Simpson Strong-Tie Company Inc.

Patent Trials and Appeals Board

Sep 29, 2021

2021001867 (P.T.A.B. Sep. 29, 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.
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).
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Application 14/618,847
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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
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Application 14/618,847
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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.”
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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
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Application 14/618,847
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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
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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
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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.
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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