Ex Parte Bradac

Patent Trial and Appeal Board

Aug 15, 2016

12280714 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/280,714 08/26/2008 James M. Bradac
23403 7590 08/17/2016
SHERRILL LAW OFFICES
4756 BANNING A VE
SUITE 212
WHITE BEAR LAKE, MN 55110-3205
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.
CEMET002USPT02 3897
EXAMINER
SAFA VI, MICHAEL
ART UNIT PAPER NUMBER
3631
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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):
michaels@sherrilllaw.com
izag@sherrilllaw.com
docketing@sherrilllaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES M. BRADAC
Appeal2014-002987
Application 12/280,714
Technology Center 3600
Before CHARLES N. GREENHUT, MARK. A. GEIER, and
GORDON D. KINDER, Administrative Patent Judges.
GEIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's rejection of claims 1-20. Br. 4. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claimed subject matter "relates to concrete forms for posts and
structural pillars." Spec. i-f 2. Claims 1 and 14 are illustrative and recite:
1. A concrete forming tube having a bore extending along a
longitudinal axis and an integrally formed slide fit connector at
one end configured and arranged to axially and telescopically
Appeal2014-002987
Application 12/280,714
engage by slide fitting onto a second end of the concrete forming
tube whereby tubes can be stably and axially stacked without
mechanical fastening.
10. A method comprising the steps of
(a) obtaining at least two identical concrete forming tubes
each formed from a thermoplastic material having a first end, a
second end, a bore extending along a longitudinal axis and a
substantially uniform circumference from the first end to the
second end of each tube and an integrally formed slide fit
connector at the second end of each forming tube wherein the
slid fit connector is configured and arranged to axially and
telescopically engaged by slide fitting onto the second end of
each concrete forming tube whereby tubes can be stably and
axially stacked without mechanical fastening;
(b) axially connecting the forming tubes together with the
slide fit connector; and
( c) pouring concrete into the forming tubes.
THE REJECTIONS ON APPEAL
The Examiner rejected claims 1-20 under 35 U.S.C. § 112, i-f 1 as
failing to comply with the written description requirement.
The Examiner rejected claims 1-20 under 35 U.S.C. § 112, i-f 2 as
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention.
The Examiner rejected claims 1-7, 10, 11, 13-15, and 1 7 as
unpatentable under 35 U.S.C. § 103(a) over DePirro (US 4,047,356; iss.
Sept. 13, 1977), Gow (US 785,356; iss. Mar. 21, 1905), Hall (US 2,448,883;
iss. Sept. 7, 1948), and Boenig (US 3,682,434; iss. Aug. 8, 1972).
The Examiner rejected claims 12 and 16 as unpatentable under 35
U.S.C. § 103(a) over DePirro, Gow, Hall, Boenig, and Cliff (US 6,318,700
Bl; iss. Nov. 20, 2001) or Henderson (US 6,672,023 B2; iss. Jan. 6, 2004).
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Application 12/280,714
The Examiner rejected claims 8, 9, 18, and 19 as unpatentable under
35 U.S.C. § 103(a) over DePirro, Gow, Hall, Boenig, and Salinas (US
2002/0179808 Al; pub. Dec. 5, 2002).
The Examiner rejected claim 20 as unpatentable under 35 U.S.C.
§ 103(a) over DePirro, Gow, Hall, Boenig, and Loper (US 4,602,765; iss.
July 29, 1986).
ANALYSIS
Claims 1-20 under 35 USC§ 112, f 1
The Examiner finds that "the [S]pecification [has] not originally
presented 'whereby tubes can be stably and axially stacked without
mechanical fastening"' as independent claims 1, 10, and 14 recite. Final
Act. 2.
Appellant relies upon paragraphs 21 and 24 of the Specification for
support. Br. 10. Appeiiant contends those paragraphs expiain how a siide
fit connector from one tube connects to a second tube. Id. (citing Spec.
i-fi-121, 24). Appellant explains that such a connection "is a non mechanical
[sic] fastening" because "[ m ]echanical is defined as 'of or relating to
machinery or tools."' Br. 10 (quoting Merriam Webster's Collegiate®
Dictionary 721 (10th ed. 1995)).
Central to the disagreement between the Appellant and the Examiner
is the proper construction of the claim language "without mechanical
fastening." In construing a claim term, we apply "the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
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Application 12/280,714
the written description contained in the applicant's specification." In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). In utilizing the Specification,
however, we "only limit the claim based on the specification or prosecution
history when those sources expressly disclaim the broader definition." In re
Bigio, 381F.3d1320, 1325 (Fed Cir. 2004).
The Examiner views the term "mechanical" as much broader than the
meaning put forth by Appellant. In support of such a view, the Examiner
recites the following definitions of "mechanical": "brought about by
friction," "relating to or controlled or operated by physical forces," and
"relating to, produced by, or dominated by physical forces." Ans. 8-9
(internal citations omitted). The Examiner also notes that the Specification
is "silent as to the exact mode of connecting one forming tube to another."
Id. at 9.
We agree with the Examiner's interpretation of "mechanical" as the
broadest reasonabie interpretation of the term. We acknowiedge that such a
definition effectively renders Appellant's preferred embodiment outside the
scope of the amended claim, which should generally be avoided, if possible.
However, the Specification (including the claims as originally filed) does not
mention the term "mechanical" or provide any specificity as to how the slide
fit connector forms a connection with a second tube. See Spec., passim. As
such, in our view, the Specification does not provide sufficient guidance on
the meaning of "mechanical" such that we should interpret it to have a
meaning narrower than its common meaning. Indeed, a contrary holding
would require us to limit the meaning of the claim term solely in an effort to
recast the claim such that it complies with the requirements of 35 U.S.C.
§ 112, first paragraph, and covers Appellant's disclosed embodiment. Claim
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Application 12/280,714
drafting, however, is the Appellant's responsibility. Issues of compliance
with the provisions of 35 U.S.C. § 112 should be resolved during
prosecution, when Appellant has the opportunity to do so. In line with the
foregoing construction, we agree with the Examiner's view that "the instant
disclosure presents what the [E]xaminer would consider a 'mechanical
fastening' as one end of a tube is fit upon another end of a tube." Ans. 8.
Consequently, the Specification does not sufficiently describe a non-
mechanical fastening so as to demonstrate the inventor was in possession of
the invention as subsequently claimed.
For the foregoing reasons, we sustain the Examiner's rejection of
claims 1-20 under 35 U.S.C. § 112, i-f 1 as failing to comply with the written
description requirement.
Claims 1-20 under 35 USC§ 112, f 2
The Examiner finds claim 1 indefinite in its recitation of "an
integraUy formed siide fit connector at one end configured and arranged to
axially and telescopically engage by slide fitting onto a second end of the
concrete forming tube." Final Act. 3. Specifically, the Examiner finds that
the Specification does not describe a tube that is "axially and telescopically
engaged ... to a second end of the tube." Id. The Examiner further finds
that the claim language does not explain to what the slide fit connector at
one end engages. Id.
Appellant contends the language is not indefinite as clarified by the
Specification. In particular, Appellant points to Figures 2 and 3 and
paragraphs 24 and 13 of the Specification, noting that these explain that the
slide fit connector connects to a second tube at the end of the second tube
without a slide fit connector. Br. 11.
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Application 12/280,714
While Appellant accurately describes the Specification, that
description is contrary to the claim language itself. The claim language
requires that the slide fit connector on one end of the tube is configured to
slide fit "onto a second end of the concrete forming tube." The reference to
"the concrete forming tube" finds antecedent basis only with the same
concrete forming tube having the slide fit connector. Accordingly, the
Examiner is correct that the claim requires "that one end of the tube is [to
be] connected to a second end of the same tube." Ans. 9. While one may be
able to discern the meaning of the claim language read in isolation, it is
rendered indefinite in light of the Specification's contrary disclosure. See In
re Cohn, 438 F.2d 989, 993 (CCPA 1971) (sustaining rejection of claims
under 35 U.S.C. § 112, second paragraph, as being indefinite, where the
claims were inherently inconsistent with the description, definitions, and
examples appearing in applicant's specification).
The Examiner finds claim 10 indefinite in muitipie respects. The
Examiner's focus is on claim 10 's recitation "wherein the slide fit connector
is configured and arranged to axially and telescopically engage by slide
fitting onto the second end of each concrete forming tube." Final Act. 3--4.
The Examiner first finds, similarly to claim 1, that the Specification does not
describe a tube that engages to itself via slide fitting. Id. at 4. The Examiner
also finds that the claim is indefinite in that it is unclear in "how is one end
of either of the claimed tubes 'configured and arranged' to slide fit onto a
second end of ... all the tubes." Id. The Examiner further finds the claim is
indefinite in its reference to "the slide fit connector" as the claim recites
multiple tubes. Id.
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Appellant's arguments are similar to those presented with respect to
claim 1. Essentially, Appellant argues that the Specification makes clear
that the slide fit is from one tube to another tube and that the slide fitting
occurs at the end of the second tube that does not have another slide fit
connection. Br. 12.
For reasons similar to those stated with respect to claim 1, we also
agree with the Examiner here. Although claim 10 recites a method
involving "at least two identical concrete forming tubes" the claim language
does not sufficiently explain how those two tubes interact. In particular, the
claim recites that the slide fit connector is both "integrally formed ... at the
second end of each forming tube" and to be configured to engage "by slide
fitting onto the second end of each concrete forming tube." It is not clear
how "each" tube could connect to "each" tube-which includes itself. See
Ans. 10-11. Moreover, it is also not clear how the slide fit connector could
engage a second tube at its second end whiie aiready having an integraiiy
formed slide fit connector at its second end. See id. Accordingly, we agree
with the Examiner that the claim language is vague and indefinite, including
because the most plausible reading of the claim is contrary to the
Specification. See In re Cohn, 438 F.2d at 993.
The Examiner finds claim 14 indefinite in its recitation of by "an
integrally formed slide fit connector at the second end configured and
arranged to axially and telescopically engage by slide fitting onto the second
end of the forming tube." Final Act. 4--5. The Examiner's rationale mirrors
that stated with respect to claim 1. See id.; see also id. at 3.
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Appellant's arguments are identical to those made with respect to
claim 1. See Br. 12-13. For the same reasons stated with claim 1, we also
agree with the Examiner's findings with respect to claim 14.
For the foregoing reasons, we sustain the Examiner's rejection of
claims 1-20 under 35 U.S.C. § 112, i-f 2 as indefinite for failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention.
Claims 1-20 as Unpatentable under 35 USC§ 103(a)
Appellant's primary argument regarding the obviousness rejections is
that the cited references do not teach or suggest an integral slide-fit
connector "configured and arranged to axially and telescopically engage by
slide fitting onto the other end of the concrete forming tube to allow several
of the identical tubes to be stably and axially stacked without mechanical
fastening." Br. 15 (emphasis omitted); see also Br. 16--'21. In our view
Appellant's arguments require us to interpret the claim limitations that we
have determined to be indefinite supra. Accordingly, we determine that to
analyze the Examiner's rejections based upon an obviousness rationale
would require us to speculate as to the meaning of the claims. We decline to
do so. In re Steele, 305 F.2d 859, 862 (CCPA 1962) ("We do not think a
rejection under 35 U.S.C. § 103 should be based on[] speculations and
assumptions [as to the scope of the claim]."). Accordingly, because we
affirm the rejection of claims 1-20 as indefinite, we reverse, the Examiner's
rejections of claims 1-20 as unpatentable under 35 U.S.C. § 103(a), without
reaching the merits thereof.
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DECISION
We affirm the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 112, iii! 1 and 2.
We reverse the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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