Sorkin, Felix

Patent Trials and Appeals Board

Oct 1, 2020

15212629 - (D) (P.T.A.B. Oct. 1, 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.
15/212,629 07/18/2016 Felix Sorkin GTI.099002 5919
100183 7590 10/01/2020
Adolph Locklar
Michael Locklar
4615 S.W. Freeway
Suite 630
Houston, TX 77027
EXAMINER
FONSECA, JESSIE T
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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 2019-003719
Application 15/212,629
Technology Center 3600
Before DANIEL S. SONG, BRANDON J. WARNER, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–7, 10–17, and 20–24. Non-Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a compact anchor for a post-tensioned
concrete segment. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An anchor assembly for a post-tensioned concrete segment
comprising:
a compact anchor, the compact anchor including a wedge
extension having a frustoconical inner surface, the frustoconical
inner surface having an inner diameter, the compact anchor
formed from steel having no lead; and
a compact wedge, the compact wedge formed from steel
having no lead.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Howlett US 3,935,685 Feb. 3, 1976
Sorkin US 6,761,002 B1 July 13, 2004
Hayes US 2006/0096196 A1 May 11, 2006

1 In this Decision, we refer to (1) the Examiner’s Non-Final Office Action
dated June 27, 2017 (“Non-Final Act.”) and Answer dated February 5, 2018
(“Ans.”), and (2) Appellant’s Appeal Brief dated September 22, 2017
(“Appeal Br.”).
2 We use the term “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.
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REJECTIONS
1. Claims 1–6 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hayes and Howlett. Non-Final Act. 2.
2. Claims 7, 10–17, and 20–24 stand rejected under 35 U.S.C. § 103
as being unpatentable over Hayes, Howlett, and Sorkin. Non-Final Act. 5.
OPINION
Rejection 1: Claims 1–6 as Unpatentable over Hayes and Howlett
Claims 1, 4, 5, 6
Appellant argues claims 1, 4, 5, and 6 as a group. Appeal Br. 8–11.
We select independent claim 1 as the representative claim, and claims 4, 5,
and 6 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Claims 2 and 3
are discussed separately below.
The Examiner finds that Hayes discloses all of the limitations of claim
1 except for an anchor and wedge which are formed from “steel having no
lead.” Non-Final Act. 2–3. For this missing limitation, the Examiner finds
that Howlett discloses an anchor (i.e., anchor member 21) and wedge 49. Id.
at 3 (citing Howlett, 1:49–57, Figs. 1–2). The Examiner finds that Howlett
discloses the anchor member may be formed from (1) C1040 (composed of
iron, manganese, carbon, sulfur and phosphorus), or (2) or A36 (composed
of iron, carbon and manganese). Id. The Examiner reasons it would have
been obvious to one of ordinary skill in the art “to modify the anchor
assembly comprising the anchor and wedge(s) of [Hayes] to be made of a
steel material having no lead such as taught by [Howlett] in order to provide
a known material for use with a compact anchor and compact wedge(s) that
is strong and durable.” Id.
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Appellant argues that the Examiner’s rejection is erroneous for several
reasons. First, Appellant argues that because Hayes’ anchor body is formed
from a single cast part, whereas Howlett’s assembly anchor has an anchor
plate and separate conduit of different hardnesses, one of ordinary skill the
art would not modify Hayes’ cast anchor body having a single hardness with
Howlett’s anchor (i.e., bearing plate and conduit) which has different
hardnesses. Appeal Br. 8–9. Second, Appellant argues that Hayes’ cast
anchor “is formed from a single cast metal structure that already includes a
load-bearing basal surface positioned to contact the concrete structure for
post-tension reinforcement,” and that “[a]dding a bearing plate would
prevent Hayes from operating as designed.” Id. at 9.
Appellant’s arguments are not persuasive. The Examiner finds that
Hayes discloses all of the limitations of claim 1 except for lead-free steel,
and relies on Howlett solely to teach an anchor comprising lead-free steel.
Non-Final Act. 2–3 (citing Howlett, 8:61–68); Ans. 3. Contrary to
Appellant’s arguments, the Examiner does not propose modifying Hayes’
assembly to use Howlett’s bearing plate. Appellant does not address the
rejection as articulated by the Examiner, and, thus, does not show error by
the Examiner.
Third, Appellant argues that the Examiner’s reasoning “for combining
Hayes and Howlett, namely that steel having no lead is strong and durable, is
not supported by the disclosure of either Hayes or Howlett.” Appeal Br. 10.
Appellant’s argument that the Examiner’s articulated reasoning is not found
explicitly in the references themselves is not an adequate basis for reversal.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (holding that
when the teaching-suggestion-motivation test is applied as a rigid and
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mandatory formula, it is incompatible with the Court’s precedent). Here, we
disagree with Appellant’s argument that the Examiner has not made explicit
the reason Hayes and Howlett can be combined. The Examiner sufficiently
reasons that Hayes discloses that it is known in the art to form an anchor out
of iron or similar cast materials, that the anchor and wedge segments may be
made of any type known in the art, and that Howlett’s steel material is well
known to be an alloy of iron, which is inherently stronger than iron alone.
Ans. 4 (citing Hayes ¶¶ 32, 51). Thus, in view of the record before us, the
Examiner’s articulated reasoning has rational underpinnings.
For the reasons above, the Examiner’s rejection of independent claim
1 is sustained. Claims 4, 5, and 6 fall with claim 1.

Claims 2 and 3
Claims 2 and 3 recite that the compact anchor and compact wedge “is
formed by cold heading,” respectively.
The Examiner finds that claims 2 and 3 are each directed to the
product of the anchor assembly rather than to a method. Ans. 4; Non-Final
Act. 4, 14. The Examiner states:
[E]ven though product-by-process claims are limited by and
defined by the process, determination of patentability is based on
the product itself. The patentability of a product does not depend
on its method of production. If the product in the product-by-
process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product
was made by a different process. In re Marosi, 710 F.2d 799,
218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695,
227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
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Ans. 4; Non-Final Act. 14. The Examiner reasons that one of ordinary skill
in the art would recognize that
cold heading is one of finite number of techniques for forming
metal anchor assemblies such as described in the rejection of
claims 20–21 directed to a method of cold heading. Applicant
has not disclosed unexpected results or characteristics in cold
heading an anchor assembly. In the rejection of claims 20–21,
Examiner stated that cold forging allows for the forming of parts
that require little finishing and is less intensive to produce.
Examiner recognizes that there are pros and cons when
comparing cold heading vs casting, however, there appears to be
no new or unexpected results in forming the anchor from cold
heading. Examiner submits that the end product formed by cold
heading vs casting (after finishing) would be expected to perform
in a similar manner.
Ans. 5. In connection with the rejections of claims 20–21 (which have the
same limitations, albeit in the context of a method), the Examiner states “[t]o
substitute one known method for another would been an obvious matter of
design choice to one of ordinary skill in the art before the effective filing
date of the claimed invention.” Non-Final Act. 15.
Appellant argues that the Examiner’s rejection is erroneous because,
even if dependent claims 2 and 3 are product-by-process claims, the
Examiner has failed to properly construe the structure implied by the alleged
process limitation “wherein the compact anchor is formed by cold heading.”
Appeal Br. 11. Applicant submits that the products-by-process of claims 2
and 3 are “patentably distinct from what was known in the art. Hayes
teaches a cast anchor body and Howlett relies on the difference in the
relative malleabilities (or, conversely, relatively hardnesses) of the plate and
the conduit to form a functional anchor.” Id. Appellant argues:
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The material from which anchor plate 22 of Howlett is formed is
not substitutable into the teachings of Hayes. Steel cannot be
used to make a cast part without first being melted. Sorkin
Declaration, ¶¶ 4, 8, and 9. If melted, a piece of rolled steel
cannot fairly be referred to as “rolled steel” or as “roll-formed
material” as rolling refers only to the method of manufacture of
the steel part or material. Sorkin Declaration, ¶9. A part or
material cannot be both cast and rolled or roll-formed as these
methods of manufacture are mutually exclusive. Id. The
inclusion of a relatively hard anchor plate combined with a
relatively malleable conduit is not possible in a single cast metal
structure. Because it is formed from a single cast metal structure,
no part of the anchor taught by Hayes can be formed in the
manner taught by Howlett. For at least these reasons, one having
ordinary skill in the art would not combine the teachings of
Howlett with the cast anchor of Hayes, nor would one use the
dual materials of Howlett in the cast anchor of Hayes.
Id. at 12.
Appellant’s arguments are not persuasive because Appellant does not
address the rejection as articulated by the Examiner. Appellant does not
address the Examiner’s conclusion that “one of ordinary skill in the art
would recognize that cold heading is one of finite number of techniques for
forming metal anchor assemblies.” Ans. 5; Non-Final Act. 14–15; KSR, 550
U.S. 398 at 417, 422 (stating that “if a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill” and a “person
of ordinary skill is also a person of ordinary creativity, not an automaton”).
The Examiner states that “cold forging allows for the forming of parts that
require little finishing and is less intensive to produce,” that “there are pros
and cons when comparing cold heading [versus] casting,” that “there appears
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to be no new or unexpected results in forming the anchor from cold heading”
and “the end product formed by cold heading vs casting (after finishing)
would be expected to perform in a similar manner.” Ans. 5; Non-Final Act.
15. Further, Appellant has not disclosed any unexpected results or structural
characteristics from cold heading an anchor assembly that would patentably
distinguish a compact anchor and a compact wedge formed by known cold
heading from those formed using other known techniques.
For the reasons above, the rejection of claims 2 and 3 is sustained.

Rejection 2: Claims 7, 10–17, and 20–24
as Unpatentable over Hayes, Howlett, and Sorkin
Claims 7 and 15
Appellant argues that the Examiner’s rejection of independent claims
7 and 15 is erroneous for the same reasons presented above in connection
with claim 1. Appeal Br. 13. As discussed in Rejection 1, Appellant’s
arguments are not persuasive and, thus, the rejection of claims 7 and 15 is
sustained.

Claims 10, 11, 20, and 21
Appellant argues that the Examiner’s rejection of claims 10, 11, 20,
and 21 is erroneous for the same reasons presented above in connection with
claims 2 and 3. Appeal Br. 13. As discussed in Rejection 1, Appellant’s
arguments are not persuasive and, thus, the rejection of claims 10, 11, 20,
and 21 is sustained.

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Claims 12–17, 22, 23, and 24
Because Appellant does not address the Examiner’s rejection of
claims 12–17, 22, 23, and 24, the rejection of these claims is sustained.
CONCLUSION
The Examiner’s rejection of claims 1–6 as being unpatentable over
Hayes and Howlett is AFFIRMED.
The Examiner’s rejection of claims 7, 10–17, and 20–24 as being
unpatentable over Hayes, Howlett, and Sorkin is AFFIRMED.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6 103 Hayes, Howlett 1–6
7, 10–17,
20–24
103 Hayes, Howlett,
Sorkin
7, 10–17,
20–24

Overall
Outcome
1–7, 10–17,
20–24

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