Ex Parte Radu

Patent Trial and Appeal Board

Dec 10, 2015

13086025 (P.T.A.B. Dec. 10, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
13/086,025 04/13/2011 John Radu JR. RVRS-1001 DIV 3284
7733 7590 12/10/2015
WALKER & JOCKE
231 SOUTH BROADWAY STREET
MEDINA, OH 44256
EXAMINER
CHAPMAN, JEANETTE E
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
12/10/2015 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN RADU, JR.
____________________

Appeal 2013-008699
Application 13/086,025
Technology Center 3600
____________________

Before LYNNE H. BROWNE, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
John Radu, Jr. (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1–3 and 5–18.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.

1 Independent claim 4 is indicated as allowable. Final Act. 9; see also Ans.
3.
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CLAIMED SUBJECT MATTER
Independent claims 1, 7, and 13 are pending. Independent claim 1,
reproduced below, illustrates the claimed subject matter.
1. A method of producing a form for a gas station island
comprising:
a) forming a plurality of form wall members comprised
of galvannealed steel, wherein each wall member includes an
upper edge having a curled flange;
b) mounting at least one first side connection device to an
end of at least one wall member, wherein the at least one first
side connection device includes a curved tab, wherein the at
least one first side connection device is mounted to the end of
the at least one wall member such that concave surfaces of the
curved tab and the curled flange face a common direction;
c) mounting at least one second side connection device to
an end of at least one further wall member, wherein the at least
one second side connection device includes at least one straight
slot and a top tab, wherein the at least one second side
connection device is mounted to the end of the at least one
further wall member such that the top tab traverses the curled
flange at the end of the at least one further wall member and
provides a space between the top tab of the at least one second
side connection device and the curled flange of the at least one
further wall member, which space is operative to receive therein
the curved tab of the at least one first side connection device;
wherein the plurality of wall members are capable of
being connected together to form a substantially continuous
wall having an outer surface and an inner surface, the inner
surface forming an enclosed chamber that is operative to
support concrete therein, and the inner surface including
concave surfaces of the curled flanges that face inwardly
towards the enclosed chamber.

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REJECTIONS
I. Claims 1, 2, 5, 7–9, 112, 13–15, and 17 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Young (US 6,010,276, iss. Jan. 4,
2000), Sondheim (US 3,242,833, iss. Mar. 29, 1966), and Lynch (US
3,379,105, iss. Apr. 23, 1968).
II. Claims 3, 10, and 163 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Young, Sondheim, Lynch, and Seidner (US
2002/0190425 A1, pub. Dec. 19, 2002).
III. Claims 6, 12, and 184 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Young, Sondheim, Lynch, and DeLoach (US
2007/0028552 A1, pub. Feb. 8, 2007).
OPINION
Rejection I
Claims 1, 2, 5, 8, and 14
Appellant argues claims 1, 2, 5, 8, and 14 as a group. Br. 9. We
select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv)
(2014). Claims 2, 5, 8, and 14 stand or fall with claim 1.

2 The Examiner’s statement of the claims rejected under 35 U.S.C. § 103(a)
does not include claim 11 (Final Act. 2), however the discussion of the
rejection addresses claim 11 (id. at 6–7). Accordingly, the omission of claim
11 from the statement of the rejection is a considered to be a typographical
error.
3 The Examiner’s statement of the rejection does not include claim 16 (Final
Act. 8), however the discussion of the rejection addresses claim 16 (id. at 9).
Accordingly, the omission of claim 16 from the statement of the rejection is
considered to be a typographical error.
4 The Examiner’s statement of the rejection does not include claim 18 (Final
Act. 9), however the discussion of the rejection addresses claim 18 (id. at
10–11). Accordingly, the omission of claim 18 from the statement of the
rejection is considered to be a typographical error.
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The Examiner finds that Young teaches a method for producing a
form for a gas station island including forming a plurality of wall members
each having a curled flange and mounting a first connection device having a
tab to a wall member such that the plurality of wall members are capable of
being connected together to form a substantially continuous wall having an
outer surface and an inner surface, the inner surface forming an enclosed
chamber that is operative to support concrete therein, and the inner surface
including concave surfaces of the curled flanges that face inwardly towards
the enclosed chamber. Final Act. 2–3. The Examiner finds that the tab of
Young’s first connection device is not curled and does not include a concave
surface. Id. at 2. The Examiner finds, however, that Sondheim teaches a
first connection device including a curved tab (wedge 22) such that the
concave surfaces of the curved tab and the curled flange (concave bead 14)
face a common direction. Id. The Examiner also finds that Lynch teaches
mounting a second side connection device having a straight slot (opening
47) and a top tab (tongue 33) such that the top tab traverses the curled flange
at the end of the wall member and provides a space between the top tab and
the second side connection device and the curled flange of another wall
member, which space would be operative to receive therein the curved tab of
Sondheim. Id. at 3. The Examiner determines that it would have been
obvious to one skilled in the art to modify Young to include Sondheim’s
wedge 22 and Lynch’s slot 47 and tab 33 “to provide a further fastener
which provides a further inducement helping to keep the wall members
together when the concrete is poured.” Id..
The Examiner acknowledges that Young does not disclose
galvannealed steel but finds that “galvannealed steel is known in the art.”
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Final Act. 3. The Examiner concludes that “one of ordinary skill in the art
would have appreciated that various types of steels and metals [are] known
in the art and would have selected those best suited for the recited form” and
that “[n]o optimal function or unexpected results can be shown for”
galvannealed steel. Id. at 3–4.
Curved Tab
Appellant argues that the prior art fails to teach the “concave surfaces
of the curved tab and the curled flange,” as recited in claim 1. Br. 10–11.
Appellant specifically contends that Sondheim’s wedge 22, being solid, has
a convex — rather than a concave — surface. Id. at 11.
The Examiner responds that “[t]here is no appreciable difference
[between Appellant’s] elements 50 and 52 and Sondheim[’s] elements 14
and 22 resulting in optimal function or unexpected result.” Ans. 20. Thus,
the Examiner reasonsthat the difference between a hollow curved tab and a
wedge is unpatentable because it is an obvious matter of design choice. We
agree with the Examiner that a difference in shape is an obvious matter of
design choice absent evidence of the criticality of the particular
configuration. We are not persuaded by Appellant’s argument regarding the
teachings of the combined references, which alleges a convex shape for
Sondheim’s wedge, but does not explain why the difference between the
shape of the wedge and the claimed “concave surface” would have been
more than an obvious matter of design choice.
Appellant also argues that the Office “failed to state any apparent
reason or rational underpinning to modify the prior art to correspond to the
subject matter actually recited in these claims.” Br. 11. Appellant further
argues that “there are an infinite and unpredictable number of possible ways
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that parts can be modified.” Id. However, the Examiner has articulated a
reasoning (Final Act. 3), and Appellant has failed to acknowledge the
Examiner’s reasoning or explain why it lacks rational underpinning. We are
not persuaded by Appellant’s argument.
Appellant further asserts that “the combination of Lynch with Young
and Sondheim would teach away from even using a wedge, as Lynch uses a
non-analogous threaded fastener (13) to hold the upper edge surface (27,
27’) together (see Figure 4 of Lynch).” Br. 11–12. Appellant’s argument is
unconvincing because teaching away requires that a reference “criticize,
discredit, or otherwise discourage” the solution claimed. See In re Fulton,
391, F.3d 1195, 1201 (Fed. Cir. 2004) (To teach away, prior art must
“criticize, discredit, or otherwise discourage the solution claimed.”).
Appellant has failed to point to any such criticism in the references, or to
explain why Lynch’s threaded fastener 13 teaches away from the solution
claimed, namely, “wherein the connection device includes a curved tab.”
Br. 21–22, Claims App..
Galvannealed Steel
Appellant argues that the cited prior art fails to disclose or suggest the
“plurality of form wall members comprised of galvannealed steel,” or any
apparent reason to use galvannealed steel in the walls of forms for gas
station islands. Br. 12–13.
The Examiner finds, in response, that “[g]alvannealed metals have
been around and known since the late 1930[’s]; this includes the process for
making them and their noncorrosive benefits.” Ans. 21. Although the
Examiner cites no prior art to support this finding, Hori (US 6,159,622, iss.
Dec. 12, 2000) supports the Examiner’s finding that galvannealed steel and
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its properties are old and well known, including for use in construction. See
Hori, col. 1, ll. 12–17. Specifically, Hori discloses that:
galvannealed steel sheet has recently been in widespread use in
various sectors of industry such as automobiles, electric home
appliances, construction materials, and the like because of their
excellent weldability, paintability, corrosion resistance,
economic merits, and the like.
Id. Given the teachings of Hori set forth above, it would have been obvious
to one of ordinary skill in the art to select galvannealed steel as the material
for the plurality of form wall members because of its use in the construction
industry and its known benefits, such as paintability, corrosion resistance,
and economic merits.
Appellant also argues that the Declaration under 37 C.F.R. § 1.132 by
inventor John Radu, Jr. (see Br., Evidence App.) “provides evidence of
surprising commercial success, which constitutes evidence of non-
obviousness with respect to the use of galvannealed steel in the construction
of gas station island forms.” Br. 13. We do not find the Declaration to
include sufficient evidence to outweigh a prima facie case of obviousness.
To be given substantial weight in the determination of obviousness or
nonobviousness, evidence of secondary considerations must be relevant to
the subject matter as claimed, and therefore, we must determine whether
there is a nexus between the merits of the claimed invention and the
evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied, 475
U.S. 1017 (1986). Here, Appellant has failed to establish a nexus between
the claimed invention and the evidence provided in the Declaration. For
example, the Declaration focuses on the use of galvannealed steel in
Riverside Steel’s forms but does not include any further description of the
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product or whether any of the other claim limitations are present in the
product. As such, there is no evidence that the allegedly successful product
is commensurate in scope with the claims, and we cannot determine whether
Riverside Steel’s galvannealed steel forms include features that are not
claimed, which may contribute to the success of the product.
The Declaration additionally fails to establish sufficient evidence of
commercial success, because gross sales figures do not show commercial
success absent evidence of market share. Cable Electric Prods., Inc. v.
Genmark, Inc., 770, F.2d 1015 (Fed. Cir. 1985).
In view of the foregoing, we sustain the rejection of claims 1, 2, 5, 8,
and 14 under 35 U.S.C. § 103(a) as being unpatentable over Young,
Sondheim, and Lynch. We designate our opinion as a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b) to provide Appellant with a full
and fair opportunity to respond.
Claims 7, 9, 11, 13, 15, and 17
Appellant does not present separate arguments for claims 7, 9, 11, 13,
15, and 17, but rather repeats the arguments for claim 1. Br. 15. We
therefore sustain the rejection of these claims for the reasons discussed
supra, and we similarly designate our opinion as a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b) to provide Appellant with a full and fair
opportunity to respond.

Rejection II
Appellant presents no separate argument that claims 3, 10, and 16
would be patentable over Young, Sondheim, Lynch, and Seidner, and
instead groups these claims with the claims subject to Rejection I. Br. 9, 15.
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We therefore sustain Rejection II for the reasons discussed supra in regard
to Rejection I, and we likewise designate our opinion as a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b) to provide Appellant with a full
and fair opportunity to respond.

Rejection III
Claim 6
Appellant groups claim 6 with claim 1 and does not present any
separate argument for claim 6. Br. 9. We therefore sustain the rejection of
claim 6 for the same reasons discussed supra, and we designate our opinion
as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) to provide
Appellant with a full and fair opportunity to respond.
Claims 12 and 18
Claim 12 recites “securing the at least one rod in the hollow holder
using at least one screw that extends through a wall of the hollow holder.”
Br. 27, Claims App. Claim 18 recites “the at least one leveling device
includes a screw that extends through a wall of the hollow holder and is
operative to secure the rod in the hollow holder.” Id. at 29–30, Claims App.
For each of claims 12 and 18, the Examiner finds that DeLoach
discloses a leveling device, including a hollow holder and rod therethrough.
Final Act. 10–11. However, the Examiner finds that DeLoach fails to
disclose securing the at least one rod in the hollow holder using at least one
screw. Id. at 10. The Examiner finds that screws are known anchoring
devices, which could be used to secure rod. Id. at 17–18.
Appellant argues that DeLoach is directed to an anchor that receives a
threaded bolt to anchor the concrete tilt up wall to further concrete, and the
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anchor is not a leveling device. Br. 19 (citing Deloach ¶ 34 and Fig. 4).
Appellant also argues that no additional screw would be needed to secure the
bolt in place in DeLoach because the bolt would inherently be secured in the
concrete into which it is mounted, and there is no reason to provide a screw
since the device is an anchor. Id. We agree with Appellant. Accordingly,
we do not sustain the Examiner’s rejection of claims 12 and 18.

DECISION
We AFFIRM the rejection of claims 1, 2, 5, 7–9, 11, 13–15, and 17
under 35 U.S.C. § 103(a) over Young, Sondheim, and Lynch, and we
designate the affirmance as a NEW GROUND OF REJECTION pursuant to
37 C.F.R. § 41.50(b).
We AFFIRM the rejection of claims 3, 10, and 16 under 35 U.S.C.
§ 103(a) over Young, Sondheim, Lynch, and Seidner, and we designate the
affirmance as a NEW GROUND OF REJECTION pursuant to 37 C.F.R.
§ 41.50(b).
We AFFIRM the rejection of claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Young, Sondheim, Lynch, and DeLoach, and we
designate the affirmance as a NEW GROUND OF REJECTION pursuant to
37 C.F.R. § 41.50(b).
We REVERSE the rejection of claims 12 and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Young, Sondheim, Lynch, and DeLoach.

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FINALITY OF THE DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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