Ex Parte Wheeler

Patent Trial and Appeal BoardSep 15, 2014

12801432 (P.T.A.B. Sep. 15, 2014)

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. 12/801,432 06/09/2010 Dale Owen Wheeler JR. 2010001 7527 7590 09/15/2014 David E. Wheeler 1905 Sunrise St. NW North Canton, OH 44720 EXAMINER HARTMANN, GARY S ART UNIT PAPER NUMBER 3671 MAIL DATE DELIVERY MODE 09/15/2014 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 DALE OWEN WHEELER JR. ____________________ Appeal 2012-008774 Application 12/801,4321 Technology Center 3600 ____________________ Before ANTON W. FETTING, MICHAEL C. ASTORINO, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant identifies the real party in interest as the inventor, Dale Owen Wheeler, Jr. Appeal Br. 3. Appeal 2012-008774 Application 12/801,432 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 2, and 4–8.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. According to the Specification, Appellant invented “traffic channelizers, lane markers and signs, and specifically flexible markers and signs with replaceable shafts.” Spec. ¶ 1. Claim 1, which we reproduce below as representative of the claims on appeal, is the sole independent claim. 1. An apparatus for marking traffic lanes comprising an upright flexible marker (10) connected to a mounting base (18, 24) by a flexible hinge (22) which is capable of bending at about 90° relative to the upright position of flexible marker (10) at 360° around mounting base (18, 24), wherein marker (10) is tubular and is adapted to fit over upper portion (26) of flexible hinge (22), said apparatus being mountable on a surface using an adhesive or by connecting with bolts, wherein said flexible hinge and flexible marker, and said flexible hinge and mounting base are each non- threaded and are each adapted to fit one inside the other, and wherein said flexible marker is held in place on said flexible hinge using a bolt (14) and, wherein said flexible hinge is connected to said mounting base using anchor (62) which passes through both sides of mounting base (18,24) and 2 Our decision will refer to Appellant’s Specification (“Spec.,” filed June 9, 2010), Appeal Brief (“Appeal Br.,” Mar. 12, 2012), and Reply Brief (“Reply Br.,” filed May 4, 2012), as well as the Examiner’s Answer (“Answer,” mailed Apr. 18, 2012). Appeal 2012-008774 Application 12/801,432 3 flexible hinge (22) traversing 65% to 85% of the diameter or the width of the mounting base and is removable, whereupon flexible hinge (22) is separable from said mounting base (18,24). REJECTION AND PRIOR ART The Examiner rejects claims 1, 2, and 4–8 under 35 U.S.C. § 103(a) as unpatentable over Hughes (US 5,197,819, iss. Mar. 30, 1993), Weibye (US 6,099,412, iss. Aug. 8, 2000), and O’Donnell (US 4,004,545, iss. Jan. 25, 1977). Answer 4–6. ANALYSIS Initially, we note that the Examiner applies two different rationales for rejecting each of claims 1, 2, and 4–8, although both rationales rely on Hughes, Weibye, and O’Donnell. For the following reasons, we sustain the rationale discussed on pages 4–5 in the Grounds of Rejection section of the Examiner’s Answer. Thus, we do not find it necessary to reach the second rationale set forth of pages 5–6 in the Grounds of Rejection section of the Examiner’s Answer. Appellant does not separately argue against the rejection of the dependent claims. Thus, claims 2 and 4–8, which depend from independent claim 1, stand or fall with the independent claim. With respect to claim 1, Appellant argues, “Hughes does not show a marker capable of 360 degree movement around [a] base . . . .” Appeal Br. 10. This argument is not persuasive because the Examiner relies on Weibye to teach this limitation. See Answer 4–5. Appellant further states, “[a]s can be seen when comparing Hughes with the Summary of the Appeal 2012-008774 Application 12/801,432 4 Invention herein, the Hughes apparatus is more complex, less durable and more difficult to repair than the invention instantly claimed.” Appeal Br. 10–11; see also Reply Br. 1–2. The statement is not directed to limitations of the claims, however. Thus, the foregoing is not persuasive of error in the Examiner’s rejection. Appellant argues, “Weibye has no motivation to make his marker sturdy enough to withstand heavy traffic . . . .” Appeal Br. 11; see also Reply Br. 2. Even assuming arguendo that this is true, claim 1 does not recite such a limitation. See Answer 6. Appellant further argues, “Weibye . . . does not use pins or bolts to connect his hinge (14) to marker (12) or to hinge mount (58), and the marker can apparently be removed just by pulling it off the mount.” Appeal Br. 11. Again, even assuming we agree with this statement, the Examiner relies on Hughes, rather than Weibye, to teach the “anchor” claim limitation. See Answer 4. Appellant also argues: There is no motivation for one skilled in the art to look to distance markers for ways to improve traffic markers, and if the teachings of Weibye were followed literally, the base of the present invention would be installed beneath the road surface, a result that the present inventor would prefer to avoid. Without guidance or motivation, one would have to pick and choose which teachings of Weibye and Hughes to use, and which to discard, to approach something similar to the invention instantly claimed, and would still come up short. Appeal Br. 11. However, the Examiner does not rely on Weibye to teach the “mounting base” limitation, but instead relies on Hughes. See Answer 4. Instead, the Examiner relies on Weibye to teach the “flexible hinge” claim Appeal 2012-008774 Application 12/801,432 5 limitation. See id. at 4–5. Further, in KSR the Supreme Court rejected the Federal Circuit’s rigid application of its teaching, suggestion, or motivation test in favor of an expansive and flexible approach. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). KSR emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art,” id at 415–16, and discussed circumstances in which a patent might be determined to be obvious without an explicit application of the teaching, suggestion, motivation test. In particular, the Supreme Court reaffirmed that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. In this case, the Examiner substitutes one flexible hinge connecting a base and a marker from Weibye in place of another flexible hinge connecting a base and a marker as taught by Hughes. Using the flexible hinge from Weibye with the base and marker of Hughes would have provided the predictable result of allowing Hughes’ marker “to deflect [ ] until it is substantially flush to the ground surface” when run over by a vehicle, and then to “return to its upright position” when the vehicle passes. Weibye, col. 3, ll. 25–26, 29–30. Thus, the combination of Hughes and Weibye would have been obvious, and Appellant’s arguments are not persuasive of error in the Examiner’s rejection. Appellant further argues: Contrary to the Examiner’s assertions that Hughes embraces a single anchor, the two locking wedges appear to be an integral part of the Hughes construction, and the pins described are used for securing the two locking wedges. No pins described by Hughes, by themselves, are capable of anchoring a marker to his hinge. Again, see Appeal 2012-008774 Application 12/801,432 6 Hughes at the paragraph bridging pages 6 and 7, and the three following paragraphs, and the [f]igures. This aspect of Hughes appears to be irrelevant, and if anything, teaches away from the invention instantly claimed. The anchor (62) instantly claimed, ties the assembled components of the apparatus together with simplicity and strength. None of the cited references teach using a single anchor that passes through both sides of the base and both sides of the flexible hinge to connect a hinge to a mounting base. The teachings of Weibye would not motivate the skilled in the art to modify the Hughes apparatus so as to achieve the present result. Appeal Br. 12; see also Reply Br. 3. We do not find Appellant’s arguments to be persuasive. As the Examiner points out, the claim includes the term “comprising,” and thus does not preclude the use of additional components, such as Hughes’ “locking wedges,” in addition to the claimed “anchor.” For these reasons, even if Appellant is correct that “[n]o pins described by Hughes, by themselves, are capable of anchoring a marker to his hinge,” such is not a requirement of claim 1. See Answer 7. Further, contrary to Appellant’s arguments, each of the locking pins 83 of Hughes does in fact appear to connect the base and flexible hinge (see Hughes, Fig. 2), and thus it is Appellant’s conjecture that both or even one pin of Hughes is incapable of connecting the base and flexible hinge together. Based on the foregoing, we are not persuaded by Appellant’s arguments that the rejection is in error. Appellant’s further arguments also are unpersuasive. For example, Appellant argues that it would not have been obvious to modify Hughes and Weibye, in light of the teaching of O’Donnell, so that “a marker is primarily connected to an apparatus by placing the marker over a tubular flexible Appeal 2012-008774 Application 12/801,432 7 hinge.” Appeal Br. 13. The Declaration of the inventor, Dale Owen Wheeler, Jr., filed on April 5, 2011 (“Decl.”), sets forth purported advantages provided by an arrangement in which a marker fits over (instead of inside) a flexible hinge. See, e.g., point 2 of the Declaration. Such an arrangement, however, is shown by O’Donnell. See Answer 5, 7–8, citing O’Donnell, Fig. 1. Presumably, advantages provided by Appellant’s arrangement would have been provided by O’Donnell, which shows a similar arrangement. See Decl. (“2. If the marker is made to fit inside the hinge [which does not occur in O’Donnell or the claimed device], it will need substantial reinforcement, which adds substantially to the cost of manufacture.”) (“4. Manufacturing the marker to fit over the o.d. of the hinge ensures that any forces striking the marker will be transferred substantially evenly to the hinge throughout its circumference, making it more likely that the hinge will flex as intended, thereby absorbing the energy of the impact.”). The Declaration does not opine that it would not have been obvious to modify Hughes and Weibye to include the arrangement of O’Donnell. Further, substituting the arrangement of O’Donnell, where a marker fits over a flexible hinge that is connected to a base, in place of the arrangements of Hughes and Weibye where markers fit within flexible hinges, is a substitution of one known arrangement for another arrangement, and simply provides an alternate arrangement for connecting the base and marker. See KSR at 415–416. For these reasons, Appellant’s arguments of error are therefore unpersuasive. Based on the foregoing, we sustain the Examiner’s rejection of claims 1, 2, and 4–8 as unpatentable based on the combination of Hughes, Weibye, and O’Donnell. Appeal 2012-008774 Application 12/801,432 8 DECISION The Examiner’s rejection of claims 1, 2, and 4–8 under 35 U.S.C. § 103(a) is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED tkl