Ex Parte McEnroe

Board of Patent Appeals and Interferences

Jan 5, 2010

10264094 (B.P.A.I. Jan. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN D. MCENROE JR.
____________

Appeal 2009-000692
Application 10/264,094
Technology Center 3600
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Decided: January 05, 2010
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Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 9, 11, 14, and 15. We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM.
Appeal 2009-000692
Application 10/264,094

Appellant claims a casting form 304 for forming a columnar cast-in-
place structural element 6 (e.g., a fence post) on a substrate (e.g., the
ground), the casting form comprising: a substantially linear form support
and reinforcement member 15 erectable on the substrate; a non-rigid pliable
tubular segment 314 which is foldable and rollable upon itself in any axis
which is positionable about and suspended from the form support and
reinforcement member 15; and a form suspension assembly 504 which is
attachable to reinforcement member 15 and a first end of the pliable tubular
segment 314 for suspending the pliable tubular segment above the substrate
(claim 9; Figs. 3, 4).
Further details regarding Appellant’s claimed subject matter are set
forth in the appealed claims, which read as follows:
9. A casting form for forming a columnar cast-in-place structural
element on the ground, the casting form comprising:

a substantially linear form support and reinforcement member
erectable on the substrate1 along an axis;

a non-rigid pliable tubular segment which is foldable and rollable
upon itself in any axis, positionable about and suspended from the form
support and reinforcement member so as to be substantially co-linear with
the axis of the substantially linear form support when positioned and
suspended from the form support; and

a form suspension assembly attachable to the form support and
reinforcement member, a first end of the pliable tubular segment attachable
to the form suspension assembly for suspending the pliable tubular segment
above the substrate.

1 The claim 9 phrase “the substrate” lacks strict antecedent basis. This
informality is deserving of correction in any further prosecution that may
occur.
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Appeal 2009-000692
Application 10/264,094

11. The casting form of Claim 9, wherein the non-rigid pliable
tubular segment further comprises a cylindrical sleeve formed of a sheet
polymer material having a wall thickness less than 0.2 millimeters.

14. The casting form of Claim 9, further comprising a connecting
member support assembly attached to the non-rigid pliable tubular segment
for connecting and supporting a first end of a connecting member during the
casting of the cast-in-place columnar structural element, wherein the
connecting member support assembly comprises at least one pocket formed
in the non-rigid pliable tubular segment, for accepting the first end of the
connecting member such that when the casting form is filled with casting
material, the casting material surrounds the first end of the connecting
member.

15. The casting form of Claim 14, wherein the at least one pocket
further includes an aperture, a peripheral edge of the pocket aperture aligned
with a peripheral edge of a side wall aperture, the peripheral edge of the
pocket connected to the peripheral edge of the side wall aperture, the pocket
configured to receive the first end of the connecting member during the
casting of the cast-in-place columnar structural element so as to allow
casting material to form to a contour of the first end of the connecting
member.

The references set forth below are relied upon by the Examiner as
evidence of unpatentability:
Lemelson 4,175,883 Nov. 27, 1979
Kim 5,457,929 Oct. 17, 1995
Chugh 6,227,189 Aug. 21, 2001
The Examiner rejects claim 11 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
According to the Examiner:
Regarding claim 11, the metes and bounds of the claim
is [sic, are] unclear. Since the specification only has support
for a range of 0.100mm to 1.00 mm, the language “less than
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Appeal 2009-000692
Application 10/264,094

0.2mm” in line 3 tends to cover values less than .100mm,
which were not disclosed by the specification.

(Ans. para. bridging 3-4).
The Examiner rejects claim 9 under 35 U.S.C. § 102(b) as being
anticipated by Kim.
The Examiner finds that Kim discloses a casting form comprising the
claim 9 features “a substantially linear form support and reinforcement
member” (i.e., Kim’s pipe) 38, “a non-rigid pliable tubular segment which is
foldable and rollable upon itself in any axis” (i.e., Kim’s shell) 12, and “a
form suspension assembly” (i.e., Kim’s reinforcing end piece) 14 (Ans. 4-5;
Kim, col. 4, ll. 15-27, Figs. 11, 24).
The Examiner rejects claim 11 under 35 U.S.C. §103(a) as being
unpatentable over Kim in view of Chugh.
The Examiner concludes that, in view of Chugh, it would have been
obvious for one with ordinary skill in this art to make Kim’s shell (i.e., the
claimed “non-rigid pliable tubular segment”) as a disposable mold of sheet
polymer material having a wall thickness less than 0.2 mm as required by
claim 11 (Ans. 5).
Finally, the Examiner rejects claims 14 and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Kim in view of Lemelson.
The Examiner concludes that, in view of Lemelson, it would have
been obvious for one having ordinary skill in this art to provide Kim’s shell
(i.e., the claimed “non-rigid pliable tubular segment”) 12 with a connecting
member support assembly comprising a pocket for accepting a connecting
member end as required by claims 14 and 15 (Ans. 6-7).

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Appeal 2009-000692
Application 10/264,094

The § 112, second paragraph, rejection
Appellant presents the following argument concerning this rejection:
Claim 11 was rejected on the grounds that the limitation
of “less than 0.2mm” was indefinite, as it could be construed
to be outside of the stated range of 0.100m to 1.0mm.
Applicant submits that when taken in the context of the
invention as disclosed in the present Specification, the term
is definite to one of ordinary skill in the art.

(Br. 6).
We agree.
Contrary to the Examiner’s belief, the claim 11 language “less than
0.2 millimeters” does not render the metes and bounds of the claim unclear.
As support for this incorrect belief, the Examiner states that the afore-quoted
claim language “tends to cover values less than .100mm, which were not
disclosed by the specification” (Ans. para. bridging 3-4). However, the fact
that the Examiner understands the claim language to cover values less than
.100mm evinces that the scope of claim 11 is clear rather than unclear.
Moreover, the Examiner’s statement that claim 11 values less than .100mm
“were not disclosed by the specification” (id.) relates to requirements in the
first, not second, paragraph of § 112.
Therefore, we do not sustain the Examiner’s § 112, second paragraph,
rejection of claim 11.
The § 102 Rejection
Appellant argues that
the present invention [i.e., the claim 9 casting form
comprising a non-rigid pliable tubular segment which is
foldable and rollable upon itself in any axis] uses a foldable
and/or rollable bag-like material, whereas Kim shows a stiff
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Appeal 2009-000692
Application 10/264,094

rigid structure that is designed to form an outer metal shell
(see Kim, title)

(Br. 7). Appellant also argues that Kim’s pipe 38 does not satisfy the claim
9 requirement “a substantially linear form support and reinforcement
member erectable on the substrate along an axis” (Br. 8-9).
These arguments are unpersuasive for the reasons expressed by the
Examiner on pages 7-10 of the Answer.
As correctly explained by the Examiner, Kim’s shell 12 is not
disclosed to be rigid as alleged by Appellant. Instead, the shell is disclosed
as being made of plastic or metal with a thickness as thin as 0.2mm and as
being easily deformed (Kim, col. 4, ll. 15-27). This disclosure supports the
Examiner’s finding that Kim’s shell 12 inherently possesses the claim 9
property of being “foldable and rollable” (Ans. 9, second para.).
As also correctly explained by the Examiner, Appellant’s arguments
concerning the form support and reinforcement member of claim 9 are
unpersuasive because they are directed to features not required by the claim.
On this record, Appellant has revealed no error in the Examiner’s finding
that Kim’s pipe 38 fully satisfies the claim 9 requirement “a substantially
linear form support and reinforcement member erectable on the substrate
along an axis”.
Under these circumstances, we sustain the Examiner’s § 102 rejection
of claim 9 as being anticipated by Kim.
The § 103 rejection based on Kim and Chugh
Appellant reiterates the unsuccessful arguments discussed above (Br.
9). Appellant further states that “Applicant has amended claim 11 to recite
that the thickness of the material is less than 0.2 millimeters – a range that is
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Appeal 2009-000692
Application 10/264,094

not taught by Kim” (Br. 10). Appellant also states that “CHUNGH [sic,
Chugh] does not teach or suggest a central rebar rod supporting the flexible
mold during curing of the grout” (id.).
The above-quoted statements reveal no error in the Examiner’s
conclusion of obviousness for the reasons detailed on page 11 of the
Answer. Indeed, these statements do not even address with any reasonable
specificity the facts and rationale advanced by the Examiner in support of an
obviousness conclusion.
Accordingly, we also sustain the Examiner’s § 103 rejection of claim
11 as being unpatentable over Kim in view of Chugh.
The § 103 Rejection Based on Kim and Lemelson
Appellant again reiterates the unsuccessful arguments discussed above
regarding the § 102 rejection (Br. 11). In addition, Appellant states that
“claim 15 now recites that the pocket allows the casting material to form to
the contour of a connecting member end portion” and argues that, “[a]s
Lemelson teaches a rigid fence post, his ‘pocket’ cannot form to the contour
of a connecting member and thus form a secure connection” (id.).
Appellant’s claim 15 argument is unpersuasive. As properly
explained by the Examiner (Ans. para. bridging 11-12), the pocket taught by
Lemelson would necessarily allow casting material to form to a contour of a
connecting material end as required by claim 15.
It follows that we also sustain the § 103 rejection of claims 14 and 15
as being unpatentable over Kim in view of Lemelson.
Summary
We have not sustained the § 112, second paragraph, rejection of claim
11.
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Appeal 2009-000692
Application 10/264,094

However, we have sustained the § 102 rejection of claim 9 and the
§ 103 rejections of claims 11, 14, and 15.
Order
The decision of the Examiner 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) (2008).

AFFIRMED

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ROBERT PLATT BELL
REGISTERED PATENT ATTORNEY
P.O. BOX 13165
JEKYLL ISLAND, GA 31527
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