Ex Parte Nasvik et al

Patent Trial and Appeal Board

Jan 8, 2013

11655014 (P.T.A.B. Jan. 8, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/655,014 01/18/2007 Jonathan Nasvik N339.12-0001 9666
164 7590 01/09/2013
KINNEY & LANGE, P.A.
THE KINNEY & LANGE BUILDING
312 SOUTH THIRD STREET
MINNEAPOLIS, MN 55415-1002
EXAMINER
RIVERA, JOSHEL
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
01/09/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JONATHAN NASVIK and PAUL C. NASVIK
____________________

Appeal 2011-010536
Application 11/655,014
Technology Center 1700
____________________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and MARK NAGUMO,
Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 8, 10-15, and 21-29 under 35 U.S.C. § 103(a) as
obvious over Kaitanjian1 in view of Balogh2. We have jurisdiction under 35
U.S.C. § 6(b).

1 Kaitanjian, US 5,487,656 patented Jan. 30, 1996.
2 Balogh, Guide to Buying Stamps and Skins, at
www.concretesherpa.com/stampsandskins, Dec. 28, 2005.
Appeal 2011-010536
Application 11/655,014

2
For the reasons articulated in the Briefs, we REVERSE. We add the
following for emphasis only.
OPINION
The claims are directed to a method of creating a pattern in concrete
by placing a first pattern mat in a first position, aligning a second alignment
mark of a second pattern mat with the first alignment mark, stamping the
pattern mats into the concrete and removing the mats (see Claims 8, 21, and
29 at Br. 19-23). The claims require that the mats include a feathered
portion, such as a feathered border, surrounding at least the corners of the
center portion of the mats (id.). Alignment of the second alignment mark
with the first alignment mark causes the feathered portions of the mats to
overlap and the design stamps of the mats to align (id.).
The Examiner’s rejection is based upon the finding that Kaitanjian’s
legs 44a-d are alignment marks and further on the finding that Balogh
provides a suggestion to modify Kaitanjian’s mat with the feathered edge of
Balogh (Ans. 5-6).
We agree with Appellants that Balogh fails to suggest combining the
feathered edges of the texturing skins of Balogh with the rigid-type mat of
the type taught by Kaitanjian in a way that would have resulted in the
claimed invention, particularly the required method of aligning alignment
marks. Balogh, in fact, indicates that rigid mats and texturing skins were
considered different tools having different uses in the concrete stamping art
(Balogh, pp. 3-4). Rigid mats, such as the mat of Kaitanjian, are used to
imprint the majority of the concrete with both texture and grout lines
(Balogh, p. 3; Kaitanjian, col. 1, ll. 27-56; col. 3, l. 43 to col. 4, l. 18; Figs.
Appeal 2011-010536
Application 11/655,014

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7-9). But rigid mats cannot be used at the edges where the rigid mat will
overlap the edges of the concrete form because the form will not allow the
rigid mat to be depressed into the concrete at that location (Balogh, p. 4). So
at the edges near the form, the ordinary artisan uses the more flexible
texturing skins to imprint the concrete with texture (id.). The Examiner’s
rationale for combining the references recognizes the different uses for the
rigid mat and flexible mat (Ans. 6), but the rationale does not supply a
convincing reason for modifying the border of the rigid mat with the
feathered edges of the flexible skin. The Examiner has not provided
convincing evidence showing that those of ordinary skill in the art
recognized that feathered edges would have been useful on the rigid stamps.
Moreover, even if the Examiner had articulated a sufficient reason for
making the combination, there is no teaching or suggestion of aligning a
second alignment mark located on the top of the second pattern with a first
alignment mark on the top surface of the first pattern mat so the feathered
portions overlap. The legs 44a-d of Kaitanjian that the Examiner finds are
alignment marks (Ans. 5) define a border 42 of the mat (Kaitanjian, col. 3, ll.
59-61; Fig. 8). On the bottom side of the mat, legs 44a-d define grout lines
50, but it is not clear what alignment mark would remain on the top between
the center portion and the feather edge when the feather edge of Balogh was
added to border 42 of Kaitanjian. The prior art does not suggest including a
mark on the top surface in the required location.
The Examiner appears to give no weight to the evidence provided in
the Declaration (App. A of Br.; argued at Br. 14 and 17) because it only
discusses the actions of one contractor and does not indicate that all
Appeal 2011-010536
Application 11/655,014

4
contractors skilled in the art would not have found the method obvious (Ans.
23). However, the Declaration presents factual evidence regarding the skill
and knowledge of the Declarant as well as of that contractor and the actions
of the contractor (Decl. p. 1, ¶ 2 and p. 5). This evidence deserves at least
some weight and should have been weighed with the other evidence of
record. Cf. In re Alton, 76 F.3d 1168, 1173-74 (Fed. Cir. 1996) (holding as
error the failure to consider declaration evidence concerning questions of
fact, and the summary dismissal, without adequate explanation, of the
declaration as rebuttal evidence.). The Declaration need not prove that all
contractors skilled in the art would have not found the method obvious.
CONCLUSION
We do not sustain the Examiner’s rejection.
DECISION
The Examiner’s decision is reversed.

REVERSED

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