Ex Parte Siver et al

Board of Patent Appeals and Interferences

Sep 16, 2010

10946428 (B.P.A.I. Sep. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/946,428 09/21/2004 Mark A. Siver 5305-001 7894
24112 7590 09/16/2010
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
SINGH, SUNIL
ART UNIT PAPER NUMBER
3672
MAIL DATE DELIVERY MODE
09/16/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK A. SIVER, WAYNE P. SIVER,
and JEFFERY L. HANSEN
____________

Appeal 2009-007916
Application 10/946,428
Technology Center 3600
____________

Before: LINDA E. HORNER, WILLIAM F. PATE III, and MICHAEL W.
O'NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007916
Application 10/946,428
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STATEMENT OF THE CASE
Mark A. Siver et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 2, 5-28, 47-53, and 58.
Claims 29-46 and 54-57 are withdrawn, and claims 3 and 4 are cancelled.2
We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
THE INVENTION
Appellants’ claimed invention relates to stackable precast concrete
blocks for retaining walls. Spec. 1:1-3. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A landscaping block set for forming retaining walls
comprising:
a. a first group of precast landscaping blocks;
b. a second group of precast landscaping blocks;
c. a third group of precast landscaping blocks;
d. each block of each group assumes a generally
trapezoidal shape and includes a molded face, back, two
straight and tapered sides that extend from the face to the
back, upper surface, lower surface, a width, height, and a
depth;
e. wherein the depth of the blocks of the first group
exceed the depth of the blocks of the second group;
f. wherein the depth of the blocks of the second group
exceed the depth of the blocks of the third group;
g. wherein the first, second and third groups of precast
blocks form a retaining wall with the first group of
blocks forming one or more lower courses of the
retaining wall, the second group of blocks forming one or
more intermediate courses of the retaining wall, and the
third group of blocks forming one or more upper courses
of the retaining wall; and

2 Claims 3 and 4 were rejected in the Office Action that is the subject of this
appeal, but these claims have since been cancelled. See Ans. 2.
Appeal 2009-007916
Application 10/946,428
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h. wherein the first, second and third groups of blocks
are stacked so as to form a step configuration about a
backside of the retaining wall.
THE REJECTIONS
Appellants seek review of the following Examiner’s rejections:
1. Rejection of claims 1, 2, 7, 8, 10, 11, 16, 17, 19-21, 23, 24, 26, 47-49,
51-53, and 58 under 35 U.S.C. § 102(b) as anticipated by Ueno (JP 6-57767,
published March 1, 1994).
2. Rejection of claims 1, 2, 5, 7, 8, 10, 11-14, 16, 17, 19-21, 23-25, 47-
53, and 58 under 35 U.S.C. § 103(a) as unpatentable in view of Tanahashi
(JP 6-287968, published October 11, 1994) and Sharpe (US 1,795,451,
issued March 10, 1931).
3. Rejection of claims 6 and 15 under 35 U.S.C. § 103(a) as unpatentable
in view of Tanahashi, Sharpe, and Akamine (JP 6-93626, published April 5,
1994).
4. Rejection of claims 9, 18, and 22 under 35 U.S.C. § 103(a) as
unpatentable in view of Tanahashi, Sharpe, and Schmitt (US 2,313,363,
issued March 9, 1943).
5. Rejection of claim 27 under 35 U.S.C. § 103(a) as unpatentable in
view of Tanahashi, Sharpe, and Cromrich (US 4,831,802, issued May 23,
1989).
6. Rejection of claim 28 under 35 U.S.C. § 103(a) as unpatentable in
view of Tanahashi, Sharpe, Cromrich, and Schmitt.

Appeal 2009-007916
Application 10/946,428
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ISSUES
The issues presented by this appeal are:
1. Does Ueno disclose a landscaping block having sides that
progressively narrow along the full length of the distance from the front to
the rear surface?
2. Is the proposed combination of Tanahashi and Sharpe based upon a
sufficient reason with a rational underpinning to explain why a person of
ordinary skill in the art would have modified Tanahashi's blocks to have a
generally trapezoidal shape as taught by Sharpe?
ANALYSIS
Claim Construction
We look to the claim and then to the prior art. Medichem, S.A. v.
Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both anticipation under
§ 102 and obviousness under § 103 are two-step inquiries. The first step in
both analyses is a proper construction of the claims . . . . The second step in
the analyses requires a comparison of the properly construed claim to the
prior art.” (internal citations omitted)).
The Examiner interpreted the recitation of independent claims 1, 10,
19 and 47 that the straight and tapered sides of the blocks must extend “from
the face to the back,” to not require the sides of the block to be in direct
contact with the face and back surfaces because the word “extend” has a
broader meaning (no definition provided). Ans. 12. We disagree with this
claim construction.
Independent claim 1 is directed to a landscaping block set for forming
retaining walls, independent claim 10 is directed to a retaining wall
comprised of a landscaping block set, independent claim 19 is directed to a
method of forming a retaining wall from a set of precast landscaping blocks,
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and independent claim 47 is directed to a landscaping block set for forming
retaining walls. The blocks of independent claims 1, 10, 19, and 47 have a
generally trapezoidal shape comprised of a face, a back, and two straight and
tapered sides that extend from the face to the back.3 Thus independent
claims 1, 10, 19, and 47 each call for blocks having a generally trapezoidal
shape with straight and tapering sides that extend “from the face to the
back.”
The word “extend” is commonly understood to mean “to lay out at
full length,” and the word “face” is commonly understood to mean “the
surface of something esp. where only one surface is commonly considered.”
WEBSTER’S UNABRIDGED (1996) (“extend,” vb. definition 2; “face,” noun,
definition 6a) (Available on-line at http://lionreference.chadwyck.com/).
Appellants’ Specification describes that blocks 124 include a face 12C that is
wider than a back 12D, and sides 12E and 12F that are straight, and become
progressively narrower (taper) from the face 12C to the back 12D. Spec.
5:23 – 6:2.
Taking into account the ordinary meaning of the words in the claim
and the description of the invention provided in Appellants’ Specification, a
person having ordinary skill in the art would understand independent claims
1, 10, 19 and 47 to call for blocks each having a generally trapezoidal shape

3 Independent claim 10 does not use the word “extend” but recites in a
similar manner that the blocks “assume a generally trapezoidal shape, and
wherein each of the sides of the block tapers from the face to the back and is
substantially straight along the tape from the face to the back.” As such,
claim 10 calls for the straight and tapered sides to extend from the face to the
back of each block.
4 The blocks of second group 14, and third group 16 are described as having
the same structure as the blocks of first group 12. Spec. 6:3-4.
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Application 10/946,428
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with sides that progressively narrow along the full length of the distance
from the front surface to the rear surface of the block.
Anticipation by Ueno
Ueno discloses a retaining wall comprised of precast blocks. Ueno 3,
para. [0005].5 An annotated version of Figure 3 of Ueno is reproduced
below:

Figure 3 depicts Ueno’s hollow block A with annotations added for
the face, back, and side. The sides of Ueno’s block A include a front
bulging part 4 adjoining the front face, connected by a lateral rib 7 and a
recessed part 3 to a rear bulging part 5 adjoining the back. Ueno 4-5, para.
[0008]. Block A narrows in width from front bulging part 4 to lateral rib 7

5 All citations to Ueno refer to the Official English Translation of Ueno,
translated by The McElroy Translation Company, August 2007,
PTO 07-6469.
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7
and recessed part 3, and then increases in width from lateral rib 7 and
recessed part 3 to rear bulging part 5. Ueno, fig. 3.
Because Ueno does not disclose a block having sides that
progressively narrow along the full length of the distance from the front
surface to the rear surface of the blocks, Ueno does not anticipate
independent claims 1, 10, 19, and 47. The rejection of claims 2, 7, 8, 11, 16,
17, 20, 21, 23, 24, 26, 48, 49, 51-53, and 58 is also in error in that these
claims depend from one of independent claims 1, 10, 19, and 47.

Rejections under 35 U.S.C. § 103(a) based on Tanahashi and Sharpe6
As we noted in our claims construction, supra, independent claims 1,
10, 19, and 47, each include blocks (or the use of blocks) having a generally
trapezoidal shape.
The Examiner concluded it would have been obvious to modify
Tanahashi’s blocks to have a generally trapezoidal shape as taught by
Sharpe, “in order to form a curved type retaining wall,” because such a
modification was within the knowledge of a person of ordinary skill in the
art. Ans. 5, 17. Appellants argue that the proposed combination is not based
upon a sufficient rationale. Br. 12-13. We agree with Appellants.
Even assuming for sake of argument that a person of ordinary skill in
the art knew that a generally trapezoidal shaped block may be used to create
a curved retaining wall, such knowledge alone is not an adequate rationale
for the proposed modification. A person of ordinary skill in the design of
landscaping blocks may have knowledge of numerous modifications or

6 Each of the second through the sixth rejections uses the same combination
of Tanahashi and Sharpe, with modifications of other aspects as taught by
further references.
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methods permitting Tanahashi’s landscaping blocks to be used to create a
curved retaining wall. The rationale fails to explain, of the numerous
possible modifications and methods, what would have led a person of
ordinary skill in the art to modify Tanahashi’s blocks to have a generally
trapezoidal shape. Absent such an explanation, we see no reason other than
hindsight that a person of ordinary skill in the art would have modified
Tanahashi’s block to have a generally trapezoidal shape. See KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (Rejecting the rigid requirement of
a teaching, suggestion or motivation to combine known elements in order to
show obviousness, but nonetheless making clear that “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”) (citing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The rejections of claims 2, 5-9, 11-18, 20-25, 27, 28, 48-53, and 58
are also in error in that these claims depend from one of independent claims
1, 10, 19, and 47.
CONCLUSIONS
Ueno does not disclose a landscaping block having sides that
progressively narrow along the full length of the distance from the front to
the rear surface.
The proposed combination of Tanahashi and Sharpe is not based upon
a sufficient reason with a rational underpinning to explain why a person of
ordinary skill in the art would have modified Tanahashi’s blocks to have a
generally trapezoidal shape as taught by Sharpe.

Appeal 2009-007916
Application 10/946,428
9
DECISION
We REVERSE the Examiner’s decision to reject claims 1, 2, 5-28, 47-
53, and 58.

REVERSED

mls

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