Ex Parte Davidson

Board of Patent Appeals and Interferences

Sep 22, 2010

10908569 (B.P.A.I. Sep. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAMES T. DAVIDSON
Appellant
__________

Appeal 2009-006573
Application 10/908,569
Technology Center 3600
___________

Before: RICHARD E. SCHAFER, RICHARD TORCZON, and SALLY C.
MEDLEY, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL1
Applicant appeals from the Final Rejection of Claims 1-13. 35 U.S.C.
§ 134(a). We have jurisdiction. 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/908,569

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STATEMENT OF THE CASE2
The invention is directed to templates for positioning anchoring bolts
in wet concrete with respect to the edges of a concrete footing mold. The
bolts are used to secure fixtures, such as the base of a traffic light, to the
concrete footing.
The Examiner finally rejected Claims 1-13 on the following grounds:
1. Claims 1-13 under 35 U.S.C. § 103(a) as obvious over the
combined teachings of Starks3 and Schmitt4 and
2. Claims 1-13 under 35 U.S.C. § 102(b) as anticipated by
Greenwood.5
App. Br. 3; Ans. 2-3.6
We affirm the rejection based upon Starks and Schmitt as to Claims 1
and 7-13 and reverse as to Claims 2-6. We reverse the rejection of Claims
1-13 based on Greenwood.
The Claimed Subject Matter
Representative Claim 1 provides (paragraphing and indentation
added):

2 Throughout this decision, we refer to the Appeal Brief filed June 25, 2008.
All references to the claims are to the Claims Appendix of that Appeal Brief.
App. Br. A-1 to A9. The Examiner has certified those claims as correct.
Ans. 2.
3 U.S. Patent 6,643,945.
4 U.S. Patent 3,759,478.
5 U.S. Patent 4,521,969.
6 The Examiner has withdrawn the remaining rejections: Claims 14-17 and
19 under 35 U.S.C. § 102(b) as anticipated by Hulse (U.S. Patent 681,551);
and Claims 14-17 and 19 under 35 U.S.C. § 102(b) as anticipated by
Hendrix (U.S. Patent 3,025,608). Ans. 3.
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1. An anchor bolt template to support a plurality of anchor bolts in at
least a first pattern inside a concrete mold,
the mold comprising a side wall terminating at an open top
having a diameter and defined by an upper edge,
the template comprising:
an integrally formed body
sized for placement over the open top of the mold,
the body having an upper surface and a lower
surface;
at least a first set of notches formed on the lower surface
of the body,
wherein the notches are positioned at
circumferentially spaced points
corresponding to points on the upper edge of
the mold, and
wherein the notches are sized to receive the upper
edge of the mold so that when the template
is fitted on the open top of the mold and as
concrete is poured into the mold, the side
walls of the mold resist deformation by the
concrete; and
at least a first set of bolt locator indicia on the body,
the first set of indicia representative of bolt
locations arranged in a first bolt pattern.

Rejection over Starks and Schmitt
Claims 1 and 7-13
The use of a template to position anchor bolts in wet concrete is
known in the art as demonstrated by the Starks patent. Applicant asserts a
patentable difference over Starks in the use of notches on the lower face of
the template. App. Br. 21-22. Applicant’s notches are used to engage the
sides of the mold to center the template with respect to the sides of the mold
and for anchor bolt placement. Unlike Applicants’ template, Starks’ is flat
on the lower surface without any notches. The examiner relies on Schmitt as
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teaching the concept of a template having notches which engage the edge of
a mold to accurately locate the center of a mold. Ans. 5.
Schmitt teaches a template, a wick holding bar, for centering a candle
wick in the center of a candle mold. Schmitt 2:67 – 3:11. The template
includes notches that engage the top edge of a cylindrical candle mold for
accurate placement of the wick at the center. Schmitt Fig. 2 and 3:1-4. The
notches are identified by numerals 26, 28, 30 and 32 in Schmitt’s Figure 2.
One having ordinary skill in the art would have recognized the
benefits that a notched template would bring to accurately positioning a
template with respect to the sides of the mold. Modifying Starks’ template
to include notches that engage the edges of a concrete mold to facilitate
alignment of the template with respect to that mold would have been
obvious.
Applicant contends there is no motivation to place notches on the
underside of Starks’ template. In particular, it is argued that neither Starks
nor Schmitt recognizes a need to prevent mold deformation (App. Br. 21).
While Applicant appears to be correct with respect to the absence of a
specific teaching related to mold deformation, the lack of an express
teaching of Applicant’s problem does not resolve the obviousness question.
Obviousness is not precluded because the prior art does not address the same
problem that the applicant attempted to solve. “[A]ny need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.” KSR International Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
Schmitt teaches the concept of using notches that engage the edge of a mold
to accurately locate the center. Schmitt Fig. 2.
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In any event, the notches in Schmitt’s template would secure the
position of the engaged mold edges and would necessarily resist and counter
any outward pressure and mold deformation.
Applicant argues that there would be no reason to modify Starks’
template because Stark already has a centering structure, i.e., the central
aperture 19 in Starks’ Figure 1. App. Br. 21.
While Starks’ template includes an aperture that locates the center
with respect to anchor bolt placement, the aperture does not locate the center
with respect to the edge of the mold. In light of Schmitt’s teaching, the use
of notches to accurately place the template and the aperture at the center of
the mold would have been obvious.
Applicant further contends that the inclusion of notches would be
inconsistent with Starks’ stated objectives. Applicant says that one of Starks’
objects is to have a template that has a planar top and bottom as shown in the
embodiment depicted in Starks’ Figure 4. App. Br. 21.
To the extent that having planar surfaces is an objective of Starks’
template, we fail to see how the inclusion of a notch that engages the edge of
the mold would defeat that objective. The notch would necessarily be
configured to mate with and correspond to the edge of the mold so that the
template could be properly centered and oriented with respect to the mold.
The remainder of the bottom of the template would be unaffected by the
notches and remain planar.
Applicant argues that if notches were included in Starks’s square
template, the template would not work as intended. According to Applicant,
the flat surfaces surrounding the notches would prevent the notches from
engaging the edges of the mold. App. Br. 21.
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In our view, one having ordinary skill in the art would understand
how Schmitt’s notches operate to align the template with the mold edge.
Specifically, the person of ordinary skill would understand that in order to
align the template the notch must have a length and configuration that
corresponds to the intersection of the mold and the template. Thus, for
example, if Schmitt’s template were relatively wider, one skilled in the art
would have appreciated that the notch would have to be lengthened and have
a curvature sufficient to allow full engagement with the intersecting portion
of the mold edge.
The subject matter of Claim 1 would have been obvious. We affirm
the rejection of Claim 1 as unpatentable over the combined teachings of
Starks and Schmitt. Since Applicants have not asserted that the additional
subject matter of dependant Claims 7-13 would patentably distinguish those
claims, we affirm the rejection of those claims also. 37 C.F.R.
§ 41.37(c)(1)(vii).
Claims 2-6
Claims 2-6 depend directly or indirectly from Claim 1. Claims 2-4
add the additional requirement that “the template further comprises a spacer
on the lower surface of the body sized and positioned to support the lower
surface of the body a distance from the upper edge of the mold, the distance
being at least about the width of the second nut.” Claims 5 and 6 add to the
Claim 1 subject matter that the template “body is formed by a hub and a
plurality of arms extending radially from the hub, wherein each arm is
generally C-shaped forming a spine with opposing depending edges, and
wherein the at least first set of notches are formed in the depending edges.”
Applicants argue that notwithstanding the patentability of Claim 1, the
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subject matter of Claims 2-6 would have been unobvious. App. Br. 22-23.
Applicants note that the examiner has not explained why the subject matter
of Claims 2-6 would have been obvious. App. Br. 22-23. The Examiner’s
Answer neither directs us to evidence nor presents argument explaining the
obviousness of the subject matter of Claims 2-6. The examiner has failed to
present a prima facie case of unpatentability as to those claims.
We reverse the rejection of Claims 2-6 over the combined teachings
of Stark and Schmitt.
The Rejection over Greenwood
The examiner rejected Claims 1-13 under 35 U.S.C. § 102(b) as
unpatentable over the teachings of Greenwood. Applicant confines his
discussion to independent Claim 1. App. Br. 10. We do also. Thus, Claims
2-13 stand or fall with Claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1 is directed to a template that requires, inter alia, a set of
notches on the lower portion. Greenwood teaches a template 176, that
includes a cutout or cutaway on the lower portion at each end. We agree
with the examiner that those cutouts are notches as that word is defined by
applicant. In this regard, we note that Applicant defines “notches” as “any of
a wide range of shapes and sizes of recesses, such as grooves, channels and
the like, whether arranged circumferentially or radially, which are adapted to
engage the edge of the mold . . .” Written Description 4-5, ¶ 0021.
Greenwood’s cutout portions meet this definition.
However, Claim 1 further specifies that the notches “are sized to
receive the upper edge of the mold so that when the template is fitted on the
open top of the mold and as concrete is poured into the mold, the side walls
of the mold resist deformation ….” The examiner held that this recitation
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specified an intended use that did not impart a structural limitation
distinguishing Greenwood from the claimed subject matter. Ex. Ans. 4.
Applicant argues that the notches of the claims are distinguishable because
the above-quoted recitation requires that the notch “prevent the edge of the
mold moving outwardly.” App. Br. 7. We agree with Applicant. The
recitation as to the size of the notch quoted above imparts a structural
limitation requiring that the notch engage the mold in such a way as to
stabilize it and prevent outward deformation. In our view Greenwood’s
“notch” is not such a structure.
The rejection of Claims 1-13 under 35 U.S.C. § 102(b) over
Greenwood is reversed.
DECISION
We affirm the rejection of Claims 1 and 7-13 under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Starks and Schmitt.
We reverse the rejection of Claims 2-6 under 35 U.S.C. § 103(a) as
obvious over the combined teachings of Starks and Schmitt.
We reverse the rejection of Claims 1-13 under 35 U.S.C. § 102(b) as
anticipated by Greenwood.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

Appeal No. 2009-6573
Application 10/908,569

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