Ex Parte Kar

Patent Trials and Appeals BoardMar 29, 2019

13582425 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/582,425 09/02/2012 60612 7590 04/02/2019 MCCARTER & ENGLISH, LLP WILMINGTON Attn: Patent Department Renaissance Centre 405 N. King Street, 8th Floor WILMINGTON, DE 19801 Anil Krishna Kar 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 129120.00001 4463 EXAMINER KWIECINSKI, RYAN D ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): rsipple@mccarter.com padedocket@mccarter.com bkrikelis@mccarter.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANIL KRISHNA KAR Appeal2018-005827 Application 13/582,425 Technology Center 3600 Before JAMES P. CALVE, BRETT C. MARTIN, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Anil Krishna Kar ("Appellant") appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject under 35 U.S.C. Â§ 102(b) claims 31, 34, 45, and 46 as anticipated by Westfiilische (GB 696, 384, published Aug. 26, 1953) 1 and under 35 U.S.C. Â§ 103(a) claim 35 as unpatentable over 1 The Examiner states that "Appellant [has] provided an English equivalent (GB 696,384)" and that "[f]or purposes of the final rejection and the Answer, the English equivalent GB document will be referenced." Examiner's Answer 3 ("Ans."), dated Mar. 22, 2018; see also Final Office Action 2-3 ("Final Act."), dated July 11, 2017; Appeal Brief 4, n. l ("Appeal Br."), filed Nov. 16, 2017; Appeal Br. 27, Evidence App. Exhibit A. Throughout the decision, any reference to Westfiilische will be to GB 696,384. Appeal2018-005827 Application 13/582,425 Westfiilische and Destree (US 4,585,487, issued Apr. 29, 1986). Claims 1- 30, 32, 33, and 36-44 have been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter "relates to an improved reinforcing bar (REBAR) for the enhancement of the life span of reinforced concrete [structures]." Spec. 1:4--5. Claim 31, the sole independent claim on appeal, is representative of the claimed subject matter and recites: 31. A reinforcing bar (REBAR) for reinforced concrete constructions and reinforced concrete structures comprising: a) a bar formed from steel and having a central longitudinal axis; and b) a circular or oval or elliptical cross section of said bar; and wherein the bar has a diameter of between 4 mm and 50 mm; wherein said bar has a plain surface free of surface lugs, surface protrusions, surface indentations, and surface deformities, and further wherein deformation of the central longitudinal axis of the bar provides the bar with a uniform wave- like formation. 2 Appeal2018-005827 Application 13/582,425 ANALYSIS Anticipation by Westflilische Claims 31, 34, 45, and 46 Independent claim 31 is directed to a reinforcing bar (REBAR) having "a diameter of between 4 mm and 50 mm." Appeal Br. 26, Claims App. The Examiner finds the steel wire of W estfiilische has "a diameter (2mm to 5mm) which satisfies the requirement of a diameter within 4 mm and 50 mm" and claim 31 "simply require[ s] a diameter between 4 mm and 50 mm" and W estfiilische "satisfies this limitation." Final Act. 6. The Examiner takes the position that W estfiilische teaches steel wires "having a diameter of 2mm to 5mm (4mm and 5mm falling within the claimed range)." Ans. 5; see also id. at 6 (The steel wires of W estfiilische "have a diameter in the range of 2mm-5mm which overlaps the range of the present claims."); id. at 7 ("[T]he values of the range of 4mm to 5mm clearly falling within the claimed range of 4mm to 50mm."). We are guided by the principle that the claimed subject matter must be disclosed in the reference with sufficient specificity in order to constitute an anticipation. Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999 (Fed. Cir. 2006) ("Atofina"). In the Atofina case, neither a disclosure of a broad range of 100-500Â° C., nor a disclosure of a narrower preferred range of 150- 3500 C., was found to anticipate a claimed range of 330-450Â° C., despite the former range fully encompassing the claimed range and the latter range having a degree of overlap with the claimed range. Id. Westfiilische discloses a steel wire "of about 2 to 5 mm [in] diameter." Westfiilische, 1:55-59. Although a diameter range of 2 mm to 5 mm slightly overlaps the claimed diameter range of 4 mm to 50 mm, it does 3 Appeal2018-005827 Application 13/582,425 not anticipate the claimed diameter range because the slightly overlapping diameter range of 2 mm to 5 mm is not disclosed as a species of the claimed generic diameter range of 4 mm to 50 mm. See Atofina, 441 F.3d at 1000. The court in Atofina stated that "[t]he disclosure is only that of a range, not a specific temperature in that range, and the disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points." Id. The present case is similar to Atofina in that given the considerable difference between the claimed diameter range and the diameter range in W estfiilische, "no reasonable fact finder could conclude that the prior art describes the claimed range with sufficient specificity to anticipate this limitation of the claim." Id. at 999. For these reasons, we do not sustain the Examiner's rejection of claims 31, 34, 45, and 46 as anticipated by Westfiilische. 2 Obviousness over Westfalische and Destree Claim 35 The Examiner's rejection of claim 35 as unpatentable over W estfiilische and Destree is based on the same unsupported finding discussed above with respect to independent claim 31. See Final Act. 4. The Examiner does not rely on Destree to remedy the deficiency of Westfiilische. Accordingly, for reasons similar to those discussed above for claim 31, we do not sustain the Examiner's rejection of claim 3 5 as unpatentable over W estfiilische and Destree. 2 Because the Examiner does not present a prima facie case of anticipation by W estfiilische, we do not address the additional evidence submitted by Appellant. See Appeal Br. 27, Evidence App. 4 Appeal2018-005827 Application 13/582,425 DECISION We REVERSE the decision of the Examiner to reject claims 31, 34, 45, and 46 as anticipated by Westfiilische. We REVERSE the decision of the Examiner to reject claim 35 as unpatentable over Westfiilische and Destree. REVERSED 5