Ex Parte Walters

Patent Trial and Appeal Board

Aug 21, 2017

12966217 (P.T.A.B. Aug. 21, 2017)

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.
21534-0006-Cl 8325
EXAMINER
SAFAVI, MICHAEL
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
12/966,217 12/13/2010 Marshall Gilbert WALTERS
26587 7590 08/21/2017
MCNEES WALLACE & NURICK LLC
100 PINE STREET
P.O. BOX 1166
HARRISBURG, PA 17108-1166
08/21/2017 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 MARSHALL GILBERT WALTERS
Appeal 2016-006745
Application 12/966,2171
Technology Center 3600
Before JAMES R. HUGHES, TERRENCE W. McMILLIN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—9, 11—16, 18, 19, and 21—23. Appellant has canceled claims 10,
17, and 20. App. Br. 2. We have jurisdiction over the remaining pending
claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies himself, Marshall Gilbert Walters, and
ARCHITECTURAL POLYMERS, INC. as the real parties in interest. App.
Br. 1.
Appeal 2016-006745
Application 12/966,217
STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention is directed to a brick
formliner apparatus. Spec. 12. According to the Specification, brick walls
may be used for decorative architectural purposes. Spec. 13. To reduce the
cost of hand building a brick wall, decorative thin bricks may be cast into
concrete wall panels. Spec. 13. Brick formliners, comprising brick
receiving recesses, may be used to cast the decorative (thin) bricks into the
concrete walls. Spec. 14. In disclosed embodiments, the depths of the
various brick receiving recesses are varied randomly in order to give the
finished product the look of having been built by hand. Spec. 1 5. Further,
according to the Specification, multiple formliners positioned together may
be necessary when casting a relatively large wall. Spec. 17. A potential
issue may arise at the joint formed by two formliners if the cementitious
material used to hold the bricks in place flows through the joints, thereby
resulting in extra labor and time to clean up the material. Spec. 17.
According to the Specification, Appellant’s brick formliner gives the
appearance that the resulting brick wall was built by hand (by varying the
depths of the recesses) and prevents the undesired flow of cementitious
material through the formliner joints. Spec. 19.
Claims 1 and 13 are representative of the subject matter on appeal and
are reproduced below with the disputed limitations emphasized in italics'.
1. A brick formliner apparatus, comprising:
a first formliner having a plurality of brick receiving recesses and
a plurality of ribs; and
a formliner joint configured to prevent cementitious materials
from flowing through the first formliner and a second formliner;
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wherein the plurality of ribs at least partially defines the plurality
of brick receiving recesses of the first formliner;
wherein the formliner joint is configured to at least partially
define a brick receiving recess formed by the first formliner and an
adjacent second formliner,
wherein the first formliner is configured for a brick to overlap
the formliner joint;
wherein the profile of the brick is the same or substantially the
same as the geometry of at least one of the brick receiving recesses
within the first formliner.
13. A formliner system, comprising:
a first formliner;
a second formliner;
a plurality of brick receiving recesses forming a pattern
extending from the first formliner to the second formliner; and
a plurality of ribs defining the plurality of brick receiving
recesses, wherein the ribs establish a formliner joint at an interface of
the first and second formliners to define at least one brick receiving
recess spanning from the first formliner to the second formliner; and
wherein the formliner joint is configured to prevent cementitious
materials from flowing through the first formliner and the second
formliner;
wherein the first formliner has a structure distinct from the
adjacent second formliner at the formliner joint and is configured for
at least one brick to overlap the formliner joint.
The Examiner’s Rejections
1. Claims 21 and 22 stand rejected under 35U.S.C. § 112, second
paragraph as being indefinite. Final Act. 2—3.
2. Claims 1—7, 9, 11, 12, 21, and 22 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Thomasson (US 4,932,182;
June 12, 1990). Final Act. 3—5.
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3. Claims 1—7, 9, 11—16, 18, 19, and 21—23 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Hoyt et al. (US 4,026,083;
May 31, 1977) (“Hoyt”). Final Act. 5-7.
4. Claims 1—9, 11—16, 18, 19, and 21—23 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Iragorri (US 3,602,476; Aug. 31,
1971). Final Act. 7-9.
5. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thomasson in view of any of Frink (US 636,200; Oct. 31,
1899); Holcomb (US 2,114,710; Apr. 19, 1938); Siek (US 3,131,514;
May 5, 1964); and Iragorri. Final Act. 10.
Issues on Appeal
1. Did the Examiner err in finding claim 21 is indefinite under
35 U.S.C. § 112, second paragraph?
2. Did the Examiner err in finding Thomasson, Hoyt, and Iragorri
each anticipate the claims on appeal?
3. Did the Examiner err in finding Thomasson, in view of Frink,
Holcomb, Siek, and Iragorri renders claim 8 obvious?
ANALYSIS2
Rejection under 35 U.S.C. § 112, second paragraph
Claim 21 recites, in relevant part, “[a] second formliner positioned
with [a] first formliner in a manner permitting the [(resulting)] formliner
2 Throughout this Decision, we have considered the Appeal Brief, filed
November 3, 2015 (“App. Br.”); the Reply Brief, filed June 24, 2016
(“Reply Br.”); the Examiner’s Answer, mailed May 4, 2016 (“Ans.”); and
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joint to prevent the cementitious materials from flowing through the first
formliner and the second formliner.”
The Examiner finds claim 21 fails under 35U.S.C. § 112, second
paragraph as being indefinite. Final Act. 2—3. In particular, the Examiner
finds the claim language “appears vague, indefinite and thus confusing.”
Final Act. 2.
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.”
Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993). “The
purpose of claims is not to explain the technology or how it works, but to
state the legal boundaries of the patent grant. A claim is not ‘indefinite’
simply because it is hard to understand when viewed without benefit of the
specification.” S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1369 (Fed. Cir.
2001). See also Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986).
Here, we agree with Appellant that, when read in light of the
Specification, the claim language is sufficiently definite. In particular,
Appellant’s Figures 11 and 12 illustrate the positioning of two formliners
(400, 405) to create a formliner joint (495) and aligned such that half-brick
voids (425, 430) create a brick receiving recess. Additionally, at the
formliner joint, transverse rib (490) at least partially defines a brick
receiving recess in combination with the full-brick void (420). See Spec.
1174—79. Further, we agree with Appellant that the Specification
sufficiently describes the structure of the ribs that form the brick receiving
the Final Office Action, mailed June 5, 2015 (“Final Act.”), from which this
Appeal is taken.
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recesses such that when a brick is inserted into the brick receiving recess,
cementitious material is prevented from flowing through the first and second
formliners. See, e.g., Spec, 38, 76, 78.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 21 and dependent claim 22 under 35 U.S.C. § 112,
second paragraph as being indefinite.
Rejection under 35 U.S.C. § 102(b) — Thomasson
Appellant contends the Examiner erred in finding Thomasson
discloses, inter alia, a brick receiving recess, as recited in claim 1. App.
Br. 4—6; Reply Br. 1—2. Appellant argues the recesses of the underlayment
device of Thomasson is configured to receive a cement-based grout fill, not
a brick. App. Br. 4—5 (citing Thomasson, col. 1,11. 9-13, col. 2,11. 33, 67—
68, Fig. 4). Appellant additionally contends claim 1 requires the formliner
joint, between a first and second formliner, is configured to at least partially
define a brick receiving recess and prevent cementitious materials from
flowing through the first and second formliners. App. Br. 4—8. Again,
Appellant argues Thomasson does not prevent the flow of cementitious
material, but rather is intended to receive a cement-based grout fill. App.
Br. 6-8.
We agree with Appellant that Thomasson does not disclose a
formliner comprising brick receiving recesses, as recited in claim 1. Rather,
Thomasson discloses a device that can be affixed to a floor and “which can
receive a grout material in spread form.” Thomasson, col. 1,11. 54—55.
Thomasson further describes the operation of the invention to include
receiving a cement based grout material onto and into the grid openings
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within the device. Thomasson, col. 2,1. 67—col. 3,1. 1. Although the grid
openings in Thomasson may accommodate a brick, there is no disclosure in
Thomasson regarding the use of a brick instead of a cement based grout fill.
Additionally, the Examiner does not provide sufficient persuasive evidence
or explanation to support such a finding. See Ans. 11—13.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). Additionally, to anticipate, a prior art reference must
disclose more than “multiple, distinct teachings that the artisan might
somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); see also In re Arkley,
455 F.2d 586, 587 (CCPA 1972) (“[T]he [prior art] reference must clearly
and unequivocally disclose the claimed [invention] or direct those skilled in
the art to the [invention] without any need for picking, choosing, and
combining various disclosures not directly related to each other by the
teachings of the cited reference.”).
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s rejection of independent
claim 1 as being anticipated by Thomasson. For similar reasons, we do not
sustain the Examiner’s rejection of independent claim 21, which recites
similar limitations. Additionally, we do not sustain the Examiner’s rejection
of claims 2—7, 9, 11, 12, and 22, which depend therefrom, as being
anticipated by Thomasson.
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Rejection under 35 U.S.C. § 102(b) —Hoyt
Appellant contends Hoyt fails to disclose a formliner joint configured
to at least partially define a brick receiving recess formed by a first formliner
and a second (adjacent) formliner. App. Br. 14—15; Reply Br. 2. In
particular, Appellant argues the modules of Hoyt overlap at the rim with an
adjacent module so that there is no module joint. App. Br. 14. Further,
Appellant argues, even if the overlapping rims were found to disclose a
formliner joint, the overlapping module rims do not partially define a brick
receiving recess formed by the adjacent modules. App. Br. 14.
Hoyt is directed to a brickwork form, wherein “[t]he forms comprise
tray-like modules, containing a network of grids which create brick-shaped
voids arranged in commonly used brick patterns.” Hoyt, Abstract. Hoyt
further describes a tray-like bricklaying module containing brickshaped
voids defined by a grid network and wherein “[ejach module also contains
interlocking means to permit a plurality of the units to be joined together.”
Hoyt, col. 2,11. 10-13, 19-22. Hoyt discloses providing cut-outs on the rim
of the module for interlocking the modules. Hoyt, col. 3,11. 17—18. Figure 4
of Hoyt is illustrative and is reproduced below:
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FIG.4
Figure 4 of Hoyt illustrates a “running bond pattern” module. Hoyt,
col. 2,11. 30-40. Hoyt further describes the module of Figure 4 as the rim
(31) and grids (32 and 33) (i.e., ribs) “are arranged to define nine full size
brick voids 35 and six half-length brick voids 36.” Hoyt, col. 4,11. 22—24.
Additionally, Hoyt describes the rim (31) “includes a cut-out 37 on one side
for overlapping a grid 33 of another module and five cut-outs 38 on a
contiguous perpendicular side to overlap rim 31. Rim 31 also includes six
large cut-outs 39, three on each end, to permit a single brick split to overlap
two modules.” Hoyt, col. 4, 38-43. Still further, Hoyt describes the module
rims “are slightly wider on the edges containing cut-outs than those on the
cut-out free edges.” Hoyt, col. 4,11. 59-63. Hoyt discloses the difference in
the edges allows for easier connection between modules and provides a
visual distinction for the installer. Hoyt, col. 4,11. 63—68.
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As an initial matter, we agree with the Examiner that Appellant has
not persuasively rebutted the Examiner’s finding that the assembly of Hoyt’s
modules establishes a joint. Ans. 13.
When construing claim terminology during prosecution before the
Office, claims are to be given their broadest reasonable interpretation
consistent with the Specification, reading claim language in light of the
Specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
We are mindful, however, that limitations are not to be read into the claims
from the Specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993). We presume that claim terms have their ordinary and customary
meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007) (“The ordinary and customary meaning is the meaning that the term
would have to a person of ordinary skill in the art in question.”) (internal
quotation marks omitted).
Appellant has not acted as his own lexicographer to define the term
joint different from its ordinary and customary meaning. See Spec. 17
(“The joints between such formliners are often simply planar joints butted
next to one another.”), 172 (“When two formliners 400, 405 are assembled
to lay side by side, a joint 495 is present between the two formliners.”), see
also Figs. 11, 12. The exemplary descriptions in the Specification are
consistent with the plain and ordinary meaning of a joint—an area at which
two ends, surfaces, or edges are attached or joined. Accordingly, we agree
with the Examiner that Hoyt discloses a joint is formed when
interconnecting the bricklaying modules together.
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Further, we disagree with Appellant that Hoyt fails to disclose the
formliner joint is configured to at least partially define a brick receiving
recess formed by the first and second (adjacent) formliners. See App.
Br. 14. As the Examiner finds, Hoyt describes a brick may be inserted into
the void created by two half-brick voids of two modules positioned together.
See Hoyt, col. 4,11. 38-44, Fig. 4; Final Act. 5. We agree the broadly
claimed “formliner joint is configured to at least partially define a brick
receiving recess” limitation is met by this disclosure of Hoyt. Further, we
note the formliner joint would also be configured to at least partially define a
brick receiving recess for the full brick voids. See Hoyt, Fig. 4 (35). In
other words, we find the resulting formliner joint would at least partially
define the full brick receiving recesses on either side of the formliner joint
(i.e., the formliner joint serves as a transverse rib).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1 as being anticipated by Hoyt. Additionally, we sustain the
Examiner’s rejection of claims 2—7, 9, 11, 12, and 23, which depend
therefrom and were not argued separately. App. Br. 15.
Independent claim 13 recites, in part, “wherein the first formliner has
a structure distinct from the adjacent second formliner at the formliner
joint.” Appellant challenges the Examiner’s finding that Hoyt discloses a
distinct structure between the first and second formliners at the formliner
joint. App. Br. 15—16. Appellant’s argument, however, is directed to the
Examiner’s findings regarding Thomasson, not Hoyt. See App. Br. 15
(quoting Final Act. 5). Thus, we are unpersuaded by Appellant’s argument
as it is not responsive to the Examiner’s rejection.
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Further, we agree with the Examiner’s finding that Hoyt discloses the
first formliner has a structure distinct from the adjacent second formliner at
the formliner joint as provided by the different structure between opposite
lateral sides and opposite transverse sides. Final Act. 6 (see Hoyt, Fig. 4);
see also Ans. 13—14. Further, Hoyt expressly discloses the sides of the
module that has cut-outs are wider (i.e., has a different structure) than the
opposite sides that do not have cut-outs. See Hoyt, col. 4,11. 59—63.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 13 as being anticipated by Hoyt. Additionally, we sustain the
Examiner’s rejection of claims 14—16, 18, and 19, which depend therefrom
and were not argued separately. App. Br. 16.
Regarding independent claim 21, Appellant advances similar
arguments to those presented with respect to claim 13. As discussed supra,
we find these arguments unpersuasive of Examiner error. Accordingly, we
sustain the Examiner’s rejection of independent claim 21 as being
anticipated by Hoyt. Additionally, we sustain the Examiner’s rejection of
claim 22, which depends therefrom and was not argued separately. See App.
Br. 18.
Rejection under 35 U.S.C. § 102(b) —Iragorri
Appellant argues Iragorri discloses templates (i.e., formliners) that
merely abut and that no joint is formed between the templates, as required
by claim 1. App. Br. 19; Reply Br. 2—3. Further, Appellant argues the
abutment of the templates in Iragorri does not define any of the brick
receiving recesses. App. Br. 19.
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As an initial matter, we disagree with Appellant’s argument that the
abutment of templates does not form a joint. We note Iragorri’s abutting of
templates is similar to Appellant’s embodiment illustrated in Figures 11 and
12 wherein a first formliner (400) abuts a second formliner (405) to create
formliner joint (495). See, e.g., Fig. 12; see also Spec. 1 81 (describing the
formliners as “butted next to one another during use”).
The Examiner finds, inter alia, Iragorri discloses a brick formliner
apparatus having a plurality of full and half brick receiving recesses. Final
Act. 7—8 (citing Iragorri, Figs. 1—4). Iragorri discloses that to cast relatively
large panels, a plurality of templates are butted together. Iragorri, col. 3,
11. 3—5. Further, Iragorri discloses the templates are aligned such that mating
half-brick recesses are aligned between adjacent templates to form a full
brick receiving recess and that half-ridges abut mating half-ridges to form a
full ridge (i.e., transverse rib) at the formliner joint. See Iragorri, col. 3,
11. 5—12, see also col. 3,11. 34—38. In other words, the formliner joint is
configured to at least partially define a brick receiving recess by either
forming a full brick void or by creating a full ridge (i.e., transverse rib),
which at least partially defines the brick receiving recesses on either side of
the ridge (i.e., rib).
Thus, the Examiner finds, and we agree, Iragorri discloses a first and
second formliner template abutting each other to create a formliner joint
configured to at least partially define a brick receiving recess formed by the
first and second formliners. Ans. 16.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1 as being anticipated by Iragorri. Additionally, we sustain the
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Examiner’s rejection of claims 2—9, 11, 12, and 23, which depend therefrom
and were not argued separately. App. Br. 19.
Regarding independent claims 13 and 21, Appellant argues Iragorri
fails to disclose the first formliner has a distinct structure from the adjacent
second formliner at the formliner joint. App. Br. 19—23. In particular,
Appellant disputes the Examiner’s interpretation that the formliners need
only be separate to meet this claim limitation. App. Br. 19—23; Reply Br. 3.
In rejecting claim 13, the Examiner finds, inter alia, Iragorri discloses
separate formliners, positioned differently. Final Act. 8—9. The Examiner
explains the claimed limitation of a first formliner having a structure distinct
from the second formliner at the formliner joint is met by the separate,
differently positioned formliners. Final Act. 9; Ans. 16.
We agree with Appellant that the Examiner erred in equating a first
formliner having a structure distinct from the second formliner at the
formliner joint with a separate, differently positioned formliner of Iragorri.
The Examiner’s interpretation reads out the structural distinction between
the two formliners at the formliner joint. Further, Iragorri discloses (unlike
Hoyt) the edges of the formliners (i.e., where a formliner joint is formed) are
symmetric on opposite transverse edges (either a half-brick void or half-
ridge) and on opposite lateral edges (half-ridge). See Iragorri, col. 3,11. 5—
11,34-41.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 13 and 21 as being anticipated by Iragorri. Additionally,
we do not sustain the Examiner’s rejection of claims 14—16, 18, 19, and 22,
which depend therefrom.
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Rejection under 35 U.S.C. § 103(a)
The Examiner finds claim 8 is unpatentable over Thomasson in view
of Frink, Holcomb, Siek, and Iragorri. Final Act. 10.
Unlike the Examiner, we do not consider the order in which prior art
is applied in a rejection to be significant. See, e.g., In re Bush 296 F.2d 491,
496 (CCPA 1961). As discussed supra, we agree with the Examiner that
Iragorri anticipates, inter alia, claim 8. Anticipation is the ultimate
determination of obviousness. In re Baxter Travenol Labs 952 F.2d 388,
391 (Fed. Cir. 1991).
Appellant argues Iragorri fails to teach or suggest a formliner joint
configured to at least partially define a brick receiving recess formed by a
first and second (adjacent) formliner. App. Br. 24—25. As discussed supra,
we find Appellant’s arguments unpersuasive of Examiner error.
Accordingly, we sustain the Examiner’s rejection of claim 8.
DECISION
We reverse the Examiner’s decision rejecting claims 21 and 22 under
35 U.S.C. § 112, second paragraph.
We reverse the Examiner’s decision rejecting claims 1—7, 9, 11, 12,
21, and 22 under 35 U.S.C. § 102(b) as being anticipated by Thomasson.
We affirm the Examiner’s decision rejecting claims 1—7, 9, 11—16, 18,
19, and 21—23 under 35 U.S.C. § 102(b) as being anticipated by Hoyt.
We affirm the Examiner’s decision rejecting claims 1—9, 11, 12, and
23 under 35 U.S.C. § 102(b) as being anticipated by Iragorri.
We reverse the Examiner’s decision rejecting claims 13—16, 18, 19,
21, and 22 under 35 U.S.C. § 102(b) as being anticipated by Iragorri.
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We affirm the Examiner’s decision rejecting claim 8 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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