Ex Parte Robinson

Patent Trial and Appeal Board

Nov 13, 2012

10950141 (P.T.A.B. Nov. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/950,141 09/25/2004 Michael M. Robinson ROB100US 4954
35083 7590 11/14/2012
CHARLES D. GAVRILOVICH, JR.,
GAVRILOVICH, DODD & LINDSEY, LLP
985 PASEO LA CRESTA, SUITE B
CHULA VISTA, CA 91910-6729
EXAMINER
TRIGGS, ANDREW J
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
11/14/2012 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 MICHAEL M. ROBINSON
____________

Appeal 2010-006952
Application 10/950,141
Technology Center 3600
____________

Before JOHN C. KERINS, MICHAEL C. ASTORINO, 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 rejection of claims
1-7, 10-21, 24, 36, 37, 39-41, 46-49, 52, and 54. App. Br. 5.1 Claims 8, 9,
22, 23, 25-35, 38, 42-45, 50, 51, and 53 are cancelled. Id. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a
NEW GROUND OF REJECTION of claims 12-14, 47, and 52 pursuant to
our authority under 37 C.F.R. § 41.50(b).

1 Refers to Appeal Brief filed April 8, 2010.
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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter on appeal:
1. A wall block comprising:
a frame having a first vertical side and a second
vertical side opposite the first vertical side;
a first finished wall material layer secured to the
first vertical side and comprising a section of planar interior
wall material; and
a second finished wall material layer secured to the
second vertical side, the wall block having a top configured to
support at least one other wall block.

REJECTIONS
Appellant appeals the following grounds of rejection set forth in the
Final Rejection that was mailed September 15, 20082 (“Final Rej.”):
Claims 1, 7-9, 15-20, 36-38, 45, 46, 53, and 54 were rejected under 35
U.S.C. § 102(b) as anticipated by Cahill (US 1,950,397; iss. Mar. 13, 1934).3
Final Rej. 2; Ans. 3.
Claims 2-6, 10-14, 21-23, 39-44, and 47-52 were rejected under 35
U.S.C. § 103(a) as being unpatentable over Cahill.4 Final Rej. 7; Ans. 8.

2 Appellant acknowledges that claim 24 is rejected under 35 U.S.C. § 103(a)
as unpatentable over Cahill and Wolfson (US 5,375,384; iss. Dec. 27, 1994)
but does not list this rejection among the grounds of rejection to be reviewed
on appeal and presents no arguments for this rejection. Thus, we summarily
sustain this rejection. See Manual of Patent Examining Procedure (MPEP)
§ 1205.02 (8th Ed., Rev. 9, Jul. 2012).
3 Appellant appeals only the rejection of claims 1, 7, 15-20, 36, 37, 46, and
54 as anticipated by Cahill because claims 8, 9, 38, 45, and 53 are cancelled.
See App. Br. 5.
4 Appellant appeals the rejection of claims 3-6, 10-14, 21, 39-41, 47-49, and
52 as unpatentable over Cahill because claims 22, 23, 42-44, 50, and 51 are
cancelled. App. Br. 5. Appellant also presents argument for the rejection of
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ANALYSIS
Claims 1, 7, 15-20, 36, 37, 46, and 54 as anticipated by Cahill
Claim 1
The Examiner found that Cahill discloses a wall block with a frame 1
formed of wood (p. 1, ll. 66-68) having a first vertical side and an opposite
second vertical side (fig. 1). Ans. 3. The Examiner also found that Cahill
discloses a first finished wall material layer on the first vertical side and a
second finished wall material layer on the second vertical side that may be
cement or concrete (p. 1, ll. 94-95). Id. The Examiner further found that the
cement or concrete layer 8 is poured into a mold around the frame 1 to form
a planar interior wall material as shown in Figure 3 and reasoned that such
cement or concrete surfaces are considered to be finished layers, for
example, in forming interior walls in buildings such as college dorm rooms.
Ans. 16-17. The Examiner also found that Cahill teaches that a plaster layer
may be secured to the frame 1 via mesh and an additional layer of concrete
20 of a different color or texture may be secured to the frame by the concrete
to create a block with a finished face of suitable color, finish, or texture.
Ans. 17 (citing p. 2, ll. 28-35), 18-19.
Appellant argues that Cahill does not disclose first or second finished
wall material layers secured to the first and second vertical side of the frame.
App. Br. 16, 19. Appellant argues that concrete 8 is not “a finished wall
material” because Cahill suggests that other materials should be applied to
concrete 8 such as a concrete layer 20 of another texture or color or screens
or mesh “for the purpose of receiving and holding the usual plaster.” App.

claim 2 as unpatentable over Cahill (see App. Br. 25-26) so we review the
rejection of claim 2 in view of those arguments.
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Br. 16-17 (citing p. 2, ll. 19-27). Appellant also argues that the Examiner
failed to cite documentary evidence to support the finding that buildings
such as college dorm rooms use concrete blocks to form a finished wall and
even if the Examiner had provided such evidence, that fact would not
establish that concrete is a “finished wall material layer.” Reply Br. 2.
The Examiner’s finding that Cahill discloses first and second finished
wall layers is supported by a preponderance of evidence. Cahill discloses
that cement or concrete 8 is poured into a mold over frame 1 and “a finished
block 9 is formed” with the appearance of a solid block. P. 1, ll. 84-101;
figs. 1, 3, 4. If desired, a cement or concrete layer 20 of a different color or
texture may be secured to the frame 1 by cement or concrete 8 when the wall
block 9 is formed (p. 2, ll. 28-35; fig. 3) to provide a different finished wall
layer. If desired, a plaster layer can be secured to the frame and concrete 8
by mesh or screens and wooden plugs 18. P. 2, ll. 18-27. Or, wall block 9
can be used with just the finished concrete or cement layer 8. See figs. 1, 6.
Appellant also argues that concrete 8 is not a “planar interior wall
material” because it is poured around the entire frame 1 to form a continuous
piece of concrete with multiple sides that form a block that is not planar and
“concrete 8 is not a planar interior wall material.” App. Br. 17 (emphasis in
original); Reply Br. 2-3. Appellant asserts that planar interior wall materials
are solid sheets of material such as drywall, gypsum board, wood paneling,
and the like that are attached to a wall and do not include plaster which
hardens after applied to a wall. App. Br. 18-19 (citing Spec., para. [0022]).
These arguments are not persuasive because Cahill discloses that concrete or
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cement layer 8 is a finished layer as discussed supra and forms planar5
layers 8 that cover each surface of the frame 1 including the vertical sides.
Figs. 1-3. The fact that concrete layer 8 forms planar layers on other sides of
the block does not negate the fact that concrete layer 8 forms planar layers
on opposing vertical sides of wall block 9. Fig. 1. The Examiner’s finding
that concrete or cement layers 8, 20 are planar interior wall materials is
within the broadest reasonable interpretation of that term and consistent with
Appellant’s Specification, which discloses that “interior material layer 106
consists of any material suitable for use on the inside of a wall of a building”
and “[i]n the exemplary embodiment, the interior material layer 106 is a
section of planar material with adequate durability, moisture, and thermal
characteristics in accordance with accepted construction practices.” Spec. 4,
para. [0022]. We decline to limit this term to exemplary materials in
Appellant’s Specification, particularly when those materials are recited in
claim 2, which depends from claim 1. See Phillips v. AWH Corp., 415 F.3d
1303, 1315 (Fed. Cir. 2005) (en banc) (the presence of a dependent claim
adding a particular limitation creates a presumption that the limitation is not
present in the independent claim); Liebel-Flarsheim Co. v. Medrad, Inc., 358
F.3d 898, 910 (Fed. Cir. 2004) (doctrine of claim differentiation is at its
strongest where an Appellant wants to read a feature from a dependent claim
into a term in an independent claim).
Appellant also argues that the plaster layer is secured to the concrete 8
and not to the frame 1 as called for in claim 1. App. Br. 18. We agree with

5 An ordinary, customary meaning of “planar” includes “of, relating to, or
lying in a plane; two-dimensional in quality.” See MERRIAM WEBSTER’S
COLLEGIATE® DICTIONARY (11th ed. 2005).
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the Examiner that the plaster layer is secured to the frame 1 because it is
affixed to screens or mesh that are secured to the frame 1 by the concrete 8
and wooden plugs 18. Ans. 3, 17; p. 2, ll. 18-27; see figs. 1, 5.
As such, we sustain the rejection of claim 1.
Claim 7
Claim 7 depends from claim 1 and calls for the second finished wall
material layer to comprise a second section of planar interior wall material.
The Examiner found that Cahill discloses that a plaster layer may be secured
to one side of the frame 1, a cement or concrete layer 8 may be placed on
both vertical sides, or an additional cement layer 20 may be placed on one
vertical side and each of these layers is a planar interior wall material. Ans.
4, 16-19. Appellant argues that even if the plaster can be considered an
interior wall material layer, Cahill only applies plaster to one side of a wall
block using screens or mesh affixed to wooden plugs 18 as shown in Figures
3 and 6. App. Br. 19-20 (citing p. 2, ll. 24-25).
As discussed supra for claim 1, Cahill discloses that first and second
finished layers are formed of a cement or concrete planar layer 8 or a cement
layer 20 can form a finished layer or plaster can form a finished layer. Each
of these layers can be considered an interior wall material as discussed supra
for claim 1. See Ans. 4, 16-19. We sustain the rejection of claim 7.
Claims 15-19
Appellant argues that claims 15-19 are allowable because they depend
from claim 1. App. Br. 23. Because we sustain the rejection of claim 1, this
argument is not persuasive and we sustain the rejection of claims 15-19.
Claim 20
Independent claim 20 recites an exterior wall block comprising a
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hollow rectangular wooden frame, a planar interior wall material secured to
an interior side of the wooden frame, and an exterior wall material layer
secured to an exterior side of the wooden frame. The Examiner found that
Cahill discloses such a wall block with top and bottom lateral members (fig.
5) and cement or concrete layers 8, 20 that form interior or exterior wall
materials and a layer of plaster may be applied over the concrete layer 8 to
form a planar interior wall material. Ans. 5-6, 16-19. The Examiner found
that concrete layer 20 and plaster layer are secured to the frame 1. Ans. 17.
Appellant argues that Cahill does not disclose an interior wall material
layer that is “secured to an interior side of the wooden frame” because Cahill
discloses that plaster is applied after the wall is formed of concrete. App.
Br. 20. Appellant asserts that Cahill does not disclose a top lateral member
configured to interface with a bottom lateral member of at least one other
wall block. App. Br. 20-21. As discussed supra with respect to claim 1, we
agree with the Examiner that the concrete layers 8, 20 and plaster layer are
planar interior wall material layers suitable for use on the inside wall of a
building. See Spec. 4, para. [0022]; Ans. 16-18. The concrete layer 20 is
secured to the frame 1 by being placed against a side or bottom of the mold
before the concrete or cement 8 is poured into the mold and around frame 1.
P. 1, ll. 91-99; p. 2, ll. 28-35; fig. 3. A plaster layer is secured to the frame 1
by being applied to mesh that is secured to the frame 1 by wooden plugs 18
and the concrete layer 8 (p. 2, ll. 19-27; figs. 1, 3, 5). Cahill also discloses a
wooden frame with top and bottom lateral members having a shape and
structure that interface as shown in Figure 6. Ans. 18. This interpretation is
consistent with the plain language of claim 20 and Appellant’s Specification,
which discloses lateral members 114, 116 that interface through an adhesive
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layer 422 on the surfaces of the members. Spec. 9, para. [0036]; figs. 4A,
5A. Edge interfaces 412, 414 and a silicone sealant bead 416 or expandable
foam 428 also may be applied between the members 114, 116. Spec. 8,
para. [0034]; figs. 4A, 5A. As such, we sustain the rejection of claim 20.
Claims 36 and 37
Independent claim 36 recites a wall block comprising first and second
opposite vertical sides, a first finished wall material layer of a planar interior
wall material secured to the first vertical side and a second finished wall
material layer secured to the second vertical side, and at least one of the first
and second finished wall material secured to the frame before the wall block
is secured to other wall blocks to form a wall. Dependent claim 37 calls for
both the first and second finished wall material layers to be secured before
the wall block is secured to the other wall blocks. The Examiner found that
Cahill discloses such a wall block with opposing vertical sides and concrete
layers 8, 20 formed on both vertical sides before a block wall is assembled.
Ans. 6 (citing fig. 3), 16-19. Appellant argues that Cahill does not disclose
finished wall materials secured to a frame or a planar interior wall material
for the reason discussed above. App. Br. 21-22. Appellant also argues that
Cahill does not disclose a second finished wall material or securing a first or
a second finished wall material to a frame before wall blocks are formed into
a wall because plaster is added to wall blocks after forming a wall. Id.
As discussed supra for claim 1, Cahill discloses concrete layers 8, 20
that form finished wall layers of planar interior material. Concrete layers 8,
20 are secured to the frame 1 before the wall blocks 9 are secured to other
wall blocks 9 to form a wall. P. 1, ll. 91-99; p. 2, ll. 28-35; figs. 1, 3, 5, 6;
see Ans. 16-19. As such, we sustain the rejection of claims 36 and 37.
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Claim 46
Independent claim 46 recites a wall block with a frame with first and
second vertical sides, a first finished wall material layer of a planar interior
wall material secured to the first vertical side, and a second finished wall
material layer secured to the second vertical side. The Examiner found that
Cahill discloses a wall block with concrete layers 8, 20 or a plaster layer that
are planar interior wall materials. Ans. 7 (fig. 3), 16-19. Appellant argues
that Cahill applies plaster to a wall formed of building units so at least one
vertical wall is unfinished. App. Br. 22. This argument is not persuasive
because concrete layers 8, 20 form finished wall layers of a planar interior
material, and any additional plaster layer can form a planar interior wall
material secured to the frame for the reasons discussed supra with respect to
claims 1 and 20. As such, we sustain the rejection of claim 46.
Claim 54
Independent claim 54 calls for a wall block comprising a frame with
opposing vertical sides, a first finished planar interior wall material layer
secured to the first vertical side before the wall block is secured within a
wall, and a second finished wall material layer secured to the second vertical
side before the wall block is secured within a wall. The Examiner found that
Cahill discloses wall blocks for forming a wall (figure 6) with finished wall
material layers of concrete 8, 20 that are secured to the vertical sides before
assembly of the blocks into a wall as shown in Figure 3. Ans. 7-8, 16-19.
Appellant argues that Cahill does not disclose a finished wall material layer
that is a planar interior wall material or that is secured to a vertical side of a
frame before the wall block is secured within the wall because the plaster is
applied to the wall blocks after a wall is formed as shown in Figure 6. App.
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Br. 22-23. These arguments do not persuade us of error in the Examiner’s
findings that Cahill discloses cement or concrete layers 8, 20 that form
finished planar interior walls for the reasons discussed supra for claims 1
and 20. See Ans. 7-8, 16-19. As such, we sustain the rejection of claim 54.
Claims 2-6, 10-14, 21, 39-41, 47-49, and 52 as unpatentable over Cahill
Claims 2, 39, and 47
Dependent claims 2, 39, and 47 call for the section of planar interior
wall material to be selected from the group consisting of drywall, gypsum
board, wood paneling, and synthetic paneling and the second finished wall
material layer to be selected from stamped concrete, stucco, planar section of
synthetic material with a simulated surface, a planar section of veneer, and a
section of siding. The Examiner found that Cahill teaches the use of a planar
interior wall material such as plaster and determined that it would have been
obvious to substitute other common types of interior wall finishes specified
in claims 2, 39, and 47 for plaster for predictable interior finishes. Ans. 9,
11-12, 13-14. The Examiner found that Cahill teaches a secondary concrete
layer 20 that has a finished face with a suitable color, finish, or texture (p. 2,
ll. 28-35) and the texture could be stamped concrete or stucco. Ans. 19.
Appellant argues that there is no evidence to suggest that the claimed
materials can be substituted for plaster, which Cahill applies to screens or
mesh that are connected to wooden plugs and the claimed materials cannot
be attached to screens or mesh, so there is no simple substitution of these
materials for plaster. App. Br. 25. This argument is not persuasive. The
Examiner proposed to substitute these materials for the plaster and mesh of
Cahill and secure these materials to the concrete layer 8 in known ways, and
the substitution would yield predictable results. Skilled artisans are persons
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of ordinary creativity, not automatons and teachings can be combined based
on design needs, market pressures, and common sense without an express
teaching, suggestion, or motivation. KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 417-22 (2007).
Appellant also argues that Cahill does not disclose the second finished
wall material layer selected from stamped concrete, stucco, a planar section
of synthetic material having a simulated surface, a planar section of veneer,
and a section of siding and it would not have been obvious to substitute such
materials in Cahill because concrete is poured into a mold around the frame
and the claimed materials cannot be poured into a mold or formed on the
mesh or screen as Cahill teaches. App. Br. 26. This argument does not
persuade us of error in the Examiner’s findings that a concrete layer 20 with
a finished face of a suitable color, finish, or texture can be secured to frame
1 (p. 2, ll. 28-35) and could be a stamped concrete or stucco finish, which
are obvious, known finishes in the art. Ans. 19.
As such, we sustain the rejection of claims 2, 39, and 47.
Claims 3, 21, 40, and 48
Dependent claims 3, 21, 40, and 48 recite that the planar interior wall
material is a planar sheet of drywall. The Examiner found that Cahill does
not disclose drywall but it would have been obvious to use drywall instead
of plaster on interior walls because drywall is well-known in the art as an
interior wall material. Ans. 9-12, 14. Appellant argues that Cahill does not
inherently disclose this feature. App. Br. 26-27. Appellant also argues that
it would not have been obvious to use drywall for the reasons discussed for
claims 2, 39, and 47. App. Br. 26. We agree with the Examiner that drywall
is a well-known interior wall material and that it would have been obvious to
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substitute drywall for the plaster of Cahill, and the substitution would yield
predictable results known in the art. As such, we sustain the rejection of
claims 3, 21, 40, and 48.

Claims 4-6
Dependent claims 4-6 recite that the interior wall material layer is a
planar sheet of gypsum board (claim 4), plywood (claim 5), and paneling
(claim 6). The Examiner determined that it would have been obvious to use
these well-known materials on an interior wall. Ans. 9-10. Appellant argues
that there is no evidence in the record that these materials can be substituted
for plaster and that it would not have been obvious to do so. App. Br. 28.
As discussed supra for claims 2, 39, and 47, it would have been obvious to
substitute such materials for plaster to yield predictable results. Appellant
has not persuaded us or error in the Examiner’s findings or conclusion of
obviousness. As such, we sustain the rejection of claims 4-6.
Claims 41 and 49
Dependent claims 41 and 49 call for the second finished wall material
layer to comprise a second section of planar interior wall material. The
Examiner found that Cahill discloses a cement or concrete layer or a plaster
layer that forms a planar interior wall material. Ans. 12, 14-15, 16-19.
Appellant argues that plaster is not an interior wall material secured to the
frame and is only applied to one side of the building unit. App. Br. 29. We
find that Cahill discloses finished material layers on both vertical sides of
frame 1 that may be cement or concrete 8, 20 or plaster secured to one side
of frame 1 and these layers are planar interior wall materials as discussed
supra for claims 1 and 20. We sustain the rejection of claims 41 and 49.
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Claims 10-14 and 52
Claims 10-14 depend from claim 8, which is cancelled. Claim 52
depends from cancelled claim 50. Claims 10-14 and 52 are indefinite as
they depend from cancelled claims and their scope cannot reasonably be
determined. We enter a NEW GROUND OF REJECTION of claims 10-14
and 52 under 35 U.S.C. § 112, second paragraph. We do not sustain the
rejection of these claims based on Cahill. See In re Wilson, 424 F.2d 1382,
1385 (CCPA 1970); In re Steele, 305 F.2d 859, 862-63 (CCPA 1962)
(determinations as to obviousness cannot be made for indefinite claims).
DECISION
We AFFIRM the rejections of claims 1-7, 15-21, 24, 36, 37, 39-41,
46-49, and 54 and REVERSE the rejection of claims 10-14, and 52.
As provided supra, we enter a NEW GROUND OF REJECTION:
Claims 10-14 and 52 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“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 rejections 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 grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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(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….
Should Appellant elects to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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-IN-PART; 37 C.F.R. § 41.50(b)

hh