Ex Parte Ness et al

Patent Trial and Appeal Board

May 25, 2016

13008565 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/008,565 01/18/2011
25281 7590 05/27/2016
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
FIRST NAMED INVENTOR
John T. 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.
N295.110.103 9028
EXAMINER
BUTLER, PATRICK NEAL
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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 JOHN T. NESS and JEFFREY A. NESS
Appeal2015-000993
Application 13/008,565
Technology Center 1700
Before MARK NAGUMO, KAREN M. HASTINGS, and JEFFREY R.
SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-9.3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
BACKGROUND
1 We cite to the Specification ("Spec.") filed Jan. 18, 2011; Non-Final Office
Action ("Non-Final Act.") mailed Nov. 18, 2013; Examiner's Answer
("Ans."); and Appellants' Appeal Brief ("App. Br.") and Reply Brief
("Reply Br.").
2 Appellants identify Ness Inventions, Inc. as the real party in interest. App.
Br. 3.
3 In their opening statement, Appellants mistakenly refer to a December 18,
2013 Final Action rejecting claims 1-12, App. Br. 1.
Appeal2015-000993
Application 13/008,565
The subject matter involved in this appeal relates to masonry blocks
having molded utility openings, e.g., for electrical or plumbing components.
Spec. 1. Sole independent claim 1 illustrates the subject matter on appeal
and is reproduced from the Claims Appendix of the Appeal Brief as follows:
1. A method of producing a masonry block having a first
major face and an opposing second major face, a first transverse
face and a second opposing transverse face, and a first end face
and an opposing second end face, the method comprising:
providing a mold assembly having a plurality of liner
plates that form a mold cavity having an open top and an open
bottom and including a core bar assembly, wherein at least a
first liner plate is moveable between a retracted position and an
extended position and includes a mold element which is a
negative of a desired molded utility opening;
top;
moving the first liner plate to the extended position;
closing the bottom of the mold cavity with a pallet;
filling the mold cavity with dry cast concrete via the open
closing the top of the mold cavity with a shoe assembly;
compacting the dry cast concrete to form a pre-cured
masonry block with the second transverse face resting on the
pallet, wherein the core bar assembly forms at least one
aperture between the first and second transverse faces, and
wherein the first liner plate forms the first major surface, with
the mold element of the first liner plate forming the desired
molded utility opening extending from the first major face to
the aperture, the molded utility opening adapted to receive a
utility device.
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Appeal2015-000993
Application 13/008,565
REJECTION
The Examiner maintained the following ground of rejection: 4
Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combined prior art ofRuckstuhl,5 Murray,6 Theysohn,7 Toffolon8
and, if necessary, Martin. 9 10
DISCUSSION
Appellants argue claims 1-9 as a group. App. Br. 6-16; Reply Br. 2-
3. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select sole
independent claim 1 as representative and decide the propriety of the
Rejection based on the representative claim alone.
The Examiner found that Ruckstuhl teaches a method for making a
concrete block which employs a mold assembly having a plurality of liner
plates, one of which is textured and moveable between an extended position
for imparting a texture to a surface of the block and a retracted position to
facilitate removal of the block from the mold assembly. Non-Final Act. 2-3.
4 Ans. 2; Non-Final 2-7.
5 US 4,869 ,660, issued Sep. 26, 1989 ("Ruckstuhl").
6 US 1,524, 146, issued Jan. 27, 1925 ("Murray").
7 US 4,025,022, issued May 24, 1977 ("Theysohn").
8 US 4,251,196, issued Feb. 27, 1981 ("Toffolon").
9 GB 2 232 114 A, published Dec. 5, 1990 ("Martin").
10 In an alternative basis for the Rejection, the Examiner further relied on
Martin for the proposition that a surface feature imprinted on a surface of a
molded concrete block may be functional as well as decorative. Non-Final
Act. 5. Appellants' argument that Martin "teaches using a moveable
sidewall to form a surface texture, not an opening or aperture," App. Br. 15,
is unavailing, given that Martin is not relied upon to teach the formation of
an opening or aperture.
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Appeal2015-000993
Application 13/008,565
The Examiner additionally found that Murray teaches providing apertures or
passages in a surface of construction blocks to accommodate installation of
junction boxes or electric fixtures. Id. at 4. The Examiner further found that
Theysohn discloses a molding process in which a wall of the mold includes a
projection for the purpose of forming a corresponding aperture or passage in
a surface of the molded article. Id. at 3; Ans. 4. Appellants do not dispute
the foregoing findings. See App. Br. 6-16; Reply Br. 2-3.
Appellants raise four numbered arguments against the Examiner's
determination that one skilled in the art would have found it obvious to
provide Ruckstuhl's moveable mold liner with a projection, as taught by
Theysohn, for the purpose of creating an opening in the block surface to
accommodate an electrical component such as a junction box or electric
fixture, pursuant to Murray. We discuss each argument in tum.
1. Appellants contend that Theysohn' s disclosure is non-
analogous to the claimed invention and, for that reason, does not qualify as
prior art. App. Br. 8. We disagree. A reference qualifies as prior art where
the reference is "reasonably pertinent to the particular problem with which
the inventor is involved." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)
(quoting In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004)). Appellants
state the inventors' problem as "form[ing] dry-cast concrete masonry blocks
in which utility devices can be readily installed by craftsmen." App. Br. 9.
The Specification identifies a somewhat broader problem-the desire to
form required openings in molded concrete block more efficiently than by
cutting. See Spec. 1-2. Under either definition, the relevant problem
concerned the formation of openings in a molded article, such that one
skilled in the art reasonably would have looked to other fields of endeavor
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Appeal2015-000993
Application 13/008,565
involving molding of articles with openings-such as the molded containers
in Theysohn. Cf In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-
80 (Fed. Cir. 2007) (holding that analogous art with regard to a folding
mechanism of a treadmill, may come from any area describing hinges,
springs, latches, counterweights, or other similar mechanisms); see also
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) ("The
Supreme Court's decision in KSR International Co. v. Teleflex, Inc., 550
U.S. 398 ... (2007), directs us to construe the scope of analogous art
broadly, stating that "familiar items may have obvious uses beyond their
primary purposes ... ").
2. Appellants additionally argue that Theysohn teaches away from
using molded openings for the installation of utility devices because
Theysohn's objective is to provide containers having reduced material and
weight. This argument is not persuasive. The Examiner relied on Theysohn
for its teaching that openings may be formed in a surface of a molded article
by providing a corresponding projection on the mold wall. The fact that
Theysohn uses the formed openings for a purpose other than for
accommodating utility devices does not negate its teaching as to how those
openings can be formed during the molding process. As reasoned by the
Examiner, Murray provides a reason to form openings in concrete block-to
accommodate utility devices-and Theysohn discloses a molding process by
which molded openings can efficiently be formed. We are not persuaded
that Theysohn's alternative end-use for the molded openings in a plastic
crate would have directed the skilled artisan away from providing molded
openings in Ruckstuhl's concrete block, particularly in light of Murray's
clear teaching that openings in concrete block are advantageous.
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Appeal2015-000993
Application 13/008,565
3. Neither are we persuaded by Appellants third argument, which
contends that modifying Ruckstuhl to include a surface opening feature
would "destroy the explicitly stated purpose of Ruckstuhl of providing a
molding apparatus for making a concrete brick having a texture on at least
one visible surface which gives the concrete brick the appearance of natural
stone." App. Br. 11. Appellants do not point us to any evidence or technical
reasoning to support their contention that the presence of a surface opening
or an installed utility device would "entirely destroy[] the appearance of
natural stone of the Ruckstuhl block," id. at 11. As Ruckstuhl explains, the
disclosed cast concrete blocks are intended for use in constructing walls.
Ruckstuhl at col. 1, 11. 6-8. Thus, the appearance sought by Ruckstuhl is
that of a wall constructed from simulated stone blocks. We are not
persuaded that one skilled in the art would have viewed the presence of a
hole or electric box in such a constructed wall to be detrimental, much less
destructive, to that purpose. See also Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1165 (Fed. Cir. 2006) ("a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine"); Winner Int 'l Royalty Corp. v. Wang,
202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating
benefit comes at the expense of another benefit, however, should not nullify
its use as a basis to modify the disclosure of one reference with the teachings
of another. Instead, the benefits, both lost and gained, should be weighed
against one another.").
4. Lastly, Appellants argue that the Examiner unreasonably
characterized Theysohn's projection as texture in the context of Ruckstuhl's
textured mold surface. App. Br. 12. However, we do not find and
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Application 13/008,565
Appellants do identify any part of the Examiner's reasoning in the Rejection
where Theysohn's projection is characterized as, or substituted for,
Ruckstuhl's texture. Rather, the Examiner determined that it would have
been obvious to "select a projection ... as taught by Theysohn in the process
of Ruckstuhl in order to form a recess in a formed product." Non-Final Act.
8. Appellants neither contend nor point us to persuasive evidence that
Theyson's hole-forming projection and Ruckstuhl's texture-forming surface
would have been considered mutually exclusive. We read the Examiner's
reasoning in support of the obviousness determination as involving both
those features. Accordingly, Appellants' argument that Theysohn's
projection would constitute an unreasonable substitute for Ruckstuhl's
textured surface in unavailing.
For the foregoing reasons, we sustain the Examiner's Rejection of
claims 1-9.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended 37 C.F.R. § 1.136.
AFFIRMED
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