Ex Parte Carroll

Patent Trial and Appeal BoardNov 28, 2012

11109781 (P.T.A.B. Nov. 28, 2012)

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. 11/109,781 04/20/2005 Michael E. Carroll 0013.0005 2001 7590 11/28/2012 Stephen F. McDonald 3502 Diversified Drive Loganville, GA 30052 EXAMINER SAFAVI, MICHAEL ART UNIT PAPER NUMBER 3631 MAIL DATE DELIVERY MODE 11/28/2012 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL E. CARROLL ____________________ Appeal 2010-005946 Application 11/109,781 Technology Center 3600 ____________________ Before: PHILLIP J. KAUFFMAN, BENJAMIN D. M. WOOD, and BRADFORD E. KILE, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005946 Application 11/109,781 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1, 4, and 6. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Invention Claim 1, reproduced below, is representative of the claimed subject matter: 1. Apparatus for transferring a load between a first concrete slab and a second concrete slab, defining a joint, comprising: a plate defining a hexagon having a base parallel with the joint, said plate having a first portion and a second portion; and an elastomer coating disposed on said first portion; wherein: said base and a side define an angle greater than or equal to 100°; and/or said plate is configured to maximize material proximate to the joint; and said elastomer coating slides relative to said plate, the first concrete slab or combinations thereof. The Rejections The following rejections are before us on appeal: 1. Claims 1, 4, and 6 under 35 U.S.C. § 102(b) as anticipated by Boxall (US 6,354,760 B1; iss. Mar. 12, 2002). 2. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Boxall. Appeal 2010-005946 Application 11/109,781 3 OPINION Both the anticipation rejection and the obviousness rejection rely upon the Examiner’s finding that Boxall’s blockout sheath 1600 is disclosed as formed of collapsible or compressible material, and therefore corresponds to an elastomer coating as claimed. Ans. 3-5 (citing Boxall, col. 6, ll. 44-46). We construe this portion of claim 1 and then look to the prior art. See Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both anticipation under § 102 and obviousness under § 103 are two-step inquiries. The first step in both analyses is a proper construction of the claims. . . . The second step in the analyses requires a comparison of the properly construed claim to the prior art.” (internal citations omitted)). Independent claim 1 calls for, inter alia, an elastomer coating disposed on the first portion of a plate. The Specification does not provide a lexicographical definition of elastomer, which is commonly understood to mean any of various elastic substances resembling rubber.1 We discern nothing in the Specification inconsistent with this ordinary meaning. Thus, claim 1 calls for a coating of an elastic substance resembling rubber on the first portion of a plate. Boxall does not disclose that blockout sheath 1600 is composed of an elastomer, nor does Boxall disclose that blockout sheath 1600 is composed of an elastic substance resembling rubber. Boxall, passim. Boxall discloses that deformable centering fins 2206-1 through 2206- 4 may take the form of collapsible fingers or other compressible material, and are utilized to center load plate 900 within blockout sheath 1600. 1 “Elastomer,” n., Merriam-Webster Dictionary (available on line at www.merriam-webster.com/dictionary/elastomer, last accessed Nov. 20, 2012). Appeal 2010-005946 Application 11/109,781 4 Boxall, col. 6, ll. 37-45; fig. 22. Such disclosure does not demonstrate that this material is an elastomer (an elastic substance resembling rubber). For example, Boxall’s deformable centering fins may be composed of paper or thin metal so that they are collapsible. For that reason, the Examiner has not demonstrated by a preponderance of the evidence that Boxall’s blockout sheath 1600 is comprised of an elastomer as claimed. See Br. 4-5 (arguing that Boxall does not disclose an elastomer coating as claimed) . Because both rejections are based in part on this erroneous finding of fact, we do not sustain either rejection. DECISION We reverse the Examiner’s decision to reject claims 1, 4, and 6. REVERSED hh