Ex Parte Parenti et al

Patent Trial and Appeal Board

Jul 28, 2014

12399530 (P.T.A.B. Jul. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRIS PARENTI and LOREN VENEGAS
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Appeal 2012-007422
Application 12/399,530
Technology Center 3600
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Before JOHN C. KERINS, STEFAN STAICOVICI, and
CHARLES N. GREENHUT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Chris Parenti and Loren Venegas (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting under 35 U.S.C. § 102(b)
claim 11 as anticipated by Bowden (US 3,291,437, iss. Dec. 13, 1966), and,
under 35 U.S.C. § 103(a) claim 1 as unpatentable over Bowden and Piccone
(US 6,694,692 B2, iss. Feb. 24, 2004). Claims 2–10, 12, and 13 have been
canceled. Appeal Br. 1. We have jurisdiction over this appeal under 35
U.S.C. § 6(b).

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INVENTION
Appellants’ invention relates to a method and “modular system for
covering a vertical member.” Spec. 1, ¶ 4.
Claims 1 and 11 are representative of the claimed invention and read
as follows, respectively:
1. A modular system for covering a vertical member,
consisting of:
a plurality of identical, initially flat, flexible polymeric
panels, each panel having a thickness, a length, and first and
second opposing parallel side edges defining a width;
the first side edge of each panel including a lengthwise
receptacle;
the second side edge of each panel including a lengthwise
bead; and
wherein the bead and receptacle are physically
dimensioned such that the receptacle of one panel receives the
bead of another panel in interlocking cooperation, thereby
enabling multiple of the identical panels to be interconnected
and flexed to surround a vertical member; and
each panel includes one or more spaced apart lengthwise
ridges enabling the panel to be cut immediately adjacent the
ridge to produce a bead to shorten the width of that panel.

11. A method of covering a vertical member, comprising the
steps of:
a) providing a modular system for covering a vertical
member, the system consisting of:
a plurality of identical, initially flat, flexible
polymeric panels, each panel having a thickness, a
length, and first and second opposing parallel side edges
defining a width,
the first side edge of each panel including a
lengthwise receptacle,
the second side edge of each panel including a
lengthwise bead, and wherein
the bead and receptacle are physically dimensioned
such that the receptacle of one panel receives the bead of
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another panel in interlocking cooperation, thereby
enabling multiple of tile identical panels to be
interconnected and flexed to surround a vertical member;
b) interconnecting the first edge of one of the panels to
the second edge of a different one of the panels; and
c) continuing the process of step b) until a vertical
member is surrounded with the panels, with each panel being
interconnected to two adjacent panels on either side thereof.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ANALYSIS
The anticipation rejection1
The Examiner found that “Bowden teaches all the claimed steps
including the steps of providing the plurality of panels for covering a vertical
member, interconnecting the panels and as an end result the vertical member
is surrounded thus all the steps are disclosed and taught by Bowden.” Ans.
7–8.
Appellants argue that Bowden fails to teach a process where panels
are sequentially interconnected “until a vertical member is surrounded with
the panels,” as called for by claim 11. Reply Br. 2. According to
Appellants, Bowden’s panels need to be connected “in advance as the
finished assembly is then filed with concrete.” Id. 2-3. We agree.
Although we appreciate the Examiner’s position that in the end of
Bowden’s method a vertical member is surrounded by a plurality of

1 Appellants’ arguments, as set forth on pages 4 –5 in the Appeal Brief,
with respect to the rejection of claim 11 are moot in view of the Examiner’s
anticipation rejection based on the same primary reference, Bowden. See
also Ans. 8.
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interconnected panels, nonetheless, claim 11 specifically recites a step of
“continuing the process of step b) until a vertical member is surrounded with
the panels.” Appeal Br., Clm. App. The use of the term “until” requires the
step of interconnecting the panels to end when a vertical member is
surrounded by the panels. In contrast, Bowden’s interconnecting step ends
before the vertical member is surrounded. Thus, we agree with Appellants
that Bowden fails to teach step c) of independent claim 11. Accordingly, we
do not sustain the rejection of claim 11 under 35 U.S.C. § 102(b) as
anticipated by Bowden.

The obviousness rejection
The Examiner found that Bowden discloses the limitations of claim 1,
but fails to disclose, “one or more spaced apart lengthwise ridges,” as called
for by claim 1. Ans. 5; see also Bowden, Figs. 1 and 2. Nonetheless, the
Examiner further found that Piccone discloses formwork panes 10 that
include one or more spaced apart ridges 48, 49, 50. Id.; see also Piccone,
Figs. 1, 4A, and 5. The Examiner concluded that it would have been
obvious for a person of ordinary skill in the art to modify the panels of
Bowden to include the ridges of Piccone, “in order to provide additional
engagement elements that would allow the insertion of rigid foam insulation
to avoid outward bulging of the flat side of the wall when concave elements
are not used.” Id. The Examiner further found that the modified panel of
Bowden and Piccone “would be capable of enabling the panel to be [cut]
immediately adjacent the ridge to produce a bead to shorten the width of the
panel.” Id.
Appellants argue that Piccone’s ridges do not enable cutting of the
panel to produce a bead to shorten the panel width, as the Examiner
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proposed. See Appeal Br. 3–4. According to Appellants, if the panels are
cut, the purpose of Piccone’s ridges would be defeated. See id. Furthermore,
Appellants note that the Examiner has not provided any objective evidence
to support the finding that Piccone’s ridges are capable of enabling cutting
the modified panel of Bowden and Piccone. App. Br. 4.
It is not clear why the cutting capability of the panel of Bowden and
Piccone “immediately adjacent the ridge” to shorten panel width would
affect the purpose of the ridge, namely, to retain rigid foam insulation in
place. As long as the ridge is intact and can retain rigid foam insulation the
purpose of the ridge is not defeated, as Appellants argue. Engagement
means 48, 50 are “also formed as T connectors” (col. 3, ll. 47-54) and could
therefore be used as a “bead” to enable coupling of the shortened panel.
Furthermore, as the Examiner noted, “the panels of Bowden are formed of
plastic that is a material capable of being cut at any desired section.” Ans. 7.
We thus agree that the Examiner is on solid ground in finding sufficient
structural similarity that the recited functional limitation would also be
present in a panel arising from the combined teachings of Bowden and
Piccone. As such, Appellants have the burden of establishing that those
features would not necessarily be present. In re Spada, 911 F.2d 705, 708
(Fed Cir. 1990).
Appellants further argue that it would not have been obvious to
modify Bowden with Piccone’s ridges because the widths of Bowden’s
panels are fixed by the number π and “[one] would have to provide the entire
male interlock tongue portion 20 [of Bowden] including a goose-neck design
which would raise material if not manufacturing costs.” See Reply Br. 2.
Thus, according to Appellants, “Bowden teaches away from panels having a
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different width when the situation arises that would require an adjustment to
the width of the panel.” Id.
We are not persuaded that Bowden teaches away from panels having a
different width. Prior art does not teach away from claimed subject matter
merely by disclosing a different solution to a similar problem unless the
prior art also criticizes, discredits or otherwise discourages the solution
claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In this
case, Bowden specifically discloses that the panels can have different widths
such as, π, 2 π, or 3 π. See Bowden, Fig. 8. As such, the modified panel of
Bowden and Piccone can be shortened from a width of 3 π to a width of 2 π
or even π.
Furthermore, we are not persuaded that, because the modified panel of
Bowden and Piccone requires a male interlock tongue portion 20, it would
not have been obvious to modify Bowden with Piccone’s ridges. We are
also not persuaded by Appellants’ arguments that the Examiner’s rationale is
not “germane” to Appellants’ claims because the claims are not related to
insertion of rigid foam or concrete. Reply Br. 1. The reason to modify the
reference may often prompt a person of ordinary skill in the art to do what
the inventor has done, but for a different purpose or to solve a different
problem. It is not necessary that the prior art suggest the combination to
achieve the same advantage or result discovered by an applicant. See, e.g., In
re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). Although providing a male
interlock tongue portion 20 might raise material if not manufacturing costs,
as Appellants urge, nonetheless, the ability to retain rigid foam insulation in
place allows the panel of Bowden and Piccone “to avoid outward bulging of
the flat side of the wall when concave elements are not used,” as the
Examiner concluded (Ans. 5). See Medichem, S.A. v. Rolabo, S.L., 437 F.3d
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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.”) (citation omitted).
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Bowden and Piccone.

SUMMARY
The Examiner’s decision rejecting claim 11 under 35 U.S.C. § 102(b)
as anticipated by Bowden is reversed.
The Examiner’s decision rejecting claim 1 under 35 U.S.C. § 103(a)
as unpatentable over Bowden and Piccone 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)(1)(iv).

AFFIRMED-IN-PART

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