Ex Parte Wauhop

Patent Trial and Appeal Board

Mar 29, 2017

12928273 (P.T.A.B. Mar. 29, 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.
12/928,273 12/07/2010 Billy J. Wauhop D013-6093 (DIV) 2048
40627 7590
ADAMS & WILKS
17 BATTERY PLACE
SUITE 1343
NEW YORK, NY 10004
03/29/2017 EXAMINER
BUTLER, PATRICK NEAL
ART UNIT PAPER NUMBER
1742
MAIL DATE DELIVERY MODE
03/29/2017 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 BILLY J. WAUHOP
Appeal 2016-000446
Application 12/928,273
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
BRIAN D. RANGE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 25^44 and 46 under 35 U.S.C.
§ 103(a).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is stated to be E. Dillion & Company. App. Br. 2.
Appeal 2016-000446
Application 12/837,179
Independent claim 25 is directed to a method of manufacturing
retaining wall blocks (Spec. 1) and is illustrative of the subject matter on
appeal (emphasis added to highlight key limitations in dispute):
25. A method of manufacturing retaining wall blocks,
comprising the steps:
molding a block unit comprised of two retaining wall
block structures joined together at a common interface that is at
least partly circumscribed by a split line formed during molding,
each of the retaining wall block structures having top and bottom
faces and two or more protuberances protruding outwardly from
the top face thereof;
after the molding step, forming in the molded block unit a
groove in the bottom face of each joined together retaining wall
block structure, the grooves being spaced from and not
intersecting with the common interface', and thereafter
splitting apart the molded block unit along the molded split
line to separate the two retaining wall block structures at the
common interface to obtain two individual retaining wall blocks
having grooved bottom faces.
App. Br. 23.
REFERENCES AND REJECTIONS ON APPEAL
The Examiner maintains, and Appellant appeals, the following
rejections under 35 U.S.C. § 103(a):
(a) Claims 25, 26, 29-34, 37-41, 43, 44, and 46 as unpatentable over
the combined prior art of Maguire et al. (US 5,951,210; iss. Sept. 14, 1999)
(hereinafter “Maguire”), Gravier (US 5,484,236; iss. Jan. 16, 1996), and
Jessen (US 2,984,886; iss. May 23, 1961);
(b) Claims 38 and 39, alternatively, over Maguire, Gravier, Jessen,
and Scherer et al. (US 2003/0126821 Al; publ. July 10, 2003) (hereinafter
“Scherer”);
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(c) Claims 27, 28, 35, and 36 over Maguire, Gravier, Jessen, and
Clark (US 2,835,622; iss. May 20, 1958); and
(d) Claim 42 over Maguire, Gravier, Jessen, and Johnson (US
2003/0198122 Al; publ. Oct. 23, 2003).2
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellant’s
claims is unpatentable over the applied prior art. We sustain the Examiner’s
§ 103(a) rejection essentially for the reasons set out by the Examiner in the
Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). “A person of ordinary skill is also a person
of ordinary creativity, not an automaton.” Id. at 421. Likewise, it is also
well settled that a reference stands for all of the specific teachings thereof as
well as the inferences one of ordinary skill in the art would have reasonably
2 Dependent claim 42, however, is not separately argued (see Appeal Br. 6)
because the claim limitation at issue is recited in independent claim 31. In
the absence of arguments specific to its patentability, dependent claim 42
stands or falls with claim 31 consistent with 37 C.F.R. § 41.37(c)(l)(iv).
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been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264—65
(Fed. Cir. 1992).
§103 Rejection: Maguire, Gravier, andJessen
Appellant’s principal arguments regarding independent claims 25 and
31, and dependent claims 26, 29, 30, 32—34, 37-44, and 46, are that 1) the
combination of Maguire, Gravier, and Jessen lacks grooves spaced from and
not intersecting with the common interface (see App. Br. 8—9), 2) Jessen is
non-analogous art (see App. Br. 10-11; see also Reply Br. 4—5), 3) adding
grooves after molding, in view of Jessen, constitutes impermissible hindsight
because Maguire and Gravier already teach molded grooves (see App. Br.
10-12; see also Reply Br. 2-4), 4) Jessen’s pipe grooving tool is
inapplicable to forming grooves in a block unit (see App. Br. 13; see also
Reply Br. 5), and 5) there is insufficient motivation to modify Maguire and
Gravier with Jessen (see App. Br. 12—14; see also Reply Br. 2—3, 5—6).
Appellant’s arguments are not persuasive of reversible error for the reasons
discussed below.
Appellant argues that the combination fails to disclose grooves spaced
from and not intersecting with the common interface because this feature is
lacking in Gravier. See App. Br. 8—9. As pointed out by the Examiner,
Maguire (not Gravier) discloses a groove spaced from and not intersecting
the front of a block unit. See Ans. 2. The Examiner finds, and we agree,
that the proposed combination with Maguire being modified by Gravier
results in face-to-face blocks joined at a common interface, each block
having a groove spaced from and not intersecting with the common interface
located at the fronts of the blocks. See Ans. 2—3.
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Regarding Appellant’s argument that Jessen is nonanalogous art, the
Examiner finds a) Jessen is directed to forming a groove into a molded
concrete product (see Ans. 6; see also Jessen col. 1,11. 21—45), and b) Jessen
is “reasonably] pertinent” to the particular problem with which the inventor
is involved, i.e., forming grooves into a molded concrete block unit. Ans. 6;
See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (a reference is deemed
analogous if it is (1) from the same field of endeavor as the claimed
invention, or (2) reasonably pertinent to the particular problem with which
the inventor is involved.). We note “[a] reference is reasonably pertinent if,
even though it may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
considering his problem.” Id. at 659. Appellant fails to apprise us of error
regarding the Examiner’s findings that Jessen is reasonably pertinent prior
art. Accordingly, a preponderance of the evidence establishes Jessen as
analogous art.
Appellant’s contention that the combination is based on improper
hindsight reasoning (see App. Br. 10-12; see also Reply Br. 4—6) does not
present sufficient evidence that the Examiner’s rejection is based on
knowledge gleaned only from Appellant’s disclosure, or based on
knowledge which was beyond the level of ordinary skill in the art at the time
(see In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)). Rather than
based on knowledge gleaned only from the Appellant’s disclosure, the
rejection takes into account the prior art teachings of Maguire, Gravier, and
Jessen, as well as knowledge which was within the level of ordinary skill in
the art at the time. Specifically, the Examiner’s rationale for combining is
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based on prior art teachings from Jessen, which discloses benefits of
machining grooves into a molded concrete product, i.e., to form grooves
with desired tolerances and smoother edges. See Ans. 5—7; see also Jessen
col. 1,11. 21—45. The Examiner also finds the combination was within the
knowledge of one of ordinary skill in the art at the time, and that it would
have been obvious “to form Maguire's grooves after molding as taught by
Jessen's method since it would provide a suitable means of forming a
groove” because the substitution of one known element for another yields
predictable results to one of ordinary skill in the art. Ans. 7.
In response to Appellant’s arguments that Maguire (and Gravier)
disclose grooves formed during molding rather after molding (App. Br. 12—
13), the Examiner aptly points out (see Ans. 8) that one cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references (see In re Keller, 642 F.2d 413, 426
(CCPA 1981) and In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986)). Even though Maguire (and Gravier) discloses molded grooves, the
rejection is based on the combined teachings of Maguire, Gravier, and
Jessen. See Ans. 8. The Examiner finds Jessen discloses “forming the
groove after molding-instead of forming the groove during molding” to
allow for closer tolerances and smoother edges. Id. As pointed out by
Appellant (App. Br. 7), Maguire states the blocks are preferably molded by
conventional methods, and cast generally using a conventional block
molding machine (emphasis added). See Maguire col. 3,11. 29—36 and col.
1,11. 34—35. Thus, there is no requirement that Maguire’s grooves be made
during molding. While Appellant argues that forming grooves during
molding is the industry-wide practice (presumably because forming grooves
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during molding has advantages known in the industry), this does not obviate
motivation to combine. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine”); Winner Int 7 Royalty Corp. v. Wang, 202 F.3d
1340, 1349 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at
the expense of another benefit, however, should not nullity its use as a basis
to modify the disclosure of one reference with the teachings of another.”).
Appellant’s argument that Jessen’s tool for forming annular grooves
on a pipe is inapplicable to a concrete block unit is unavailing. The rejection
is not based on a bodily incorporation of Jessen’s tool with Maguire and
Gravier; rather, the rejection determines the combined teachings of the
references would have suggested forming a groove after molding (as in
Jessen) instead of during molding (as in Maguire and Gravier) to those of
ordinary skill in the art. See Ans. 9; see also In re Keller, 642 F.2d 413, 425
(CCPA 1981) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art”); In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures”).
Appellant argues that the Examiner provides insufficient motivation to
combine Jessen with Maguire and Gravier. However, as the Examiner finds,
Jessen discloses a benefit (see Ans. 5); specifically, Jessen discloses
“improving methods of making concrete products having a groove with . . .
close tolerances” and smoother edges by forming a groove into a concrete
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product after molding rather than during. Ans. 10; see also id. at 7. As we
“take account of the inferences and creative steps that a person of ordinary
skill in the art would employ,” we find it would have been obvious to one of
ordinary skill in the art at the time the invention was made to form grooves
in a block unit after molding rather than during, based on the combined
teachings of Maguire, Gravier, and Jessen for reasons articulated by the
Examiner (see generally Ans. 4—7). KSR Int’l, 550 U.S. at 418; see also id.
at 421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton”); Ball Aerosol & Specialty Container, Inc. v. Limited Brands,
Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth
by the Supreme Court, the PTO must take account of “the inferences and
creative steps,” as well as routine steps, that an ordinary artisan would
employ). Thus, we find the Examiner has articulated a valid reasoning with
“some rational underpinning to support the legal conclusion of
obviousness.” See KSR Int’l, 550 U.S. at 418 (citingIn re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). Further, as discussed supra, we agree with the
Examiner’s finding that substituting Maguire’s method of forming grooves
during molding with Jessen’s method of forming grooves after molding
merely substitutes one known technique for groove formation for another
known method. See Ans. 7; see also KSR Int’l, 550 U.S. at 420.
With respect to claims 38 and 39, Appellant also argues modifying the
combination at beveled edges 50 of Gravier to be curved edges would not
have been obvious. See App. Br. 21; see also Reply. Br. 8. Specifically,
Appellant argues that the curved edges of the invention are not
ornamentation, but rather they serve the mechanical function of reducing
sharp edges likely to chip or crack. Id. The Examiner finds that substituting
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curved edges for beveled edges is an ornamental design change, because
beveled edges, like curved edges, lack sharp edges prone to chipping or
cracking. See Ans. 14. As further evidence that curved edges are a mere
ornamental design change, we note that Gravier itself discloses the beveled
edges 50 along the split line can be replaced with curved edges (“semi­
circle”) to provide an “aesthetically pleasant” beveled edge. See Gravier col.
7,11. 11-14.
Regarding dependent claims 32 and 33, Appellant argues none of the
references disclose molding a block unit and, “after the molding step,
simultaneously forming grooves in the bottom face of each joined together
retaining wall block structure.” App. Br. 16; see also Reply Br. 6. As noted
above, one cannot show nonobviousness by attacking references individually
when the rejection is based on a combination of references. See In re Keller,
642 F.2d at 426. As pointed out by Appellant, Maguire and Gravier already
teach forming grooves simultaneously during molding of a two block unit
structure (see App. Br. 10). Jessen teaches forming a groove at
“simultaneous abrading locations” after molding (see Ans. 10). Given these
specific teachings as well as the inferences one of ordinary skill in the art
would have reasonably been expected to draw therefrom, we find it would
have been obvious to one of ordinary skill in the art, i.e., a person of
ordinary creativity, at the time the invention was made, to form grooves
simultaneously in a block unit after molding rather than during, based on the
combined teachings of Maguire, Gravier, and Jessen. KSR Int’l, 550 U.S. at
418-421; see also In re Fritch, 972 F.2d at 1264—65.
Regarding dependent claims 43 and 44, Appellant also contends that
modifying the number of protuberances to two or four would not have been
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Application 12/837,179
obvious, because Maguire teaches a minimum of five protuberances for
sufficient interlocking. See App. Br. 17—18; see also Reply Br. 7. First, we
note that Figures 3 and 4 of Maguire (Figure 4 is reproduced below) show an
embodiment of a block unit having four protuberances.
Figure 4 of Maguire showing block units each having four protuberances.
Secondly, we agree with the Examiner that the number of
protuberances affects “interlocking” of the block units (Ans. 12; see also
Maguire col. 3,11. 1—4). The number of protuberances is therefore
recognized as a result-effective variable and modifying the number of
protuberances (e.g., to two or four protuberances) would have involved
routine skill in the art. See In re Boesch, 617 F.2d 272 (CCPA 1980)
(discovering an optimum value of a result effective variable involves only
routine skill in the art).
For the reasons set forth above, Appellant’s arguments are not
persuasive. We therefore are not apprised of Examiner error and affirm the
rejection of claims 25, 26, 29-34, 37-41, 43, 44, and 46 over Maguire,
Gravier, and Jessen.
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$103 Rejection: Maguire, Gravier, Jessen, and Scherer
For the reasons set forth above, Appellant’s arguments are not
persuasive. We therefore are not apprised of Examiner error and affirm the
rejection of claims 38 and 39 over Maguire, Gravier, Jessen, and Scherer.
$103 Rejection: Maguire, Gravier, Jessen, and Clark
Regarding dependent claims 27, 28, 35, and 36, Appellant’s principal
argument is that the combination of Maguire, Gravier, Jessen, and Clark is
improper because 1) Clark is nonanalogous art (see App. Br. 19), and 2)
neither Maguire, Gravier, nor Jessen discloses a grooving apparatus that
could simultaneously form grooves in a concrete block unit, i.e., rotating
grinding wheels (see App. Br. 20). We disagree.
Regarding Appellant’s assertion that Clark’s grooving wheel is
nonanalogous, the Examiner finds that Clark teaches shaping a groove in a
woody material using a rotating grinding wheel and further finds Clark is
analogous art. See Ans. 13; see also Clark col. 1,11. 1—2 and 11. 7—19. We
note that Clark’s wheel structure for cutting grooves in a woody material is a
familiar structure and is reasonably pertinent to the problem faced by the
inventor because it logically would have commended itself to the inventor’s
attention in considering his problem of forming grooves; for these reasons,
we agree with the Examiner that Clark is analogous prior art. See In re Clay,
966 F.2d at 658; see also Wyers v. Master Lock Co., 616 F.3d 1231, 1238
(Fed. Cir. 2010) (“The Supreme Court’s decision in KSR International Co.
v. Teleflex, Inc., 550 U.S. 398 . . . (2007), directs us to construe the scope of
analogous art broadly, stating that “familiar items may have obvious uses
beyond their primary purposes”).
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Further, Appellant’s argument that neither Maguire, Gravier, nor
Jessen discloses a grooving apparatus that could simultaneously form
grooves in a concrete block unit is unpersuasive. As pointed out by the
Examiner (see Ans. 13—14), Appellant argues the references individually
rather than what the combined teachings, particularly in light of Clark’s
disclosure, would have suggested to one of ordinary skill in the art at the
time of the invention. Here, the Examiner finds that Clark discloses a
rotating grinding wheel apparatus, and that it would have been obvious to
provide an additional grinding wheel for a multiplied effect, such as
performing simultaneous forming of two grooves. See Final Act. 11. The
preponderance of the evidence weighs in favor of the Examiner’s
obviousness determination.
For the reasons set forth above, Appellant’s arguments are not
persuasive. We affirm the rejection of claims 27, 28, 35, and 36 over
Maguire, Gravier, Jessen, and Clark.
§103 Rejection: Maguire, Gravier, Jessen, and Johnson
Claim 42 depends from claim 31 and is not separately argued by
Appellant. For the reasons set forth above with regard to claim 31,
Appellant’s arguments are not persuasive.
Accordingly, we affirm the Examiner’s prior art rejection of claim 42
under 35 U.S.C. § 103(a) for the reasons given above and presented by the
Examiner.
DECISION
The Examiner’s § 103(a) rejections are affirmed.
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TIME PERIOD FOR RESPONSE
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).
AFFIRMED
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