Ex Parte Doman

Patent Trial and Appeal BoardMar 17, 2015

12130715 (P.T.A.B. Mar. 17, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BRYCE DOMAN ____________________ Appeal 2013-003193 Application 12/130,715 Technology Center 3600 ____________________ Before: EDWARD A. BROWN, JAMES P. CALVE, and LISA M. GUIJT, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the final rejection of claims 1–6 and 8–20. App. Br. 5. Claim 7 is cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2013-003193 Application 12/130,715 2 CLAIMED SUBJECT MATTER Claims 1, 17, 18, 19, and 20 are independent. Claims 2–6 and 8–16 depend from claim 1. Claim 1 is set forth below. 1. A landscape edging block, comprising: a shaped structure having a first end and a second end, the first end including a surface that is concave simultaneously along a horizontal plane and a vertical plane, the second end including a surface that is convex simultaneously along a horizontal plane and a vertical plane, and including a top and sides configured to resemble natural-looking decorative stone in shape, wherein the first end of the block is configured to engage a second end of a second block in order to form a landscaping border and wherein the first and the second ends are functionally configured to minimize a visible transition from one block to another when a plurality of blocks are engaged ranging from any angle between a straight line and a right angle. REJECTIONS Claims 1–6 and 8–20 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 1, 2, 6, and 9 are rejected under 35 U.S.C. § 102(b) as being anticipated by Henry (US Des. 378,423; iss. Mar. 11, 1997). Claims 10–16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Henry and MacDonald (US D488,568 S; iss. Apr. 13, 2004). Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over Henry and Kendall (US 2003/0208983 A1; pub. Nov. 13, 2003). Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Henry and Waltz (US 5,119,587; iss. June 9, 1992). Appeal 2013-003193 Application 12/130,715 3 Claims 3–5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Henry and Paturzo (US 3,155,529; iss. Nov. 3, 1964). Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over Henry and King (US 7,159,367 B1; iss. Jan. 9, 2007). Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over Henry, Waltz, and Kendall. ANALYSIS Claims 1–6 and 8–20 as indefinite The Examiner found that the limitation “configured to resemble natural-looking decorative stone(s)” in independent claims 1 and 17–20 renders those claims indefinite because it is unclear what is meant by “natural-looking.” Ans. 2. In particular, the Examiner found that what is considered natural-looking by one person may not be considered natural- looking by another person. Id. The Examiner also found that the term “configured to resemble” renders the claims indefinite because “resemble” is not a definite term and its meaning is unclear. Id. at 3. Appellant argues that the Specification does not redefine the term “natural-looking” so the plain and ordinary meaning should be used. App. Br. 15–16. Appellant asserts that a plain meaning of “natural” includes “existing in or produced by nature: not artificial” and “having a form or appearance found in nature.” App. Br. 16 (citing www.merriam- webster.com/dictionary/natural); Reply Br. 7 (same). Appellant argues that the term “natural-looking” means something that looks natural, rather than man-made or artificial. App. Br. 15–16; Reply Br. 7. Appellant contends that “resemble” should be given its plain meaning of “to be like or similar to.” Reply Br. 7 (citing www.merriam-webster.com/dictionary/resemble). Appeal 2013-003193 Application 12/130,715 4 We agree with the Examiner that the claims do not particularly point out and distinctly claim the subject matter that Appellant regards as the invention. We are not persuaded that a skilled artisan would understand the scope of the claimed subject matter when the claims are interpreted in light of the Specification. Even if “natural-looking” means something that looks to be existing in, or produced by, nature versus something that is artificial and man-made, as Appellant argues, the interpretation of what looks natural versus artificial is largely a subjective judgment dependent on the subjective opinion of a particular person. Appellant has not identified any disclosure in the Specification of the structural or functional features of “natural-looking” landscape blocks to guide our interpretation. Appellant’s Specification discloses concave end 10 in Figure 2 as “concavity [that] can be described as a relatively small, natural-looking cavernous portion of the formed rock shape.” Spec. 6, ll. 25–26, Fig. 2. Appellant’s Specification also discloses that the convexity of convex ends 28, 32, 36 in Figures 4–6 is “configured to resemble a natural part of the decorative stone appearance” (id. at 9, ll. 6–9) and convex end 44 of block 2 in Figure 7 “can be described as a relatively small, natural-looking bulbous extension of the formed rock shape, or as a naturally sloped extension of the rock shape” (id. at 9, ll. 24–25). See also Spec. 10, ll. 16–19 (“the portion of each end dedicated to the convexity or concavity, meaning the portion of each end having the cavernous shape or naturally and rounded extension, can include the majority of the end’s surface, or can occupy only a portion of the surface of the respective end.”) and 28–29 (“the joining portions of each block being configured to resemble natural portions of decorative rock”). However, independent claims 1 and 17–20 recite a landscape edging block with “a top and sides configured to Appeal 2013-003193 Application 12/130,715 5 resemble natural-looking decorative stone(s).” Appellant has not identified any disclosure in the Specification of particular shapes, sizes, proportions, or other features of a natural-looking stone. The use of “resemble” reduces the clarity further. It is unclear if the claims cover a landscape edging block whose top and sides are “natural-looking”, or only landscape edging blocks whose tops and sides appear to be similar to or like natural-looking stone, or both. See Reply Br. 7 (the term “resemble” is defined as “to be like or similar to”). The term “natural-looking” could mean something that appears to be natural so “resemble natural-looking” further muddies the waters by implying that the claims cover something that appears to be like or similar to something that appears to be natural stone. The term “decorative” increases the indefiniteness of this limitation further because Appellant’s Specification discloses that the landscape edging blocks of the invention “are configured to visibly resemble decorative stone” and the “top and sides [are] configured to resemble decorative stone.” Spec. 6, ll. 5–6 and 13–15; see also Spec. 7, ll. 24–27 (“[t]he block can be formed of a variety of materials, as any material capable of being formed into a shaped structure having a top and sides configured to resemble decorative stone in shape, and further including a convex end and a concave end”); Spec. 8, ll. 7–9 (“In one aspect, the blocks will better resemble decorative stone if the top and sides are colored to match decorative stone. As such, in one aspect, the sides and top of the block can include decorative coloring.”), Spec. 8, l. 26 to Spec. 9, l. 2 (“FIG. 6 illustrates a block configured to resemble a line of decorative stones . . . . As the decorative stone is an appearance and is formed, any number of configurations can be formed of the blocks to resemble decorative stone. The embodiments of FIGs. 5–6 Appeal 2013-003193 Application 12/130,715 6 show decorative stone, such as a cobblestone appearance, configured to resemble the stones mortared together.”). These disclosures do not discuss features of natural-looking stones in relation to decorative stones so that it is unclear if Appellant claims natural-looking stones that also are decorative in appearance in some unspecified manner, or decorative stones that resemble natural looking, or stones that have natural and decorative-looking features. See Spec. 10, ll. 28–29 (“the joining portions of each block being configured to resemble natural portions of decorative rock”). Thus, what is decorative depends solely on the unrestrained, subjective opinion of a particular person practicing the invention because the Specification does not identify features that are “decorative.” It is unclear whether decorative features are natural- looking, or whether they may appear to be artificial (i.e., unnatural-looking). In sum, it is unclear what makes a stone “natural-looking” or “decorative” and how these terms interrelate and define the claimed subject matter. 1 We sustain the rejection of claims 1–6 and 8–20 as indefinite. To the extent that our decision could be interpreted as going beyond the thrust of the Examiner’s rejection, we denominate our affirmance as a New Ground of Rejection to afford Appellant an opportunity to respond. Prior Art Rejections of Claims 1–6 and 8–20 Because we determine that claims 1–6 and 8–20 are indefinite, we reverse pro forma the prior art rejections of claims 1–6 and 8–20. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (determinations of obviousness cannot be made for indefinite claims). 1 To the extent that Appellant relies on “natural-looking” or “decorative” features that are ornamental in nature, such features cannot be relied upon for patentability. See In re Seid, 161 F.2d 229, 231 (CCPA 1947). Appeal 2013-003193 Application 12/130,715 7 DECISION We AFFIRM the rejections of claims 1–6 and 8–20 as indefinite. We REVERSE the prior art rejections of claims 1–6 and 8–20. For the reasons provided supra, we enter NEW GROUNDS OF REJECTION of: Claims 1–6 and 8–20 under 35 U.S.C. § 112, second paragraph. Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides that “Appellant may file a single request for rehearing within two months from the date of the original decision of the Board.” In addition to affirming the Examiner's rejection of one or more claims, this decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner.… (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record.… 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; 37 C.F.R. § 41.50(b)