SORKIN, Felix

Patent Trials and Appeals Board

Nov 27, 2019

14944422 - (D) (P.T.A.B. Nov. 27, 2019)

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.
14/944,422 11/18/2015 Felix SORKIN GTI.010002 9677
100183 7590 11/27/2019
Adolph Locklar
Michael Locklar
4615 S.W. Freeway
Suite 630
Houston, TX 77027
EXAMINER
HOLLY, LEE A
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
11/27/2019 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 2019-002180
Application 14/944,422
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
JILL D. HILL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–21. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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.
Appeal 2019-002180
Application 14/944,422
2
CLAIMED SUBJECT MATTER
The claims are directed to a pocket former removal method and tool.
Claims 11 and 21, reproduced below, are illustrative of the claimed subject
matter:
11. A method for removing a pocket former from a concrete
member, the concrete member having a surface, the pocket
former having a pocket former extension, the concrete member
and the pocket former having a connection, the method
comprising:
a) supplying a pocket former removal tool, the pocket
former removal tool comprising:
a tool body, the tool body having a fulcrum, a first
end and a second end;
tines attached to the second end of the tool body; and
a handle, the handle attached to the first end of the
tool body;
b) positioning the pocket former removal tool such that the
fulcrum is in contact with the concrete member and the
tines are engaged with the pocket former extension; and
c) applying, while the tines are engaged with the pocket
former extension, a downward force to the handle to create
an upward force on the pocket former;
wherein the tool body is configured such that the fulcrum
engages the concrete surface and not the pocket former
during steps b) and c) and wherein the pocket former
engages the tool body at a point between the fulcrum and
the tines at a time during step c) when the pocket former
is partially removed from the concrete member.

21. A pocket former removal tool for removing a pocket
former from a concrete member, the concrete member having a
surface, the pocket former having a pocket former extension, the
concrete member and the pocket former having a connection, the
pocket former removal tool comprising:
a tool body, the tool body having a fulcrum, a first end and a
second end; and
tines attached to the second end of the tool body;
Appeal 2019-002180
Application 14/944,422
3
wherein the tool body is configured such that the fulcrum does
not engage the pocket former when the pocket former removal
tool is positioned such that the fulcrum engages the concrete
surface and the tines are engaged with the pocket former
extension; and
wherein the tool body is configured such that when the pocket
former is partially removed from the concrete member and the
tines are still engaged with the pocket former extension, the
pocket former will engage the tool body at a point between the
fulcrum and the tines.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sorkin
Witter
Williams
US 5,897,102
US 6,505,817 B1
US 7,040,602 B1
Apr. 27, 1999
Jan. 14, 2003
May 09, 2006
Sindt
Liou
US 2013/0263382 A1
US 2015/0014612 A1
Oct. 10, 2013
Jan. 15, 2015
REJECTIONS
Claim 21 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated
by any one of Sindt, Liou, Witter. Final Act. 2, 4, 5.
Claims 11–20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Sorkin and Williams. Final Act. 7.
OPINION
Anticipation
As Appellant acknowledges by arguing the anticipation rejections
together, the issues pertaining to the anticipation rejections of claim 21 are
substantially the same for each of the applied references. App. Br. 8–9.
Appellant takes issue with the Examiner’s comment that the prior-art tools
are “fully capable of being configured to” perform the functions recited in
Appeal 2019-002180
Application 14/944,422
4
the wherein clauses of claim 21. App. Br. 8–9; Final Act. 3, 5, 7; Reply. Br
8–9. Although the Examiner’s exact wording in this regard is not consistent
with the standards associated with anticipation, reading the rejection as a
whole, particularly in view of the Examiner’s clarification in the Answer, it
is clear that the Examiner did not intend to reject claim 21 based on making
any structural changes or reconfigurations to the structures disclosed in the
applied references. Ans. 10–11 (“. . . No such reconfiguring or modifying of
the structural limitation has been proposed.”). Rather, the Examiner
determined that, although the prior-art devices were depicted removing nails
or stakes, those prior-art devices were, without modification, reasonably
regarded as being configured to perform the recited functions associated
with a pocket former.
When a claim recites “configured to” language followed by a
description of use, function or operation, it generally implies the element
modified by that language possesses at least some structure such that it can
reasonably be regarded as made, designed, or adapted to perform that
function. In re Giannelli, 739 F.3d 1375, 1379–80 (Fed. Cir. 2014). Here,
the function involves, when the tools’ tines are engaged with the pocket
former extension, the tool’s fulcrum engaging the concrete, as opposed to
the pocket former, at some time, and the tool’s body engaging the pocket
former at some time during removal. See Figs. 3A–B. This interaction is
evident from the process depicted in Appellant’s Figures 3A–B. However,
claim 21 is not directed to the combination of a pocket former removal tool
and a pocket former, only a pocket former removal tool itself. That pocket
former removal tool of claim 21 is defined in terms of its cooperation with a
pocket former of some undefined size and shape, which may or may not
resemble that depicted in Appellant’s Figures.
Appeal 2019-002180
Application 14/944,422
5
To illustrate with a hypothetical, if a prior-art reference depicts a nail-
removal tool being used to remove a framing nail, it does not necessarily
define around that prior-art subject matter to claim a nail-removal tool
“configured to” remove a roofing or some other type of nail unless the
“configured to” language and the langue that follows requires or implies a
structural difference in the claimed nail-removal tool itself. The question is
what the prior-art removal tool can reasonably be considered as “configured
to” remove regardless of the particular type of nail it is expressly depicted as
operating upon in the prior-art reference. To prevent issuing a claim directed
to an old device predicated on a new use (MPEP § 2112(I)), the focus must
remain on the structures of the prior-art and claimed devices as opposed to
their illustrated or recited uses, respectively.
Here, as the Examiner points out, the pocket former removal tool of
claim 21 is defined largely in terms of the unclaimed, undefined pocket
former with which the removal tool is intended to cooperate or work upon.
Ans. 6, 9, 12. There is nothing wrong, per se, with this form of claiming, but
the question that must be posed is: what do these recitations related to the
function that the removal tool is configured to perform, or the device the tool
is intended to work upon, or cooperate with, tell us about the actual
structural configuration of the removal tool itself? See Ans. 6, 9, 11 (citing
MPEP §§ 2114, 2115). Appellant appears to agree with this formulation of
the issue (Reply. Br. 7 (“The present tool has a certain shape, or structure,
that is dictated by the structure of the device on which it is used”)), but fails
to apprise us as to what particular structure of the removal tool itself is
defined by the features of the unclaimed pocket former—the only subject
matter absent from the cited prior art. Reciting unclaimed subject matter
with which the claimed subject matter is intended to cooperate can, in
Appeal 2019-002180
Application 14/944,422
6
appropriate circumstances, certainly influence the scope of the subject
matter claimed. See, e.g., In re Man Machine Interface Technologies LLC,
822 F.3d 1282 (Fed. Cir. 2016) (defining a switch by the human thumb used
for activating it). However, in this case, because there is very little recited
related to the particulars of the pocket former, and on the record before us,
pocket formers represent a virtually unbounded class of subject matter, the
recitations here that are related to the pocket former provide very little
information about the structure of the claimed removal tool itself.
Our reviewing court has considered the situation where a broad class
of unclaimed subject matter is used to define the subject matter claimed in
Geneva Pharmaceuticals v. GlaxoSmithKline, 349 F.3d 1373 (Fed. Cir.
2003). The court suggested indefiniteness issues might arise in such
situations because the potential infringer is unduly burdened with having to
consider a vast and open-ended category of unclaimed subject matter in
order to determine the possibility of infringement. Ultimately, the court
adopted a broad construction, wherein the claim is satisfied so long as there
can be presumed to be any instance of that unclaimed subject matter in
existence that satisfies the claim language.
Here, the Examiner provides uncontroverted evidence that a pocket
former may have a form substantially similar to that of a conventional nail or
stake, like those removed by the applied prior-art references, and may thus
be pried by tools intended to cooperate with nails or stakes. Ans. 7–8
(reproducing a portion of the Polylok catalog). We have no reason to
believe, and indeed Appellant does not appear to contest, that given the wide
variety of pocket formers available, as illustrated in the Polylok catalog,
there is not one of them in existence that would, when removed by the cited
prior-art removal tools, result in the functional language of claim 21 being
Appeal 2019-002180
Application 14/944,422
7
satisfied. Appellant does not provide sufficient arguments or evidence to
explain or demonstrate the technical reasons why the cited prior-art tools
could not function to remove, by virtue of the same leverage used for
removing nails, a pocket-former.
Appellant contends, “pocket formers include a relatively large
frustoconical cup, which forms the desired ‘pocket’ in a molded concrete
form.” Reply. Br. 6. First, Appellant does not provide any evidence to
support the assertion that a relatively large frustoconical cup is an inherent
feature of pocket formers. Certainly something capable of forming a pocket
must be present for something to reasonably be considered a “pocket
former.” However, we see no reason why the cylindrical portion or head of a
nail-like or stake-like structure would not also form a pocket in concrete.
Appellant’s position that a relatively large frustoconical cup is inherently
required of all pocket formers directly conflicts with the only evidence on
the subject we have before us, which is the Polylok catalog provided by the
Examiner. Second, and in any case, this argument is not on point because it,
at most, only illustrates a distinction between unclaimed subject matter and
the prior art as opposed to the subject matter actually claimed and the prior
art.
For the foregoing reasons, we sustain the Examiner’s anticipation
rejections.

Obviousness
Regarding the obviousness rejection of representative method claim
11 (see 37 C.F.R. § 41.37(c)(1)(iv)), the Examiner relies on Sorkin as
disclosing a pocket former and method for its removal, albeit without a
removal tool. Final Act. 8–9. Appellant does not raise any issues concerning
Appeal 2019-002180
Application 14/944,422
8
the Examiner’s analysis of Sorkin. The Examiner relies on Williams as
disclosing a stake removal tool in the concrete arts and concludes that, as the
gripping end of Sorkin’s pocket former resembles the gripping end of a
stake, it would have been obvious to use Williams’s tool to remove Sorkin’s
pocket former to improve leverage. Final Act. 8–9.
Appellant contends that “if the Williams device were used in an
attempt to remove a pocket former, the [fulcrum of the] Williams device
would engage the pocket former [during steps b and c].”2 App. Br. 9. This
argument, like that rejected above, is premised on the pocket former having
some inherent size or shape, none of which is recited in claim 11. Although
“there is no teaching or suggestion in Williams regarding the space between
the engagement point of the fulcrum and the stake,” the Examiner has made
of record, via the Polylok catalog, that pocket formers come in various sizes
and shapes. If the Williams removal tool were applied to a pocket former,
even if the pocket former were of the particular construction described in
Sorkin,3 we see no reason why this limitation relating to a gap between the
pocket former and fulcrum would not incidentally be satisfied when the
removal tool and pocket former are sized suitably for doing so. Of course,
the fulcrum would have no removal effect, or would just work to pry the

2 We have added language to Appellant’s argument to reflect that of the
claim limitation believed to be argued. We also will interpret the preclusion
from contact with the pocket former as not precluding contact with the
pocket former extension which seemingly contradictorily appears to be
recited as a part of the pocket former in claim 11 (“the pocket former having
a pocket former extension”).
3 As the Examiner points out, “[i]t is well-established that a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012); Ans. 12–13.
Appeal 2019-002180
Application 14/944,422
9
pocket former itself apart, if the fulcrum were placed on a radially extending
part of the pocket former being removed. One skilled in the art would have
the mechanical skill to understand that changes to dimensions could be made
to arrive at a working device. Powers-Kennedy Co. v. Concrete Co., 282 US
175, 185 (1930); accord In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1382 (Fed. Cir. 2007) (“One skilled in the art would size the
components [] appropriately for [the] application.”).
Regarding engagement between the pocket former and tool body, in
the final wherein clause of claim 11, Appellant contends that it was
unreasonable for the Examiner to regard bight 54 (shown engaging the stake
during removal in Williams Fig. 10) as part of the tool body because it is
part of the tines. App. Br. 10–11; Reply. Br 10. However, Appellant does not
direct our attention to any specific language in claim 11 that precludes such
an interpretation. Williams itself refers to teeth 50, 52 which are reasonably
regarded as “tines,” and never described as including bight 54. Appellant
does not apprise us of any specific reason this bight “would never engage a
pocket former in the claimed manner.” App. Br. 10.
The Examiner additionally characterizes the requirements of this final
wherein clause as “optional.” Ans. 18 (citing MPEP § 2111.04(I). It is
perhaps more appropriately characterized as conditional or contingent in that
it “only needs to occur if a condition precedent is met.” See MPEP
§ 2111.04(II) (discussing Ex parte Schulhauser, Appeal 2013-007847
(PTAB April 28, 2016) (precedential)). Nevertheless, we also agree with the
Examiner’s alternative analysis of this limitation in that, under the broadest
reasonable interpretation, method claim 11 is met by carrying out the
affirmative manipulative steps, with a tool body configured as recited,
without regard to what happens if the pocket former is partially removed—
Appeal 2019-002180
Application 14/944,422
10
something not necessarily required by the recited manipulative steps. Ans.
18–19; MPEP § 2111.04(II).
For the foregoing reasons we sustain the Examiner’s obviousness
rejection of claims 11–20.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21 102(a)(1) Sindt 21
21 102(a)(2) Liou 21
21 102(a)(1) Witter 21
11–20 103 Sorkin, Williams 11–21
Overall
Outcome
11–21

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED