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.
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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
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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
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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
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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
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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
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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
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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
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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
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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.
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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
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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
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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
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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
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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
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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
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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.
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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.
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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
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