11788591 (P.T.A.B. Sep. 23, 2013)

Ex Parte Fischer et al

Patent Trial and Appeal BoardSep 23, 2013

11788591 (P.T.A.B. Sep. 23, 2013)

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. 11/788,591 04/19/2007 Marco Fischer 208,196 5444 38137 7590 09/24/2013 ABELMAN, FRAYNE & SCHWAB 666 THIRD AVENUE, 10TH FLOOR NEW YORK, NY 10017 EXAMINER SAFAVI, MICHAEL ART UNIT PAPER NUMBER 3631 MAIL DATE DELIVERY MODE 09/24/2013 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 MARCO FISCHER and THOMAS MONDEN ____________________ Appeal 2011-009993 Application 11/788,591 Technology Center 3600 ____________________ Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and BART A. GERSTENBLITH, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009993 Application 11/788,591 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 2-14. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Invention Appellants’ claimed invention “relates to an embeddable device for passing conduits through a constructional component.” Spec., para. 1. Claim 11, reproduced below, is the sole independent claim on appeal, and is representative of the claimed subject matter: 11. A device (11, 41) embeddable in a to-be-cast constructional component for passing a conduit therethrough, the device comprising a tubular housing (12, 42) having an axial through-opening (16) through which the conduit is extendable, and having a receptacle (15) provided therein for receiving isolation means (8) for surrounding, at least regionwise, the through-opening (16) for protecting the tubular housing (12, 42) in case of fire; an attachment flange (14) provided at one end of the tubular housing (12) for temporarily securing the device to a formwork of the to-be-cast constructional component (6) and including means that provides for securing of the attachment flange, together with the housing, to the formwork; and a connection device (21, 44) for connecting the device (11, 41) with at least one other embeddable device (11) and including at least one connection element (23, 24, 26, 27) provided on the tubular housing (12) and extending parallel to a plane (E) defined by the attachment flange (14) and spaced from the attachment flange. Appeal 2011-009993 Application 11/788,591 3 Evidence Relied Upon Leo Stout Petrovic US 3,731,448 US 3,908,323 US 6,311,734 B1 May 8, 1973 Sep. 30, 1975 Nov. 6, 2001 The Rejections The following rejections are before us on appeal: I. Claims 2-7 and 11-14 under 35 U.S.C. § 102(b) as anticipated by Leo; II. Claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over Leo and Stout; and, III. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over Leo and Petrovic. OPINION Independent claim 11 calls for an attachment flange provided at one end of the tubular housing for temporarily securing the device to a formwork of the to-be-cast constructional component and “means that provides for securing of the attachment flange, together with the housing, to the formwork.” Each of the three rejections before us on appeal relies in part on the Examiner’s finding that Leo discloses an attachment flange, to include means that provides for securing of the attachment flange, as called for in independent claim 11. Ans. 4-9. Specifically, the Examiner found that Leo discloses an attachment flange (lower flange 51 in Fig. 5) provided at one end of the tubular housing (31 in Fig. 5) “for temporarily securing the embeddable device to a formwork of the to- be- cast constructional component” (the structure of LEO is capable Appeal 2011-009993 Application 11/788,591 4 of performing the recited intended use within quotation marks) and including means, (at least one of lower 37, 39 of lower flange 51), (see Fig. 1 showing the device 19 in suspended within the forms 41 prior to pouring of concrete and thus, there must necessarily be some means holding it in place) that provides for securing of the attachment flange, together with the housing, to the formwork Ans. 5. Appellants contend that the “means that provides for securing of the attachment flange, together with the housing, to the formwork” is a means plus function limitation under 35 U.S.C. § 112, sixth paragraph. App. Br. 10. Further, according to Appellants, the corresponding structure in the Specification is “holes 18 for nails, screws and the like for securing the device on the formwork.” Id. (citing Spec. 13:16-14:1; figs. 1, 4). In light of this, Appellants argue that the Examiner has not made a prima facie case of equivalence of a corresponding element in Leo. Id. (citing Manual of Patent Examining Procedure (MPEP) § 2144.06 (8th Ed., Rev. 9, Aug. 2012)). In response, the Examiner determined, without further explanation, that the “means that provides for securing” limitation of claim 11 “does not appropriately constitute a mean plus function limitation under 35 U.S.C. § 112, sixth paragraph.” Ans. 10. The Examiner goes on to find that “at least one of lower 37, 39 serves to read upon” this limitation because lower 37, 39 “can serve to attach the device 19 of Leo to any given surface.” Id. The limitation at issue in claim 11 recites “means” and a function (securing). See Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1364 (Fed. Cir. 2000) (noting a claim element that contains the word “means” and recites a function is presumed to be drafted in means-plus- Appeal 2011-009993 Application 11/788,591 5 function format under 35 U.S.C. § 112 ¶ 6); see also Altris Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003) (use of the term “means” in the claim raises a presumption the inventor used the term to invoke 35 U.S.C. § 112, sixth paragraph). Further, the claim does not recite sufficient structure for carrying out this function. See Envirco, 209 F.3d at 1364-65; see also MPEP § 2181(I); Reply Br. 4-5 (noting the limitation is written as a function to be performed and does not recite sufficient structure to preclude application of 35 U.S.C. § 112, sixth paragraph). Consequently, the limitation at issue invokes 35 U.S.C. § 112, sixth paragraph. According to the Specification, the structure corresponding to the recited “means that provides for securing of the attachment flange” is holes 18 for nails, screws, and the like, for securing device 11 on the formwork. Spec. 13:15-14:1; fig. 1; see also In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (“one construing means-plus-function language in a claim must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure”). Leo’s flanges 37 and 39 are interfitting male and female type grooves formed by the respective lower and upper extremities of walls 27 and 29 (the vertical side walls for duct terminator 19). Leo, col. 2, l. 62-col. 3, l. 9; fig. 2. Flanges 37 and 39 permit duct terminators 19 to be coupled together in stacked relation to create the desired number and arrangement of receptacle passages 33. Leo, col. 3, ll. 7-13; fig. 1. In light of this, Leo’s flanges 37 and 39 snap together duct terminators 19, and do not provide a point for securing a nail, screw, or the like. Therefore, Leo’s flanges do not perform the identical function in substantially the same way with substantially the Appeal 2011-009993 Application 11/788,591 6 same result as holes 18 or their equivalents. See Donaldson, 16 F.3d at 1195; see also Kemco Sales, Inc. v. Conrol Papers Co., 208 F.3d 1352, 1364 (Fed. Cir. 2000). As such, we do not sustain the rejection of independent claim 11 and its dependent claims 2-10 and 12-14. DECISION We reverse the Examiner’s decision to reject claims 2-14. REVERSED mls