Ex Parte Cook

Patent Trial and Appeal Board

Jun 29, 2015

11570298 (P.T.A.B. Jun. 29, 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.
11/570,298 12/08/2006 Christopher John Cook P1803 9533
58478 7590 06/29/2015
BIO INTELLECTUAL PROPERTY SERVICES (BIO IPS) LLC
8509 KERNON CT.
LORTON, VA 22079
EXAMINER
TRIGGS, ANDREW J
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
06/29/2015 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
____________________

Ex parte CHRISTOPHER JOHN COOK
____________________

Appeal 2013-005851
Application 11/570,298
Technology Center 3600
____________________

Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and
LEE L. STEPINA, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Christopher John Cook (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 41–43 and 48–50. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.

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Application 11/570,298

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THE CLAIMED SUBJECT MATTER
Claim 41, reproduced below, is illustrative of the claimed subject
matter.
41. A method of controlling cracks in a cementitious substance
prone to cracking including the steps of:
i) obtaining a crack controller wherein the crack
controller has a base, a wall or walls extending from the base,
an aperture or apertures in the wall or each wall, and arranging
the crack controller in position where it is desired that cracks
form in the cementitious substance,
ii) arranging a volume of the cementitious substance so
that it extends around and moves freely through a substantial
portion of the wall or walls, and
iii) allowing a crack or cracks to form in the cementitious
substance at or in the vicinity of the crack controller.

REJECTIONS
I. Claims 41 and 42 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Johansson (US 5,433,051, iss. July 18, 1995).
II. Claim 43 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Johansson.
III. Claims 41–43 and 48–50 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Levo (US 5,560,176, iss. Oct. 1,
1996) and Johansson.

OPINION
For the reasons set forth below in the new ground of rejection, claims
41–43 and 48–50 are indefinite. Accordingly, we cannot sustain the
rejections of these claims under 35 U.S.C. §§ 102(b) and 103(a) because to
do so would require speculation as to the scope of the claims. See In re
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Application 11/570,298

3
Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred
in affirming an anticipation rejection of indefinite claims); In re Steele, 305
F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in affirming a
rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection
was based on speculative assumptions as to the meaning of the claims).

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
41–43 and 48–50 under 35 U.S.C. § 112, second paragraph, as indefinite.
Claim 41 recites a step of “arranging the crack controller in position
where it is desired that cracks form in the cementitious substance.” Neither
claim 41 nor the remainder of Appellant’s Specification specifies a standard
for determining whether a position is one in which it is desired that cracks
form. Appellant’s Specification sets forth two examples of locations (i.e.,
the corners of concrete wall panels and floor level) at which cracking may be
desired. Spec. 9:25–10:1. However, the Specification does not give any
indication that this is an exhaustive list of positions where it is desired that
cracks form. Moreover, there is no indication in the present application as to
whether the standard for determining that a particular position is a “position
where it is desired that cracks form” is an objective one or a subjective one.
Stated differently, it is not clear whether one performs this step by arranging
the crack controller in a position which falls within a category of positions
where it is objectively desirable that cracks form, regardless of whether the
arranging was done with such a desire, or whether the one arranging the
crack controller must desire that cracks form in order to perform this step.
Accordingly, a person of ordinary skill in the art would not be able to
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ascertain, with any reasonable certainty, whether placement of a crack
controller in any particular location is covered by claim 41. In other words,
the metes and bounds of this “arranging the crack controller” step are not
clear.
Further, claim 41 recites a step of “allowing a crack or cracks to form
in the cementitious substance at or in the vicinity of the crack controller.” It
is not clear what this claimed step entails. Appellant’s Specification does
not disclose any positive actions that correspond to or comprise this step. It
is not clear whether this step requires that cracks actually form, much less
under what conditions and within what period of time after arranging the
crack controller and arranging a volume of a cementitious substance as
called for in claim 41. For example, it is not clear whether a party infringes
claim 41 by arranging a crack controller in a position where it is desired that
cracks form, or whether infringement does not occur until one or more
cracks actually form at or in the vicinity of the crack controller. Along
similar lines, there is ambiguity as to whether one has performed the step of
allowing a crack or cracks to form if one takes actions designed to prevent or
at least reduce the risk of formation of cracks, but cracks form in spite of
those actions.
For the above reasons, claim 41 is indefinite. Claims 42, 43, and 48–
50 depend from claim 41 and, thus, likewise are indefinite.

DECISION
The Examiner’s decision rejecting claims 41–43 and 48–50 is
reversed.
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We enter a new ground of rejection of claims 41–43 and 48–50 under
35 U.S.C. § 112, second paragraph.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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).

REVERSED; 37 C.F.R. § 41.50(b)
em