Ex Parte Shaw et al

Board of Patent Appeals and Interferences

Aug 31, 2011

10121125 (B.P.A.I. Aug. 31, 2011)

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.
10/121,125 04/11/2002 Scott Shaw 442005-00107-C1 2927
7590 08/31/2011
Mark P. Levy
Thompson Hine LLP
P.O. Box 8801
Dayton, OH 45401-8801
EXAMINER
CHAN, KO HUNG
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
08/31/2011 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 SCOTT SHAW, DALE ROBERT HASLEM, KEN LEE,
STEVE WILBUR and CLIFFORD D. BENNETT
____________

Appeal 2010-003526
Application 10/121,125
Technology Center 3600
____________

Before JENNIFER D. BAHR, KEN B. BARRETT, and JAMES P. CALVE,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003526
Application 10/121,125

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STATEMENT OF THE CASE
Scott Shaw, Dale Robert Haslem, Ken Lee, Steve Wilbur, and
Clifford D. Bennett (Appellants) appeal under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 11-15, 37, 38, 41, and 42. Claim 45
has been withdrawn. Claims 1 and 5-10 have been allowed. Claims 39, 40,
43, and 44 are indicated to be allowable but objected to as depending from a
rejected base claim. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.
THE INVENTION
The claimed invention relates to a brace kit for reinforcing a form
member used in construction. Claim 11, which is set forth below, is
representative of the claimed invention:
11. A brace kit having component parts capable of
being assembled in the field for reinforcing a form
member used in the construction of a form atop a support
surface, comprising:
a brace shoe having an upper surface defining a first
locking structure and a lower surface adapted to be
secured to the support surface; and
a brace member having a base surface defining a
second locking structure configured to positively
interlock with said first locking structure of said brace
shoe in a two-piece lock so that said brace member
releasably locks into place in said brace shoe to prevent
all substantial relative motion therebetween, said brace
member having an upwardly extending form facing
surface extending generally perpendicular to said base
surface, wherein an assembled brace defines a generally
vertically-oriented form facing terminal plane adapted to
contact and position the form member with respect to the
support surface.
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THE REJECTION
The Examiner relies on the following as evidence of unpatentability:
Kump US 5,664,749 Sep. 9, 1997

The following ground of rejection is before us for review:
The Examiner rejected claims 11-15, 37, 38, 41, and 42 under 35
U.S.C. § 102(b) as being anticipated by Kump.
CONTENTIONS AND ISSUES
The Examiner rejected claims 11-15, 37, 38, 41, and 42 based on
Kump. Ans. 3-4. Appellants argue claims 11-15 and 41 as a group and
claims 37-38 as a group, and present separate argument for claim 42. We
select claims 11 and 37 as representative claims of each group and address
Appellants’ arguments as to claim 42. Appellants argue that Kump does not
disclose a second locking structure configured “to positively interlock” with
a first locking structure of the brace shoe, as recited in claim 11. App. Br. 3.
Appellants also argue Kump does not disclose a first locking structure that
comprises a pocket and a pair of resilient latches formed on the brace shoe,
as recited in claim 37. App. Br. 7. Appellants further argue that Kump does
not disclose “a snap-fit lock” as recited in claim 42. App. Br. 8.
The issues presented by this appeal are:
Does Kump disclose a second locking structure that is configured to
positively interlock with a first locking structure, as recited in claim 1?
Does Kump disclose a first locking structure with a pocket, as recited
in claim 37?
Does Kump disclose a snap-fit lock, as recited in claim 42?
Appeal 2010-003526
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ANALYSIS
Claims 11-15 and 41
Independent claim 11 recites a brace kit for reinforcing a form
member. The brace kit comprises a brace shoe and a brace member. The
brace shoe has an upper surface defining a first locking structure and a lower
surface that can be secured to a support surface. The brace member has a
second locking structure configured to positively interlock with the first
locking structure of the brace shoe.
The Examiner found Kump discloses a brace shoe (base 60) with an
upper surface defining a first locking structure (fins 70), and a brace member
(shoe 20) with a second locking structure (housing 34) that interlocks with
the first locking structure. Ans. 3, 6. The Examiner found the fins 70 of the
shoe 60 interlock with the brace member 20 to prevent further movement so
the components are not easily pulled apart. Ans. 3, 6. The resulting
connection can only be released with the addition of force. Ans. 6.
Appellants argue that Kump does not disclose a brace member with a
second locking structure configured “to positively interlock” with a first
locking structure of the brace shoe. App. Br. 3-6; Reply Br. 1-2. Appellants
argue that the fins of Kump’s brace shoe (base 60) frictionally hold the brace
member (shoe 20) and a frictional hold does not positively interlock these
components, as recited in claim 11. App. Br. 3; Reply Br. 3.
The term “positively interlock” is not used in the Specification, nor do
Appellants propose a construction for this term. Instead, they argue persons
skilled in the art would understand the plain and ordinary meaning of
“positively interlock” to be different from “frictional hold,” as allegedly
shown by opinions and patents Appellants cite. App. Br. 4-5; Reply Br. 4-5.
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During examination, claims terms are given their broadest reasonable
meaning as they would be understood by one or ordinary skill in the art in
light of the specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). However, limitations from the specification must not be read into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Applicants
always can amend the claims to define the invention more precisely. In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
The ordinary meaning of “interlock” includes “to lock together or
unite; to connect so that the motion or operation of any part is constrained by
another.” See MERRIAM WEBSTER’S COLLEGIATE® DICTIONARY 653 (11th ed.
2005). The ordinary meaning of “positive” includes “relating to or
constituting a motion or device that is definite, unyielding, constant, or
certain in its action.” See MERRIAM WEBSTER’S COLLEGIATE® DICTIONARY
968 (11th ed. 2005). Thus, the ordinary meaning of “positively interlock” is
to lock together or unite with a definite, unyielding, constant connection so
the relative motion or operation of one part is constrained by another part.
The ordinary meaning of “positively interlock” is not consistent with
the Specification or the claims. As recited in claim 11, the second locking
structure “positively interlocks” with the first locking structure so that the
brace member “releasably locks” in place in the brace shoe. Thus, the first
and second locking structures are not locked together with an unyielding,
constant connection. The Specification discloses that the brace shoe and
brace member are snapped or locked together (Spec. 11, ll. 4-6; Spec. 12, ll.
11-12; Spec. 13, ll. 14-17 and 23-25) so the brace can be manually inserted
and removed from the shoe and reused, if desired (Spec. 10, ll. 20-22; Spec.
13, ll. 12-14 and 21-23).
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We interpret “positively interlock” consistent with the Specification to
mean “to lock together with a yielding connection so the relative motion of a
part is substantially constrained by another part.” We agree with the finding
of the Examiner that Kump discloses a brace that positively interlocks with a
shoe when that term is interpreted in light of the Specification. Ans. 3, 6.
The base “strongly engages the support shoe 20 due to the fins 70” (Kump,
col. 6, ll. 29-30) so the shoe is not easily removed from the base (Kump, col.
5, ll. 49-53). The base and shoe are separated by prying the base from the
shoe with a screwdriver. Kump, col. 6, ll. 32-39. In view of these findings,
Appellants’ arguments that a friction fit does not positively interlock the
base and shoe (App. Br. 3-5; Reply Br. 3-4) are not persuasive. Appellants’
Specification discloses braces that snap or lock to a shoe so the braces can
be manually inserted and removed from the shoe. Spec. 10, ll. 20-23; Spec.
13, ll. 12-14; figs. 3-15. These configurations indicate a friction fit.
Appellants also argue that the limitation “a second locking structure
configured to positively interlock with said first locking structure of said
brace shoe” is a structural limitation that the Examiner improperly treats as a
functional limitation. Reply Br. 1-4. We disagree. Claim 11 recites the
locking structures by what they do, not by what they are.1 See Transmatic,
Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1278 (Fed. Cir. 1995). (“configured
to be attached to a vehicle” treated as a functional limitation). As discussed
supra, the Examiner found Kump discloses locking structures that positively
interlock (Ans. 3, 6) and Appellants have not shown error in the Examiner’s
findings. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (where

1 Claims 37-39, which depend from claim 11, recite some structural features
of the first and second locking structures.
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examiner finds prior art is capable of performing a functional limitation,
burden shifts to appellant to show it does not). Accordingly, we affirm the
Examiner’s rejection of claims 11-15 and 41 as anticipated by Kump.
Claims 37 and 38
Claim 37 recites a first locking structure comprising a pocket and pair
of resilient latches formed on the brace shoe. The Examiner found Kump
discloses a shoe 60 with a pocket (channel between projecting walls 62, 64)
and resilient latches (fins 70). Ans. 4-5. The Examiner also found that the
claimed pocket is a channel with an open end and therefore Kump’s channel
is a pocket as much as Appellants’ channel is a pocket, giving “pocket” its
broadest reasonable interpretation consistent with the Specification. Ans. 7.
Appellants argue that Kump discloses a channel that is open at the top
and both ends. App. Br. 7. Appellants offer a definition of “pocket” as a
predominantly enclosed space with an opening to an exterior space (App. Br.
7; Reply Br. 6). Appellants also argue that the Specification discloses a
pocket that receives and substantially encloses an inserted tongue at page 11,
lines 3-6 and figures 8, 11-13, and 15. App. Br. 7. Appellants further argue
that their description and drawings show a pocket 46 that encloses a tongue
44 on four sides and partially on a fifth – leaving only an opening on a sixth
side. Reply Br. 7-8 (referring to figures 3 and 8).
We agree with the Examiner that Kump discloses a pocket when
“pocket” is given its broadest reasonable interpretation consistent with the
Specification. Figures 3 and 8 of Appellants’ Specification disclose a
tongue 44 formed along a portion of the brace 30 and a pocket 46 that runs
along the length of the shoe 40 and is open along the top and at one end to
receive the tongue 44. Spec. 11, ll. 2-4; figs. 3, 8. Appellants’ Specification
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does not disclose or define a “pocket” as requiring enclosure on a minimum
number of sides or ends. Even if Appellants’ Specification identified a
particular embodiment in which a pocket was enclosed on more sides than is
disclosed in figures 3 and 8, we cannot limit the claims to a particular
embodiment or read a particular embodiment into the claims when the claim
language is broader than that embodiment. See Superguide Corp. v.
DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”).
Accordingly, we affirm the Examiner’s rejection of claims 37 and 38.
Claim 42
Claim 42 recites that the two-piece lock of claim 11 is a snap-fit lock.
The Examiner found “the slapping of the top piece (20) onto the base (20) to
overcome the friction forces of the fins in Kump’s two pieces interlocking
constitutes a snap-fit lock.” Ans. 7. Appellants argue “slapping” the top
brace 20 onto the base 60 in Kump is not a snap-fit lock. Reply Br. 8-9.
The ordinary and customary meaning of “snap” includes “to close or
fit in place with an abrupt movement or sharp sound” (MERRIAM WEBSTER’S
COLLEGIATE® DICTIONARY 1179 (11th ed. 2005)) or “[t]o hold parts together
by springing one part over or into another” (Dictionary of Mechanical
Engineering 358 (Fourth Ed. 1996)). This meaning is consistent with the
Specification, which discloses that the shoe and brace snap or lock together.
Spec. 11, ll. 2-6; Spec. 12, ll. 10-12. The fins 70 in Kump do not provide a
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Application 10/121,125

9
snap-fit lock with the shoe 20. Accordingly, we reverse the Examiner’s
rejection of claim 42.
CONCLUSION
Kump discloses a second locking structure configured to positively
interlock with a first locking structure, as recited in claim 1.
Kump discloses a first locking structure with a pocket, as recited in
claim 37.
Kump does not disclose a snap-fit lock, as recited in claim 42.
DECISION
The Examiner’s decision to reject claims 11-15 and 41 under 35
U.S.C. § 102(b) as being anticipated by Kump is AFFIRMED.
The Examiner’s decision to reject claims 37 and 38 under § 102(b) is
AFFIRMED.
The Examiner’s decision to reject claims 42-44 is REVERSED.
AFFIRMED-IN-PART

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