Felix Sorkin

Patent Trials and Appeals Board

May 13, 2020

2019006304 (P.T.A.B. May. 13, 2020)

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.
15/887,492 02/02/2018 Felix Sorkin GTI.006003 1014
100183 7590 05/13/2020
Adolph Locklar
Michael Locklar
4615 S.W. Freeway
Suite 630
Houston, TX 77027
EXAMINER
WALRAED-SULLIVAN, KYLE
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
05/13/2020 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):
docket@adolphlocklar.com
docket@al-ip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FELIX SORKIN

Appeal 2019-006304
Application 15/887,492
Technology Center 3600
____________

Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12, 15, and 17–19.2 We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Felix Sorkin.
Appeal Br. 4.
2 Claims 13, 14, and 16 have been withdrawn. See Amendment filed
Mar. 5, 2019. In the Appeal Brief, Appellant indicates that claims 11, 13,
and 16 have been withdrawn. See Appeal Br. 6. We consider the reference
to claim 11 instead of claim 14 to be a typographical error.
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BACKGROUND
The Specification discloses that “the present invention relates
generally to post-tension anchorage systems. More particularly, the present
invention relates to caps that are used for sealing an exposed end of an
anchor having a tendon extending through the anchor.” Spec. ¶ 2.
CLAIMS
Claims 1 and 19 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A system for inhibiting fluid intrusion into a post-
tensioned concrete member comprising:
a concrete member;
a tensioning end anchor embedded in the concrete member
and having
an interior channel therethrough, the tensioning end
anchor including a front extension and being positioned within
the concrete member such that the front extension is generally
positioned at an edge of the concrete member;
a tendon embedded in the concrete member and threaded
through the interior channel of the tensioning end anchor such
that a tensioning end portion of the tendon extends from the
tensioning end anchor; and
a removable cap, the removable cap including a cap body,
the cap body having an inner bore therethrough, the inner bore
adapted to allow the tendon to pass through the cap body, the
removable cap adapted to receive the tensioning end portion of
the tendon through the inner bore and to abut and cover the end
of the front extension of the tensioning end anchor so as to inhibit
the intrusion of fluid into the interior channel while allowing the
tensioning end portion of the tendon to pass through the cap
body.
Appeal Br. 13.
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Application 15/887,492

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REJECTIONS
1. The Examiner rejects claims 1–5, 10–12, 15, and 17–193 under 35 U.S.C.
§ 102(a)(1) as anticipated by Campbell.4
2. The Examiner rejects claims 6–8 under 35 U.S.C. § 103 as unpatentable
over Campbell in view of Reinhardt.5
3. The Examiner rejects claim 9 under 35 U.S.C. § 103 as unpatentable over
Campbell in view of Rodriguez.6
DISCUSSION
Anticipation
Each of independent claims 1 and 19 recites a removable cap that is
adapted to receive the tensioning end portion of the tendon
through the inner bore and to abut and cover the end of the front
extension of the tensioning end anchor so as to inhibit the
intrusion of fluid into the interior channel while allowing the
tensioning end portion of the tendon to pass through the cap
body.
Appeal Br. 13, 16–17. The Examiner finds that Campbell discloses a
removable cap 24 as recited in these claims. Final Act. 3–4. More
specifically, in relevant part, the Examiner finds that element 24 abuts and
covers “the end of the front extension (27, 28) of the tensioning end anchor
(12) so as to inhibit the intrusion of fluid (24 inhibits intrusion of fluid, as no

3 The Examiner makes clear that claim 19 is included in this rejection and is
rejected “in similar fashion to that of claim 10.” Advisory Act. 3 (mailed
May 17, 2019).
4 Campbell, US 2002/0178665 A1, pub. Dec. 5, 2002.
5 Reinhardt, US 4,773,198, iss. Sept. 27, 1988.
6 Rodriguez, US 6,354,596 B1, iss. Mar. 12, 2002.
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Application 15/887,492

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perfect seal is required) into the interior channel (14).” Id. (citing Campbell
Fig. 7).
As discussed below, we are persuaded by Appellant’s argument that
the Examiner has not established that Campbell discloses a system including
a cap with all of the features claimed. See Appeal Br. 9–12.
Our analysis here is guided by the appropriate interpretation of the
claims. We determine the scope of the claims in patent applications based
upon giving claims “their broadest reasonable interpretation consistent with
the specification” and “in light of the specification as it would be interpreted
by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). We first note that the claims require a cap
that is “adapted” to perform certain functions, including “to abut and cover
the end of the front extension of the tensioning end anchor so as to inhibit
the intrusion of fluid into the interior channel while allowing the tensioning
end portion of the tendon to pass through the cap body.” Claim language
including the phrase “adapted to” generally requires more than a mere
capability of performing the claimed function, but requires that the structure
is designed or configured to accomplish this purpose. See, e.g., Aspex
Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d. 1335, 1349 (Fed.
Cir. 2012) (noting that claim language “configured to” is construed more
narrowly than “capable of,” and holding that claim language including the
phrase “adapted to” is to be construed consisted with “configured to”
language and requires that the structure must be “designed or configured to
accomplish the specified objective, not simply that [it] can be made to serve
that purpose”).
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Here, we find that the broadest reasonable interpretation of the claim
requires a cap that is designed to perform the function of inhibiting fluid
flow into the interior channel while also allowing the tensioning end portion
of the tendon to pass through the cap body. This is consistent with the
Specification, which states that the disclosure “provides for a system for
inhibiting fluid entry into a tendon for use in a post-tensioned concrete
member during the construction cycle to protect the tendon from outside
elements,” and may include a cap used for “inhibiting fluid intrusion into the
interior channel of the tensioning end anchor.” Spec. ¶¶ 7, 8.
Under this interpretation of the claim, we agree with Appellant that
the Examiner has not identified any cap in Campbell that is designed to
inhibit the intrusion of fluid into the interior channel as claimed. The
Examiner finds that “Campbell need only be capable of performing the
intended function” of the claim, and that Campbell’s “Fig[ure] 1 clearly
shows cap 24 on an exterior portion of the system. Clearly, cap 24 is a
physical object through which water may not flow.” Advisory Act. 2. We
see three problems with this rationale. First, the Examiner interprets the
claim to only require the capability of inhibiting fluid flow, which is
unreasonably broad for the reasons discussed above. Second, the Examiner
seems to indicate that the claimed cap need only inhibit fluid flow in some
direction to comport with the claim language. However, the claim requires
that the cap inhibits “the intrusion of fluid into the interior channel.” The
fact that Campbell’s element 24 is located adjacent to an exterior portion of
the system in Figure 1 is not sufficient to show that the element inhibits any
flow into the interior channel. Rather, one of ordinary skill in the art would
understand that Campbell’s cap does not cover any portion of the opening
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into the interior of the channel so as to inhibit flow into the channel. Finally,
the Examiner has not identified any disclosure in Campbell that shows the
cap actually inhibiting flow into the interior channel. Rather, the Examiner
relies only Figure 1 without citation to Campbell’s written disclosure.
Alternatively, in the Answer, the Examiner finds that Campbell’s cap
member 24 exerts pressure on wedges 20 and 22, such that the cap member
indirectly inhibits fluid intrusion into the interior of the channel. Ans. 4.
We also find that this interpretation of Campbell does not address the claim
language at issue. The claimed cap is configured to “abut and cover the end
of the front extension of the tensioning end anchor so as to inhibit the
intrusion of fluid into the interior channel.” We agree with Appellant that
the Examiner’s alternative findings regarding Campbell’s cap fail to explain
how Campbell’s cap is configured to cover the front extension so as to
inhibit flow. See Reply Br. 3.
Based on the foregoing, we do not sustain the rejection of either
independent claim. For the same reasons, we do not sustain the anticipation
rejection of dependent claims 2–5, 10–12, 15, 17, and 18.
Obviousness
With respect to the obviousness rejections of dependent claims 6–9,
the Examiner does not provide additional findings or reasoning in these
rejections that would cure the deficiency in the rejection of claim 1.
Accordingly, we also do not sustain the rejections of claims 6–9.

CONCLUSION
We REVERSE the rejections of claims 1–12, 15, and 17–19.
In summary:
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Application 15/887,492

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 10–12,
15, 17–19
102(a)(1) Campbell 1–5, 10–12,
15, 17–19
6–8 103 Campbell,
Reinhardt
6–8
9 103 Campbell,
Rodriguez
9
Overall
Outcome
1–12, 15,
17–19

REVERSED