Ex Parte Buarque De Macedo

Patent Trial and Appeal BoardNov 28, 2012

10625102 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PEDRO M. BUARQUE DE MACEDO ____________________ Appeal 2011-000847 Application 10/625,102 Technology Center 3600 ____________________ Before JENNIFER D. BAHR, MICHAEL C. ASTORINO, and MICHELLE R. OSINSKI, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000847 Application 10/625,102 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1, 5, 13, 14, 23, 27, 29-31, 37, 42-47, 51-59, and 63-66. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on November 15, 2012. We REVERSE. The claimed subject matter relates to prestressed, foam glass tiles to be used in building construction and assemblies made therefrom. Spec. para. [0001]. Claims 1, 23, 42, and 54 are the independent claims on appeal. Claims 1 and 42 are illustrative and are reproduced below: 1. A prestressed foam glass tile wherein said tile has a compression strength of 10,000 psi or greater prior to being in a prestressed condition and a prestress compression of 4,000 psi or greater. 42. A prestressed foam glass tile wherein said tile has a prestress compression of 4,000 psi or greater and an average pore size of 1.0 mm or less, wherein said average pore size is measured based on the distance between two farthest points of pore surface. REJECTIONS Appellant seeks review of the rejection of claims 1, 5, 13, 14, 23, 27, 29-31, 37, 42-47, 51-59, and 63-66 under 35 U.S.C. § 103(a) as unpatentable over one or both of Grady (US 4,324,037, iss. Apr. 13, 1982) and Ellis (US 3,430,397, iss. Mar. 4, 1969); Zeinetz (US 3,292,316, iss. Dec. 20, 1966); either Williams (US 4,124,365, iss. Nov. 7, 1978) or Blaha (US 3,056,184, iss. Oct. 2, 1962); and any of Jones (US 3,459,565, iss. Aug. 5, 1969), Elmer Appeal 2011-000847 Application 10/625,102 3 (US 3,592,619, iss. Jul. 13, 1971), and Ford (US 2,758,937, iss. Aug. 14, 1956). Ans. 4-10. ANALYSIS The Examiner’s rejections are predicated in part on the Examiner’s conclusion that while none of the cited references disclose prestress compression of 4,000 psi or greater on a foamed glass tile as recited in the claims, “[a]pplying a pre-compressive force of from 1,000 to 5,000 psi to the resulting assembled foam glass units, thus affording as much recovery from the effects of a greater degree of overload, would have constituted a further obvious expedient to one having ordinary skill in the art.” Ans. 5, 8. The Examiner further determined that one of ordinary skill in the art would “apply a sufficient amount of prestress to the foam glass block or assemblage of foam glass blocks as deemed appropriate or necessary to establish a sufficiently strong structure within the building industry.” Ans. 14. Appellant contends that there is no reason to combine the cited prior art to obtain a foam glass tile that is strong enough to withstand the claimed range of prestress compression. App. Br. 25. Appellant points out that “by prestressing a product, the resulting compression strength of the prestressed product will decrease by the prestress amount while the resulting tension strength will increase by the same amount.” App. Br. 32; see also Declaration of Pedro M. Buarque de Macedo, para. 20. Accordingly, it may not necessarily be suitable to apply pre-compressive force to a workpiece in the claimed range depending on the desired compression strength characteristics of the resulting product. Appeal 2011-000847 Application 10/625,102 4 In particular, Appellant contends that “there would be no logical reason to apply such high tension amounts [e.g., the claimed range of 4,000 psi or greater] to achieve the coupling effect sought [in Zeinetz] and if such tension were applied, one would expect the materials identified in Zeinetz to crumble and collapse.” Reply Br. 3. Accordingly, if the structural column of Grady or Ellis was provided with the foamed glass tile units of Zeinetz (Ans. 5, 8), one would expect the foamed glass tile units taught by Zeinetz to collapse if subjected to such high prestress compression in the claimed range of 4,000 psi or greater. See Reply Br. 3. Without a reasonable expectation of success in further modifying the structural column of Grady or Ellis (as already modified to include the foamed glass material of Zeinetz) in order to arrive at the foam glass tiles having a prestress compression of 4,000 psi or greater, the claimed subject matter would not have been obvious to one of ordinary skill in the art. App. Br. 20-22; see also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006). While the Examiner identified Blaha and Williams as teaching foamed glass materials being able to withstand compression forces around 1,200 psi and 5,000-8,000 psi, respectively (Ans. 4-5), the Examiner has not identified any particular prestress compression applied to the foamed glass materials in Blaha or Williams. App. Br. 28-29. The Examiner has also not identified any particular reason why Blaha and Williams would cause one of ordinary skill in the art to apply a prestress compression in the claimed range of 4,000 psi or greater to the structural column of Grady or Ellis as modified with the foamed glass tiles of Zeinetz. App. Br. 27, 29-30. Appeal 2011-000847 Application 10/625,102 5 The Examiner has not provided adequate reasoning with rational underpinning why a person of ordinary skill in the art would modify the arrangement of the prior art references to apply a prestress compression in the claimed range of 4,000 psi or greater. Reply Br. 6. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some 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)). Without an articulated rationale based on rational underpinning for modifying the prior art references as proposed, the Examiner’s rejection appears to be the result of impermissible hindsight analysis. See App. Br. 42. Additionally, the Examiner’s apparent reliance on the principle that the “claimed combination of elements was ‘obvious to try’” (Ans. 14) is unavailing to support a conclusion of obviousness. The Examiner does not provide adequate reasoning or evidence to show that there are a finite number of identified, predictable solutions to solve a problem evidenced by design need or market pressure. App. Br. 22; see also KSR, 550 U.S. at 421. For the foregoing reasons, the Examiner’s proposed modification of the prior art to prestress foamed glass tiles at a prestress compression of 4,000 psi or greater would not have been obvious to a person of ordinary skill in the art. Accordingly, we do not sustain the rejection of independent claims 1, 23, 42, and 54 and their respective dependent claims 5, 13, 14, 27, 29-31, 37, 43-47, 51-53, 55-59, and 63-66. Appeal 2011-000847 Application 10/625,102 6 DECISION The Examiner’s rejections of claims 1, 5, 13, 14, 23, 27, 29-31, 37, 42-47, 51-59, and 63-66 are REVERSED. REVERSED mls