Ex Parte Foell et al

Board of Patent Appeals and Interferences

Jun 19, 2012

10531622 (B.P.A.I. Jun. 19, 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.
10/531,622 04/14/2005 David S. Foell 1200210-2N US 8430
35227 7590 06/19/2012
POLYONE CORPORATION
33587 WALKER ROAD
AVON LAKE, OH 44012
EXAMINER
SAFAVI, MICHAEL
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
06/19/2012 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 DAVID S. FOELL and WILLIAM M. DJERKE
__________

Appeal 2010-007235
Application 10/531,622
Technology Center 3600
___________

Before JAMESON LEE, SALLY GARDNER LANE, and SALLY C.
MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 6, and 8. The real party in interest is PolyOne Corporation. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The Applied Prior Art
Elderson U.S. 6,021,618 Feb. 8, 2000

Appeal No. 2010-007235
Application 10/531,622

2

The Rejection on Appeal
Claims 1, 6, and 8 were finally rejected under 35 U.S.C. § 112, first
paragraph, as lacking written description in the specification.
Claims 1, 6, and 8 were finally rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim subject
matter which the applicants regard as the invention.
Claims 1, 6, and 8 were finally rejected under 36 U.S.C. § 102 as
anticipated by Elderson.
The Invention
The claimed invention is directed to an apparatus adapted for
engagement with concrete fillable formwork wall having elongated,
octagonal tubular form elements. According to the specification, prior
art formwork assemblies often result in arrangements that preclude a
principle surface from being flat. (Spec. 1:14-16). In some prior art
assemblies, flat surfaces at corners are unobtainable because of
limited formwork engagement portions and connections available.
(Spec. 1:16-18).
Figures 6 and 7 of Appellant’s specification are reproduced
below. Figure 6 illustrates a disclosed apparatus in the form of a flat
wall panel engageable with concrete fillable formwork. Figure 7
illustrates the apparatus of Figure 6, assembled to concrete fillable
formwork.
App
App

“con
one
enga
porti
side
matc
tubu

eal No. 20
lication 10
Fig
a
Claim 1
sisting” of
substantial
gement po
on “consis
of the wal
hing fema
lar elemen
10-007235
/531,622
ure 6 show
Figure 7 s
ssembled
is the only
a wall pan
ly flat wal
rtion [26]
ts of” a fin
l panel, an
le engagem
t.

s a disclo
hows the a
to a concr
independ
el [22], w
l [22] and
at each en
[28], whe
d wherein
ent portio

3
sed wall pa
pparatus o
ete fillable

ent claim.
herein the
two wall p
d, wherein
rein both
each fin is
n on one
nel appar
f Figure 6
formwork
It recites
wall pane
anel ends
each mal
fins exten
adapted t
elongated,

atus

an apparat
l “consists
and a mal
e engagem
d from one
o engage a
octagonal
us
of”
e
ent

App
App

A.

end o
that
of a
Exam
and 7
beca
How
spec
sizes
Figu
illus

the m
has n
Figu
the s
reaso
and
in th
eal No. 20
lication 10
The Wri
Indepen
f the wall
“consists o
fin” preclu
iner also
does not
use each e
ever, the E
ification, l
of wall pa
res 32-37.
trates an al
Figur
In the al
ale engag
ot provide
re 35. Als
ubstantiall
nably reg
8 under 35
e specifica
10-007235
/531,622
tten Descr
dent claim
panel “co
f” is a clo
des the pr
correctly d
provide w
nd portion
xaminer f
ines 21-23
nels and/o
” Figure 3
ternative e
e 35 show
ternative e
ement por
d a ration
o, with reg
y flat surf
arded as a
U.S.C. §
tion canno

DIS
iption Rej
1 recites t
nsists” of
se-ended m
esence of a
etermined
ritten desc
26 of the
ailed to ad
: “Of cou
r male po
5 of the sp
mbodime
s an embo
mbodimen
tion at eac
ale that ac
ard to tha
ace of the
part of the
112, first p
t be sustai
4
CUSSION
ection of C
hat the ma
a fin. The
odifier an
n addition
that the e
ription for
flat wall p
dress this
rse other a
rtions can
ecification
nt of the m
diment of
t of Figur
h end of th
counts for
t small “ni
wall panel
same fin.
aragraph,
ned.

laims 1, 6
le engagem
Examiner
d that the
al or seco
mbodimen
the subje
anel 22 in
disclosure
lternative
be used, su
is reprod
ale engag
the claime
e 35, there
e wall pan
the alterna
b” which
and leadin
The rejec
for lack of
, and 8
ent porti
correctly
language
nd fin. Th
t shown in
ct matter o
cludes two
on page 1
configurat
ch as sho
uced below
ement por
d apparatu
is only on
el. The E
tive embo
initially ex
g to each
tion of cla
written d
on at each
determine
“consists
e
Figures 6
f claim 1
fins 28.
4 of the
ions and
wn in
, which
tion:
s
e fin on
xaminer
diment of
tends from
fin, it is
ims 1, 6,
escription
d

Appeal No. 2010-007235
Application 10/531,622

5

B. The Indefiniteness Rejection of Claims 1, 6, and 8
The Examiner’s stated rationale in support of the rejection for
indefiniteness does not point out just what it is about the recitations in
independent claim 1 which renders the scope of claim 1not reasonably
determinable. Rather, the reasoning is that the recitation of claim 1 is
inconsistent with Appellant’s election of species for prosecution in response
to a restriction requirement, which election selected a species defined as
“having one straight surface w/male portions having first projections parallel
to each other and to the wall and second projections perpendicular to each
other.” (Ans. 5:5-8).
While we also recognize the inconsistency as stated by the Examiner,
that does not support a conclusion of indefiniteness of the claimed invention
under 35 U.S.C. § 112, second paragraph. The Examiner’s discussion
actually reflects that the scope of claim 1 is not unclear insofar as how many
fins can be located on a male engagement portion. Per claim 1, there can
only be one fin on each male engagement portion. That is pointed out by the
Examiner as inconsistent with the election of a species that has a first and a
second projection. But it is not an indefiniteness problem of the claim.
With regard to claim 6, the Examiner further asserts that it is
indefinite because it improperly adds an element to a recitation which is
already recited in a closed format excluding additional components. The
position is unsupported. Claim 6 is reproduced below:
6. The apparatus of Claim 1, wherein the wall panel has
perforations.

While claim 1 does recite that the wall panel “consists of” one
substantially flat wall and two wall panel ends and a male engagement
Appeal No. 2010-007235
Application 10/531,622

6

portion at each end, which precludes the wall panel from having additional
structural components, specifying that the wall panel has perforations is not
adding an additional structural component. It merely indicates that the wall
panel is perforated, setting forth the make-up or constitution of an existing
element.
For the foregoing reasons, the rejection of claims 1, 6, and 8 under
35 U.S.C. § 112, second paragraph, as indefinite cannot be sustained.
C. The Anticipation Rejection of Claims 1, 6, and 8
Claims 1, 6, and 8 were finally rejected as anticipated by Elderson.
The subject matter of independent claim 1 is an apparatus consisting
of a wall panel which consists of a substantially flat wall, two wall panel
ends, and a male engagement portion at each end. The male engagement
portion consists of a fin. The apparatus is adapted for engagement with
concrete fillable formwork wall having elongated, octagonal tubular form
elements. Engagement of the wall panel to the tubular form elements would
form a substantially flat exterior wall surface along the tubular form
elements. The tubular form elements to which the apparatus is adapted to
engage, however, are not themselves a part of the claimed invention.
Elderson discloses a studded wall structure and a row of metal studs
used as support within the wall. (Elderson 2:15-30). The Examiner reads
claim 1 not as anticipated by the studded wall of Elderson but as anticipated
by a single metal stud within the wall. Figure 1 of Elderson illustrates the
row of metal studs. A pertinent portion of Figure 1, showing two metal
studs in a row of such metal studs used for supporting the wall, is
reproduced below:
App
App

shap
shap
(Eld

their
Icon
Zletz
eal No. 20
lication 10
F
As is sho
ed, and ea
ed flanges
erson 3:56
During e
broadest r
Health &
, 893 F.2d
10-007235
/531,622
igure 1 sh
wn in Fig
ch stud 14
20 extend
-58).
xaminatio
easonable
Fitness, In
319, 321

ows the sk
ure 1 abov
has a web
ing perpen
n, claim te
interpreta
c., 496 F.
(Fed. Cir.
7
eleton of
e, each m
surface po
dicularly
rms are pr
tion in ligh
3d 1374, 1
1989); In r
a metal stu
etal stud 1
rtion 18 a
from an ed
operly con
t of the sp
379 (Fed.
e Yamam
d wall
4 is genera
nd a pair o
ge of web
strued acc
ecification
Cir. 2007)
oto, 740 F
lly C-
f L-
18.
ording to
. In re
; In re
.2d 1569,
Appeal No. 2010-007235
Application 10/531,622

8

1571 (Fed. Cir. 1984). The key is on the requirement for reasonableness in
the context of the involved specification.
The Examiner determined that metal stud 14 is itself a wall panel and
web base 18 of stud 14 is a substantially flat wall. The determinations are
not supported by the record. Elderson reflects the level of ordinary skill in
the art. It conveys that a stud for providing support to a wall is not itself
recognized or referred to as a wall panel. The Examiner has not articulated a
reasonable basis for regarding stud 14 as a wall panel and web 18 as a
substantially flat wall. Claim terms are not read in a vacuum, but in light of
the specification within the context of the applicants’ disclosed invention.
We think it is unreasonable to regard support stud 14 as a wall panel in the
context of Appellant’s specification. Not all things generally flat and rigid
are wall panels in the context of Appellant’s specification, particularly a wall
panel for engaging concrete fillable formwork. Note, for example, a C-
shaped lid for a container, C-shaped staples in a stapler, and C-shaped gutter.
For the foregoing reasons, the rejection of claims 1, 6, and 8 under
35 U.S.C. § 102 as anticipated by Elderson cannot be sustained.
CONCLUSION
The rejection of claims 1, 6, and 8 under 35 U.S.C. § 112, first
paragraph, as lacking written description in the specification is reversed.
The rejection of claims 1, 6, and 8 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim subject
matter which the applicants regard as the invention is reversed.
The rejection of claims 1, 6, and 8 under 35 U.S.C. § 102 as
anticipated by Elderson is reversed.

Appeal No. 2010-007235
Application 10/531,622

9

REVERSED