Ex Parte Adam

Board of Patent Appeals and Interferences

Mar 28, 2012

10994859 (B.P.A.I. Mar. 28, 2012)

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.
10/994,859 11/22/2004 Paul Adam 24069-003 7719
89205 7590 03/29/2012
David H. Chervitz
458 Whitestone Farm Drive
Chesterfield, MO 63017
EXAMINER
PAINTER, BRANON C
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
03/29/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAUL ADAM
____________________

Appeal 2010-011880
Application 10/994,859
Technology Center 3600
____________________

Before PHILLIP J. KAUFFMAN, EDWARD A. BROWN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Paul Adam (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-20. (App. Br. 3). We have
jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE.
THE INVENTION
The invention is directed to a modular block system for constructing a
retaining wall or other similar landscaping structure. (Spec. 1). Independent
claim 1, reproduced below, is illustrative of the appealed subject matter.
1. A modular block system comprising a
first block, a second block, a third block, a
fourth block, and a capstone, the first block
having a front face, a back face, a first side,
a second side, a top having a first indicator
and a marking formed in the top, and a
bottom, with the front face being wider than
the back face and the first side being slanted
from the front face toward the back face and
the second side being straight from the front
face to the back face, the second block
having a front face, a back face, a first side,
a second side, a top having a second
indicator and a marking formed in the top
with the second indicator being different
than the first indicator, and a bottom, with
the front face being wider than the back face
and the first and second sides being slanted
from the front face toward the back face, the
third block having a front face, a back face,
a first side, a second side, a top having a
third indicator formed in the top with the
third indicator being different than the first
indicator and the second indicator, and a
bottom, with the front face being wider than
the back face and the first side being slanted
from the front face toward the back face,
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and the fourth block having a front face, a
back face, a first side, a second side, a top
having a fourth indicator formed in the top
with the fourth indicator being different than
the first indicator, the second indicator, and
the third indicator, and a bottom, with the
front face being wider than the back face
and the first side and the second side being
from the front face toward the back face, the
first, second, third, and fourth blocks each
having a marking formed in their respective
tops with each marking being the same and
each marking identifying a name of the
modular block system, the first, second,
third, and fourth indicators being used to
construct a structure based on installation
instructions with the instructions indicating
where the first, second, third, and fourth
blocks may be placed to construct the
structure.
The REJECTIONS
The following rejections are before us on appeal for review.
1. Claims 1, 4-8, and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over MacDonald (US 2003/0009970 A1, pub. Jan. 16,
2003), Dickenson (US 7,062,885 B1, iss. Jun. 20, 2006), and
Garnich (US 2,810,946, iss. Oct. 29, 1957).
2. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over MacDonald, Dickenson, Garnich, and Scales (US
5,848,511, iss. Dec. 15, 1998).
3. Claims 9, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over MacDonald, Dickenson, Garnich, and Castonguay
(US 5,735,643, iss. Apr. 7, 1998).
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4. Claim 10 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over MacDonald, Dickenson, and Castonguay.
5. Claims 11-13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over MacDonald, Dickenson, Castonguay, and Garnich.
6. Claims 14-17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over MacDonald, Dickenson, Garnich, and Adam (US Des.
352,789, iss. Nov. 22, 1994).
ANALYSIS
Claims 1, 4-8, and 18 – MacDonald, Dickenson, and Garnich
As to claim 1, the Examiner found MacDonald discloses a first block
300a including front face 306a, back face 308a, first side 310a, and second
side 312a; second block 100b, third block 200b, and fourth block 100c.
(Ans. 4-5). The Examiner found that for the first block 300a, the front face
is wider than the back face, and the first side is "slanted" and second side
"straight" from the front face towards the back face. (Ans. 5). The
Examiner determined that "the second wall is straight since it extends
directly from the front face to the back face without bending or otherwise
veering off course." (Ans. 5, 18, citing to Figs. 2A and 6A of MacDonald).1
The Examiner noted "the definition of 'straight' as 'without a bend, angle, or
curve; not curved; direct' (Dictonary.com)." (Ans. 18).
The Examiner did not find that MacDonald discloses the claimed
indicators, using the indicators in cooperation with instructions, or the
claimed markings. (Id. at 6). The Examiner relied on Dickenson for

1 The Examiner mistakenly identifies 312a as the back face (Ans. 5), but
previously identified 308a as the back face and 312a as the second side
(Ans. 4).
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disclosure regarding the claimed indicators, and relied on Garnich for
disclosure regarding the claimed markings. (Id. at 5-6). The Examiner
determined that it would have been obvious to one of ordinary skill in the art
to modify MacDonald's block system in view of Dickensen and Garnich to
add the claimed indicators and markings to blocks. (Id. at 6-7).
We understand the Examiner found that for block 300a shown in
bottom view in Figure 6A of MacDonald, the bottom face corresponds to
"second side 312a" and the top face corresponds to "first side 310a."
(MacDonald, para. [0029]). We base our understanding on the
corresponding reference numbers 112a and 110a for sides of block 100a
shown in Figure 1A of MacDonald, and the Examiner's statement that block
300a should be compared to block 100a. (Ans. 5; see also MacDonald, para.
[0061](noting block 100a being substantially similar to block 300a)). We
note that Figure 2A of MacDonald cited by the Examiner is a bottom view
of block 100a which does not include reference numbers for any of the sides
or faces of the block. (MacDonald, para. [0025]).
Appellant contends that blocks 100a and 300a shown in Figures 2A
and 6A of MacDonald both have sides that are "slanted" or angled from the
front face to the back face, and none of the sides are "straight" as claimed.
(App. Br. 15-16; Reply Br. 3). We agree. The Patent and Trademark Office
gives claims their broadest reasonable interpretation consistent with the
specification, reading the claim language as it would be interpreted by one of
ordinary skill in the art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Appellant's specification describes, with
emphasis added:
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With reference now to Fig. 3, a top view of
the [first] block 12 is illustrated. The block 12 is
shown to have the front face 20 being wider or
longer than the back face 28. This is due to the
first side 34 being slanted back toward the back
face 28. Also, the second side 36 is not slanted at
all, but is straight from the front face 20 to the
back face 28.
(Spec. 8, ll. 19-23; see also Spec. 7, l. 16). According to this description, we
understand that Appellant has used the term "straight" as meaning "not
slanted at all." In Figures 2 and 3 of Appellant's application, the second side
36 appears to be perpendicular with respect to front face 20 and back face 28
of first block 12, which is consistent with the second side 36 being "not
slanted at all." (See App. Br. 5). The Examiner correctly found that in
MacDonald's block 300a, "first side 310a" is slanted from front face 306a
toward back face 308a. However, the Examiner incorrectly found that
"second side 312a" is "straight" from front face 306a toward back face 308a.
Rather, second side 312a, like first side 310a, is also slanted from the front
face 306a toward the back face 308a. Accordingly, as we construe the claim
term "straight" to mean "not slanted at all," the Examiner's construction of
"straight" and the corresponding finding with respect to MacDonald's block
300a are inconsistent with Appellant's specification. Thus, the Examiner's
findings with respect to MacDonald are not supported by a preponderance of
the evidence, and we do not sustain the rejection of claim 1, and claims 4-8
which depend from claim 1, as unpatentable over MacDonald, Dickenson,
and Garnich.
Independent claim 18 is directed to a landscaping structure
constructed from a modular block system similar to the modular block
system recited in claim 1. For claim 18, the Examiner's findings (Ans. 4-7)
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and Appellant’s arguments for patentability (App. Br. 15-16; Reply Br. 3)
are the same as those discussed supra with respect to claim 1. Hence, we
also do not sustain the rejection of claim 18.

Claims 2 and 3 – MacDonald, Dickenson, Garnich, and Scales
Claims 2 and 3 depend from claim 1. The Examiner relied on Scales
for disclosure regarding the score lines recited in claims 2 and 3. (Ans. 9-
10). However, the Examiner's application of Scales does not cure the
Examiner's reliance on MacDonald, Garnich, and Scales with respect to
claim 1, as discussed supra. Hence, we do not sustain the rejection of claims
2 and 3 as unpatentable over MacDonald, Dickenson, Garnich, and Scales.

Claims 9, 19, and 20 – MacDonald, Dickenson, Garnich, and Castonguay
Claim 9 depends from claim 1 and claims 19 and 20 depend from
claim 18. The Examiner relied on Castonguay for disclosure regarding the
claimed width dimensions of the back faces of the first and second blocks
(claim 9) and the first, second, third, and fourth blocks (claims 9, 19, and
20). (Ans. 9-10). However, the Examiner's application of Castonguay does
not cure the Examiner's reliance on MacDonald, Dickenson, and Garnich
with respect to claims 1 and 18, as discussed supra. Hence, we do not
sustain the rejection of claims 9, 19, and 20 as unpatentable over
MacDonald, Dickenson, Garnich, and Castonguay.

Claim 10 – MacDonald, Dickenson, and Castonguay
Independent claim 10 is directed to a modular block system including
similar limitations as those recited in claim 1, and additionally score lines for
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splitting the blocks. Claim 10 recites "the first block having a front face, a
back face, a first side, a second side . . . with the front face being wider than
the back face and the first side being slanted from the front face toward the
back face and the second side being straight from the front face to the back
face." The Examiner's findings with respect to MacDonald and Dickenson
are the same as discussed supra for claim 1. (Ans. 13). The Examiner relied
on Castonguay for disclosure regarding producing multiple blocks from a
paver. (Ans. 14).
Appellant correctly contends that the Examiner did not establish that
MacDonald discloses a first block having a second side that is straight from
the front face to the back face. (App. Br. 20; Reply Br. 5). Hence, we do
not sustain the rejection of claim 10 as unpatentable over MacDonald,
Dickenson, and Castonguay.

Claims 11-13 – MacDonald, Dickenson, Castonguay, and Garnich
Claims 11-13 depend from claim 10. The Examiner relied on Garnich
for disclosure regarding the claimed markings. (Ans. 15). However, the
Examiner's application of Garnich to claims 11-13 does not cure the
Examiner's reliance on MacDonald, Garnich, and Castonguay with respect
to claim 10, as discussed supra. Hence, we do not sustain the rejection of
claims 11-13 as unpatentable over MacDonald, Dickenson, Castonguay, and
Garnich.

Claims 14-17 – MacDonald, Dickenson, Garnich, and Adam
Independent claim 14 is directed to a modular block system including
similar limitations as those recited in claim 1, and additionally the blocks
each having an alignment groove. Claim 14 also recites "the first block
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having a front face, a back face, a first side, a second side . . . with the front
face being wider than the back face and the first side being slanted from the
front face toward the back face and the second side being straight from the
front face to the back face." The Examiner's findings with respect to
MacDonald, Dickenson, and Garnich are the same as discussed supra for
claim 1. (Ans. 13). The Examiner relied on Adam for disclosure regarding
a retaining wall block with alignment grooves. (Ans. 16).
Appellant correctly contends that the Examiner did not establish that
MacDonald discloses a first block having a second side that is straight from
the front face to the back face. (App. Br. 21; Reply Br. 5). Hence, we do
not sustain the rejection of claim 14 and claims 15-17 which depend from
claim 14 as unpatentable over MacDonald, Dickenson, Garnich, and Adam.

DECISION
The Examiner's decision rejecting claims 1-20 is REVERSED.

REVERSED

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