Ex Parte Lee

Patent Trial and Appeal Board

May 21, 2018

14359302 (P.T.A.B. May. 21, 2018)

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