N. Eric. Knudsen

Patent Trials and Appeals Board

Jun 15, 2020

12727063 - (D) (P.T.A.B. Jun. 15, 2020)

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.
12/727,063 03/18/2010 N. Eric Knudsen 860156.406 2478
500 7590 06/15/2020
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
BUTLER, PATRICK NEAL
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
06/15/2020 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte N. ERIC KNUDSEN
__________

Appeal 2018-007896
Application 12/727,063
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision rejecting claims 30–47. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims on appeal are directed to a method of preparing a foundation for
a fence or a rail comprising forming first and second post sleeves in first and
second footings of concrete, respectively, in respective post holes in the ground.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as N. Eric Knudsen. Appeal
Brief dated December 19, 2017 (“App. Br.”), at 1.
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Each of the post sleeves is formed by (1) holding a post sleeve core in the
respective post hole; (2) depositing concrete into the respective post hole to contact
the exterior surface of the post sleeve core; (3) allowing the concrete to at least
partially harden; and (4) removing the post sleeve core from the at least partially
hardened concrete to expose a post receiving cavity. Each post sleeve core
includes an exterior surface sized and shaped to define at least a portion of the post
receiving cavity which insertably receives and supports a post. App. Br. 16.
Representative claim 30 is reproduced below from the Claims Appendix to
the Appeal Brief. The limitations at issue are italicized.
30. A method of preparing a foundation for a fence or a rail, the
method comprising:
forming a first post sleeve in a first footing of concrete within a
first post hole in the ground; and
forming a second post sleeve in a second footing of concrete
within a second post hole in the ground;
wherein forming each of the first and second post sleeves
includes:
holding a post sleeve core in the respective post hole at a
selected position, the post sleeve core including an exterior surface
sized and shaped to define at least a portion of a post receiving cavity
in the respective footing of concrete to insertably receive and support
a post,
depositing the concrete of the respective footing into the
respective post hole around the post sleeve core to contact the exterior
surface of the post sleeve core,
allowing the concrete of the respective footing to at least
partially harden while the post sleeve core is held in position within
the respective post hole with the exterior surface of the post sleeve
core in contact with the concrete, and
removing the post sleeve core from the at least partially
hardened concrete of the respective footing to expose the post
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receiving cavity to receive and support the post, the post receiving
cavity having been formed in the at least partially hardened concrete
of the respective footing by the exterior surface of the post sleeve core
such that the post receiving cavity has a shape that corresponds to the
exterior surface of the post sleeve core.
App. Br. 16.
The claims on appeal stand rejected as follows:
(1) claims 30, 39, 40, 43, 44, and 46 under 35 U.S.C. § 103(a) as
unpatentable over Van Rijn2 in view of Hodges;3
(2) claim 31 under 35 U.S.C. § 103(a) as unpatentable over Van Rijn in
view of Hodges and further in view of Hanford;4
(3) claims 32 and 33 under 35 U.S.C. § 103(a) as unpatentable over Van
Rijn in view of Hodges and further in view of Bauer;5
(4) claim 34 under 35 U.S.C. § 103(a) as unpatentable over Van Rijn in
view of Hodges and Bauer and further in view of McNamara et al.;6
(5) claim 35 under 35 U.S.C. § 103(a) as unpatentable over Van Rijn in
view of Hodges and Bauer and further in view of Brown;7
(6) claims 36–38 under 35 U.S.C. § 103(a) as unpatentable over Van Rijn
in view of Hodges and further in view of Worzala, Jr.;8
(7) claims 41 and 42 under 35 U.S.C. § 103(a) as unpatentable over Van
Rijn in view of Hodges and further in view of Duncan et al.;9 and

2 US 2005/0241263 A1, published November 3, 2005 (“Van Rijn”).
3 US 5,492,429, issued February 20, 1996 (“Hodges”).
4 US 5,040,251, issued August 20, 1991 (“Hanford”).
5 AT 402 310 B, issued April 25, 1997 (“Bauer”).
6 WO 2008/047151 A1, published April 24, 2008 (“McNamara”).
7 US 2004/0134146 A1, published July 15, 2004 (“Brown”).
8 US 4,726,561, issued February 23, 1988 (“Worzala, Jr.”).
9 US 6,621,417 B2, issued September 16, 2003 (“Duncan”).
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(8) claims 45 and 47 under 35 U.S.C. § 103(a) as unpatentable over Van
Rijn in view of Hodges and further in view of Brown.
B. DISCUSSION
The Examiner finds Van Rijn teaches a method of forming openings in
concrete capable of holding rail posts or columns. Non-Final Act. 2.10 The
Examiner refers to Van Rijn Figures 1a and 1b, reproduced below, to illustrate the
disclosed method. Non-Final Act. 3.

Van Rijn Figures 1a and 1b illustrate
arranging a nut and a shaft in a concrete structure.
In Van Rijn’s method, the Examiner finds that concrete is deposited around
body 23, which corresponds to the claimed “post sleeve core.” After the concrete
is partially set, the Examiner finds that body 23 is removed from the concrete,
thereby forming recess or cavity 29, which corresponds to the claimed “post
sleeve” and “post receiving cavity.” Non-Final Act. 2–3; Van Rijn ¶ 40; see also
Ans. 2 (explaining that “[t]he cavity for a fence post is claimed as a ‘post sleeve’ . .
. and ‘post receiving cavity’”).11 Van Rijn discloses that nut 26 is attached to body

10 Non-Final Office Action dated June 20, 2017.
11 Examiner’s Answer dated May 31, 2018.
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23, and when body 23 is removed, nut 26 remains behind in the concrete.12 Van
Rijn ¶ 40.
Van Rijn discloses that the method “can be used to produce any conceivable
type of cavity in a concrete material.” Van Rijn ¶ 19. Van Rijn also discloses that
all kinds of structures can be coupled to the embedded screw thread (e.g., nut 26),
such as safety rails, plastic posts, and columns. Van Rijn ¶¶ 12, 25.
The Examiner finds Van Rijn does not expressly teach first and second post
holes in the ground for receiving respective post sleeves (i.e., cavity 29 and the
surrounding concrete structure) as recited in claim 30. Non-Final Act. 4; see also
App. Br. 10 (stating “[t]he Examiner asserts that Van Rijn teaches all of the
features of independent claim 30 except for the forming of multiple post sleeves in
respective post holes”). The Examiner, however, finds Hodges teaches “form[ing]
bodies in holes in the ground for [receiving] fence posts and [making] a fence.”
Non-Final Act. 4. The Examiner concludes that it would have been obvious to one
of ordinary skill in the art to use the method disclosed in Van Rijn to form multiple
post sleeves in respective post holes in the ground to make a fence based on the
teachings in Hodges. Non-Final Act. 4.
The Appellant argues that embedding nut 26 in concrete cavity 29, as
disclosed in Van Rijn, “is unrelated to supporting a post directly with a post
receiving cavity formed in a concrete footing within a post hole.” App. Br. 10
(emphasis added). “Put another way,” the Appellant argues that “there is simply
no teaching or suggestion in Van Rijn directed to forming any structure in a

12 The Examiner finds that nut 26 corresponds to the post sleeve top recited in
claim 31. Non-Final Act. 4, 6. The Appellant does not direct us to any error in the
Examiner’s finding.
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concrete footing within a post hole, let alone forming a plurality of post sleeves to
directly support posts for a fence or rail.” App. Br. 10 (emphasis added).
The Appellant’s argument fails to consider the prior art as a whole. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981) (the test for obviousness is what the
combined teachings of the references would have suggested to one of ordinary skill
in the art). Van Rijn discloses that posts may be supported in cavity 29. See Van
Rijn ¶ 12. The Examiner relies on Hodges to teach that, at the time of the
Appellant’s invention, it was known to form a plurality of post holes in the ground
to make a fence. Thus, in the modification proposed by the Examiner, a plurality
of cavities 29 and the surrounding concrete structure (corresponding to the claimed
“post sleeve” and “post receiving cavity”) shown in Van Rijn Figure 1b, would be
formed in a plurality of respective post holes in the ground to make a fence.
Notably, the Appellant does not direct us to any evidence establishing that cavities
29 are not capable of supporting a fence post. See Van Rijn ¶ 19.
The Appellant argues that Hodges teaches a plurality of tubular body
portions 21 that are fixedly embedded in concrete to receive and support sign posts
and the like. App. Br. 11–12. In contrast, the Appellant argues that the claimed
invention is directed to forming post receiving cavities in concrete using a
removable post sleeve core. App. Br. 12.
Again, the Appellant’s argument fails to consider the prior art as a whole.
Keller, 642 F.2d at 425. In the rejection on appeal, the Examiner merely relies on
Hodges to show that, at the time of the Appellant’s invention, it was known to
form a plurality of post holes in the ground to receive respective fence posts and
make a fence. See Non-Final Act. 4.
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For the reasons set forth above, a preponderance of the evidence of record
supports the Examiner’s conclusion of obviousness. Therefore, the obviousness
rejection of claim 30 is sustained.
The Appellant does not present arguments in support of the separate
patentability of any of claims 31–47. See App. Br. 14. Therefore, the obviousness
rejections of claims 31–47 also are sustained.
C. CONCLUSION
The Examiner’s decision is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
30, 39, 40,
43, 44, 46
103(a) Van Rijn, Hodges 30, 39, 40,
43, 44, 46

31 103(a) Van Rijn, Hodges,
Hanford
31
32, 33 103(a) Van Rijn, Hodges,
Bauer
32, 33
34 103(a) Van Rijn, Hodges,
Bauer, McNamara
34
35 103(a) Van Rijn, Hodges,
Bauer, Brown
35
36–38 103(a) Van Rijn, Hodges,
Worzala, Jr.
36–38
41, 42 103(a) Van Rijn, Hodges,
Duncan
41, 42
45, 47 103(a) Van Rijn, Hodges,
Brown
45, 47
Overall
Outcome
30–47

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).
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AFFIRMED