Ex Parte LeeDownload PDFPatent Trial and Appeal BoardMay 21, 201814359302 (P.T.A.B. May. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/359,302 05/20/2014 134984 7590 05/23/2018 STIP Law Group, LLC 10015 Old Columbia Road, Suite B-215 Columbia, MD 21046 FIRST NAMED INVENTOR Jae-Ho Lee 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PUS150010 3743 EXAMINER DEMUREN, BABAJIDE A ART UNIT PAPER NUMBER 3633 NOTIFICATION DATE DELIVERY MODE 05/23/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): pto@stiplaw.com myang@stiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAE-HO LEE Appeal 2017-008611 Application 14/359,302 Technology Center 3600 Before JENNIFERD. BAHR, JAMES P. CALVE, and ANTHONY KNIGHT, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jae-Ho Lee (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 2, 4, 5, 7, and 8. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2017-008611 Application 14/359,302 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A plate coupling-type anchor channel that is buried when concrete is poured at the time of constructing a building to fix various external installations to a concrete structure later, the anchor channel comprising: a channel (20) having a predetermined width (W), a bottom surface (22 ), a top surface (24 ), and a guide space (21 ), wherein the guide space (21) is formed in the channel and opened in the bottom surface (22) such that an external fastener can slide along the entire longitudinal direction of the channel, and wherein the channel is buried in the concrete such that the guide space (21) is exposed to the outside of the concrete; and an anchor (30) that is coupled to the top surface (24) of the channel (20) and is buried in the concrete when the concrete is poured, the anchor comprising: a stem plate ( 40) in which a lower end ( 42) is coupled to the top surface (24) of the channel (20) so as to have a length (LI) and a width (wl) in a direction perpendicular to the top surface (24) of the channel (20); and an anchor head plate (50) that has a predetermined length (L2) and a width (w2), which is equal to the width (wl) of the stem plate (40) and in which an upper end (44) of the stem plate (40) is coupled to a bottom surface (52) so as to be perpendicular to a length (LI) direction of the stem plate (40). REJECTIONS I. Claims 1, 7, and 8 stand rejected under 35 U.S.C. § 102(b) as anticipated by Beine (US 4,052,833, iss. Oct. 11, 1977). II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Beine and Lee (US 2012/0023858 Al, iss. Feb. 2, 2012). 2 Appeal 2017-008611 Application 14/359,302 III. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Downing (US 909,769, iss. Jan. 12, 1909) and Lee. DISCUSSION Rejection I Claims 1 and 7 The Examiner finds that Beine discloses a plate coupling-type anchor channel as recited in claim 1. Non-Final Act. 2-3. In particular, the Examiner finds that Beine' s anchor channel comprises a channel (tie track 1) and an anchor including a stem plate (shaft portion 6 and lower flanges 8) and an anchor head plate (the top plate defining top flanges 8). Id. The Examiner provides an annotated reproduction of Figure 2 of Beine to illustrate that Beine's anchor head plate has a width (w2), which is equal to the width (wl) of the stem plate. Id. at 3. The Examiner's annotated version of Beine's Figure 2 is reproduced below. Fig.2 1 '"-~·, ............. ,, ....... ._.,, ·-,,,_,...,~_..,_V. ·~~ ... .,_~H~---:;;_,::.:, 50 '-~~"'" - ,,· L1 22 '·- ~-''''""'''"··~·.,"'''-·"·~+ w 3 Appeal 2017-008611 Application 14/359,302 In the annotated Figure 2 of Beine, which shows the tie track profile of Beine' s invention with anchor lugs attached thereto, the Examiner has added annotations labeling the width of the tie track 1, transverse to the longitudinal direction thereof, "W" and labeling the widths of the stem plate and anchor head plate "w 1" and "w2." Although the labels "w 1" and "w2" provided by the Examiner appear to be reversed, in that the label "w2" appears to denote the width of the stem plate (shaft portion 6) and the label "w 1" appears to denote the width of the anchor plate atop the stem plate, the end faces of the anchor lugs are clearly depicted as planar, thereby indicating that widths "w 1" and "w2" are the same. Appellant contends that patent drawings not indicated as being drawn to scale do not define the precise proportions of elements and, thus, cannot be relied upon to show particular sizes if the specification is silent with respect thereto. Br. 10. Thus, Appellant asserts that the Examiner's reliance on the perspective view of Figure 2 of Beine to show that the width of the stem plate and the width of the anchor head plate are equal is improper and not supported by Beine. Br. 10. Description via drawings and pictures can be relied upon alone as well as by words to anticipate claimed subject matter if they clearly show the structure claimed. In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). Although, in the case of patent drawings not indicated as drawn to scale, it is improper to rely "on 'a greatly enlarged section of a small drawing obviously never intended to show the dimensions of anything,"' that does "not mean that things patent drawings show clearly are to be disregarded." Id. (quoting In re Wilson, 312 F.2d 449, 454 (1963). As discussed above, Figure 2 of Beine clearly shows the widths "w 1" and "w2" are equal. It is 4 Appeal 2017-008611 Application 14/359,302 not necessary to make precise measurements to make this determination. Moreover, Beine describes the anchor lug of Figures 2 and 3 as "a short length of a regular profile resembling a I-profile" (Beine, col. 3, 11. 24--29), indicating that dimensions "w 1" and "w2" both correspond to the "short length." Thus, Beine is not completely silent as to the relative lengths of the dimensions "w 1" and "w2" identified by the Examiner in the annotated drawing. Accordingly, the Examiner's reliance on Figure 2 of Beine in support of the finding that widths "w 1" and "w2" are equal is appropriate and proper. Appellant also argues that when viewed from the longitudinal direction of Beine' s channel (tie track 1 ), Beine' s anchor lug 5 assumes "an integrally formed I-shape" in which the widths of the stem plate (shaft portion 6) and the anchor head plate atop shaft portion 6 have different widths. Br. 12 (emphasis omitted). This argument is unavailing because claim 1 does not define widths "w 1" and "w2" as being in the direction transverse to the longitudinal axis of the channel. 1 We discern no error in 1 Notably, claim 1 recites "a stem plate (40) in which a lower end (42) is coupled to the top surface (24) of the channel (20) ... so as to have a length (L 1) and a width ( w 1) in a direction perpendicular to the top surface (24) of the channel (20)." Br. 20 (Claims App.). Clearly, stem plate 40 can have only one dimension (L 1) defined in a direction perpendicular to the top surface of the channel. Width (wl) of Appellant's stem plate 40 is in a direction parallel to the top surface of channel 20, not in a direction perpendicular to the top surface 24 of channel 20. See Fig. 2(a). This informality, which crept into claim 1, as well as claim 4, in the Amendment filed April 28, 2015, when "and a width (wl)" was inserted into the claim, is deserving of correction. Appellant carried this error into new claim 8 in the Amendment filed November 2, 2015. For purposes of this appeal, consistent with Appellant's Specification and drawings, we construe "in a direction 5 Appeal 2017-008611 Application 14/359,302 the Examiner's consideration of the widths of the anchor head plate and stem plate portions of Beine' s anchor lug 5 in the direction along the longitudinal axis of the channel (tie track 1) as satisfying the equal widths limitation of claim 1. Appellant contends that the Examiner's citation of Figure 1 of Beine, without further explanation, is insufficient to show that Beine discloses that "an external fastener can slide along the entire longitudinal direction of the channel when the channel is buried in concrete." Br. 10-11. This argument is directed to the limitation in claim 1 that "the guide space ... is formed in the channel and opened in the bottom surface ... such that an external fastener can slide along the entire longitudinal direction of the channel." Br. 20 (Claims App.). Beine's Figure 1, along with Figures 2, 4, and 6 of Beine, clearly illustrates an opening in the bottom surface of the channel (tie track 1 ), defined by laterally inwardly projecting flanges along which an external fastener, such as a bolt having a bolt head, can slide along the entire longitudinal direction of the channel. Beine does not disclose any structure that would prohibit such sliding. Further, as the Examiner notes, "the claims do not positively recite the fastener itself and therefore [do] not require the fastener, only that the channel is formed such that an external fastener can slide along the entire longitudinal direction of the channel." Ans. 6 (emphasis added). We note, additionally, that claim 1 does not specify any particular type of external fastener for which the bottom surface/opening must be adapted to permit sliding. Thus, we discern no error in the perpendicular to the top surface (24) of the channel (20)" in claims 1, 4, and 8 as modifying "length (LI)," and not "width (wl)." 6 Appeal 2017-008611 Application 14/359,302 Examiner's finding that Beine discloses that "an external fastener can slide along the entire longitudinal direction of the channel," as claimed. Appellant further contends that the Examiner does not show where the limitation in the preamble of claim 1 "that the anchor channel is buried when concrete is poured at the time of constructing a building to fix various external installations to a concrete structure bar" is disclosed in Beine. Br. 11. In addressing this limitation, the Examiner cites the Abstract; column 1, lines 5-11; and column 4, lines 44--46 of Beine. Non-Final Act. 2-3; Ans. 7. Beine's Abstract states, "[d]isclosed is a track assembly, particularly adapted for embedding in a structural component, comprising a track member" and "at least one anchor lug extending from the back surface" of the track member. Further, claim 1 of Beine recites "[a] track assembly of the type which is adapted to be permanently anchored to a concrete structural member by being at least partially embedded therein." Beine, col. 4, 11. 44--46. Appellant does not persuasively explain why these passages in Beine cited by the Examiner fail to support the Examiner's finding. For the above reasons, Appellant fails to apprise us of error in the rejection of claim 1. Accordingly, we sustain the rejection of claim 1, as well as dependent claim 7, for which Appellant does not present any separate arguments (Br. 8-13) and which thus falls with claim 1, as anticipated by Beine. Claim 8 Independent claim 8 is substantially similar to claim 1, with the exception that claim 8 further recites, "wherein the anchor is I-shaped." Br. 23. The Examiner finds that Beine's anchor lug 5, as illustrated in 7 Appeal 2017-008611 Application 14/359,302 Figure 2, satisfies this limitation. Non-Final Act. 3. Appellant submits that Figure 2 of Beine only provides a partial view of anchor lug 5 because the remainder of the lug is concealed by welding. Br. 13. Appellant directs our attention to Figures 3 and 5 of Beine for complete views of lug 5. Id. Appellant's Specification does not use the term "I-shaped," nor do Appellant's drawings depict an anchor in accordance with Appellant's invention that assumes the shape of the letter I. As such, Appellant's Specification provides no definition or guidance as to the meaning of the term "I-shaped." As depicted in Figures 2 and 3 of Beine, the upper and lower flanges 8 and shaft portion 6 of anchor lug 5 assume the shape of the letter I. Indeed, Beine describes anchor lug 5 as having "a regular profile resembling a!- profile with a 'spike' extending from its lower flange." Beine, col. 3, 11. 27- 30. This spike (shaft extension 7) does not detract from the I-shape, or!- profile, of the anchor lug. Moreover, we note that, when secured to tie track 1, shaft extension 7 is flattened against back wall 2 of tie track 1, forming swaged head 9, which "substantially disappears in the depression 3" of back wall 2. Beine, col. 3, 11. 44--46 (boldface omitted). Thus, we discern no error in the Examiner's finding that Beine discloses an I-shaped anchor as claimed. Appellant additionally relies on the same arguments presented for claim 1 in contesting the rejection of claim 8. Br. 13. For the reasons discussed above, these arguments fail to apprise us of error in the rejection of claim 1 and, likewise, fail to apprise us of error in the rejection of claim 8. Accordingly, we sustain the rejection of claim 8 as anticipated by Beine. 8 Appeal 2017-008611 Application 14/359,302 Rejection II Appellant does not present any arguments specifically contesting the rejection of claim 2 as unpatentable over Beine and Lee. Br. passim. Accordingly, Appellant has waived any argument of error, and we summarily sustain this rejection. S'ee Jfyatt v. Dudas, 5 51 F. 3 d 13 07, 1314 (Fed. Cir. 2008) (explaining that summary affirmance without consideration of the substantive merits is appropriate where an appellant fails to contest a ground of rejection); Manual of Patent Examining Procedure (MPEP) § 1205.02, 9th ed., Rev. Nov. 2015 ("If a ground of rejection stated by the examiner is not addressed in the appellant's brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner's answer."). Rejection III Independent claim 4 is directed to "[a] method for manufacturing a plate coupling-type anchor channel that is buried when concrete is poured at the time of constructing a building," and comprises, in pertinent part, a step of preparing a channel having a guide space formed therein that is "opened in the bottom surface ... such that an external fastener can slide along the entire longitudinal direction of the channel, and wherein the channel is buried in the concrete such that the guide space ... is exposed to the outside of the concrete," as well as steps of preparing first and second plates and coupling an upper end of the first plate to a bottom surface of the second plate through welding, wherein the widths of the plates are equal. Br. 21-22 (Claims App.). 9 Appeal 2017-008611 Application 14/359,302 The Examiner finds that Downing discloses a method as recited in claim 4, with the exception that "Downing is silent on coupling through welding" and "Downing also fails to disclose the width of the anchor head plate is equal to the width of the stem plate." Non-Final Act. 5, 6. The Examiner finds that Lee discloses welding a stem (vertical member 22) to a top plate (upper anchor head 34) to form an anchor and welding the bottom of the stem (vertical member 22) to a bottom top surface (lower anchor head 44). Id. (citing Lee i-f 53, 11. 24--25). The Examiner determines it would have been obvious to use Lee's joining method in Downing "for its versatility and low cost absent any unexpected results." Id. The Examiner also finds that Lee teaches an anchor head plate (upper anchor head 34) having a width equal to the width of a stem plate (upper spacer 32), and determines it would have been obvious to provide equal widths for the anchor head plate and stem plate of Downing "in order to secure a sufficient anchorage effect while minimizing material used as taught by Lee." Id. at 6 (citing Lee i-f 61 ). Appellant argues that Downing lacks a guide space formed in the channel and opened in the bottom surface such that an external fastener can slide along the entire longitudinal direction of the channel. Br. 14. According to Appellant, Downing's tapering boss 8 cannot slide along the entire longitudinal direction of the channel because it has V-shaped lugs 9, which fit within notches 5 and are fixed in position. Id. at 15. Appellant's argument is unavailing for at least two reasons. First, claim 4 does not recite a step of sliding an external fastener along the entire longitudinal direction of the channel and, notably, does not specify any particular type of external fastener. Thus, even assuming arguendo that 10 Appeal 2017-008611 Application 14/359,302 Downing' s tapering boss 8 cannot slide along the entire longitudinal direction of Downing's channel, this fact would not undermine the Examiner's rejection. The guide space defined within Downing's casing 2 and opened in the bottom surface (between base flanges 4) permits at least some types of fasteners (such as a conventional nut and bolt, or a tapering boss without V-shaped lugs 9) to slide along the entire longitudinal direction of Downing' s channel, and the claim limitation in question requires nothing more. Moreover, tapering boss 8 is inserted into the guide space within Downing's channel (casing 2) by first being rotated 90 degrees from the orientation shown in Figure 2, so that it can fit between base flanges 4. With head 12 and V-shaped lugs 9 positioned above base flanges 4, tapering boss 8 can slide longitudinally on base flanges 4 along the entire longitudinal direction of casing 2 until it is disposed in the desired position, at which point it can be manipulated so that V-shaped lugs 9 engage notches 5 in base flanges 4. Thus, even using the particular fastener disclosed in Downing, Downing's casing 2 satisfies the limitation in claim 4 that it have a guide space formed therein and opened in the bottom surface such that an external fastener can slide along the entire longitudinal direction of the channel. Appellant also contends that Downing's tapering boss 8 "preclude[s] any exposure of a guide space to the outside of the concrete," and, thus, Downing lacks the claimed feature that the channel is buried in concrete such that the guide space is exposed to the outside of the concrete. Br. 16. This contention is not well-founded. Claim 4 does not require that the guide space be exposed to the outside of the concrete with an external fastener disposed within the guide space, nor does claim 4 require that the guide 11 Appeal 2017-008611 Application 14/359,302 space be exposed to the outside of the concrete along the entire length of the channel. The guide space defined within Downing' s casing 2 is open to the bottom between base flanges 4 and, thus, is exposed to the outside of the concrete. The guide space is exposed along the entire length of casing 2 when there is no tapering boss 8 disposed therein, and the guide space is exposed along a substantial portion of the length of casing 2 when tapering boss 8 is disposed therein as shown in Figure 2. As such, Downing's casing satisfies the claim limitation in question both with and without tapering boss 8 disposed therein. Appellant also submits that Lee's upper head 34 and lower head 44 are "integrally constituted." Br. 16. Thus, Appellant contends that Lee does not remedy the deficiency in Downing that Downing's T-shaped anchor 3 is integrally formed. Id. As such, according to Appellant, the combination of Downing and Lee fails to satisfy the claimed limitations of the lower end of the stem plate being coupled to the top surface of the channel, the upper end of the stem plate being coupled to a bottom surface of the anchor head plate, and the width of the stem plate and the width of the anchor head plate being the same. Id. As for the stem plate being coupled to the top surface of the channel and to a bottom surface of the anchor head plate, Lee discloses such a coupling in Figure 6 and paragraph 53. The fact that Lee depicts another embodiment (Figure lO(a)) in which the stem plate (vertical member 22) is itself an I-beam, rather than a plate, does not undermine the Examiner's finding that Lee teaches coupling the top of a stem plate (vertical member 22) to the lower surface of an anchor head plate (upper anchor head 34) by welding and coupling the bottom of the stem plate to a top surface of a base 12 Appeal 2017-008611 Application 14/359,302 structure (lower anchor head 44) by welding. See Lee, Fig. 6; i-f 53. Appellant does not contest the Examiner's articulated reasoning as to why it would have been obvious to apply this coupling technique to Downing's anchor and casing construction. As for the widths of the stem plate and anchor head plate being the same, Appellant does not identify any error in either the Examiner's finding that Lee teaches this feature or the Examiner's articulated reasoning as to why it would have been obvious to incorporate this teaching into Downing. See Non-Final Act. 6. For the above reasons, Appellant's arguments fail to apprise us of error in the rejection of claim 4. Accordingly, we sustain the rejection of claim 4, as well as claim 5, for which Appellant does not present any separate arguments (Br. 14--18) and which thus falls with claim 4, as unpatentable over Downing and Lee. DECISION The Examiner's decision rejecting claims 1, 2, 4, 5, 7, and 8 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)(l )(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation