Ex Parte Karau

Patent Trial and Appeal Board

Aug 28, 2018

14311180 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/311, 180 06/20/2014 William H. Karau
33649 7590 08/28/2018
Mr. Christopher John Rourk
Jackson Walker LLP
2323 ROSS A VENUE
SUITE 600
DALLAS, TX 75201
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
107724.00067 3462
EXAMINER
KRECK, JANINE MUIR
ART UNIT PAPER NUMBER
3672
MAIL DATE DELIVERY MODE
08/28/2018 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 WILLIAM H. KARAU
Appeal2018-000164
Application 14/311, 180
Technology Center 3600
Before JAMES P. CALVE, BENJAMIN D. M. WOOD, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies Pavestone, LLC as the Applicant and real party in
interest. Appeal Br. 4.
Appeal2018-000164
Application 14/311, 180
THE INVENTION
Appellant's invention relates to block retaining walls. Spec. ,r 2.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A system of retaining wall blocks suitable for
constructing a retaining wall comprising:
a solid cap block of modified arc segment shape, having
height H, two opposing sides with midpoint radius of
approximately R and included angle A;
a first hollow wall block of modified arc segment shape,
having height n*H, two opposing sides with a midpoint radius
of approximately Rand included angle m* A, where n is an
integer greater than 1; and
a second hollow wall block of modified arc segment shape,
having height i *H, two opposing sides with a midpoint radius
of approximately R and included angle j * A, where m and j are
integers greater than 1, and wherein a plurality of the first
hollow wall blocks, the second hollow wall blocks and the solid
cap blocks are arranged to form a wall section having at least
180 degrees of arc with a circular inner diameter and a circular
outer diameter.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Mc Clinton
Risi
MacDonald
us 6,141,933
US 2007/0166112 Al
US 2011/0217127 Al
Nov. 7, 2000
Jul. 19, 2007
Sept. 8, 2011
The Examiner also relies on Coronado Stone Products
Installation Guide, October 21, 2011 (hereinafter "Coronado").
The following rejections are before us for review:
1. Claims 1, 2, 4--8, 10-16, and 18 are rejected under 35 U.S.C. § 103
as being unpatentable over McClinton, Coronado, and MacDonald.
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Application 14/311, 180
2. Claims 3 and 9 are rejected under 35 U.S.C. § 103 as being
unpatentable over McClinton, Coronado, MacDonald, and Risi.
3. Claims 17, 19, and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over McClinton and Coronado.
Claim 1
OPINION
Unpatentability of Claims 1, 2, 4---8, 10-16, and 18
over McClinton, Coronado, and MacDonald
The Examiner finds that McClinton discloses the claimed invention
except for: (1) a solid cap; and (2) the recited relative height and width
dimension. Final Action 3. The Examiner relies on Coronado as disclosing
blocks of varying heights and widths. Id. at 4. The Examiner relies on
MacDonald as teaching a solid cap block. Id. The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art at the time
of the invention to combine the teachings of McClinton, Coronado, and
MacDonald to achieve the claimed invention. Id. In particular, the
Examiner finds that a person of ordinary skill in the art would have found it
obvious to use curved blocks to arrive at the claimed 180 degrees of arc. Id.
at 4--5. According to the Examiner, a person of ordinary skill in the art
would have done this to design a wall with a decorative pattern, particularly
in view of McClinton's disclosure of wall sections with similar arcs and
circular inner and outer diameters. Id. at 4--5; Ans. 7-8.
Appellant argues that the proposed combination fails to disclose the
"claimed functionality" of curved sections that exhibit non-repeating block
arrangements. Appeal Br. 8-9. In response, the Examiner states that
Coronado explicitly describes varying the widths and heights of the blocks
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Appeal2018-000164
Application 14/311, 180
to form a pleasing pattern in a wall. Ans. 7; Final Act. 4 (page 8 describes
such a "decorative pattern"). The Examiner finds that it would have been
well within the skill level of an ordinary artisan to have made blocks with
varying included angles in order to achieve a varying width on the front of
the wall. Ans. 7. The Examiner points out that McClinton shows blocks
with circular inner and outer diameters. Id. at 8; Final Act. 4--5.
Appellant attempts to distinguish the Figure 13 embodiment of
McClintock as disclosing blocks with a curvilinear front, but flat back.
Appeal Br. 10.
Id.
This design from McClinton further emphasizes that the blocks
of McClinton were only envisioned to be uniform, and not to
vary, and not to have the other claimed limitations. It is only by
using the claims as a roadmap that one can combine McClinton
and Coronado and then modify them to yield the claimed
invention - the modifications are not minor modifications, but
rather are significant modifications that are required in order to
meet the claim limitations.
McClinton discloses a masonry building unit ("block") with a
curvilinear shape. McClinton, Abstract, col. 5, 11. 59---62, Fig. 5. McClinton
further discloses a block with a first linear portion formed with a flat front
and back surface and a second linear portion formed with curvilinear front
and back surfaces. Id. col. 5, 11. 12-16, Fig. 22. Figures 8-12 and 14--22
depict a variety of product applications combining flat blocks, curvilinear
blocks, and partially-flat/partially-curvilinear blocks with curved inner and
outer diameters. Id. Figure 13 of McClinton depicts a plurality of blocks
assembled to form a circular column. Id. Fig. 13. McClinton explicitly
discloses that, if desired, the blocks can be formed into a curvilinear wall
that is less that a complete circle. Id. col. 13, 11. 42-52. Appellant's
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Appeal2018-000164
Application 14/311, 180
argument that the Figure 13 embodiment of McClinton uses blocks with a
flat back is not persuasive in view of these teachings of McClinton. It would
not require more than ordinary skill to form a circular or partially circular
wall with the curved block depicted in Figure 5. Id. Fig. 5.
Coronado is an installation guide for a commercial, stone veneer
product. See generally Coronado. Coronado, among other things, teaches
that:
There is an infinite number of possible patterns you can create
when installing Quick Stack Stone. There is not a set or
recommended pattern to use and it's up to the installer to
artistically create a pleasing pattern and a beautiful job.
Coronado, p. 7 (the accompanying illustration depicts an "Ashlar" pattern).
The Examiner's applied art is sufficient to establish that it was known
to form curvilinear walls with curvilinear blocks and that it was known to
form walls using blocks of varying height and width. We view the
Examiner's applied art references as merely exemplary of that which is
otherwise well known to skilled practitioners. See In re Jacoby, 309 F .2d
513, 516 (CCPA 1962) (an artisan is presumed to know something about the
art apart from what the references disclose). We agree with the Examiner
that combining the two techniques of varying the arc angles, and heights and
widths, of wall blocks would have required no more than ordinary skill and
that a skilled artisan would have undertaken to combine the techniques with
a reasonable expectation of success. See Ans. 7-8; Final Act. 4--5.
Appellant provides neither evidence nor persuasive technical reasoning to
support an argument that combining McClinton's teaching of curved blocks
with Coronado's teaching of blocks with differing dimensions requires more
than ordinary skill. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421
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Application 14/311, 180
(2007) ("A person of ordinary skill is also a person of ordinary creativity,
not an automaton").
The Examiner's rationale for combining the references, namely "to
form a pleasing pattern in a wall," as taught by Coronado, is adequate to
support the rejection. Ans. 7; see Br. 9--11; In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (requiring an obviousness conclusion to be based on explicit
articulated reasoning with rational underpinning) cited with approval in KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). This rationale obviates
Appellant's hindsight argument, which is of no moment where the Examiner
provides a sufficient, non-hindsight reason to combine the references.
Appeal Br. 8; See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016). In
view of these prior art teachings , hindsight would not have been required, at
the time of Appellant's invention, to develop a block wall with curvilinear
portions and using blocks of varying height and width dimensions.
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion ofunpatentability is well-founded. The
subject matter of claim 1 is obvious. We sustain the Examiner's
unpatentability rejection of claim 1.
Claim 16
Claim 16 is an independent method claim that is substantially similar
in scope to the apparatus claim of claim 1. Claims App. In challenging the
rejection of claim 16, Appellant relies on essentially the same arguments that
we fully considered and found unpersuasive with respect to claim 1 and that
we find equally unpersuasive here. See Br. 11. We sustain the Examiner's
unpatentability rejection of claim 16.
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Appeal2018-000164
Application 14/311, 180
Claims 2, 4---8, 10-15, and 18
These claims are not argued separately and fall with claim 1. See
Br. 11; see 37 C.F.R. § 4I.37(c)(l)(iv) (failure to separately argue claims).
Unpatentability of Claims 3 and 9
over McClinton, Coronado, MacDonald, and Risi
Claim 3 depends directly from claim 2 and indirectly from claim 1
and adds the limitation: "wherein L1 is greater than L2." Claims App. The
Examiner relies on Risi as suggesting that blocks of different lengths can be
used to improve the look of the wall. Final Action 5. Appellant argues that
Risi merely teaches the use of multiple tongues and grooves to create a
misaligned or battered stack look. Br. 12.
Risi discloses an embodiment in Figure 5 where the third block from
the bottom of the stack is clearly longer than the block that is immediately
beneath it. Risi, Fig. 5. The Examiner's finding is thus supported by a
preponderance of the evidence.
We have considered the Appellant's remaining arguments are find
them to be without merit. Essentially, they are directed to claim limitations
where the "cap block" is longer than other blocks in the stack. Br. 12. We
do not consider such to be a sufficient advancement in the art to warrant the
grant of a patent. See Ritchie v. Vast Resources, Inc., 563 F.3d 1334, 1337
(Fed. Cir. 2009) ( explaining that the law deems obvious those modest,
routine, everyday, incremental improvements of an existing product or
process that do not involve sufficient inventiveness to merit patent
protection). Claim 9 is not argued separately and falls with claim 3.
We sustain the Examiner's unpatentability rejection of claims 3 and 9
over McClinton, Coronado, MacDonald, and Risi.
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Appeal2018-000164
Application 14/311, 180
Unpatentability of Claims 17, 19, and 20
over McClinton and Coronado
Claim 17 is an independent claim that is substantially similar in scope
to claim 1. Claims App. Appellant argues that a person of ordinary skill in
the art would not have created curvilinear blocks that "varied in any
manner." Br. 13. This argument is not persuasive. " A person of ordinary
skill is also a person of ordinary creativity, not an automaton." KSR, 550
U.S. at 421. We view Appellant's alleged patentable subject matter as
merely a predictable variation of the prior art. Id. at 417 ( explaining that
design incentives and market forces can prompt variations in the prior art).
We sustain the Examiner's unpatentability rejection of claim 17 over
McClinton and Coronado and also sustain the rejection of claims 19 and 20
as not separately argued.
DECISION
The decision of the Examiner to reject claims 1-20 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)(l )(iv).
AFFIRMED
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