Ex Parte Sorkin

Board of Patent Appeals and Interferences

Jul 20, 2004

09649157 (B.P.A.I. Jul. 20, 2004)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 9
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FELIX L. SORKIN
____________
Appeal No. 2004-1269
Application No.09/649,157
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ON BRIEF
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Before, PAK, KRATZ and JEFFREY T. SMITH, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 39 and 40, which are all of the claims
pending in this application.
BACKGROUND
Appellant's invention relates to a post-tension anchor
system for maintaining the tendon of the post-tension system in a
corrosion resistant state. An understanding of the invention can
be derived from a reading of exemplary claim 39, which is
reproduced below.
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Application No. 09/649,157
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39. A post-tension anchor system comprising:
an anchor body having a polymeric encapsulation
extending therearound, said encapsulation having a tubular
portion integrally formed therewith and extending outwardly
from one end of said anchor body, said anchor body having a
wedge-receiving cavity formed therein, said tubular portion
having an intetlock area extending around an exterior
surface thereof, said interlock area comprising a protrusion
extending outwardly and around said tubular portion adjacent
and end of said tubular portion opposite said anchor body;
a tendon affixed within said wedge-receiving cavity of
said anchor body, said tendon having a sheathed portion and
an unsheathed portion;
a seal member affixed to an end of said tubular portion
opposite said anchor body, said seal member extending around
said sheathed portion of said tendon in generally liquid-
tight relationship therewith, said protrusion engaging an
indentation formed on an interior surface of said seal
member, said seal member comprising:
a first annular portion extending around said tubular
portion at said end; and
a second annular portion extending outwardly from said
first annular portion, said second annular portion being in
liquid-tight relationship with said sheathed prtion of said
tendon, said second annular portion having a diameter
smaller than a diameter of said first annular portion, said
second annular portion extending outwardly of said end of
said tubular portion, said seal member being formed of an
elastomeric material, said tubular portion having a length
of greater than four inches extending outwardly of said
anchor body; and
a plurality of wedges in interference-fit relationship
with said unsheathed portion of said tendon within said
wedge-receiving cavity of said anchor body.
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Application No. 09/649,157
Page 3
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Wlodkowski et al. (Wlodkowski) 4,363,462 Dec. 14, 1982
Sorkin 5,839,235 Nov. 14, 1998
Claims 39 and 40 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sorkin alone or in a separate rejection
in view of Wlodkowski.
We refer to the brief and the answer for a complete
exposition of the opposing positions of appellant and the
examiner.
OPINION
Upon careful review of the respective positions advanced by
appellant and the examiner with respect to the rejections that
are before us for review, we find ourselves in agreement with
appellant’s viewpoint in that the examiner has failed to carry
the burden of establishing a prima facie case of obviousness.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-1472, 223
USPQ 785, 787-788 (Fed. Cir. 1984). Accordingly, we will not
sustain the examiner’s rejection.
The examiner acknowledges that the “protrusion and
indentation relationship in the connection of the seal 12 and the
tubular portion 16 of Sorkin” (final rejection, page 2) are not
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Application No. 09/649,157
Page 4
1 At page 3 of the answer, the examiner refers us to the
final rejection for the examiner’s statement of the rejections.
the same as the relationship between the anchor body integrally
formed tubular portion and the seal member as recited in appealed
claims 39 and 40. In this regard, the examiner (final rejection,
page 2)1 argues, as a general proposition, that:
[t]he interchangability of protrusions and indentations
on tubular members which are to be coupled, as well as
which tubular member is to be the “female” element and
which is to be the “male” element, are mechanical
equivalents well within the purview of one of ordinary
skill in the art. In view of this, it would have been
obvious to modify ‘235 whereby the seal 12 had a
portion large enough to fit over tubular portion 16 as
well as to have a protrusion on either the outer
surface of the tubular portion or the inner surface of
the seal member.
Alternatively, the examiner (final rejection, page 3)
maintains that:
Wlodkowski et al is provided to teach that locating a
seal over the end of the tubular portion is well known.
In view of this teaching, it would have been obvious to
modify ‘235 whereby his seal 12 is located over the
tubular portion, such providing a more effective seal.
However, the examiner has not established, on this record,
how that proposed modified structure of Sorkin corresponds to
appellant’s claimed structure which includes a seal member
having: (1) a specifically defined first annular portion that
extends around the tubular member where the seal member is
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Application No. 09/649,157
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affixed to an end potion of the tubular member and (2) a smaller
diameter second annular portion that extends outwardly from the
first annular portion.
Thus, even if we could agree with the examiner’s proposed
modification of Sorkin, the examiner has not fairly explained how
that modified system of Sorkin would correspond to the here
claimed anchor system including the specific claimed geometry of
the seal member portions. Nor has the examiner reasonably
explained why one of ordinary skill in the art would have been
led to further modify the anchor system of Sorkin with or without
the teachings of Wlodkowski to employ a seal member having the
specific structural characteristics set forth in appealed claims
39 and 40. We note for example that Sorkin (column 6, line 53
through column 7, line 9 and drawing figures 9 and 10) discloses
alternative embodiments wherein a trumpet (tube) portion of the
post-tension anchor system is snap fitted within the corrosion
protection tube. However, in those embodiments wherein Sorkin
employs a protrusion (112) on the exterior of the trumpet (tube)
portion, the corrosion protection tube has not been shown to have
the here claimed seal member geometry based on the examiner’s
proposed modification in a manner so as to arrive at the here
claimed subject matter. In this regard, we note that the
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Application No. 09/649,157
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examiner has not established with any particularity how a
specific proposed modification of any of the several particular
apparatus embodiments of Sorkin would have been suggested by the
applied prior art so as to result in the claimed structure.
Accordingly, on this record, the rejections fail for lack of
a sufficient factual basis and analysis by the examiner upon
which to reach a conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073-74, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
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Application No. 09/649,157
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CONCLUSION
The decision of the examiner to reject claims 39 and 40
under 35 U.S.C. § 103(a) as being unpatentable over Sorkin and to
reject claims 39 and 40 under 35 U.S.C. § 103(a) as being
unpatentable over Sorkin in view of Wlodkowski is reversed.
REVERSED
Chung K. Pak )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
PFK/jlb
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Application No. 09/649,157
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