Michael Masula et al.

Patent Trials and Appeals BoardMar 12, 2021

2020001993 (P.T.A.B. Mar. 12, 2021)

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. 15/274,922 09/23/2016 Michael Masula Masula001 1582 114490 7590 03/12/2021 C. Allen Black Law Office 1579 Montgomery Rd Allison Park, PA 15101 EXAMINER LAWSON, STACY N ART UNIT PAPER NUMBER 3678 MAIL DATE DELIVERY MODE 03/12/2021 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 MASULA and ROBERT STEPHEN KOWALSKI JR. Appeal 2020-001993 Application 15/274,922 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and KENNETH G. SCHOPFER, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 19–36. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Michael Masula. Appeal Br. 2. Appeal 2020-001993 Application 15/274,922 2 STATEMENT OF THE CASE Claimed Subject Matter Claims 19, 25, and 31 are the independent claims on appeal. Appeal Br. Claims App. Claims 20–24 depend directly from claim 19; claims 26– 30 depend directly from claim 25; and claims 32–36 depend directly from claim 31. Id. Claim 19, reproduced below, is illustrative of the claimed subject matter. 19. A method of anchoring a load bearing structure comprising: digging a trench, anchoring at least one helical pile at a position in the trench where a load bearing structure will be placed, wherein the helical pile comprises a pierhead, forming a cast within the trench for embedding the pierhead into an embedment block, pouring concrete into the cast to form an embedment block having a top and a bottom, integrally embedding fasteners for affixing the load bearing structure into the top of the embedment block, and affixing a load bearing structure to the fasteners. Petitionable Matters The Appellant asserts that “[t]he Examiner errs by violating the PTO’s rules for compact prosecution regarding claim interpretation and is engaging in dilatory piecemeal prosecution.” Appeal Br. 34–35. This matter is reviewable by petition under 37 C.F.R. § 1.181 (see Manual of Patent Examining Procedure (“MPEP”) §§ 1002, 1002.02(c), 1201 (9th ed. rev. 10, June 2020)) and is not within the jurisdiction of the Board. Appeal 2020-001993 Application 15/274,922 3 Rejections Claims 31–36 are rejected under 35 U.S.C. § 112(b) as indefinite. Claims 19–36 are rejected under 35 U.S.C. § 103 as unpatentable over Naito (US 5,966,882, iss. Oct. 19, 1999) in view of Foundation Requirements and Recommendations for Elevated Homes, Hurricane Sandy Recovery Fact Sheet, FEMA, pp. 1–14 (May 2013) (“Hurricane Sandy Fact Sheet”). ANALYSIS 35 U.S.C. § 112(b) The Appellant does not substantively respond to the Examiner’s rejection of independent claim 31 and dependent claims 32–36 under 35 U.S.C. § 112(b) as indefinite. See Appeal Br. 33. Along with the rejection of claim 31, which is based on the claim calling for a contradictory relationship between a pierhead and a concrete block, the Examiner provided an alternate recitation to the indefinite claim limitation for the purposes of examination. See Final Act. 6. The Appellant appears to acquiesce to the Examiner’s rejection and alternate recitation. See Appeal Br. 33. However, claim 31 has not been amended prior to this appeal. Accordingly, the Examiner’s rejection of claims 31–36 under 35 U.S.C. § 112(b) as indefinite is maintained. Thus, we sustain the Examiner’s rejection of claims 31–36 under 35 U.S.C. § 112(b) as indefinite. Appeal 2020-001993 Application 15/274,922 4 35 U.S.C. § 103 Independent claims 19 and 25 The Examiner finds that Naito teaches substantially all of the subject matter of method claim 19, but fails to teach “that the pile is a helical pile comprising a pierhead for embedding into the embedment block.” Final Act. 6–7. The Examiner remedies this deficiency with teachings from Hurricane Sandy Fact Sheet.2 Id. at 7 (citing Hurricane Sandy Fact Sheet 9, ¶ 2, 10, ¶¶ 3–4, Fig. 8b). The Examiner determines: It would have been obvious to a person having ordinary skill in the art . . . to use a helical pile with an embedded pierhead as taught by [Hurricane Sandy Fact Sheet] for the pile [50] of Naito because inasmuch as the references disclose these elements as art recognized equivalents . . . the simple substitution of one known, equivalent element for another is considered obvious. Further, such a modification would provide the expected benefit of reducing installation vibrations . . . and allowing installation in locations with limited access and clearances. Id. (citing Hurricane Sandy Fact Sheet 9, ¶ 5, 10, ¶ 4); see Ans. 4–5. In the Answer, the Examiner explains that “art recognized equivalents” refers to piles and micropiles with moment-resisting connections to a foundation. Ans. 12. We determine that the Examiner’s rejection adequately articulates reasoning with rational underpinning. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds . . . [require] some 2 In the Final Office Action, the Examiner refers to the Hurricane Sandy Fact Sheet as “FRREH,” which is an acronym of the publication’s title, “Foundation Requirements and Recommendations for Elevated Homes.” Final Act. 6. Appeal 2020-001993 Application 15/274,922 5 articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The Appellant argues that the combination of teachings of Naito and Hurricane Sandy Fact Sheet does not teach the subject matter of claim 19.3 See Appeal Br. 20–26. In support of this argument, the Appellant quotes Hurricane Sandy Fact Sheet, “there is little lateral resistance provided by the helical pile itself, so resistance must be provided by a strong moment- resisting connection to the foundation.” Id. at 22 (quoting Hurricane Sandy Fact Sheet 10). The Appellant asserts that Hurricane Sandy Fact Sheet teaches “that mating assemblies are critical” because it describes that “[r]esistance must be provided by a strong moment-resisting connection to the foundation.” Id. at 23–24; see id. at 22 (“[T]he Hurricane Sandy Fact Sheet explicitly states that helicals [(a form of micropile)] known in the art are always used with a mating assembly.”). The Appellant contends that claim 19 “obviates this need for mating assemblies that provide strong moment-resisting connections with helicals by teaching that the helical’s pierhead can be embedded into a block, . . . which itself is part of the concrete poured along the trench for the foundation.” Id. at 22 (citing Spec. ¶ 29, Fig. 1). The Appellant’s argument is not persuasive of error. 3 The Appellant’s argument refers to Naito ’382 (US 5,678,382, iss. Oct. 21, 1997; US Application No. 08/572,102) instead of the applied prior art reference Naito (US 5,966,882, iss. Oct. 19, 1999). Ans. 3–4; see Appeal Br. 20. The applied reference Naito is a Divisional application of Naito ’382. Appeal 2020-001993 Application 15/274,922 6 At the outset, we note the Appellant’s contention is not commensurate with the scope of claim 19. Although claim 19 requires “forming a cast within the trench for embedding the pierhead into an embedment block, pouring concrete into the cast to form an embedment block having a top and a bottom, [and] integrally embedding fasteners for affixing the load bearing structure into the top of the embedment block,” claim 19 does not exclude a mating assembly with a helical that has a strong moment-resisting connection to a foundation. Additionally, the Appellant’s assertion appears to be based on an unsupported assumption; namely, that Hurricane Sandy Fact Sheet’s reference to “a strong moment-resisting connection” is necessarily a reference to a helical’s pierhead being used in a mating assembly. See also Ans. 10, 14. The Appellant contends that Hurricane Sandy Fact Sheet’s Figure 8 shows empty white space and “is at best ambiguous silence”; therefore, the Examiner’s position that the Figure 8 shows no mating assembly is inadequately supported. See Appeal Br. 24. The Appellant’s contention is not persuasive of error. This contention, even if true, does not establish error in the Examiner’s rejection because claim 19 does not exclude the use of a mating assembly. The Appellant contends that “[t]he Examiner wrongly states that piles and micropiles are equivalents.” Id. at 26. The Appellant’s argument is not persuasive of Examiner error. The Examiner’s reasoning is based on a more specific finding; i.e., that micropiles with moment-resisting connections to a foundation are considered art recognized equivalents to piles. Ans. 12. In the Examiner’s words: Micropiles and piles are both structural piles that support structural loads by extending deep into the earth. The Appeal 2020-001993 Application 15/274,922 7 Hurricane Sandy Fact Sheet states that “micropiles function similarly to deep pile foundations” (e.g.[,] page 9, first line under the Micropile Foundations section). Thus, micropiles and piles are explicitly disclosed as being similar. The Hurricane Sandy Fact Sheet also states that micropiles provide little lateral resistance by themselves, therefore micropiles are provided with moment-resisting connections to the foundation (e.g.[,] page 10, paragraph 4). As such, micropiles with moment-resisting connections to the foundation are considered equivalent to piles because both the micropiles and the piles are disclosed as art recognized equivalents. Ans. 12. The Appellant fails to persuasively explain why this finding is in error. The Appellant also contends that the claimed method, as disclosed in the Specification, is intended to be used in a high lateral load environment, e.g., boggy soil. See Appeal Br. 22. The Appellant’s contention is not persuasive of error. The Appellant’s contention points to the differences between the disclosure in the Specification and the teachings of Hurricane Sandy Fact Sheet. However, it is well established that limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). We have considered the remaining points advanced by the Appellant in the Appeal Brief at pages 20–26 and have determined that they are unpersuasive of Examiner error. Thus, we sustain the Examiner’s rejection of claim 19. Additionally, we note that the Examiner’s rejection of claim 25 is similar to the Examiner’s rejection of claim 19. See Final Act. 7, 8–9. The Appellant separately addresses the rejection of claim 25. Appeal Br. 29–30. The Appellant’s argument for the rejection of claim 25 is similar to that of Appeal 2020-001993 Application 15/274,922 8 claim 19. See id. For similar reasons as discussed above, we sustain the Examiner’s rejection of claim 25. Dependent claims 20, 24, 26, and 30 The Appellant separately addresses the rejection of dependent claims 20, 24, 26, and 30. Appeal Br. 27, 29, 30, 31–32. The Appellant, however, does not provide an argument apart from those particular to the independent claim from which claims 20, 24, 26, and 30 depend. See id. Thus, we sustain the Examiner’s rejection of claims 20, 24, 26, and 30. Dependent claims 21 and 27 Claims 21 and 27 recite “wherein the fasteners are selected from the group consisting of screws, bolts, hex bolts, curved bolts, pins, rivets, resins, and epoxy, and combinations thereof.” Appeal Br., Claims App. The Examiner finds that Naito teaches hollow bolts. Final Act. 7, 9. More specifically, the Examiner finds that cylindrical sleeve anchors 33, male threaded portions formed on the top outer peripheral surface of anchors 33, and annular flange-shaped anchor seats 25 welded to the bottom portion of sleeve anchors 33 are hollow bolts. See id. (citing Naito col. 5, l. 63 – col. 6, l. 30, Fig. 4). The Examiner explains that hollow bolts are bolts. Ans. 12. The Appellant argues that the Examiner’s finding is in error because hollow bolts are not recited in the Markush group of claims 21 and 27. See Appeal Br. 27, 30–31. The Appellant’s argument is unpersuasive because it does not explain why one of ordinary skill in the art would not understand a hollow bolt to be a type of bolt. See Ans. 12–13. Appeal 2020-001993 Application 15/274,922 9 Thus, we sustain the Examiner’s rejection of claims 21 and 27. Dependent claims 22 and 28 Claim 22 recites “the anchoring of the at least one helical pile comprises anchoring a plurality of helical piles such that a plurality of the pierhead are embedded in the embedment block.” Appeal Br., Claims App. Claim 28 is similar to claim 22. See id. The Appellant contends that “piles and micropiles are not equivalents according to the expert engineers working on the Hurricane Sandy Projects.” Appeal Br. 28 (citing Hurricane Sandy Fact Sheet 9–10). The Appellant’s contention is not persuasive of Examiner error. As explained above, the Examiner’s reasoning is based on the finding that micropiles with moment- resisting connections to a foundation are considered art recognized equivalents to piles. Ans. 12. Thus, we sustain the Examiner’s rejection of claims 22 and 28. Dependent claims 23 and 29 Claim 23 recites, “the embedment block excludes a mating assembly between the pierhead and the fastener that directly links the pierhead and fastener.”4 Appeal Br., Claims App. Claim 29 is similar to claim 23. See id. The Examiner finds that the combination of teachings of Naito and Hurricane Sandy Fact Sheet result in the subject matter of claim 23. Final 4 The Examiner objects to claim 23. The Examiner suggests “fastener” be changed to “fasteners.” Final Act. 5. Appeal 2020-001993 Application 15/274,922 10 Act. 8. The Examiner relies on Naito to teach no mating assembly for a pile and Hurricane Sandy Fact Sheet to teach that the only mating assembly is the indirect rebar cage. See Final Act. 6–7, 8. The Appellant contends that the Hurricane Sandy Fact Sheet fails to disclose the affirmative absence of a mating assembly between a helical and its load. Appeal Br. 28–29. The Appellant’s contention is persuasive. Claim 23, unlike claim 19, calls for the exclusion of a mating assembly; and specifically, recites that “the embedment block excludes a mating assembly between the pierhead and the fastener that directly links the pierhead and fastener.” Appeal Br., Claims App. The Examiner relies on Hurricane Sandy Fact Sheet to teach the use of a pierhead being embedded in a concrete block (Final Act. 7) and that “[t]he connection between the [helical] and the foundation shown in Fig. 8(b) of the Hurricane Sandy Fact Sheet is a strong moment-resisting connection.” Ans. 14; see Hurricane Sandy Fact Sheet 10. The Examiner also finds that “[t]here is no disclosure or suggestion in the Hurricane Sandy Fact Sheet of a direct connection between the pierhead and fasteners (or any portion of the column).” Ans. 14. It is the Examiner’s position that Hurricane Sandy Fact Sheet’s teaching of a strong moment-resisting connection is established by the indirect mating of the helical and its pierhead, the foundation, and the column along with reinforcing bars (i.e., rebar cage) that strengthen the concrete. See id. Hurricane Sandy Fact Sheet does not adequately address the specifics of its strong moment-resisting connection to support the Examiner’s rejection. For example, Hurricane Sandy Fact Sheet’s Figure 8 fails to show adequate details to support a finding that there is either a direct or an indirect Appeal 2020-001993 Application 15/274,922 11 mating assembly between the helical’s pierhead and a fastener. See Appeal Br. 24, 31 (“White space in fig. 8(B) is not interpretable as ‘the embedment block excludes a mating assembly’”). Therefore, we determine that the Examiner’s finding that Hurricane Sandy Fact Sheet’s reference to a strong moment-resisting connection, as shown in Figure 8, is an indirect connection is inadequately supported. Thus, we do not sustain the Examiner’s rejection of claims 23 and 29. Independent claim 31 and dependent claims 32–36 As discussed above, the Examiner rejected claims 31–36 as indefinite under 35 U.S.C. § 112(b) because claim 31 calls for a contradictory relationship between a pierhead and a concrete block. Additionally, the Examiner provided an alternate recitation to the indefinite claim limitation for the purposes of examination. See Final Act. 6. The Appellant does not substantively respond to the rejection and appears to acquiesce to the Examiner’s alternate recitation. See Appeal Br. 33. In this case, it follows that the rejection of claims 31–36 under 35 U.S.C. § 103 must fall because it is necessarily based on a speculative assumption as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). Thus, we do not sustain the Examiner’s rejection of claims 31–36. It should be understood, however, that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter set forth below, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. Appeal 2020-001993 Application 15/274,922 12 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 31–36 112(b) Indefinite 31–36 19–36 103 Naito, Hurricane Sandy Fact Sheet 19–22, 24–28, 30 23, 29, 31–36 Overall Outcome 19–22, 24–28, 30–36 23, 29 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART