Ex Parte Ness

Patent Trial and Appeal Board

Mar 15, 2016

12401172 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/401, 172 03/10/2009
25281 7590 03/17/2016
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
FIRST NAMED INVENTOR
Jeffrey A. Ness
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.
N295.108.103 5354
EXAMINER
BUTLER, PATRICK NEAL
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
03/17/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
USPTO.PA TENTS@dbclaw.com
dmorris@dbclaw.com
DBCLA W-Docket@dbclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY A. NESS
Appeal2014-006457
Application 12/401,172
Technology Center 1700
Before TERRY J. OWENS, ROMULO H. DELMENDO and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 seeks our review under 35 U.S.C. § 134(a) of a
decision of the Primary Examiner to reject claims 1 and 4. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a method for making masonry
blocks with a notch using a mold assembly by adjusting the depth of the
notch for each block in a series of masonry blocks to provide masonry
1 The Appellant states that "Ness Inventions, Inc." is the real party in interest
(Appeal Brief filed July 3, 2013, hereinafter "Appeal Br.," 3).
Appeal2014-006457
Application 12/401,172
blocks with varying set-backs (Specification, hereinafter "Spec.," 1, 11. 17-
19; 2, 11. 19-26). See, e.g., Figures 24A and 24B, which illustrate the
varying set-backs for flange 1084 created by adjusting the depth of the notch
in one mold (Spec. 30, 1. 25-31, 1. 13). Representative claim 1 is reproduced
from page 13 of the Appeal Brief (Claims App.), with the key limitation at
issue indicated in italicized text, as follows:
1. A method of molding a series of masonry blocks in
a mold cavity of a mold assembly formed by a plurality of mold
components, each block having an upper face, a lower face, a
front face, a rear face, and a pair of opposing side face, one
mold component of the plurality of mold components having a
notch having an adjustable depth in a direction from the front
face to the rear face of the block when the block is disposed
within the mold cavity; the method for forming each masonry
block of the series comprising:
adjusting the depth of the notch of the one mold
component for successive blocks of the series immediately
following an initial block of the series such that for each block
of the series, except the initial block of the series, the depth is
dij]erent from the depth employed when forming an
immediately preceding block of the series, wherein, for the
initial block of the series, the depth of the notch is adjusted to
an initial depth not based upon a depth of the notch of an
immediately preceding block;
filling the mold cavity with dry cast concrete;
compacting the dry cast concrete to form a pre-cured
masonry block with a set-back flange formed by the notch, the
set-back flange extending perpendicularly from the lower face
of the pre-cured masonry block along an edge shared with the
rear face and having a depth in a direction from the front face to
the rear face of the block equal to the depth of the notch.
2
Appeal2014-006457
Application 12/401,172
THE REJECTION
The Examiner rejected claims 1 and 4 under 35 U.S.C. § 103(a) as
being unpatentable over Woolford et al. ("Woolford"), 2 Platte et al.
("Platte")3 and Dean.4 (Examiner's Answer mailed March 12, 2014,
hereinafter "Ans.," at 2; Non-Final Office Action entered December 05,
2012, hereinafter "Non-Final Act.," at 2--4.)
DISCUSSION
We affirm this rejection for essentially reasons as set forth in the
Examiner's Answer and the Non-Final Office Action. Nevertheless, we add
the following comments primarily for emphasis.
In arguing for the reversal, the Appellant argues independent claims 1
and 4 together, focusing only on claim 1. Therefore, consistent with 37
C.F.R. § 41.37(c)(l)(iv), we confine our discussion to representative claim
1.
The Examiner found that Woolford describes a method for molding
masonry blocks including every limitation of claim 1 except for disclosing
"adjusting the depth of the notch of one mold component for successive
blocks of a series ... such that for each block of the series ... the depth is
different from the depth employed when forming an immediately preceding
block of the series" in the manner as recited by the claim (Non-Final Act. 3).
The Examiner found further that Platte teaches "modifying mold sizes
via an insert within a recess in the mold" and Dean "teaches creating a
setback distance different for each block" (id. at 3--4). Based on these
2 US 5,827,015, issued October 27, 1998.
3 US 4,330,248, issued May 18, 1982.
4 US 20050086892 Al, published April 28, 2005.
3
Appeal2014-006457
Application 12/401,172
findings, the Examiner concluded that a person of ordinary skill in the art
would have been prompted to combine Woolford with Platte and Dean in the
manner claimed by the Appellant (id.). Specifically, the Examiner
concluded that, in view of Platte, a person ordinary skill in the art would
have been prompted to use an insert into the mold of Woolford to adjust the
notch size "without requiring additional heads" and, in view of Dean, a
person ordinary skill in the art would have been motivated to "vary the
setback distance for each block to create a natural look" (id.).
In arguing against the Examiner's conclusion of obviousness, the
Appellant argues Woolford discloses a mold with a fixed dimension instep
which "does not have an adjustable depth" (Appeal Br. 8). The Appellant
then concedes that Platte discloses adjustable sliding member within a mold,
but argues "Platte explicitly teaches that, once adjusted, slide member 40 is
locked in place ... during successive cycles" (id. at 9). Finally, the
Appellant concedes that Dean discloses "vary[ing] the setback of blocks in
order for a block wall [] to have a natural look", but contends Dean "makes
no teaching whatsoever as to how the blocks are molded, and certainly
makes no teaching or suggestion that successively formed blocks must have
a different setback distance" (id. at 10).
Therefore, the Appellant contends, inter alia, that "[ n ]one of the
references teach or suggest adjusting the depth of a notch for each
successive block of a series so that the notch depth is different from a notch
depth employed for the immediately preceding block of the series" as
required by the claims (Appeal Br. at 10). Additionally, the Appellant
contends that "[a ]t best, one of ordinary skill in the art would modify
Woolford in view of Platte and Dean, so as to employ the adjustable element
4
Appeal2014-006457
Application 12/401,172
of Platte to form a first series of blocks with the adjustable element set at a
first depth, then manually adjust the adjustable element to form a second
series of blocks with the adjustable element set at a second depth, and so on,
to thereby create blocks wherein the setback distance is the not the same for
every block as taught by Dean" (id. at 10-11 ).
We have considered fully the Appellant's analysis of the Woolford,
Platte and Dean and the Examiner's interpretation of the teachings.
However, we find that Appellant's arguments based on that analysis fail to
reveal any reversible error in the Examiner's factual findings, analysis, and
conclusions of obviousness.
The Supreme Court of the United States stated that "[ w ]hen there is a
design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp."
KSR Int'! Co. v Teleflex Inc., 550 U.S. 398, 421 (2007). "If this leads to the
anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense." Id. Furthermore, the test of obviousness is not
whether an express suggestion of the claimed invention is present in any or
all references but rather what the references taken collectively would have
suggested to those of ordinary skill in the art presumed to be familiar with
them. In re Rosselet, 347 F.2d 847, 851(CCPA1965); In re Hedges, 783
F.2d 1038, 1041 (Fed. Cir. 1986). Additionally, a reference may be relied
upon for all that it would have reasonably suggested to one having ordinary
skill the art. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) ("the mere absence from the prior art of a teaching or a limitation
5
Appeal2014-006457
Application 12/401,172
recited in the patent at issue is insufficient for a conclusion of
no no bviousness").
We cannot discern substantial differences in the Examiner's and the
Appellant's factual determinations of the individual references, but note that
the Appellant disagrees on what these teachings would have suggested to a
person of ordinary skill in the art. Specifically, as found by the Examiner
(Ans. 3) and conceded by the Appellant (Br. 7), Woolford generally
discloses the width of the setback surface ranges from "about 1 inch to about
2 inches" but fails to disclose adjusting the setback by adjusting the depth of
a notch within the mold (col. 6, 11. 24-26; Figs. 3, 6). However, as found by
the Examiner (Ans. 2) and acknowledged by the Appellant (Br. 9), Platte
discloses an adjustable insert for molds to adjust a volume of a molded
product (col. 1, 11. 43-55). Additionally, Dean, as found by the Examiner
(Ans. 3) and acknowledged by the Appellant (Br. 10), discloses varying the
setback of each block in a course in order for the block wall to have "a
natural look" (,-i 0032). Based on these findings, we conclude that the
claimed subject matter would have been obvious to a person having ordinary
skill in the art in view of the collective teachings of Woolford, Platte and
Dean to mold products with varying setbacks in order to provide them with
"a natural look" as suggested by Dean. The Appellant's arguments,
recounted above, fail to reveal any reversible error in the Examiner's
conclusion.
Specifically, in view of the disclosure of Dean, we find it reasonable
to conclude that one of ordinary skill in the art would have found it
predictable to modify Woolford' s masonry block molding method by
varying the setback for successive blocks in a series to provide a natural look
6
Appeal2014-006457
Application 12/401,172
as required by the claims, as Platte articulates a known technique for
adjusting an insert volume of a mold. See KSR, 550 U.S. at 416--417 (The
claim would have been obvious because a particular known technique was
recognized as part of the ordinary capabilities of one skilled in the art).
Stated differently, in view of the collective teachings of Woolford, Dean and
Platte, we find that it is reasonable to conclude that adjusting the mold
setback for successive blocks in a series would have been obvious to a
person ordinary skill in the art as merely implementing an identified solution
in the form of a known technique (i.e., adjusting an insert volume of a mold
as shown in Platte) for a design need or known effect (i.e., varying the
setbacks of blocks to provide a natural look). The Appellant does not direct
us to any factual evidence to rebut this conclusion. Again, the test of
obviousness is not express suggestion of the claimed invention in any or all
references but rather what the references taken collectively would suggest to
those of ordinary skill in the art presumed to be familiar with them.
Rosselet, 347 F.2d at 851; Hedges, 783 F.2d at 1041. See also PerfectWeb
Techs., Inc. v. InfoUSA, Inc. 587 F.3d 1324, 1329 (Fed. Cir. 2009) (an
analysis of obviousness "may include recourse to logic, judgment, and
common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion").
Additionally, as found above, all the features of the claims were
known in the prior art and one skilled in the art could have combined the
elements as claimed by known methods with no change in their respective
functions, and the combination would have yielded predictable results to one
of ordinary skill in the art at the time of the invention. See KSR 550 U.S.
398 at 416--417 ("The combination of familiar elements according to known
7
Appeal2014-006457
Application 12/401,172
method is likely to be obvious when it does no more than yield predictable
results").
We are not persuaded by the Appellant's contention that Platte merely
suggests to a person of ordinary skill in the art "to form a first series of
blocks with the adjustable element set at a first depth, then manually adjust
the adjustable element to form a second series of blocks with the adjustable
element set at a second depth, and so on" (Appeal Br. 10-11) as
unpersuasive because, as we found above, Dean suggests varying the
setback of each block in a series provides a natural look (,-i 0032). The
relevant inquiry is whether the claimed subject matter would have been
obvious to those ordinary skill in the art in light of the combined teachings
of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
In addition, the Appellant proffers various arguments against
Woolford, Platte and Dean individually and how those references
individually fail to teach the claim requirements (Appeal Br. 6-11 ).
However, we find these individual arguments unpersuasive because one
cannot show nonobviousness by attacking references individually when the
rejection is based on a combination of reference. See Keller, 642 F.2d at
425.
For the above reasons, we uphold the Examiner's rejection of claims 1
and4.
SUMMARY
For these reasons and those set forth in the Answer, the Examiner's
decision to reject claims 1 and 4 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l).
8
Appeal2014-006457
Application 12/401,172
AFFIRMED
9