Ex Parte 8028491 et al

Patent Trial and Appeal Board

Sep 21, 2015

95001775 (P.T.A.B. Sep. 21, 2015)

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.
95/001,775 10/04/2011 8028491 766P001C-RXE 9178
42754 7590 09/21/2015
Nields, Lemack & Frame, LLC
176 E. Main Street
Suite #5
Westborough, MA 01581
EXAMINER
DAWSON, GLENN K
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/21/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

ENGINEERED PLASTICS, INC.
Requester, Cross-Appellant, Respondent

v.

ADA SOLUTIONS, INC.
Patent Owner, Appellant, Respondent
____________________

Appeal 2015-001529
Reexamination Control 95/001,775
Patent US 8,028,491 B2
Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING

The Patent Owner requests reconsideration (hereinafter "Rehearing
Request" or "Reh'g Req.") under 37 C.F.R. § 41.79 of our Decision mailed
March 26, 2015 (hereinafter "Original Decision") affirming the Examiner's
final rejections of the appealed claims 1, 2 and 19–22.
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We grant the Rehearing Request to the extent that we consider the
Patent Owner's arguments infra, and further explain the Original Decision.
However, we deny the request to modify the Original Decision.

Argument A
The Patent Owner argues that Footnote 13 in the Original Decision
demonstrates the Board's misapprehension of its argument because it is the
very silence of Trafixigns ’483 with respect to the method of its installation,
which provides the reason why the Board should understand Trafixigns ’483
in the context of the disclosure of Trafixigns ’732 (Reh'g Req. 2). The
Patent Owner submits that a skilled artisan would likely understand
Trafixigns ’483 as disclosing an installation method that "does not involve
first coupling the anchor members to the body so that they are embedded
together in fresh concrete." (Id. at 3).
However, the fact remains that Trafixigns ’483 is "silent as to the
method and order of its installation." (Original Decision 6). In addition,
even if Trafixigns ’732 was considered relevant, Footnote 13 also states
"[a]dditionally, the statement in Trafixigns GB 433,732 also does not specify
that the keys are embedded in the concrete first and the concrete cured prior
to securing the plate." (Original Decision 6, fn.13). The statement in
Trafixigns ’732 relied upon by the Patent Owner states "[o]n screwing the
bolt heads[,] the bolts hold the block securely in position on the road or the
like when the keys have been embedded in the concrete." (Trafixigns ’732,
pg. 2, ll. 1–4). This statement is not dispositive as to the method of
installation as the Patent Owner asserts because the statement may be
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understood as describing the completely installed configuration wherein the
plates are securely held in position by the keys and the bolt heads.
More importantly, regardless of what the Trafixigns ’732 statement
may mean, the Patent Owner overlooks the actual basis for affirming the
rejection, which is that Wehmeyer explicitly discloses installation of plates
in freshly poured (or hardened) concrete, and also specifically discloses wet-
set installation with the lugs attached to the plates (Original Decision 6–7;
Wehmeyer, col. 2, ll. 36–44, col. 8, ll. 17–21).

Argument B
The Patent Owner also argues that the Board overlooks the fact that
Trafixigns ’483 is not a wet-set tactile warning surface unit (Reh'g Req. 3).
However, the Patent Owner overlooks the fact that the rejections based on
Trafixigns ’483 are obviousness rejections based on teachings of a
combination of references, not anticipation rejections. In re Merck, 800 F.2d
1091, 1097 (Fed. Cir. 1986) (non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references). The secondary references relied
upon explicitly disclose that it was known in the art to wet-set tactile
warning surface units or plates (see, e.g., Original Decision 6–8, 11).
The Patent Owner further argues that Trafixigns ’483 teaches away
from wet-set plates because one of its embodiments allows the plate to be
lowered, which would not be possible if it was wet-set, and that a person of
ordinary skill would not view Trafixigns ’483 as contemplating two different
installation methods (Reh'g Req. 3–4). The argument as to the embodiment
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that allows lowering of the plate has already been generally addressed, and
we again note that the Patent Owner argues Trafixigns ’483 individually (see
Original Decision 8; Trafixigns ’483, Fig. 7).

Argument C
The Patent Owner argues that the Board overlooks the fact that
Trafixigns ’483 does not teach "when the anchor is coupled to the lower
surface of the body." (Reh'g Req. 4–5). According to the Patent Owner:
Trafixigns ’483 does not teach when the anchor is coupled to
the lower surface of the body. Stated differently, although
certainly in its completed, installed state, the anchors of
Trafixigns ’483 are coupled to the lower surface of the body,
the instant method claims require providing a unit having a
number of anchor members coupled to the lower surface of the
body, and then placing that unit into fresh concrete and
applying force to the top of the unit to embed the unit in the
concrete.
(Reh'g Req. 4–5). The Patent Owner also argues that in Boghossian, the
anchors cannot be coupled because venting of the air occurs through the
anchor holes (id. at 5).
The fact that Trafixigns ’483 does not teach when the anchor is
coupled to the lower surface of the body is not dispositive. As noted,
"Boghossian provides a technical teaching that such devices can be installed
with their anchors, in wet, uncured concrete (Boghossian ¶ 13)." (Original
Decision 11). As the Patent Owner concedes, the anchors of Trafixigns ’483
are coupled to the lower surface of the body in its completed, installed state
(see also Trafixigns ’483, Figs. 1-3, 7). In view of the teaching of
Boghossian that safety tiles can be installed with their anchors in wet
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concrete, it would have been obvious to one of ordinary skill in the art to
fully install the anchors of Trafixigns ’483 to the plates thereof when they
are to be installed in wet concrete. A person of ordinary skill in the art is a
person of ordinary creativity, and not an automaton. See KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007). The Patent Owner's argument based
on the venting function of Boghossian's anchor holes have been already
addressed and found unpersuasive (Original Decision 10–11).

Argument D
In affirming Rejections 3 and 9 based on the combination of Szekely,
Trafixigns ’483 and Wehmeyer, the Original Decision states:
As to the Patent Owner's assertion that the holes 30 of
Szekely prevent its tiles from being removed, we agree with the
Examiner that this argument "is not well taken." (RAN 18). As
noted by the Examiner (RAN 17–18), Figures 4–6, and
specifically, Figure 6a of the ’491 patent itself discloses a
preferred embodiment wherein the tactile warning surface unit
10a has removable anchors 20a as well as holes 29 in the flange
that allow air to escape when pressed into wet fresh cement.
Importantly, as the Examiner points out (id.), in referring to this
embodiment, the specification of the ’491 patent states that the
tactile warning surface unit 10a "can be removed and replaced
after the concrete has fully cured." (Col. 9, ll. 61–66; Figure
6a).
(Original Decision 13).
The Patent Owner argues that the Board misapprehended its
arguments distinguishing Szekely because Figure 6a of the ’491 patent is
directed to an embodiment wherein the tile is made of 16 GA stainless steel,
which has 0.0598 inch thickness, and is much thinner than the fiberglass
reinforced wet set resin composite embodiment also disclosed, which has
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0.312 inch thickness (Reh'g Req. 6–7). According to the Patent Owner,
providing holes in the embodiment shown in Figure 6a does not impact
removability because only a small amount of concrete extends through the
hole due to the thinness of the stainless steel whereas in the composite
embodiment, which is five times thicker at 0.312 inch, the cement through
the hole would prevent removal (id. at 7–8).
This argument is unpersuasive. To be clear, the Patent Owner asserts
that provision of a hole in a tile having a thickness of 0.0598 inch does not
prevent its removal, but that a hole in a tile having a thickness of 0.312 inch
prevents tile removal, and concludes therefrom that the holes of Szekely
would prevent the tile therein from being removed (Reh'g Req. 7).
However, the Patent Owner merely provides attorney argument to support its
assertion. Attorney argument is no substitute for such evidence. Enzo
Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005); In
re Schulze, 346 F.2d 600, 602 (CCPA 1965) ("Argument in the brief does
not take the place of evidence in the record."); see also In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997). The Patent Owner also ignores the
disclosure in Szekely that its tile has a thickness of 0.100 inch (Szekely, col.
5, l. 45), which is much closer to 0.0598 inch said to allow for tile removal
than to 0.312 inch said to preclude tile removal. Thus, as stated in the
Original Decision:
the limited evidence of record as to this issue, which is the ’491
patent itself, specifically teaches that wet-set tactile warning
surface units having a flange with a hole therein are removable
and replaceable, contrary to the assertion now made by the
Patent Owner in this appeal.
(Original Decision 13).
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As to the Board's conclusion that even if the holes 30 of Szekely are
not slots, it would have been obvious to provide slots as taught by Trafixigns
to allow keying or proper positioning of the tile (Original Decision 14), the
Patent Owner now argues that "if Szekely believed that the mechanical
fastener alone was sufficient to affix the tile[,] there would have been no
reason to include the holes." (Reh'g Req. 8). Thus, the underlying
contention of the Patent Owner is that such holes are necessary in order to
properly affix the tiles of Szekely. This argument is also unpersuasive.
Szekely suggests that in retrofit situations, "a version of the tile
having no flanges may be used" (Szekely, col. 6, ll. 61–63), thereby clearly
establishing that the mechanical fasteners are capable of securing the tile and
contradicting to the Patent Owner's assertion. Thus, as stated in the Original
Decision, "even if holes 30 in the flanges of Szekely were replaced with
slots of Trafixigns, the tile of Szekely would remain affixed to the concrete
via a mechanical fastener." (Original Decision 14). In addition, although
not relied upon for denying the present Rehearing Request, Szekely also
discloses that providing holes through the downwardly extending flange
"assist[s] in anchoring the tile," but also discloses that the flanges
themselves "assist in anchoring the tile." (Szekely, col. 6, ll. 48–53).
Changing the holes of Szekely to slots in view of Trafixigns as suggested
does not disturb the provision of the flange. Thus, in view of the totality of
the disclosure of Szekely, it is evident that holes are not necessary to
properly affix the tiles of Szekely.

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DECISION
We have considered the Original Decision in light of the Request for
Rehearing but decline to modify the Original Decision.

Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

DENIED

For Patent Owner:

NIELDS, LEMACK & FRAME, LLC
176 E. Main Street
Suite #5
Westborough, MA 01581

For Third Party Requester:

FOLEY HOAG, LLP
Patent Group
World Trade Center West
155 Seaport Blvd.
Boston, MA 02110