the base platform" (Br. 6), and "Archer does not teach a magnet in the same or similar position as that claimed by the Applicants. Because it cannot perform the function of the present invention it is not a proper reference to be applied to the Applicants' invention." Br. 7. Appellants 6 Appeal 2017-004223 Application 14/025,894 conclude their analysis of Archer by alleging, "[bjecause there is nothing in Archer that could be construed to be a magnet on the lower face of a base platform, the use of Archer in an obviousness rejection should be withdrawn." Br. 8. Appellants further allege "Friedrich ['035] is non-analogous art to Applicants' invention" (Br. 9) because (1) "a magnetic scaffold tie is wholly unrelated to a manhole cover remover, a device that is magnitudes larger than a magnetic scaffold tie and has an entirely different function and purpose;" (2) "[t]he present invention is meant to be attached to a structure (e.g., metal wall) and is held stationary while scaffolding is attached to the scaffold coupling mechanism;" (3) "[t]he substantially larger invention of Friedrich is meant to attach to a manhole cover as to move the manhole cover from a street orifice;" and (4) "[a] person of ordinary skill would not reasonably be expected to look to a manhole cover remover for a solution to couple a scaffold tie to a metal wall." Br. 10 (citing In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004)). Appellants also assert that "[t]he use of Friedrich ['035] suggests that impermissible hindsight has been used to obtain the Applicants' invention" (Br. 11), and "[t]here is no teaching, suggestion or motivation to combine the Archer and Friedrich references and the resulting combination of Archer with Friedrich elements would not have been understood to produce predictable results by someone of skill in the art." Br. 12. With respect to the teachings and suggestions of Morrison, Appellants merely allege "Morrison does not overcome the deficiencies of Archer and Friedrich." Id. 7 Appeal 2017-004223 Application 14/025,894 We first note the test for obviousness is what the combined teachings of the prior art would have suggested to the hypothetical person of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). In response to Appellants' first argument regarding the purported deficiencies of Archer, the Examiner finds: [T]he language argued by the appellants, "Archer fails to teach 'a base platform having a magnet on one side of the base platform and the coupling extension on the other side of the base platform'" is not recited in claim 1. Having said that, the combination of applied reference teaches this unclaimed limitation in such a way that the examiner finds that these arguments do not appear to be commensurate in scope with the rejection as applied since the examiner relied upon a secondary reference [Friedrich (US Patent 7544035)] in combination with Archer to teach the limitations as actually claimed. It is noted that Archer teaches its base 120 and connector 140 as using "corresponding magnet/electromagnet components" [see paragraphs 39 and 54 - the quote being from paragraph 54 and further discussed throughout the specification (note this was discussed in the Final Action as well)], more importantly, the examiner has provided Friedrich '035 (which the appellants arguments seem to ignore here) to add the claimed positioning detail of the magnetic housing (inevitably having the claimed subject matter of "an upper planar face and a lower open face at least one sidewall with at least one magnet coupled between the upper planar portion and lower open face" as claimed) and structure as well as the release mechanism claimed. Ans. 3. Having noted that Archer does teach the aspect of magnet(s), it must not be ignored that Friedrich '035 is combined with Archer for at least the non-limiting reason of positioning the magnet(s) taught by Archer as being within an "upper planar face and a lower open face" of the base 120 of Archer in order to meet the limitations of the claim language. 8 Appeal 2017-004223 Application 14/025,894 Once this combination is applied, all of the elements of the instant invention as claimed are taught by the applied references. Ans. 4. We agree with the Examiner's findings. Appellants' "arguments fail from the outset because . . . they are not based on limitations appearing in the claims." In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Additionally, Appellants' contention does not persuade us of error on the part of the Examiner because Appellants are responding to the rejection by attacking the references separately, even though the rejection is based on the combined teachings of the references. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). With respect to the non-analogous art argument, [t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citation omitted). We agree with the Examiner that Friedrich '035 is reasonably pertinent to Appellants' problem because the claimed invention and Friedrich '035 are both solving the particular problem of quickly and easily removably attaching elements. The appellants are concerned with quickly and easily removably attaching a first element to a 9 Appeal 2017-004223 Application 14/025,894 surface with a magnet while Friedrich '035 is similarly concerned with quickly and easily removably attaching a first element to a surface with a magnet. Ans. 8. Accordingly, based upon the unrebutted findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitations of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1, and grouped claims 3, 4, 6, and 8, which fall therewith. See Claim Grouping, supra. 2. $103 Rejection R1 of Claim 7 Issue 2 Appellants argue (Br. 13â€”14) the Examiner's rejection of claim 7 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Archer, Friedrich, and Morrison is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests the "magnetic scaffold tie of claim 6" that includes all further limitations as recited in claim 7? Analysis Appellants contend: Claim 7 includes the further element of, inter alia, a circular cylinder, a longitudinal portion of interior of the circular cylindrical being fixedly coupled to the rotatable shaft 10 Appeal 2017-004223 Application 14/025,894 to form a lobe and the release bar. Friedrich does not disclose this element. Figure 7 A of Friedrich discloses a wheel used to wheel the much larger manhole cover remover into position and the wheel is used to raise and lower the magnet of Friedrich into position[.] Notably, the wheel of Friedrich does not include a longitudinal portion of interior of the circular cylindrical being fixedly coupled to the rotatable shaft to form a lobe. (Friedrich, figure 7A). Br. 13-14. In response to Appellants' arguments, the Examiner finds Friedrich '035 teaches these elements in parallel to the way the appellants disclose these elements in the original disclosure, it is noted that these elements are not clearly shown in the drawings or explained in a way that the detail requires more than what Friedrich shows in Figures such as 7A, 7B or even Figures such as 2 and 4 for example. In this case, include a longitudinal portion of interior of the circular cylindrical being fixedly coupled to the rotatable shaft to form a lobe. Such as seen at 114 of Fig. 7A for example. Note that this is merely one non-limiting example based on what is detailed by the appellants['] disclosure. Ans. 9. We agree with the Examiner's findings, which remain unrebutted by Appellants. Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitations of claim 7, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of dependent claim 7. 11 Appeal 2017-004223 Application 14/025,894 3. $103 Rejection R4 of Claims 11â€”15 and 17â€”19 Issue 3 Appellants argue (Br. 6â€”13) the Examiner's rejection of claim 11 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Archer, Friedrich '273, Thompson, and Morrison is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a "magnetic scaffold tie" that includes, inter alia, "a base platform having an upper planar face and a lower open face and four sidewalls forming a generally rectangular shape; [and] a plurality of magnets coupled between the upper planar portion and lower open face and aligned within the sidewalls," and "a coupling extension comprised of two portions, the first portion having a first end coupled to and extending substantially orthogonally from the upper planar face of the base platform and a second end coupled to a first end of a shock absorbing portion, the second end of the shock absorbing portion having a scaffold coupling mechanism," as recited in claim 11? Analysis Similar to claim 1, Issue 1, supra, Appellants contend Archer does not teach a base platform or a plurality of magnets in the correct position as required by claim 11. Br. 16. Further, Appellants contend "Friedrich" is non-analogous art and is thus not a valid reference in a Â§ 103 rejection. Id. 12 Appeal 2017-004223 Application 14/025,894 Again, Appellants are arguing the references separately, when the rejection is for obviousness under Â§ 103 and what the combination of prior art references would have suggested to a person of ordinary skill in the art.4 For the reasons stated above with respect to Issue 1, we are not persuaded by Appellants' arguments concerning the teachings and suggestions of Archer. Moreover, with respect to Appellants' arguments concerning the availability of "Friedrich" as a prior art reference,5 we note Appellants' arguments are misplaced, because Friedrich '273 is cited by the Examiner in Rejection R4, while Friedrich '035, incorrectly argued by Appellants in Rejection R4, and argued in Rejection Rl, is only relied upon by the Examiner in Rejection Rl. Thus, Appellants' arguments concerning "Friedrich" are not persuasive of Examiner error. Appellants further allege Thompson does not teach or suggest "a coupling extension" including "a second end coupled to a first end of a shock absorbing portion, the second end of the shock absorbing portion having a scaffold coupling mechanism." Br. 17â€”18. Appellants assert "[t]he coil spring of Thompson is not an adjunct to a shock absorbing mechanism" (Br. 18), and "[bjecause Thompson does not disclose a shock absorber mechanism in combination with a magnetic scaffold tie, the use of Thompson in an obviousness rejection should be withdrawn." Id. 4 The Examiner finds, "[t]he 2nd Friedrich '237 shows plurality of magnets (ref #21) in every Figure." Ans. 13 (emphasis omitted). 5 Appellants state, "[a]s described in Section A of this Brief, Friedrich is non-analogous art to Applicants' invention and hence is not a competent reference." Br. 16. Appellants refer to Friedrich '035, and not Friedrich '273. 13 Appeal 2017-004223 Application 14/025,894 Appellants further argue Thompson does not make up for the purported deficiencies of Archer and Friedrich. Id. We agree with the Examiner's finding and conclusion: In this case, one of ordinary skill in the art would have provided a scaffold tie or any similar scaffold structure with a shock absorbing mechanism such as taught by Thompson in order to provide the predictable and expected result of being able to vary the length of the structure and/or provide some abortion as needed, whether from force or during attachment and/or removal. Furthermore, the appellants argue that "the coil spring of Thompson is not an adjunct to a shock absorbing mechanism", however, the examiner stresses that the claims as recited should be interpreted with broadest reasonable interpretation as claimed and the examiner finds that a spring is reasonably considered to be 'a shock absorbing mechanism'. Ans. 15. We agree with the Examiner because, under the broadest reasonable interpretation, the recited "shock absorbing portion" broadly but reasonably reads on Thompson's disclosed spring. We note Appellants have not cited to a definition of "shock absorbing portion" in the Specification that would preclude the Examiner's broader reading.6 Ans. 15. 6 Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention." Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description."). 14 Appeal 2017-004223 Application 14/025,894 Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitations of claim 11, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 11, and grouped claims 12â€”15 and 17â€”19, which fall therewith. See Claim Grouping, supra. 4. $103 Rejection R6 of Claim 20 Issue 4 Appellants argue (Br. 20â€”22) the Examiner's rejection of claim 20 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Archer and Morrison is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a method that includes, inter alia, the step of "coupling a magnetic member within a base platform to a structure," as recited in claim 20? Analysis Appellants' arguments are along the same lines as in Issue 1, Rejection Rl, supra. Br. 21. Appellants argue "Archer fails to disclose a base platform that is even remotely similar to that used in the method of Claim 20." Id. However, we note Appellants' arguments are not commensurate with the scope of method claim 20, which recites: 15 Appeal 2017-004223 Application 14/025,894 20. A method for anchoring a scaffold to a structure, comprising: coupling a magnetic member within a base platform to a structure; extending an extension member orthogonally from the base platform; coupling a clamp on a distal end of the extension member to a scaffold member. Claims App'x. We find no specific recited structure in claim 20 that would support Appellants' contentions and further note Appellants are arguing the references separately. See Br. 21â€”22. Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 20, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 20. 5. Rejections R2, R3, and R5 of Claims 2, 5, 9, 10, and 16 In view of the lack of any substantive or separate arguments directed to obviousness Rejections R2, R3, and R5 of claims 2, 5, 9, 10, and 16 under Â§ 103 (see App. Br. 14â€”15, 20), we sustain the Examiner's rejection of these claims. Arguments not made are waived. CONCLUSION The Examiner did not err with respect to obviousness Rejections R1 through R6 of claims 1â€”20 under 35 U.S.C. Â§ 103(a) over the cited prior art combinations of record, and we sustain the rejections. 16 Appeal 2017-004223 Application 14/025,894 DECISION We affirm the Examiner's decision rejecting claims 1â€”20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). See 37 C.F.R. Â§41.50(f). AFFIRMED 17