14396806 - (D) (P.T.A.B. Oct. 24, 2019)

Andrew Saul. Barraclough

Patent Trials and Appeals BoardOct 24, 2019

14396806 - (D) (P.T.A.B. Oct. 24, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/396,806 10/24/2014 Andrew Saul Barraclough 025140-1618/61044-US 1048 13570 7590 10/24/2019 Neal, Gerber & Eisenberg LLP (ITW) 2 N. LaSalle Street Suite 1700 Chicago, IL 60602-3801 EXAMINER MICHENER, JOSHUA J ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 10/24/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): amasia@ngelaw.com ipusmail@ngelaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ANDREW SAUL BARRACLOUGH __________________ Appeal 2018-008629 Application 14/396,806 Technology Center 3600 ____________________ Before MICHAEL L. HOELTER, JAMES P. CALVE, and JEREMY M. PLENZLER, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Final Office Action rejecting claims 1–18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Illinois Tool Works Inc. Appeal Br. 2. Appeal 2018-008629 Application 14/396,806 2 CLAIMED SUBJECT MATTER Claims 1, 4, and 9–11 are independent. Claim 1 is reproduced below. 1. A lifting anchor for embedment into a concrete component, the anchor having a head for releasable engagement with lifting equipment, and at least one leg extending from the head, the leg being profiled so as to lock into the surrounding concrete, wherein the profiling is formed by a series of formations arranged along at least a face and adjacent edge of the leg. REJECTIONS Claim 8 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite.2 Claims 1–18 are rejected under 35 U.S.C. § 102(b) an anticipated by Mackay Sim (US 2008/0196324 A1, published Aug. 21, 2008). Claims 1–18 are rejected provisionally for nonstatutory double patenting over claims 6–20 of co-pending Application No. 14/396,812. ANALYSIS Indefiniteness of Claim 8 The Examiner determines that claim 8 is indefinite because the phrase “plate-like” and particularly “or the like” is not actually disclosed so that the scope of the claim is unascertainable. Final Act. 3. The Examiner finds that the Specification never describes what “plate-like” means so the scope of the term is not ascertainable. Ans. 3. 2 We understand the Examiner to have withdrawn the rejection of claim 18 as indefinite following the entry of Appellant’s Response to the Final Office Action, filed Dec. 6, 2015. See Examiner’s Advisory Action, mailed Dec. 21, 2015. Appellant’s Response corrected the antecedent basis issues raised in the Examiner’s rejection of claim 18 for indefiniteness. See Final Act. 3; see also Ans. 3 (discussing only the rejection of claim 8 for indefiniteness). Appeal 2018-008629 Application 14/396,806 3 Appellant argues that the standard for indefiniteness depends on how a person of ordinary skill in the art would interpret the claims in view of the Specification, and the Examiner must establish that such a person would not be able to ascertain the scope of the claims. Appeal Br. 17–18. Appellant argues that originally claim 8 used “plate-like” so “the claim encompasses exactly what the person of ordinary skill in the art would understand that claim encompasses.” Id. at 19. Appellant further argues that the Examiner is applying per se rules of indefiniteness and the issuance of 9,928 United States patents since 1977 that use the phrase “plate-like” or “plate like” indicates that this phrase is not per se indefinite. Id. at 20–22. Appellant cites a dictionary definition that treats “plate-like” as an adjective. Id. at 23. The Patent Laws set forth the standard for indefiniteness as follows: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 35 U.S.C. § 112, second paragraph. For claims in an application that has not issued as a patent, “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014); see Ex parte McAward, No. 2015-006416, slip op. at 11 (PTAB Aug. 25, 2017) (precedential) (same). Packard, 751 F.3d at 1311 further held that: when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b). Appeal 2018-008629 Application 14/396,806 4 The use of the term of degree or approximation “like” with “plate” in the limitation “plate-like” introduces a term of degree into the claim. See In re Walter, 698 F. App’x 1022, 1026 (Fed. Cir. 2017) (holding that the term “‘block-like’ is a term of degree without any accompanying guidance in the intrinsic record for determining its scope.”) (non-precedential); see also MPEP § 2173.05(b) (9th ed., rev. 08.2017, Jan. 2018) (Section I Terms of Degree and Section III Approximations). Furthermore, “[c]laim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014). However, “a patent does not satisfy the definiteness requirement of § 112 merely because ‘a court can ascribe some meaning to a patent’s claims.’” Id. at 1371 (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 911 (2014)). Accordingly, “[t]he claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.” Id. (citing Nautilus, 572 U.S. at 911& n. 8, which indicated that there is an indefiniteness problem if the claim language “might mean several different things and ‘no informed and confident choice is available among the contending definitions’”)). Although Appellant identifies some written description support for the limitation “plate-like” in original claim 8, Appellant does not identify any disclosure in the Specification of this term or of objective boundaries of the meaning of this term therein. See Appeal Br. 16–24; Reply Br. 8–12. We agree with the Examiner’s finding that the Specification does not mention this limitation or provide objective boundaries for its meaning. Final Act. 3; Ans. 3. This finding is unrebutted by Appellant. Appeal 2018-008629 Application 14/396,806 5 Instead, Appellant cites a dictionary definition of “plate” and argues that “plate-like” is an adjective. Appeal Br. 23; Reply Br. 11. However, the dictionary presents thirty-two definitions of “plate.” Appellant does not cite any definition as being consistent with the Specification or as providing an ordinary meaning of “plate-like” to a skilled artisan in this technology. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.”). The Specification describes prior art anchors as being cut from thick metal plate with non-contact high energy cutting means such as a laser beam or plasma arc. Spec. 1:11–13. As a result, “the opposed faces of the anchor which are formed out of the opposed faces of the plate are fundamentally planar.” Id. at 3:31–33. However, the anchor of the preferred embodiment is made by other techniques such as hot drop forging from a metal billet, casting, or sintering that allows shaping to be applied to all parts of the anchor including its opposed faces. Id. at 3:23–4:2. These manufacturing techniques permit a variety of 3-D shaping options not achievable by plate cutting techniques used in prior art anchors. Id. at 8:18–20. Figures 1–3 illustrate an anchor in which head 4 has two opposed, planar surfaces with an aperture 6 formed therethrough. The Specification describes this anchor as being of the same general form as that described in Australian patent application 2006201337 of Cetram Pty Ltd. Id. at 3:13– 16. Figure 9 illustrates another embodiment in which head 4 has two oval depressions formed in its surface, an aperture, and a raised rib 10 around its perimeter. It is unclear which embodiment(s) describe a “plate-like form.” Appeal 2018-008629 Application 14/396,806 6 Our reviewing court has provided guidance for this situation. During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow. . . . The reason is simply that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed. . . . An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process. In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989); Packard, 751 F.3d at 1313 (quoting Zletz, 893 F.2d at 321–22). Because an applicant “is in the best position to resolve the ambiguity in the patent claims, . . . it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (quoted in Packard, 751 F.3d at 1313). Absent any clear, objective boundaries in the Specification to guide interpretation of “plate-like,” we determine this term is unclear. See Interval Licensing, 766 F.3d at 1371. The fact that we may be able to ascribe some meaning to this term is not sufficient. Id. Appellant has not rebutted the Examiner’s finding that the Specification lacks guidance for this term by identifying where the Specification provides objective boundaries or criteria to interpret plate-like. See Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1290 (Fed. Cir. 2017) (“This requires a patent to provide ‘some standard for measuring that [term of] degree.”) (citations omitted). Thus, we sustain the rejection of claim 8 as being indefinite. Appeal 2018-008629 Application 14/396,806 7 Anticipation of Claims 1–18 Appellant argues claims 1–3, 5–8, 12, 14, and 15 as a group. Appeal Br. 28–97. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv). The indefiniteness of claim 8 does not affect our analysis of this rejection. Claims 1–3, 5–8, 12, 14, and 15 Regarding claim 1, the Examiner finds that Figure 22 of Mackay Sim discloses an edge lift anchor having at least one leg 34 profiled to lock into concrete and the profiling forms “a series of formations arranged along at least a ‘face’ and ‘adjacent edge’ (a tip portion) of the leg (e.g. as shown in Fig. 22).” Final Act. 6, 11. The Examiner illustrates these findings with annotations on Figure 58 of Mackay Sim reproduced below with Figure 22. Figure 22 above is a front view of an anchor embodiment with legs 34 extending from head 65. See Mackay Sim ¶¶ 33, 83, 96. Figure 58 above is a perspective view of anchor 61 with the Examiner’s annotations to identify edges e1–e3 and a series of formations 1–4 formed along a face. Ans. 4–6. Appeal 2018-008629 Application 14/396,806 8 Appellant argues that claim 1 recites a lifting anchor “wherein the profiling is formed by a series of formations arranged along at least a face and adjacent edge of the leg” and Figure 22 is a traditional flat plate anchor without the innovative formations on the face of the anchor. Appeal Br. 35– 38. Appellant argues that the Specification describes formations 8 extending along the inner edges of the legs, similar to prior art anchors cut from thick metal plate, and also extending onto the opposed faces of each leg as shown in Figures 1 and 4. Id. at 43. Appellant argues that Figures 22 and 25 of Mackay Sim show a flat face without any profiling or formations arranged along the face and an adjacent edge. Id. at 39, 41–44; Reply Br. 32–33. In response to the Examiner’s annotations reproduced above, Appellant argues that the operative word here is “face” and none of the formations identified by the Examiner are on the “face” as required by claim 1. Reply Br. 34–35. This argument is not persuasive because it does not apprise us of error in the Examiner’s findings set forth above. The Examiner does not rely on the flat face of the anchor in Figures 22 and 58. The Examiner relies on the curved faces annotated with numerals “1–4” and the adjacent edge formed by the intersection between these curved faces and the flat front face of the anchor legs 34 as annotated by “e1–e3” above on Figure 58 of Mackay Sim. See Ans. 5–6; see also 37 C.F.R. § 41.37(c)(1)(iv) (the Appeal Brief “shall explain why the examiner erred as to each ground of rejection contested by appellant.”); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (approving of Board’s practice to require an applicant to identify the alleged error in an examiner’s rejection). Appellant has not explained why the Examiner’s treatment of these portions of Mackay Sim’s legs 34 in Figure 22, and as annotated on the three-dimensional perspective of Figure 58, is in error. Appeal 2018-008629 Application 14/396,806 9 The Examiner reasonably interprets “adjacent edge” as an intersection of the front face and curved side surface of legs 34. See Ans. 5–6. This interpretation comports with an ordinary meaning of “edge” as “a line or line segment that is the intersection of two plane faces (as of a pyramid) or of two planes on edge.” See Merriam-Webster.com (accessed Oct. 2, 2019), http://www.merriam-webster.com/dictionary/edge. This interpretation is consistent with the Specification, which uses the term “edge” to indicate such a line formed by intersecting surfaces where inclined ribs 10 are formed adjacent to “the respective edges of the anchor,” i.e., where two adjacent surfaces of the anchor intersect as illustrated in Figures 1–3 of Appellant’s disclosure, reproduced below. See Spec. 5:11–15. Figure 1 is a perspective view of an anchor with leg formations 8. Figure 2 is a front and Figure 3 is a side view of the anchor of Figure 1. Appeal 2018-008629 Application 14/396,806 10 The Specification provides no lexicographic definition of “face” or “adjacent edge.” Nor does Appellant assert the existence of such definition. The language of claim 1 does not tie the “face” or “adjacent edge” of the anchor to any particular surface or other feature of the claimed anchor. Nor do Figures 1–3 identify a face or adjacent edge. See 37 C.F.R. § 1.83(a) (drawings in a nonprovisional application must show every feature specified in the claims). Figures 1–3 only identify formations 8 formed along legs 2 without identifying any portion of formation 8 or leg 2 as a face or adjacent edge. Appellant’s Figure 4 also identifies one of the horizontal surfaces of formation 8 (i.e., the portion contacted by lead line of numeral 8 in Figure 3) as an upper inclined face 8a. Spec. 8:4–11. Therefore, the Examiner’s treatment of the formations arranged along the undulating sides of Mackay Sim’s legs 34 in Figures 22 and 58 as faces and the undulating profile formed by the intersection of these faces with the front face of the anchor as an “adjacent edge” is consistent with the claims as interpreted in light of the Specification. Appellant has not apprised us of error in this interpretation or the Examiner’s findings based thereon. Instead, Appellant argues that Figure 58 of Mackay Sim cannot be relied on because it is a different embodiment than Figures 22–25 and does not use anchor 61. Reply Br. 5–7. However, “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citation omitted) (holding that the prior art effectively taught fifteen combinations, one of which anticipated the challenged claim). Appeal 2018-008629 Application 14/396,806 11 Here, the Examiner correctly found that legs 34 in the front view of Figure 22 of Mackay Sim have multiple side surfaces, as illustrated in the perspective view of Figure 58. See Ans. 4–6. Indeed, the perspective view of Figure 25 shows similar undulating side surfaces as Appellant points out. See Reply Br. 3 (reproducing Fig. 25 of Mackay Sim). Mackay Sim also discloses that lower legs 34 have inside surfaces that transfer shear forces into the concrete in which they are embedded. Mackay Sim ¶ 80. The surface of the outside lateral edge of the leg of the anchor also is fixed in the concrete. Id. ¶ 81. The legs are cut from a steel sheet. Id. ¶¶ 72, 83. Thus, a skilled artisan would understand that Figure 22 of Mackay Sim includes legs 34 with undulating side surfaces like those depicted in Figures 25 and 58. Further, Figures 25 and 58 indicate that such anchors include legs with a series of formations along their side surfaces or side faces as claimed. This case is distinguishable from Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) where the district court erred in combining two separate embodiments in a prior art reference because Mackay Sim discloses all embodiments of its anchors as formed from steel sheets such that the side surfaces of the legs form a series of formations as claimed. The surfaces transfer shear forces to the concrete. Mackay Sim ¶¶ 80, 81. We agree with the Examiner that the embodiment of Figure 22 would include side surface formations like those illustrated in Figure 58 and as claimed. See Victaulic Co. v. Iancu, 753 F. App’x 895, 900 (Fed. Cir. 2018) (holding that the prior art expressly contemplated the use of multiple segments, nuts and bolts disclosed in different embodiments) (non-precedential). Thus, we sustain the rejection of claim 1 and claims 2, 3, 5–8, 12, 14, and 15, which fall therewith. Appeal 2018-008629 Application 14/396,806 12 Independent Claim 4 Claim 4 recites an edge lift anchor with similar features as claim 1 and “a series of formations arranged longitudinally along each leg on an inner edge and opposed faces of the leg.” Appeal Br. 98 (Claims App.). The Examiner again relies on Figure 22 and annotated Figure 58 of Mackay Sim to disclose the features of claim 4, including a series of formations profiled on the multiple faces and edges of legs 34. Final Act. 6; see Ans. 4–6. Appellant argues that the Examiner has not provided an interpretation of the limitations “inner edge” and “opposed faces of the leg” and there are no formations arranged along a face of any leg of Mackay Sim. Appeal Br. 55. Appellant incorporates all prior procedural arguments, questions, and requests for information raised regarding claim 1 as equally applicable to claim 4. Id. at 55–56. Appellant’s arguments are not persuasive for the reasons discussed above for claim 1. For example, Appellant’s arguments that the Examiner did not identify any specific features that correspond to claim 4 (id. at 57) are addressed by the Examiner’s annotation of Figure 58 of Mackay Sim and also by findings in the Answer as reproduced and discussed above. See Ans. 4–6. We agree with the Examiner that Mackay Sim discloses an edge lift anchor with the claimed series of formations on legs 34. The Examiner’s annotations on Figure 58 identify formations on the faces of leg 34 using numerals 1–4. Figure 58 illustrates an opposed face to the one annotated by the Examiner with the same series of formations. The Examiner also identified adjacent edges e1–e3 that have a series of formations as discussed above for claim 1. Furthermore, the edge is formed on inner and outer portions of leg 34 as illustrated in Figure 58. Appeal 2018-008629 Application 14/396,806 13 Appellant does not apprise us of error in the Examiner’s findings in this regard. See Reply Br. 38–41. To the extent Appellant incorporates any arguments regarding the Examiner’s reliance on features in Figure 58 of Mackay Sim with those of Figure 22, these arguments are unpersuasive because a skilled artisan would recognize that features relied on in Figure 58, namely, side surfaces of legs 34 with profiles/formations formed thereon, also are found on legs 34 of Figure 22, and these formations correspond to the “series of formations” recited in claim 4. Regarding Appellant’s other arguments for claim 4 (and for claim 1 above) requesting the Examiner to provide claim constructions, claim charts, and annotations on drawings (Appeal Br. 29–65), “[i]t is well-established that the Board is free to affirm an examiner’s rejection so long as ‘appellants have had a fair opportunity to react to the thrust of the rejection.’” Jung, 637 F.3d at 1365 (citation omitted). The Examiner’s findings and annotations on Figure 58 (Ans. 5–6) provide sufficient notice and opportunity for Appellant to respond to the thrust of the rejection that Mackay Sim discloses “a head,” “a pair of generally parallel legs extending from the head,” and leg profiling as a “series of formations” as discussed above. See Jung, 637 F.3d at 1363 (declining to impose a heightened burden on examiners beyond the notice requirement of 35 U.S.C. § 132 to establish a prima facie case). There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection. This court declines to create such a burdensome and unnecessary requirement. Id. Thus, we sustain the rejection of claim 4. Appeal 2018-008629 Application 14/396,806 14 Independent Claim 9 Claim 9 recites a lifting anchor having a head and at least one leg that extends from the head and is profiled with “a series of formations arranged along at least a face of the leg.” Appeal Br. 99 (Claims App.). The Examiner relies on Figure 22 of Mackay Sim and leg 34 for the series for formations arranged along multiple faces and edges of leg 34 as illustrated with annotations on Figure 58. Final Act. 8; see Ans. 4–6. Appellant argues that there are no formations along a face of any leg of Mackay Sim, and the Examiner failed to proffer the broadest reasonable interpretation of “a face of the leg.” Appeal Br. 66. Appellant also argues that the Examiner failed to identify features of Figure 22 that correspond to the face of the leg and formations thereon. Id. at 68. Appellant’s arguments are not persuasive of error in view of the Examiner’s findings in the Answer and annotations on Figure 58. Ans. 4–6. The Examiner identified formations along a face of leg 34 with numerals 1– 4. Id. Appellant has not apprised us of error in those findings. There is no language in claim 9 that limits the “face of the leg” to a particular portion of the leg. As shown in Appellant’s Figures 1–3 reproduced above, the legs 8 include formations spanning the entire circumference of the leg without any delineation of which portion is a face and which portion is an edge. Thus, we sustain the rejection of claim 9. Independent Claim 10 Claim 10 recites a lifting anchor having a head and at least one leg extending from the head, “the anchor having reinforcing ribbing extending the outer edge of substantially the entire length of the leg.” Appeal Br. 99 (Claims App.). Appeal 2018-008629 Application 14/396,806 15 The Examiner finds that Mackay Sim discloses an anchor having a head (element identified by lead line 61 in Figure 22) and one leg being profiled (at 34) “the anchor having reinforcing ribbing 34 extending the outer edge of substantially the entire length of the leg.” Final Act. 8. Appellant argues there is no ribbing in Figure 22 as that term would be understood and element 34 cannot be both profiling and ribbing. Appeal Br. 78–79; Reply Br. 46. Appellant also argues that element 34, at most, is profiling. Appeal Br. 80; Reply Br. 45–46. We agree. The Examiner’s finding that leg 34 includes reinforcing ribbing is not supported by a preponderance of evidence. The Examiner’s findings that Mackay Sim discloses a series of formations along a face and adjacent edge of Mackay Sim’s leg 34 does not address where Mackay Sim also discloses an additional element of reinforcing ribs on leg 34 as recited in claim 10. Claim 10 requires ribbing to extend along an outer edge of each leg. The Examiner’s annotations of edges e1–e3 on Figure 58 of Mackay Sim do not identify any additional structure or ribbing that extends from any of the outer edges as “reinforcing ribbing” as required by claim 10. Thus, we do not sustain the rejection of claim 10. Independent Claim 11 Claim 11 recites an edge lifting anchor “wherein each leg includes ribbing extending along an outer edge thereof” as recited in claim 10, and the anchor is “substantially configured in the manner of an I-beam.” The Examiner relies on the same findings that leg 34 includes ribbing 34 as for claim 10 above. We agree with Appellant that Mackay Sim lacks this feature for the same reasons as expressed with respect to claim 10 above. Appeal Br. 86. Thus, we do not sustain the rejection of claim 11. Appeal 2018-008629 Application 14/396,806 16 Claim 13 The Examiner’s findings and annotations on Figure 58 of Mackay Sim (reproduced above) establish that the “adjacent edge extends in a direction normal to the direction of the width and parallel to the direction of the length and thickness” as recited in claim 13. See Ans. 4–6. Edge e1 extends in a direction normal to the width, which is the dimension across the anchor from one leg 34 to the other leg 34. Edge e1 extends in a direction parallel to the length of the anchor, which is in the direction of legs 34. Edge e1 extends parallel to the direction of the thickness, which comprises faces 1–4 that extend in parallel to the length of leg 34 and edge e1 as shown with the Examiner’s annotations on Figure 58. See id. at 6. These annotations by the Examiner address Appellant’s request that the Examiner identify features of the claim. See Appeal Br. 88–89. The Examiner explains which dimensions of the anchor illustrated in Figure 22 correspond to a length, a width, and a thickness. Ans. 4. Appellant does not apprise us of error in any of these findings or explanations. Thus, we sustain the rejection of claim 13. Claims 16 and 17 Claims 16 and 17 depend respectively from independent claims 10 and 11 and recite, inter alia, that “the ribbing protrudes in the direction of the thickness.” Appeal Br. 100 (Claims App.). The Examiner again relies on element 34 in Figures 22–25 of Mackay Sim to disclose the claimed ribbing. Final Act. 9–10. As discussed above for the rejection of claims 10 and 11, element 34 of Mackay Sim discloses legs with faces and edges but no ribbing is identified by the Examiner. Thus, we do not sustain the rejection of claims 16 and 17. Appeal 2018-008629 Application 14/396,806 17 Claim 18 Claim 18 depends from claim 1 and recites the head has an upper edge and width that engages a ring clutch body at the commencement of lifting and that any deformation of the edge of the head caused by engagement with the clutch body under the applied lifting load is wholly contained within the width of the head. See Appeal Br. 101 (Claims App.). The Examiner finds that Mackay Sim discloses the claimed structure of the head having an upper edge engageable by a clutch ring body with a width such that any deformation of the head is contained within the width of the head. Final Act. 10. Based on these findings, the Examiner had a sound reason to find that Mackay Sim’s anchor and head can perform the claimed functions discussed above. In this regard, Mackay Sim describes the anchor head as having a shaped castellation 15 (Fig. 10) that prevents ring-clutch and shear loads from bearing against the concrete to cause local compression failure toward the free edge of the concrete panel when lifted by ring clutch 18. Mackay Sim ¶ 66. This castellation is used on anchor 61 in Figure 22. Mackay Sim discloses anchor 61 and its castellated head are configured so they do not transfer the lifting load to the concrete in the area adjacent to the head of the anchor. Instead, the head and its castellation deflect without cracking the concrete in the vicinity of the recess where the head is located when the head is engaged for lifting. See id. ¶¶ 135–37, Figs. 55–62. As the explained in In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997), “[a] patent applicant is free to recite features of an apparatus either structurally or functionally. . . . Yet, choosing to define an element functionally, i.e., by what it does, carries with it a risk” expressed by our predecessor court in In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). Appeal 2018-008629 Application 14/396,806 18 [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Id. at 213 (quoted in Schreiber, 128 F.3d at 1478). Appellant’s arguments do not explain why Mackay Sim is not capable of performing the claimed functions when it possesses the claimed structure of an anchor head and width designed to contain the force of engagement within the width of the head without affecting the surrounding concrete. The Specification describes this structural feature in a similar manner as Mackay Sim, namely, the increased width of the head provides “increased length of the upper edge whereby the clutch body when inclined will engage that edge at a position displaced more inwardly from the outer end of the edge.” Spec. 6:30–33. “In particular, the width is increased to permit engagement of the clutch body with the edge [of the head] at a distance of approximately 12 to 16mm from the end of the edge, depending on anchor and clutch capacity.” Id. at 6:33–7:3. Thus, we sustain the rejection of claim 18. Double Patenting of Claims 1–18 The Examiner provisionally rejects claims 1–18 for obviousness-type double patenting over claims 6–20 of Application No. 14/396,812, because all of the features of the instant claims are included within the claims of that co-pending application. Final Act. 5; Ans. 3. Appellant argues that the presence of common features in the claim is insufficient to establish a case of obviousness. Appeal Br. 27; Reply Br. 14. Appeal 2018-008629 Application 14/396,806 19 Application No. 14/396,812 issued as Patent No. US 10,309,115 B2 on June 4, 2019. After a provisional double patenting rejection was made in this application, the claims of Application No. 14/396,812 were amended, to include cancelling claims 16–20, before the application issued as Patent No. US 10,309,115 B2. See Response to Non-Final Office Action, Application No. 14/396,812, filed Dec. 18, 2018, at 3–7. Thus, we do not reach the provisional double patenting rejection in this application. See Ex Parte Moncla, 95 USPQ2d 1884 (BPAI 2010). CONCLUSION We affirm the rejection of claim 8 for indefiniteness. We affirm the rejection of claims 1–9, 12–15, and 18, and we reverse the rejection of claims 10, 11, 16, and 17 as anticipated by Mackay Sim. Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 8 112, para. 2 Indefiniteness 8 1–18 102(b) Mackay Sim 1–9, 12– 15, 18 10, 11, 16, 17 Overall Outcome 1–9, 12– 15, 18 10, 11, 16, 17 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-IN-PART Notice of References Cited Application/Control No. Applicant(s)/Patent Under Patent Appeal No. Examiner Art Unit Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Name Classification A US- B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Country Name Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U V W X *A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.