Ex Parte Sladojevic

Patent Trial and Appeal Board

Dec 27, 2016

12514229 (P.T.A.B. Dec. 27, 2016)

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.
12/514,229 01/06/2010 Robert Sladojevic Q113373 8765
23373 7590 12/29/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
SAFAVI, MICHAEL
ART UNIT PAPER NUMBER
3631
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT SLADOJEVIC1
Appeal 2015-003630
Application 12/514,229
Technology Center 3600
Before BIBHU R. MOHANTY, ROBERT L. KINDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1—8. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellant, the real party in interest is “SRB
CONSTRUCTION TECHNOLOGIES PTY. LTD.” App. Br. 2.
Appeal 2015-003630
Application 12/514,229
Appellant’s Invention
Appellant’s invention relates “to securing a sideform to a substrate, in
particular, to a sideform assembly used for supporting sideforms in their
moulding locations in the manufacture of precast building panels.” Spec. 1,
11. 9-11.
Independent Claims on Appeal
Claim 1 is the only independent claim on appeal. Claim 1 is
illustrative of the claimed subject matter and reads:
1. A sideform assembly which includes
a sideform with a front wall and operatively rear wall
defining an attaching formation on the operatively rear wall; and
a mounting bracket assembly comprising
a connector plate for supporting the sideform and
including an engaging means for engaging the attaching
formation of the sideform; and
a mounting member carried by the connector plate
for mounting the connector plate to a substrate,
wherein when the attaching formation and engaging
means are engaged the sideform and mounting bracket assembly
lock together.
App. Br. 16 (Claims App’x).
Examiner’s Rejections
I. Claims 1—7 are rejected under 35 U.S.C. § 102(b) as anticipated
by Sladojevic (WO 2006/063399, pub., June 22, 2006). Final Act. 2-4 (Oct.
8,2013).
II. Claims 1, 2, 7, and 8 are rejected under 35 U.S.C. § 102(b) as
anticipated by Fitzgerald (US 5,076,536, issued Dec. 31, 1991). Id. at 4.
III. Claims 1—3 and 6—8 are is rejected under 35 U.S.C. § 102(b) as
anticipated by Pietrobon (WO 01/96690, pub. Dec. 12, 2001). Id. at 4—5.
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Appeal 2015-003630
Application 12/514,229
ANALYSIS
I. Anticipation Based on Sladojevic
Appellant makes several arguments as to why the Examiner erred in
rejecting claim 1 as anticipated by Sladojevic. We consider each in turn.
First, Appellant contends Sladojevic fails to disclose “a sideform with
. . . operatively rear wall defining an attaching formation on the operatively
rear wall.” App. Br. 6. Appellant contends that even if the seat 34 of
Sladojevic is an attaching formation, it is not on any operatively rear wall,
but instead seat 34 is slung between two rear walls. Id. at 8.
The Examiner finds that Sladojevic discloses this limitation because
its rear wall defines an attaching formation 34 on the operatively rear wall.
Ans. 2. According to the Examiner, the attaching formation extends from
rear of 36, and from the rear of the wall from which elements 32/34 extend.
Id.
We find the Examiner’s position more persuasive on the record before
us. Sladojevic’s bearing surface 32 for engaging seat 34 is physically part of
the rear wall portion of sideform 36. Seat 34 is not just slung between two
rear walls, but element engaging portion 16 defines bearing surface 32 for
engaging seat 34. Sladojevic, p. 3,11. 21—23. Further, Sladojevic describes
“the bearing surface 32” as being held “in the seat 34 of the sideform 36.”
Id. at p. 4,11. 8—10 (emphasis added).
Appellant next contends that Sladojevic does not disclose the
sideform and mounting bracket assembly are locked together by way of the
attaching formation. App. Br. 9; Reply Br. 5. Claim 1 requires “wherein
when the attaching formation and engaging means are engaged the sideform
and mounting bracket assembly lock together.” App. Br. 16. Appellant
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Application 12/514,229
acknowledges that Sladojevic describes a sideform and mounting bracket
assembly “held” together, but Appellant contends that “held” is distinct
because “‘held’ means to simply retain in a position.” Reply Br. 5 (“Clearly,
an object can be held in position, but not locked.”). Appellant also argues
that the engaging portion 16 of Sladojevic is not rigid such that “[t]he curved
bearing surface 32 of the portion 16 and the reciprocally curved upper face
of the seat 34 act to facilitate . . . lateral flexing.” Id. Appellant concludes
that because of this flexing and “the resilience of the portion 16, the curved
surfaces 32 and 34prevent a locking engagement.” Id. Based on the record
before us, we disagree with Appellant’s contentions.
The Examiner persuasively establishes that “the engaging means 16 is
held within the attaching formation 34” such that the sideform and mounting
bracket assembly lock together. Ans. 5. As described in Sladojevic, “[t]he
magnetic force of the clamp 12 acts to hold the bearing surface 32 in the seat
34 of the sideform 36 and holds the sideform 36 in the required orientation.”
Sladojevic, p. 4,11. 8—10. Although seat 34 may be flexible in certain
embodiments, Sladojevic also describes that “[ejach element engaging
portion 16 defines a bearing surface 32 for engaging a seat 34 . . . which is to
be clamped in a desired position.” Id. at p. 3,11. 21—23; see also Ans. 5
(“Whether or not WO ‘399 teaches utilization of a magnetic force does not
negate the locking capability between attaching formation 34 and engaging
means 16 of WO ‘399.”).
We have considered Appellant’s remaining arguments related to
anticipation based on Sladojevic but find them unpersuasive for the reasons
set forth by the Examiner in the Final Office Action and Answer. For the
reasons set forth above, we sustain the Examiner’s rejection of claim 1, and
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Application 12/514,229
claims 2—7, which are not separately challenged by Appellant.
II. Anticipation Based on Fitzgerald
The Examiner finds that claims 1, 2, 7, and 8 are anticipated by
Fitzgerald. Based on the record before us, including Appellant’s
contentions, we do not agree.
Claim 1 requires, in pertinent part, “a sideform having a front wall and
an operatively rear wall defining an attaching formation on the operatively
rear wall.” App. Br. 16. Notably, the claim scope sets forth both a front
wall and an operatively rear wall. See, e.g., Spec., Fig. 2 (front wall 34 and
vertical planar rear wall 12) (amended drawings of June 20, 2013).
The Examiner finds that Fitzgerald’s wall 6 satisfies both the “front
wall” and “operatively rear wall” claim requirements because the “rear
portion of 6” would be a “rear wall” and the “front portion of 6” would be
the claimed “front wall.” Ans. 6. Thus, according to the Examiner, the
“attaching formation 3/4” of Fitzgerald would be on the “rear wall.” Id.
Appellant contends, and we agree, that Fitzgerald’s disclosure of only
a single wall 6 having a front face and a rear face would not constitute both a
front wall and an operatively rear wall as those terms are used in the current
Application. See, e.g., Spec. 2,11. 5—10 (describing both a “wall” and a
“face” when referring to the “front face” of the connector plate). As argued
by Appellant, Fitzgerald does not disclose the limitations related to both the
front wall and an operatively rear wall because “[i]f wall 6 is taken as the
rear wall (because it carries attaching formation 3/4) then Fitzgerald fails to
disclose a front wall,” but “[i]f wall 6 is taken as the front wall, then the
attaching formation 3/4 is borne by the front wall, and not the operatively
rear wall as required by claim 1.” Reply Br. 6.
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Application 12/514,229
For the reasons set forth above, we do not sustain the Examiner’s
rejection of claim 1 as anticipated by Fitzgerald. Because claims 2, 7, and 8
depend from claim 1, we likewise do not sustain the Examiner’s rejection of
these claims.
III. Anticipation Based on Pietrobon
The Examiner finds that claims 1—3 and 6—8 are anticipated by
Pietrobon. Based on the record before us, including Appellant’s contentions,
we do not agree.
Claim 1 requires, in pertinent part, “a connector plate for supporting
the sideform and including an engaging means for engaging the attaching
formation of the sideform.” App. Br. 16. Notably, the claim scope requires
that the connector plate include the claimed “engaging means.” Id.
The Examiner identifies element 36 of Pietrobon as the claimed
“engaging means.” Ans. 6. Pietrobon describes element 36 as a rectangular
locking block. See Pietrobon, p. 6,11. 10—11. The Examiner identifies plate
(side) 46 of Pietrobon as the claimed connector plate. Ans. 4.
As alleged by Appellant, Pietrobon’s locking block 36 is not a part of
the connector plate 46. Reply Br. 7. We find persuasive Appellant’s
contention that “[ejlement 36 is enclosed within the sideform part of the
assembly” and although “element 36 is connected by a bolt 38 to other parts
of the assembly, it is clearly not a part of the connector plate.” Id. Although
locking block 36 eventually engages with plate 46 (see Fig. 2), the Examiner
has not persuasively established that the connector plate 46 would include
the locking block (engaging means) 36.
For the reasons set forth above, we do not sustain the Examiner’s
rejection of claim 1 as anticipated by Pietrobon. Because claims 2, 3, and 6-
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Application 12/514,229
8 depend from claim 1, we likewise do not sustain the Examiner’s rejection
of these claims.
CONCLUSION
The rejection of claims 1—7 under 35 U.S.C. § 102(a) as being
anticipated by Sladojevic is affirmed.
The rejection of claims 1, 2, 7 and 8 under 35 U.S.C. § 102(a) as
being anticipated by Fitzgerald is reversed.
The rejection of claims 1—3 and 6—8 under 35 U.S.C. § 102(a) as
being anticipated by Pietrobon is reversed.
DECISION
We AFFIRM the Examiner’s decision to reject claims 1—7.
We REVERSE the Examiner’s decision to reject claim 8.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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