Ex Parte Fortney et al

Patent Trial and Appeal Board

Jul 28, 2014

11805921 (P.T.A.B. Jul. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIKE FORTNEY and JASON FORTNEY
____________

Appeal 2012-006470
Application 11/805,921
Technology Center 3600
____________

Before STEFAN STAICOVICI, LYNNE H. BROWNE, and
ANNETTE R. REIMERS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Mike Fortney and Jason Fortney (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting under 35 U.S.C. § 103(a)
claims 19–38 as unpatentable over Dahowski (US 4,548,009, iss. Oct. 22,
1985) and Koch (US 4,090,800, iss. May 23, 1978)1,2. Claims 1–18 have

1 The Examiner’s rejection of claim 19 under 35 U.S.C. § 112, second
paragraph, as being indefinite, has been withdrawn by the Examiner. Adv.
Act., mailed July 8, 2011.
2 The Examiner’s objections to the drawings and to claims 27 and 37 is
a petitionable matter and as such is not within the jurisdiction of the Board.
In re Mindick, 371 F.2d 892, 894 (CCPA 1967). See Final Act. 2–4, mailed
Dec. 27, 2010.
Appeal 2012-006470
Application 11/805,921
3
been canceled. We have jurisdiction over this appeal under 35 U.S.C. §
6(b).

INVENTION
Appellants’ invention relates to an expansion joint for concrete and
the method of using it to replace existing expansion joints. Spec. 3, ll. 3–5
and 10–11, Fig. 1.
Claims 19 and 30 are independent claims. Claim 19 is illustrative of
the claimed invention and reads as follows:
19. An expansion joint assembly comprising:
previously hardened concrete slab sections that define an
expansion joint groove;
an elongated expansion joint body that is received within
the expansion joint groove of the previously hardened concrete
slab sections, the expansion joint body being formed from a
flexible material having a transverse cross section configured
with opposite sidewalls that extend downward from a top of the
expansion joint body, the top having no recess or cavity formed
therein along the length of the expansion joint body, the lower
end of the expansion joint body having a transverse cross
section that is configured as a triangle, and wherein a pair of
opposite projecting lips emanate from each of the sidewalls at
the upper end of the triangle.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ANALYSIS
Claims 19–29
Appellants have not presented arguments for the patentability of
claims 20–26, 28, and 29 apart from claim 19. See Br. 6. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we select claim 19 as
Appeal 2012-006470
Application 11/805,921
4
the representative claim to decide the appeal of the rejection of these claims,
with claims 20–26, 28, and 29 standing or falling with claim 19. In view of
Appellants’ arguments, we will address the rejection of claim 27 separately.
See id. at 13.
Appellants argue that neither Dahowski nor Koch discloses
“previously hardened concrete slab sections that define an expansion joint
groove,” as called for by independent claim 19. Br. 6. According to
Appellants, “the expansion joint of Dahowski is used in non-set, soft or
uncured concrete” and “Koch is also directed toward a joint-forming device
that is used in unset concrete.” Id. at 7. Thus, Appellants contend that
“[i]nserting an expansion joint into an existing expansion groove, as
contrasted with an expansion joint positioned within unset or uncured
concrete results in an entirely different structure or assembly.” Id. at 8.
In response, the Examiner takes the position that because the disputed
limitation is a product-by-process limitation, it “would not be expected to
impart distinctive structural characteristics to the expansion joint assembly.”
Ans. 6. Furthermore, the Examiner opines that the “term hardened concrete
is a relative term which does not require the concrete to be fully cured” and
thus, because the concrete of Dahowski hardens between the time it is
“poured and the expansion joint is installed, Dahowski meets the limitation
of the claim.” Id. at 12. Thus, according to the Examiner, the structural
features of Appellants’ claimed invention and the final product of the
combination of Dahowski and Koch “both include an expansion joint placed
in an expansion joint groove.” Id. at 13.
Although we appreciate Appellants’ position that in Dahowski the
expansion joint is placed in pre-set, uncured concrete, nonetheless, we do
agree with the Examiner that the final product of the combination of
Appeal 2012-006470
Application 11/805,921
5
Dahowski and Koch includes the elements of Appellants’ claimed
“expansion joint assembly.” In other words, we agree with the Examiner
that the claimed “expansion joint assembly” has the same structure whether
the expansion joint is inserted either into pre-cured concrete slabs or into a
groove defined by cured concrete slabs.
An ordinary and customary meaning of the term “slab” is “a thick
plate or slice (as of stone, wood, or bread): as . . . b : concrete pavement (as
of a road).” Merriam Webster’s Collegiate Dictionary (10th Ed. 1997).
Thus, the limitation of “previously hardened concrete slab sections that
define an expansion joint groove” requires the concrete slab sections to be
hardened to such an extent as to form plates/slices of concrete that define an
expansion joint groove. In Dahowski, although the concrete is uncured/pre-
set when expansion joint 10 is inserted, as Appellants have argued (see Br.
9–11), after curing however, the concrete forms “previously hardened
concrete slab sections” 41, 42 that define “an expansion joint groove” that
receives expansion joint body 10 therein. See Dahowski, col. 4, ll. 28–30
(“. . . sections 41 and 42 of the cured concrete 11.”) and Fig. 1.
Lastly, we are not persuaded by Appellants’ arguments with respect to
the Borjeson reference (US 4,141,189, iss. Feb. 27, 1979) because this
reference is not used by the Examiner. See Br. 11–12 and Ans. 14.
Thus, for the foregoing reasons, we sustain the rejection of
independent claim 19, and of claims 20–26, 28, and 29, falling with claim
19, under 35 U.S.C. § 103(a) as unpatentable over Dahowski and Koch.
With respect to the rejection of claim 27, Appellants rely on the same
arguments as presented supra. Br. 13. Accordingly, for the same reasons,
we likewise sustain the rejection of claim 27 as unpatentable over the
combined teachings of Dahowski and Koch.
Appeal 2012-006470
Application 11/805,921
6
Claims 30–38
In contrast to independent claim 19, independent claim 30 is a method
claim, which requires, inter alia, “positioning the length of expansion joint
within the expansion joint groove.” Br., Clms. App. In other words,
independent claim 30 requires a step of positioning the expansion joint
within an expansion joint groove.
The Examiner found that Figure 4 of Dahowski discloses the
limitation of “positioning the length of expansion joint within the expansion
joint groove.” See Ans. 9.
At the outset, we note that an ordinary and customary meaning of the
term “groove” is “a long narrow channel or depression.” Merriam
Webster’s Collegiate Dictionary (10th Ed. 1997). Here, because
Dahowski’s expansion joint 10 is inserted into uncured, pre-set concrete,
which flows around the outer surface of joint 10 as it is inserted, Dahowski
fails to disclose positioning an expansion joint in a “groove.” Similarly,
because Koch discloses inserting an expansion joint 12 into hardenable/unset
concrete slab material, Koch likewise fails to disclose a “positioning” step,
as called for by independent claim 30. See Koch, Abstract and col. 4, ll.
23–24. As such, because neither Dahowski nor Koch discloses the
limitation of “positioning the length of expansion joint within the expansion
joint groove,” we do not sustain the rejection of independent claim 30, and
its dependent claims 31–36 and 38, as unpatentable over the combined
teachings of Dahowski and Koch.
With respect to the rejection of claim 37, the Examiner’s proposed
modification does not remedy the deficiencies of Dahowski and Koch, as

Appeal 2012-006470
Application 11/805,921
7
described supra. See Ans. 11. Accordingly, we do not sustain the rejection
of claim 37 as unpatentable over the combined teachings of Dahowski and
Koch.

SUMMARY
The Examiner’s decision to reject claims 19–38 under 35 U.S.C.
§ 103(a) as unpatentable over Dahowski and Koch is affirmed as to claims
19–29 and reversed as to claims 30–38.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

hh