UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`Metromont Corporation,
`Petitioner
`v.
`Reigstad & Associates,
`Patent Owner.
`_____________
`METROMONT EXHIBIT 1002:
`DECLARATION OF ANTONIO NANNI REGARDING
`CLAIMS 1-7, 9, 10, AND 13 OF U.S. PATENT NO. 10,337,196
`
`

`

`V.
`VI.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`QUALIFICATIONS ........................................................................................ 2
`II.
`III. MATERIALS CONSIDERED ........................................................................ 6
`IV. RELEVANT LEGAL STANDARDS ............................................................. 9
`A.
`Priority Date .......................................................................................... 9
`B.
`Claim Construction................................................................................ 9
`C.
`Anticipation ........................................................................................... 9
`D.
`Obviousness .........................................................................................10
`LEVEL OF ORDINARY SKILL IN THE ART ...........................................13
`THE ’196 PATENT .......................................................................................14
`A.
`Challenged Claims 1-7, 9, 10, and 13 .................................................14
`B.
`Overview Of The ’196 Patent’s Disclosure ........................................15
`C.
`Summary Of The ’196 Patent’s Prosecution History ..........................22
`VII. CLAIM CONSTRUCTION ..........................................................................26
`A.
`A POSA would have understood the plain and ordinary
`meaning of “concrete” in the challenged claims to be “a
`cement-based composite material.”.....................................................26
`A POSA would have understood that the “concrete” used to
`make the ’196 Patent’s pre-cast load-carrying floor structure
`would be a coarse aggregate concrete. ................................................27
`A POSA would have understood that the “concrete” used to fill
`the top-surface trenches described in the ’196 Patent would be
`concrete mortar. ...................................................................................29
`A POSA would have understood the ordinary meaning of
`“concrete” in view of the specification to be “a cement-based
`composite material.” ............................................................................33
`VIII. SUMMARY OF INVALIDITY GROUNDS ................................................34
`IX. GROUND A: CLAIMS 1-7 AND 9 ARE OBVIOUS IN VEW OF
`GLEICH AND TUMIALAN .........................................................................35
`A.
`Overview of Gleich .............................................................................35
`B.
`Overview of Tumialan.........................................................................38
`
`B.
`
`C.
`
`D.
`
`i Metromont Ex-1002
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`

`

`C.
`
`D.
`
`B.
`
`C.
`
`X.
`
`2.
`
`3.
`
`4.
`
`A POSA would have been motivated to combine Gleich and
`Tumialan. .............................................................................................45
`Analysis of Claim 1 (Ground A) .........................................................49
`1.
`[1pre] “A method for enhancing or repairing a pre-cast
`load-carrying concrete floor structure, wherein the load-
`carrying concrete floor structure includes a flange, two
`supporting members that support the flange, and a carbon
`fiber grid disposed within the flange between the two
`supporting members, the method comprising:” ........................49
`[1a] “forming a trench at a top surface of the flange
`between the two supporting members that support the
`flange of the load-carrying concrete floor structure;” ..............51
`[1b] “arranging a reinforcement material into the trench
`to be above at least a portion of the carbon fiber grid
`disposed within the flange;” ......................................................52
`[1c] “applying a concrete bonding agent to an internal
`side surface of the trench; and” [1d] “filling the trench
`with concrete.” ..........................................................................54
`Analysis of Dependent Claim 2 (Ground A).......................................57
`E.
`Analysis of Dependent Claims 3 and 6 (Ground A) ...........................58
`F.
`Analysis of Dependent Claims 4 and 5 (Ground A) ...........................60
`G.
`Analysis of Dependent Claim 7 (Ground A).......................................62
`H.
`Analysis of Dependent Claim 9 (Ground A).......................................63
`I.
`GROUND B: CLAIMS 1-7 AND 9 ARE OBVIOUS IN VEW OF
`GLEICH, TUMIALAN, AND SIKA PRODUCT SHEETS. ........................64
`A.
`Overview of Sika Product Sheets ........................................................64
`1.
`SikaTop 123 Product Sheet .......................................................64
`2.
`Sika Armatec 110 Product Sheet ..............................................66
`3.
`A POSA would have considered the disclosure of the
`Sika Product Sheets together. ...................................................67
`A POSA would have been motivated to combine Gleich,
`Tumialan, and Sika Product Sheets. ....................................................68
`Analysis of Claim 1 (Ground B) .........................................................72
`1.
`Claim elements [1pre], [1a], and [1b]. ......................................72
`2.
`[1c] “applying a concrete bonding agent to an internal
`side surface of the trench; and” [1d] “filling the trench
`with concrete.” ..........................................................................73
`Analysis of Claims 2-7 (Ground B) ....................................................75
`Analysis of Claim 9 (Ground B) .........................................................75
`
`D.
`E.
`
`ii Metromont Ex-1002
`
`

`

`XI. GROUND C: CLAIMS 10 AND 13 ARE OBVIOUS IN VEW OF
`GLEICH, TUMIALAN, AND REIS (AND IN VIEW OF GLEICH,
`TUMIALAN, SIKA PRODUCT SHEETS, AND REIS). ............................77
`A.
`Overview of Reis .................................................................................78
`B.
`A POSA would have been motivated to combine Gleich,
`Tumialan, and Reis (and motivated to combine Gleich,
`Tumialan, Sika Product Sheets, and Reis) ..........................................81
`Analysis of Dependent Claims 10 and 13 (Ground C) .......................84
`C.
`XII. CONCLUSION ..............................................................................................88
`
`iii Metromont Ex-1002
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`

`

`I.
`
`INTRODUCTION
`
`1.
`
`My name is Antonio Nanni and I am the Chair of the Department of
`
`Civil, Architectural, and Environmental Engineering at the University of Miami. I
`
`have been asked to submit this declaration on behalf of Metromont Corporation
`
`(“Metromont”) in connection with its petition for inter partes review (IPR) of U.S.
`
`Patent No. 10,337,196 (“the ’196 Patent”) before the Patent Trial and Appeal Board
`
`(“Board”) of the United States Patent and Trademark Office. I understand the ’196
`
`Patent is owned by Reigstad and Associates, who I will refer to herein as “Patent
`
`Owner.”
`
`2.
`
`I have been retained as a technical expert by Metromont to study and
`
`provide my opinions on the technology described in the ’196 Patent and the
`
`patentability or unpatentability of Claims 1-7, 9, 10, and 13 of the ’196 Patent (“the
`
`Challenged Claims”). This declaration sets forth my opinions that I have formed
`
`based on my study of the ’196 Patent, my review of the exhibits provided to me by
`
`counsel at Alston & Bird LLP and listed herein, my understanding as an expert in
`
`the field, and my education, training, research, knowledge, and personal and
`
`professional experience. My qualification in the relevant technical areas, as well as
`
`other areas, are established by my curriculum vitae, attached as Exhibit 1026.
`
`1 Metromont Ex-1002
`
`

`

`II. QUALIFICATIONS
`
`3.
`
`I am currently a Professor at the University of Miami and serve as the
`
`Chair of the Department of Civil, Architectural, and Environmental Engineering. In
`
`my academic capacity, my research interests cover construction materials and their
`
`structural performance and field application, including monitoring and renewal, with
`
`a focus on the sustainability of buildings and civil infrastructure. Over my more than
`
`30-year career, I have studied concrete and advanced composite-based systems as
`
`the principal investigator on a number of research projects sponsored by federal and
`
`state agencies and private industry. I regard myself as an expert in precast and cast-
`
`in-place load-carrying concrete structures and the reinforcement of those structures
`
`using composite materials, including carbon fiber composite materials.
`
`4.
`
`My full curriculum vitae (“CV”) is provided with this declaration as
`
`Metromont Exhibit 1026. While my expertise should be readily apparent from my
`
`CV, I have provided below a brief summary of certain relevant portions of my
`
`background and experience for the benefit of the Board.
`
`5.
`
`Education & Certifications. I received my B.S. degree in Civil
`
`Engineering in 1978 from the University of Bologna in Bologna, Italy. In 1980, I
`
`received an M.S. degree in Civil Engineering from the University of Witwatersrand
`
`in Johannesburg, South Africa. I went on to receive my Ph.D. in Civil Engineering
`
`2 Metromont Ex-1002
`
`

`

`from the University of Miami in Coral Gables, FL in 1985. I am also a registered
`
`professional engineer in Florida, Pennsylvania, Missouri, Oklahoma, and Italy.
`
`6.
`
`Experience and Research. Since receiving my Ph.D., I have held
`
`numerous academic roles. After receiving my Ph.D. in 1985, I joined the University
`
`of Miami as an Assistant Professor of Civil and Architectural Engineering. I then
`
`joined Pennsylvania State University in 1988 and was a faculty member of
`
`Architectural Engineering there for nine years. In 1997, I became the Vernon and
`
`Maralee Jones Professor of Civil Engineering at the University of Missouri – Rolla
`
`(now Missouri Science & Technology University). I remained in this role until 2006.
`
`7.
`
`In 2006, I rejoined the faculty of the University of Miami in Coral
`
`Gables, Florida, where I still teach and conduct research today. I am currently a
`
`Professor and Chair of the Department of Civil, Architectural, and Environmental
`
`Engineering at the University of Miami. I have taught courses directed to a variety
`
`of subjects, including reinforced concrete structures, infrastructure strengthening
`
`with composites, and the behavior of structural systems. As detailed in my CV, my
`
`research interests have included the integration of composite materials (e.g., fiber-
`
`reinforced polymers (“FRP”) into various concrete structures, including buildings
`
`and bridges.
`
`8.
`
`Over the course of my academic career, I have served in several
`
`additional roles, which are detailed in my CV. For example, I serve as the Site
`
`3 Metromont Ex-1002
`
`

`

`Director for
`
`the National Science Foundation (NSF) Industry/University
`
`Cooperative Research Center for the Integration of Composites into Infrastructure,
`
`and previously served as the Director for the NSF Industry/University Cooperative
`
`Research Center on Repair of Buildings and Bridges with Composites. I have also
`
`served as a visiting professor at various institutions, including the Science University
`
`of Tokyo, the University of Bologna, and the University of Naples Federico II. As a
`
`professor, I have advised more than 80 graduate students pursuing masters and/or
`
`Ph.D. degrees.
`
`9.
`
`Outside of academia, I am the founding partner of Co-FORCE (Reggio
`
`Emilia, Italy) and Co-FORCE America (Coral Gables, FL), which are consulting
`
`engineering companies with a specific focus on the use of composites in civil
`
`engineering. I have also served in various other professional consulting and
`
`engineering roles, including consulting roles relating to composite strengthening and
`
`load testing / strengthening of parking garages. These roles are detailed in my CV.
`
`10.
`
`Scholarship and Publications. As detailed in my CV, I have authored
`
`or co-authored 271 articles published in refereed journals and 407 articles published
`
`in refereed proceedings. This scholarship is overwhelmingly focused on concrete
`
`structures and the reinforcement of those structures, particularly with FRP materials
`
`(including CFRP materials). In particular, I have authored several articles directed
`
`to concrete double tee structures. As detailed in my CV, I have also authored or co-
`
`4 Metromont Ex-1002
`
`

`

`authored various books directed to concrete structures and the reinforcement of those
`
`structures.
`
`11.
`
`I am currently the Editor-in-Chief of the ASCE Journal of Materials in
`
`Civil Engineering. I am also currently a member of the Scientific Board of
`
`STRUCTURAL MAGAZINE, the Advisory Board of the International Institute for
`
`FRP in Construction (IIFC) Newsletter, the editorial board of Advances in Structural
`
`Engineering, and the Editorial Board of the Journal of Composites for Construction
`
`(ASCE). As detailed in my CV, I have served various roles for other technical
`
`journals over the course of my career.
`
`12. Awards and Honors. Through my career I have received numerous
`
`awards, including being elected a fellow of the American Concrete Institute (ACI),
`
`American Society of Civil Engineers (ASCE), Bridge Engineering Institute (BEI),
`
`and International Institute for FRP in Construction (IIFC). I am the 2021 recipient
`
`of the ACI Foundations Arthur J. Boase award. Notably, I also received the 2006
`
`International Concrete Repair Institute (ICRI) Award of Merit—Strengthening of
`
`Structures Category—for my work on the Florida Keys Overseas Historic Trail
`
`Bridge Repairs & Upgrades at Big Coppitt Key. This project involved NSM of CFRP
`
`reinforcement bars. I have also been awarded the IIFC Medal (2014), the ASCE
`
`Henry L. Michel Award for Industry Advancement of Research (2012), and the
`
`5 Metromont Ex-1002
`
`

`

`Engineering News-Record Award of Excellence (Top 25 Newsmakers in
`
`Construction) (1997), among various other awards and honors detailed in my CV.
`
`13. Compensation. I am being compensated at the rate of $390/hour for
`
`my work in relation to the ’196 Patent. My compensation does not depend on the
`
`outcome of this proceeding.
`
`III. MATERIALS CONSIDERED
`
`14.
`
`In forming my opinions expressed in this declaration, I have reviewed
`
`and considered the documents identified in the list of exhibits below, each of which
`
`were provided to me by counsel at Alston & Bird LLP. To the extent I am provided
`
`additional documents and information in this proceeding, including any expert
`
`declarations, I may offer further opinions.
`
`Exhibit
`Ex-1001
`
`Ex-1003
`
`Ex-1004
`
`Description
`U.S. Patent No. 10,337,196 to Reigstad et al.
`
`Harry A. Gleich, Carbon Fiber Reinforcing: Making Double Tees
`in Parking Structures Lighter and Stronger, Structure Magazine
`(July 2006).
`
`J. Gustavo Tumialan, et al., Case Study: Strengthening of Parking
`Garage Decks with Near-Surface-Mounted CFRP Bars, Journal
`of Composites for Construction, 11(5): 523-530
`(September/October 2007)
`
`Ex-1005
`
`Prosecution History of U.S. Application No. 15/945,318
`
`Ex-1006
`
`U.S. Patent No. 5,044,139 to Mills
`
`Ex-1007
`
`U.S. Patent Publication No. 2012/0073231 to Hemphill
`
`6 Metromont Ex-1002
`
`

`

`Ex-1008
`
`Ex-1009
`
`Ex-1010
`
`Ex-1011
`
`Ex-1012
`
`Ex-1013
`
`Ex-1014
`
`SikaTop® 123 PLUS Product Data Sheet (Edition 8.2003;
`Identification no. 188)
`Sika Armatec® 110 EpoCem® Product Data Sheet (Edition
`8.2003; Identification no. 182)
`
`Response to Freedom of Information Request No. 12238 for Port
`Authority Bus Terminal, Port Authority of NY & NJ (Aug. 18,
`2011) (available at: https://corpinfo.panynj.gov/files/uploads/
`documents/freedom-of-information/foi-fulfilled-requests/12238-
`C.pdf)
`
`E. M. Reis, et al., Non-Destructive Radiographic Evaluation and
`Repairs to Pre-Stressed Structure Following Partial Collapse,
`Forensic Engineering 2012: Gateway to a Safer Tomorrow
`(ASCE 2013)
`
`ASCE Library Webpage for Forensic Engineering 2012: Gateway
`to a Safer Tomorrow, available at https://ascelibrary.org/doi/book
`/10.1061/9780784412640.
`
`Dustin B. Ward, et al., Prestress losses of double-tee girders cast
`with lightweight self-consolidating concrete, 7 Journal of
`Building Engineering 133-142 (June 2016).
`
`D. B. Thatcher, et al., Structural Lightweight Concrete
`Prestressed Girders and Panels, Research Report 1852-1, Center
`for Transportation Research – The University of Texas at Austin
`(January 2002).
`
`Ex-1015
`
`U.S. Patent No. 3,670,504 to Hayes et al.
`
`Ex-1016
`
`U.S. Patent No. 4,889,666 to Kawasaki.
`
`Ex-1017
`
`U.S. Patent No. 7,658,797 to Guevara et al.
`
`Ex-1018
`
`Ex-1019
`
`P. Kumar Mehta, et al., Concrete: Microstructure, Properties and
`Materials, McGraw Hill 3rd ed. (October 20, 2001)
`
`Paul J. Burke, et al., Effects of elevated temperature on near
`surface mounted and externally bonded FRP strengthening
`
`7 Metromont Ex-1002
`
`

`

`systems for concrete, 35 Cement & Concrete Composites 190-199
`(2013).
`
`Ex-1020
`
`Ex-1021
`
`ICRI Technical Guideline No. 310.2R-2013, Selecting and
`Specifying Concrete Surface Preparation for Sealers, Coatings,
`Polymer Overlays, and Concrete Repair (October 2013)
`
`Sika Refurbishment: ICRI Award Winning Projects 1998-2013,
`available at https://usa.sika.com/content/dam/dms/us01/w/
`Refurbishment-ICRI-Award-Winning-Projects-1998-2013.pdf.
`
`Ex-1022
`
`Declaration of Harry A. Gleich
`
`Ex-1023
`
`Declaration of J. Gustavo Tumialan
`
`Ex-1024
`
`Ex-1025
`
`Certificate of registration and renewal certificate, U.S. Trademark
`Reg. No. 2,938,685 for the mark C-GRID.
`
`Certificate of registration and associated renewal, U.S. Trademark
`Reg. No. 2,897,938 for the mark C-GRID REINFORCED &
`Design.
`
`Ex-1026
`
`Curriculum Vitae of Dr. Antonio Nanni
`
`Ex-1027
`
`Ex-1028
`
`John M. Carson, Carbon fibre grid improves precast concrete,
`JEC Magazine #38 (Jan./Feb. 2008), available at
`http://www.jeccomposites.com/print/knowledge/international-
`composites-news/carbon-fibre-grid-improves-precast-concrete.
`
`AltusGroup joins PCI as supplier associate member, Press
`Release (March 5, 2014), available at
`https://altusprecast.com/altusgroup-joins-pci-as-supplier-
`associate-member/.
`
`8 Metromont Ex-1002
`
`

`

`IV. RELEVANT LEGAL STANDARDS
`
`15.
`
`I have been informed by counsel for Metromont that the following legal
`
`principles apply to an assessment of patentability. I have applied these legal
`
`principles throughout my analysis in this declaration.
`
`A.
`16.
`
`PRIORITY DATE
`I have been instructed to assume that the Challenged Claims are entitled
`
`to claim priority to U.S. Provisional Application No. 62/481,176, which was filed
`
`April 4, 2017. Accordingly, I have been asked to opine on the patentability of the
`
`Challenged Claims in view of the prior art (including patents and printed
`
`publications) publicly available as of April of 2017 and in view of the knowledge
`
`possessed by a person of ordinary skill in the art in April of 2017.
`
`B.
`17.
`
`CLAIM CONSTRUCTION
`I have been instructed that, to assess the patentability or unpatentability
`
`of a claim, one must first ascertain the scope of the claimed invention, which requires
`
`understanding the terms in the claim. In particular, I have been informed that the
`
`claims of the ’196 Patent should be given their ordinary and customary meaning as
`
`they would be understood by one of ordinary skill in the art in view of the ’196
`
`Patent’s specification and prosecution history.
`
`C.
`18.
`
`ANTICIPATION
`I have been informed that a claim is anticipated by a single prior art
`
`reference if each and every limitation of the claim is disclosed by the prior art
`9 Metromont Ex-1002
`
`

`

`reference, either expressly or inherently. To be inherent, a claim limitation must
`
`necessarily be present in the subject matter disclosed by the reference and may not
`
`be established by probabilities or possibilities.
`
`D.
`19.
`
`OBVIOUSNESS
`I have been informed that a claim may be rendered obvious, and
`
`therefore unpatentable, even though the claimed invention is not identically
`
`disclosed in a single prior art reference, if the differences between the claimed
`
`invention and the prior art are such that the claimed invention as a whole would have
`
`been obvious at the time the invention was made to a person having ordinary skill in
`
`the art.
`
`20. When considering obviousness, I was asked to (i) determine the scope
`
`and content of the prior art; (ii) ascertain the differences between the prior art and
`
`the claims at issue; (iii) resolve the level of ordinary skill in the pertinent art; and
`
`(iv) consider evidence of objective indicia (or “secondary considerations”) of non-
`
`obviousness (if available). I note that I am not presently aware of any evidence of
`
`secondary considerations for the ’196 Patent that affects my opinions presented in
`
`this declaration.
`
`21.
`
`I have been instructed that a reference may be modified or combined
`
`with other references or with the person of ordinary skill’s own knowledge if the
`
`person would have found the modification or combination obvious. I have also been
`
`10 Metromont Ex-1002
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`

`

`instructed that the obviousness analysis may take into account the inferences and
`
`creative steps that a person of ordinary skill in the art would employ.
`
`22.
`
`In determining whether a prior art reference could have been combined
`
`with another prior-art reference or other information known to a person having
`
`ordinary skill in the art, I have been instructed that the following principles may be
`
`considered: (i) a combination of familiar elements according to known methods is
`
`likely to be obvious if it yields predictable results; (ii) the substitution of one known
`
`element for another is likely to be obvious if it yields predictable results; (iii) the use
`
`of a known technique to improve similar items or methods in the same way is likely
`
`to be obvious if it yields predictable results; (iv) the application of a known technique
`
`to a prior art reference that is ready for improvement is likely obvious if it yields
`
`predictable results; (v) any need or problem known in the field and addressed by the
`
`reference can provide a reason for combining the elements in the manner claimed;
`
`(vi) a person of ordinary skill may be able to fit the teachings of multiple references
`
`together like a puzzle; and (vii) the proper analysis of obviousness requires a
`
`determination of whether a person of ordinary skill in the art would have a
`
`“reasonable expectation of success”—not “absolute predictability” of success—in
`
`achieving the claimed invention by combining prior art references.
`
`23.
`
`I have also been instructed that, while there is no requirement that the
`
`prior art contain an express suggestion to combine known elements to achieve the
`
`11 Metromont Ex-1002
`
`

`

`claimed invention, a suggestion to combine known elements to achieve the claimed
`
`invention may come from the prior art as a whole or individually, as understood with
`
`the knowledge of one skilled in the art. In addition, I have been instructed that the
`
`inferences and creative steps a person of ordinary skill in the art would employ are
`
`also relevant to the determination of obviousness.
`
`24.
`
`I have been instructed that, when a work is available in one field, design
`
`alternatives and other market forces can prompt variations of it, either in the same
`
`field or in another. I have also been instructed that if a person of ordinary skill in the
`
`art can implement a predictable variation and would see the benefit of doing so, that
`
`variation is likely to be obvious. I have been instructed that in many fields, there
`
`may be little discussion of obvious combinations, and in these fields market demand
`
`may drive design trends. I have been instructed that, when there is a design need or
`
`market pressure and there are a finite number of identified, predictable solutions, a
`
`person of ordinary skill in the art has good reason to pursue those known options.
`
`25.
`
`I have been instructed that there is no rigid rule that a reference or
`
`combination of references must contain a “teaching, suggestion, or motivation” to
`
`combine references. But I also have been instructed that the “teaching, suggestion,
`
`or motivation” test can be a useful guide in establishing a rationale for combining
`
`elements of the prior art. I have been instructed that it is impermissible to rely on the
`
`12 Metromont Ex-1002
`
`

`

`’196 Patent’s teachings to combine prior art references, as such analysis would
`
`involve impermissible hindsight.
`
`26.
`
`Furthermore, I have been informed that where there is a reason to
`
`modify or combine the prior art to achieve the claimed invention, the claims may be
`
`obvious provided there is also a reasonable expectation of success. The teachings of
`
`the prior art can provide a sufficient basis for a reasonable expectation of success.
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`27.
`
`I have been asked to consider the background and level of skill
`
`possessed by a person of ordinary skill in the subject matter of the ’196 Patent at the
`
`time of its invention.
`
`28. Based on my experience, it is my opinion that a person of ordinary skill
`
`in the art in April of 2017 (herein “POSA”) would have had: at least a bachelor’s
`
`degree in Civil Engineering, Architectural Engineering, Mechanical Engineering, or
`
`a related technical field, and at least three years of experience in the structural design
`
`of reinforced or prestressed concrete strengthening alternatives. I believe additional
`
`work experience in relevant work industries could compensate for less education or
`
`an education in a different field. It is also my opinion that advanced education or
`
`degrees could similarly compensate for less work experience.
`
`13 Metromont Ex-1002
`
`

`

`VI. THE ’196 PATENT
`
`A.
`29.
`
`CHALLENGED CLAIMS 1-7, 9, 10, AND 13
`For reference, I have copied below the Challenged Claims of the ’196
`
`Patent. Among these claims, I note that Claim 1 is the only independent claim, with
`
`Claims 2-7, 9, 10, and 13 being dependent claims.
`
`Claim
`Element
`[1pre]
`
`[1a]
`
`[1b]
`
`[1c]
`
`[1d]
`
`[2]
`
`Challenged Claims
`
`1. A method for enhancing or repairing a pre-cast load-carrying
`concrete floor structure, wherein the load-carrying concrete floor
`structure includes a flange, two supporting members that support the
`flange, and a carbon fiber grid disposed within the flange between
`the two supporting members, the method comprising:
`forming a trench at a top surface of the flange between the two
`supporting members that support the flange of the load-carrying
`concrete floor structure;
`arranging a reinforcement material into the trench to be above at
`least a portion of the carbon fiber grid disposed within the flange;
`applying a concrete bonding agent to an internal side surface of the
`trench; and
`filling the trench with concrete.
`
`2. The method according to claim 1, wherein the reinforcement
`material includes at least one selected from a group consisting of a
`steel reinforcing bar, an epoxy-coated reinforcing bar, a carbon fiber
`bar, a carbon fiber epoxy-based reinforcing bar, and a stainless steel
`bar.
`
`[3]
`
`3. The method according to claim 1, wherein the trench is at least 1.5
`inches deep from the top surface of the load-carrying concrete floor
`structure.
`
`14 Metromont Ex-1002
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`

`

`[4]
`
`[5]
`
`[6]
`
`[7]
`
`[9]
`
`[10]
`
`[13]
`
`4. The method according to claim 1, wherein forming the trench
`includes forming the trench across a width of the top surface of the
`flange.
`
`5. The method according to claim 1, wherein forming the trench
`includes forming the trench across at least a half of a width of the top
`surface of the flange.
`
`6. The method according to claim 1, wherein the trench is at least 2
`inches deep from the top surface of the flange.
`
`7. The method according to claim 1, further comprising forming a
`second trench at the top surface of the flange, wherein the trench and
`the second trench have a spacing between them.
`
`9. The method according to claim 1, further comprising: roughening
`a surface of the trench.
`
`10. The method according to claim 1, the method further comprising:
`arranging a horizontal reinforcement member below a bottom
`surface of the flange, and connecting a first end of the horizontal
`reinforcement member to a side of one of the supporting members.
`
`13. The method according to claim 10, wherein the horizontal
`reinforcement member includes at least one selected from a group
`consisting of a steel reinforcing bar, an epoxy-coated reinforcing bar,
`a carbon fiber bar, a carbon fiber epoxy-based reinforcing bar, and a
`combination thereof.
`
`B.
`30.
`
`OVERVIEW OF THE ’196 PATENT’S DISCLOSURE
`To assist the Board in evaluating the Challenged Claims, I have
`
`summarized the ’196 Patent’s disclosure below. I have provided blue annotations to
`
`the ’196 Patent’s figures (as well as to the figures and illustrations of the various
`
`prior art references discussed herein).
`
`15 Metromont Ex-1002
`
`

`

`31.
`
`The ’196 Patent discloses methods for “enhancing or repairing” a
`
`precast concrete floor structure. Ex-1001, Abstract. At a high level, the ’196 Patent’s
`
`method involves forming trenches on a top surface of the concrete floor structure
`
`and arranging reinforcement materials in the trenches (e.g., by placing steel or
`
`carbon reinforcing bars in the top-surface trenches). Id., Abstract, 1:38-51. The ’196
`
`Patent indicates that this method enhances the concrete floor structure’s ability to
`
`withstand tension and/or compression under loading and extends the concrete floor
`
`structure’s lifespan. Id., 1:34-37, 9:21-28.
`
`32.
`
`The ’196 Patent describes its method as being applicable to “precast
`
`load-carrying concrete systems,” which are often used in the construction of “floor
`
`and roof systems, parking structures, and bridges.” Ex-1001, 1:17-19, 8:23-28
`
`(emphasis added). I emphasize the ’196 Patent’s mention of “parking structures” as
`
`several of the prior art references I discuss herein relate to precast concrete parking
`
`structures and structural repairs and enhancements for such parking structures. See
`
`infra §§ IX.A, IX.B, X.A, XI.A.
`
`33.
`
`The ’196 Patent’s specification illustrates a precast concrete floor
`
`structure (210) that includes a flange (220), which is supported by a pair of
`
`supporting members (230a, 230b) (I note that these supporting members 203a, 230b
`
`are also referred to as “stems”). Ex-1001, 1:21-24, 6:53-55, 8:60-9:45. Figure 2A
`
`provides a cross-sectional illustration of the precast concrete floor structure (210),
`
`16 Metromont Ex-1002
`
`

`

`which I have annotated with blue text and lines below. As illustrated in Figure 2A,
`
`the flange (220) defines a top surface (221) opposite the flange’s bottom surface
`
`from which the supporting members (230a, 230b) extend downwardly. Id.
`
`’196 Patent - Figure 2A
`
`34.
`
`Precast concrete floor structures having the features shown in Figure
`
`2A are known in the construction industry as “double tees,” have been used for
`
`decades (well before the time frame of the ’196 Patent’s invention), and would have
`
`been well-known to a POSA. See e.g., Ex-1003, 11 (illustration and discussion of
`
`precast concrete double tees); Ex-1007, ¶0001, 0007, Figs. 1-4; Ex-1011, 1015-
`
`1016, 1022-1023 (discussion and illustration of double tee stems). As disclosed in
`
`the ’196 Patent, these precast double tee can be assembled side by side to form larger
`
`structures (e.g., a multi-level parking deck). Ex-1001, 8:63-66. A POSA would have
`
`been well-aware that precast concrete double tees of the type shown in the ’196
`
`Patent were frequently used to construct multi-level parking deck