Ex Parte Grossman

Board of Patent Appeals and Interferences

May 14, 2012

11636778 (B.P.A.I. May. 14, 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.
11/636,778 12/11/2006 Stanley J. Grossman 9380
24919 7590 05/15/2012
MCAFEE & TAFT
TENTH FLOOR, TWO LEADERSHIP SQUARE
211 NORTH ROBINSON
OKLAHOMA CITY, OK 73102
EXAMINER
GILBERT, WILLIAM V
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
05/15/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte STANLEY J. GROSSMAN
________________

Appeal 2009-013891
Application 11/636,778
Technology Center 3600
________________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY and
MICHAEL C. ASTORINO, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 2
decision finally rejecting claims 2-50. The Examiner rejects claims 2, 3, 6-3
8, 10, 11, 14, 16, 19, 20, 22, 23, 29, 30, 34-36, 38, 40 and 41 under 35 4
U.S.C. § 102(b) as being anticipated by Smith (US 5,311,629, issued May 5
17, 1994); claims 2, 4, 5, 16-18 and 30-33 under § 102(b) as being 6

1 The Appellant is the real party in interest.
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anticipated by Grossman (US 5,978,997, issued Nov. 9, 1999); claims 9, 21, 1
37 and 44-49 under 35 U.S.C. § 103(a) as being unpatentable over Smith; 2
and claims 12, 13, 15, 24-28, 39, 42, 43 and 50 under § 103(a) as being 3
unpatentable over Smith and Bettigole (US 5,664,378, issued Sep. 9, 1997). 4
Claim 1 is cancelled. We have jurisdiction under 35 U.S.C. § 6(b). 5
We do not sustain the rejection of claims 10, 16, 19, 20, 22, 23, 29 6
and 40 as being anticipated by Smith; the rejection of claim 21 as being 7
unpatentable over Smith; or the rejection of claims 24-28 as being 8
unpatentable over Smith and Bettigole. We sustain each of the remaining 9
grounds of rejection. 10
Claim 2 is illustrative of the claims on appeal: 11
2. A structural apparatus comprising: 12
a plurality of girders extending in a 13
longitudinal direction, said girders being spaced 14
from one another in a transverse direction with 15
respect to said girders; 16
a molded section disposed above, and made 17
composite with, said girders, said molded section 18
comprising: 19
a deck portion disposed above said 20
girders; and 21
a plurality of longitudinally 22
extending, structural haunches extending 23
downwardly from said deck portion, each 24
haunch being compositely attached to a 25
corresponding girder, wherein the ultimate 26
resisting moment of said composite girders 27
increases as the girder depth decreases an 28
amount and the haunch space between the 29
bottom of the deck portion and the tops of 30
the girders is increased the same amount for 31
the same girder area and shape and total 32
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depth between the bottom of the deck and 1
the bottoms of the girders. 2
3
ISSUES 4
This appeal turns on four issues: 5
First, does the term “structural haunches” as used in 6
representative claim 2 exclude haunches having depths which 7
vary and depend on the existing camber of the girders? (See 8
App. Br. 9-10; Ans. 9-10.) 9
Second, does Smith describe a structural apparatus 10
including haunches, “wherein said haunches have a 11
substantially constant depth?” (App. Br. 11; Ans. 4 and 11-12). 12
Third, does the term “longitudinally extending, structural 13
haunches extending downwardly from said deck portion” as 14
used in representative claim 2 exclude haunches which are 15
discontinuous? (See App. Br. 13; Ans. 12.) 16
Fourth, has the Examiner shown that the structural 17
apparatus described by Smith or the structural apparatus 18
described by Grossman necessarily satisfies the limitation: 19
wherein the ultimate resisting moment of 20
said composite girders increases as the 21
girder depth decreases an amount and the 22
haunch space between the bottom of the 23
deck portion and the tops of the girders is 24
increased the same amount for the same 25
girder area and shape and total depth 26
between the bottom of the deck and the 27
bottoms of the girders? 28
(See App. Br. 10-11; Ans. 4.) 29
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FINDINGS OF FACT 1
The record supports the following findings of fact (“FF”) by a 2
preponderance of the evidence. 3
1. We adopt and incorporate by reference the Examiner’s findings 4
at page 3, line 21 of the Answer (starting with “Smith discloses . . .”) 5
through page 4, line 10 (ending with “. . . deformable solids.”). 6
2. We adopt and incorporate by reference the Examiner’s findings 7
at page 5, line 4 of the Answer (starting with “Grossman discloses . . .”) 8
through page 5, line 14 (ending with “. . . mechanics of deformable solids.”). 9
3. We adopt the Examiner’s finding that “Bettigole discloses a 10
concrete panel where the girders (24) are inverted T-beams.” (Ans. 7.) 11
4. Smith discloses an apparatus 10 including girders 12, slabs 14 12
and grouted haunches 16 disposed between the slabs 14 and the top surfaces 13
of the girders 12. (Smith, col. 5, ll. 52-57.) The haunches 16 support the 14
slabs 14. The girders 12 are I-beams having horizontal top contact surfaces. 15
The haunches 16 are compositely attached to corresponding girders by 16
means of studs 18 protruding vertically upwardly from top contact surfaces 17
of the girders 12. (Smith, col. 4, ll. 27-32 and 43-51; id., fig. 1.) 18
5. Smith discloses coupling mounting brackets 26 and adjusting 19
screws 28 to the facing ends of adjacent slabs 14 prior to the molding of the 20
haunches 16. (Smith, col. 6, ll. 13-20 and fig. 3.) Smith teaches that, 21
Before the grout is actually inserted to complete 22
the finished system, individual slabs may be 23
adjusted by turning the adjustment screws so as to 24
obtain a uniform deck of roadway surface. . . . 25
These bolts/screws allow all of the dead load of the 26
slabs to be placed on the girders before final 27
adjustment for grade. This means the surface and 28
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orientation of the slab attained at adjustment time 1
will be the same surface existing in the final 2
product. 3
(Smith, col. 4, ll. 52-55.) “Discrete precast slabs are easily adjustable to the 4
correct (desired) elevation before it [sic] is finally fastened in place by a 5
coupling to a support member and/or an adjacent slab.” (Id., col. 3, ll. 57-6
61.) 7
6. These teachings imply that Smith’s haunches 16 have variable 8
depths which depend on the existing cambers of the girders 12. Since Figure 9
5 of Smith cannot be presumed to be drawn to scale or to illustrate every 10
detail of the geometry of the haunches, we find the quoted teachings of 11
Smith more persuasive as to the variation in the depths of the haunches 16. 12
13
ANALYSIS 14
The Rejection of Claims 2, 3, 6-8, 11, 14, 30, 34-36, 38, and 41 under 15
§ 102(b) as being Anticipated by Smith 16
The Rejection of claims 9, 37 and 44-49 under § 103(a) as being 17
Unpatentable over Smith 18
The Rejection of Claims 12, 13, 15, 39, 42, 43 and 50 under § 103(a) as 19
being Unpatentable over Smith and Bettigole 20
The Examiner concludes that any haunch which serves as a support 21
for a deck slab is a “structural haunch” as that term is used in claim 2. (Ans. 22
10.) The Appellant argues that: 23
Smith simply does not disclose an apparatus 24
with a structural haunch as claimed in the present 25
invention. Smith only shows an example of a 26
corrective haunch, one where there is no haunch 27
depth change at the supports and, between the 28
supports, no haunch depth that remains 29
significantly unchanged, while all of the points 30
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between the supports have a variable depth 1
downward corrective haunch created by all of the 2
slab loads being placed on the supporting members 3
and the post placement adjustments that follow. 4
(App. Br. 9 (underlining in original).) Nevertheless, the Appellant does not 5
appear to deny that Smith’s haunches 16 support the slabs 14 of Smith’s 6
deck system 10. (See also FF 4.) 7
A claim under examination is given its broadest reasonable 8
interpretation consistent with the underlying specification. In re Am. Acad. 9
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the absence of 10
an express definition of a claim term in the specification or a clear 11
disclaimer of scope, the claim term is interpreted as broadly as the ordinary 12
usage of the term by one of ordinary skill in the art reasonably permits. In re 13
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re 14
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 15
The Examiner’s interpretation is more persuasive than the 16
Appellant’s. The Examiner’s interpretation is consistent with the ordinary 17
usage of the term “structural,” which is sufficiently broad to encompass load 18
bearing members. (See WEBSTER’S THIRD INT’L DICTIONARY (G&C 19
Merriam Co. 1971) (“structural,” def. 1b (“of or relating to the load-bearing 20
members or scheme of a building as opposed to the screening or ornamental 21
elements”)).) The Appellant’s arguments regarding the practice for 22
designing structural apparatuses do not persuade us that the haunches 16 of 23
Smith’s deck system 10, when completed, would not be “structural 24
haunches” within the ordinary usage of the term by one of ordinary skill in 25
the art. (See, e.g., App. Br. 10.) 26
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The Appellant’s interpretation of the term implies that a structural 1
haunch has a haunch depth that remains significantly unchanged between the 2
supports of the structural apparatus. In other words, the Appellant appears 3
to interpret the term “structural haunches” as being limited to haunches 4
having substantially constant depths. This interpretation would render 5
claims 10 and 40 superfluous. (See Ans. 11.) The interpretation also would 6
render superfluous the term “substantially constant depth” in the recitation 7
of “a plurality of substantially constant depth structural haunches disposed 8
below said deck portion” in claim 16. The Examiner’s interpretation is more 9
persuasive since it does not appear to render any claim term superfluous. 10
See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 11
2007). 12
The Appellant does not formally define the term “structural haunches” 13
in the Specification. To the contrary, the Examiner’s interpretation is more 14
consistent with the Specification than the Appellant’s. In paragraph [0005] 15
of the Specification, the Appellant states that the “present invention utilizes 16
a longitudinally extending structural haunch beneath a concrete deck 17
portion, and a steel member connected to the haunch. Preferably, the haunch 18
has a substantially constant depth or height.” The use of the term 19
“preferably” implies that some structural haunches have variable depths. 20
While paragraph [0031] of the Specification states that corrective haunches 21
do not operate as structural haunches “since their depth varies and depends 22
on the existing camber of the girders,” this statement is made in the context 23
of describing a preferred embodiment including a particular structural 24
haunch 70. The context in which the statement is made would not have 25
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suggested to one of ordinary skill in the art that the statement was intended 1
to limit the scope of the term “structural haunches.” 2
The broadest reasonable interpretation of the term “structural 3
haunches” as used in claim 2 encompasses any haunch which serves as a 4
support for a deck slab. When the term “structural haunches” is interpreted 5
in this manner, Smith describes a structural apparatus including “a plurality 6
of longitudinally extending, structural haunches extending downwardly from 7
said deck portion, each haunch being compositely attached to a 8
corresponding girder,” as recited in claim 2. 9
The Appellant also appears to argue that Smith’s deck system does 10
not satisfy the limitation: 11
wherein the ultimate resisting moment of said 12
composite girders increases as the girder depth 13
decreases an amount and the haunch space 14
between the bottom of the deck portion and the 15
tops of the girders is increased the same amount 16
for the same girder area and shape and total depth 17
between the bottom of the deck and the bottoms of 18
the girders. 19
(See App. Br. 10-11.) This limitation does not recite a structural feature of 20
the claimed structural apparatus. Rather, the “wherein” clause appears to 21
identify the effects which result when certain dimensional changes are made 22
to the recited structure. At most, it recites a characteristic of the claimed 23
structural apparatus. Even assuming for purposes of this appeal only that the 24
depth of Smith’s haunches 16 might reach zero at some position along a slab 25
14, that would not preclude one of ordinary skill in the art from increasing 26
the haunch space between the bottom of the deck portion and the tops of the 27
girders while decreasing the girder depth by the same amount. 28
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Where claimed and prior art products are identical or substantially 1
identical, 2
the [Patent and Trademark Office] can require an 3
applicant to prove that the prior art products do not 4
necessarily or inherently possess the characteristics 5
of [the] claimed product. Whether the rejection is 6
based on ‘inherency’ under 35 U.S.C. § 102, on 7
‘prima facie obviousness’ under 35 U.S.C. § 103, 8
jointly or alternatively, the burden of proof is the 9
same, and its fairness is evidenced by the PTO’s 10
inability to manufacture products or to obtain and 11
compare prior art products. 12
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted); see also 13
In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990)(“[W]hen the PTO shows 14
sound basis for believing that the products of the applicant and the prior art 15
are the same, the applicant has the burden of showing that they are not.”) 16
The Examiner found during prosecution prior to this appeal that the 17
characteristic identified in the “wherein” clause of claim 2 is an inherent 18
characteristic of Smith’s structural apparatus. (Final Office Action mailed 19
Jan. 25, 2008 at 3; see also Ans. 4.) The Examiner had a sound basis for this 20
finding. The Examiner correctly found that Smith’s structural apparatus 21
included every other limitation of claim 2 apart from this characteristic. (FF 22
1.) Paragraph [0012] of the Specification implies that a structural member 23
possessing the “configuration of the present invention” will possess the 24
characteristic recited in the “wherein” clause of claim 2. Since Smith’s 25
structural apparatus is structurally identical, or substantially identical, to the 26
structural apparatus claimed in claim 2, the Examiner reasonably found that 27
it possessed the characteristics of the structural apparatus claimed in claim 2. 28
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The Examiner’s finding shifted the burden to the Appellant to produce 1
evidence to rebut the Examiner’s sound basis for belief that Smith’s 2
structural apparatus possessed the characteristic recited in the “wherein” 3
clause of claim 2. The Appellant has not met that burden. We adopt the 4
Examiner’s finding and sustain the rejection of claims 2, 3, 6-8, 11, 14, 30, 5
34-36, 38, and 41 under § 102(b) as being anticipated by Smith. 6
The Appellant argues the patentability of claims 9, 37 and 44-49 7
under § 103(a) over Smith, as well as the patentability of claims 12, 13, 15, 8
39, 42, 43 and 50 under § 103(a) over Smith and Bettigole, solely on the 9
basis that the Examiner has not provided reasoning which overcomes the 10
alleged deficiencies in the disclosure of Smith as applied to claim 2. (See 11
App. Br. 14-18.) Finding no such deficiencies, we sustain these rejections 12
as well. 13
14
The Rejection of Claims 10, 16, 19, 20, 22, 23, 29, and 40 under § 102(b) as 15
being Anticipated by Smith 16
The Rejection of Claim 21 under § 103(a) as being Unpatentable over Smith 17
The Rejection of Claims 24-28 under § 103(a) as being Unpatentable over 18
Smith and Bettigole 19
The Appellant argues that Smith fails to describe a structural 20
apparatus including “substantially constant depth” structural haunches as 21
recited in claims 10, 16 and 40. The term “substantially” is a term of degree. 22
Since neither the Examiner nor the Appellant suggests any standard for 23
determining “substantially constant depth” ordinarily used by one of 24
ordinary skill in the art, we turn to the Specification for guidance in 25
interpreting this term. See Seattle Box Co. v. Industrial Crating & Packing, 26
Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). 27
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The Specification primarily uses the term “substantially constant 1
depth” in connection with the structural and corrective functions of 2
haunches. More specifically, the Specification states that prior art 3
apparatuses used “a varying depth, longitudinally corrective haunch” to 4
compensate for deflection of the load bearing girders or beams. (Spec., para. 5
[0002]; see also id., para. [0031] (stating of prior art corrective haunches that 6
“their depth varies and depends on the existing camber of the girders”).) 7
The Specification distinguishes these prior art, purely corrective haunches 8
from structural haunches, which preferably have substantially constant depth 9
or height. (See Spec., para. [0005].) These statements imply that the terms 10
“substantially constant depth structural haunch” and “said haunches have a 11
substantially constant depth” must be interpreted so as to exclude haunches 12
having a variable depth dependent on the existing camber of the associated 13
girder. 14
Smith’s teachings indicate that the haunches 16 have variable depths 15
which depend on the existing cambers of the girders 12. (FF 5.) Therefore, 16
the haunches do not have substantially constant depth. We do not sustain 17
the rejection of claims 10, 16, 19, 20, 22, 23, 29, and 40 under § 102(b) as 18
being anticipated by Smith; the rejection of claim 21 under § 103(a) as being 19
unpatentable over Smith; or the rejection of claims 24-28 under § 103(a) as 20
being unpatentable over Smith and Bettigole. 21
22
The Rejection of Claims 2, 4, 5, 16-18 and 30-33 under § 102(b) as being 23
Anticipated by Grossman 24
The Examiner finds that Grossman’s composite structural member 25
120 includes a plurality of longitudinally extending, structural haunches or 26
support portions 164 extending downwardly from a deck portion 152. (FF 27
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2.) The Appellant seeks to distinguish the composite structural member 120 1
of Grossman from the structural apparatus claimed in claim 2 by arguing 2
that Grossman’s elements 64 are “‘support portions’ with relatively narrow 3
depth range and with discontinuities caused by the transverse beams, and 4
thus are understandably less effective in increasing the structural properties 5
of the composite beam of which it is a part, than the structural haunch of the 6
present invention.” (App. Br. 13.) 7
The Examiner correctly concludes that claim 2 is not limited to a 8
structural apparatus including a continuous haunch or a haunch of greater 9
than a particular, relatively narrow depth range. (Ans. 12.) Apart from this, 10
claim 2 recites only that the structural haunches are “longitudinally 11
extending” and that the haunches “extend downwardly from the deck 12
portion.” Claim 2 does not recite that the haunches extend across any 13
particular portion of the length of the deck portion. Considering each of 14
Grossman’s “support portions” 164 as a haunch, each such support portion is 15
continuous within its own span. Therefore, the Appellant’s arguments do 16
not distinguish Grossman’s composite structural member 120 from the 17
claimed structural apparatus. 18
The Examiner found during prosecution prior to this appeal that the 19
characteristic identified in the “wherein” clause of claim 2 is an inherent 20
characteristic of Grossman’s composite structural member 120. (Final 21
Office Action mailed Jan. 25, 2008 at 4; see also Ans. 5.) The finding is 22
reasonable for reasons similar to those discussed in connection with the 23
rejection of claim 2 as anticipated by Smith. The Appellant’s attorney 24
argues that the characteristic recited in the “wherein” clause “could not be 25
mathematically accomplished by the apparatus” described by Grossman. 26
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(App. Br. 13.) The attorney further argues that the “key cause for this 1
difficulty with the prior art is the above-noted narrow depth range of 2
[Grossman’s] ‘support portions.” (Id.) The Appellant provides no evidence 3
or technical reasoning to support this argument, however. 4
Since the Examiner’s finding shifted the burden to the Appellant to 5
produce evidence to rebut the Examiner’s sound basis for belief that 6
Grossman’s composite structural member 120 possesses the characteristic 7
recited in the “wherein” clause of claim 2; and since attorney argument will 8
not suffice where evidence is required, see, e.g., In re Geisler, 116 F.3d 9
1465, 1471 (Fed. Cir. 1997), we adopt the Examiner’s finding. We sustain 10
the rejection of claims 2, 4, 5, 16-18 and 30-33 under § 102(b) as being 11
anticipated by Grossman. 12
13
DECISION 14
We AFFIRM the Examiner’s decision rejecting claims 2-9, 11-18, 30-15
39 and 41-50. 16
We REVERSE the Examiner’s decision rejecting claims 10, 19-29 17
and 40. 18
No time period for taking any subsequent action in connection with 19
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 20
21
AFFIRMED-IN-PART 22
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Klh 27