Ex Parte Carroll

Patent Trial and Appeal Board

Nov 28, 2012

11109781 (P.T.A.B. Nov. 28, 2012)

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.
11/109,781 04/20/2005 Michael E. Carroll 0013.0005 2001
7590 11/28/2012
Stephen F. McDonald
3502 Diversified Drive
Loganville, GA 30052
EXAMINER
SAFAVI, MICHAEL
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
11/28/2012 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
____________________

Ex parte MICHAEL E. CARROLL
____________________

Appeal 2010-005946
Application 11/109,781
Technology Center 3600
____________________

Before: PHILLIP J. KAUFFMAN, BENJAMIN D. M. WOOD, and
BRADFORD E. KILE, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005946
Application 11/109,781

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
4, and 6. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The Invention
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. Apparatus for transferring a load between a first concrete
slab and a second concrete slab, defining a joint, comprising:
a plate defining a hexagon having a base parallel with the
joint, said plate having a first portion and a second portion; and
an elastomer coating disposed on said first portion;
wherein:
said base and a side define an angle greater than or
equal to 100°; and/or
said plate is configured to maximize material
proximate to the joint; and
said elastomer coating slides relative to said plate,
the first concrete slab or
combinations thereof.

The Rejections
The following rejections are before us on appeal:
1. Claims 1, 4, and 6 under 35 U.S.C. § 102(b) as anticipated by Boxall
(US 6,354,760 B1; iss. Mar. 12, 2002).
2. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Boxall.

Appeal 2010-005946
Application 11/109,781

3
OPINION
Both the anticipation rejection and the obviousness rejection rely upon
the Examiner’s finding that Boxall’s blockout sheath 1600 is disclosed as
formed of collapsible or compressible material, and therefore corresponds to
an elastomer coating as claimed. Ans. 3-5 (citing Boxall, col. 6, ll. 44-46).
We construe this portion of claim 1 and then look to the prior art. See
Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both
anticipation under § 102 and obviousness under § 103 are two-step inquiries.
The first step in both analyses is a proper construction of the claims. . . . The
second step in the analyses requires a comparison of the properly construed
claim to the prior art.” (internal citations omitted)).
Independent claim 1 calls for, inter alia, an elastomer coating
disposed on the first portion of a plate. The Specification does not provide a
lexicographical definition of elastomer, which is commonly understood to
mean any of various elastic substances resembling rubber.1 We discern
nothing in the Specification inconsistent with this ordinary meaning. Thus,
claim 1 calls for a coating of an elastic substance resembling rubber on the
first portion of a plate.
Boxall does not disclose that blockout sheath 1600 is composed of an
elastomer, nor does Boxall disclose that blockout sheath 1600 is composed
of an elastic substance resembling rubber. Boxall, passim.
Boxall discloses that deformable centering fins 2206-1 through 2206-
4 may take the form of collapsible fingers or other compressible material,
and are utilized to center load plate 900 within blockout sheath 1600.

1 “Elastomer,” n., Merriam-Webster Dictionary (available on line at
www.merriam-webster.com/dictionary/elastomer, last accessed Nov. 20,
2012).
Appeal 2010-005946
Application 11/109,781

4
Boxall, col. 6, ll. 37-45; fig. 22. Such disclosure does not demonstrate that
this material is an elastomer (an elastic substance resembling rubber). For
example, Boxall’s deformable centering fins may be composed of paper or
thin metal so that they are collapsible. For that reason, the Examiner has not
demonstrated by a preponderance of the evidence that Boxall’s blockout
sheath 1600 is comprised of an elastomer as claimed. See Br. 4-5 (arguing
that Boxall does not disclose an elastomer coating as claimed) .
Because both rejections are based in part on this erroneous finding of
fact, we do not sustain either rejection.

DECISION
We reverse the Examiner’s decision to reject claims 1, 4, and 6.

REVERSED

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