Ex Parte Bentley

Board of Patent Appeals and Interferences

Jan 27, 2010

10888910 (B.P.A.I. Jan. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANK B. BENTLEY
____________

Appeal 2009-006042
Application 10/888,910
Technology Center 3600
____________

Decided: January 27, 2010
____________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/888,910

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STATEMENT OF THE CASE
Frank B. Bentley (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 8-47. We have jurisdiction
over this appeal under 35 U.S.C. § 6 (2002). Appellant’s representative
presented oral argument on January 13, 2010.

The Invention
Appellant’s claimed invention is directed to tie assemblies and wall
form units and systems used to construct structural components, such as
walls formed of pourable, curable construction material, where the form
system remains in situ. Spec. 1:4-7.
Claim 17, reproduced below, is illustrative of the claimed subject
matter.
17. A spacer member for maintaining first
and second panels of a wall form unit in a
predetermined relationship, comprising:
opposing edges that are spaced apart by arm
members, each edge having a generally T-shaped
profile configured for sliding engagement with a
complementary T-shaped profile of a connecting
member channel;
an abutment disposed to close an end of the
spacer member T-shaped profile, and configured to
block the T-shaped profile of the corresponding
connecting member channel to prevent gravity
from causing the spacer member to slide freely
through the connecting member channel; and
at least two transverse arm members
disposed horizontally between the first and second
panels and vertically disposed with respect to each
other.

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The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Tedrow US 2,316,819 Apr. 20, 1943
Levy US 3,848,843 Nov. 19, 1974
Mason US 5,065,561 Nov. 19, 1991
Boeshart US Des 378,049 Feb. 18, 1997
Vaughan US 5,709,060 Jan. 20, 1998
Grutsch US 5,735,093 Apr. 7, 1998
Cymbala US 5,896,714 Apr. 27, 1999

The following rejections by the Examiner under 35 U.S.C. § 103(a)
are before us for review:
(1) claims 17 and 18 as being unpatentable over Mason and Levy;
(2) claims 19, 46, and 47 as being unpatentable over Mason, Levy, and
Cymbala;
(3) claims 8, 10, 11, 15, 20-36, 39, and 41-44 as being unpatentable
over Mason, Tedrow, and Levy;
(4) claims 9, 28, 40, and 45 as being unpatentable over Mason,
Tedrow, Levy, and Boeshart;
(5) claims 12-14 as being unpatentable over Mason, Tedrow, Levy,
and Grutsch;
(6) claim 16 as being unpatentable over Mason, Tedrow, Levy, and
Vaughan; and
(7) claims 37 and 38 as being unpatentable over Mason, Tedrow,
Levy, and Cymbala.

SUMMARY OF DECISION
We AFFIRM.

ISSUE
Each of the Examiner’s rejections is grounded in part on the
Examiner’s conclusion that it would have been obvious, in view of the
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teachings of Levy, to modify the edge of Mason’s tie to provide an
abutment, or stop, to close the T-shaped profile of the edge, to pre-set the
sliding distance of the T-shaped profile in the complementary T-shaped
channel to facilitate precise installation of the tie assembly. Ans. 4.
Appellant argues that the Examiner has erred in concluding that the
proposed modification would have been obvious because Levy “is directed
to the wall-hanging art and therefore is not even remotely related to the
building construction industry, within which the wall-form art is a
specialized field.” App. Br. 11.1 Thus, according to Appellant, the
Examiner has impermissibly used hindsight reconstruction in even looking
to the Levy reference, despite any objective rationale for combining Levy
and Mason. Id.
The Examiner contends that Levy is analogous art to Appellant’s
invention because both Appellant and Levy are concerned with the problem
of mounting a structure properly to a wall with the structure inserted in a
slot. Ans. 11-12. In response, Appellant argues that the Examiner’s finding
that Appellant “is concerned with making sure a tie assembly ‘hangs
correctly from a wall structure’” is incorrect. Reply Br. 5. Appellant further
argues that Levy is not analogous art to Appellant’s invention because it is
neither in Appellant’s field of endeavor, nor reasonably pertinent to the
particular problem with which Appellant was concerned. Reply Br. 6 and
10.

1 All references in this opinion to the Appeal Brief (“App. Br.”) are to the
Revised Appellant’s Brief on Appeal, filed October 8, 2008.
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Aside from the aforementioned arguments with respect to the
combination of Mason and Levy, Appellant does not point to any other
deficiency in any of the Examiner’s rejections.
Accordingly, the issue presented in this appeal is:
Has Appellant demonstrated that the Examiner erred in concluding that it
would have been obvious to modify the edge of Mason’s tie to provide an
abutment, or stop, to close the T-shaped profile of the edge, to pre-set the
sliding distance of the T-shaped profile in the complementary T-shaped
channel to facilitate precise installation of the tie assembly?

FACTS PERTINENT TO THE ISSUES
FF1 Mason describes a form work system using bridge ties to
connect opposing planar panels 14, 16 for containing liquid
concrete while it hardens, for forming concrete walls. Mason,
col. 1, ll. 6-10; col. 2, ll. 56-57.
FF2 In the embodiment illustrated in Figures 6 and 7, Mason
describes a tie means 12b comprising an integral shank 60b on
one end of bridge 18b for fastening the tie means 12b in slots
34 of first panels. Mason, col. 4, ll. 4-7; Figs. 2, 6, and 7. The
bridge 18b extends beyond an interior flange 54b (for
positioning against the inner face of the second panel) to form a
shank 62b ending in a coupling flange 68b for insertion
outward from the inside through a hole in a thick second panel
on the opposite side of the wall from the first panels. Mason,
col. 3, ll. 64-68. The exterior flange (for positioning against the
outer face of the second panel) is provided in the form of a
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separate clip 26b having a coupling socket 70b for engaging
coupling flange 68b. Mason, col. 4, ll. 1-3. In constructing the
wall, courses 28 of ties 12b are positioned with integral shanks
60b in the slots 34 of the first panels; panels with slots are then
pushed onto shanks 62b such that the flanges 68b protrude from
the outer face of the wall; and clips 26b are slid onto the
coupling flanges 68b. Mason, col. 4, ll. 4-11.
FF3 Mason does not specifically describe any means for limiting the
extent of slide of the clips 26b, with sockets 70b, by gravity
along the flanges 68b.
FF4 Mason also describes another embodiment of the tie means 12c,
in Figures 9 and 10, in which the bridge means 18c terminates
at the interior flange 54c, which is adapted to engage a socket
70c of a fastening means 22c provided in slots in the second
panel. Mason, col. 4, ll. 24-28 and 34-35. At the other end of
the bridge means 18c, the tie 12c is provided with a shank 60c.
Mason, col. 4, ll. 37-38. In constructing a wall higher than one
course of panels, shanks 60c of ties 12c are slid into slots in
thick first panels while the interior flanges 54c are slid into the
coupling sockets 70c of the fastening means 22c. Mason, col.
4, ll. 31-38.
FF5 Mason does not specifically describe any means for limiting the
extent of slide by gravity of the interior flanges 54c of ties 12c
in coupling sockets 70c.
FF6 A person of ordinary skill in the art would have readily
appreciated that, in order to install multiple courses of ties 12b
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or 12c securely on both sides of the wall structure, as taught by
Mason, some means must be provided to prevent gravity from
causing the flanges of the bridges of the ties from sliding freely
through the sockets 70c (in the case of the arrangement
described in the embodiment of Figure 9) or vice versa (in the
case of the arrangement described in the embodiment of Figures
6 and 7).
FF7 Levy describes an arrangement for supporting a fixture on a
support member affixed to a wall or other supporting surface.
Levy, col. 1, ll. 43-48. The arrangement comprises a support
plate (support member) 12 affixed to the wall or other
supporting surface 19 and a fixture 14. Levy, col. 3, ll. 3-12.
The fixture 14 includes a retaining element 38 comprising a
lateral flange portion 40 extending generally perpendicular to
the rear planar surface 36 of the fixture and a lip 42 extending
parallel to and spaced from the rear planar surface 36 so as to
define a generally arcuate retaining slot 44 adapted to fit over
the end of an annular support flange 26 of the support plate 12.
Levy. Levy, col. 3, ll. 33-46. It is readily apparent that the
lateral flange portion 40 serves as a stop or abutment to prevent
the fixture 14 from sliding freely over the support plate 12, so
as to secure the fixture on the support plate, and, consequently,
on the wall or other supporting surface.
FF8 Appellant’s Specification describes a wall section including a
tie assembly connected between first and second panels to
define a space to contain a pourable, curable construction
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material. Spec. 2:15-19. Appellant’s tie assembly includes a
spacer member which maintains the first and second panels in
spaced relation. Spec. 2:19-20. The spacer member has
opposing edges each provided with a connection means for
slidable coupling with a channel provided in a support attached
to the first and second panels. Specification 2:21-23. Thus, a
problem faced by Appellant is the securement of the spacer
members to supports provided in the panels, so as to support the
spacer members on the panels. More specifically, a problem
addressed by Appellant in securing the spacer members to the
supports by means of a sliding coupling of an edge in a channel
(or recess) of complementary shape is providing a means for
limiting sliding engagement of the edge and channel. Spec.
2:23-25, 7:11-15, and 10:10-13. Appellant addresses this
problem by providing a stop, narrowing, or abutment on either
the edge or the channel to close the edge profile or channel and
limit the extent of sliding of the edge in the channel. Id.

PRINCIPLES OF LAW
For purposes of showing obviousness under 35 U.S.C. § 103(a),
“[a] reference is reasonably pertinent if, even
though it may be in a different field from that of
the inventor's endeavor, it is one which, because of
the matter with which it deals, logically would
have commended itself to an inventor's attention in
considering his problem.” In other words,
“familiar items may have obvious uses beyond
their primary purposes.”
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In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir.
2007) (citations omitted). Moreover, in making a determination with regard
to obviousness, we should not limit ourselves to looking only at the problem
Appellant was trying to solve. The question is not whether the combination
was obvious to Appellant but whether it was obvious to a person with
ordinary skill in the art. Thus, “[u]nder the correct analysis, any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007).
Rejections on obviousness grounds must be supported by “some
articulated reasoning with some rational underpinning” to combine the
known elements in the manner required in the claim at issue. Id. at 418.
However, “the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id.
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
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Id. at 417. We must ask whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id.

ANALYSIS
Appellant’s argument that Levy is not analogous art to Appellant’s
invention is not convincing. As recognized by Appellant (see Reply Br. 6),
a reference is analogous art for purposes of showing obviousness under 35
U.S.C. § 103(a) if, because of the subject matter with which it deals, it is
reasonably pertinent to the problem with which the applicant was concerned.
While Appellant’s invention is directed to constructing a wall comprising
cured construction material, such as concrete, one of the problems faced by
Appellant in arriving at the invention is the securement of the spacer
members to supports provided in the panels, so as to support the spacer
members on the panels. FF8. More specifically, a problem addressed by
Appellant in securing the spacer members to the supports by means of a
sliding coupling of an edge in a channel (or recess) of complementary shape
is providing a means for limiting sliding engagement of the edge and
channel. Id. Levy likewise addresses the problem of securing an item (a
fixture 14) to a support (a support member or plate 12), so as to support the
item to a supporting surface. See FF7. In addressing this problem by
forming a generally arcuate retaining slot 44 on the fixture 14 adapted to fit
over the end of an annular support flange 26 of the support plate 12, Levy
necessarily also addresses the problem of providing a means for limiting
sliding engagement of the slot and flange. See id. Accordingly, the
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Examiner correctly found that Levy is reasonably pertinent to the particular
problem faced by Appellant.
Appellant’s contention that a person of ordinary skill in the art of wall
construction would not look to supporting and securement techniques used
in other fields of endeavor (see Reply Br. 10) is not well founded. In this
case, a technique, namely, the use of a stop or abutment to limit the extent of
relative sliding of a connecting feature of one structure in a complementary
channel or socket of a connecting feature of a second structure, in order to
securely support one of the structures on the other structure, has been used to
improve one device, namely, the fixture assembly of Levy. Moreover, as we
found above, a person of ordinary skill in the art would have readily
appreciated that, in order to install multiple courses of ties 12b or 12c
securely on both sides of the wall structure, as taught by Mason, some means
must be provided to prevent gravity from causing the flanges of the bridges
of the ties from sliding freely through the sockets 70c (in the case of the
arrangement described in the embodiment of Figure 9) or vice versa (in the
case of the arrangement described in the embodiment of Figures 6 and 7).
FF6. Accordingly, such a person, being “also a person of ordinary
creativity, not an automaton,” KSR, 550 U.S. at 421, would have recognized
that the use of an abutment or stop in either the flange and shank or the
coupling socket of Mason would improve the tie assembly of Mason in the
same manner, namely, by preventing gravity from causing one or the other
of the flange or socket from sliding freely relative to the other of the flange
or socket. Furthermore, Appellant has not alleged, much less shown, that
the application of the abutment/stop technique of Levy to the flange and
socket arrangement of Mason would have either been beyond the technical
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grasp of a person of ordinary skill in the art at the time of Appellant’s
invention or led to a result that could not have been predicted by a person of
ordinary skill in the art. Accordingly, Appellant has not persuaded us that
the Examiner erred in concluding that it would have been obvious to utilize
the basic abutment/stop technique of Levy in Mason’s tie assembly.

CONCLUSION
Appellant has not demonstrated that the Examiner erred in concluding
that it would have been obvious to modify the edge of Mason’s tie to
provide an abutment, or stop, to close the T-shaped profile of the edge, to
pre-set the sliding distance of the T-shaped profile in the complementary T-
shaped channel to facilitate precise installation of the tie assembly.

DECISION
The Examiner’s decision is affirmed.
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) (2007).
AFFIRMED

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hh

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