Ex Parte Koop

Patent Trial and Appeal Board

Jun 28, 2018

14575312 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/575,312 12/18/2014
26096 7590 07/02/2018
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Benjamin Koop
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.
67720-00lPUS 1 4832
EXAMINER
CHU, KATHERINE J
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN KOOP
Appeal2018-005530
Application 14/575,312
Technology Center 3600
Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1, 6-8, 10-12, 22-25, 27-29, and 31-36. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 "The real party in interest is 1128653 ONTARIO LTD., assignee of the
present invention." (Appeal Br. 1.)
Appeal2018-005530
Application 14/575,312
STATEMENT OF THE CASE
The Appellant's invention "relates to a manhole cover, and more
particularly an adjustable manhole cover." (Spec. ,r 1.)
Illustrative Claim
1. A manhole cover assembly comprising:
an inner cylinder;
an outer cylinder;
a cover plate at an axial end of said inner cylinder, said
cover plate extending radially past an outer surface of said inner
cylinder, wherein said cover plate provides an undersurface
extending radially outward of said outer surface of said inner
cylinder;
an upper ratchet mechanism extending axially and
circumferentially about an outwardly facing surface of said
inner cylinder;
a lower ratchet mechanism extending axially and
circumferentially about an inwardly facing surface of said outer
cylinder, said lower ratchet mechanism configured to mesh with
said upper ratchet mechanism at one of a plurality of distinct
ratcheting positions; wherein
said cover plate is at a first elevation when said
lower ratchet mechanism meshes with said upper ratchet
mechanism at a first one of said plurality of distinct
ratcheting positions, said cover plate is at a second
elevation when said lower ratchet mechanism meshes
with said upper ratchet mechanism at a second one of
said plurality of distinct ratcheting positions, and said
first elevation is different from said second elevation;
a retainer ring provided around an outer circumference of
said cover plate, said retainer ring configured to prevent filler
from flowing to said upper ratchet mechanism and said lower
ratchet mechanism, wherein said retainer ring is separate and
distinct from all portions of the outer cylinder, and said retainer
ring is radially outside said inner cylinder; and
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Application 14/575,312
an adjustment tool having a handle, a first member, and a
second member, said first member extending from said handle
to said second member, said second member extending
transversely from said first second member,
wherein said adjustment tool is configured to engage said
cover plate by inserting said second member through said slot
and rotating said adjustment tool such that said second member
is positioned against said undersurface of said cover plate on a
first side of said cover plate, and said handle is on an opposite,
second side of said cover plate,
wherein said adjustment tool is configured to engage said
cover plate to lift said inner cylinder to disengage said upper
and lower ratchet mechanisms such that said upper and lower
ratchet mechanisms can be adjusted between said plurality of
distinct ratcheting positions.
Cuozzo
Marshall
Stannard
Kilman
Eslambo lchi
Goldman
Campbell
Ismert
Liao
Lee
References
us 4,075,796
us 4,505,814
us 4,828,274
us 5,525,006
US 6,439,628 Bl
US 6,202,986 BI
US 2002/0166291 Al
US 7,735,512 Bl
US 8,382,392 B2
US 8,540,454 B2
Rejections
Feb.28, 1978
Mar. 19, 1985
May 9, 1989
June 11, 1996
Aug. 27, 2002
Mar. 20, 200 I
Nov. 14, 2002
June 15, 2010
Feb.26,2013
Sept. 24, 2013
I. The Examiner rejects claims 1, 6-8, 10-12, 22, 24, 25, 28, 29,
32, and 33 under 35 U.S.C. § 103 as unpatentable over Ismert, Liao,
Marshall, Lee, Cuozzo, and Eslambolchi. (Final Action 3.)
II. The Examiner rejects claims 1, 7, 8, 10-12, 22, 24, 25, and 33
under 35 U.S.C. § 103 as unpatentable over Kilman, Liao, Marshall, Lee,
Cuozzo, and Eslambolchi. (Final Action 11.)
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Application 14/575,312
III. The Examiner rejects claims 1, 7, 8, 10-12, 22-25, and 33
under 35 U.S.C. § 103 as unpatentable over Liao, Kilman, Lee, Cuozzo, and
Eslambolchi. (Final Action 21.)
IV. The Examiner rejects claims 6, 28, 29, 31, 32, 35, and 36 under
35 U.S.C. § 103 as unpatentable over Kilman, Liao, Marshall, Lee, Cuozzo,
Eslambolchi, and Campbell. (Final Action 16.)
V. The Examiner rejects claims 6, 28, 29, 31, 32, 35, and 36 under
35 U.S.C. § 103 as unpatentable over Liao, Kilman, Lee, Cuozzo,
Eslambolchi, and Campbell. (Final Action 25.)
VI. The Examiner rejects claim 27 under 35 U.S.C. § 103 as
unpatentable over Ismert, Liao, Marshall, Lee, Cuozzo, Eslambolchi, and
Stannard. (Final Action 9.)
VII. The Examiner rejects claim 27 under 35 U.S.C. § 103 as
unpatentable over Kilman, Liao, Marshall, Lee, Cuozzo, Eslambolchi, and
Stannard. (Final Action 20.)
VIII. The Examiner rejects claims 27 under 35 U.S.C. § 103 as
unpatentable over Liao, Kilman, Lee, Cuozzo, Eslambolchi, and Stannard.
(Final Action 29.)
IX. The Examiner rejects claims 31, 35, and 36 under 35 U.S.C.
§ 103 as unpatentable over Ismert, Liao, Marshall, Lee, Cuozzo,
Eslambolchi, and Campbell. (Final Action 9.)
X. The Examiner rejects claim 34 under 35 U.S.C. § 103 as
unpatentable over Ismert, Liao, Marshall, Lee, Cuozzo, Eslambolchi, and
Goldman. (Final Action 11.)
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Appeal2018-005530
Application 14/575,312
XI. The Examiner rejects claim 34 under 35 U.S.C. § 103 as
unpatentable over Kilman, Liao, Marshall, Lee, Cuozzo, Eslambolchi, and
Goldman. (Final Action 21.)
XII. The Examiner rejects claim 34 under 35 U.S.C. § 103 as
unpatentable over Liao, Kilman, Lee, Cuozzo, Eslambolchi, and Goldman.
(Final Action 29.)
XIII. The Examiner rejects claims 1, 24, 28, and 33 under 35 U.S.C.
§ l 12(b ), as indefinite. (Final Action 2.)
ANALYSIS
Claims 1 and 28 are the independent claims on appeal, with the rest of
the claims on appeal (i.e., claims 6-8, 10-12, 22-25, 27, 29, and 31-36)
depending therefrom. (See Appeal Br., Claims App.)
Independent claims 1 and 28 each recite a "manhole cover assembly"
comprising an "inner cylinder," an "outer cylinder," and a "cover plate."
(Appeal Br., Claims App.) Independent claim 1 requires the cover plate to
"extend[] radially past an outer surface of said inner cylinder," and to
"provide[] an undersurface extending radially outward of said outer surface
of said inner cylinder." (Id.) Independent claim 28 similarly requires the
cover plate to "extend[] radially outward of an outer surface of said inner
cylinder" and to "hav[e] an upper surface and an undersurface." (Id.)
Independent claims 1 and 28 also require the inner cylinder to have an
"upper ratchet mechanism" and the outer cylinder to have a "lower ratchet
mechanism." (Appeal Br., Claims App.) The lower ratchet mechanism is
"configured to mesh with" the upper ratchet mechanism "at one of a
plurality of distinct ratcheting positions." (Id.) And the distinct ratcheting
positions correspond to different "elevation[s]" of the cover plate. (Id.)
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Appeal2018-005530
Application 14/575,312
In the Appellant's illustrated manhole cover assembly I 0, first and
second ratcheting positions correspond to first and second elevations of the
cover plate 16, as shown in the drawings reproduced below.
first ratchet position
Figure IA
first cover-plate elevation
Figure I
second ratchet position
Figure 6A
r f:il 1
l-JI ~~.·I r28. ! vd I
l I
I
I
18 I
'", 19, :
·~j: 1.., ___________ _J
second cover-plate elevation
Figure 6
............... .,.,..,..,..,.,, ................. ..... ........ ,
The above drawings show a first ratchet position (Figure IA), a first cover-
plate elevation (Figure I), a second ratchet position (Figure 6A), and a
second cover-plate elevation (Figure 6). When the ratchet mechanism 18
and the ratchet mechanism are meshed in the first ratcheting position, the
cover plate 16 is at the first elevation relative to the outer cylinder 12; and,
when the ratchet mechanism 18 and the ratchet mechanism 2 8 are meshed in
the second ratcheting position, the cover plate 16 is at the second, higher,
elevation relative to the outer cylinder 12. (See Spec. ,r,r 24, 25, 31, 32.)
To adjust the cover plate 16 to a higher or lower elevation, the cover
plate 16, and thus the inner cylinder 14, must be lifted upward from the outer
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Appeal2018-005530
Application 14/575,312
cylinder 12 to "disengage ratchet mechanism 28 from ratchet mechanism 18."
(Spec. ,r 48.) Upon such disengagement, the cover plate 16, and thus the
inner cylinder 14, can be rotated relative to the outer cylinder 14 to align
with the desired new ratchet position. (See id.) "After rotation, the inner
cylinder 14 may then be lowered to reengage the ratchet mechanism 18 with
the ratchet mechanism 2 8." (Id.)
To accomplish this cover-plate-elevation adjustment, "[t]he cover
plate 16 includes a plurality of slots 22 configured to receive tools for
adjusting the [manhole] assembly 10." (Spec. ,r 46.) The Appellant's
example slots 22, and the Appellant's example tool 30, are shown in the
drawings reproduced below.
Figure 4
22
\
Figure 5
'\,\;-------------------------------.v
., 32 #!'
~~/{"
n
[L.~-33
,------------''-----------, l '-34
The above drawings show the cover plate 16 having "example slots 22" that
are "spaced 180 degrees from each other, each at the same radial distance"
from a central axis of the cover plate 16. (Spec. ,r 46.) The above drawings
also show the tool 3 having a "handle 32," a "vertically linear member 33,"
and a "horizontally linear member 34." (Id. ,r 47.) "The horizontal member
34 and the vertically linear member 33 are configured to be inserted into the
slots 22" and then "the tool 30 is rotated 90°." (Id. ,r 48.) "[W]hereupon"
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Appeal2018-005530
Application 14/575,312
this rotation, "the horizontally linear member 34 can be used to lift upward
on a bottom surface of the cover plate 16, which in tum lifts the inner
cylinder 14." (Id.)
Rejections I-XII
Independent claim 1 recites an "adjustment tool" that is "configured
to engage said cover plate by inserting said second member through said slot
and rotating said adjustment tool such that said second member is positioned
against said undersurface." (Appeal Br., Claims App.) Independent claim 28
recites an "adjustment tool" with a "horizontal member configured to engage
a bottom surface of said cover plate ... after a rotation of said adjustment tool
after insertion into said linear slot." (Id.) In other words, independent claim 1
and independent claim 28 each requires the adjustment tool to be configured
to engage the underside of the cover plate only after the tool is rotated.
The Examiner's obviousness rejections are all premised upon the
claimed adjustment tool being taught by Cuozzo and Eslambolchi. (See
Final Action 5-29.) The Examiner finds that the proposed combination of
the prior art "yields" an adjustment tool "configured to engage said cover
plate and lift said inner cylinder to disengage said upper and lower ratchet
mechanisms such that upper and lower ratchet mechanisms can be adjusted
between said plurality of distinct ratcheting positions." (Id. at 5.)
The Appellant argues that the Examiner's rejections ignore the claim
limitation requiring the tool to be configured to engage the underside of
the cover plate only after the tool is rotated. (See Appeal Br. 12-13.)
According to the Appellant, the Examiner provides no finding that the cited
prior art discloses rotating the adjustment tool such that the tool's horizontal
member is positioned against the undersurface of the cover plate. (Id. at 13.)
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Application 14/575,312
And, according to the Appellant, "[e]ven after the Examiner's Answer, there
has still been no allegation" that any of the cited prior art discloses this
claimed feature. (Reply Br. 4.)2
We are persuaded by the Appellant's argument that the Examiner does
not establish adequately that the claimed manhole assembly would have been
obvious over the prior art. Specifically, for example, the Examiner does not
provide us with sufficient findings regarding how and why the allegedly
obvious tool is configured to engage the underside of the cover plate after the
tool is rotated. Insofar as independent claims 1 and 28 recite an "intended
use" for the allegedly obvious tool (Answer 5), we see no adequate
explanation on the record as to the structural features of this theoretical tool
which would accommodate such an intended use.
Thus, we do not sustain the Examiner's rejections of claims 1, 6-8,
10-12, 22-25, 27-29, and 31-36 under 35 U.S.C. § 103.
Re} ection XIII
The Examiner's indefiniteness rejection is premised upon alleged lack
of antecedent basis, presumably typographic errors, and supposedly
inconsistent terminology. (See Final Action 2-3.) The Appellant expresses
2 In the Answer, the Examiner specifically calls out the arguments made "[ a ]t
the bottom of page 12 through the top half of page 13 of the Appeal Brief."
(Answer 6.) According to the Examiner, in this section of the Appeal Brief,
the Appellant argues "what the rejection states Eslambolchi teaches is not
what the claim recites," and that the Appellant "is arguing the reference
alone." (Id.) The Examiner points out that "[u]sing a tool for rotation is
taught by Cuozzo," "the structure of the tool is taught by Eslambolchi," and
"Eslambolchi's tool is capable of rotation" (id.); but the Examiner says
nothing about the tool engaging the underside of the cover plate as the result
of such rotation.
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Application 14/575,312
what appears to be a sincere intention to later amend the claims to the
Examiner's satisfaction. (See Appeal Br. 38; see also Reply Br. 5.) But our
review is confined to the claims as currently pending, and the Appellant
offers no arguments as to why the pre-amended versions of the claims at
issue are not indefinite.
Thus, on the record before us, we must summarily sustain the
Examiner's rejection of claims 1, 24, 28, and 33 under 35 U.S.C. § l 12(b ),
as indefinite. However, we agree with the Appellant that the purported
problems in the claim language do not impede our evaluation of the § 103
rejections on appeal. (See Appeal Br. 38.)
DECISION
We REVERSE the Examiner's rejections of claims 1, 6-8, 10-12,
22-25, 27-29, and 31-36 under 35 U.S.C. § 103.
We AFFIRM the Examiner's rejection of claims 1, 24, 28, and 33
under 35 U.S.C. § 112.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED-IN-PART
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