Ex Parte Allen

Board of Patent Appeals and Interferences

Oct 29, 2009

10694304 (B.P.A.I. Oct. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID M. ALLEN
____________

Appeal 2009-006936
Application 10/694,304
Technology Center 3600
____________

Decided: October 29, 2009
____________

Before JAMESON LEE, SALLY C. MEDLEY and
MICHAEL P. TIERNEY, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-006936
Application 10/694,304

2
A. STATEMENT OF THE CASE
David M. Allen, (“Allen”), the real party in interest, seeks review
under 35 U.S.C. § 134(a) of a Final Rejection of claims 1-13 and 16-18. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
References Relied on by the Examiner
Trutwin et al. (“Trutwin”) 6,202,380 Mar. 20, 2001
Pinto et al. (“Pinto”) 6,189,276 Feb. 20, 2001
Baum 1,585,960 May 25, 1926

Rejections on Appeal
The Examiner rejected claims 1-11, 13 and 16-18 as unpatentable
under 35 U.S.C. § 103(a) over Trutwin and Baum.
The Examiner rejected claim 12 as unpatentable under 35 U.S.C. §
103(a) over Trutwin, Baum and Pinto.
All claims stand or fall together. Br. 3-6.
The Invention
Allen discloses, referring to Allen’s figure 5 reproduced below
[numbers from figure 5 inserted], a baseboard assembly including a base
portion [20] and a top portion [24]. An upper end [40] of the base portion
[20] is sloped downwardly from the front surface [36] to the back surface
[34]. A lower end [48] of the top portion [24] is sloped downwardly from
the front surface [46] to the back surface [44]. The top portion [24] is to be
installed with the sloped lower end [48] adjacent the sloped upper end [40]
of the base portion [20]. Abs; Spec. pp. 2, 4.
Appeal 2009-006936
Application 10/694,304

3
Allen’s figure 5 is below:

Figure 5 depicts a baseboard assembly.
Claim 1, reproduced from the Claims Appendix of the Appeal Brief,
reads as follows:
A baseboard assembly installed in a junction region
where a lower edge of a generally vertical wall meets a side
edge of a generally horizontal floor, comprising:
a base portion having a back surface and an opposed
front surface, the base portion further having a lower end and an
upper end, the base portion being installed in the junction
region with the back surface against the wall and the lower end
adjacent the floor, the upper end of the base portion being
sloped downwardly from the front surface to the back surface;
and
a top portion having a back surface and an opposed front
surface, the top portion further having a lower end and an upper
end, the lower end of the top portion being sloped downwardly
from the front surface to the back surface, the top portion being
installed with the back surface adjacent the wall and the sloped
lower end is adjacent the sloped upper end of the base portion;
wherein the base portion and top portion have dissimilar
cross sections when taken perpendicular to the respective back
surfaces.

Br. 8, Claims App’x.
Appeal 2009-006936
Application 10/694,304

4
B. ISSUE
Has Allen shown that the Examiner erred in determining that the
claims would have been obvious based on the rationale provided by the
Examiner?
C. FINDINGS OF FACT
Trutwin
1. Trutwin describes, referring to Trutwin’s figure 2 reproduced below
[numbers from the figure 2 inserted], a baseboard molding [10]
including a top piece [11] including a bottom face [13], and a front
face [14]; and a bottom piece [17] having a top [18]. Col. 4, l. 39-col.
5, l. 10.
Trutwin’s figure 2 is below:

Figure 2 depicts a baseboard assembly.
2. The bottom face [13] of the top piece [11] has a downwardly
extending tongue ridge [16] adjacent the front face [14] of the top
piece [11]. Col. 5, ll. 2-4.
3. The top [18] of the bottom piece [17] has a spaced apart and generally
parallel front and back extents [24], [25] defining a longitudinal
groove [28]. Col. 5, ll. 11-20.
4. The tongue ridge [16] is inserted into the longitudinal groove [28] to
join the top [11] and bottom [17] pieces together. Col. 5, ll. 21-23.
Appeal 2009-006936
Application 10/694,304

5
Baum
5. Baum describes, referring to Baum’s figure 2 reproduced below
[numbers from figure 2 inserted], a base-board [3] with a lower
beveled surface [6] and a shoe mold [7] with an upper beveled
surface. Col. 1, ll. 44-50.
Baum’s figure 2 is below:

Figure 2 depicts a baseboard and shoe mold.
D. PRINCIPLES OF LAW
“A [prior art] reference must be considered for everything it teaches
by way of technology and is not limited to the particular invention it is
describing and attempting to protect.” EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted). The use of
patents as references is not limited to what the patentees describe as their
own inventions or to the problems with which they are concerned, as they
are a part of the literature and relevant for all they contain. In re Heck, 699
F.2d 1331, 1333 (Fed. Cir. 1983), citing In re Lemelson, 397 F.2d 1006,
1009 (CCPA 1968).
It is not necessary to find precise teachings in the prior art directed to
the specific subject matter claimed because inferences and creative steps that
a person of ordinary skill in the art would employ can be taken into account.
KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appeal 2009-006936
Application 10/694,304

6
“[W]hen a[n] [application] claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result.” KSR, 550 U.S. at 416 (citing U.S. v. Adams, 383 U.S. 39, 50-51
(1966)).
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.

In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
E. ANALYSIS
Claims 1-11, 13 and 16-18
Independent claim 1 is representative and recites (disputed limitations
in italics): “a base portion . . . the upper end of the base portion being sloped
downwardly from the front surface to the back surface . . . a top portion . . .
the lower end of the top portion being sloped downwardly from the front
surface to the back surface . . . the sloped lower end is adjacent the sloped
upper end of the base portion . . . .” Br. 8, Claims App’x.
The Examiner finds that Trutwin describes the claimed limitations
with the exception of a sloped juncture between the top [11] and bottom [17]
pieces of the baseboard molding [10]. The Examiner relies on Baum to
teach a baseboard with a juncture [6] that slopes from the front surface to the
back surface. Final Rejection 3; Ans. 4. The Examiner determined that it
would have been obvious to one with ordinary skill in the art to have the
juncture in Trutwin slope as in Baum as a matter of functional equivalence
Appeal 2009-006936
Application 10/694,304

7
since the sloped juncture would perform equally as well as Trutwin’s
juncture.
Allen argues that the combination of Trutwin and Baum is not a mere
substitution of one element for another since the element being substituted
would necessarily have to be used in the same way as in the original
reference. Br. 4-5. In connection with that argument, Allen argues that
Baum’s baseboard design is intended to reduce the stack-up between a shoe
mold and baseboard by providing a beveled lower surface and nesting the
shoe mold in the beveled area, leaving a gap. Br. 5. In other words, Allen
asserts that Baum would have to be used the same way as it is described in
Baum when combined with Trutwin.
Allen’s arguments are misplaced because Allen focuses too narrowly
on the teachings of Baum. The intended purpose of the Baum reference
need not be preserved as Allen suggests. Rather, the use of patents as
references is not limited to what the patentees describe as their own
inventions or to the problems with which they are concerned, as they are part
of the literature and relevant for all they contain. Heck, 699 F.2d at 1333,
citing Lemelson, 397 F.2d at 1009.
Allen further argues that if Baum and Trutwin were combined by
mere substitution, the combination would not provide sloped surfaces of
upper and lower pieces and would not provide a predictable result. Br. 5.
Allen argues that the logical and predictable combination would be to cut off
the bottom of the lower portion of Trutwin’s baseboard and use a nested
shoe mold like Baum’s shoe mold [7] thereby eliminating the use of a
traditional shoe mold as would be used with Trutwin’s baseboard. Br. 5.
Appeal 2009-006936
Application 10/694,304

8
The Examiner determined that replacing the Trutwin juncture with the
Baum juncture [6] that slopes from the front surface to the back surface
would result in the sloped surface(s) as claimed. That determination is
reasonable. Allen has not directed us to objective evidence to demonstrate
that the substitution of beveled joining surfaces described by Baum for
Trutwin’s joining surfaces [16], [28] would not yield a sloped engagement
between the upper and lower portions of a baseboard as claimed.
The Examiner further determined that the combination would yield
the predictable result of a two-piece trim member in which the upper portion
is properly stabilized on the lower portion since both Baum and Trutwin
describe junctures shaped to have a relatively higher front surface
transitioning to a lower rear surface. Ans. 13. The Examiner’s
determination in this respect is also reasonable and Allen has not responded
by way of a reply brief to demonstrate otherwise.
Lastly, Allen does not direct us to objective evidence to demonstrate
that the logical and predictable combination would be to cut off the bottom
of the lower portion of Trutwin’s baseboard and use a nested shoe mold like
Baum’s shoe mold as asserted by Allen. Argument of counsel cannot take
the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d
775, 782 (CCPA 1977); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974). In addition, as already explained above, Allen is placing too much
focus on preserving every aspect of the Baum reference. That focus is
misplaced.
Allen further argues that Trutwin (1) does not provide a sufficient
suggestion or motivation to combine the references in order to meet the
claim limitations, and (2) does not provide the function and benefits of the
Appeal 2009-006936
Application 10/694,304

9
present invention. Br. 3 and 5-6. Allen’s arguments are unpersuasive
because it is not necessary to find precise teachings in the prior art directed
to the specific subject matter claimed. Inferences and creative steps that a
person of ordinary skill in the art would employ can be taken into account.
KSR, 550 U.S. at 418.
Last, Allen argues that the Examiner has used the teachings of the
present invention to combine features from the prior art. Br. 5. Any
judgment of obviousness is in a sense necessarily a reconstruction based on
hindsight. McLaughlin, 443 F.2d at 1395. Such a reconstruction is proper if
it takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure. Id. In this case, the
determination of obviousness only takes into account knowledge which was
within the level of ordinary skill at the time the invention was made; the
knowledge and ordinary creativity of one skilled in the art to substitute
beveled joining surfaces described by Baum for the joining surfaces [16],
[28] of the baseboard top and bottom pieces [11], [17] of Trutwin. “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 421.
For all these reasons, Allen has not shown that the Examiner erred in
determining that claims 1-11, 13 and 16-18 would have been obvious over
Trutwin and Baum.
Claim 12
Allen does not argue the limitations of claim 12 separately. For the
same reasons as those explained before, Allen has not shown that the
Appeal 2009-006936
Application 10/694,304

10
Examiner erred in determining that claim 12 would have been obvious over
Trutwin, Baum and Pinto.
F. CONCLUSION
Allen has not shown that the Examiner erred in determining that the
claims would have been obvious based on the rationale provided by the
Examiner.
G. ORDER
The decision of the Examiner rejecting claims 1-11, 13 and 16-18 as
unpatentable under 35 U.S.C. § 103(a) over Trutwin and Baum is affirmed.
The decision of the Examiner rejecting claim 12 as unpatentable under
35 U.S.C. § 103(a) over Trutwin, Baum and Pinto is affirmed.
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

GIFFORD, KRASS, SPRINKLE, ANDERSON & CITKOWSKI, P.C.
PO BOX 7021
TROY, MI 48007-7021