Ex Parte ARLABÃN GABEIRAS et al

Patent Trial and Appeal Board

Jul 31, 2018

14134974 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/134,974 12/19/2013 Teresa ARLABAN GABEIRAS
150917 7590 08/02/2018
PONS9301/BSTZ
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
9301.P014 6956
EXAMINER
1279 Oakmead Parkway SADLON, JOSEPH
Sunnyvale, CA 94085-4040
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
FIP _Group@BSTZ.com
Emily_ Y ang@BSTZ.com
luis.calvo@ponsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERESA ARLARAN GABEIRAS, JOSE MIGUEL GARCIA
SA YES, MIGUEL NUNEZ POLO, ALFONSO RUIZ ALDAMA,
and FRANCISCO JAVIER SANZ CORRETGE 1
Appeal 2017-011600
Application 14/134,974
Technology Center 3600
Before JOSIAH C. COCKS, ANNETTE R. REIMERS, and
SEAN P. O'HANLON, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Teresa Arlaban Gabeiras et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision to reject under 35 U.S.C. § 103: (1)
claims 1-3, 5, 8, 9, 14, 15, and 22 as unpatentable over Lutfi (WO
2008/136717 Al, published Nov. 13, 2008), Siegfried (US 5,066,167, issued
Nov. 19, 1991), and Fernandez Gomez (US 2014/0298737 Al, published
Oct. 9, 2014) (hereinafter "Fernandez"); (2) claim 11 as unpatentable over
1 In the Appeal Brief, Acciona Windpower, S.A., is the applicant as provided
under 3 7 C.F .R. § 1.46 and is identified as the real party in interest. Appeal
Brief 3 (hereinafter "Appeal Br.") (filed Mar. 24, 2017).
Appeal2017-011600
Application 14/134,974
Lutfi, Siegfried, Fernandez, and Hughes (US 6,651,394 B2, issued Nov. 25,
2003); and (3) claims 16-20 as unpatentable over Lutfi, Siegfried,
Fernandez, and Zheng (US 2011/0239564 Al, published Oct. 6, 2011).
Claims 4, 6, 7, 10, 12, 13, and 21 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a pre-cast concrete dowel. See
Spec. (Title), Figs. 1-5.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A precast concrete dowel comprising:
- an upper surface,
- a lower surface,
- an inner side surface, and
- an outer side surface;
the dowel further comprising:
- at least an intermediate fixing surface, located in
one of the side surfaces, between the upper and lower
surfaces,
- at least a first groove made in the side surface
comprising the intermediate fixing surface, wherein the
first groove communicates the intermediate fixing surface
with one of the upper and lower surfaces and is configured
to accommodate joining cables;
- at least an inner longitudinal duct which runs
inside the dowel between an inlet hole and an outlet hole,
and
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Application 14/134,974
- joining cables configured to join the dowel, and
which are accommodated in at least a duct; 2
wherein the inlet hole and/or the outlet hole are inside a second
groove communicating the inner side surface or the outer side surface
with one of the upper or lower surfaces, the second groove being
configured to accommodate the joining cables.
ANALYSIS
Obviousness over Luifz, Siegfried, and Fernandez
Claims 1-3, 5, 8, 9, 14, 15, and 22
Independent claim 1 is directed to a precast concrete dowel including,
inter alia, "at least an inner longitudinal duct which runs inside the dowel
between an inlet hole and an outlet hole," "wherein the inlet hole and/or the
outlet hole are inside a second groove communicating the inner side surface
or the outer side surface with one of the upper or lower surfaces [ of the
dowel]." Appeal Br. 20, Claims App. The Examiner finds that Lutfi fails to
disclose the above cited limitations. See Final Act. 2-3; see also Ans. 3--4. 3
The Examiner finds that Siegfried discloses "at least an inner longitudinal
duct (14) which runs inside the dowel between an inlet hole and an outlet
hole." See Final Act. 4; see also Ans. 4. The Examiner further finds that the
combined teachings of Lutfi and Siegfried fail to disclose the inlet hole
and/or the outlet hole being inside a second groove communicating the inner
side surface or the outer side surface with one of the upper or lower surfaces
2 We understand the joining cables being "accommodated in at least a duct"
to mean that the joining cables are accommodated in the duct of the at least
one inner longitudinal duct. See claim 6 of the Original Claim Set (filed Dec.
19, 2013).
3 Final Office Action (hereinafter "Final Act.") ( dated July 20, 2016);
Examiner's Answer (hereinafter "Ans.") (dated July 18, 2017).
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Application 14/134,974
of the dowel. See Final Act. 4; see also Ans. 5. To account for that
deficiency, the Examiner finds that "Fernandez teaches such a 'second hole'
inside a second groove." See Final Act. 4; see also Ans. 5. In particular, the
Examiner finds that "the inlet hole and/or the outlet hole (duct 19 'II-II' FIG.
3) are inside a second groove (hole 11 'II-II' FIG. 3) communicating the
inner side surface or the outer side surface with one of the upper or lower
surfaces." See Final Act. 4 ( citing Fernandez, Fig. 3); see also Ans. 5. The
Examiner further determines that:
[T]he structure of Fernandez is concrete, and any forces applied
to the structure would necessarily be applied -or communicated-
throughout the structure. Concrete is known for [its] strength in
compression, and when a force is applied to a surface -namely,
in Fernandez by tightening means 14, 16 applied against
supporting face 15 of hole 11 FIG. 3 II-II- this force 1s
necessarily communicated with the upper or lower surfaces.
Final Act. 13.
Appellants contend that "the 'hole (11)' of Fernandez actually
corresponds to what in the captioned application is referred to as 'cavity
( 16)'. Therefore, the 'hole ( 11)' of Fernandez may not be characterized as
the 'second groove' as recited in claim 1." Appeal Br. 15 ( emphasis
omitted); see also Reply Br. 8 ("[H]ole 11 of Fernandez is similar to cavity
16 of the present invention rather than groove 25," because "cavity 16 has an
upper stop and a lower stop (intermediate fixing surface), and also contains
the end of the cable, as well as fixation elements, in the same way that hole
(11) of Fernandez" ( emphasis omitted)). 4
4 Reply Brief (hereinafter "Reply Br.") ( filed Sept. 18, 201 7).
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Application 14/134,974
In response to Appellants' argument, the Examiner states that "hole
11 in 'II-II FIG. 3' [of Fernandez] can be reasonably broadly considered a
groove because it extends in an elongated area leading up to the fastening
elements of plate 16, nut 14, and duct 19." Ans. 15. Regardless of whether
hole 11 of Fernandez is "reasonably broadly [enough to be] considered a
groove," the Examiner fails to address Appellants' argument that hole 11 of
Fernandez "corresponds to" cavity 16 of the subject invention. See id.; see
also Appeal Br. 15; Reply Br. 8. We note that in the Final Rejection the
Examiner states that Appellants' "reconstruction of Fernandez as teaching
similar structure (see 'actually corresponds to what in the [instant]
application is referred to as "cavity (16)"') is evidence on the record of the
analogous structure shared between the claimed invention and the
anticipating reference of [Lutfi]." See Final Act. 12. However, Appellants
are contending similarities between Fernandez and the subject invention, not
Fernandez and Lutfi or Lutfi and the subject invention. See Appeal Br. 15;
Reply Br. 8.
Appellants contend that:
[T]he alleged "hole (11 )" of Fernandez fails to meet the
following additional features of claim 1: "communicating the
inner / outer surface with one of the upper or lower surfaces".
Rather, as shown in Fig. 3 "II-II", the "hole (11 )" does NOT
provide such a communication. Regarding this, the Examiner
alleges that such a communication between the inner / outer
surface with one of the upper or lower surfaces actually occurs,
because the Examiner considers the groove / hole as a means for
transmitting stress. Appellant[ s] respectfully disagree[], as the
term "communicating" is meant by [Appellants] as
"connecting", (i.e. join together so as to provide access and
communication) two otherwise non in contact surfaces, wherein
the groove/hole (as a non-material, but rather, void, entity)
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Application 14/134,974
cannot be construed as a means for transmitting stress. This is
clearly illustrated in Fig. 2-8 of the claimed invention.
Appeal Br. 16 ( emphasis omitted); see also Reply Br. 6 ("[H]ole (11) of
Fernandez, which does not communicate the side surface with the lower
surface" (emphasis omitted)); id. at 7 ("Apart from the hole 11 of Fernandez
not communicating the side surface with one of the upper or lower surfaces,
it lies quite far away from said upper or lower surfaces of the dowel"
( emphasis omitted)).
In response to Appellants' argument, the Examiner determines that the
term "communicating was not explicitly [ defined] by the [S]pecification
beyond [its] plain ordinary meaning and therefore the limitation was
considered reasonably broadly met by the hole 11 which provides a concrete
duct open to the opposed surfaces" and that Fernandez "has grooves which
perform the same function as those of the invention." Ans. 15. The
Examiner further determines that "hole 11 [of Fernandez] allows room for
the connecting elements of the nut [14] and reinforcement 8. By allowing
this room, the hole 11 is recognized to allow 'communicating' between the
claimed surfaces, as broadly claimed." Id. at 16.
Claims are given their broadest reasonable interpretation consistent
with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Appellants' Specification describes that: (1) "[a]t
least a grooved housing made in one of the side surfaces, communicating the
intermediate fixing surface with one of the upper or lower surfaces" (Spec.
3:26-27) (emphasis added); see also Figs. 2-5; (2) "at least a first grooved
housing (13) made in said side surface (7, 8), for communicating the
intermediate fixing surface (12) with one of the upper (5) and lower (6)
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Application 14/134,974
surfaces" (id. at 6:36-7:2) (emphasis added); see also Figs. 2-5; and (3)
"[i]n a preferred embodiment, the dowel (4) may additionally comprise, in
the inner side surface (7) or in the outer side surface (8), accordingly,
preferably in the side surface (7, 8) in which the first grooved housings are
made (13), a second grooved housing (25) communicated with one of the
ducts through said inlet (21) and/or outlet (22) holes" (id. at 10:12-16)
( emphasis added); see also Figs. 2-5.
Based on Appellants' disclosure and Figures, we agree with
Appellants that the term "communicating" as recited in claim 1 constitutes
"connecting" (i.e., 'joining together") of "otherwise non in contact
surfaces." See Appeal Br. 16, 20, Claims App. In this case, the Examiner
does not apprise us as to what structural features in Fernandez the Examiner
considers to constitute the "upper, lower, inner side, or outer side" surfaces.
See Final Act. 4, 12-13; see also Ans. 5, 15-16. Nor does the Examiner
direct us to any discussion in Fernandez regarding "upper, lower, inner side,
or outer side" surfaces or possible relationships any of these surfaces may
have with hole/groove 11 of Fernandez. As such, even assuming arguendo,
that Fernandez discloses an inlet hole (duct 19 'II-II' FIG. 3) inside a groove
(hole 11 'II-II' FIG. 3), as the Examiner proposes (see Final Act. 4; see also
Ans. 5), the Examiner fails to provide sufficient evidence or technical
reasoning to adequately establish that hole/groove 11 of Fernandez
"communicates/joins together" the inner side or outer side surfaces with one
of the upper or lower surfaces of the dowel, as called for in claim 1. See
Final Act. 4, 12-13; see also Ans. 5, 15-16; Appeal Br. 16, 20, Claims App;
Reply Br. 6-7.
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Application 14/134,974
For these reasons, we do not sustain the Examiner's rejection of
independent claim 1, as well as dependent claims 2, 3, 5, 8, 9, 14, 15, and 22
as unpatentable over Lutfi, Siegfried, and Fernandez.
Obviousness over Luifi, Siegfried, Fernandez and either Hughes or Zheng
Claims 11 and 16-20
The Examiner's rejections of claims 11 and 16-20 are each based on
the same unsupported findings and conclusions discussed above with respect
to independent claim 1. See Final Act. 7-11; see also Ans. 8-12. The
Examiner does not rely on either Hughes or Zheng to remedy the
deficiencies of Fernandez. Accordingly, for reasons similar to those
discussed above for claim 1, we do not sustain the Examiner's obviousness
rejections of claims 11 and 16-20.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-3, 5, 8,
9, 14, 15, and 22 as unpatentable over Lutfi, Siegfried, and Fernandez.
We REVERSE the decision of the Examiner to reject claim 11 as
unpatentable over Lutfi, Siegfried, Fernandez, and Hughes.
We REVERSE the decision of the Examiner to reject claims 16-20 as
unpatentable over Lutfi, Siegfried, Fernandez, and Zheng.
REVERSED
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