Ex Parte WauhopDownload PDFPatent Trial and Appeal BoardMar 29, 201712928273 (P.T.A.B. Mar. 29, 2017) Copy Citation 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”); 2 Appeal 2016-000446 Application 12/837,179 (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). 3 Appeal 2016-000446 Application 12/837,179 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. 4 Appeal 2016-000446 Application 12/837,179 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 5 Appeal 2016-000446 Application 12/837,179 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 6 Appeal 2016-000446 Application 12/837,179 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 7 Appeal 2016-000446 Application 12/837,179 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 8 Appeal 2016-000446 Application 12/837,179 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 9 Appeal 2016-000446 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. 10 Appeal 2016-000446 Application 12/837,179 $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”). 11 Appeal 2016-000446 Application 12/837,179 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. 12 Appeal 2016-000446 Application 12/837,179 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 13 Copy with citationCopy as parenthetical citation