Ex Parte 7779581 et al

Patent Trials and Appeals Board

Jun 19, 2014

95001635 - (D) (P.T.A.B. Jun. 19, 2014)

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.
95/001,635 05/26/2011 7779581 766P001-RXE 6004
42754 7590 06/20/2014
Nields, Lemack & Frame, LLC
176 E. Main Street
Suite #5
Westborough, MA 01581
EXAMINER
DAWSON, GLENN K
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/20/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
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.
90/009,907 05/04/2011 7779581 766P001-RX 4242
42754 7590 06/20/2014
Nields, Lemack & Frame, LLC
176 E. Main Street
Suite #5
Westborough, MA 01581
EXAMINER
DAWSON, GLENN K
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/20/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

ENGINEERED PLASTICS, INC.
Requester, Cross-Appellant, Respondent

v.

ADA SOLUTIONS, INC.
1

Patent Owner, Appellant, Respondent
____________________

Appeal 2014-001732
Reexamination Controls 95/001,635 and 90/009,907
2

Patent US 7,779,581 B2
3

Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON APPEAL

1
ADA Solutions, Inc. is the Patent Owner and the real party in interest
(Appeal Brief of Patent Owner 3).
2
These Reexamination Controls were merged in Decision, Sua Sponte, to
Merge Reexamination Proceedings, mailed December 20, 2011.
3
Patent US 7,779,581 B2 (hereinafter "the '581 patent") issued August 24,
2010 to Flaherty et al.
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STATEMENT OF THE CASE
Claims 1-50 are subject to reexamination and stand rejected (RAN
4
1).
The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315 from the
Examiner's rejections of claims 46, 47, 49 and 50 (ABPO 1). Because the
Patent Owner appeals only claims 46, 47, 49 and 50, claims 1-45 and 48 also
subject to reexamination but not appealed remain finally rejected (see RAN
8-13 and rejections identified therein). In addition to its various briefs, the
Patent Owner has submitted a Declaration of John Flaherty and a
Declaration of Cecil Huey, Jr. The Requester also cross-appeals under 35
U.S.C. §§ 134(c) and 315 from the Examiner's refusal to adopt certain
proposed rejections (CABR 2-3). In addition to its various briefs, the
Requester has submitted a Declaration of Daniel Frey and a Declaration of
Kenneth Szekely. We have jurisdiction under 35 U.S.C. §§ 134(b) and 315.
We are also informed that the '581 patent is involved in the legal
action ADA Solutions, Inc. v. Engineered Plastics, Inc., et al., Civil Action
No. 1:10-cv-11512-NMG (D. Mass.), which has been stayed (ABPO 3).
We AFFIRM with respect to the Appeal of the Patent Owner. The
Cross-Appeal of the Requester is moot and we decline to reach the same.

4
We abbreviate the documents cited herein as follows:
1. Right of Appeal Notice = RAN
2. Appeal Brief of Patent Owner = ABPO
3. Cross-Appeal Brief of Requester = CABR
4. Rebuttal Brief of Requester = Reb. Br. R
5. Respondent Brief of Requester = Res. Br. R
6. Detailed Request for Inter Partes Rexamination = Request
The Examiner's Answer incorporates by reference the RAN. Thus, we cite
to the same.

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THE INVENTION
The '581 patent is directed to a replaceable, wet-set tactile warning
surface unit and a method of installing the same. The sole independent
claim 46 is directed to a method of installing and reads as follows (ABPO
Claims App'x, italics added):
46. A method of installing a replaceable, wet-set
tactile warning surface unit, comprising:
providing the unit, the unit having a body defining an
upper surface and a lower surface, the body defining a series of
raised projections on its upper surface, and defining one or
more spaced through-holes from the upper surface to the lower
surface, in which the raised projections are spaced from one
another and the through-holes are located between projections;
and
a number of anchor members equal to the number of
throughholes coupled to the lower surface of the unit member
directly below the through-holes by an equal plurality of
fasteners that pass through the through-holes; wherein
the body defines a perimeter flange that is thicker than
the rest of the body and extending from the lower surface, a
plurality of spaced slots passing from an exterior portion of the
perimeter flange to an interior portion that allow air to escape
from underneath the unit when it is installed in fresh concrete,
and wherein
the lower surface of the body surrounding each of the
through-holes defines a downwardly-protruding lower
projection; and
placing the unit into fresh concrete and applying force to
the top of the unit to embed the unit in the concrete such that
the unit edges are approximately flush with the top surface of
the concrete.

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ISSUES
The Patent Owner appeals
5
the Examiner's rejections of the following
claims under 35 U.S.C. § 103(a) over the noted combination of references:
1. Claim 46 as obvious over Trafixigns '483
6
and ADA CIP.
7

2. Claim 46 as obvious over Trafixigns '483 and Boghossian.
8

3. Claim 46 as obvious over Trafixigns '483 and Szekely.
9

4. Claims 46 and 47 as obvious over Trafixigns '483 and
Wehmeyer.
10

5. Claims 46 and 47 as obvious over Trafixigns '483 and
Llewellyn.
11

6. Claims 46 and 47 as obvious over Szekely and Trafixigns '483.
7. Claims 49 and 50 as obvious over either Trafixigns '483 or
Trafixigns '732,
12
in view of ADA CIP.
8. Claims 49 and 50 as obvious over either Trafixigns '483 or
Trafixigns '732, in view of Boghossian.

5
In its Appeal Brief, the Patent Owner also appeals rejection of claim 49 as
obvious over either Trafixigns '483 or Trafixigns '732 in view of BART
(ABPO 6). However, it is not apparent where in the record this rejection has
been made by the Examiner and the Patent Owner does not submit any
arguments regarding this rejection. Hence, inclusion of this rejection in the
Appeal Brief appears to be made in error.
6
Austl. 21,483/35 (October 3, 1935).
7
ADA Solutions, Inc. Cast-in-Place Truncated Dome Detectable Warning
System Products (Nov. 18, 2005).
8
US 2007/0269264 A1 (Nov. 22, 2007).
9
US 5,303,669 (Apr. 19, 1994).
10
US 7,674,066 B2 (Mar. 9, 2010).
11
UK 486,128 (May 31, 1938).
12
Austl. 433,732 (Aug. 20, 1935).
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9. Claims 49 and 50 as obvious over either Trafixigns '483 or
Trafixigns '732, in view of Szekely.
10. Claims 49 and 50 as obvious over either Trafixigns '483 or
Trafixigns '732, in view of Llewellyn.
11. Claims 49 and 50 as obvious over Szekely and either Trafixigns
'483 or Trafixigns '732, in view of ADA CIP.
12. Claim 46 as obvious over Trafixigns '732 and ADA CIP.
13. Claim 46 as obvious over Trafixigns '732 and Boghossian.
14. Claim 46 as obvious over Trafixigns '732 and Szekely.
15. Claims 46 and 47 as obvious over Trafixigns '732 and Wehmeyer.
16. Claim 46 and 47 as obvious over Trafixigns '732 and Llewellyn.
17. Claims 46 and 47 as obvious over Szekely and Trafixigns '732.

The Requester cross-appeals the Examiner's decision not to adopt the
proposed rejection of claims 49 and 50 under 35 U.S.C. § 103(a) as obvious
over Trafixigns '732 (CABR 4; Reb. Br. R 4).
13

ANALYSIS
Only those arguments made in the briefs of record in this appeal have
been considered. Other arguments not made or those not properly presented
to the Board have not been considered and are deemed to be waived. See 37

13
The Requester actually cross-appealed numerous other proposed rejections
that were not adopted by the Examiner (CABR 4; Reb. Br. R 4). However,
these other rejections were directed to claims 17 and 48 which are not
appealed by the Patent Owner and remain finally rejected. Moreover,
whereas the cross-appealed rejection based on Trafixigns '732 also included
claim 48, this claim was not appealed by the Patent Owner.
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C.F.R. § 41.67(c)(1)(vii). We also address the appealed rejections in an
order that differs from that presented by the involved parties.

Rejection 4
The Examiner rejects claims 46 and 47 as obvious over the
combination of Trafixigns '483 and Wehmeyer, the Examiner incorporating
by reference pages 85-90 of the Request (RAN 10, 50). Thus, the position
of the Examiner is that Trafixigns '483 discloses the tactile warning surface
unit with anchors as recited in independent claim 46 (Request 89). The
Examiner further finds that Wehmeyer discloses installation of such a device
in wet concrete rather than in hardened concrete (id. citing Wehmeyer col. 2,
ll. 36-44; col. 6, ll. 17-23). The Examiner concludes that:
one skilled in the art would have still found it obvious to
include the teaching of Wehmeyer of setting the tile of
Trafixigns into wet cement in a flush condition for ease of
installation in a new substrate while preventing tripping or
unnecessary forces from traffic.
(RAN 22).
We find no error in the Examiner's findings and conclusion.
The Patent Owner initially submits arguments regarding Trafixigns
'483 and Trafixigns '732 together, collectively referring to them as
"Trafixigns." (ABPO 7-13). We address the Patent Owner's arguments as
they pertain to Trafixigns '483, which is relied upon in Rejection 4.
Firstly, the Patent Owner observes that claim 46 requires the anchor
members to be coupled to the body so that these components are embedded
together into the fresh concrete (ABPO 8). The Patent Owner argues that
"Trafixigns is installed by first embedding the anchors into concrete and
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then placing then attaching the plate to the anchors using bolts." (id. at 8-9,
emphasis in original). However, this line of reasoning is unpersuasive
because Trafixigns '483 is silent as to the method and order of its
installation.
14

In contrast to Trafixigns '483 which is silent as to the method and
order of its installation, Wehmeyer specifically discloses that:
textured tile units [] can be detachably installed and set into
position on or in freshly poured or on hardened concrete or
other non-hardened or hardened material, such as asphalt, to be
incorporated into a surface to provide visual and tactile
warnings to the visually impaired or handicapped, or to other
pedestrians in need of warning.
(Wehmeyer, col. 2, ll. 36-44, emphasis added).

In addition, as to the coupling of the anchor members and placement
of the same with the body/panel in fresh concrete, Wehmeyer specifically
discloses that:
in a preferred mode of installation, the tactile panel (102) with
lugs (122) attached may be set into an uncured concrete bed
and leveled to be in a substantially flush-fitting arrangement
with a surface pedestrian-use area, such as by tapping and/or
vibrating with a mallet."
(Wehmeyer, col. 8, ll. 17-21).

14
The Patent Owner's assertion appears to be based on Trafixigns '732
which states "[o]n screwing the bolt heads, the bolts hold the block securely
in position on the road, or the like when the keys have been embedded in the
concrete." (Trafixigns '732, pg. 2, ll. 10-13; ABPO 8-9). However,
Trafixigns '483 does not include the same statement. Additionally, the
statement in Trafixigns '732 also does not specify that the keys are
embedded in the concrete first and the concrete cured prior to securing the
plate. Moreover, as discussed infra, Wehmeyer specifically teaches
installation of its panel with secured lugs into fresh concrete.
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Thus, the Examiner's rejection of claims 46 and 47 is based on the
specific disclosure of Trafixigns '483 and the technical teaching of
Wehmeyer.
The Patent Owner argues that Trafixigns '483 includes features such
as recesses that serve to key the plate to the surface of the road, or serve as
positioning means for rods or bars, and asserts that these features would not
function if the device were pressed into concrete (ABPO 9). However, the
Patent Owner does not provide convincing evidence or adequate explanation
that establishes why providing the recesses is inconsistent with pressing the
plates into wet concrete if the rods or bars are embedded within the wet
concrete (see generally Res. Br. R 6-7).
The Patent Owner also notes that whereas these claims require slots
that allow air to escape from underneath the unit when it is installed in fresh
concrete, Wehmeyer teaches trapping of air under the tile to create a
different sound when the tile is stepped on or tapped (ABPO 17-19; see also
Wehmeyer, col. 6, ll. 3-8). The Patent Owner asserts that trapping of air is
required by Wehmeyer so that a person of ordinary skill in the art, in
modifying Trafixigns '483 in view of Wehmeyer, would ensure that air is
trapped underneath the tile which is contrary to the claims (ABPO 18-19).
The Examiner disagrees with the Patent Owner, finding that "[j]ust
because Wehmeyer also teaches trapping air under the tile does not mean
that the two references are not combinable" and that such combination is
proper when the references are weighed together (RAN 22). In this regard,
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the Examiner finds that "[e]liminating air pockets under the plate would
certainly make the plate more stable." (Id. at 26-27).
We again find no error in the Examiners findings or conclusion. The
Patent Owner's argument does not take into account the collective teachings
of the prior art. In determining obviousness, a reference "must be
considered for everything it teaches by way of technology and is not limited
to the particular invention it is describing and attempting to protect." See
EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985)
("A reference must be considered for everything it teaches by way of
technology and is not limited to the particular invention it is describing and
attempting to protect. On the issue of obviousness, the combined teachings
of the prior art as a whole must be considered."); see also In re Heck, 699
F.2d 1331, 1332-33 (Fed. Cir. 1983).
Wehmeyer clearly provides the technical teaching that replaceable
tactile tiles (or units) with the lugs (or anchor members) attached thereto can
be installed into fresh concrete. Whereas Wehmeyer also teaches the
desirability of entrapping air to generate a distinctive sound as a warning
signal for a person having impaired vision (Wehmeyer, col. 6, ll. 35-43), it is
also clear that this implementation is a preferable embodiment which
provides additional functionality to the tactile tiles (id. at col. 6, 30-35). In
fact, Wehmeyer specifically discloses that:
[i]n yet still another preferred aspect of the invention, the tactile
tile (102) may be installed with lugs (122) intact into an
embedment surface (134), but with a material covering the
bottom surface (112), except for the protruding lugs (122). In
this embodiment, a minimum of entrapped air, or substantially
only that needed for effective sound-emitting dome structures
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will be present while installing an inventive tactile tile or panel,
and reducing or avoiding an excessive amount of entrapped air
which may facilitate cracking or fracturing of tiles.
(Wehmeyer, col. 8, ll. 42-51, emphasis added).
Thus, Wehmeyer also provides a technical teaching and motivation for
minimizing the amount of air under the tile.
In its general arguments regarding Trafixigns '483, the Patent Owner
notes the plurality of removable washers 26 between the plate 8 and the
collar 20 for adjusting the height of the plate when the road surface wears
away (Trafixigns '483, col. 4, ll. 45-51; Fig. 8), and further explains that
such adjustment would not be possible if the plate and collar were embedded
together in wet concrete due to the concrete beneath the plate (ABPO 10-
12). Thus, the Patent Owner asserts that regardless of teachings in
Wehmeyer, a person of ordinary skill in the art "would not be motivated to
embed the Trafixigns plate into fresh concrete" because that would
"eliminate the purpose of the washers (which allow downward movement of
a previously installed plate)." (Id. at 19). However, this argument is also
unpersuasive because as the Examiner found, "the embodiment shown in fig.
8 [of Trafixigns '483] with the removable washers is but one of the disclosed
embodiments. Fig. 7 for example does not have these removable washers
under the plate." (RAN 14; see also Res. Br. R 3-4).
Therefore, in view of the above, we affirm the Examiner's rejection of
independent claim 46 as obvious over Trafixigns '483 and Wehmeyer. The
Patent Owner does not present specific arguments directed to the limitations
of claim 47. Correspondingly, rejection of claim 47 is also affirmed.

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Rejection 2
Claim 46 is rejected as obvious over the combination of Trafixigns
'483 and Boghossian, the Examiner incorporating by reference pages 69-71
of the Request (RAN 9, 49). Thus, the position of the Examiner is that
Trafixigns '483 discloses the tactile warning surface unit with anchors as
recited in independent claim 46 (Request 71). The Examiner further finds
that Boghossian discloses installation of such a device in wet concrete rather
than in hardened concrete, and releasing trapped air (id. citing Boghossian, ¶
[0013]). The Examiner concludes that "[t]he totality of what one skilled in
the art would glean from looking at these two references would be that it
would be obvious to install Trafixigns into wet cement in a flush condition."
(RAN 21). We find no error in the Examiner's findings and conclusions.
The Patent Owner submits arguments similar to those submitted
relative to Rejection 4 (ABPO 14), which are unpersuasive for reasons
already addressed supra. The Patent Owner also argues that the method of
installation taught by Boghossian differs from that claimed because the
anchors therein are not coupled to the lower surface so that air can be vented
through the bolt holes during installation (id. at 15-16). According to the
Patent Owner, because the anchor nuts of Boghossian do not cover the entire
threads of the bolt, the threads thereof are immersed in concrete so that the
safety tiles cannot be easily replaced (id.). The Patent Owner also argues
that the rounded head on the bolts of Boghossian cannot be unfastened from
the anchor nuts (id.).
The Patent Owner appears to misunderstand the Examiner's rejection
and argues the references individually. While relevant to the particular
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tactile surface units disclosed in Boghossian, the fact that those anchors are
not coupled to the body to allow venting of air, as well as the specific details
of Boghossian's bolts noted by the Patent Owner, are not dispositive of the
rejection on appeal.
As the Examiner explained,
[t]he examiner need not physically incorporate every aspect of
Boghossian into Trafixigns when making the proposed
combination. The totality of what one skilled in the art would
glean from looking at these two references would be that it
would be obvious to install Trafixigns into wet cement in a
flush condition.
(RAN 20-21).

As the Examiner correctly found, Trafixigns '483 discloses a plate/body and
collar/anchor assembly wherein the anchor is coupled to the lower surface of
the body (Trafixigns '483, Figs. 1-3, 7). As also correctly found by the
Examiner, Boghossian provides a technical teaching that such devices can be
installed with their anchors, in wet, uncured concrete (Boghossian ¶ 13).
Thus, the rejection at hand is that it would have been obvious to install the
device of Trafixigns '483 with its anchors into wet concrete as taught by
Boghossian. The specific details of Boghossian do not nullify this technical
teaching (see also Res. Br. R 8-9).
Therefore, in view of the above, we affirm the Examiner's rejection of
independent claim 46 as obvious over Trafixigns '483 and Boghossian. The
Patent Owner does not present specific arguments directed to the limitations
of claim 47. Correspondingly, rejection of claim 47 is also affirmed.

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Rejection 8
Claims 49 and 50 stand rejected as obvious over Trafixigns '483 or
Trafixigns '732 in view of Boghossian (RAN 11, 61, 64). The Patent Owner
relies on the arguments submitted with respect to independent claim 46 and
ultimate dependency on claim 46, for patentability of claims 49 and 50.
Thus, we affirm the Examiner's rejection of claims 49 and 50 as being
obvious over the combination of Trafixigns '483 in view of Boghossian.

Rejections 1, 3, 5-7 and 9-17
Rejections 2, 4 and 8 are affirmed supra. Hence, rejection of each of
claims 46, 47, 49 and 50 appealed by the Patent Owner is affirmed.
Correspondingly, we decline to reach Rejections 1, 3, 5-7 and 9-17.

Declarations
As noted supra, the Patent Owner submitted declarations into the
record. However, the Patent Owner does not specifically rely on any portion
of these declarations in its briefs on appeal, or explain the pertinence of their
contents with respect to the appeal. While we have reviewed and considered
these declarations as they may pertain to the rejections of record, the
contents thereof do not change the analysis set forth supra.

Requester's Cross-Appeal
As discussed above, each of claims 46, 47, 49 and 50 appealed by the
Patent Owner remains rejected by our affirmance of Rejections 2, 4 and 8.
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Hence, the Cross-Appeal of the Requester as to claims 49 and 50 is moot
and we decline to reach the same.

CONCLUSIONS
1. Rejections 2, 4 and 8 are AFFIRMED.
2. We do not reach Rejections 1, 3, 5-7 and 9-17.
3. Cross-appeal of the Requester is considered moot and we
decline to reach the same.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g). In the event
neither party files a request for rehearing within the time provided in 37
C.F.R. § 41.79, and this decision becomes final and appealable under 37
C.F.R. § 41.81, a party seeking judicial review must timely serve notice on
the Director of the United States Patent and Trademark Office. See 37
C.F.R. §§ 90.1 and 1.983.

AFFIRMED

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ack
for Patent Owner:

NIELDS, LEMACK & FRAME, LLC
176 E. Main Street
Suite #5
Westborough, MA 01581

for Third Party Requester:

FOLEY HOAG, LLP
Patent Group
World Trade Center West
155 Seaport Blvd.
Boston, MA 02110