Ex Parte Whitmore

Patent Trial and Appeal Board

Nov 1, 2017

13585180 (P.T.A.B. Nov. 1, 2017)

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.
13/585,180 08/14/2012 David Whitmore 84156-36US 7902
23529 7590 11/03/2017
A OF ^ COMPANY TN C EXAMINER
2157 Henderson Highway BELL, WILLIAM P
WINNIPEG, MB R2G1P9
CANADA ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
11/03/2017 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):
u spto @ adeco .com
djones @ adeco.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID WHITMORE
Appeal 2017-000586
Application 13/585,180
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK, and
MICHAEL G. McMANUS, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
maintained rejection under 35 U.S.C. § 103(a) claim 1 over Dubois1 in view
of Stubler2 and Paulson3 and of claims 27 and 39 over Dubois in view of
Paulson. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
1 Dubois et al., US 5,840,247, issued November 24, 1998.
2 Stubler et al., US 2002/0086158 Al, published July 4, 2002.
3 Paulson, US 6,170,334 Bl, issued January 9, 2001.
Appeal 2017-000586
Application 13/585,180
THE INVENTION
Claims 1, 27, and 39 stand on appeal.4 The subject matter of the
claims on appeal relates to a method for protecting “[sjteel reinforcing
cables in concrete . . . against corrosion by injecting a carrier fluid and
corrosion inhibitors into interstitial spaces between the wires of the cable at
a first location along the cable and causing the fluid to pass through the
interstitial spaces between the wires of the cable to a second location along
the cable.” Specification filed August 14, 2012 (“Spec.”), Abstract.
Independent claims 1 and 27 are representative.
1. A method for use with a steel reinforcing cable
embedded in a member comprising concrete;
wherein the cable comprises an array of wires extending
along the concrete for providing reinforcement thereto;
wherein the wires are wound in a helix so as to hold them
as a confined twisted array with each wire butting against its
neighbors and held in contact with its neighbors by loads there
between generated by the tension on the confined twisted array;
wherein the cable is intimately surrounded by a covering
material which is engaged with a periphery of the cable so that
there are insufficient interconnected spaces between the cable
and the covering material to allow passage of fluid along the
cable between the cable and the covering material,
the method comprising:
exposing at least part of at least some of the wires
of the confined twisted array at a first location along the cable;
4 Claims 2-23, 28-34, 36-38, and 40 previously pending were canceled by
amendment. Appeal Brief filed February 25, 2016 (“Appeal Br.”), 2
(“Claims 2 to 23, 28 to 34, 36 to 38 and 40 are cancelled in an amendment
presented herewith.”), 16-18; Amendment with Appeal Brief filed February
25, 2016 (initialed by Examiner March 3, 2015, with notation “OK TO
ENTER: /WPB/”).
2
Appeal 2017-000586
Application 13/585,180
inserting a fluid into interstitial spaces between the
wires of the cable at the first location along the cable;
wherein said at least part of at least some of the
wires of the confined twisted array are exposed for said
insertion at said first location either at a confined twisted end of
the confined twisted array or at a side face of the confined
twisted array;
where the insertion occurs directly into the
interstitial spaces between the wires at said at least part of said
at least some of the wires;
and causing the fluid to pass through the interstitial
spaces between the wires of the cable to a second location along
the cable.
27. A method for use with a steel reinforcing cable
embedded in a surrounding covering material comprising
concrete or mortar or grout;
wherein the cable is intimately enclosed in and exterior
wires of the cable are engaged by the surrounding covering
material;
wherein the cable comprises an array of wires confined
together to form an elongate cable extending along the concrete
for providing reinforcement thereto;
the method comprising:
exposing the wires of the cable at a first location
along the cable;
introducing a liquid into interstitial spaces
between the exposed wires within the cable at the first location
along the cable;
wherein the liquid is different from the
surrounding covering material;
where the insertion occurs directly into the
interstitial spaces between the exposed wires',
causing the liquid to pass along the cable to a
second location along the cable;
3
Appeal 2017-000586
Application 13/585,180
and causing the liquid arranged to spread
outwardly from the cable to impregnate into the surrounding
covering material so as to generate an impregnated zone around
the cable.
Appeal Br. (Claims App’x) 16-20 (emphasis added).
DISCUSSION5
We are persuaded that the Examiner has failed to meet the Office’s
burden of establishing the unpatentability of the claims. For any ground of
rejection, “the [Ejxaminer bears the initial burden ... of presenting a prima
facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
Claims 1 and 39 each require, inter alia, “inserting a fluid into
interstitial spaces between the wires of the cable” and that “the insertion
occurs directly into the interstitial spaces between the wires.” Claim 27
similarly requires, inter alia, “introducing a liquid into interstitial spaces
between the exposed wires within the cable” and that “the insertion occurs
directly into the interstitial spaces between the exposed wires.”6
As disclosed in the Specification, “injection can occur at ends of the
cable where the wires are exposed so that the injection occurs directly into
the interstices between the wires” and “[alternatively, ... at the periphery of
5 In our discussion, we refer to the Specification, the Non-Final Office
Action issued March 31, 2015 (“Non-Final Act.”), the Appeal Brief, the
Examiner’s Answer issued August 12, 2016 (“Ans.”), and the Reply Brief
filed October 5, 2016 (“Reply Br.”).
6 In the event of further prosecution, Appellant and the Examiner may wish
to consider whether the recitation of “the insertion” in claim 27 has
sufficient antecedent basis to meet the requirement of § 112 that claims be
definite.
4
Appeal 2017-000586
Application 13/585,180
the cable requiring the fluid to penetrate from the periphery into the
interstices between the wires.” Spec. 13.7 The Specification indicates that
the technique with injection at the ends of the cable and the technique with
injection at the periphery are separate techniques in stating that “[bjoth
techniques have been shown to operate satisfactorily.” Id.
In both the rejection of claim 1 over Dubois in view of Stubler and
Paulson (Non-Final Act. 2-5; Ans. 2-5) and of claims 27 and 29 over
Dubois in view of Paulson (Non-Final Act. 11-15; Ans. 2-6), the Examiner
relies in the main on Dubois and Paulson.8
Dubois relates to a process for protecting reinforcements embedded in
a concrete mass against corrosion. The Examiner relies on Dubois’
disclosure of, inter alia, a method in which structure including a cable
intimately surrounded by a covering material, such as a cement grout, is
subjected to a protective fluid that penetrates cracks and micro-fissures in
the covering material along the length of the cable. Non-Final Act. 2-3
(citing Dubois col. 1,11. 5-10, 25-27, col. 3,11. 1-6, col. 3,1. 12-col. 4,1. 3),
see also Non-Final Act. 11-12. The Examiner finds Dubois to teach holes
drilled in concrete reinforced by the cable structure, but not such that at least
some of the wires of the cable are exposed such that the fluid is inserted
directly into interstitial spaces between the wires. Non-Final Act. 4 (citing
Dubois col. 2,11. 24-29); see also Ans. 2-3 (citing Dubois col. 2,11. 33-36,
46-48).
7 As filed, the Specification lacks pagination and, thus, we cite to pages
sequentially from the first page.
8 Stubler is relied on for its disclosure of prestressed cables as an assembly
of wires twisted together. Non-Final Act. 3^1 (citing Stubler 1-2).
5
Appeal 2017-000586
Application 13/585,180
Paulson relates to methods for inspecting reinforcing cables embedded
in prestressed concrete structure. The Examiner relies on Paulson’s
disclosure that it was conventional in the art at the time of the invention to
drill a view port into the concrete structure to allow visual inspection of
reinforcing cables embedded in prestressed concrete structures. Non-Final
Act. 4 (citing Paulson col. 3,11. 8-19). As described in Paulson, the purpose
of the visual inspection is to determine if the cable is still bearing load, i.e.,
is still under tension. Paulson col. 3,11. 11-14, 16-19.
The Examiner concludes that “[i]t would have been obvious to one of
ordinary skill in the art at the time of the invention to have modified the
method taught by Dubois, as modified by Stubler, by exposing at least some
part of the wires of the twisted array either at an end or at a side face of the
confined twisted array for the benefit of visually inspecting the condition of
the cable before treatment with the fluid” and that, in so doing, “the fluid
would be inserted directly into the interstitial spaces between the wires at the
exposed parts of the wires.” Non-Final Act. 4-5.
As highlighted by Appellant’s arguments, the Examiner’s factual
findings and reasoning are not well-founded due to the lack of a sufficient
basis for, inter alia, interstitial spaces between the wires of the reinforcing
cable and for the insertion of the fluid directly into the interstitial space
between the wires.
The Examiner fails to identify any sound basis for the use of cables
that have interstitial spaces between the wires, but merely assumes that these
would be present. Non-Final 3—4, 12. This deficiency is manifest in that the
Examiner simply relies on Dubois’ disclosure of the fluid flowing through
cracks and micro-fissures in the concrete as evidence fluid would also pass
6
Appeal 2017-000586
Application 13/585,180
through interstitial spaces between wires. Non-Final 3, 12. Further, we
discern no sufficient reasoning proffered by the Examiner for selecting or
modifying the reinforcing cable such that it has interstitial spaces between
wires of the cable rather than between, and in, the mortar surrounding the
cable. Non-Final 2-5, 11-13.
The Examiner, likewise, fails to identify any sound basis for a process
in which the fluid (or liquid) is inserted directly into an interstitial space
between wires of a cable. Non-Final 3—4, 12-13. As to exposing wires of a
cable at a side face, this would allow inspection, but contacting the cable in
this manner with the fluid (or liquid) has not been shown by the Examiner to
constitute insertion directly into an interstitial space between wires of a
cable, particularly where the Specification identifies such direct injection as
that occurring at the ends of cables into the interstices between the wires
forming the cable and contrasts it with injection at the periphery of a cable
when only a side face is exposed. Spec. 13. As to the Examiner’s reliance
on Paulson as teaching exposing the end of a cable for visual inspection, we
find no explicit teaching for visual inspection of an end and do not find the
Examiner’s inference of such reasonable in the absence of sufficient
explanation why, or how, the artisan would determine the tension of a cable
by visually inspecting the exposed end of the cable rather than at a point
intermediate the ends where tension can readily be observed.
Further, we are directed to no sufficient explanation how Paulson’s
method of visually inspecting “highly tensioned cables which are extended
through conduits embedded in the concrete” (Paulsen col. 3,11. 9-10),
understood to determine whether the cables were still under tension, would
commend itself for the inspection of cables that are firmly affixed to
7
Appeal 2017-000586
Application 13/585,180
surrounding cement grout, as taught by Dubois, and as maintained in the
proffered combination (Non-Final Act. 3—4, 12-14). Lacking an explanation
as to an alternative basis to tension by which to evaluate the cables during
inspection, on this record, the requisite motivation for the combination is
also lacking. See, e.g., Belden v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed.
Cir. 2015) (“[Ojbviousness concerns whether a skilled artisan not only could
have made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention.”).
On this record, the Examiner’s articulated reasoning falls short of that
necessary for a prima facie case. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not. . . resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.”); In re Sporck, 301 F.2d 686, 690 (CCPA 1962); see also Oetiker,
977 F.2d at 1445.
We decline to scour the record in the first instance for facts that might
support a prior art rejection of the claim on appeal, as our primary role is
review, not examination de novo.
DECISION
The Examiner’s decision rejecting claims 1, 27, and 39 is
REVERSED.
REVERSED
8