Skip to main content

Full text of "USPTO Patents Application 10561123"

See other formats


REMARKS 



This paper is submitted in response to the final Office Action mailed on 
April 21 , 2008. Claims 1 -40 remain in the application. Claims 1,2,10, and 30 have 
been amended and new claims 32-40 have been added. Applicants note and 
appreciate the Examiner's indication of allowability of claims 30 and 31 . In view of the 
foregoing amendments, as well as the following remarks, Applicants respectfully submit 
that this application is in complete condition for allowance and request reconsideration 
of the application in this regard. 

Claim Amendments 

Each of claims 1,2,10, and 30 has been amended to improve 
grammatical clarity and/or consistency with the language of other claims of the 
application. 

Information Disclosure Statement 

The Examiner indicates that the Information Disclosure Statement ("IDS") 
filed 12/21/2007 failed to comply with the provisions of 37 CFR § 1 .97, 1 .98, and MPEP 
§ 609 because the references are not properly listed, further indicating that each patent 
or NPL "should be separately listed." Applicants respectfully submit that the referenced 
IDS complies with the formatting requirements for publications set forth in 37 CFR § 
1 .98 (b)(5) and MPEP § 609. More specifically, each of the cited references 
(categorized as "publications") is identified by publisher, author (if any), title, relevant 
pages, date and place of publication. 



-10- 



Neither MPEP § 609 nor 37 CFR § 1 .97 nor 1 .98 explicitly identifies a 
specific format to be followed to identify litigation-related documents such as the ones at 
issue here. In this regard, the undersigned counsel has called and left a voice mail on 
October 19, 2008, at Examiner's telephone number identified in the Office Action, 
asking for guidance on what Examiner deems to be the required formatting for the 
allegedly incorrectly cited court documents. 

If Applicants have failed to appreciate the asserted defect of the 
referenced IDS, or if there is a specific format Examiner deems as required for the 
documents at issue, Applicants respectfully request that Examiner promptly contacts the 
undersigned counsel such that the IDS may be re-filed. 

Objection to the Drawings 

The drawings are objected to under 37 CFR § 1 .83(a) for an asserted 
failure to show the limitations of claims 30 and 31 therein. Applicants respectfully 
submit that the objection is in error, as the limitations of claims 30 and 31 are clearly 
shown in FIG. 10 of the Application. As described in Application at p. 2, lines 23-26 and 
p. 26-27, reference numeral 138(a) designates the claimed apex and reference numeral 
138(b) designates the claimed trough between ribs. Accordingly, Applicants respectfully 
request withdrawal of the objection to the drawings. 

Rejection under 35 U.S.C. § 112 

Claims 1-31 stand rejected under 35 U.S.C. § 1 12, second paragraph, as 
being indefinite for failing to particularly point out and distinctly claim the subject matter 
which applicant regards as the invention. The rejection is grounded on the language of 



-11- 



claim 1 , the only independent claim of this group of rejected claims. Claim 1 has been 
amended to more clearly recite the claimed invention and thus now recites "a surface 
coating applied to said body front and rear faces and respectively providing an exposed 
front surface and an exposed rear surface of said roadside post." (emphasis added). 

Accordingly, Applicants respectfully submit that the rejection of claim 1 
has been overcome and the claim should therefore be allowed. Applicants further 
submit that the rejections of dependent claims 2-31 have been also overcome by virtue 
of this amendment to claim 1 , from which claims 2-31 depend, and these claims should 
therefore also be allowed. 

Rejections under 35 U.S.C. § 102(b) 

Claims 1 , 2, 7, 9, 1 3-1 8, 21 , 24, 25, and 28 stand rejected under 35 U.S.C. 
§ 102(b) as being anticipated by U.S. Patent No. 3,362,305 to Pellowski ("Pellowski"). 
Claim 1 is the only independent claim of this group of rejected claims. Applicants 
traverse these rejections. 

Pellowski does not disclose a roadside post as contended by the 
Examiner. Strip element (10) referred to by the Examiner as a roadside post is in the 
nature of a lane marker that is located on or in a road surface to both visibly and audibly 
signal the location of traffic lanes within the bounds of a road. The fact that Pellowski 
discloses such a lane marker located on a road, rather than a roadside post located on 
the roadside is evident throughout the disclosure of Pellowski. 

Firstly, in the Abstract of the Disclosure, at column 1 , lines 9-13, the 
disclosure is described in terms of "an arcuate metal strip having one end imbedded in a 
hardenable material in the highway with the other end extending upwardly to provide a 



-12- 



visible marking device and to engage the underside of an automobile to provide an 
audible signalling device." 

Similarly, the Field of the Invention (column 1, lines 26 to 35) is also 
described in terms of "marking various lanes of multi-lane freeways and the like, and 
where there is merging or exiting traffic to prevent vehicles from driving in the wrong 
lane and causing accidents." The Description of the Prior Art (column 1 , lines 36 to 47) 
also makes it clear that the field to which Pellowski relates is devices that are located on 
the road or highway. Specifically, prior art devices are described as being "either 
temporarily standing on the highway surface and easily displaced or are fixedly attached 
to the highway". 

The fact that the strip element (10) of Pellowski is a lane marker located 
on a roadway is further reflected in the Summary of the Invention, at column 1 , lines 50 
to 55, which states: "This invention relates generally to roadway or traffic marking 
devices and more particularly it relates to a novel resilient highway marking device for 
visibly and audibly signalling the location of traffic lanes, highway center lines, and the 
like, and to means for protecting the device to reduce or prevent wear and breakage 
thereof." 

Throughout the description of Pellowski, it is emphasized that the strip 
element (10) is located in or on the road/highway rather than at the roadside. See, for 
example, the following passages of Pellowski: 

a) Column 1 , lines 39 to 45, which describes that the lower end portion of the strip 
element is secured in the roadway, rather than at the roadside. 

b) Column 1 , lines 45 to 51 , which describes the method of installation of the strip 
element by drilling a recess in the surface of the highway, then positioning the 

-13- 



lower end portion of the strip element within the recess and pouring a hardenable 
material within the recess. 

c) Column 3, lines 43 to 71 , which describes a strip receiving means (20) positioned 
on the surface of the highway adjacent the strip element (1 0). A second strip 
receiving means (25), described at Column 3, lines 72 to Column 4, line 13, is 
located on the surface of the highway on the opposing side of the strip element 
(10). 

d) Column 4, lines 14 to 34, which describes the strip receiving means as being 
anchored by way of anchor points (30) received in the expansion joints of the 
highway and further affixed to the surface of the highway by an adhesive. 

e) Column 4, lines 48 to 57, which describes the marking devices (i.e., strip 
elements) as being located adjacent the opposite shoulders of the traffic lanes. It 
is clear from Figure 1 that these locations adjacent the shoulders of the traffic 
lanes are still clearly on the road surface, rather than at the roadside. 

f) In each of the figures of Pellowski, the strip elements (1 0) are clearly shown to be 
located on the road surface. 

The strip element (10) of Pellowski cannot be described as a "post," let 
alone a "roadside post." A post is an elongate element that has the function of 
supporting another object. In the context of a roadside post, the post will support a 
functional roadside component, such as a delineator or sign. Accordingly, Applicants 
disclose a roadside post, for example, at page 1 , lines 4-9 of the Application. The strip 



-14- 



element of Pellowski, by contrast, does not function to support anything. It merely 
serves as a visible and audible lane marker. 

Further, the strip element (10) of Pellowski is clearly of insufficient 
proportions to function as a roadside post. To function as a roadside post, supporting a 
delineator, a roadside post would typically need to be of a height of at least one meter, 
while to support a road sign, heights well in excess of one meter would be typical. 
Column 2, lines 31 to 38 of Pellowski describe that the top of the strip element (10) is of 
sufficient height to be struck by the bumper or the front and/or underpart of the vehicle. 
Given that it is intended that the strip element be regularly impacted by vehicles 
changing lanes, one of ordinary skill in the art would consider that the strip elements 
would be made close to this minimum height, which would be significantly less than the 
height of a roadside post. 

The disclosure of U.S. Patent No. 3,312,156 to Pellowski ("Pellowski I") of 
which Pellowski represents a Continuation-in-Part, was recently considered by the 
Federal Court of Australia in proceedings relating to infringement and validity of three 
Australian innovation patents corresponding to the present application. As part of the 
evidence in those proceedings, an Affidavit was sworn on 23 June 2008 by Laurence 
Bede Dowling, commenting on the disclosure of Pellowski I. A copy of the Affidavit 
("exhibit 1 ") is attached herewith. Mr Dowling is a civil engineer with over thirty years 
experience in the roadside safety products industry in Australia, having held various 
positions in an Australian state road authority. Referring to the aforementioned 
Affidavit, at paragraphs 8 through 12, Mr. Dowling proffers his understanding, as a 
person of ordinary skill in the art, of the disclosure of Pellowski I. Mr Dowling 
concludes, in his Affidavit, that Pellowski does not disclose a roadside post. Also 



-15- 



attached herewith is a copy ("exhibit 2") of the Decision of the Federal Court of Australia 
in the proceedings noted above, Delnorth Pty Ltd v Dura-Post (Aust.) Pty Ltd [2008] 
FCA 1225, in which it was held that Pellowski I does not disclose a roadside post. See 
page 12 of the Decision. 

Accordingly, Applicants respectfully submit that Pellowski fails to 
anticipate claim 1 and the claim is therefore allowable. Further, Applicants respectfully 
submit that each of claims 2, 7, 9, 1 3-1 8, 21 , 24, 25 and 28 is also allowable at least by 
virtue of depending from allowable claim 1 . 

Moreover, with specific reference to dependent claim 9, Applicants submit 
that Pellowski does not disclose the body as having a channel shaped transverse cross- 
section comprising a central web and two lateral flanges. The strip element (10) of 
Pellowski has a relatively flat, arcuate cross-section. This arcuate cross-section cannot 
reasonably be considered to form a channel, and certainly does not have a distinct 
central web and two lateral flanges as set forth in claim 9. Accordingly, Applicants 
respectfully submit that dependent claim 9 is allowable for these reasons as well. 

With specific reference to dependent claims 13 and 14, the lower end (11) 
of the strip element (10) in Pellowski is not tapered as contended by the Examiner. As 
is clearly apparent from Figure 3, the lower end (1 1 ) of the strip element (1 0) has a 
constant width with a notch (15) being formed at the longitudinal end of the strip 
element. While the lower end of the strip element (10) may be formed with two sharp 
points at either edge of the lower end, the lower end itself cannot be considered to be 
tapered, having a constant width. Further, while the notch (1 5) forming the sharp points 
may allow the post to be pressed into a hardenable material, prior to hardening of that 
material, this arrangement would not enable the post to readily be driven into a ground 



-16- 



surface. While a taper of the body first end would deflect material in the ground away 
from the body of the post, when driving the body into the ground, the two opposing 
sharpened points of Pellowski would drive the material in the ground toward the center 
of the body of the post, toward the center of the notch (1 5), thereby further inhibiting 
driving of the body of the post into the ground. Pellowski therefore does not disclose a 
first end of the body that is tapered, and much less a first end that is adapted to be 
driven into the ground, as respectively set forth in these claims. Accordingly, Applicants 
respectfully submit that dependent claims 13 and 14 are allowable for these reasons as 
well. 

With specific reference to dependent claims 15 and 16, Pellowski fails to 
disclose a mark indicative of the location of the surface of the ground when the post is 
driven into the ground to a design depth, as set forth in these claims. The holes (16) 
referred to by the Examiner can clearly be seen in Figures 3 and 5 to be located well 
below the ground surface. As noted by the Examiner, these holes are to aid in holding 
the post firmly in the ground (Office Action at p. 5). If the holes were to be indicative of 
the location of the surface of the ground, they would clearly have no role in holding the 
post firmly in the ground. Thus, Pellowski does not disclose a hole or any other mark 
located so as to be indicative of the surface of the ground. Accordingly, Applicants 
respectfully submit that dependent claims 15 and 16 are also allowable for these 
reasons. 

With specific reference to dependent claims 17 and 24, Pellowski fails to 
disclose a roadside post installation comprising a roadside post or a method in which 
the post is driven into the ground. In the strip element installation of Pellowski, a recess 
is first formed in the surface of the road and the strip element is retained within the 



-17- 



recess within a body of hardenable material. While it is suggested at column 3, lines 20 
to 27, referred to by the Examiner, that the strip element (10) may be inserted into the 
hardenable material after first pouring the hardenable material into the recess, there is 
no teaching or even a suggestion that the strip element may be driven into the ground. 
Further, there is no teaching or suggestion of the installation being in the roadside. The 
Examiner's conclusion that method claim 24 is anticipated by Pellowski is therefore 
similarly flawed. Accordingly, Applicants respectfully submit that dependent claims 1 7 
and 24 are allowable for these reasons as well. 

Rejection under 35 U.S.C. § 103(a) 

Claims 1-6, 9, and 10-28 stand rejected under 35 U.S.C. § 103(a) as 
being unpatentable over U.S. Patent No. 5,238,322 to Stirtz ("Stirtz") in view of U.S. 
Patent No. 2,646,969 to Hendrickson ("Hendrickson") and U.S. Patent No. 6,267,529 to 
Mudryk et al. ("Mudryk"). Claim 1 is the only independent claim of this group of 
rejected claims. Applicants traverse these rejections. 

The Examiner admits that Stirtz fails to disclose the use of spring steel 
and a surface coating, and thus turns respectively to Hendrickson and Mudryk to 
provide a teaching of these missing elements. Applicants submit that at least the 
asserted combination of the teachings of Stirtz with those of Hendrickson is improper. 
Stirtz discloses a road marker in the form of an elongate member (1 0) in the form of an 
elongate strip of material of a plastic or resin composition. At column 2 lines 4 to 10, 
Stirtz teaches the use of a thermoplastic material to facilitate field repairs of a badly bent 
or deformed marker "by heating the marker to a high enough temperature whereby the 
plastic of the marker becomes workable." This is to be contrasted with presently known 



-18- 



markers, described at column 1 , lines 14 to 21 , described as having their usefulness 
impaired when they become permanently bent or deformed when run over. 

From the contrast in Stirtz between thermoplastic markers that are 
described as being field repairable and presently known markers which are suggested 
not to be field repairable, it is evident that the known markers referred to by Stirtz are 
steel markers. Steel clearly requires heating to temperatures well beyond those that 
could be achieved in the field to enable workability of the steel. Further, Applicants note 
the Examiner's comments that Stirtz recites the advantages of using a heat treatable 
material, however, Stirtz is not referring to any heat treatable material, but only to 
materials that are heat treatable in the field as noted above. This is clearly not the case 
with steel. Further, spring steel would generally require heating to much higher 
temperatures than, for example, mild steel from which conventional roadside posts are 
formed, to provide workability. Accordingly, Stirtz clearly teaches directly away from 
forming the marker from a steel material and the asserted combination of this disclosure 
with the teachings of Hendrickson is thus improper. 

Moreover, Hendrickson discloses a highway guard with support members 
formed of multiple leaf spring elements. Hendrickson is not directed to a roadside post, 
and is not directed to any element that is elastically bendable through 90 Q . The support 
members of Hendrickson are clearly designed to be heavy, rigid elements that are not 
designed to elastically bend to any notable degree when impacted by a vehicle. For 
example, column 1 , lines 44 to 46 states that an object of Hendrickson is to provide 
support anchoring means (i.e, the support members) "of great strength and rigidity." At 
column 2, lines 13 to 15, the support members are described as being formed of "heavy 
steel in the form of leaf springs" and further described at column 2, lines 1 7 as providing 



a "rigid anchor." The support members of Hendrickson are designed to absorb large 
amounts of energy when impacted, and release that energy to deflect the impacting 
vehicle back into the roadway. See, for example, column 2, lines 18 to 21 . 

The action of transferring large amounts of energy from an impacting 
vehicle to the support members, and the subsequent action of transferring that energy 
back to the vehicle as the energy is released from the support members, would result in 
significant damage to the vehicle. This is entirely at odds with the present invention 
whereby the body of the roadside post is specifically designed not to absorb large 
amounts of energy, but to be elastically bendable through 90 Q , the post is thus able to 
elastically collapse on impact, thereby enabling a vehicle impacting the roadside post to 
drive over the roadside post without any significant damage. Hendrickson thus clearly 
teaches away from the bending taught in Stirtz and the respective teachings of these 
two patents are therefore not properly combinable for these reasons as well. 

Further, Hendrickson fails to teach or suggest the use of sheet spring steel 
with the heavy leaf springs utilized in Hendrickson clearly being in the nature of plate 
steel, rather than sheet steel. Further, multiple plates are utilized, rather than a single 
sheet as set forth in claim 1 . The Examiner's reference to use of heat treated spring 
steel in Hendrickson, and implying the advantage of using heat treated spring steel is 
the same as the advantage of using the heat treatable plastics material of Stirtz, is 
flawed. Clearly, the heat treatment of the spring steel utilized in Hendrickson is heat 
treatment conducted at extreme elevated temperatures to increase the stiffness of the 
spring steel, rather than heat treatment at relatively low temperatures in the field to 
increase the workability of a plastics material. 



-20- 



A person of ordinary skill in the art would clearly not consider the rigid 
support member of Hendrickson to be of any relevance when considering the design of 
a flexible roadside post. If the person of ordinary skill in the art were to modify the 
roadside post of Stirtz to form it of heat treated spring steel of the type and configuration 
taught by Hendrickson, being multiple heavy leaf springs, to improve impact energy 
absorption and release as suggested by the Examiner, a rigid roadside post would be 
the result. Such a post would not be elastically bendable through 90 Q as set forth in 
claim 1 , and would clearly result in significant damage to any vehicle impacting the 
same. 

In addition to the foregoing, attached herewith is a copy ("exhibit 3") of a 
Statutory Declaration executed by Laurence Bede Dowling on October 22, 2007, as part 
of opposition proceedings before the Australian Patent Office in relation to the 
corresponding Australian standard patent application No. 2004249786. In this 
Declaration, Mr. Dowling discusses the surprising results obtained when he tested a 
roadside post described by the above-referenced Australian patent application. In Mr. 
Dowling's opinion, the roadside post described in the Australian Application represented 
a "quantum leap in the development of roadside posts that the industry had been 
seeking for many years." See paragraph 1 1 of this Declaration. The claimed roadside 
post of claim 1 of the present application, accordingly, cannot be obvious. 

Consistent with the above-discussed Declaration by Mr. Dowling, attached 
herewith is a copy ("exhibit 4"), of another Statutory Declaration executed by Gabriel 
Tana, also as part of the above-referenced opposition proceedings, on October 30, 
2007. This Declaration further underscores the non-obviousness of the invention 
recited in claim 1 . In this Declaration, at paragraphs 2 through 5, Mr. Gabriel Tana, the 



-21- 



General Manager of Sales and Marketing for a distributor of roadside guide posts in 
Australia, discusses the commercial success of the roadside post described in the 
above-referenced Australian patent application. Mr. Tana states, for example, that in 
the first full financial year of distribution of the roadside post covered by this patent, their 
unit sales overtook the combined sales of plastic guide posts and rigid steel guide 
posts, with the roadside posts covered by the Australian patent application representing 
52% of the total unit sales of guide posts sold by the distributor. See paragraph 5 of this 
Declaration. The claimed roadside post of claim 1 of the present application, 
accordingly, cannot be obvious. 

Respective Declarations under 37 CFR § 1 .132 consistent with the 
Affidavit and Statutory Declaration by Mr. Dowlinq and with the Statutory Declaration by 
Mr. Tana, will be filed subsequent to filing of this response . 

Accordingly, the asserted combination of the teachings of Stirtz and 
Hendrickson is improper and the rejection of claim 1 should therefore be withdrawn. 
Moreover, each of claims 2-6, 9, and 10-28 is also allowable at least by virtue of 
depending from an allowable claim. 

Moreover, with specific reference to dependent claim 2, the support 
member of Stirtz is clearly not elastically bendable through 90 Q to either side of a 
longitudinal axis. The configuration of the marker of Stirtz would effectively result, if 
impacted from the left in Figure 2, with the marker being folded back on itself through a 
sharp 180 Q angle. With the marker being formed of a thermoplastic material, it would 
seem highly likely that the marker would fail, and there is certainly no teaching or 
suggestion that the marker would be elastically bendable through 90 Q from the unbent 



-22- 



state depicted in Figure 2 to the right side of the longitudinal axis. Claim 2 is therefore 
also allowable for these reasons. 

With specific reference to dependent claims 3-6, the use of heat treated 
spring steel disclosed by Hendrickson is, as noted above, for an entirely different 
purpose to that of the sheet spring steel of which the body of the roadside post recited 
in these claims is formed. Accordingly, if a person of ordinary skill in the art were to 
consider the disclosure of Hendrickson and form a roadside post utilizing spring steel as 
taught by Hendrickson, to improve the impact energy absorption and release, a different 
resulting form of spring steel would arguably result. Accordingly, Applicants respectfully 
submit that each of claims 3-6 is therefore allowable also for these reasons. 

With specific reference to dependent claim 16, Mudryk does not disclose a 
mark in the form of a hole indicative of the location of the surface of the ground when 
the post is driven into the ground to a designed depth. While the Examiner refers to 
holes (54) in the rigid base member (4) of Mudryk, there are no such holes having 
reference numeral (54). In any event, the holes in the rigid base (4) are clearly not in 
the body of the post as set forth in claim 16. Further, the holes are clearly intended to 
be located well above the surface of the ground as these holes are required to receive 
fasteners (12) for attachment of the attachment member (6) after the base (4) has been 
driven into the ground. See column 3, lines 56 to 61 . 

With specific reference to dependent claims 18-21 , neither Stirtz, 
Hendrickson nor Mudryk, either alone or in combination, teach or even suggest 
formation of a recess in the ground immediately adjacent the body to allow uninhibited 
bending of the body. Applicants note the Examiner's reference to Mudryk, at column 1 , 
lines 19 to 21 , to posts being "installed by driving them into the ground, or by securing 



-23- 



them in boreholes dug into the ground." The Examiner has overlooked, however, the 
remainder of that passage stating that the posts are secured in the boreholes with 
cement if required. A person of ordinary skill in the art will clearly understand the use of 
the terminology "securing" and the use of cement, that the post will fully fill the borehole 
dug into the ground, such that no recess will remain, or alternatively that cement will be 
used to fill any recess left between the post and wall of the borehole. The emphasis on 
rigidly securing a post within the borehole teaches directly away from leaving a recess 
to allow uninhibited bending of the body. The Examiner's rejections of claims 25 to 28 
are similarly flawed and claims 18-21 and 25-28 are therefore allowable for the 
foregoing reasons as well. 

With specific reference to dependent claims 22 and 23, neither Stirtz, 
Hendrickson, nor Mudryk, alone or in combination, teach or suggest locating the entire 
base beneath the surface of the ground. Mudryk teaches, at column 3, lines 55 to 60, 
that the upper portion of the base (4) must remain above the ground to enable 
attachment of the first attachment member (6) by means of fasteners (12) through holes 
provides in the base (4). Similarly, Mudryk also clearly fails to suggest locating the top 
of the base beneath the surface of the ground, as set forth in dependent claim 23. 
Accordingly, Applicants respectfully submit that each of dependent claims 22 and 23 is 
allowable for these reasons as well. 

Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being 
unpatentable over Stirtz in view of Hendrickson and Mudryk and further in view of U.S. 
Patent No. 6,375,385 to Kennedy ("Kennedy"). Each of claims 7 and 8 depends from 
allowable independent claim 1 and is allowable at least by virtue of depending from an 
allowable claim. Moreover, Mudryk fails to teach or even suggest the dimensional 



-24- 



features recited in claim 8 and this claim is also allowable for this reason. Applicants 
respectfully request withdrawal of these rejections. 

Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being 
unpatentable over Pellowski in view of U.S. Patent No. 2,155,349 to Mathesius et al. 
("Mathesius"). Each of claims 3 and 4 depends from allowable independent claim 1 and 
is therefore allowable at least by virtue of depending from an allowable claim. 

Moreover, while Mathesius discloses the use of steel having a Rockwell 
hardness of not more than 50c, there is no teaching or suggestion of the use of steel 
having a Rockwell hardness between 40c and 47c, let alone the use of spring steel 
falling within this hardness range. Accordingly, claims dependent claims 3 and 4 are 
also allowable for this reason and Applicants respectfully request withdrawal of these 
rejections. 

Claims 5, 6, 8, 10, 19, 20, 26, and 27 stand rejected under 35 U.S.C. § 
103(a) as being unpatentable over Pellowski. Each of these claims depends from 
allowable independent claim 1 and is therefore allowable at least by virtue of depending 
from an allowable claim. 

Moreover, a person of ordinary skill in the art would not consider the 
disclosure of Pellowski when developing a roadside post, given the nature of Pellowski 
in disclosing a small strip element forming a lane marker on the road for providing a 
visual and audible demarcation between the lanes, as opposed to a roadside post. The 
design and purpose of Pellowski, being a small strip element designed to be regularly 
impacted by vehicles changing lanes, would result in it not being considered to be 
relevant by a person of ordinary skill in the art. Moreover, following the directions of 
Pellowski would result in quite a different configuration. While Pellowski discloses the 



-25- 



use of a recess, the recess is formed in the surface of the highway, as noted by the 
Examiner, rather than in the ground in a roadside location. Accordingly, Applicants 
respectfully request withdrawal of the rejections of claims 5, 6, 8, 10, 19, 20, 26, and 27 
for these reasons as well. 

Claims 1 1 , 1 2, 22, and 23 stand rejected under 35 U.S.C. § 1 03(a) as 
being unpatentable over Pellowski in view of Mudryk. Each of these rejected claims 
depends from claim 1 and is allowable at least by virtue of depending from an allowable 
claim. 

Moreover, a person of ordinary skill in the art would not contemplate 
providing the roadside post of Pellowski with a rigid base member to facilitate driving the 
roadside post into hard soil, as is commonly found adjacent roadways, as suggested by 
the Examiner, given that Pellowski is not directed to the installation of roadside posts 
adjacent roadways. As discussed above, Pellowski is directed to road markers in the 
form of strip elements that are mounted on or in roadways, and not in the ground 
adjacent roadways. Further, Mudryk neither teaches nor suggests locating a base 
beneath the surface of the ground as set forth in claims 22 and 23, as discussed above. 
Accordingly, Applicants respectfully submit that each of these claims is also allowable 
for these reasons and request withdrawal of the rejections in this regard. 

Claim 29 stands rejected under 35 U.S.C. § 103(a) as being unpatentable 
over Pellowski in view of U.S. Patent No. RE 32,045 to Schmanski ("Schmanski"). 
Claim 29 depends from independent claim 1 and is allowable at least by virtue of 
depending from an allowable claim. 

Moreover, a person of ordinary skill in the art would not consider modifying 
the strip element of Pellowski to include ribs as disclosed in Schmanski in view of the 



-26- 



different purpose of the lane markers of Pellowski and their relatively small size. The 
inclusion of ribs in the relatively small strip elements of Pellowski, that are designed to 
be regularly impacted by vehicles changing lanes, would tend to provide a strip element 
of excessive stiffness for its intended purpose of being regularly impacted. Accordingly, 
Applicants respectfully submit that claim 29 is also allowable for these reasons and 
request withdrawal of the rejections in this regard. 

New Claims 

Claims 32-40 have been added by way of this response. Claims 32 
and 33 depend from claim 1 . Claim 32 introduces the recitation of a barb of the 
body located toward the first end thereof and projecting toward an opposing 
second end of the body. No new matter is introduced by way of this recitation, as 
it is fully supported in the specification. See, for example, Application at p. 6, 
lines 14-18, and FIGS. 5 and 7. Claim 33 recites the body including a taper at a 
first end of the body and extending outwardly from a central portion of the first 
end. No new matter is introduced by way of this recitation, as it is fully supported 
in the specification. See, for example, Application at FIG. 5. Applicants 
respectfully submit that each of claims 32 and 33 is allowable at least by virtue of 
depending from an allowable claim and request early notice of allowance in this 
regard. Moreover, the notch (1 5) at the lower end portion (1 1 ) of the strip 
element (10) in Pellowski does not define a taper as recited in claim 33, as the 
two sharp points do not extend outwardly from a central portion of the end portion 
(1 1 ) but rather from a periphery thereof, as seen in Figure 3. Accordingly, 
dependent claim 33 is allowable for this reason as well. 



-27- 



Claim 34 is an independent claim and incorporates language 
similar to that already found in claim 1 as well as a recitation of the body of the 
roadside post being configured to be supported by direct engagement with the 
ground. No new matter is introduced by way of this recitation, as it is fully 
supported in the specification. See, for example, Application at p.4, line 24 
through p.5, line 7; p.6, lines 11-18; and FIGS. 1,3,4, and 7. 

Unlike the claimed roadside post of claim 34, the marker in 
Pellowski is not configured to be supported by direct engagement with the 
ground. To the contrary, the marker of Pellowski has a strip element (10) that is 
supported in the ground through a base of hardenable material (13) that could be 
either any thermal setting plastic or concrete and which is capable of adhering to 
concrete and which is water proof, quick hardening, easily removable by 
dissolving and resistant to salt and other chemicals (Pellowski at col. 2, line 39 
through col. 3, line 3). In other words, the strip element (10) is supported by a 
base having very specific technical requirements and therefore is not configured 
to be supported by direct engagement with the ground. Accordingly, Applicants 
respectfully submit that claim 34 is allowable over Pellowski and early notice of 
allowance of the claim is earnestly solicited. 

Each of new claims 35-40 recites language already found in the 
original and/or previously presented claims and therefore introduces no new 
matter therereby. Moreover, Applicants respectfully submit that each of these 
new claims recites a combination of elements neither disclosed nor obvious over 
the cited references. Applicants thus earnestly request early notice of allowance 
of these claims as well. 



-28- 



Conclusion 



In view of the foregoing response including the amendments and remarks, 
this application is submitted to be in complete condition for allowance and early notice 
to this effect is earnestly solicited. If the Examiner believes any matter requires further 
discussion, the Examiner is respectfully invited to telephone the undersigned attorney 
so that the matter may be promptly resolved. 

Applicants do not believe that any fees are due in connection with this 
response other than the extension fee, Request for Continued Examination fee and 
excess claims fees. However, if such petition is due or any fees are necessary, the 
Commissioner may consider this to be a request for such and charge any necessary 
fees to deposit account 23-3000. 

Respectfully submitted, 

WOOD, HERRON & EVANS, L.L.P. 

/Kevin G. Roonev/ 

Kevin G. Rooney 
Reg. No. 36,330 

2700 Carew Tower 
441 Vine Street 
Cincinnati, Ohio 45202 
(513) 241-2324 



-29-