Donald Velazquez

Patent Trials and Appeals Board

Feb 17, 2022

2021005011 (P.T.A.B. Feb. 17, 2022)

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. 15/802,184 11/02/2017 Donald Velazquez VEL101 8019 148306 7590 02/17/2022 Mark Wardas 1226 Carmen Dr. Glendale, CA 91207 EXAMINER KATCHEVES, BASIL S ART UNIT PAPER NUMBER 3633 MAIL DATE DELIVERY MODE 02/17/2022 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 DONALD VELAZQUEZ Appeal 2021-005011 Application 15/802,184 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and ROBERT J. SILVERMAN Administrative Patent Judges. SCHOPFER, 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 49-64. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Donald Velazquez as the real party in interest. Appeal Br. 3. Appeal 2021-005011 Application 15/802,184 2 BACKGROUND The Specification discloses that the present subject matter relates to “masonry bodies including concrete and tile” and “to a method and apparatus for imparting channels or scoring cementitious surfaces to form designs therein to decorate new and existing surfaces and to rehabilitate existing cracked surfaces to render them more aesthetic.” Spec. ¶ 2. CLAIMS Claims 49 and 57 are the independent claims on appeal. Claim 49 is illustrative of the appealed claims and recites (with added formatting): 49. A concrete or cementitious product defined by a surface area comprised of: a plurality of pre-existing fissures formed by an expansion or contraction of the surface area; a plurality of decorative channels formed separately by a machine, wherein each of the plurality of decorative channels comprise a length and a width, wherein along the length each of the plurality of decorative channels are defined by an intersection of the surface area and two opposite sidewalls that extend up from below the surface area toward the surface area, and wherein the intersection is configured by the machine to define a rough or rounded corner along the length. Appeal Br. 26 (Claims App.). REJECTIONS 1. The Examiner rejects claims 49-56 under 35 U.S.C. § 112(b) as indefinite. Appeal 2021-005011 Application 15/802,184 3 2. The Examiner rejects claims 49-64 under 35 U.S.C. § 102(a)(1) as anticipated by Ferm.2 DISCUSSION Indefiniteness With respect to claim 49, the Examiner finds that the claim is indefinite because it recites “rough or rounded corners along the length,” and it “is not clear how a corner is located on a length as corners are found at ends of lengths.” Final Act. 2. We disagree for the reasons provided by Appellant. See Appeal Br. 15-16. In particular, we agree that the corner recited in the claim would be understood by a person of ordinary skill in the art to be the line of intersection between a sidewall of a decorative channel and the surface area of the concrete. Id. at 16. The claim appears to clearly define the corner as this intersection, and the Specification supports this interpretation by stating “[t]he intersection of the upper surface 12 and such a sidewall 24 is referred to as a corner 26.” Spec. ¶ 44. Accordingly, we do not sustain this rejection. Anticipation We are persuaded of error in the rejection of independent claims 49 and 57 at least to the extent the Examiner finds that Ferm discloses “the intersection is configured by the machine to define a rough or rounded corner along the length” as recited in claim 49 and “at least some of the two opposing sidewall surfaces are configured by the machine to be irregular or rough” as recited in claim 57. 2 Ferm et al., US 6,052,964, iss. Apr. 25, 2000. Appeal 2021-005011 Application 15/802,184 4 With respect to claim 49, the Examiner finds that “Ferm discloses a cement with a surface area . . . with fissures . . ., [and] decorative channels” having a length and width and rounded portions along the length including rounded corners, which the Examiner identifies as “rounded ends 28, 29.” Final Act. 3 (citing Ferm, Figs. 2, 4, 7). Regarding claim 57, the Examiner finds, “clam 57 is rejected for reasons cited in the rejection of claim[] 49 and the channels are rough (inherent in concrete and see volume in fig. 8, channel 73b is roughed against 74d edges).” Id. at 4. The Examiner also finds that “[c]oncrete contains aggregate which when cut by machine or by hand leaves an inherently rough surface.” Ans. 4. “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). “Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Here, we disagree with the Examiner’s finding that Ferm must necessarily include a rough corner or rough sidewall surfaces, as recited in by claims 49 and 57, respectively. As an initial matter regarding claim 49, we agree with Appellant that the relevant corner in Ferm is the intersection of the sidewall of one of Ferm’s slots with the top surface of the slab 1. See Appeal Br. 17 (citing Appeal 2021-005011 Application 15/802,184 5 Ferm Fig. 4). Thus, the Examiner errs to the extent the rejection first relies on the rounded interior surfaces of the slot as “rounded corners along the length” recited in the claim. See Final Act. 3 (citing Ferm Fig. 7). The only rounded portions of Ferm that we see in any of the figures appear in the interior of one of Ferm’s slot and not at a corner as required by the claim. Regarding the rejection of both independent claims and to the extent that the Examiner finds that cutting concrete would inherently create rough surfaces, we agree with Appellant’s response. See Reply Br. 4-5.3 First, to the extent that the Examiner bases the inherency finding on the fact that concrete includes aggregate the Examiner does not cite to any specific disclosure of the composition of the disclosed concrete in Ferm. Second, the Examiner provides no specific evidence that cutting concrete necessarily produces a rough surface. Regarding the texture of any surface in Ferm, we see only that Ferm discloses that the slots may be filled with “dry 12/20 graded rounded sand as a filler” and that “[t]he sand creates a rough texture which forms a mechanical bond with the side of the concrete slots and helps to transfer load from the load transfer materials to the concrete.” Ferm col. 5, ll. 55-61. This does not necessarily indicate anything regarding the texture of the sidewalls or corners of the slots themselves. And regarding the creation of slots in Ferm, Ferm discloses that they may be “cut in any way known to the art, including using the more common circular diamond- saw or a modified milling machine.” Id. at col. 3, ll. 44-52. Ferm does not indicate whether any particular method necessarily creates a rough texture in 3 Appellant’s Reply Brief does not include page numbers. We consider the page including the title “Reply Brief” to be page one. Appeal 2021-005011 Application 15/802,184 6 the slot and the Examiner does not provide evidence that these methods would necessarily create a rough slot surface. We also note Appellant’s point that the use of a diamond-tipped saw blade may be known to provide a slot with smooth surfaces. Reply Br. 4. Based on the foregoing, the Examiner has not provided sufficient evidence to show that Ferm’s slots necessarily include either a “rough or rounded corner” as recited in claim 49 or “irregular or rough” sidewall surfaces as recited in claim 57. Thus, we are persuaded of error in the anticipation rejection of these claims. Accordingly, we do not sustain the anticipation rejection of independent claims 49 and 57 or dependent claims 50-56 and 58-64. CONCLUSION We REVERSE the rejections of claims 49-64. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 49-56 112(b) Indefiniteness 49-56 49-64 102(a)(1) Ferm 49-64 Overall Outcome 49-64 REVERSED