Ex Parte 7779581 et al

Patent Trials and Appeals BoardJun 19, 2014

90009907 - (R) (P.T.A.B. Jun. 19, 2014)

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. 90/009,907 05/04/2011 7779581 766P001-RX 4242 42754 7590 01/15/2015 Nields, Lemack & Frame, LLC 176 E. Main Street Suite #5 Westborough, MA 01581 EXAMINER DAWSON, GLENN K ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 01/15/2015 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 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. 95/001,635 05/26/2011 7779581 766P001-RXE 6004 42754 7590 01/15/2015 Nields, Lemack & Frame, LLC 176 E. Main Street Suite #5 Westborough, MA 01581 EXAMINER DAWSON, GLENN K ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 01/15/2015 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 ____________________ ENGINEERED PLASTICS, INC. Requester, Cross-Appellant, Respondent v. ADA SOLUTIONS, INC. Patent Owner, Appellant, Respondent ____________________ Appeal 2014-001732 Reexamination Controls 95/001,635 and 90/009,907 Patent US 7,779,581 B2 Technology Center 3900 ____________________ Before STEVEN D.A. McCARTHY, DANIEL S. SONG and BRETT C. MARTIN, Administrative Patent Judges. SONG, Administrative Patent Judge DECISION ON REQUEST FOR REHEARING The Patent Owner requests reconsideration (hereinafter "Rehearing Request" or "Reh'g Req.") under 37 C.F.R. Â§ 41.79 of our Decision mailed June 20, 2014 (hereinafter "Original Decision") affirming the Examiner's final rejections of the appealed claims 46, 47, 49 and 50. Appeal 2014-001732 Reexamination Controls 95/001,635 and 90/009,907 Patent US 7,779,581 B2 2 We grant the Rehearing Request to the extent that we consider the Patent Owner's arguments infra, and further explain the Original Decision. However, we deny the request to modify the Original Decision. Argument A The Patent Owner argues that the Board misapprehends the function of the slots in the Trafixigns '483, which are provided "so that the unit can be keyed to the surface of the road via rods or bars." (Reh'g Req. 2). The Patent Owner asserts that because "the recesses are occupied by the rods or bars, air cannot escape through the recesses as the unit is installed on the road." (Reh'g Req. 3). However, the Patent Owner does not fully appreciate the Original Decision which states: the Patent Owner does not provide convincing evidence or adequate explanation that establishes why providing the recesses is inconsistent with pressing the plates into wet concrete if the rods or bars are embedded within the wet concrete (see generally Res. Br. R 6-7). (Original Decision 8, emphasis added). In other words, if the rods or bars are embedded within the wet concrete, air that is between plate 1 of Trafixigns '483 and the wet concrete surface would be displaced through the plate's recesses 10 during the installation of the plate into the wet concrete when the rods or bars are not yet received within the recesses. The Patent Owner's argument merely focuses on the completely installed position of the plate 1 wherein the rods or bars would be received within the recesses. While claim 49 recites that air escapes "from underneath the unit when it is installed in fresh concrete," Appeal 2014-001732 Reexamination Controls 95/001,635 and 90/009,907 Patent US 7,779,581 B2 3 it is clear from the specification of the '581 patent that such escape of air occurs as the plate is being installed, that is, during the installation, and not after installation is complete (see '581 Patent, col. 8, ll. 51-63). Argument B The Patent Owner argues that Footnote 14 in the Original Decision demonstrates the Board's misapprehension of its argument because it is the very silence of Trafixigns '483 with respect to the method of its installation, which provides the reason why the Board should understand Trafixigns '483 in the context of the disclosure of Trafixigns '732 (Reh'g Req. 4). However, the fact remains that Trafixigns '483 is "silent as to the method and order of its installation." (Original Decision 7). In addition, even if Trafixigns '732 was considered relevant, Footnote 14 also states "[a]dditionally, the statement in Trafixigns '732 also does not specify that the keys are embedded in the concrete first and the concrete cured prior to securing the plate." (Original Decision 7, fn.14). The statement in Trafixigns '732 relied upon by the Patent Owner states "[o]n screwing the bolt heads, the bolts hold the block securely in position on the road when the keys have been embedded in the concrete." (Trafixigns '732, pg. 2, ll. 1â€“4). This statement is not dispositive as to the method of installation as the Patent Owner asserts because the statement may be understood as describing the completely installed configuration wherein the plates are securely held in position by the keys and the bolt heads. More importantly, regardless of what the Trafixigns '732 statement may mean, the Patent Owner overlooks the actual basis for affirming the Appeal 2014-001732 Reexamination Controls 95/001,635 and 90/009,907 Patent US 7,779,581 B2 4 rejection, which is that Wehmeyer explicitly discloses installation of plates in freshly poured (or hardened) concrete, and also specifically discloses wet- set installation with the lugs attached to the plates (Original Decision 7; Wehmeyer, col. 2, ll. 36-44, col. 8, ll. 17-21). Argument C The Patent Owner also argues that the Board overlooks the fact that Trafixigns '483 is not a wet-set tactile warning surface unit (Reh'g Req. 4). However, the Patent Owner overlooks the fact that the rejections based on Trafixigns '483 are obviousness rejections based on teachings of a combination of references, not anticipation rejections. In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986) (non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references). The secondary references relied upon explicitly disclose that it was known in the art to wet-set tactile warning surface units or plates (see, e.g., Original Decision 6-7, 11-12). The Patent Owner further argues that Trafixigns '483 teaches away from wet-set plates because one of its embodiments allows the plate to be lowered, which would not be possible if it was wet-set, and that a person of ordinary skill would not view Trafixigns '483 as contemplating two different installation methods (Reh'g Req. 6). The argument as to the embodiment that allows lowering of the plate has already been generally addressed, and we again note that the Patent Owner argues Trafixigns '483 individually (see Original Decision 10). Appeal 2014-001732 Reexamination Controls 95/001,635 and 90/009,907 Patent US 7,779,581 B2 5 Argument D The Patent Owner argues that the Board overlooks the fact that Trafixigns '483 does not teach "when the anchor is coupled to the lower surface of the body." (Reh'g Req. 7). According to the Patent Owner: Trafixigns '483 does not teach when the anchor is coupled to the lower surface of the body. Stated differently, although certainly in its completed, installed state, the anchors of Trafixigns '483 are coupled to the lower surface of the body, the instant method claims require providing a unit having a number of anchor members coupled to the lower surface of the body, and then placing that unit into fresh concrete and applying force to the top of the unit to embed the unit in the concrete. (Reh'g Req. 7). The Patent Owner also argues that in Boghossian, the anchors cannot be coupled because venting of the air occurs through the anchor holes (id. at 8). The fact that Trafixigns '483 does not teach when the anchor is coupled to the lower surface of the body is not dispositive. As noted, "Boghossian provides a technical teaching that such devices can be installed with their anchors, in wet, uncured concrete (Boghossian Â¶ 13)." (Original Decision 12). As the Patent Owner concedes, the anchors of Trafixigns '483 are coupled to the lower surface of the body in its completed, installed state (see also Trafixigns '483, Figs. 1-3, 7). In view of the teaching of Boghossian that safety tiles can be installed with their anchors in wet concrete, it would have been obvious to one of ordinary skill in the art to fully install the anchors of Trafixigns '483 to the plates thereof when they are to be installed in wet concrete. A person of ordinary skill in the art is a person of ordinary creativity, and not an automaton. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). As to the argument based on the Appeal 2014-001732 Reexamination Controls 95/001,635 and 90/009,907 Patent US 7,779,581 B2 6 venting function of Boghossian's anchor holes, we observe that such person of ordinary skill having ordinary creativity "need not physically incorporate every aspect of Boghossian into Trafixigns when making the proposed combination" (Original Decision 12, quoting RAN 20-21), especially considering that such venting would be unnecessary in view of the recesses provided in the units of Trafixigns '483 as discussed supra. DECISION We have considered the Original Decision in light of the Request for Rehearing but decline to modify the Original Decision. Pursuant to 37 C.F.R. Â§ 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. Â§Â§ 90.1 and 1.983. DENIED Appeal 2014-001732 Reexamination Controls 95/001,635 and 90/009,907 Patent US 7,779,581 B2 7 For Patent Owner: NIELDS, LEMACK & FRAME, LLC 176 E. Main Street Suite #5 Westborough, MA 01581 For Third Party Requester: FOLEY HOAG, LLP Patent Group World Trade Center West 155 Seaport Blvd. Boston, MA 02110