Ex Parte Pinto

Patent Trial and Appeal Board

Sep 17, 2014

11464282 (P.T.A.B. Sep. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MANUEL P. PINTO
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Appeal 2012-005663
Application 11/464,282
Technology Center 3600
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Before: STEFAN STAICOVICI, MICHAEL L. HOELTER, and
JAMES P. CALVE, 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 2, 4, 12–18, 22, 24, 26, 28, 29, and 32. App. Br. 2. Claims 1, 3, 5–
11, 19–21, 23, 25, 27, 30, and 31 are cancelled. Id. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
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Application 11/464,282

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CLAIMED SUBJECT MATTER
Claim 32, the sole independent claim is reproduced below.
32. A structure for use by one person or two or more people
for at least one of religious worship, conducting religious
service, prayer or meditation use, comprising:
a plurality of portable and smooth wall panels of durable
lightweight material for portability and transportability,
the wall panels configured to interconnect to form a
freestanding and portable structure that is completely
independent of any permanent structure,
the portable structure formed by the interconnected wall
panels provide a partially enclosed space,
the wall panels function as a substrate for graphically
overlaying 3-dimensional visual imagery thereby creating
functional relationship with the 3-dimensional visual imagery,
a plurality of the wall panels utilizing 3-dimensional
visual imagery that is graphically overlaid onto the entire
surface area of one side thereof depicting,
the 3-dimensional visual imagery also providing the user
or users with many art options to choose from,
at least one of the 3-dimensional visual imagery
comprising at least one of stone, wood, stucco, a frescoe [sic],
paint, tile, a mosaic, marble, a column, a corbel, a window
ledge, an alcove, art framing, a tapestry, an archway, an angel,
art, art scene, an animal, an icon or structural moldings,
at least one wall insert assembly for attaching wall inserts
comprised of 3-dimensional visual imagery overlaid onto the
entire surface of a smaller and separate wall panel, that is
removably attached to one or more of the plurality of wall
panels to provide the user or users other art options or seasonal
religious motifs,
wherein the portable and freestanding structure formed
by the plurality of interconnected wall panels and insert
assemblies form a functional relationship with the 3-
dimensional visual imagery graphically overlaid to re-create
within the partially enclosed space a landscape and ambience of
a church, temple, synagogue or meditation center, thereby
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Application 11/464,282

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drawing in the user or users’ focus and attention to the religious
worship, religious service, prayer or meditation experience,
the landscape and ambience re-created for a specific faith
or meditation community by the portable and freestanding
structure in combination with the 3-dimensional visual imagery
graphically overlaid thereon, thereby allowing its use for at
least of one of religious worship, conducting a religious service,
prayer or meditation,
wherein the 3-dimensional visual imagery overlaid on the
wall panels can be substituted to change the appearance of the
construction of the structure, and wherein the wall panels are
adapted to be disconnected.

REJECTIONS
Claims 2, 4, 18, 22, 24, 28, 29, and 32 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Goldman (US 1,619,719; iss. Mar. 1,
1927), Hague (US 1,895,659; iss. Jan. 31, 1933), and Arico (US 4,926,609;
iss. May 22, 1990).
Claims 12–17 and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goldman, Hague, Arico, and Paz (US 6,250,022 B1; iss.
June 26, 2001).
ANALYSIS
Claims 2, 4, 18, 22, 24, 28, 29, and 32 unpatentable over Goldman, Hague,
and Arico
Appellant argues claims 2, 4, 18, 22, 24, 28, 29, and 32 as a group.
App. Br. 5–11. We select claim 32 as the representative claim of the group.
37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 2, 4, 18, 22, 24, 28, and 29
stand or fall with claim 32.
The Examiner found that Goldman discloses a structure as recited in
claim 32 including at least one wall insert assembly (window members 13).
Ans. 5 (citing Figs. 2, 4, 5). In particular, the Examiner found that Goldman
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teaches a wall with an opening 3 into which different ornamental inserts are
placed to complete the display, and the window member 13 is a replica of a
window with an ornamental design that is inserted into the wall opening. Id.
at 11. The Examiner found that Goldman does not disclose inserts that are
removably attached to wall panels, but such inserts are notoriously well-
known as illustrated by Hague. Id. at 5–6. The Examiner determined that it
would have been obvious to modify Goldman to use removable inserts, as is
well-known and as taught by Hague, to provide users with more options and
decorative designs. Id.
Appellant argues that the Examiner has not provided any construction
of the limitation “wall insert assembly” and this element is described in
Appellant’s Specification to include a hook assembly 414 that interfaces
with slots 412, as shown in Figure 8, to attach visual images to the wall.
App. Br. 5–7. Appellant also argues that item 13 of Goldman is a window
member made of a composite material cutout in various configurations, but
Goldman does not disclose this element as removably attaching visual
images to a wall. Id. at 6. These arguments are not persuasive of error in
the Examiner’s finding that Goldman teaches an ornamental display
background structure with a window member 13 that can be inserted into an
opening 3 in a wall and Hague teaches the concept of removably attached
inserts. Id. at 5–6. Moreover, it is well established that limitations not
appearing in the claims cannot be relied upon for patentability. In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
Appellant asserts that the Examiner’s reason for modifying Goldman
with Hague lacks a rational underpinning. App. Br. 8–9. Appellant asserts
that there is no indication in Goldman or Hague that a skilled artisan would
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have any desire for more options and decorative designs for a wall panel and
the Examiner is relying on information from Appellant’s Specification. Id.
at 9–10. Appellant further argues that the Examiner has not shown that it is
well known to provide removable inserts. Id. at 10–11. Such arguments
appear to be holding the Examiner to the old TSM standard; such a standard
is not required. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007)
Furthermore, these arguments are not persuasive of error in the Examiner’s
determination that it would have been obvious to make Goldman’s inserts
detachable, as taught by Hague, to provide uses with more options and
designs, or the Examiner’s findings that Goldman and Hague teach the
desirability of creating different interchangeable displays and decorative
scenes, and removable scenes. Ans. 12–13 (citing Goldman, p. 1, ll. 45–52
and 55–63; Hague, p. 1, ll. 59–63).
Appellant further contends that the Examiner has not addressed the
Declaration of Dennis C. Smolarski, that it would not have been obvious to
combine Arico and Paz, or provided any evidence to rebut that Declaration.
App. Br. 11–12. This argument is not persuasive of error in the Examiner’s
determination that the Smolarski Declaration does not provide any objective
evidence of non-obviousness, but instead gives an opinion on the ultimate
conclusion of obviousness without addressing the current rejection based on
Goldman, Hague, and Arico. Ans. 13–14. We agree with the Examiner that
the Smolarski Declaration lacks a nexus to what is claimed. Id. at 14.
Weighing all the evidence anew, we find that Goldman, Hague, and Arico
render claim 32 unpatentable and Appellant’s arguments have not persuaded
us of error in the Examiner’s findings or conclusion of obviousness. We
sustain the rejection of claims 2, 4, 18, 22, 24, 28, 29, and 32.
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Claims 12–17 and 26 unpatentable over Goldman, Hague, Arico, and Paz
Appellant does not present separate argument for the patentability of
claims 12–17 and 26. See App. Br. 5 (“[C]laims 2, 4, 12–18, 22, 24, 26, 28,
and 29 stand or fall together with independent claim 32”). We summarily
affirm the rejection of claims 12–17 and 26.
DECISION
We AFFIRM the rejections of claims 2, 4, 12–18, 22, 24, 26, 28, 29,
and 32.
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

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