11918451 (P.T.A.B. Jan. 2, 2014)

Ex Parte Ahn

Patent Trial and Appeal BoardJan 2, 2014

11918451 (P.T.A.B. Jan. 2, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JEONG-SAENG AHN ____________ Appeal 2011-009029 Application 11/918,451 Technology Center 3600 ____________ Before: JENNIFER D. BAHR, WILLIAM A. CAPP and JILL D. HILL Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 12 and 13 under 35 U.S.C. § 102(b) as anticipated by Lewis (US 6,402,435 B1, iss. Jun. 11, 2002) and claims 1-3, 14 and 15 as unpatentable under 35 U.S.C. § 103(a) over Lewis. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-009029 Application 11/918,451 - 2 - THE INVENTION Appellant’s invention relates to concrete girders. Spec. 1. Claim 12, reproduced below, is illustrative of the subject matter on appeal. 12. A plurality of girder segments configured to be assembled to form a spliced prestressed concrete girder, each girder segment comprising: at least one joint block, each joint block having a first end that has a shear key and is to be spliced to an end of an adjacent girder segment; and an elongated concrete segment body having a first distal end and a second distal end, at least one of said first and second distal ends being bonded to said at least one joint block, wherein at least one of said first and second distal ends of said elongated concrete segment body matches a mating surface of said at least one joint block. OPINION Anticipation of Claims 12 and 13 The Examiner finds that Lewis discloses all of the elements of claim 12. Ans. 4. In particular, the Examiner finds that the top and bottom of tieback transfer beam 1100 (“TTB”) satisfy the claim limitations directed to first and second ends, respectively, of an elongated girder segment. Id., see Lewis, fig. 13, col. 11, ll. 60-63. Appellant traverses the Examiner’s rejection by arguing that the top and bottom of Lewis’ TTB are not “ends.” App. Br. 10-12. Appellant argues that the Examiner failed to properly consider the word “elongated” in the claim when construing the term “end.” App. Br. 11. The dispute between the Examiner and Appellant requires us to construe the term “end.” The claims of a patent are part of a fully integrated written instrument consisting principally of a specification that concludes with the claims. Appeal 2011-009029 Application 11/918,451 - 3 - Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (Fed. Cir. 1995). Claims must be read in view of the specification, of which they are a part. Id. at 979. The specification is highly relevant to claim construction and is usually the single best guide to the meaning of a disputed claim term. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We recognize that there is a fine distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim. See Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186–87 (Fed.Cir. 1998). However, the line between construing terms and importing limitations can be discerned with reasonable certainty if our focus remains on understanding how a person of ordinary skill in the art would understand the claim terms. See Phillips v. AHC Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). In that regard, it is important to keep in mind that the purpose of the specification is to teach and enable those of skill in the art to make and use the invention. Id. In the instant case, Appellant’s Specification discloses a method of manufacturing a prestressed concrete girder. Spec. 2. We think a person of ordinary skill in the art would understand a concrete girder to be a structural support component for a bridge or building, etc. Among other things, a girder is used to span a void between vertical supports. In the instant case, the claimed girder segment is “elongated.” Clms. App’x., Claim 12. From this context, we think a person of ordinary skill in the art would understand that the girder has a length that exceeds its height and width. Similarly, we Appeal 2011-009029 Application 11/918,451 - 4 - think a person of ordinary skill in the art would understand the “end” of the girder to correspond to the terminus of the girder’s elongated dimension. We think this is particularly so, in the instant case, because Appellant’s Specification teaches a method of forming girders by joining girder segments end-to-end. See figs. 3, 4. Applying our construction of “end” to the Examiner’s prior art reference, we do not agree that the top and bottom of the TTB are “ends.” Lewis is directed to a method of constructing a retaining wall. Lewis, Abstract. Lewis forms a retaining wall by vertically stacking a plurality of components, including, in some embodiments, a TTB. Lewis, col. 11, l. 60 – col. 12, l. 28. Although the TTB, as depicted in Figure 13, is elongated, the terminal points of the elongated dimension are disposed at the left and right of the embodiment depicted in Figure 13, not the top and bottom. Accordingly, the Examiner erred in finding that the top and bottom of Lewis’ TTB are “ends.” Because they are not ends, Lewis does not anticipate claim 12 or 13. Accordingly, we do not sustain the Examiner’s anticipation rejection of claims 12 and 13. Unpatentability of Claims 1-3, 14 and 15 Claims 2 and 3 depend from independent claim 1. Clms. App’x. Claims 14 and 15 depend from claim 12. Id. All of the claims subject to the Examiner’s unpatentability rejections contain limitations directed to ends of an elongated girder segment. Id. The Examiner’s rejections of these claims suffer from the erroneous claim construction and fact finding that we discussed above with respect to claim 12. Although the Examiner relied on Section 103 instead of Section 102 to reject these claims, the claim construction and fact-finding error are such that we do not sustain the Appeal 2011-009029 Application 11/918,451 - 5 - rejection of claims 1-3, 14 and 15 for essentially the same reasons stated above with respect to claim 12. DECISION The decision of the Examiner to reject claims 1-3 and 12-15 is reversed.1 REVERSED mls 1 Although claims 4-11 were pending at the time of the Final Rejection, these claims have subsequently been cancelled by Appellant and, therefore, were not considered in connection with this appeal. See App. Br. 6, 11, 13; see also Clms. App’x.