Simpson Strong-Tie Company Inc.Download PDFPatent Trials and Appeals BoardSep 29, 20212021001867 (P.T.A.B. Sep. 29, 2021) Copy Citation 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. 14/618,847 02/10/2015 Steven E. Pryor SIMP-51025US5 8045 28554 7590 09/29/2021 Vierra Magen Marcus LLP 2001 Junipero Serra Blvd., Suite 515 Daly City, CA 94014 EXAMINER AHMAD, CHARISSA L ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 09/29/2021 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): lvierra@vierramagen.com patents@vierramagen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN E. PRYOR and BADRI HIRIYUR Appeal 2021-001867 Application 14/618,847 Technology Center 3600 Before JENNIFER D. BAHR, CARL M. DEFRANCO, and SUSAN L. C. MITCHELL, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–6, and 8–10, which are all of the pending claims.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Simpson Strong-Tie Company Inc. Appeal Br. 3. 2 Appellant canceled claims 11–15 in the Amendment submitted September 2, 2020, with the Appeal Brief. See Adv. Act. (Sept. 14, 2020) (entering the Amendment). Appeal 2021-001867 Application 14/618,847 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to “a lateral bracing system constructed to provide a high degree of energy dissipation through hysteretic damping along with high initial stiffness so that energy is dissipated at low force thresholds within a light-framed construction.” Spec. ¶ 2. Claims 1 and 6 are independent, and claim 1, reproduced below with minor formatting changes for improved readability, is illustrative of the claimed subject matter. 1. A construction, comprising: a column; a beam; a shear tab having a length oriented vertically, the shear tab affixed to the column and bolted to the beam, between a top and bottom flange of the beam; and a buckling restraint assembly on at least one of the top and bottom flanges of the beam, the buckling restraint assembly including: a column mounted plate affixed to the column, a beam mounted plate mounted to the beam, and a yield plate connected between the column mounted plate and the beam mounted plate, the yield plate having a smaller width than the column mounted plate and the beam mounted plate, the smaller width of the yield plate defining first and second notches on opposite sides of the yield plate, between the column mounted plate and beam mounted plate, the yield plate yielding in tension and compression to dissipate stress within the construction upon a lateral load applied to the beam and/or column; a pair of spacer plates fitting within the first and second notches in the yield plate; a buckling restraint member covering at least a portion of the yield plate, the pair of spacer plates configured to provide a uniform load distribution across the buckling restraint member due to the first and second notches in the yield plate; and Appeal 2021-001867 Application 14/618,847 3 a pair of bolts fitting through a pair of holes in the buckling restraint member, a pair of holes in the pair of spacer plates and into one of the top and bottom flange of the beam, the pair of bolts receiving a pair of nuts to affix the buckling restraint member and pair of spacer plates to one of the top and bottom flange of the beam. REJECTIONS3 The Examiner rejected claims 1 and 3–5 under 35 U.S.C. § 103(a) as being unpatentable over Takeuchi ’3304 and Kasai.5 The Examiner rejected claims 6 and 8–10 under 35 U.S.C. § 103(a) as being unpatentable over Takeuchi, Kasai, and Nobuyoshi.6 OPINION Both of the Examiner’s rejections are predicated, in pertinent part, on the Examiner’s finding that annular members 103 of Takeuchi ’330, on which the Examiner reads the claimed “pair of spacer plates,” “are capable of providing a uniform load distribution across the buckling restraint member due to the first and second notches in the yield plate.”7 Non-Final 3 The Examiner also rejected then-pending claims 11–15 under 35 U.S.C. § 103. Non-Final Act. 6–9. Instead of appealing those rejections, Appellant canceled claims 11–15, as discussed above. 4 US 2004/0244330 A1, published December 9, 2004. 5 US 6,073,405, issued June 13, 2000. 6 JP2003074126A, published March 12, 2003. The Examiner refers to this document as “Nobuyoshi et al.” See, e.g., Non-Final Act. 4. For convenience, we refer to this document as “Nobuyoshi.” A computer generated English language translation of Nobuyoshi is provided in the electronic file of the present application. 7 The Examiner reads the claimed “buckling restraint member” and “yield plate” on buckling restraint 101 and plasticizing portion 6c, respectively, of Takeuchi ’330. Non-Final Act. 3. Takeuchi ’330 refers to the plasticizing portion at times as “6c” and at other times as “61c.” See, e.g., Takeuchi ’330 ¶¶ 120, 121, 123, 124, 126. Consistent with Figures 22(a)– 22(b), we refer to the plasticizing portion as “6c.” Appeal 2021-001867 Application 14/618,847 4 Act. 3. According to the Examiner, “[s]ince Takeuchi [’330] discloses the claimed elements in a like environment and a like arrangement, one of ordinary skill in the art would recognize the uniform load distribution as an additional advantage.” Non-Final Act. 3 (noting also that “[t]he notches define a narrow section”). Appellant points out that annular members 103 of Takeuchi ’330 “are provided to protect the side surfaces of the bolts.” Appeal Br. 12. Appellant contends that “annular members 103 are not configured to provide uniform load distribution, and do not provide a uniform load distribution, across the buckling restraint member.” Appeal Br. 12. Further, Appellant argues that, according to precedent of the Federal Circuit and the Board, the language “configured to” does not simply mean “capable of,” but, rather, requires that the claimed structure be “specifically designed to accomplish” the claimed function. Appeal Br. 12–13; Reply Br. 2. Appellant submits that persons of ordinary skill in the art would understand from the disclosure of Takeuchi ’330 that “annular members 103 are ‘specifically designed’ to shield the side surface of the bolt, not to ‘provide a uniform load distribution across the buckling restraint member due to the first and second notches in the yield plate,’ as recited in the claims.” Reply Br. 3 (citing Takeuchi ’330 ¶ 125). Thus, Appellant contends that “there is no disclosure or suggestion that the annular members 103 are specifically designed to provide uniform load distribution.” Reply Br. 2. Moreover, Appellant argues that “there is no disclosure in Takeuchi [’330] that they are even capable of performing this function.” Reply Br. 3. Appellant disputes the Examiner’s determination that, “[g]iven the similar arrangement of components” between Appellant’s device and that of Takeuchi ’330, “the annular members 103 must be configured to uniformly Appeal 2021-001867 Application 14/618,847 5 distribute load.” Reply Br. 3. Appellant submits that, “[w]hile true that the annular members 103 are provided within notches in the yield link, there is no disclosure or suggestion beyond that that the annular members are provided to uniformly distribute load” and that “[t]he Examiner’s unsupported and conclusory allegation in this regard carr[ies] no weight.” Reply Br. 3. Our reviewing court has interpreted “configured to” as meaning that the claimed device is made or designed to accomplish the recited function and instructs that one looks to the underlying disclosure in the application’s specification to ascertain what specific structural features are required of a structural element for it to be properly considered to be made or designed to accomplish the recited function. See In re Man Mach. Interface Tech. LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016). Thus, we look to Appellant’s Specification to ascertain what is meant by “pair of spacer plates configured to provide a uniform load distribution across the buckling restraint member due to the first and second notches in the yield plate” as recited in independent claims 1 and 6. Appellant’s Specification discloses spacer blocks 318 “sized to fit in between the horizontal portion 308b of column-mounted plate 308 and beam-mounted plate 310, on either side of yield plate 312.” Spec. ¶ 56. According to the Specification, “spacer blocks 318 may have the same thickness as the yield member 304.” Spec. ¶ 56. Further, the Specification discloses that, “[b]eing the same thickness as the yield member 304, the spacers ensure a uniform load distribution across the buckling restraint member 316 when the bolts 332 are fastened to beam 302 around the yield plate 312.” Spec. ¶ 60. Figures 15–17 illustrate a pair of generally square-shaped spacer plates 318 each having a width close to the width of Appeal 2021-001867 Application 14/618,847 6 the notch on either side of yield plate 302 in which the spacer plate is disposed and being of the same thickness as yield plate 302. Thus, consistent with Appellant’s Specification, the pair of spacer plates are configured to provide a uniform load distribution across the buckling restraint member by virtue of being the same thickness as the yield plate and being large enough to occupy a substantial portion of the notches to help distribute load. Takeuchi ’330 does not describe annular members 103 as providing a uniform load distribution across buckling restraint 101. Rather, Takeuchi ’330 discloses that annular members 103 are arranged around bolts 106 to avoid direct contact between the side surfaces of plasticizing portion 6c and the side surfaces of bolts 106 to protect the side surfaces of the bolts, as well as to limit the transverse deformation of plasticizing portion 6c. Takeuchi ’330 ¶ 125. The Examiner relies primarily on a purported similarity between Appellant’s arrangement and that of Takeuchi ’330 to support the finding that annular members 103 provide a uniform load distribution across buckling restraint 101. Non-Final Act. 3; Ans. 3–4. However, in contrast to the arrangement of Appellant’s yield plate, spacer plates, and buckling restraint member, annular members 103 of Takeuchi ’330 have a height (i.e., thickness) along the axis of bolts 106 that is larger than the thickness of plasticizing portion 6c and have a diameter that appears to be smaller than the heads of bolts 106 and the nut and washers used to tighten the bolts, hence providing a relatively small surface area. See Takeuchi ’330 ¶ 126; Figs. 22(a)–22(c). Thus, annular members 103 of Takeuchi ’330 are not “configured to provide a uniform load distribution across the buckling Appeal 2021-001867 Application 14/618,847 7 restraint member due to the first and second notches in the yield plate” as recited in independent claims 1 and 6.8 For the above reasons, the Examiner’s rejections of claims 1, 3–6, and 8–10 are predicated on an erroneous finding that annular members 103 of Takeuchi ’330 are “configured to provide a uniform load distribution across the buckling restraint member due to the first and second notches in the yield plate” as recited in independent claims 1 and 6. See Non-Final Act. 3; Ans. 3–4. Accordingly, we do not sustain the rejection of claims 1 and 3–5 as being unpatentable over Takeuchi ’330 and Kasai, or the rejection of claims 6 and 8–10 as being unpatentable over Takeuchi ’330, Kasai, and Nobuyoshi. CONCLUSION The Examiner’s rejections of claims 1, 3–6, and 8–10 are REVERSED. 8 We note that Takeuchi ’626 (JP200237162626A, published December 26, 2003), a computer generated translation (“Takeuchi ’626 Transl.”) of which is provided in the electronic file of the present application, discloses spacers 6 disposed in notches on either side of neck 8a of axial-resistance element 8 that appear to be substantially the same thickness as neck 8a and have surface areas sufficient to occupy a substantial portion of the notches. See Takeuchi ‘626, Figs. 3(A), 3(B), 4, 9–11; Takeuchi ’626 Transl. ¶ 22. In rejecting claims 11–15, which have subsequently been canceled, the Examiner proposed to modify the shape of annular members 103 of Takeuchi ’330 to have a non-circular shape as taught by Takeuchi ’626. See Non-Final Act. 7. The Examiner does not apply this teaching in rejecting claims 1, 3–6, and 8–10. Appeal 2021-001867 Application 14/618,847 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–5 103(a) Takeuchi ‘330, Kasai 1, 3–5 6, 8–10 103(a) Takeuchi ‘330, Kasai, Nobuyoshi 6, 8–10 Overall Outcome 1, 3–6, 8– 10 REVERSED Copy with citationCopy as parenthetical citation