Ex Parte Langtry et al

Patent Trial and Appeal BoardSep 27, 2012

11283399 (P.T.A.B. Sep. 27, 2012)

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. 11/283,399 11/21/2005 David Langtry 84822-902 ADB 2792 23529 7590 09/28/2012 ADE & COMPANY INC. 2157 Henderson Highway WINNIPEG, MB R2G1P9 CANADA EXAMINER MCNALLY, DANIEL ART UNIT PAPER NUMBER 1747 MAIL DATE DELIVERY MODE 09/28/2012 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 DAVID LANGTRY and WILLIAM G. STEED ______________ Appeal 2011-005933 Application 11/283,399 Technology Center 1700 _______________ Before CHARLES F. WARREN, PETER F. KRATZ, and BEVERLY A. FRANKLIN, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL Applicants appeal to the Board from the decision of the Primary Examiner finally rejecting claims 29-32 in the Office Action mailed November 23, 2009. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2010). We reverse the decision of the Primary Examiner. Claim 29 illustrates Appellants’ invention of a method for affixing an anchor to a substrate layer of rock or concrete, and is representative of the claims on appeal: Appeal 2011-005933 Application 11/283,399 2 29. A method for affixing an anchor to a substrate layer of rock or concrete comprising: drilling a hole in the substrate layer so that the drilled hole includes at least a part which has a cylindrical surface; providing an anchor in the form of a rod having a first end portion shaped and arranged to fit in the drilled hole and a second end portion integral with the first portion arranged to project outwardly from the hole beyond the substrate layer; supplying the anchor while carrying on said first end portion of the anchor a surrounding cylindrical band of an adhesive of a character that it softens when heated and sets when it cools; the portion with the adhesive band thereon being arranged so that the band has an exterior surface which matches the cylindrical surface of the drilled hole; said first end portion including projecting elements thereon extending outwardly therefrom and engaging into the surrounding adhesive band; inserting said first end portion with the adhesive band thereon into the hole to a depth at which the cylindrical band of said surrounding adhesive has an outer cylindrical surface adjacent the cylindrical surface of the hole and the second portion of the anchor rod is exposed outside the substrate layer out of the drilled hole; when inserted, the projecting elements on the first end portion are spaced from the cylindrical surface of the drilled hole leaving a clearance; applying heat to the exposed portion of the anchor sufficient to heat the adhesive band in the drilled hole so that the adhesive band conforms to an exterior surface of the portion and to the cylindrical surface of the hole; and allowing the adhesive band to cool so as to set in the drilled hole to attach the first end portion of the anchor to the drilled hole. Appellants request review of the ground of rejection under 35 U.S.C. § 103(a) advanced on appeal by the Examiner: claims 29-32 over Gugle (US 3,897,713) in view of either of Aeschlimann (US 6,913,666 B1) or Shrader (US 5,397,202), and optionally in view of Buchholz (US 4,110,053). App. Br. 4; Ans. 4, 7. Appeal 2011-005933 Application 11/283,399 3 Opinion We first interpret claim 29, in light of the language of claim 29 as a whole and the Specification, while taking into account the positions of the Examiner and Appellants, to specify that the claimed method for affixing an anchor to a substrate layer of rock or concrete comprises at least the steps of, among other things, providing an anchor rod having a first end portion shaped and arranged to fit in the drilled hole, surrounding the first end portion of the anchor rod with a cylindrical band of adhesive having an exterior surface which matches the cylindrical surface of the drilled hole, and inserting the first portion with the adhesive band into the hole so that “the cylindrical band of surrounding adhesive has an outer cylindrical surface adjacent the cylindrical surface of the hole,” wherein the anchor rod has a “first end portion including projecting elements thereon extending outwardly therefrom and engaging into the surrounding adhesive band” such that “when inserted, the projecting elements on the first end portion are spaced from the cylindrical surface of the drilled hole leaving a clearance.” We find that the Specification discloses, with reference to Specification Figure 1, anchor rod 10 having projections 13 in lower body or first portion 14 that is “arranged to be inserted into a drilled hole 15 in a body of concrete 16,” wherein projections 13 can have different arrangements, and rod 10 with projections 13 is surrounded by a band of adhesive having a thickness sufficient to allow projections 13 to be received within hole 15 “leaving a clearance between the exterior of the projections and the interior of the hole.” Spec., e.g., 2:16 to 3:10, 6:20 to 7:16. Thus, we agree with Appellants that the language of claim 29, as a whole and in light of the Specification, specifies that the anchor rod Appeal 2011-005933 Application 11/283,399 4 including projections thereon and the surrounding adhesive band must be arranged to fit within the cylindrical surface of the drilled hole. Br. 8-9. Thus, as claimed, the rod as so arranged to fit into the drilled hole does not include projections which must extend past the cylindrical surface of the drilled hole and into the concrete in order to be inserted into the hole, contrary to the Examiner’s position, as indeed, when inserted all of the projections on the anchor rod are spaced from the cylindrical surface of the drilled hole leaving a clearance, however small. Ans. 8-9. We agree with Appellants that the Examiner erred in determining that one of ordinary skill in the art would have combined Gugle, Aeschlimann and Shrader, or alternatively Gugle and Buchholz, and thus would have been led to the claimed method for affixing an adhesive banded, threaded anchor rod to a substrate layer of rock or concrete encompassed by claim 29, as we interpreted this claim above. Ans. 4-7, 8-9 There is no dispute that Gugle, common to both grounds of rejection, would have described a method in which, among other things, stud or anchor rod 10 has a lower or first portion 14 having threads 28 which penetrate into wooden work piece 34 when inserted into aperture or hole 36 therein because the diameter of hole 36 is smaller than the diameter of threads 28. Gugle col.2 ll.2-61, Figs. 1, 2. We find Gugle further teaches that adhesive 32 can be coated on stud 10 to extend generally to the crest diameter of thread 28 in sufficient volume such that “[d]uring . . . forceful entry of the stud [10] within the aperture [36] a portion of the volume of adhesive 32 is wiped up and received within recess 20 in the flange” 16 of stud 10. Gugle col.2 l.2 to col.3 l.25, Figs. 1, 2. We agree with the Examiner’s findings that both Aeschlimann and Shrader would have disclosed to one of ordinary skill Appeal 2011-005933 Application 11/283,399 5 in the art inserting a smooth rod accompanied by materials which form an adhesive into a hole in, among other things, concrete. Ans. 6, 7, citing Aeschlimann col.3 ll.17-29, Fig. 7; Shrader col.2 l.45 to col.3 l.35, Fig. 1. The Examiner contends that one of ordinary skill in the art would have modified Gugle’s method by using a concrete substrate as taught by either Aeschlimann or Shrader in the expectation of providing a strong surface to attach the anchor. Ans. 6. We find that Buchholz would have disclosed to one of ordinary skill in the art a method in which threaded rod 18 is coated with single- component synthetic resin-filler mixture 9 which is sprayed with hardener 15, and the thus coated threaded rod 18 is inserted into hole 16 of concrete substrate 17, which has synthetic resin layer 19, that is a single component- resin, inserted into hole 16 before coated rod 18 is inserted, and excess single-component resin is squeezed out from hole 16. The hardener sets the single component-resin. Buchholz col.3 l.15 to col.4 l.2, Figs. 5-7. The Examiner contends that one of ordinary skill in the art would have modified Gugle’s method by using Buchholz’s threaded rod as a substitute for Gugle’s threaded rod. Ans. 7. On this record, we agree with Appellants that one of ordinary skill in the art following the combined teachings of Gugle, Aeschlimann and Shrader would not have arrived at the claimed method for affixing an anchor to a substrate layer of concrete because in Gugle’s method, an anchor rod contains threads which penetrate into the wooden work piece when the rod is inserted into the hole and thus, even if the threaded rod were inserted into concrete, the threads would not be spaced apart from the cylindrical surface of the hole as specified in claim 29; and Gugle’s adhesive coating on the rod Appeal 2011-005933 Application 11/283,399 6 extends to the edge of the threads on the rod and thus is larger in diameter than the hole, which is contrary to the limitation that the band of adhesive on the rod matches the cylindrical surface of the hole in claim 29. As Appellants point out, neither Aeschlimann nor Shrader, as relied on by the Examiner, cure the differences between the method encompassed by claim 29 and Gugle’s method. Br. 9-10; Ans. 9-11 On this record, we further agree with Appellants that one of ordinary skill in the art following the combined teachings of Gugle and Buchholz would not have arrived at the claimed method for affixing an anchor to a substrate layer of concrete because Buchholz, as relied on by the Examiner, does not provide for the difference between the claimed method and that of Gugle since Buchholz, like Gugle, does not disclose a band of adhesive on the anchor rod which matches the cylindrical surface of the hole as specified in claim 29. Br. 10; Ans. 11. Accordingly, even if one of ordinary skill in the art did combine Gugle with Aeschlimann and Shrader, and with Buchholz as the Examiner contends, the result would not have been the method encompassed by claim 29. See, e.g., Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54 (Fed. Cir. 1988). Therefore, in the absence of a prima facie case of obviousness, we reverse the rejection of claims 29-31 under 35 U.S.C. § 103(a). The Primary Examiner’s decision is reversed. REVERSED