Ex Parte Zarraonandia

Patent Trial and Appeal Board

Sep 28, 2017

12884047 (P.T.A.B. Sep. 28, 2017)

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.
12/884,047 09/16/2010 David Zarraonandia 626-2T-007 6019
23935 7590 10/02/2017
KOPPEL, PATRICK, HEYBL & PHILPOTT
2815 Townsgate Road
SUITE 215
Westlake Village, CA 91361-5827
EXAMINER
AGUDELO, PAOLA
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
GENERALMAIL@KOPPELPATENT.COM
eofficeaction @ appcoll.com
usptointake@koppelpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ZARRAONANDIA
Appeal 2016-008338
Application 12/884,047
Technology Center 3600
Before: ELENI MANTIS MERCADER, CARL L. SILVERMAN, and
SCOTT B. HOWARD, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-008338
Application 12/884,047
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1—
10, 12—19, 21—26, 28—30, 32 and 34—36. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
THE INVENTION
The claimed invention is directed to a customizable, modular
foundation system using blocks and post-tensioning for improved structural
integrity of the foundation. The blocks are hexagonal, such that each block
has six sides and post-tensioning cables can run in at least three different
directions. Structures may be secured to the foundation comprised of
multiple blocks, with the foundation being rigid, customizable, and both
assembled and usable in any desired location. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
A modular foundation system, comprising:
a plurality of concrete or plaster blocks comprising six or
more side surfaces, each of said blocks adjoining a plurality of
others of said blocks at a plurality of joints so as to act as a single
foundation unit;
at least three holes through each of said blocks, each of
said blocks configured next to at least one other of said blocks
such that the holes of adjacent blocks are aligned; and
a plurality of cables or bars running through said aligned
holes, said cables or bars fixing said blocks together such that
said blocks act as a single foundation unit;
wherein all of said cables or bars run in different directions
than said joints between adjacent blocks.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jones et al. US 6,037,031 Mar. 14,2000
Fey et al. US 6,050,038 Apr. 18, 2000
Silber US 6,702,522 B2 Mar. 9,2004
REJECTIONS
The Examiner made the following rejections:
Claims 1—10, 12—19, 21—26 and 28—30, 32, and 34—35 stand rejected
under 35 U.S.C § 103(a) as being unpatentable over Fey in view of Jones.
Final Act. 3—14
Claims 24—26 and 35 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Fey in view of Jones and further in view of Silber. Final
Act. 13.
ISSUES
The pivotal issues are whether Appellant identified reversible error in
the Examiner’s obviousness rejections of the claimed subject matter over the
combination of Fey in view of Jones, and if not, whether Appellant
overcame the rejections by rebutting the prim a facie case with sufficient
evidence of commercial success and long-felt need.
ANALYSIS
We adopt the Examiner’s findings in the Answer and Final Action and
we add the following primarily for emphasis. We note that if Appellant
failed to present arguments on a particular rejection, we will not unilaterally
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review those uncontested aspects of the rejection. See Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas, 551 F.3d
1307, 1313—14 (Fed. Cir. 2008) (The Board may treat arguments Appellant
failed to make for a given ground of rejection as waived).
Appellant argues that the Examiner did not provide a benefit for using
hexaconal foundation blocks thereby constituting impermissible hindsight.
App. Br. 5—6. Appellant points us to the Affidavit of David Zarraonandia,
Exhibit C, that the U.S. Navy found the design covered by the current claims
as “new, never used, innovative” (App. Br. 7). Appellant asserts that the
Examiner failed to provide “teaching, suggestion, motivation” to combine
Fey and Jones. App. Br. 8.
We are not persuaded by Appellant’s arguments. First, we agree with
the Examiner that it would have been obvious, at the time of the invention,
to modify Fey with Jones because Jones teaches that using hexagonal shaped
blocks provides for a solid interlocking structure when the blocks are drawn
together (Ans. 15 citing col. 6,1. 17—19). This is a benefit of using
hexagonal blocks (Ans. 15). We also agree with the Examiner’s findings
that Fey teaches a foundation system of blocks acting as a single foundation
unit (Ans. 15). Thus, we agree with the Examiner’s conclusion that a person
of ordinary skill in the art looking to improve Fey would look to Jones,
because Jones also discloses blocks being connected with tensioning cables
passing through sleeves, and realize that the blocks of Jones provide a better
solid interlocking structure due to their hexagonal shape (Ans. 15).
In KSR, the Supreme Court held that “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
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obvious unless its actual application is beyond his or her skill.” See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The Supreme Court has
also determined the conclusion of obviousness can be based on the
interrelated teachings of multiple patents, the effects of demands known to
the design community or present in the marketplace, and the background
knowledge possessed by a person having ordinary skill in the art. Id., at
418. The skilled artisan is “a person of ordinary creativity, not an
automaton.” Id. at 421. Appellant has not presented any evidence
demonstrating that the modification would have been “uniquely challenging
or difficult for one of ordinary skill in the art.” See Leapfrog Enters. Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, at
418). Accordingly, we find the Examiner appropriately relied on the
teachings of Fey and Jones. Furthermore, the Examiner articulated
reasoning with the rational underpinning of using hexaconal blocks for a
better solid interlocking structure to support the combination.
Having determined that prima facie obviousness has been established,
we consider anew any evidence of obviousness against any evidence of non­
obviousness (such as evidence of unexpected results). See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
We considered the Declaration by inventor David Zarraonandia (filed
June 27, 2014) as evidence of non-obviousness of the invention. (See
Evidence Exhibits A—C). Appellant contends that the evidence submitted
shows the commercial success and long felt need as further evidence of
nonobviousness {id. at 6—7). The burden rests with Appellant to establish
that the “asserted commercial success of the product must be due to the
merits of the claimed invention beyond what was readily available in the
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prior art”. SeeAsyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed.
Cir. 2008) (quoting J. T. Eaton & Co., v. Atl. Paste & Glue Co., 106 F.3d
1563, 1571 (Fed. Cir. 1997)). A primary consideration in demonstrating
actual commercial success is if sales of the claimed invention produced a
substantial share of the marketplace. See In re Huang, 100 F.3d 135, 140
(Fed. Cir. 1996).
Appellant did not show what percentage of the market was acquired.
Thus, there is insufficient evidence to conclude commercial success. Even if
the evidence proffered sufficiently demonstrates commercial success, it is
only relevant in the obviousness context if there is proof that the success
results from the unique characteristics of the claimed invention:—as opposed
to other economic and commercial factors unrelated to the qual ity of the
claimed invention. In re Huang, 100 F.3d at 140. Appellant did not show a
nexus between commercial success based on the use of the hexaconal shape.
The burden rests with Appellant to establish long-felt need with
objective evidence that an art-recognized problem existed for a long period
of time without solution. The evidence must show that the need v/as a
persistent one and that it wras recognized by those of ordinary skill in the art.
Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
1383 (Fed. Cir. 1983); see also In re Gershon, 372 F.2d 535, 538 (CCPA
1967). Further, the claimed invention must in fact satisfy the long-felt need.
In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971). Appellant did not
provide objective evidence of a persistent need that was recognized by those
of ordinary skill in the art that went unsatisfied prior to the claimed
invention.
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In addition, although secondary considerations such as unexpected
results must be taken into account, they do not necessarily control the
obviousness conclusion. See Agrizap, Inc., v. Woodstream Corp., 520 F.3d
at 1344; see also, Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001,
1009 (Fed. Cir. 2009) (“[E]vidence of unexpected results and other
secondary considerations will not necessarily overcome a strong prima facie
showing of obviousness”); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372
(Fed. Cir. 2007) (“[T]his secondary consideration does not overcome the
strong showing of obviousness in this case. Although secondary
considerations must be taken into account, they do not necessarily control
the obviousness conclusion.”); see also Newell Cos., Inc. v. Kenney Mfg.
Co., 864 F.2d 757, 769 (Fed. Cir. 1988).
We agree with Examiner that the evidence presented in the Legyel’s
affidavit is, “a comparison of the geometric properties of the shapes formed
when you assemble a collection of squares or hexagons together” which
further indicates that section modulus (geometric property) of individual or a
group of squares or hexagons covering the same area is broadly known in
the art, and one of ordinary skill in the art would have been fully capable of
calculating it by the mere application of old and well known formulas (Ans.
16). Thus, we further agree with the Examiner that while the evidence
provided does suggest a hexagonal shape has a greater section modulus than
a square when calculated at various rotation angles, this does not constitute
substantial evidence of unexpected results (App. Br. 16). There is nothing
unexpected about values obtained by plugging in numbers into “standard
engineering formulas with the commercially available software package
AutoCAD” (see Mr. Lengyel’s letter page 3) as these calculations do not
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address why the foundation with hexagons would have improved capacity or
stability, result in better settlement values or improved bearing pressure
exerted on the soil (Ans. 16—17). We agree with the Examiner’s finding that
Appellant’s assertions of commercial success constitute mere argument due
to the absence of test comparing Appellant’s block foundation with the prior
art. See MPEP 716.01(c). The burden is on Appellant to establish that the
results are in fact unexpected, unobvious and of statistical and practical
significance (Ans. 17).
We further agree with the Examiner that as to the “evidence” provided
by Exhibit C for solving an “unmet need”, the opinion of a representative of
the U.S. Navy that amounts to an affirmation that the claimed subject matter
is new and has never been used before, is not considered evidence of solving
an “unmet need” neither is relevant to the issue of nonobviousness (Ans.
17).
In response to Appellant’s argument based upon the age of the
references, we also agree with the Examiner that contentions that the
reference patents are old are not persuasive absent a showing that the art
tried and failed to solve the same problem notwithstanding its presumed
knowledge of the references (Ans. 17). See In re Wright, 569 F.2d 1124
(CCPA 1977).
Accordingly, we affirm the Examiner’s rejections of claim 1 and for
the same reasons the rejections of claims 2—10, 12—19, 21—26, 28—30, 32 and
34—36.
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CONCLUSIONS
Appellant has not identified reversible error in the Examiner’s
obviousness rejections of the claimed subject matter over the combination of
Fey in view of Jones, and did not overcome the rejections by rebutting the
prima facie case with sufficient evidence of commercial success and long-
felt need.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—10, 12—
19, 21-26, 28-30, 32 and 34—36 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)(l)(iv).
AFFIRMED
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