Ex parte MOSTKOFF

Board of Patent Appeals and Interferences

Feb 24, 1998

08145775 (B.P.A.I. Feb. 24, 1998)

Application for patent filed October 29, 1993. According1
to appellant, this application is a Continuation-In-Part of
application 07/948,159, now U.S. Patent 5,259,695, issued
November 9, 1993, which is a Continuation of application
07/800,857, now abanoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BENJAMIN J. MOSTKOFF
__________
Appeal No. 96-3404
Application 08/145,7751
__________
ON BRIEF
__________
Before MEISTER, FRANKFORT and McQUADE, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-3404
Application 08/145,775
2
Benjamin J. Mostkoff (the appellant) appeals from the
final rejection of claims 1-16, the only claims present in the
application.
The appellant’s invention pertains to (1) an artificial
reef module, (2) an artificial reef module mold and (3) a
method for
forming an artificial reef module. Independent claims 1, 6
and 8 are further illustrative of the appealed subject matter
and read as follows:
1. An artificial reef module for positioning on the
bottom of a body of water comprising, in combination,
said module having a solid filled body
with a plurality of substantially
solid imperforate planar faces,
said body and its faces comprising a
non-nesting module which, in
combination with other like modules,
will not nest when on the bottom of
the body of water,
said body being formed of concrete.
6. An artificial reef module mold, said mold comprising
in combination,
a plurality of triangular faces, each of which
is equilateral, one of which opens upwardly.
Appeal No. 96-3404
Application 08/145,775
3
8. A method for forming an artificial reef module out of
waste material, including concrete not utilized and
returned from a job site by a concrete carrier vehicle,
and tire chips, comprising the steps of:
forming at least one mold, having a plurality of
outstanding triangular walls,
admixing at least 25% by volume of the interior
portion of said mold with tire chips and spent
concrete, and
pouring said admixture into the concrete mold,
whereby when the concrete mixture sets, the
artificial reef module may be removed.
The references relied on by the examiner are:
Leeds et al. (Leeds) 1,812,300 Jun. 30, 1931
Harza 2,344,302 Mar. 14, 1944
Danel et al. (Danel) 2,766,592 Oct. 16, 1956
Viner 3,786,997 Jan. 22, 1974
Creter, Jr. et al. (Creter) 4,502,816 Mar. 05, 1985
Kiselewski 4,997,309 Mar. 05, 1991
Waters 5,080,526 Jan. 14, 1992
(filed May 16, 1989(PCT))
Martin 5,229,051 Jul. 20, 1993
(parent filed Sep. 15, 1989)
Claims 1, 2, 11 and 12 stand rejected under the
judicially created doctrine of obviousness-type double
patenting.
Claim 1 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Waters.
Claim 2 stands rejected under 35 U.S.C. § 103 as being
Appeal No. 96-3404
Application 08/145,775
In the final rejection claim 6 was rejected under 352
U.S.C. § 103 as being unpatentable over Harza. In the answer
the examiner attempted to change the statutory basis from §
103 to § 102(b) without setting forth this change as a new
ground of rejection. Such a procedure on the part of the
examiner is improper and, accordingly, the rejection stands as
set forth in the final rejection (i.e., under 35 U.S.C. § 103
as being unpatentable over Harza).
This rejection was set forth as a new ground of3
rejection in the answer.
4
unpatentable over Waters in view of Martin in view of
Kiselewski.
Claims 3, 10 and 16 stand rejected under 35 U.S.C. § 103
as being unpatentable over Waters in view of Viner.
Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Waters in view of Leeds.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Harza.2
Claim 7 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Harza in view of Creter.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Harza in view of Martin, Kiselewski
and Viner.3
Appeal No. 96-3404
Application 08/145,775
5
Claims 11-13 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Waters in view of Martin, Kiselewski
and Viner.
Claims 14 and 15 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Danel in view of Martin and
Kiselewski.
The rejection based on the judicially created doctrine of
obviousness-type double patenting is explained on pages 3-7 of
the final rejection. The rejections based on prior art are
explained on pages 4-15 of the answer. As evidence of
nonobviousness the appellant has relied on an affidavit by
Benyon.
OPINION
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner, the evidence of nonobviousness
supplied by the appellant and the respective positions
advanced by the appellant in the brief and reply brief and by
the examiner
Appeal No. 96-3404
Application 08/145,775
6
in the answer. As a consequence of this review, we will
sustain
the rejection of claims 1, 2, 11 and 12 under the judicially
created doctrine of obviousness-type double patenting, the
rejection of claim 1 under 35 U.S.C. § 102(e) and the various
rejections of claims 2-6 and 8-16 under 35 U.S.C. § 103. We
will not, however, sustain the rejection of claim 7 under 35
U.S.C.
§ 103. Additionally, pursuant to our authority under the
provisions of 37 CFR § 1.196(b), we will enter a new rejection
of claim 7 under 35 U.S.C. § 112, second paragraph.
Considering first the rejection of claims 1, 2, 11 and 12
under the judicially created doctrine of obviousness-type
double patenting, the appellant’s sole response to this
rejection is that “[a]pplicant offered a terminal disclaimer
to avoid” this rejection (see brief, page 8). The record dos
not show that a terminal disclaimer has in fact been filed
and, since the appellant has not presented any arguments as to
why the examiner’s position might be in error, we will sustain
the rejection of claims 1, 2, 11 and 12 based on the
judicially created doctrine of obviousness-type double
Appeal No. 96-3404
Application 08/145,775
7
patenting.
Turning to the rejection of claim 1 under 35 U.S.C. §
102(e) as being anticipated by Waters, it is well settled that
an anticipation under § 102 is established only when a single
prior
art reference discloses, either expressly or under the
principles
of inherency, each and every element of a claimed invention.
RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). The law of
anticipation,
however, does not require that the reference teach what the
appellant is claiming, but only that the claims on appeal
"read on" something disclosed in the reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983).
According to the appellant:
Appeal No. 96-3404
Application 08/145,775
8
Waters illustrates one of [the] shapes typical of
the prior art in Figure 1C, which figure is also
cited by the Examiner. Note that Waters’ Figure 1C
is a modified tetrahedron, at best, but nonetheless
is a “solid concrete member.” The artificial reef
module of applicant’s claim 1 is distinguished over
the tetrahedral shape in Figure 1C of Waters by the
language of claim 1: “said module having a solid
filled body with a plurality of substantially solid
imperforate planar faces.” Claim 1, lines 3-4. The
description disclosed in Waters does not
unambiguously describe a tetrahedron with “solid
imperforate planar faces.” Waters does use the term
tetrahedron for artificial reef modules, but also
shows that the shape of the module has been modified
by rounding the corners and indenting the sides,
such that the resulting shape no longer has “planar
faces” and sharp corners. [Brief, page 13.]
We are unpersuaded by the appellant’s arguments. While
the appellant is correct in noting that the corner and edges
of the
tetrahedron illustrated by Waters in Fig. 1C are rounded (as
distinguished from the sharp edges and corners depicted by the
appellant and described by Danel with respect to a tetrahedron
in the paragraph bridging columns 1 and 2), there is no claim
limitation which would preclude such an arrangement. It is
Appeal No. 96-3404
Application 08/145,775
9
well settled that features not claimed may not be relied upon
in support of patentability. In re Self, 671 F.2d 1344, 1348,
213 USPQ 1, 5 (CCPA 1982).
As to the appellant’s contention that Waters does not
disclose “solid imperforate planar faces,” Waters states that:
Artificial barrier reefs are in use in many
areas and they are typically made up of a plurality
of erosion protection units collected together to
form a mass. The erosion protection units are
typically solid concrete members. Many different
shapes of erosion protection units are produced but
the most common shapes used are tetrapod and
quadrapods which are illustrated in FIG. 1 of the
accompanying drawings.
Tetrahedral solid
blocks and hollow tetrahedral blocks are also
produced. [Column 1, lines 8-17; emphasis ours.]
Waters thereafter states that member 5 depicted in the prior
art FIG. 1C is a “solid tetrahedron.” Inasmuch as this prior
art tetrahedron is “solid” and formed of concrete, we are of
the
opinion that Waters teaches “solid imperforate planar faces”
as claimed. Although the appellant has referred to the sides
of Waters’ sides has being “indented,” we are at a loss to
Appeal No. 96-3404
Application 08/145,775
The Random House Dictionary of the English Language,4
Second Edition-Unabridged, Random House Inc., New York, N.Y.
As to the evidence of nonobviousness supplied by the5
appellant, we note that such evidence, no matter how striking,
cannot overcome a rejection based on lack of novelty. See,
e.g., In re Malagari, 499 F.2d 1297, 1302, 182 USPQ 549, 553
(CCPA 1974) and In re Wiggins, 488 F.2d 538, 543, 179 USPQ
421, 425 (CCPA 1973).
10
understand such a contention since Waters neither depicts nor
describes the sides of the solid tetrahedron 5 as being
“indented.” Viewing FIG. 1C, of Waters the major portion of
the sides or faces are clearly depicted as being “planar.”
Moreover, The Random House Dictionary defines a “tetrahedron”4
as -- 1. A solid contained by four plane faces; a triangular
pyramid --. Thus, by definition the faces of a tetrahedron
are “planar.”
In view of the foregoing, we will sustain the rejection
of claim 1 under 35 U.S.C. § 102(e) as being anticipated by
Waters.5
Turning now to the various rejections under 35 U.S.C. §
103, we initially note that in order to establish obviousness
the cited references or prior art need not expressly suggest
making
Appeal No. 96-3404
Application 08/145,775
11
the combination. B.F. Goodrich Co. V. Aircraft Braking
Systems Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed.
Cir. 1996) and In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d
1500, 1502 (Fed. Cir. 1988). Instead, the test for obvious-
ness is what the
combined teachings of the references would have suggested to
those of ordinary skill in the art. In re Young, 927 F.2d
588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Moreover, in evaluating such references it is proper to take
into account not only the specific teachings of the references
but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom. In re Preda, 401
F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). It is also well
settled that nonobviousness cannot be established by attacking
the references individually when the rejection is predicated
upon a combination of prior art disclosures. See In re Merck
& Co. Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir.
Appeal No. 96-3404
Application 08/145,775
12
1986).
Considering specifically the rejection of claim 2 under
35 U.S.C. § 103 as being unpatentable over Waters in view of
Martin and Kiselewski, the appellant notes various alleged
deficiencies of the references individually and urges that
there is no
suggestion to combine the teachings of the references in the
manner proposed by the examiner. We disagree. As we have
noted above in the § 102 rejection, Waters clearly teaches a
reef module in the form of a solid tetrahedron made of
concrete.
Martin is directed to the making of concrete posts and
suggests that as “an environmental benefit” the concrete may
also include filler of “recyclable rubber, e.g. from discarded
tires chipped to a size of 0.5 inch and smaller” (see column
1, lines 59 and 60). The appellant makes much of the fact
that Martin utilizes a polyurethane sleeve as an outer shell
for his posts, however, all of the features of the secondary
reference need not be bodily incorporated into the primary
Appeal No. 96-3404
Application 08/145,775
13
reference (see In re Keller, at 642 F.2d 425, 208 USPQ 881)
and the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the
exercise of independent judgment (Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889, 221 USPQ 1025, 1032 (Fed.
Cir. 1984). In our view, a combined consideration of Waters
and Martin would have fairly suggested to one of ordinary
skill in this art to utilize in the concrete tetrahedron of
Waters a filler of tire chips as taught Martin in order to
achieve Martin’s expressly stated advantage of providing an
environmental benefit by using recyclable rubber. Although
the examiner has additionally relied on the teachings of
Kiselewski, we see no need to resort to the teachings of this
references.
From our perspective, the combined teachings of Waters and
Martin establish the obviousness of the subject matter defined
by claim 2 within the meaning of 35 U.S.C. § 103.
Considering next the rejection under 35 U.S.C. § 103 of
claims 3, 10 and 16 as being unpatentable over Waters in view
of Viner, the examiner has taken the position that it would
Appeal No. 96-3404
Application 08/145,775
14
have been obvious to form the solid concrete tetrahedron
disclosed by Waters of “waste concrete which otherwise would
have to be dumped or salvaged . . .” in view of the teachings
of Viner. The appellant disagrees, vigorously contending that
“the essence of Viner teaches away from the using of [waste]
concrete to make concrete products before solidifying” (see
brief, page 22). We must point out, however, that the use of
“waste” unsolidified concrete vis-à-vis “other” unsolidified
concrete to form the artificial reef module is a distinction
of the process by which the module is made rather than a
structural distinction of the artificial reef module itself.
Claims 3, 10 and 16, however, are directed to a product (i.e.,
an artificial reef module), and not to the method of making
the product. Thus, notwithstanding the "product-by-process"
terminology of utilizing “waste” concrete
referenced by the appellant, the determination of patentabili-
ty of these claims is based on the product itself. That is,
the product defined by claims 3, 10 and 16 is unpatentable if
it is the same as or obvious from the product of the prior
art, even if the prior product was made by a different
Appeal No. 96-3404
Application 08/145,775
We also observe that Benyon in paragraph 7 of his6
declaration indicates that it was known that “waste concrete
may be used for oversized retaining blocks.”
15
process. See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964,
966 (Fed. Cir. 1985). Moreover, even if the recitation that
“waste” concrete was used to form the artificial reef modules
was construed to impart a structural limitation to the claimed
artificial reef module, the examiner has correctly noted that
Viner in column 1, lines 16-22, clearly teaches that “unused”
or “waste” concrete may be used to “make concrete products.” 6
Accordingly, the combined teachings of Waters and Viner would
have suggested to the artisan to make the prior art artificial
reef module disclosed by Martin in FIG. 1C of “waste” concrete
in view of Viner’s teaching of utilizing “waste” or “unused”
concrete rather than disposing of it “outside the plant area”
(column 1, lines 23 and 24). While the appellant contends
that Viner is primally concerned with utilizing waste
concrete by forming it into layers and thereafter crushing the
layers into aggregate, we must point out that patents are part
of the literature of the art and are relevant for all that
they contain. In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ
Appeal No. 96-3404
Application 08/145,775
16
275, 277 (CCPA 1968). In our view, the combined teachings of
Waters and Viner establish the obviousness of the subject
matter defined by claims 3, 10 and 16 within the meaning of 35
U.S.C. § 103.
Turning now to the rejection of claim 4 under 35 U.S.C. §
103 as being unpatentable over Waters in view of Leeds, the
appellant argues that Leeds utilizes his U-shaped hook as a
bail by which the module may be conveniently transported and
handled rather that removing the module from a mold. However,
“[a]s long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the
law does not require that the references be combined for the
reasons contemplated by the inventor” (In re Beattie, 974 F.2d
1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992)) and all the
utilities or benefits of the claimed invention need not be
explicitly disclosed by the prior art references to render the
claim unpatentable under section 103 (see In re Dillon, 919
F.2d 688,
692, 696, 16 USPQ2d 1897, 1901, 1904 (Fed. Cir. 1990) (in
banc), cert. denied, 500 U.S. 904 (1991)). See also In re
Appeal No. 96-3404
Application 08/145,775
17
Kemps, 97 F.3d 1427, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996).
Here, one of ordinary skill in this art would have found it
obvious to provide the artificial reef module disclosed by
Waters in FIG. 1C with a U-shaped hook in view of the
teachings of Leeds in order to achieve Leeds’s expressly
stated advantage of conveniently handling and transporting the
module (see lines 63-66 of page 1 of Leeds). Accordingly, we
share the examiner’s view that a combined consideration of
Waters and Leeds establishes the obviousness of the subject
matter defined by claim 4 within the meaning of 35 U.S.C. §
103.
Considering next the rejection of claims 5 and 6 under 35
U.S.C. § 103 as being unpatentable over Harza, the appellant
argues that
Harza envisions the placement of many single molds
adjacently to each other so that concrete can be
poured from a moving mixer across the molds. Harza
indicates that screeding is required to ensure that
the molds are filled completely so that the modules
produced are all of equal size. How so many
individual molds can be placed in such a fashion as
to allow screeding without turning over the
individual molds is not explained.
The
invention of claims 5 and 6 avoids numerous problems
associated with Harza’s teaching. First,
applicant’s mold is a free-standing, rigid, single
Appeal No. 96-3404
Application 08/145,775
18
mold that produces a plurality of artificial reef
modules. Thus, stacking individual molds next to
each other is unnecessary . . . . [Brief, page 27.]
It is true that Harza only states that his blocks or modules
are formed “with the points downward in metal forms which can
be packed continuously together . . .” (page 2, column 2,
lines 62 and 63) and it is not altogether clear how the forms
are “packed.” We must point out, however, that independent
claim 6 does not require a single mold that produces a
plurality of artificial reef modules as the appellant argues.
Instead, claim 6 more broadly recites a “mold” having a
“plurality of triangular faces . . .” which, in our view, is
fairly suggested by even a single form or mold of Harza. Even
with respect to claim 5 which sets forth at least four molds
“joined together at the upper portion thereof,” we note that
the conclusion of obviousness may be made from "common
knowledge and common sense" of the person of ordinary skill in
the art (see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545,
549 (CCPA 1969)) skill is presumed on the part of those
practicing in the art (see In re Sovish, 769 F.2d 738, 743,
226 USPQ 771, 774 (Fed. Cir. 1985)). Therefore, we perceive
Appeal No. 96-3404
Application 08/145,775
19
that the artisan would have found in obvious as a matter of
“common sense” to join the “packed” forms or molds together at
an upper portion thereof if, for no other reason, than to
prevent them
from tipping over. This being the case, we are satisfied that
a combined consideration of Waters and Harza establishes the
obviousness of the subject matter defined by claims 5 and 6
within the meaning of 35 U.S.C. § 103.
Turning next to the rejection of claim 7 under 35 U.S.C.
§ 103 as being unpatentable over Harza in view of Creter, the
examiner has relied upon Creter for a teaching of grooves.
Claim 7, however, requires the grooves to be vertically
oriented whereas the grooves 16 in Creter are horizontally
oriented. Since we find nothing in the combined teachings of
Harza and Creter which would fairly suggest vertically
oriented grooves, we will not sustain the rejection of claim
7 under 35 U.S.C. § 103 based on these two references.
We now turn to the rejection of claims 8 and 9 under 35
U.S.C. § 103 as being unpatentable over Harza in view of
Martin, Kiselewski and Viner. As the examiner has noted,
Harza teaches that concrete modules are formed “with the
Appeal No. 96-3404
Application 08/145,775
20
points downward in metal forms which can be packed
continuously together . . .” (page 2, column 2, lines 62 and
63). Martin teaches the making of concrete posts and suggests
that as “an environmental benefit” the concrete may also
include filler of “recyclable rubber, e.g. from discarded
tires chipped to a size of 0.5 inch and smaller” (see column
1, lines 59 and 60). Viner in column 1, lines 16-22, clearly
teaches that “unused” or “waste” concrete may be used to “make
concrete products.” In our view, one of ordinary skill in
this art would have found it obvious to utilize tire chips in
the method of Harza as taught by Martin in order to achieve
Martin’s expressly stated advantage of providing an
environmental benefit by using recyclable rubber. As to the
particular percentage of tire chips and “spent” concrete, the
selection of an optimum value for such a variable is
ordinarily an obvious matter which is within the skill of the
art. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219
(CCPA 1980). Note also In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990). Although the
examiner has additionally relied on the teachings of
Appeal No. 96-3404
Application 08/145,775
21
Kiselewski, we see no need to resort to the teachings of this
references. We are further of the view that one of ordinary
skill in this art would have found it obvious to use “spent”
concrete in the method Harza in light of the teaching by Viner
that “unused” concrete may be used to form “concrete products”
for the reasons stated above with respect to the § 103
rejection of claims 3, 10 and 16.
The appellant argues that Harza discloses that
“hydrostatic pressure can easily lift and dislodge revetment
blocks from an embankment. Harza, pg. 1, col. 2, lines 5-15”
(reply brief, page 3) and, thus, teaches away. We must point
out, however, that the noted portion of Harza refers, not to
his blocks as the appellant would have us believe, but to
“concrete slabs” of the prior art (see column 1, lines 39 and
54). It is also the appellant’s contention that Harza’s
modules are not used for forming an artificial reef; however,
claims 8 and 9 are directed to a method of making (rather than
using) modules. In any event, the artisan would have
recognized as a matter of “common sense” that Harza’s modules
would be useful in reef construction, particularly in view of
the mention in Harza of “shore or beach protection against
Appeal No. 96-3404
Application 08/145,775
22
waves.” The appellant also argues that his modules are made
without screeding, however, even if this is the case, there is
no claimed limitation which would preclude screeding.
Features not claimed may not be relied upon in support of
patentability. In re Self, supra. It therefore follows that
we are of the opinion that a combined consideration of Harza,
Martin and Viner establishes the obviousness of the subject
matter defined by claims 8 and 9 within the meaning of 35
U.S.C. § 103.
Considering next the rejection of claims 11-13 under 35
U.S.C. § 103 as being unpatentable over Waters in view of
Martin, Kiselewski and Viner, we are of the opinion that it
would have been obvious to utilize in the formation of the
concrete reef module disclosed by Waters in FIG 1C disposable
pieces of resilient material in view of the teachings Martin
for the same reasons that we set forth above with respect to
the § 103 rejection of claim 2. As in the case of the § 103
rejection of claim 2, we see no need to rely on the teachings
of Kiselewski. As we have set forth above in regard to the §
103 rejection of claims 3, 10 and 16, we are of the opinion
that the provision of “waste” concrete is a product-by-process
Appeal No. 96-3404
Application 08/145,775
23
limitation which cannot serve to structurally distinguish the
reef module defined by these claims over the reef module of
Waters, as modified by Martin. In any event, even if the
provision of “waste” concrete was deemed to be a structural
limitation, we are of the opinion that it further would have
been obvious to utilize “waste” concrete in the manufacture of
the reef module disclosed by Waters in FIG. 1C for the same
reasons we have set forth above in regard to the § 103
rejection of claims 3, 10 and 16.
Accordingly, we are of the opinion that a combined
consideration of Waters, Martin and Viner establishes the
obviousness of the subject matter defined by claims 11-13
within the meaning of 35 U.S.C. § 103.
Turning last to the rejection of claims 14 and 15 under
35 U.S.C. § 103 as being unpatentable over Danel in view of
Martin and Kiselewski, it is the examiner’s position that
Danel discloses a solid artificial reef module
made from concrete and in the form of a
parallelepiped but lacks having tire chips in the
concrete body. The most common parallelepipeds are
cubes which by definition have planar faces
intersecting with each adjacent face at an angle
which is perpendicular. [Answer, page 11.]
It is thus the examiner’s position that Danel suggests a
Appeal No. 96-3404
Application 08/145,775
24
concrete module having each face intersecting with an adjacent
face “at an angle which is perpendicular.” The examiner
thereafter concludes that it would have been obvious to
include resilient pieces of tire chips in the concrete module
of Danel in view of the teachings of Martin and Kiselewski.
On the other hand, the appellant argues that:
It is true that Danel refers to a parallelepiped in
his disclosure, though perhaps he uses the term
inaccurately. The blocks disclosed in the Danel’s
figures do not have pairs of parallel planar
surfaces, but instead have non-parallel surfaces for
the purposes of creating the “necessary high
proportion of voids.” Danel (col 4 lines 57-58).
[Brief, page 32.]
We are unpersuaded by the appellant’s contentions. There
is absolutely nothing to indicate that Danel has used the term
parallelepiped “inaccurately” as the appellant would have us
believe. Instead Danel utilizes the term “parallelepiped” to
describe the blocks of the prior art. More specifically with
reference to these prior art blocks Danel states that
Such sloping concrete structures have been
constructed, for example, with blocks of concrete,
which are usually given the form of a
parallelepiped, because that form is very simple.
[Column 1, lines 30-34.]
See also column 2 lines and 3 of Danel wherein in is stated
Appeal No. 96-3404
Application 08/145,775
25
that “the tetrahedron blocks present the same difficulties at
[sic, as] the parallelepiped blocks although in a reduced
degree.”
While it is true that Danel in discussing the prior art
does not expressly mention the exact kind of parallelepiped
blocks, we observe that artisans must be presumed to know
something about the art apart from what the references
disclose. See In re Jacoby, 309 F.2d 513, 516, 135 USPQ 317,
319 (CCPA 1962). Moreover, as we have noted above, the
conclusion of obviousness may be made from "common knowledge
and common sense" of the person of ordinary skill in the art
(see Bozek, 416 F.2d at 1390, 163 USPQ at 549) and skill is
presumed on the part of those
practicing in the art (see Sovish, 769 F.2d at 743, 226 USPQ
at 774). Therefore, we perceive that the above-quoted portion
of Danel would have fairly suggested to the artisan that such
“simple” parallelepipeds would include commonplace
parallelepipeds such as rectangular structures. As to the
provision of the modules having pieces of resilient material
such as tire chips therein, we are of the opinion that such a
Appeal No. 96-3404
Application 08/145,775
26
provision would have been obvious in view of the teachings of
Martin for essentially the same reasons set forth above with
respect to the § 103 rejection of claim 2. As in the case of
claim 2, we see no need to rely on the teachings of
Kiselewski. In view of the above, we are of the opinion that
the combined teachings of Danel and Martin establish the
obviousness of the subject matter defined by claims 14 and 15
within the meaning of 35 U.S.C. § 103.
In summary, it is our conclusion that the applied
reference evidence establishes the obviousness of the subject
matter defined by claims 2-6 and 8-16 within the meaning of 35
U.S.C. § 103.
Having arrived at the conclusion that the evidence of
obviousness as applied in the rejection of the claims on
appeal
is sufficient to establish the obviousness of the subject
matter defined by claims 2-6 and 8-16 within the meaning of 35
U.S.C.
§ 103, we recognize that the evidence of nonobviousness
submitted by the appellant must be considered en route to a
determination of obviousness/nonobviousness under 35 U.S.C.
Appeal No. 96-3404
Application 08/145,775
27
103. See Stratoflex Inc. v. Aeroquip Corp.,713 F.2d 1530,
1538, 218 USPQ 871, 879 (Fed. Cir. 1983). Accordingly, we
consider anew the issue of obviousness under 35 U.S.C. 103,
carefully evaluating therewith the objective evidence of
nonobviousness and argument supplied by the appellant. See In
re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984).
As evidence of nonobviousness the appellant has relied on
an affidavit by Benyon. While the affiant states that the
company for which he works entered into an license agreement
with the appellant for a reef module “disclosed in the patent
application referenced above,” there is nothing to indicate
that the subject matter licensed was that of the claimed
invention. In this regard, we observe that evidence of
commercial success is relevant only if it flows from the
merits of the claimed invention. Sjolund v. Musland, 847 F.2d
1573, 1582, 6 USPQ2d
2020, 2028 (Fed. Cir. 1988). In other words, the commercial
Appeal No. 96-3404
Application 08/145,775
28
success must be due to claimed features, and not unclaimed
features. Joy Technologies v. Manbeck, 751 F. Supp. 225, 231,
17 USPQ2d 1257, 1260-61 (D.D.C. 1990), aff’d, 959 F.2d 226,
229, 22 USPQ2d 1153, 1156 (Fed. Cir. 1992) (features
responsible for commercial success were recited only in
allowed dependent claims, and therefore the evidence of
commercial success was not commensurate in scope with the
broad claims at issue). Moreover, the affiant provides no
facts that tend to establish that the license was requested
and obtained out of recognition and respect for the claimed
invention as opposed to being requested and obtained for other
reasons. EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898,
225 USPQ 20, 26 (Fed. Cir.), cert. denied, 474 U.S. 843
(1985)(license programs sometimes succeed because they are
mutually beneficial to the license group or because of
business judgment that it is cheaper to take licenses than to
defend infringement suits, or for other reasons unrelated to
the unobviousness of the licensed subject matter).
When all the evidence and argument are considered anew it
is our conclusion that, on balance, the evidence and argument
Appeal No. 96-3404
Application 08/145,775
29
presented by the appellant taken as a whole fails to outweigh
the evidence of obviousness established by the prior art. See
Newell Companies Inc. v. Kenney Manufacturing Co., 864 F.2d
757, 768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988) and In re
Beattie, 974 F.2d 1309, 1313, 24 USPQ2d 1040, 1043 (Fed. Cir.
1992). This being the case we will sustain the rejections of
claims 2-6 and 8-16 under 35 U.S.C. § 103.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejection.
Claim 7 is rejected under 35 U.S.C. § 112, second
paragraph. In order to satisfy the second paragraph of § 112,
a claim must accurately define the invention in the technical
sense. See In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486,
492-93 (CCPA 1973). Moreover, while the claim language of
claim 7 may appear, for the most part, to be understandable
when read in abstract, no claim may be read apart from and
independent of the supporting disclosure on which it is based.
See In re Cohn, 438 F.2d 989, 993, 169 USPQ 95, 98 (CCPA
1971). Applying these principles to the present case, we fail
to understand how the plurality of grooves can be considered
Appeal No. 96-3404
Application 08/145,775
30
to be “oriented vertically” as claimed. As depicted in FIG. 9
and described on pages 10 and 16 of the specification, the
grooves line in the faces of tetrahedron and thus are at a
substantial angle to the vertical. Accordingly, the language
in claim 7 when read in light of the specification results in
an inexplicable inconsistency that renders it indefinite.
In summary:
The rejection of claims 1, 2, 11 and 12 under the judi-
cially created doctrine of obviousness-type double patenting
is affirmed.
The rejection of claim 1 under 35 U.S.C. § 102(e) as
being anticipated by Waters is affirmed.
The rejections under 35 U.S.C. § 103 of (1) claim 2 as
being unpatentable over Waters in view of Waters and
Kiselewski, (2) claims 3, 10 and 16 as being unpatentable over
Waters in view of Viner, (3) claim 4 as being unpatentable
over Waters in view of Leeds, (4) claims 5 and 6 as being
unpatentable over Harza, (5) claims 8 and 9 as being
unpatentable over Harza in view of Martin and Kiselewski, (6)
claims 11-13 as being unpatentable over Waters in view of
Martin, Kiselewski and Viner and (7) claims 14 and 15 as being
Appeal No. 96-3404
Application 08/145,775
31
unpatentable over Danel in view of Martin and Kiselewski are
all affirmed.
The rejection of claim 7 under 35 U.S.C. § 103 as being
unpatentable over Harza in view of Creter is reversed.
A new rejection of claim 7 has been made under 35 U.S.C.
§ 112, second paragraph.
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new
ground of rejection shall not be considered final for purposes
of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
Appeal No. 96-3404
Application 08/145,775
32
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so
rejected or a showing of facts relating to the claims so
rejected, or both, and have the matter reconsidered by
the examiner, in which event the application will be
remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for rehearing thereof.
Appeal No. 96-3404
Application 08/145,775
33
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
37 CFR § 1.196(b)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-3404
Application 08/145,775
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Appeal No. 96-3404
Application 08/145,775
35
Jack E. Dominik
Miami Lakes Corporate Plaza
6175 N.W. 153rd Street
Suite 225
Miami Lakes, FL 33014