Ex Parte Pantelides et al

Patent Trial and Appeal Board

Oct 4, 2017

14455570 (P.T.A.B. Oct. 4, 2017)

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.
14/455,570 08/08/2014 Chris P. Pantelides 00846-U5613.NP 8234
20551 7590 10/06/2017
THORPE NORTH & WESTERN, LLP.
P.O. Box 1219
SANDY, UT 84091-1219
EXAMINER
HERRING, BRENT W
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
10/06/2017 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):
patentdocket @ tn w. com
rich@tnw.com
annette. fields @ tnw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS P. PANTELIDES and LAWRENCE D. REAVELEY
Appeal 2017-003664
Application 14/455,570
Technology Center 3600
Before THU A. DANG, ERIC S. FRAHM, and KARA L. SZPONDOWSKI,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Non-Final
Rejection of claims 1—6, 8—22, and 24—31. We have jurisdiction under 35
U.S.C. § 6(b). Claims 7 and 23 were withdrawn. We affirm the obviousness
rejection of claims 1—5, 8—12, 14—22, 24—29, and 31, and reverse the
obviousness rejection of claims 6, 13, and 30.
Appellants ’ Disclosed and Claimed Invention
Appellants’ invention is a reinforcement system for strengthening and
rehabilitating structures using fiber reinforced polymer (FRP) composites
(claims 1 and 22; Spec. 1:10-23; Fig. 1; Abs.). More specifically,
Appellants utilize a structural filler 150 around a support member 130a/130b
to reinforce an elongate member 110 (see Fig. 1).
Exemplary Claims
Exemplary claims 1, 6, and 13 under appeal, with emphases added,
read as follows, with emphases and bracketed lettering added:
1. An elongate member reinforcement system, comprising: an
elongate member;
a structure associated with an end of the elongate
member, the elongate member extending from the structure in a
longitudinal direction;
[A] a support member coupled to the structure such that
the support member extends into the structure, the support
member being laterally offset from the elongate member and
extending from the structure about an end portion of the
elongate member to longitudinally overlap the end portion of
the elongate member in the longitudinal direction;
a support layer surrounding and longitudinally
overlapping the end portion of the elongate member in the
longitudinal direction and defining a space therebetween,
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wherein at least a portion of the support member is between the
support layer and the elongate member; and
[B] a structural filler disposed in the space between the
support layer and the elongate member, wherein the structural
filler is in contact with the end portion of the elongate
member, the support layer, and the support member,
[C] wherein a load tending to cause relative movement of
the end portion of the elongate member and the structure is
transferred through the structural fdler and the support
member to provide support for the end portion of the elongate
member.
6. The system of claim 1, [D] wherein the support layer
comprises a wire mesh.
13. The system of claim 11, [E] wherein the support member
comprises a head portion and a stem portion, wherein a lateral
size dimension of the head portion is greater than a lateral size
dimension of the stem portion to mechanically bond the
support member with the structural fdler.
Independent claim 22 is commensurate in scope with independent
claim 1, and recites similar features pertaining to a method for reinforcing an
elongate member. Dependent claim 30 is commensurate in scope with
dependent claim 13 and ultimately depends from independent claim 22.
Examiner’s Rejections
(1) The Examiner rejected claims 1—5, 8—12, 14—22, 24—29, and 31 as
being unpatentable under 35 U.S.C. § 103(a) over Carr et al. (US
2010/0218708 Al; published Sept. 2, 2010) and Morstein (US 5,878,540;
issued Mar. 9, 1999). Non-Final Act. 2—5; Ans. 2—5.
(2) The Examiner rejected claims 6, 13, and 30 as being unpatentable
under 35 U.S.C. § 103(a) over Carr, Morstein, and Phuly (US 2012/0047830
Al; published Mar. 1, 2012). Non-Final Act. 5—6; Ans. 5—6.
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Issues on Appeal
With regard to the obviousness rejection of claims 1—5, 8—12, 14—22,
24—29, and 31 over Carr and Morstein, Appellants present separate
arguments to (i) independent claims 1 and 22 (Br. 18—22); (ii) dependent
claims 11, 12, and 29 (Br. 22—23); and (iii) dependent claims 18, 24, and 25
(Br. 23—24). Accordingly, we select (i) claim 1 as representative of the
group of claims consisting of claims 1—5, 8—10, 14—22, 24—28, and 31, and
we will address representative independent claim 1 and dependent claims 11,
12, 18, 24, 25, and 29 in our analysis herein. With regard to the obviousness
rejection of claims 6, 13, and 30 over Carr, Morstein, and Phuly, Appellants
present arguments pertaining to the head and stem portions recited in claims
13 and 30 (Br. 24), as well as the motivation to combine Phuly with Carr and
Morstein (resistance to displacement) being counter to Carr’s goal of using
shape memory elements to allow flexibility (as opposed to reinforcement)
(Br. 25).
Based on Appellants’ arguments in the Appeal Brief (Br. 12—26), the
following issues are presented on appeal:
(1) Did the Examiner err in rejecting claims 1—5, 8—10, 14—22, 24—28,
and 31 as being obvious because Carr and Morstein are not properly
combinable and their combination fails to teach or suggest the system for
reinforcing an elongate member including limitations [A], [B], and [C], as
set forth in representative claim 1 ?
(2) Did the Examiner err in rejecting claims 11, 12, and 29 because
the combination of Carr and Morstein fails to teach or suggest an elongate
member reinforcement system including “the support member is configured
to mechanically bond with the structural filler” as claimed?
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(3) Did the Examiner err in rejecting claims 18, 24, and 25 because
the combination of Carr and Morstein fails to teach or suggest that the
elongate member comprises “a reinforcement member” as claimed?
(4) Did the Examiner err in rejecting claim 6, which depends directly
from claim 1, because the combination of Carr, Morstein, and Phuly fails to
teach or suggest “the support layer comprises a wire mesh” as claimed?
(5) Did the Examiner err in rejecting claims 13 and 30 over Carr,
Morstein, and Phuly because the motivation to combine Phuly with Carr and
Morstein (resistance to displacement) is counter to Carr’s goal of using
shape memory elements to allow flexibility (as opposed to reinforcement)?
ANALYSIS
We have reviewed the Examiner’s rejections (Non-Final Act. 2—6;
Ans. 2—6) in light of Appellants’ contentions in the Appeal Brief (Br. 12—26)
that the Examiner has erred, in light of the Examiner’s response to
Appellants’ arguments in the Appeal Brief (Ans. 6—10). We disagree with
Appellants’ contentions as to representative claim 1 and dependent claims 6,
11, 12, 18, 24, 25, and 29. However, we are persuaded by Appellants’
arguments with regard to dependent claims 13 and 30 separately argued.
Representative Claim 1
With regard to representative claim 1, we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Non-Final Act. 2-4; Ans. 2-4), and (2) the reasons set forth
by the Examiner in the Examiner’s Answer in response to Appellants’
Appeal Brief (see Ans. 6—9). We concur with the conclusions reached by
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the Examiner as to representative claim 1, and highlight and address specific
findings and arguments for emphasis as follows.
Specifically, we agree with the Examiner’s findings and conclusions
pertaining to the teachings and suggestions of Carr and Morstein, as well as
the obviousness of their combination (see Non-Final Act. 2-4; Ans. 2-4, 6—
9). Specifically, we agree with the Examiner (Non-Final Act. 2-4; Ans. 2-4,
6—8) that Carr’s shape memory members 536 and 556 (Fig. 6; Tflf 63, 64) and
L-bracket fasteners (Figs. 3 A—3F) to be fastened to a base structure,
combined with Morstein’s support member 22 that extends into a base
structure, meet limitations [A], [B], and [C] recited in representative claim 1.
We also agree with the Examiner that “it would have been obvious to a
person of ordinary skill in the art to extend the support members of Carr into
the structure as suggested by Morstein in order to provide a means for
anchoring the rods to the base and by association anchoring the column of
Carr to an equilibrium position” (Ans. 3 4). Appellants have not filed a
Reply Brief or shown otherwise with responsive arguments or evidence.
With regard to independent claims 1 and 22, Appellants contend (i)
the Examiner employed impermissible hindsight and there is no motivation
to combine Carr and Morstein (Br. 18—20); and (ii) the combination of
references, and specifically Carr, fails to teach or suggest the recited support
member of limitation [A] for responding to a load through a structural layer
as recited in limitation [B] and supporting an end of an elongate member as
recited in limitation [C] (Br. 21—22). Neither of the arguments presented as
to claims 1 and 22 are persuasive in light of the Examiner’s (i) findings and
conclusions regarding Carr and Morstein and the motivation to combine
their teachings and suggestions (Non-Final Act. 2-4; Ans. 2-4); and (ii)
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cogent response found in the Answer (Ans. 6—9). In other words, the
Examiner has provided a rational underpinning to support the conclusion of
obviousness with regard to claim 1. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398,418 (2007).
In view of the foregoing, we sustain the obviousness rejection of
representative claim 1, as well as claims 2—5, 8—10, 14—22, 24—28, and 31
grouped therewith.
Claims 11, 12, and 29
With regard to dependent claims 11, 12, and 29, Appellants argue (Br.
22— 23) that the combination of Carr and Morstein fails to teach or suggest an
elongate member reinforcement system including that “the support member
is configured to mechanically bond with the structural filler” as claimed.
However, we agree with the Examiner’s explanation that Carr’s shape
memory members are mechanically bonded to the structural filler because
the shape memory members 536 and 556 can absorb an impact/load and
return the elongate member to an equilibrium position (Ans. 8—9).
Appellants have not filed a Reply Brief or shown otherwise with responsive
arguments or evidence.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 11, 12, and 29.
Claims 18, 24, and 25
With regard to dependent claims 18, 24, and 25, Appellants argue (Br.
23— 24) the combination of Carr and Morstein fails to teach or suggest that
the elongate member comprises “a reinforcement member” as claimed.
However, we agree with the Examiner’s findings (Non-Final Act. 4, 5; Ans.
4, 5) that Carr’s rebar is encompassed by the recited reinforcement member,
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and therefore the combination of Carr and Morstein teaches or suggests a
reinforcement member exposed to a structural filler “to mechanically bond
the reinforcement member with the structural filler” as recited in claims 18,
24, and 25. We also agree with the Examiner’s findings (Ans. 9) that Carr’s
L-shaped brackets reside within a structural filler which is bonded thereto.
Appellants have not filed a Reply Brief or shown otherwise with responsive
arguments or evidence.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 18, 24, and 25.
Claims 6, 13, and 30
Appellants contend (Br. 25) the rejection of claims 6, 13, and 30 over
Carr, Morstein, and Phuly is in error because there is no motivation to
combine Phuly with Car and Morstein. More specifically, Appellants
present arguments pertaining to the head and stem portions recited in claims
13 and 30 (Br. 24), as well as the motivation to combine Phuly with Carr and
Morstein (resistance to displacement) being counter to Carr’s goal of using
shape memory elements to allow flexibility (as opposed to reinforcement)
(Br. 25).
With respect to claim 6, we agree with the Examiner (Ans. 9—10) that
Phuly teaches or suggests using wire mesh in Figure 5, and thus the
combination of Carr, Morstein, and Phuly teaches or suggests “the support
layer comprises a wire mesh” as recited (see limitation [D] of claim 6).
Appellants’ argument (Br. 25) that the motivation to combine Phuly with
Carr and Morstein (resistance to displacement) is counter to Carr’s goal of
using shape memory elements to allow flexibility (as opposed to
reinforcement) is not persuasive as to claim 6 because the language of
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claims 1 and 6 does not require the support member to have head and stem
portions, where the size dimensions of the head and stem portion operate to
“mechanically bond” the support member and structural filler.
However, the motivation argument is persuasive as to claims 13 and
30, which each recite “wherein the support member comprises a head
portion and a stem portion, wherein a lateral size dimension of the head
portion is greater than a lateral size dimension of the stem portion to
mechanically bond the support member with the structural filler” (see e.g.,
limitation [E] of claim 13). Although the Examiner is correct that Phuly
shows head and stem portions in Figure 5 that are similar to what is shown
in Appellants’ Figure 1 (see 13 la/b, 132a/b), the recitation of head and stem
portions of a support member having relative dimensions in claims 13 and
30 operates to provide improved reinforcement over simple wire mesh. The
Examiner does not explain why one of ordinary skill in the art would be
motivated to combine Carr’s flexible and bendable shape memory members
with Phuly’s bar reinforcement system shown in Figure 5 to include a head
portion that increases longitudinal pullout resistance. Therefore, on this
record, we are persuaded by Appellants’ argument (Br. 25) that the
Examiner erred in rejecting claims 13 and 30 over Carr, Morstein, and Phuly
because the motivation to combine Phuly with Carr and Morstein (resistance
to displacement) is counter to Carr’s goal of using shape memory elements
to allow flexibility (as opposed to reinforcement).
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 6, and we do not sustain the Examiner’s obviousness rejection of
claims 13 and 30.
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CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1—5, 8—10, 14—22,
24—28, and 31 as being obvious because Carr and Morstein are properly
combinable and their combination teaches or suggests the system for
reinforcing an elongate member including limitations [A], [B], and [C], as
set forth in representative claim 1.
(2) The Examiner did not err in rejecting claims 11, 12, and 29
because the combination of Carr and Morstein teaches or suggests an
elongate member reinforcement system including “the support member is
configured to mechanically bond with the structural filler” as claimed.
(3) The Examiner did not err in rejecting claims 18, 24, and 25
because the combination teaches or suggests that the elongate member
comprises “a reinforcement member” as claimed.
(4) The Examiner did not err in rejecting claim 6 because the
combination of Carr, Morstein, and Phuly teaches or suggests “the support
layer comprises a wire mesh” as claimed.
(5) The Examiner erred in rejecting claims 13 and 30 over Carr,
Morstein, and Phuly because the motivation to combine Phuly with Carr and
Morstein (resistance to displacement) is counter to Carr’s goal of using
shape memory elements to allow flexibility (as opposed to reinforcement).
DECISION
The Examiner’s obviousness rejection(s) of (i) claims 1—6, 8—12,
14—22, 24—29, and 31 under 35 U.S.C. § 103(a) are affirmed; and (ii) claims
13 and 30 under 35 U.S.C. § 103(a) is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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