Ex Parte Provenzano

Board of Patent Appeals and Interferences

Jan 23, 2009

10233224 (B.P.A.I. Jan. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER J. PROVENZANO III
____________

Appeal 2008-6115
Application 10/233,224
Technology Center 3600
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Decided: January 23, 2009
____________

Before RICHARD SCHAFER, SALLY LANE and SALLY C. MEDLEY,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL
A. Statement of the Case
Peter Provenzano (“Provenzano”), the real party in interest, seeks review
under 35 U.S.C. § 134(a) of a Final Rejection of claims 1 and 5-9. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
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Provenzano’s invention is a pre-cast textured planar tile system for a
walking surface. The top surfaces of the tiles have a plurality of raised
elements projecting upward from the top surface. The bottom surfaces of
the tiles are scarified. (Spec. 3, 5, 9, 19; figs. 2-3, 6, 8).
Representative claim 5, reproduced from the Claim Appendix of the
Appeal Brief, reads as follows:
A pre-cast tile system for use on a walking surface for
providing direction and warning to visually handicapped
persons, said pre-cast tile system comprising:
a multitude of substantially rectangular planar pieces with a
top surface and a bottom surface; said top surface having a
plurality of raised elements projecting upward therefrom and
being configured as a truncated dome structure and said bottom
surface being scarified;
a multitude of substantially angled planar cut pieces with a
top surface and a bottom surface, said top surface having a
plurality of raised elements projecting upward therefrom and
being configured as a truncated dome structure and said bottom
surface being scarified; and
wherein said substantially angled planar cut pieces and said
substantially rectangular planar pieces are placed together so as
to form a walking surface which is flush to the edge of a
surface.

The Examiner relies on the following prior art in rejecting the claims on
appeal:
Szekely 5,775,835 Jul. 07, 1998
Rundmund EP 0340598 Nov. 08, 1989

The Examiner rejected claims 1 and 5-9 as unpatentable under 35 U.S.C.
§ 103(a) over Szekely and Rundmund.

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B. Issue
Does Provenzano show that the Examiner erred in determining that
claims 1 and 5-9 are obvious over Szekely and Rundmund?
C. Findings of Fact (“FF”)
Szekely
1. Szekely describes tiles [1] each with a top surface [10] having a
plurality of rows of spaced truncated domes [17] and dimples [19]
projecting upwardly from the top surface [10]. (Col. 4, ll. 28-45; figs. 4,
6, 7).
2. The bottom surfaces [20] of the tiles [1] are provided with a series of
projections [21]. (Col. 5, ll. 28-39; figs. 7-8).
3. The tiles can be made of vinyl, rubber, urethane, ceramic or cast
composite materials or the like. (Col. 4, ll. 54-55).
4. Tiles are preferably made of vitrified polymer composite (Col. 4, ll. 61-
62).
5. The tiles are to be embedded in fresh concrete. (Col. 6, ll. 7-50).
6. Szekely’s tiles [1] are used as a detectable warning at transit platforms,
and curb ramps. (Col. 3, ll. 33-36; figs. 1-3).
7. Szekely’s tiles can be applied to loading docks, pools, piers, etc. (Col.
3, ll. 36-41).
8. Szekely’s describes and depicts square planar tiles [1] and rectangular
planar tiles (i.e., 24”x72”). (Col. 3, ll. 46-57; figs. 1-3).
Rundmund
9. Rundmund describes flagging [1] consisting of tiles [2]. (McElroy
Translation 8; fig. 1).
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10. The underside [21] of the tiles [2] each have a structure that consists of a
number of grooves or protruding strips of triangular cross section
(McElroy Translation 8; fig. 3).
11. The underside [21] of the tiles [2] lie in an adhesive-compound bed [3].
(McElroy Translation 10).
12. The adhesive compound can be low viscosity acid mastic based on
epoxy resin, polyester, phenoxy resin or furan resin. (McElroy
Translation 6).
13. Rundmund describes that the tiles can be ceramic tiles or tiles made of
metal, carbon materials, plastics with or without fillers, or tiles made of
natural materials such as natural stone or wood. (McElroy Translation
4).
14. Rundmund describes that the tiles can be applied in the sector of the
food and beverage industry and chemical industry, such as tank storage
spaces. (McElroy Translation 7).
15. Rundmund describes that the tiles can be used in industrial construction,
the kitchen and slaughterhouse sector and the private sector, such as for
balconies, terraces, baths and swimming pools. (McElroy Translation
7).
16. Rundmund describes hexagonal shaped tiles [2]. (Fig. 1).
Official Notice
17. A square or rectangular planar tile is “diamond shaped” and angled
because a diamond is a rhombus and a rhombus is an equilateral
parallelogram.
C. Principles of Law
[T]he PTO gives a disputed claim term its broadest reasonable
interpretation during patent prosecution. The “broadest
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reasonable interpretation” rule recognizes that “before a patent
is granted the claims are readily amended as part of the
examination process.” Thus a patent applicant has the
opportunity and responsibility to remove any ambiguity in the
claim term meaning by amending the application. Additionally,
the broadest reasonable interpretation rule “serves the public
interest by reducing the possibility that claims, finally allowed
will be given broader scope than is justified.”

In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (citations omitted).
“[L]ack of novelty in the claimed subject matter, e.g., as evidence by a
complete disclosure of the invention in the prior art, is the ‘ultimate or
epitome of obviousness.’” In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982) (citation omitted).
In KSR, the Supreme Court rejected the rigid application of the “teaching
suggestion or motivation” (TSM) test, instead favoring the “expansive and
flexible approach” used by the Court. KSR Int’l Co. v. Teleflex Inc., 127
S.Ct. 1727, 1739 (2007). Based on its precedent, the Court reaffirmed the
principle that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. The Court's opinions in United States v. Adams, 383 U.S. 39
(1966), Anderson’s Black Rock Inc. v. Pavement Salvage Co., 396 U.S. 57
(1969) and Sakraida v. Ag. Pro, Inc., 425 U.S. 273 (1976) are instructive
when the question of whether an application claiming the combination of
elements of prior art is obvious. Id. at 1740. In Adams, “[t]he Court
recognized that when a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.”
Id. at 1740 (citation omitted) (The Court ultimately found unexpected results
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resulting from prior art warnings to be dispositive of nonobviousness). In
Anderson’s Black Rock, the Court concluded that the claimed invention
combining two pre-existing elements (radiant-heat burner and paving
machine) ‘did not create some sort of new synergy’; each element
functioned as expected. Id. at 1740. “The two in combination did no more
that they would in separate, sequential operation”. Id. at 1740 (citations
omitted). In Sakraida, “the Court derived from its precedents the conclusion
that when [the claimed invention] ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such and arrangement, the combination is
obvious.” Id. at 1740 (citations omitted).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. [A] court must
ask whether the improvement is more than the predictable use
of prior art elements according to their established functions.

Id. at 1740.
“Two separate tests define the scope of analogous prior art: (1) whether
the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004).
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Any judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill in the art at the time the claimed invention was
made and does not include knowledge gleaned only from
applicant’s disclosure, such a reconstruction is proper.

In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Argument of counsel cannot take the place of evidence lacking in the
record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
D. Analysis
Claim 1
Claim 1 recites a “pre-cast textured tile . . . said bottom surface being
scarified.” (Claim Appx. 1). Provenzano’s Specification does not provide
an explicit definition for the term “scarified”. During prosecution, the
broadest reasonable interpretation of claim terms is applied. Therefore, we
interpret “scarified” to mean a non-smooth or textured surface that can
include markings.
The Examiner finds that Szekely describes all of the claim limitations
with the exception of the tile bottom surface being scarified. (Final
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Rejection 2; Ans. 3). Provenzano does not contest the Examiner’s findings
with respect to Szekely. (App. Br. 4-6; Reply Br. 2).
Szekely also describes the tiles [1] as having bottom surfaces that include
projections [21]. (FF1 2). With the broadest reasonable interpretation in
mind, Szekely’s projections [21] on the bottom surfaces of the tiles [1] also
provide a scarified surface because the resulting surface is non-smooth and
textured. Therefore, Szekely’s tiles anticipate claim 1. Anticipation is the
epitome of obviousness.
Although we find that Szekely anticipates claim 1, we nonetheless
address Provenzano’s arguments regarding the Examiner’s rejection based
on the combination of Szekely and Rundmund. As explained before, the
Examiner does not rely on Szekely to describe tiles with a scarified bottom
surface. Instead, the Examiner relies on Rundmund for teaching tiles with a
scarified bottom surface. (Final Rejection 2; Ans. 3). The Examiner
determined that it would have been obvious to one with ordinary skill in the
art at the time the invention was made to modify Szekely’s tile to include a
scarified bottom surface as taught by Rundmund, since Rundmund states
that the textured underside of the floor tile settles in a cement matrix
adhesive. (Final Rejection 2; Ans. 3). The Examiner further finds that
Rundmund’s teaching demonstrates how scarification on the underside of
the tile can provide additional friction to further help secure the tile in place.
(Ans. 5).
Provenzano argues that there is no suggestion or motivation to combine
the Szekely and Rundmund references. (Reply Br. 2). Provenzano argues
that Rundmund’s teaching that floor tile settles in a cement matrix adhesive

1 FF denotes Finding of Fact.
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does not show, teach or suggest any motivation to modify a concrete tile that
has a scarified bottom surface. (App. Br. 5-6; Reply Br. 2). Provenzano
argues whether something sits in cement matrix adhesive is irrelevant to the
making of a concrete tile with scarification on the underside of the tile.
(Reply Br. 2).
Provenzano’s arguments are unpersuasive. Provenzano has not
addressed the Examiner’s finding that Rundmund demonstrates how
scarification on the underside of the tile can provide additional friction to
further help secure the tile in place. Rundmund teaches tiles [2] each with
an underside structure [21] that is scarified, e.g., the underside structure [21]
consists of a number of grooves or protruding strips of triangular cross
section, resulting in a non-smooth or textured surface. (FFs 9-10).
Rundmund teaches that the underside [21] of the tiles [2] lie in an adhesive
compound bed [3]. (FF 11). Thus, one with ordinary skill in the art would
recognize that Rundmund suggests that the grooves or protruding strips of
triangular cross section on the underside of the tiles [21] is useful or
beneficial for the interface between the tile [2] underside structure [21] and
the adhesive compound bed [3]. It would have been obvious to modify
Szekely’s tile bottom surface with Rundmund’s scarification since it is
useful or beneficial for the interface between the tile [2] underside structure
[21] and the adhesive compound bed [3]. The combination of familiar
elements according to known methods is obvious when it does no more than
yield predictable results. Provenzano does not present evidence to
demonstrate that modifying Szekely’s tiles with Rundmund’s scarification
yields an unpredictable result.
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Provenzano also argues that Szekely and Rundmund are directed to solve
entirely different problems. (App. Br. 6). Provenzano argues that there
would be no suggestion or motivation to combine teachings from a small
plastic bathroom tile with a concrete outdoor walking surface. (Reply Br. 2).
Provenzano argues that concrete tiles are dissimilar to Szekely’s bathroom
tile in terms of use, installation, materials and subject matter. (Reply Br. 2).
Provenzano’s arguments are not persuasive. Provenzano does not
address whether the art is from the same field of endeavor, regardless of the
problem addressed. In addition, we can not find, and Provenzano does not
direct us to, where either Szekely or Rundmund describe concrete tiles or
small bathroom tiles or that the usage of Szekely and Rundmund’s tiles are
limited to just bathrooms or concrete outdoor walking surfaces. Szekely
describes that tiles [1] can be made of vitrified polymer composite or vinyl,
rubber, urethane, ceramic or cast composite materials and the like. (FFs
3-4). Szekely describes the tiles can be used as a detectable warning at
transit platforms and curb ramps, or applied to loading docks, pools, piers
etc. (FFs 6-7). Rundmund describes that the tiles [2] can be ceramic tiles
or tiles made of metal, carbon materials, plastics with or without fillers, or
tiles made of natural materials such as natural stone or wood. (FF 13).
Rundmund describes that tiles [2] can be applied in the food and beverage
industry; the chemical industry, such as tank storage spaces; industrial
construction; kitchens and slaughterhouses; and the private sector, such as
balconies, terraces, baths and swimming pools. (FFs 14-15).
Provenzano further argues that the Examiner’s rejection is based on
hindsight reconstruction. (App. Br. 6). This argument is also unpersuasive.
A judgment of obviousness based on hindsight reconstruction is proper if it
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only takes into account knowledge that was within the level of ordinary skill
in the art at the time the invention was made and does not include
knowledge gleaned from applicant’s disclosure. In this case, the Examiner
utilizes knowledge from the prior art - Rundmund’s suggestion that the
scarification on the underside of the tiles [21] is useful or beneficial for the
interface between the underside of tiles [21] and the adhesive compound bed
[3].
Provenzano further argues that Szekely teaches away from the present
invention. (App. Br. 6). Provenzano argues that Szekely uses flanges and
projections [21] which are expensive and time consuming to manufacture
compared to Provenzano’s less expensive manufacture of tiles only requiring
scarification. (App. Br. 6). Provenzano argues that the projections make
Szekely’s tiles more bulky and awkward leading to more expensive storage
and delivery. (App. Br. 6). Provenzano further argues that large gaps
created by holes [16] can lead to cracking and breakage. (App. Br. 6).
Provenzano’s arguments are unpersuasive because Provenzano does not
address why a person of ordinary skill, upon reading Szekely, would be
discouraged from following the path set out in Szekely, or would be led in a
direction divergent from the path that was taken by the applicant. In
addition Provenzano does not provide objective evidence to support its
arguments that Szekely’s tiles are (1) more expensive and time consuming to
manufacture; (2) bulky and awkward and more expensive to store and
deliver; and (3) prone to cracking and breakage due to large gaps created by
holes 16. Argument of counsel cannot replace evidence lacking in the
record.
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For all these reasons, Provenzano does not sufficiently demonstrate that
the Examiner erred in determining that claim 1 is obvious over Szekely and
Rundmund.
Claims 5-9
Claim 5 recites a “pre-cast tile system . . . comprising: a multitude of
substantially rectangular planar pieces with a top surface and a bottom
surface . . . a multitude of substantially angled planar cut pieces with a top
surface and a bottom surface . . . said substantially angled planar cut pieces
and said substantially rectangular planar pieces are placed together so as to
form a walking surface which is flush to the edge of a surface.” (Claim
Appx. 1).
The Examiner finds that Szekely’s rectangular tiles [2] meet the
limitations of both the “rectangular planar pieces” and the “substantially
angled planar cut pieces” since Szekely’s tiles have 90 degree angles and
can be cut into rectangular shape. (Final Rejection 2-3; Ans. 4).
Additionally, the Examiner finds that it would have been obvious to modify
the shape of Szekely’s tiles to be angled planar cut pieces which are placed
together with the rectangular planar pieces since Szekely states that tiles may
be manufactured in other sizes so long as they comply with ADA guidelines
and Szekely shows an interlocking relationship between adjacent tiles.
(Final Rejection 3; Ans. 4). The Examiner finds that having different shaped
tiles would not alter Szekely’s intended purpose of creating wayfinding tiles
in compliance with ADA Accessibility guidelines. (Final Rejection 3; Ans.
4).
Provenzano argues that rectangular planar pieces and angled planar cut
pieces are not different sizes but different shapes. (App. Br. 5).
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Provenzano argues that an invitation to experiment with other sizes does not
render the invention obvious. (App. Br. 5). Last, Provenzano argues that
the Examiner uses hindsight and there is no factual basis to support an
obviousness conclusion. (App. Br. 5).
Provenzano’s arguments are not persuasive. Provenzano does not
meaningfully explain why the Examiner’s finding that Szekely’s tiles meet
the limitations of both the “rectangular planar pieces” and the “substantially
angled planar cut pieces” is in error. Provenzano has not sufficiently
demonstrated that an “angled planar cut piece” is something other than
rectangular in shape. To the extent that “angled planar cut piece” means
something other than rectangular in shape, we find that a rectangular tile is
also a “diamond” shaped and angled planar piece. (FFs 8, 17). We further
find that Rundmund describes tiles that are not rectangular and which are
angled and planar (i.e., Rundmund’s hexagonal shaped tiles). (FF 16).
Provenzano also does not demonstrate error with the Examiner’s finding that
it would have been obvious to have different shaped tiles, since doing so
would not alter Szekely’s intended purpose of creating wayfinding tiles in
compliance with ADA Accessibility guidelines.
For all these reasons, Provenzano does not sufficiently demonstrate that
the Examiner erred in determining that claims 5-9 are obvious over Szekely
and Rundmund.
E. Conclusions of Law
Based on the Findings of Fact and the Analysis above, Provenzano has
not sufficiently demonstrated that the Examiner erred in determining that
claims 1 and 5-9 are obvious over Szekely and Rundmund.
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F. Decision
The decision of the Examiner rejecting claims 1 and 5-9 as unpatentable
under 35 U.S.C. § 103(a) over Szekely and Rundmund is affirmed.
No time period for taking any subsequent action in connection with the
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

SCHAFER, Administrative Patent Judge, concurring.

I concur in the affirmance of the rejection of Claim 1 and 5-9 under
§ 103(a).
I join with my colleagues conclusion that the subject matter of Claim 1
would have been obvious over the combined teachings of Szekely and
Rundmund for the reasons stated on Page 8 of the opinion.
Claims 5-9 additionally require that the walking surface include two
types of tiles --rectangular and angle cut. Cutting tiles to make them fit to an
edge, such as a wall, at the perimeter of the defined walking surface to be
covered with tile is a conventional practice known to all those skilled in the
tile art, if not to anyone who has even casually laid tile. It would, therefore,
have been obvious to combine rectangular and angle cut tiles to form the
walking surface as required by Claims 5-9.

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