Paul W. Adam

Patent Trials and Appeals Board

Mar 20, 2020

29525529 - (D) (P.T.A.B. Mar. 20, 2020)

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.
29/525,529 04/30/2015 Paul W. Adam 24069-080 6719
89205 7590 03/20/2020
David H. Chervitz
458 Whitestone Farm Drive
Chesterfield, MO 63017
EXAMINER
DOAN, ANHDAO
ART UNIT PAPER NUMBER
2914
MAIL DATE DELIVERY MODE
03/20/2020 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 PAUL W. ADAM

____________

Appeal 2019-002406
Application 29/525,529
Technology Center 2900
____________

Before JOHN C. KERINS, GRACE KARAFFA OBERMANN, and
JILL D. HILL, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject the sole claim in this application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The term “Appellant” is used herein to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies himself, Paul W. Adam, as the real
party in interest. Appeal Br. 3.
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INVENTION
Appellant’s claimed invention is to an ornamental design for a
landscape edging system. Spec. 3. Figures 1, 8, 15, and 22 of Appellant’s
drawings, as filed on January 13, 2017, are reproduced below:

Figure 1 at the top left above is a perspective view of a first modulary block
type that is part of the system, Figure 8 at the top right is a perspective view
of a second modular block type that is part of the system, Figure 15 at the
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bottom left above is a perspective view of a third modular block type that is
part of the system, and Figure 22 at the bottom right above is a perspective
view of a block of the second modular block type and of a partial block of
the first modular block type, with the two blocks set in a pattern.
REJECTIONS2
The Examiner rejects the sole claim of the application:
(i) under 35 U.S.C. § 112(a) and (b) as failing to comply with the
enablement requirement and as being indefinite; and
(ii) under 35 U.S.C. § 112(a) as failing to comply with the written
description requirement.

ANALYSIS
Section 112(a)/(b)--Enablement and Indefiniteness
Two different bases for rejection under these statutory sections are
presented in the Final Action. The first involves identification of numerous
drawing inconsistencies deemed to be “so great that the overall appearance
of the design in unclear and, as such, the scope cannot be determined.” Final
Act. 5. The second involves the fact that the claimed invention is recited as
a “landscape edging system,” and that there is no single view presented that
depicts all three modular blocks as a set or system, and no indication as to

2 An issue as to whether Appellant may properly claim priority to U.S.
application Serial Number 13/136,275, filed July 27, 2011 is joined between
Appellant and the Examiner. See, e.g., Final Act. 2–4; Appeal Br. 4–5.
Because there is no rejection involving prior art on appeal, we need not, and
do not, reach this specific issue.
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how the three types of modular blocks of the system relate to each other.
Final Act. 9–10.
Drawing Inconsistencies
The Examiner identifies a number of drawing inconsistencies
involving where various surfaces among the drawings of the individual types
of modular blocks are postioned relative to other surfaces or components,
and that certain surfaces in some drawings indicate beveled surfaces, with
the same surfaces in other drawings indicating rounded surfaces. Final Act.
5–8; Ans. 3–7. The Examiner notes that, although an attempt was made to
identify all inconsistencies (Ans. 9), “[o]ther problems may be present which
the examiner has not noted but which the applicant must resolve. The onus
is on the applicant to set forth a clear and consistent disclosure.” Final Act.
8. The Examiner further determines that the drawing inconsistencies are
such that the design is not disclosed with sufficient exactness such that only
one clear interpretation of the design can be ascertained, and that one skilled
in the art cannot, therefore, make and use the design without resort to
conjecture. Ans. 9–10.
Appellant mainly argues that the Examiner “has not pointed out how
the inconsistencies are so great that the overall appearance of the design is
unclear.” Appeal Br. 6. As to the Examiner’s position that portions of
Figure 6 are inconsistent with similar portions of Figure 7, Appellant asserts
that the inconsistency does not exist, in that, “[i]f the bottom of the block has
different design elements than the top, Appellant should be allowed to claim
such.” Id. The issue, however, is whether those drawing figures, in
conjunction with the other views, would alert a person of ordinary skill in
the art that the shape changes at some point, or gradually, along a surface,
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extending from the top to the bottom, and the collective drawings do not
illustrate or define such a shape change.
Appellant also misapprehends that the rejection is mainly about the
scale of the drawings, in addressing inconsistencies between elements
illustrated in Figures 4 and 6. Appeal Br. 7. A first inconsistency noted
involves the different positioning of a groove from one of the figures to the
other. It is not possible to determine what positioning is intended to be
claimed, and this positioning clearly impacts the overall appearance of the
modular block. The other inconsistency between Figures 4 and 6, appearing
at page 5 of the Final Action, is that the portion of the block having a lower
height profile is shown in Figure 4 to be of a width much shorter than the
width of the same feature in Figure 6. This is not an issue of scale, in that
the portion of the block having the higher height profile is of the same width
in both figures. Again, it is not possible to determine, without speculation,
which is correct, and thus what the overall appearance will be. Appellant
further does not contest the Examiner’s findings with respect to these and
other inconsistencies identified by the Examiner. Appeal Br., passim; Reply
Br., passim.
The rejection of the sole design claim as not being enabled, and as
being indefinite, due to the numerous drawing inconsistencies, is sustained.
Lack of Single View of System
We do not sustain the rejection on this basis. Although the Examiner
is correct that there is no view of all three types of modular blocks together
as a set or system, Figure 22 illustrates what is readily apparent from the
various views of the individual blocks: that they are fitted together in a
tongue-and-groove manner so as to abut one another. That there are three
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different shapes of modular blocks, one that is linear, and two that are
differently curved, simply means that, in a given finished form, the “system”
may form borders that have different overall contours, yet the blocks making
up the system are limited to the three types depicted.

Section 112(a)--Written Description
The Examiner finds that “[a]ll the corners of the blocks in the original
drawings have rounded edges,” whereas the drawings filed as replacement
drawings on January 13, 2017, illustrate at least some of those rounded
edges instead as beveled surfaces. Final Act. 8.
Appellant argues that U.S. Application Serial Number 13/136,275,
from which this application claims priority, discloses that the edges of the
modular blocks may be beveled, thereby evidencing to persons of ordinary
skill in the art that Appellant had possession at that time of the later claimed
subject matter, i.e., beveled edges. Appeal Br. 9. Appellant maintains that
there was no need to specifically state, at the time the present application
was filed, that the present application incorporated by reference the entirety
of the priority application, in view of the making of the claim to priority, and
the identification of the priority application in the application papers.
Appellant misunderstands the application of the written description
requirement as it affects the present application. The Examiner correctly
compares the drawings as currently pending against the drawings as filed in
the present application in order to determine if written descriptive support
for the current design was present in the as-filed drawings. It matters not
that the putative priority application might have provided written descriptive
support for the current design having beveled edges--that design was not
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made evident in the drawings as filed in the present application. Appellant
has not argued that the appearance of the blocks having rounded corners in
any way evidences that Appellant was in possession of blocks having
beveled corners.
As our reviewing court has explained,
a recitation of priority is not part of the “written description of
the invention” described in § 112. Instead, a priority claim
appears in its own separate section of the specification and
provides information distinct from sections describing “the
invention.” 37 C.F.R. § 1.77(b). The words of a priority claim
are thus separate from the materials necessary to satisfy § 112.
Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309 (Fed. Cir. 2108).
Had Appellant, in addition to claiming priority back to the filing date
of the putative priority application, also included a statement at the time of
filing that that application was incorporated by reference in its entirety, any
and all disclosure therein would have been regarded as being included in the
present application. As it is, only those drawings originally filed, together
with the Specification and Claim, are of significance in dermining whether
Appellant had possession, as of the filing date of this application, the design
of the modular block as now illustrated in the drawings currently pending in
the application.
The rejection of the claim as failing to meet the written description
requirement of 35 U.S.C. § 112(a) is sustained.

CONCLUSION

In summary:

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Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1 112(a),(b) Nonenablement,
Indefiniteness
1
1 112(a) Written Description 1
Overall
Outcome
1

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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)(iv).

AFFIRMED