Ex Parte Venegas

Patent Trial and Appeal Board

Dec 17, 2012

10455196 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FRANK VENEGAS, JR.
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Appeal 2010-010754
Application 10/455,196
Technology Center 3600
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Before MICHAEL C. ASTORINO, MICHAEL L. HOELTER, and
RICHARD E. RICE, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 9-13. Claims 1-8 and 14 have been
cancelled. An oral hearing was held December 10, 2012. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

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REJECTIONS
The following Examiner’s rejections are before us for review.
Claims 9-13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Heillman (US 6,172,604 B1, iss. Jan. 9, 2001) in view of Chrest
(Anthony P. Chrest, Parking Structures: Planning, Design, Construction,
Maintenance, Google Books Result, http://www.google.com/search?hl=
en&q=%22clearance+bar%22+plastic+hollow+parking, last visited May 31,
2007)), and Skulnick (US 6,435,122 B1, iss. Aug. 20, 2002) or McCue (Des.
333,873, iss. Mar. 9, 1993).
Claims 9-13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Chrest in view of Heillman, and Skulnick or McCue.

CLAIMED SUBJECT MATTER
Claim 9 is the sole independent claim on appeal, is reproduced below,
and is representative of the subject matter on appeal.
9. An overhead clearance bar, comprising:
an elongated, uniformly cylindrical, hollow
plastic member having two closed, dome-shaped
ends and a wall with a thickness and upper, lower,
and outer side surfaces;
fasteners proximate to each closed end, each
fastener penetrating only through the upper surface
of the wall, leaving the lower and side surfaces
smooth;
a chain or rope connected to each fastener
for suspension purposes; and
a height-related message disposed on the
side surface of the member.
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OPINION
Obviousness over Heillman in view of Chrest, and Skulnick or McCue
Claims 9-12
The Appellant argues claims 9-12 as a group. App. Br. 2. We select
claim 9 as representative and claims 10-12 stand or fall with claim 9. See 37
C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Heillman discloses everything recited in
claim 9, except for two deficiencies; the first deficiency being the closed
ends being dome-shaped; and, the second deficiency being a height-related
message disposed on the side surface of the member. Ans. 3-4. To remedy
the first deficiency, the Examiner finds that “McCue and Skulnick both
show the closed ends being dome-shaped” and concludes that:
[i]t would have been obvious to one having
ordinary skill in the art at the time of the invention
to modify Heillman[’s] . . . structures to show the
closed ends being dome-shaped as taught by either
McCue or Skulnick since a dome-shape end would
provide the same function of closing off the
clearance bar as a cap having a cylindrical shape
and a close[d] end, and one of ordinary skill in the
art would have found it obvious to substitute one
cap with another.
Ans. 4.
The Appellant contends “Heillman teaches away from other structures
for ‘aesthetic appearance’” because Heillman states “[i]n the preferred
embodiment, housing 42 and the components thereof are positioned within
bumper 12 for greater protection against potential impact and to improve the
aesthetic appearance of bumper 12.” App. Br. 4, citing col. 2, ll. 29-33.
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The Appellant adds that aesthetic appearance is a matter of taste and
Heillman addressed this design issue. Reply Br. 2.
At the outset, we agree with the Examiner’s response that the
modification of Heillman’s end caps 20, 22 to dome-shaped end caps, in
view of Skulnick’s or McCue’s dome-shaped ends, would not change the
function of Heillman’s end caps and would merely provide a change in
aesthetic appearance to the ends of the cylindrical member. See Ans. 7. We
also note that Heillman’s discussion of the improvement of the aesthetic
appearance of bumper 12 is limited to the positioning of the housing 42
within the bumper. Housing 42 is depicted in Figure 2 as “positioned in
opening 46 defined in the upper surface of bumper 12.” Col. 2, ll. 26-29
(emphasis omitted). Notably, the furthest structures away from housing 42
on the bumper, with the exception of lamps 36, 38, are Heillman’s end caps
20, 22. As such, the aesthetic appearance of the bumper’s end caps 20, 22
has an insignificant effect on the aesthetic appearance of housing 42 within
the bumper. See also Ans. 7. In other words, merely because Heillman
discloses positioning housing 42 within the bumper to improve aesthetics
does not “teach away” from other aesthetic changes to bumper 12,
particularly those areas of the bumper distanced away from housing 42,
including end caps 20, 22, since positioning housing 42 within bumper 12
does not “criticize, discredit, or otherwise discourage” such other aesthetic
changes to bumper 12. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
To remedy the aforementioned second deficiency, the Examiner finds
that “Chrest discloses a height message disposed on the side surface of the
member to help an operator of a vehicle avoid[] hitting the clearance bar”
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and concludes that it would have been obvious to one having ordinary skill
in the art to modify Heillman’s structure to have “a height message disposed
on the side surface of the member [to] help[] an operator of a vehicle avoid[]
hitting the clearance bar as taught by Chrest.” Ans. 4.
The Appellant contends that “Heillman doesn’t really benefit from a
‘height-related message disposed on the side surface of the member’ since
the point of novelty of Heillman is to activate an alarm if you hit the bar.”
App. Br. 3-4. We agree with the Examiner’s response, that “[b]y combining
Heillman with Chrest, Heillman’s resulting clearance bar is improved as it
provides the added feature of [a] height message which would help an
operator predetermine the distance [] between the clearance bar and the
floor. The height message on Heillman would reduce the bumping incidents
with the clearance bar.” Ans. 7. Additionally, modifying Heillman’s
bumper in view of Chrest’s height message does not prevent Heillman’s
clearance bar from sounding its alarm. See Id.
For the above reasons, we conclude that the Examiner has articulated
reasoning with rational underpinning sufficient to support the conclusion
that the claimed subject matter would have been obvious. See In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
[require] some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”) (cited with approval in KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).
Thus, the Examiner’s rejection of claims 9-12 as unpatentable over
Heillman in view of Chrest, and Skulnick or McCue is sustained.
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Claim 13
Claim 13 recites, “[t]he clearance bar of claim 9, wherein the closed
ends are substantially hemispherical.” The Appellant contends that the term
“‘substantially hemispherical,’ means hemispherical but for imperfections
that might arise from the disclosed manufacturing process(es)” and that “the
Examiner is highlighting ‘substantially’ as though it completely undermines
‘hemispherical’ and ushers in non-hemispherical shapes.” Reply. Br. 2. For
the purposes of this appeal only we accept the Appellant’s proposed
definition of the term “substantially hemispherical.”
The Examiner finds that “[t]he geometry of the closed ends of the
references[, McCue and Skulnick,] clearly shows them being substantially
hemispherical” (Ans. 8) and concludes that Heillman, as modified by
Skulnick or McCue, would have resulted in “the closed ends of the bumper
being substantially hemispherical” (Ans. 4). The Appellant contends that
the Examiner has not pointed to any aspect of McCue or Skulnick that is a
“substantially hemispherical” end, and that neither McCue nor Skulnick
teaches a “substantially hemispherical” end. See App. Br. 5, Reply Br. 2.
The Examiner’s finding that Skulnick’s ends are substantially
hemispherical is not adequately supported because the Specification is silent
as to its shape and its Figures, despite showing the ends with a dome-shape,
do not show the ends as “substantially hemispherical.” Thus, we cannot
sustain the Examiner’s rejection of claim 13 as unpatentable over Heillman
in view of Chrest and Skulnick.
However, the Examiner’s finding that McCue shows its ends as
substantially hemispherical is adequately supported by the drawings,
particularly Figures 2-5. Compare Spec. 2, l. 13, fig. 1 (Figure 1 depicts
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hemispherical ends 106, 108). Although the Appellant contends McCue’s
ends are not substantially hemispherical, the Appellant lacks a cogent
explanation why the shapes of McCue’s ends are not substantially
hemispherical. Thus, we sustain the Examiner’s rejection of claim 13 as
unpatentable over Heillman in view of Chrest and McCue.

Obviousness over Chrest in view of Heillman, and Skulnick or McCue
Claims 9-12
The Appellant argues claims 9-12 as a group. App. Br. 4. We select
claim 9 as representative and claims 10-12 stand or fall with claim 9. See 37
C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Chrest discloses everything recited in claim
9, except that “Chrest does not show the hollow tube being uniformly
cylindrical, having two closed, domed shaped ends, fasteners proximate to
each closed end, each fastener penetrating only through the upper surface of
the wall, leaving the lower and side surfaces smooth, the chain being
connected to fasteners.” Ans. 5. The Examiner finds that Chrest’s
deficiencies with respect to claim 9 are remedied by the teachings of
Heillman, and Skulnick or McCue. Id. The Examiner concludes that:
[i]t would have been obvious to one having
ordinary skill in the art to modify Chrest to show
the hollow tube being uniformly cylindrical,
having two closed ends, each fastener penetrating
only through the upper surface of the wall, leaving
the lower and side surfaces smooth, the chain
being connected to fasteners since it allows for the
easy formation of a clearance bar as taught by
Heillman . . . , and having dome shaped closed
ends as taught by either McCue or Skulnick would
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provide the same function of closing off the
clearance bar as a cap having a cylindrical shape
and a close[d] end, and one of ordinary skill in the
art would have found it obvious to substitute one
cap with another.
Ans. 5-6.
The Appellant contends that Chrest teaches away from the Examiner’s
proposed combination since if the proposed combination provides the same
function there would be no need to combine Chrest in view of Heillman, and
Skulnick or McCue. See App. Br. 4. This contention is not persuasive. The
proposed modifications to Chrest’s clearance bar, as articulated by the
Examiner, are not criticized, discredited, or otherwise discouraged by
Chrest’s disclosure; and, as such, Chrest does not teach away from the
Examiner’s proposed combination. See In re Fulton, 391 F.3d at 1201.
For the above reasons, we conclude that the Examiner has articulated
reasoning with rational underpinning sufficient to support the conclusion
that the claimed subject matter would have been obvious. See In re Kahn,
441 F.3d at 988. Thus, the Examiner’s rejection of claims 9-12 as
unpatentable over Chrest in view of Heillman, and Skulnick or McCue is
sustained.
Claim 13
For the same reasons we have not sustained the rejection of claim 13
as unpatentable over Heillman in view of Chrest and Skulnick, we likewise
cannot sustain the rejection of claim 13 as unpatentable over Chrest in view
of Heillman and Skulnick.
For the same reasons we have sustained the rejection of claim 13 as
unpatentable over Heillman in view of Chrest and McCue, we likewise
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sustain the rejection of claim 13 as unpatentable over Chrest in view of
Heillman and McCue.

DECISION
We AFFIRM the rejections of: claims 9-12 as unpatentable over
Heillman in view of Chrest and Skulnick; claims 9-13 as unpatentable over
Heillman in view of Chrest and McCue; claims 9-12 as unpatentable over
Chrest in view of Heillman and Skulnick; and, claims 9-13 as unpatentable
over Chrest in view of Heillman and McCue. Our affirmance of the
rejections of claims 9-13 constitutes a general affirmance of the decision of
the Examiner on these claims. 37 C.F.R. § 41.50(a)(1).
We REVERSE the rejections of: claim 13 as unpatentable over
Heillman in view of Chrest and Skulnick; and claim 13 as unpatentable over
Chrest in view of Heillman and Skulnick.
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

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