Ex Parte Scherer et al

Patent Trial and Appeal Board

Aug 10, 2016

13616826 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/616,826 09/14/2012 Ronald J. Scherer
23552 7590 08/12/2016
MERCHANT & GOULD P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
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.
03616.0l 77USC6 3080
EXAMINER
MORGAN, EILEEN P
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
08/12/2016 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):
USPT023552@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD J. SCHERER, DAVID MATTHEW LACROIX,
MICHAEL J. HOGAN, and GLENN C. BOLLES
Appeal2014-008617
Application 13/616,8261
Technology Center 3700
Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-20.2 We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, "[t]he real party in interest is Anchor Wall
Systems, Inc." Appeal Br. 3.
2 The Appellants provide as declaratory evidence the Declaration of Mike
Lidbom, filed November 18, 2013. Appeal Br., Evidence App.
Appeal2014-008617
Application 13/616,826
Claimed Subject Matter
Claims 1, 14, and 18 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A concrete block splitting and distressing assembly adapted
to be mounted in and actuated by a block splitting machine, the
assembly comprising:
(a) a first splitting blade adapted to engage a concrete work
piece positioned in the block splitting machine upon
actuation of the machine to split the work piece into at
least a first piece and a second piece; the first splitting
blade having a first end, a second end spaced from the first
end, a first side between the first and second ends, and a
second side between the first and second ends, the first and
second sides being on opposite sides of the splitting blade;
and
(b) a first concrete distressing projection positioned adjacent
the first side of the first splitting blade at a location at
which the first concrete distressing projection will engage
at least one of the work piece or the first piece or the
second piece to break concrete material from the
remainder of the piece it engages during a splitting
operation.
Rejections
Claims 1-11and14--20 are rejected under 35 U.S.C. § 102(e) as
clearly anticipated by Fladgard (US 6, 102,026, iss. Aug. 15, 2000).
Claims 12, 13, and 18-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fladgard.
ANALYSIS
Anticipation by Fladgard
Independent claim 1 recites "[a] concrete block splitting and
distressing assembly" including "a first concrete distressing projection." We
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Application 13/616,826
construe the "first concrete distressing projection" to require the ability to
contact and engage a work piece or a split piece.
The Appellants argue that the Examiner's finding that Fladgard's
blade holder(s) reads on the "first concrete distressing projection," as recited
in claim 1, is in error. Appeal Br. 23. The Appellants assert that Fladgard
fails to disclose, either expressly or inherently, that blade holders have the
ability to contact and engage a work piece or a split piece (i.e., a piece of the
work piece after being split). See Appeal Br. 25-28. The Appellants also
explain how Fladgard's cutting tool operates, particularly the manner in
which blades 34, 44 are used along with support members 60 and 70 to bend
a flexible work piece (wood and fiber cement material) and to create a crack
in the work piece. See Appeal Br. 24; Reply Br. 8. The Appellants'
argument is persuasive.
At the outset, we note that the Examiner's rejection does not rely on a
finding that Fladgard expressly discloses that holders 32 or 42 for blades 34
and 44, respectively, contact a workpiece or a split piece. Indeed, the
Examiner finds that the intended purpose of Fladgard's blade holders 32, 42,
particularly the edges or comers thereof, does not include engaging a work
piece. See Adv. Act. 1.
The Examiner's rejection relies on a finding that the edges or comers
of Fladgard's blade holders 32 or 42 inherently contact a spilt piece(s)
depending on the thickness of a work piece. See Final Act. 2; Ans. 5. And,
because the edges or comers of blade holders 32, 42 inherently contact a
spilt piece(s) they are also inherently capable of engaging a split piece and
performing the intended use required by claim 1 (e.g., removing material
from a split piece). See Final Act. 2, 4; Ans. 4.
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Application 13/616,826
However, the Examiner's finding as to the ability of the edges or
comers of blade holders 32, 42 to contact and engage a split piece is based
on speculation. The Examiner fails to adequately explain how the edges or
comers of blade holders 32, 42 would inherently (i.e., necessarily) contact
and engage split pieces. At best, the Examiner suggests that the thickness of
the work piece would be determinative as to whether the edges or comers of
blade holders 32, 42 could contact and engage a split piece. The Examiner,
however, fails to explain what the thickness of the work piece would have to
be to inherently contact and engage a split piece. Moreover, although
understanding the thickness of the work piece is helpful to understand
whether blade holders 32, 42 have the ability to contact and engage a split
piece that information by itself is inadequate to determine if the blade
holders have the ability to contact and engage a split piece. Additional
information such as the lengths of the blades and blade holders, the
operation of the Fladgard's cutting tool, particularly the forces or pressures
placed on the blades and blade holders, and the material properties of the
workpiece (e.g., flexibility) would help one of ordinary skill in the art
determine whether blade holders 32, 42 have the ability to contact and
engage a split piece. But cf Ans. 5 (the Examiner reasons that arguments
associated with the thickness of a workpiece and the pressure applied via the
blades to a workpiece are not germane because they are not recited in the
claimed limitations).
Further, even if we were to agree with the Examiner that blade holders
32, 42 have the ability to contact and engage a spilt piece, the Examiner fails
to set forth adequate support - support by a preponderance of the evidence
- that Fladgard' s cutting device can be used in a manner such that blade
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Application 13/616,826
holders 32, 42 could be used to break concrete material, as required by
claim 1. See also Reply Br. 8. For example, the Examiner does not discuss
any subjective or objective criteria concerning the force or pressure that
blade holders are able to apply-by use ofFladgard's actuators 14 (e.g.,
pneumatic or hydraulic cylinders) - as compared to the force or pressure at
which concrete material breaks. See Fladgard, col. 4, 11. 21-22; see also
Fladgard, col. 5, 11. 59---61.
Thus, we do not sustain the Examiner's rejection of independent
claim 1, and dependent claims 2-11 as anticipated by Fladgard. Independent
claims 14 and 18 include similar limitations as independent claim 1, and for
similar reasons as those discussed above, we do not sustain the Examiner's
rejection of independent claims 14 and 18 and dependent claims 15-1 7, 19,
and 20 as anticipated by Fladgard.
Obviousness based on Fladgard
The Examiner determines that "it would be within the level of
ordinary skill to use the comer edges [32, 42] to aid in splitting the
workpiece" and that "one of ordinary skill would be motivated to use the
comer protrusion to further assist in breakage." Final Act. 3, 4. However,
the Appellants argue persuasively that the Examiner's determinations are
based on impermissible hindsight. Reply Br. 10. Further, we note that the
Examiner fails to articulate reasoning concerning why a person of ordinary
skill in the art would have modified Fladgard's method of cutting and/or
cutting device to result in the claimed subject matter. See Appeal Br. 32-34.
Thus, we do not sustain the Examiner's rejection of independent claim
18, and dependent claims 19 and 20 as unpatentable over. For similar
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reasons, we likewise do not sustain the Examiner's rejection of dependent
claims 12 and 13.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-20.
REVERSED
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