Ex Parte Mackay Sim

Patent Trial and Appeal Board

Sep 30, 2016

13789809 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131789,809 03/08/2013
35775 7590 10/04/2016
DESIGN IP, P.C.
5050 W. TILGHMAN STREET
SUITE435
ALLENTOWN, PA 18104
FIRST NAMED INVENTOR
Rod Mackay Sim
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.
FOS-P0036.l 1466
EXAMINER
DEMUREN, BABAJIDE A
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
pair@designip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROD MACKAY SIM
Appeal2014-008675
Application 13/789,809
Technology Center 3600
Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY and
TARA L. HUTCHINGS, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-9. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 The Appellants identify the real party in interest as "Woodstock Percussion
Pty Ltd." (Appeal Br. 3.)
Appeal2014-008675
Application 13/789,809
STATEMENT OF THE CASE
The Appellant's invention relates to "forming a recess around a lifting
anchor" that is "cast into a concrete element." (Spec. i-f 5.)
Illustrative Claim2
1. An anchor assembly for a concrete panel which is to be cast
in formwork and which includes at least one recess to be
formed by a recess former having an interior, said anchor
assembly comprising an anchor having a head with a through
aperture in said anchor, and a unitary plug separate from said
recess former and not connected with said formwork, at least a
portion of said unitary plug having a shape which matches said
through aperture to permit said unitary plug to be inserted into
said through aperture and into the interior of said recess former
prior to casting said concrete panel to completely fill said
through aperture and thereby prevent ingress of cementitous
material into said through aperture via said recess former during
casting, and said unitary plug being removable from said recess
former and said anchor after casting.
Sears
Schneider
Fromelius
References
us 3,698,825
us 5,630,258
US 6,550,834 B2
Rejections
Oct. 17, 1972
May 20, 1997
Apr. 22, 2003
The Examiner rejects claims 1, 3, 4, 6, 8, and 9 under 35 U.S.C.
§ 102(b) as anticipated by Fromelius. (Final Action 2.)
The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Fromelius. (Id. at 4.)
2 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 15-16 of the Appeal Brief.
2
Appeal2014-008675
Application 13/789,809
The Examiner rejects claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Fromelius and Schneider. (Id.)
The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Fromelius and Sears. (Id. at 5.)
ANALYSIS
Claim 1 is the sole independent claim on appeal, with the rest of the
claims on appeal (i.e., claims 2-9) depending therefrom. Independent
claim 1 recites "[a]n anchor assembly for a concrete panel which is to be
cast in formwork." (Claims App.) The claimed anchor assembly comprises
"a recess former," "an anchor," and "a unitary plug" having "a shape which
matches [a] through aperture" in the anchor's head. (Id.) The Examiner
finds Fromelius discloses an anchor assembly comprising these components.
(See Final Action 2.)
Fromelius discloses a removable insert assembly 10 and a lifting
system assembly 100. Fromelius's insert assembly 10 includes an insert
base 30 to form a depression in a concrete panel once the concrete has cured.
(See Fromelius, col. 1, lines 19-24, col. 2, lines 55---60, Fig. 1.) Fromelius's
lifting system assembly 100 includes "a rectangular member 102" and "[a]
perpendicularly arranged lifting pin or rod 108 extending therethrough." (Id.
at col.4, lines 33--41, Fig. 6.) The Examiner considers Fromelius's insert
base 30 to be the claimed recess former; the Examiner considers Fromelius's
rectangular member 102 to be the claimed anchor; and the Examiner
considers Fromelius's lifting pin 108 to be the claimed unitary plug. (See
Final Action 2.)
Independent claim further recites that the unitary plug is "removable
from said recess former and said anchor after casting." (Claims App.) The
3
Appeal2014-008675
Application 13/789,809
Examiner characterizes this limitation as "a recitation of intended use" and
regards it as "functional language." (Answer 5.) The Examiner stresses that
"claims directed to an apparatus must be distinguished from the prior art in
terms of structure rather than function." (Id.)
We agree with the Examiner's characterization of the recited
limitation as functional language. We also agree that independent claim 1 is
an apparatus claim and, therefore, must be distinguished from the prior art in
terms of structure rather than function. Indeed, a claim employing
functional terminology, such as independent claim 1, covers any prior art
structure that meets the structural limitations of the claim and that is capable
of performing the recited function. (See MPEP § 2173.0S(g) and cases
cited therein.)
Here, however, the Appellant presents a plausible technical reason as
to why the prior art structure, namely Fromelius's anchor assembly, is not
capable of performing the recited function and is structurally distinguishable
from the claimed anchor assembly. Specifically, the Appellant explains that,
once concrete has been cast around Fromelius' s insert base, there will be
insufficient space to permit removal of lifting pin 108 from rectangular
member 102. (See Appeal Br. 7-9, especially the Appellant's annotated
drawing.) Although the Examiner concludes that Fromelius' s unitary plug
(i.e., lifting pin 108) is capable of performing of the recited function (see
Answer 6), the Examiner does not attempt to explain how this would occur
given the seemingly insufficient space in Fromelius's insert-formed recess
for removal of lifting pin 108.
Accordingly, the Examiner does not sufficiently establish that the
prior art anchor assembly structure meets the structural limitations of
4
Appeal2014-008675
Application 13/789,809
independent claim 1 and/or is capable of performing the recited function.
Thus, we do not sustain the Examiner's rejection of independent claim 1
under 35 U.S.C. § 102(b) as anticipated by Fromelius.
The Examiner's findings and determinations with respect to the
dependent claims (see Final Action 3-6) do not compensate for the above-
discussed shortcoming in the Examiner's rejection of independent claim 1.
Thus, we do not sustain the Examiner's rejection of dependent 3, 4, 6, 8, and
9 under 35 U.S.C. § 102(b) as anticipated by Fromelius; we do not sustain
the Examiner's rejection of dependent claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Fromelius; we do not sustain the Examiner's rejection of
dependent claim 2 under 35 U.S.C. § 103(a) as unpatentable over Fromelius
and Schneider; and we do not sustain the Examiner's rejection of dependent
claim 5 under 35 U.S.C. § 103(a) as unpatentable over Fromelius and Sears.
DECISION
We REVERSE the Examiner's rejections of claims 1-9.
REVERSED
5