11169430 (B.P.A.I. Aug. 14, 2012)

Ex Parte Lee et al

Board of Patent Appeals and InterferencesAug 14, 2012

11169430 (B.P.A.I. Aug. 14, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/169,430 07/20/2005 Kenneth Lee 442005-00104-C1 3474 7590 08/14/2012 Mark P. Levy Thompson Hine LLP P.O. Box 8801 Dayton, OH 45401-8801 EXAMINER WENDELL, MARK R ART UNIT PAPER NUMBER 3635 MAIL DATE DELIVERY MODE 08/14/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte KENNETH LEE and CLIFFORD D. BENNETT ________________ Appeal 2010-004831 Application 11/169,430 Technology Center 3600 ________________ Before JOHN C. KERINS, MICHAEL L. HOELTER and HYUN J. JUNG, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004831 Application 11/169,430 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a rejection of claims 2 and 3 (App. Br. 1). The grounds of rejection with respect to claims 1, 4 and 5 have been withdrawn (Ans. 3). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The claimed subject matter pertains generally to chairs and spacers that are used in construction activities for the support of steel reinforcement members (Spec. 1:5-6). Sole independent claim 2 is representative of the claims on appeal and is reproduced below: 2. A post-tension cable chair, comprising: a generally tapered body including a plurality of spaced legs having apertures therebetween sized to freely admit the flow of poured concrete therethrough; said body having an inner surface and an outer surface, said inner and outer surfaces being substantially complementary to each other to allow a plurality of chairs to be stacked within one another for storage and shipment; a plurality of resilient posts projecting upwardly from an upper receiving area and adapted to secure post-tension cables engaged thereby in intersecting relationships to each other; at least one notch formed between adjacent pairs of posts to receive and support a cable, said posts defining a passageway above said notch; and an inwardly extending flanged rim proximate a lower extent of each said notch, said flanged rim defining a saddle for supporting a cable inserted within said passageway. REFERENCES RELIED ON BY THE EXAMINER Leonardis US 5,107,654 Apr. 28, 1992 Appeal 2010-004831 Application 11/169,430 3 THE REJECTION ON APPEAL Claims 2 and 3 are rejected under 35 U.S.C. § 102(b) as being anticipated by Leonardis (Ans. 4). ANALYSIS Independent claim 2 requires at least one notch formed between adjacent pairs of posts to receive a cable and “an inwardly extending flanged rim proximate a lower extent of each said notch, said flanged rim defining a saddle for supporting a cable” inserted in the notch. The Examiner relies on Figures 2 and 5-7 of Leonardis as anticipating the limitations of claim 2 and specifically finds that Leonardis illustrates an “inwardly extending flanged rim” that is “proximate a lower extent of each notch (7-10) thus defining a saddle for supporting cables (13)” (Ans. 4, 5 referencing Examiner’s annotated Leonardis Fig. 1). The Examiner notes that “the rim is considered inwardly extending from the outer surface of the apparatus” and that it “provid[es] the same function as that of the instant application” (Ans. 5). Appellants contend that the Examiner’s “interpretation of the expression ‘inwardly extending flanged rim’ is unreasonable” in that the Examiner “essentially ignores the existence of the adjective ‘flanged’” (App. Br. 4). Appellants also contend that the Examiner has negated the limiting nature of each of the modifiers “inwardly” and “extending” as well (App. Br. 5). “No specific definition is given with respect to ‘inwardly extending flanged rim’ is given within the original specification” states the Examiner who does not dispute the dictionary definition offered as evidence by Appellants of the ordinary and customary meaning of the term “flange” Appeal 2010-004831 Application 11/169,430 4 (Ans. 6; App. Br. 5, see also Reply Br. 1). Appellants’ Evidence Appendix, Exhibit E, proffers the definition of “flange” as “[a] protruding rim, edge, rib, or collar, as on a wheel or a pipe shaft, used to strengthen an object, hold it in place, or attach it to another object.” Appellants contend that the Examiner has not properly interpreted this claim limitation “in light of the specification as it would be interpreted by one of ordinary skill in the art” because this interpretation “must be consistent with the interpretation that those skilled in the art would reach” (App. Br. 4, see also Reply Br. 1). In an Advisory Action mailed after the final rejection but before Appellants’ Notice of Appeal (see Evidence Appendix, Exhibit D), the Examiner addressed the proffered dictionary definition by stating that “[t]he examiner notes that a flange can be considered a collar, which Leonardis illustrates.” However, Appellants point out that the Examiner has ignored the “protruding” portion of this definition (App. Br. 6-8). Additionally, Appellants provide several images depicting the difference between a rim and a flanged rim (App. Br. 7). Appellants also contend that their Specification distinguishes between (which the Examiner ignores) “notches such as the notches 28d in the exemplary chair shown in Figure 9 from ordinary notches such as the notches 28 in the exemplary chairs shown in Figures 1-8, and that this distinction has been readily apparent to one of ordinary skill in the art” (App. Br. 5, see also Reply Br. 2). We understand Appellants as contending that the bottom of notch 28d of Figure 9 incorporates a flange that extends inwardly while the bottom of the notches shown in Figures 1-8 do not have a flange of any type but instead rely on material thickness to support the cable. Only the chair shown in Figure 9 is described as having “inwardly extending Appeal 2010-004831 Application 11/169,430 5 flanged rims 60” and Appellants contend that Leonardis does not disclose such structure (Spec. 13:12-17; App. Br. 6). In response, the Examiner directs attention to the function of these flanged rims (i.e. to form saddles to support the cable) and the Examiner states that the bottom of Leonardis’ notches “perform this same function” which is provided as a basis for finding that Leonardis discloses a “flanged rim” (Ans. 6-7). Appellants contend that the claimed “saddle” limitation “does not justify a broadening of the term ‘inwardly extending flanged rim’ to cover structures such as those shown in . . . . Leonardis” (Reply Br. 3). We are persuaded by Appellants’ arguments. Based on the record presented, we do not agree with the Examiner that each and every limitation recited in Claim 2 is disclosed, either expressly or inherently, in Leonardis. Accordingly, we reverse the rejection of claims 2 and 3. DECISION The rejection of claims 2 and 3 is reversed. REVERSED MP