Hans-Dieter Gruetering

Patent Trials and Appeals Board

Jan 17, 2020

14763401 - (D) (P.T.A.B. Jan. 17, 2020)

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.
14/763,401 07/24/2015 Hans-Dieter GRUETERING 456722US99PCT 8488
22850 7590 01/17/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
FORD, GISELE D
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
01/17/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-DIETER GRUETERING
Appeal 2017-0113461
Application 14/763,401
Technology Center 3600
Before JOHN C. KERINS, BRANDON J. WARNER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL

1 We reference herein the Final Office Action dated November 2, 2016
(“Final Act.”), Appeal Brief filed April 28, 2017 (“Appeal Br.”), Examiner’s
Answer dated July 6, 2017 (“Ans.”), and Reply Brief filed September 6,
2017 (“Reply Br.”).
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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–14, 16, 19, and 20.3 An oral hearing
was held on July 8, 2019.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART.

CLAIMED SUBJECT MATTER
Claims 1 and 7 are the independent claims on appeal. Independent
claim 1, reproduced below, is illustrative of the claimed subject matter:
Claim 1: A method for exploiting an industrial site, the
method comprising:
erecting a permanent building on the site, wherein the
building comprises
a multiplicity of bays to receive interchangeable
functional units;
a building shell to protect the functional units
received from effects of weather;
technical building equipment; and
an infrastructure grid for energy, material, and data;
providing a multiplicity of pallets, which are neutral with
respect to a utilization thereof, are standardized with respect to
dimensions thereof, and are designed to be received by the bays
of the building;

2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Evonik Degussa GmbH. Appeal Br. 1.
3 The Final Office Action indicates claims 1–14 and 16–20 are rejected.
Final Act. 1. After the Final Office Action, Appellant filed an Amendment
on December 30, 2016, canceling claims 17 and 18, and amending
independent claims 1 and 7 to include the subject matter of claims 17 and
18, respectively. The Examiner entered the Amendment via an Advisory
Action dated January 25, 2017. Thus, claims 17 and 18 are no longer
pending and not before us on appeal.

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equipping the pallets with at least one of production or
operating devices at one or more locations remote from the site
to form a first generation of the functional units, and the at least
one of the production or operating devices gives the first
generation of the functional units a specific first purpose defining
a usage of each respective one of the first generation of the
functional units in the building;
transporting the functional units to the site;
installing the first generation of the functional units in the
building by inserting the first generation of the functional units
in first bays among the bays;
connecting the first generation of the functional units to
the infrastructure grid via standardized connections in the first
bays, the standardized connections to transfer the energy, the
material, and the data from the infrastructure grid;
utilizing the first generation of the functional units within
the building in accordance with the specific first purpose of each
respective one of the first generation of the functional units;
equipping the pallets with at least a different one of the
production or operating devices at one or more locations remote
from the site to form a second generation of the functional units,
at least the different one of the production or operating devices
gives the second generation of the functional units a specific
second purpose defining a usage of each respective one of the
second generation of the functional units in the building, and the
specific second purpose differs at least partially from the specific
first purpose;
replacing the first generation of the functional units with
the second generation of the functional units;
connecting the second generation of the functional units to
the infrastructure grid via the standardized connections in the
first bays; and
utilizing the second generation of the functional units
within the building in accordance with the specific second
purpose of each respective one of the second generation of the
functional units, wherein
the at least one of the production or operating devices of
the first generation of the functional units includes a service life
that is different from a service life of the different one of the
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production or operating devices of the second generation of the
functional units.
Appeal Br., Claims App.

REJECTIONS
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis
1–6, 19 103(a) Beighton,4 Schoenfeld5
7–9 102(b) Beighton
20 103(a) Beighton
10–14, 16 103(a) Beighton, DiMartino6

ANALYSIS
Obviousness Based on Beighton and Schoenfeld
Independent Claim 1
In rejecting independent claim 1, the Examiner relies on Beighton to
disclose most of the limitations. Final Act. 4–6. In particular, the Examiner
finds Beighton discloses erecting a permanent building with an infrastructure
grid, forming a first generation of functional units having a specific first
purpose, connecting the first generation of the functional units to the
infrastructure grid via standardized connections, and forming a second
generation of functional units having a specific second purpose that differs at
least partially from the specific first purpose. Id.
Beighton discloses a building structure comprising a support module
and one or more room modules that are independently attached to the

4 US 6,959,515 B1, issued Nov. 1, 2005.
5 US 5,474,411, issued Dec. 12, 1995.
6 US 4,599,829, issued July 15, 1986.
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support module to allow independent removal or addition of room modules.
Beighton, Abstract. Figures 7 and 8 of Beighton, reproduced below, depict
plan views of the ground floor and first floor, respectively, of the building
structure. Id. at 4:1–4.

Figures 7 and 8 of Beighton show support modules 3 and a plurality of room
modules 4, namely a kitchen module, a living room module, a dining room
module, three bedroom modules, and a bathroom room module. Id.
at 7:37–42. The building is assembled by bolting room modules 4 to support
modules 3, and an appropriate roof structure and cladding 18 can be added.
Id. at 7:44–47. Beighton further discloses the services for the building, e.g.,
water, gas, electricity, telecommunications, air conditioning, heating,
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vacuum pressure, computer network cabling, and video and audio feeds, are
principally routed through the support modules, thereby facilitating the
connection of services to each room module attached to the support module.
Id. at 3:10–13, 7:12–17.
Although Beighton’s various room modules, e.g., bathroom and
bedroom modules, which the Examiner relies on for disclosing the recited
first and second generations of functional units, are removable, the Examiner
acknowledges Beighton does not expressly disclose the claim limitations
reciting “replacing the first generation of the functional units with the second
generation of the functional units” and “connecting the second generation of
the functional units to the infrastructure grid via the standardized
connections in the first bays.” Final Act. 6. To teach these limitations, the
Examiner relies on Schoenfeld. Id.
Schoenfeld teaches a multistory structure for chemical plants.
Schoenfeld 1:42–43. Figure 2 of Schoenfeld, reproduced below, is an
elevational view of a multistory chemical plant. Id. at 2:41–42.
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Figure 2 of Schoenfeld shows structural segments 2 subdivided into
individual rooms 7. Id. at 3:13–16. Structural segments 4 contain
vertically-located supply lines 10 and removal lines 11. Id. at 3:25–35.
Mobile frames 8 contain plant components 5 and the necessary connections,
and are moved in and out of rooms 7 through access openings 16. Id.
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at 3:18–22, 36–37. By having the plant components and associated
connections on mobile frames, the plant components can be simply and
rapidly replaced. Id. at Abstract, 1:56–62, 2:15–29.
According to the Examiner, it would have been obvious to combine
the teachings of Beighton and Schoenfeld to result in the claimed invention.
Final Act. 6. Namely, the Examiner determines it would have been obvious
to remove the first units and replace them with second units
connected to the same infrastructure grid, as it is known to update
or refurbish a building according to a user’s needs, and that the
second units would need to be connected in the same manner as
the first units, as rooms in a building have generally the same
infrastructure requirements.
Id.
Appellant argues neither Beighton nor Schoenfeld discloses replacing
the first generation of functional units having a specific first purpose
defining the usage of each one of the first generation of functional units with
a second generation of functional units having a specific second purpose that
defines the usage of each of the second generation of functional units and
that differs at least partially from the specific first purpose, as independent
claim 1 requires. Appeal Br. 13–14; Reply Br. 3–4. Per Appellant,
Beighton discloses that room modules 4 are entirely independent of one
another, not that they are interchangeable. Appeal Br. 13. Appellant further
asserts Schoenfeld teaches the plant components are replaceable with others,
but does not specify whether the others are different from the ones being
replaced. Id. at 14.
Appellant’s arguments regarding Beighton and Schoenfeld
individually do not apprise us of error in the Examiner’s rejection, which is
based on the combined teachings Beighton and Schoenfeld. See In re
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Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show
non-obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.”). Schoenfeld teaches
removing functional units, i.e., mobile frames equipped with plant
components, and replacing them with others. Schoenfeld 2:15–23. As the
Examiner explains in the Answer, Beighton similarly discloses replacing
functional units, i.e., room modules, and Beighton further discloses that, by
providing replaceable rooms, the rooms can be readily upgraded to a higher
specification or changed to a different functionality. Ans. 3 (citing
Beighton 1:45–48). Although Beighton refers to the room modules being
entirely independent of the other room modules (Beighton 6:9–10), we
disagree with Appellant that this reference precludes a room module from
being replaced with a room module having a different functionality. Rather,
Beighton discloses that the room modules are independently attached to the
support modules. Id. at 6:3–10. In view of Schoenfeld’s teaching of
replacing functional units, and Beighton’s disclosure of replacing functional
units to change functionality, Appellant does not apprise us of error in the
Examiner’s determination that a person of ordinary skill in the art would
have combined the teachings of Beighton and Schoenfeld to result in
replacing the first generation of functional units with a second generation of
functional units having a different usage.
Appellant also argues neither Beighton nor Schoenfeld teaches
connecting each of the first generation and second generation of functional
units to the infrastructure grid via standardized connections to transfer the
energy, material, and data from the infrastructure grid, as independent
claim 1 requires. Appeal Br. 13–15; Reply Br. 4–5. With respect to
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Beighton, Appellant contends the Examiner acknowledges Beighton does
not disclose connecting the second generation of functional units to the
infrastructure grid. Appeal Br. 14. In regard to Schoenfeld, Appellant
contends it teaches the connections are made to the “appropriate ring lines
and distributors,” and thus fails to teach standardized connections for
connecting both the first and second generation of functional units to transfer
the energy, material, and data from the infrastructure grid. Id. at 15 (quoting
Schoenfeld 2:27–28).
Appellant’s arguments regarding Beighton and Schoenfeld
individually are not persuasive of Examiner error. The Examiner finds
Beighton discloses an infrastructure grid for energy, material, and data.
Final Act. 4–5. Indeed, Beighton discloses the support modules provide the
principal route for all services to the room modules, whereby the services
include water, gas, electricity, telecommunications, air-conditioning,
heating, vacuum, computer network cabling, and video and audio feeds.
Beighton 7:12–17. Schoenfeld similarly teaches an infrastructure grid,
namely structural segments 4 containing vertically-located supply lines 10
and waste removal lines 11 connected in tiers to horizontally-running ring
lines 12. Schoenfeld 3:26–29. Schoenfeld further teaches mobile units 8
received in rooms 7 are connected to ring lines 12 via quick connections 15,
flexible hose connections, or plug connections. Id. at 2:25–29, 3:29–31,
Fig. 2. Given Beighton’s disclosure of an infrastructure grid for energy,
material, and data, and Schoenfeld’s teaching of connecting functional units,
i.e., mobile frames equipped with plant components, to the infrastructure
grid via standardized connections in the bays, Appellant does not apprise us
of error in the Examiner’s determination that the combined teachings of
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Beighton and Schoenfeld would result in connecting the first generation and
second generation of functional units to the infrastructure grid via
standardized connections to transfer the energy, material, and data from the
infrastructure grid.
Appellant further argues Beighton and Schoenfeld are silent regarding
“the at least one of the production or operating devices of the first generation
of the functional units includes a service life that is different from a service
life of the different one of the production or operating devices of the second
generation of the functional units” as recited in independent claim 1.7
Appeal Br. 15–16; Reply Br. 5–8. Appellant’s argument is not convincing.
The Examiner relies on Beighton’s various room modules, e.g.,
bathroom and bedroom modules, for disclosing the first and second
generation functional units, and the Examiner finds the different room
modules have different production or operating devices, e.g., toilet and bed.
Final Act. 5–6. The Examiner explains the different operating devices
require updating at different times. Id. at 9; Ans. 4. We agree with the
Examiner that a person of ordinary skill in the art would understand different
operating devices, e.g., toilet and bed, have different service lives. See In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of
a reference, it is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”); In re Jacoby, 309 F.2d 513,

7 Prior to the Final Office Action, this limitation was set forth in claim 17.
Amendment filed September 19, 2016; Final Act. 9. As noted above, after
the Final Office Action, Appellant amended independent claim 1 to include
the subject matter of claim 17 and canceled claim 17. See supra n.3.
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516 (CCPA 1962) (explaining that persons skilled in the art “must be
presumed to know something” about the art “apart from what the references
disclose”).
Additionally, Appellant argues the Examiner impermissibly fails to
give patentable weight to the limitations reciting an intended use. Appeal
Br. 16–18. The Examiner, however, does not ignore these limitations. To
the contrary, the Examiner finds that the limitations reciting an intended use,
i.e., a function, do not result in a structural difference between the claimed
invention and the cited prior art, and that the prior art is capable of
performing the recited functions. Final Act. 7; Ans. 4; see also In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971) (“[W]here the Patent Office has
reason to believe that a functional limitation . . . may . . . be an inherent
characteristic of the prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.”).
In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s rejection of independent claim 1. We thus sustain the rejection.

Claim 2
Claim 2 depends from independent claim 1. Appeal Br., Claims App.
Claim 2 recites “wherein at least some of the functional units of the first
generation are transported, after being replaced, to a second building remote
from the site, and are inserted and utilized in the second building.” Id.
The Examiner acknowledges Beighton does not disclose the limitation
of claim 2, but determines it would have been obvious that “if the modules
can be removed and are replaceable, that they may be placed in a second
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building on a second site.” Final Act. 7. The Examiner further determines it
would have been obvious that, “as the modules are disclosed as being
removable, the displaced modules are fully capable of being placed
elsewhere where they may continue to be utilized.” Ans. 5.
Appellant argues the Examiner has not found the limitation of claim 2
in the prior art, and fails to provide support for the determination of
obviousness, such as prior art evidence of a teaching that precisely suggests
why a person of ordinary skill in the art would have modified the cited
references to achieve the claimed subject matter. Appeal Br. 18.
Appellant’s arguments are not persuasive of error.
In rejecting independent claim 1, from which claim 2 depends, the
Examiner finds Beighton discloses transporting, installing, and utilizing the
first generation of functional units in a building. Final Act. 5. The
Examiner proposes to modify Beighton to perform these same steps in a
second building such that the Examiner’s proposed modification is simply
the duplication of steps, which is obvious absent a new and unexpected
result brought about by the duplication. In re Harza, 274 F.2d 669, 774
(CCPA 1960) (“It is well settled that the mere duplication of parts has no
patentable significance unless a new and unexpected result is produced.”).
Nonetheless, the Examiner reasons it would have been obvious to
perform these same steps in a second building to continue to use the
functional units, i.e., reuse the functional units in another building. Ans. 5.
Although the Examiner’s reason may not be derived explicitly from the cited
prior art, the reason need not come from the references themselves.
The suggestion to combine may be found in explicit or implicit
teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the
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problem to be solved. When determining the patentability of a
claimed invention which combines two known elements, the
question is whether there is something in the prior art as a whole
to suggest the desirability, and thus the obviousness, of making
the combination.
WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed.
Cir. 1999) (citations and internal quotations omitted). Furthermore, “we
have repeatedly held that an implicit motivation to combine exists . . . when
the ‘improvement’ is technology-independent and the combination of
references results in a product or process that is more desirable, for example
because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable,
or more efficient.” Dystar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). Reusing materials
is a technology-independent improvement, and thus there is an implicit
motivation to modify Beighton to include the limitation of claim 2.
For these reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 2 would have been
obvious. We sustain the rejection of claim 2.

Claim 3
Claim 3 depends from claim 2. Appeal Br., Claims App. Claim 3
recites
wherein the operating or production devices are removed
from at least some of replaced ones of the functional units at one
or more locations remote from the site, and the pallets of the
replaced ones of the functional units thereby obtained, which are
neutral with respect to the utilization thereof, are reequipped or
stored.
Id.
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The Examiner acknowledges Beighton does not disclose the limitation
of claim 3, but determines it would have been obvious “that the functional
unit[], after being removed and replaced because it is no longer necessary,
be refurbished into a different and required functional unit having a different
purpose and that the production or operating devices would be removed and
replaced with new production and operating devices as needed.” Final
Act. 7. The Examiner further determines it would have been obvious that
“as the units are no longer needed for their initial purpose, it would be
obvious to refurbish them into a unit that is needed with equipment that is
needed for that room rather than discarding the outdated unit.” Ans. 5.
Appellant makes the same arguments for claim 3 as for claim 2.
Namely, Appellant argues the Examiner has not found the limitation of
claim 3 in the prior art, and fails to provide support for the determination of
obviousness, such as prior art evidence of a teaching that suggests why a
person of ordinary skill in the art would have modified the cited references
to achieve the claimed subject matter. Appeal Br. 19. Appellant’s
arguments for claim 3 are unpersuasive for essentially the same reasons they
are not persuasive with respect to claim 2.
In rejecting independent claim 1, from which claim 3 depends, the
Examiner finds Beighton discloses equipping pallets with production or
operating devices to form functional units. Final Act. 5. The Examiner
proposes to modify Beighton to reequip, i.e., refurbish, the pallets such that
the Examiner’s proposed modification is essentially the replication of the
equipping step, which is obvious absent a new and unexpected result. See
supra In re Harza, 274 F.2d at 774. Moreover, the Examiner reasons it
would have been obvious to refurbish the pallets to avoid discarding them.
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Ans. 5. As discussed above with respect to claim 2, reusing materials is a
technology-independent improvement and provides an implicit motivation to
modify Beighton to include the limitation of claim 3. See supra Dystar, 464
F.3d at 1368. Being unpersuaded of error in the rejection of claim 3, we
sustain the rejection.

Claim 4
Claim 4 depends from claim 3, and further recites first and second
groups of operating or production devices. Appeal Br., Claims App.
Namely, claim 4 recites:
wherein the operating or production devices include:
a first group including at least one of:
chemical, biological, physical or nutritional
production devices,
laboratory facilities,
pilot plants, and
offices; and
a second group including at least one of:
technical building equipment,
heating systems,
air-conditioning systems,
ventilation systems,
fire extinguishing systems,
storage rooms,
product handling facilities,
electronic control systems,
process management equipment,
compressed air supply systems,
water supply systems,
power supply systems,
sewage systems,
systems to provide starting materials,
systems to provide process energy including
heat or cold,
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exhaust treatment systems including thermal
afterburners,
activated carbon adsorption,
exhaust gas scrubbing,
sanitary systems, and
staff rooms.
Id.
Appellant argues the Examiner has not sufficiently explained how
Beighton discloses operating or production devices from the recited first and
second groups. Appeal Br. 20. Appellant’s argument is not convincing.
The Examiner relies on Beighton’s toilet for disclosing operating or
production devices. Final Act. 8. A toilet is, at least, a sewage system and a
sanitation system, and, thus, discloses operating or production devices from
the recited second group. The Examiner also relies on Beighton’s sink for
disclosing operating or production devices (id. at 2), and a sink discloses the
recited second group at least as a water supply system. The Examiner
further finds Schoenfeld discloses mobile frames having various plant parts,
i.e., operating or production devices. Ans. 4 (citing Schoenfeld 2:15–29).
Indeed, Schoenfeld’s plant parts teach the recited first group of operating or
production devices as chemical production devices, laboratory facilities, and
pilot plants.
For these reasons, Appellant does not apprise us of error in the
Examiner’s determination that the combined teachings of Beighton and
Schoenfeld would result in the first and second groups of operating or
production devices recited in claim 4. We, therefore, sustain the rejection of
claim 4.

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Claim 5
Claim 5 depends from claim 4. Appeal Br., Claims App. Claim 5
recites:
installing in the building at least one of the functional units
including the operating or production devices from the first
group,
installing in the building at least one of the functional units
including the operating or production devices from the second
group,
and the at least one of the functional units including the
operating or production devices of the second group remains in
the building when the at least one of the functional units
including the operating or production devices of the first group
is replaced.
Id.
The Examiner acknowledges Beighton does not disclose the last
limitation of claim 5, i.e., “the at least one of the functional units including
the operating or production devices of the second group remains in the
building when the at least one of the functional units including the operating
or production devices of the first group is replaced.” Final Act. 8. The
Examiner determines it would have been obvious that “since the modular
units are removable, some can remain intact when others are removed.” Id.
Appellant reiterates its arguments for claims 2 and 3 for claim 5.
Namely, Appellant argues the Examiner has not found the last limitation of
claim 5 in the prior art, and fails to provide support for the determination of
obviousness, such as prior art evidence of a teaching that suggests why a
person of ordinary skill in the art would have modified the cited references
to achieve the claimed subject matter. Appeal Br. 21. Appellant’s
arguments for claim 5 are similarly unpersuasive as its arguments for
claims 2 and 3.
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In rejecting independent claim 1, from which claim 5 depends, the
Examiner finds Beighton discloses installing functional units in the building.
Final Act. 5. The Examiner proposes to modify Beighton to reinstall, i.e.,
replace, certain functional units such that the Examiner’s proposed
modification is essentially the duplication of the installing step, which is
obvious absent a new and unexpected result. See supra In re Harza, 274
F.2d at 774. That notwithstanding, the Examiner further finds Beighton
teaches functional units having different service lives, and reasons it would
have been obvious to replace a functional unit at the end of its service life,
which, in view of the different service lives, would result in a functional unit
having operating or production devices from the first group while a
functional unit having operating or production devices from the second
group remains in the building. Ans. 6. Replacement upon exhaustion is a
technology-independent improvement and provides an implicit motivation to
modify Beighton to include the limitation of claim 5. See supra Dystar, 464
F.3d at 1368. Accordingly, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 5 would have been
obvious, and we sustain the rejection of claim 5.

Claim 6
Claim 6 depends from claim 5. Appeal Br., Claims App. Claim 6
recites:
wherein the operating or production devices are at least
one of the chemical production devices and the laboratory
facilities, which are replaceable with the offices, or
the operating or production devices are the offices, which
are replaceable with at least one of the chemical production
devices and the laboratory facilities.
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Id.
The Examiner acknowledges Beighton does not disclose the
limitations of claim 6, and determines it would have been obvious “to utilize
the modules in the way a user sees fit, as Beighton leaves the modules open
to their preferred utilization.” Final Act. 9. The Examiner further
determines that “the term ‘replaceable’ is an intended use statement,” and
that “the claim language only requires that the device be an office OR []
chemical production devices or a laboratory facility which is capable of
being replaced.” Ans. 6.
Appellant argues the Examiner has not found the limitations of
claim 6 in the prior art, and fails to provide support for the determination of
obviousness. Appeal Br. 22. Appellant’s arguments for claim 6 are the
same as its arguments for claims 2, 3, and 5, but, with respect to claim 6,
they are persuasive.
We begin by construing the scope of claim 6. Claim 6 recites two
alternatives for replaceable operating or production devices. We agree with
the Examiner that claim 6 requires just one of the recited alternatives. We,
however, disagree that either alternative requires only that the operating or
production devices be capable of being replaced. Rather, claim 6 expressly
specifies that operating or production devices are replaceable, i.e., capable of
being replaced, with another type of operating or production devices. More
specifically, the first alternative requires that the operating or production
devices be at least one of the chemical production devices and the
laboratories, which are replaceable with offices, and the second alternative
requires that the operating or production devices are offices, which are
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replaceable with at least one of the chemical production devices and the
laboratory facilities.
The Examiner finds Beighton discloses offices because any room in a
building can be considered an office. Ans. 5–6. As set forth above,
however, the Examiner relies on Beighton’s room modules for disclosing the
recited functional units (Final Act. 5–6), and has not demonstrated
persuasively that a room acting as an office discloses operating or
production devices that are offices. Absent a teaching of operating or
production devices that are offices, the Examiner has not explained how the
combined teachings of Beighton and Schoenfeld would result in operating or
production devices being at least one of the chemical production devices and
the laboratories, which are replaceable with offices, or operating or
production devices being offices, which are replaceable with at least one of
the chemical production devices and the laboratory facilities, as claim 6
requires. We, therefore, do not sustain the rejection of claim 6.

Claim 19
Claim 19 depends from independent claim 1. Appeal Br., Claims
App. Claim 19 recites:
wherein at least one of the pallets includes an installation
wall extending vertically on the at least one of the pallets and
extending along a longitudinal side of the at least one of the
pallets, at least one of the production or operating devices is
installed on the installation wall, and the standardized
connections are connected to the installation wall.
Id.
The Examiner finds Beighton’s sink being installed on a wall of a
bathroom room module discloses the recited production or operating devices
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installed on the vertically-extending installation wall. Final Act. 9. The
Examiner acknowledges Beighton does not explicitly disclose the
standardized connections connected to the installation wall, but determines it
would have been obvious “that the sink would somehow need to be
connected to the standardized connections (plumbing) in order for it to
function as a sink.” Id.
Appellant reiterates the same arguments for claims 2, 3, 5, and 6 for
claim 19. Namely, Appellant argues the Examiner has not found the last
limitation of claim 19 in the prior art, and fails to provide support for the
determination of obviousness, such as prior art evidence of a teaching that
suggests why a person of ordinary skill in the art would have modified the
cited references to achieve the claimed subject matter. Appeal Br. 23–24.
Appellant’s arguments are not convincing. As the Examiner explains, a
person of ordinary skill in the art would have understood that the building
would require plumbing, i.e., standardized connections, within the wall to
which the sink was attached for the sink to function as a sink. Ans. 7; see
supra In re Preda, 401 F.2d at 826; In re Jacoby, 309 F.2d at 516. Given
that a person of ordinary skill would have understood from Beighton’s
disclosure of sink mounted to a wall that the standardized connections for
the sink are similarly mounted to the wall, Appellant does not apprise us of
error in the rejection of claim 19. We, therefore, sustain the rejection of
claim 19.

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Anticipation Based on Beighton
Independent Claim 7
Independent claim 7 is similar to independent claim 1. Appeal Br.,
Claims App. Independent claim 7, however, recites a system, whereas
independent claim 1 recite a method. Id.
Appellant argues Beighton fails to disclose three limitations of
independent claim 1 for the reasons the prior art does not disclose the similar
limitations of independent claim 7. Appeal Br. 25–26. Firstly, Appellant
contends Beighton fails to disclose a first functional unit, which has a first
purpose defining the usage of the first functional unit in the building,
replaceable with a second functional unit having a second purpose that
defines the usage of the second functional unit in the building and that
differs at least partially from the first purpose. Id. This argument is not
persuasive of error. As the Examiner finds, Beighton discloses different
room modules with different usages, e.g., kitchen room module, living room
module, dining room module, bedroom room module, bathroom room
module, and further discloses the rooms are replaceable so that their
functionality can be changed. Final Act. 2–3; Ans. 3; Beighton 1:45–48,
7:37–42, Figs. 7–8.
Second, Appellant argues Beighton does not disclose first and second
functional units that are connectable to the infrastructure grid via
standardized connections in the first bay to transfer the energy, material, and
data from the infrastructure grid. Appeal Br. 25–26. Appellant’s argument
is not convincing. Unlike independent claim 1, which recites connecting
first and second generations of functional units to the infrastructure grid,
independent claim 7 recites first and second functional units that are
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connectable, i.e., capable of being connected, to the infrastructure grid. The
Examiner finds, and we agree, Beighton’s different room modules, i.e., first
and second functional units, are connectable to the infrastructure grid via
standardized connections because the room modules connect to the
building’s services, e.g., electricity, water, and computer network cabling,
housed within the support modules, and are replaceable with different room
modules. Final Act. 3; Beighton 3:10–13, 7:12–17.
Third, Appellant asserts Beighton does not disclose “the first of the
production or operating devices of the first functional unit includes a service
life that is different from a service life of the second of the production or
operating devices of the second functional unit” as recited in independent
claim 7.8 Appeal Br. 25–26. This argument is not persuasive of error for the
reasons stated above with respect to independent claim 1. Namely, we agree
with the Examiner that a person of ordinary skill in the art would understand
different operating devices, e.g., toilet and bed, have different service lives.
Final Act. 10; Ans. 4; see supra In re Preda, 401 F.2d at 826; In re Jacoby,
309 F.2d at 516.
For these reasons, Appellant does not apprise us of error in the
Examiner’s rejection of independent claim 7. We, therefore, sustain the
rejection.

8 Prior to the Final Office Action, this limitation was set forth in claim 18.
Amendment filed September 19, 2016; Final Act. 10. As noted above, after
the Final Office Action, Appellant amended independent claim 7 to include
the subject matter of claim 18 and canceled claim 18. See supra n.3.
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Claims 8 and 9
Appellant does not present arguments for claims 8 and 9 apart from
independent claim 7. Appeal Br. 26. For the same reasons as set forth for
independent claim 7, we sustain the rejection of claims 8 and 9.

Obviousness Based on Beighton
Claim 20 depends from independent claim 7. Appeal Br., Claims
App. Claim 20 recites the same limitation as claim 19 quoted above. Id.
The Examiner’s rejection of claim 20 is similar to the rejection of
claim 19. Compare Final Act. 10, with id. at 9. Appellant’s arguments for
claim 20 echo the arguments for claim 19. Compare Appeal Br. 26–27, with
id. at 23–24. For the reasons stated above with respect to claim 19,
Appellant’s arguments are unpersuasive of error. Accordingly, we similarly
sustain the rejection of claim 20.

Obviousness Based on Beighton and DiMartino
Claims 10 and 12–14
Appellant does not present arguments for claims 10 and 12–14 apart
from independent claim 7. Appeal Br. 27–29. For the same reasons as set
forth for independent claim 7, we sustain the rejection of claims 10 and
12–14.

Claim 11
Claim 11 ultimately depends from independent claim 7. Appeal Br.,
Claims App. Claim 11 recites “more than one of the building which are
provided with bays and are situated at a distance from one another.” Id.
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The Examiner finds Beighton discloses a building, but does not
specifically disclose the limitation of claim 11. Final Act. 11. The
Examiner determines it would have been obvious “to build more than one
buildings of the prior art and that any two buildings would be a distance
from one another.” Id.
Appellant argues the Examiner has not found the limitation of
claim 11 in the prior art, and fails to provide support for the determination
obviousness, such as prior art evidence of a teaching that precisely suggests
why a person of ordinary skill in the art would have modified the cited
references to achieve the claimed subject matter. Appeal Br. 28.
Appellant’s arguments are not persuasive of error. As the Examiner
explains, Beighton discloses a building, and the Examiner’s proposed
modification is simply the duplication of parts, which is obvious absent a
new and unexpected result brought about by the duplication. Ans. 7; see
supra In re Harza, 274 F.2d at 774.

Claim 16
Claim 16 depends from claim 5. Appeal Br., Claims App.
Appellant’s arguments for claim 16 are the same as the arguments for
claim 5. Compare Appeal Br. 29–31, with id. at 21–22. For the reasons set
forth above with respect to claim 5, Appellant’s arguments are unpersuasive
of error. Accordingly, we similarly sustain the rejection of claim 16.

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CONCLUSION
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 19 103(a) Beighton, Schoenfeld 1–5, 19 6
7–9 102(b) Beighton 7–9
20 103(a) Beighton 20
10–14, 16 103(a) Beighton, DiMartino 10–14, 16
Overall
Outcome
1–5,
7–14, 16,
19, 20
6

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART