William Donnelly

Patent Trials and Appeals BoardAug 19, 2021

2021001230 (P.T.A.B. Aug. 19, 2021)

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. 16/155,990 10/10/2018 William Donnelly DON.100UTI 4650 148981 7590 08/19/2021 Giordano Law LLC 1 Boston Place Suite 2600 Boston, MA 02108 EXAMINER CANFIELD, ROBERT ART UNIT PAPER NUMBER 3636 NOTIFICATION DATE DELIVERY MODE 08/19/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): davidg@giordanolawllc.com patents@giordanolawllc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WILLIAM DONNELLY Appeal 2021-001230 Application 16/155,990 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, CARL M. DeFRANCO, and LISA M. GUIJT, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–10, 12, 21, and 22, which constitute all the claims pending in this application. See Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the Examiner’s rejection of these claims. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “the inventor, William Donnelly.” Appeal Br. 3. Appeal 2021-001230 Application 16/155,990 2 CLAIMED SUBJECT MATTER The disclosed subject matter “relates to interlocking blocks. More specifically, this disclosure relates to interlocking blocks for use in construction, flotation, and a variety of other uses.” Spec. ¶ 2. Apparatus claims 1 and 12, and method claim 7, are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A mechanically interlocking block, comprising at least three parallelogram sides, wherein each parallelogram side comprises a side center opening around the center of the parallelogram side, four side corners, at least one side interlocking opening proximate to each side corner and configured for hardware to pass therethrough; and two ends, wherein the block is configured to be interlocked to another interlocking block by hardware secured through one or more interlocking openings, wherein the block is configured to be filled with a fortifying material, and wherein the block is formed from a mold. EVIDENCE Name Reference Date Purdy US 1,733,169 Oct. 29, 1929 REJECTION Claims 1–10, 12, 21, and 22 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Purdy. Appeal 2021-001230 Application 16/155,990 3 ANALYSIS Appellant presents arguments for independent claims 1, 7, and 12 together (see Appeal Br. 7–8, 13–16) and also separately (see Appeal Br. 8– 12). When claims 1, 7, and 12 are argued together, we select claim 1 for review (with claims 7 and 12 standing or falling with claim 1). See 37 C.F.R. § 41.37(c)(1)(iv) (2019). When claims 1, 7, and 12 are argued separately, we address them separately. Dependent claims 2–6, 8–10, 21, and 22 stand or fall with their respective parent claim. Claim 1 Claim 1 recites, in the preamble, “[a] mechanically interlocking block.” Claim 1 also recites, in the body of claim 1, “wherein the block is configured to be interlocked to another interlocking block by hardware.” Thus, there is no need for us to ascertain whether or not, as per Appellant, the “‘preamble is ‘necessary to give life, meaning, and vitality’ to the claim’” (Appeal Br. 13 (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)); see also Appeal Br. 14), because the body of claim 1 already recites a block interlocked to another by hardware. Purdy teaches a “frame unit or member,” which “is of open rectangular parallelepiped form” having face, end, and top/bottom openings. Purdy 1:56–62. Appellant contends that “Purdy does not disclose any type of block” and that “[t]he term block does not mean ‘frame unit.’” Appeal Br. 7, 15. Appellant explains that “[t]he specification provides a definition for the term ‘block’ at Paragraph 33.” Appeal Br. 7. Paragraph 33 of Appellant’s Specification, in its entirety, is as follows: Appeal 2021-001230 Application 16/155,990 4 As used herein, the term “prism” means a geometric figure comprising two ends that are the same or similar and three or more sides that are parallelograms. The terms “block” and “prism” are used interchangeably herein, unless contextually or specifically stated otherwise. As used herein, the term “side” and [sic] refers to a side and/or end of an interlocking block, unless contextually or specifically stated otherwise. Spec. ¶ 33. Hence, we are informed that “block” can be used interchangeably with “prism” such that “block” also means “a geometric figure comprising two ends that are the same or similar and three or more sides that are parallelograms.” Spec. ¶ 33. Appellant contends that “the frame units of Purdy are not ‘blocks’ or geometric figures within the meaning set forth in the specification, drawings, and claims.” Appeal Br. 16. Abiding by Appellant’s above definition of “block,” Appellant does not explain how the frame units illustrated in Purdy’s figures are not “geometric” or how they fail to comprise “two ends that are the same or similar and three or more sides that are parallelograms.” Spec. ¶ 33; see also Purdy 1:57–58 (“the frame unit or member is of open rectangular parallelopiped form”). Accordingly, and as per the Examiner, “[e]ach frame unit or ‘block’ is comprised of a parallelepiped frame having six parallelogram sides” (Ans. 5) and that “by applicant’s own definition the frame units of Purdy are ‘blocks’” (Ans. 7). See also Purdy Figs. 1–4. The Examiner further states, “Applicant defines his terms broadly but wants the office to give them a narrow interpretation.” Ans. 8. For example, paragraph 71 of Appellant’s Specification states: In further embodiments, the interlocking blocks are constructed from two or more separately constructed components and then Appeal 2021-001230 Application 16/155,990 5 joined together. In some embodiments, particularly when the interlocking blocks comprise metal, the interlocking blocks are made by bolting the sides together, or welding sides together, or brazing sides together, or machining, casting, forming, joining, or assembling. Spec. ¶ 71 (italics added). The Examiner also replicates this language (with further highlighting) stating “paragraph [0071] of the instant application specification indicates interlocking blocks may be constructed from two or more separately joined components.” Ans. 6; see also Ans. 8. As such, and in view of the above, we are not persuaded the Examiner has improperly correlated Purdy’s open frame unit or member to Purdy’s recited “block.” Appellant also contends that the Examiner erred when identifying “the ‘parallelepiped frame units [figs 3 and 4] of Purdy . . . as meeting the nomenclature of interlocking blocks.’”2 Appeal Br. 8 (italics added); see also Appeal Br. 13 (“Purdy does not disclose the claimed interlocking block”). On this point, Purdy teaches that the various sides or faces of Purdy’s frame units “can be . . . united at the corners by welding or by rivets.” Purdy 1:68–72. Afterwards, Purdy teaches that “[t]he frames as thus formed can be united along their vertical ends and top to the bottom by bolts with nuts.” Purdy 1:73–78; see also Purdy 1:14–18 (“erecting a skeleton . . . made up of small metallic members or frames . . . that can be united by bolts or other simple fastenings”); Figs. 1–4. In view of such teachings, the Examiner states that “the parallelepiped frame units [figs 3 and 4] of Purdy [] are interconnected with nuts 18 and bolts 16 passed through openings 17.” Final Act. 9; see also Ans. 7 (“the 2 Appellant states, “Purdy fails to disclose any kind of mechanically interlocking block within the meaning of the term as set forth in the instant specification and drawings.” Appeal Br. 8. Appeal 2021-001230 Application 16/155,990 6 parallel framed units of Purdy [] are fastened [] together with nuts and bolts 16/18”). Accordingly, the Examiner states that “figures 1–4 of Purdy meet the limitation of ‘mechanically interlocking blocks.’” Ans. 5; see also Final Act. 9. Appellant contends, “[t]he Office Action attempts to use the frame units of Purdy as an Erector Set to arrive at the claimed interlocking blocks.” Appeal Br. 13. However, Appellant’s contention regarding interlocking blocks is not wholly consistent with Appellant’s Specification, and particularly paragraph 71 referenced above which states that the recited blocks can be “constructed from two or more separately constructed components and then joined together.” See also Ans. 6, 8. As such, and in view of the above, we are not persuaded the Examiner has mischaracterized or misunderstood Purdy regarding the teaching of mechanically interconnected blocks. Appellant also addresses the limitation, “wherein each parallelogram side comprises a side center opening around the center of the parallelogram side.” Appeal Br. 8. Appellant contends that “Purdy does not teach” this limitation. Appeal Br. 9, 16. However, it is not made clear how openings 10, 11, and 12 in the opposing sides/faces of each frame unit, as described by Purdy and depicted in Figures 1–4 thereof, fail to meet this limitation. See Purdy 1:59–62; Final Act. 5; Ans. 5. Appellant further addresses the limitation “wherein the block is formed from a mold” and that “Purdy does not disclose any mold.” Appeal Br. 9; see also id. at 16. Appellant contends, “[t]his claim feature implies a structural limitation” (Appeal Br. 9) but does not identify what this structural limitation might be, or how the process of molding instills a structural Appeal 2021-001230 Application 16/155,990 7 characteristic not available via other methods of construction (see, e.g., Purdy 1:71–78 discussing welding, riveting, and bolting). Appellant contends, “the Office Action ignores the ‘formed from a mold’ feature” and, as such, “[t]he Office Action’s analysis is fundamentally flawed.” Appeal Br. 10. We disagree that the Examiner ignored this limitation. Instead, the Examiner, specifically addressed this “block is formed from a mold” limitation and characterized this limitation as a “product-by-process claim,” stating that Appellant’s “[f]orming in a mold fails to impart any added structural limitations to the claimed block.” Final Act. 6; see also Ans. 8–9. The Examiner even quotes MPEP § 2113 which states, “[t]he patentability of a product does not depend on its method of production.” Ans. 8. As further stated in this MPEP section, “[i]f the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” MPEP § 2113; Ans. 8. Furthermore, and as indicated above, Appellant does not identify any structural characteristics achieved via molding that might not likewise be achieved by other methods of construction. In view of the above, we are not persuaded the Examiner erred in finding this limitation a product-by-process limitation, nor are we persuaded the Examiner erred in concluding that Appellant’s resultant block (even if made by molding) is obvious in view of Purdy’s blocks (and disclosed method of construction). Appellant next addresses the limitation, “wherein the block is configured to be filled with a fortifying material.” Appeal Br. 10. Appellant’s Specification states, “[i]n some embodiments, the fortifying Appeal 2021-001230 Application 16/155,990 8 materials are insulation, sand, water, gravel, rocks, cementitious material, or a combination thereof.” Spec. ¶ 35; see also id. at 39. Appellant contends that “Purdy does not disclose this feature” and that Purdy’s frame units “cannot contain any fortifying material” because “[t]he open design of Purdy’s frame units is incapable of being filled with fortifying material.” Appeal Br. 10. First, Appellant does not explain how Appellant’s recited open design (i.e., a “center opening” in each side) can contain such material while Purdy’s open design cannot. Further, the Examiner identifies this “configured to be filled” limitation as reciting an “intended use of the claimed invention.” Final Act. 5. In such situations, as explained by the Examiner, such intended use limitation “must result in a structural difference between the claimed invention and the prior art.” Final Act. 5; Ans. 9. In other words, as per the Examiner, “[i]f the prior art structure is capable of performing the intended use, then it meets the claim.” Final Act. 6; Ans. 9. Here, the Examiner states, “[t]he frame units on Purdy are quite capable of being filled with insulation which is identified in paragraph [0035] of the instant specification as a fortifying material.” Ans. 9. Appellant does not explain how Purdy’s frame units could not be filled with insulation which, as above, is a “fortifying material.” Spec. ¶ 35; see also Appeal Br. 14. Instead, it would appear self-evident that Purdy’s frame units can be filled in much the same manner as Appellant’s blocks can be filled. Compare Purdy’s Figures with Appellant’s Figures. Lacking an explanation by Appellant to the contrary, we are not persuaded that the Examiner erred on this point. Appeal 2021-001230 Application 16/155,990 9 Appellant also contends that “undue experimentation” would be required for Purdy to enable a skilled person to practice the claimed invention. Appeal Br. 15. In other words, as per Appellant, “Purdy is wholly devoid of a disclosure that would enable a person of skill in the art to construct the claimed interlocking blocks.” Appeal Br. 15. However, even under Appellant’s “undue experimentation” rationale, we disagree that the skill required to employ Purdy’s frames as the recited blocks is beyond the ability of one skilled in the art. For example, we have been instructed that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Thus, in addressing Appellant’s contention, Appellant does not explain how a skilled person would require “undue experimentation” to arrive at the claimed invention. Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claim 1, and its dependent claims which stand or fall therewith, as explained above. Claim 7 Regarding method claim 7, Appellant repeats many of the arguments previously set forth with respect to claim 1 above. For example, Appellant contends that “Purdy does not teach the claimed interlocking blocks.” Appeal Br. 11. Additionally, Appellant contends that “Purdy also fails to disclose a method of connecting a first interlocking block and a second interlocking block” and that “Purdy does not teach the steps of aligning” the sides and “inserting hardware through at least one of the aligned” sides to connect with another block. Appeal Br. 11; see also id. at 16. Appellant Appeal 2021-001230 Application 16/155,990 10 contends that “[t]he claimed method results in a different structure than the parallelepiped frame units of Purdy.” Appeal Br. 11. Appellant’s contentions regarding Purdy are not persuasive. For example, Appellant does not explain how Purdy’s figures fail to illustrate the alignment of holes 17 in adjacent blocks through which bolts 16 pass, which are then secured via nuts 18. See Purdy 1:73–78, 1:14–18; see also Ans. 9– 10 (referencing Purdy Figs. 1, 2). Appellant’s contentions to the contrary are not persuasive that Purdy fails to disclose these steps. We sustain the Examiner’s rejection of claim 7, and its dependent claims. Claim 12 As with claim 7 above, Appellant repeats many of the arguments previously set forth with respect to claim 1 above. For example, Appellant contends that “Purdy does not teach the claimed interlocking blocks.” Appeal Br. 12; see also id. at 16. Appellant also contends that “Purdy fails to teach an interlocking block comprising five or more sides.” Appeal Br. 12. However, Appellant fails to explain how Purdy’s six-sided block fails to meet this limitation. See Purdy’s figures; see also Ans. 5 (“[e]ach frame unit or ‘block’ is comprised of a parallelepiped frame having six parallelogram sides”). Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claim 12 (noting that no claim depends from claim 12). CONCLUSION In summary: Appeal 2021-001230 Application 16/155,990 11 Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–10, 12, 21, 22 102 Purdy 1–10, 12, 21, 22 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED