Brian Eugene. Sheehan et al.

Patent Trials and Appeals Board

Dec 16, 2019

15042094 - (D) (P.T.A.B. Dec. 16, 2019)

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.
15/042,094 02/11/2016 Brian Eugene Sheehan PRIME1.024A 9602
20995 7590 12/16/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
SHAFI, LEITH S
ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
12/16/2019 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN EUGENE SHEEHAN and
EDWARD DANIEL FITZGERALD
__________

Appeal 2019-001839
Application 15/042,094
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) the final rejection of
claims 1–25. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Prime
Forming & Construction Supplies, Inc., d/b/a Fitzgerald Formliners (Appeal
Br. 3).
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STATEMENT OF THE CASE
Appellant’s invention is directed to a formliner for creating a pattern
in concrete (Spec. ¶ 2). The Specification describes that concrete is poured
onto the formliner’s interior surface, thereby transferring a desired pattern or
shape to cured concrete (id. ¶ 7). According to the Specification, lining up a
plurality of formliners facilitates the transfer of such patterns over a wide
area of concrete (id.).
Claim 1 is illustrative (emphasis added):
1. A formliner for use with a framework to create a
decorative pattern on curable material, the formliner
comprising:
a cell comprising a base configured to face the
curable material in use, wherein the base extends along a
backing of the framework and at least a part of the base
contacts the backing of the framework when the
formliner is in use with the framework, wherein the
framework is configured to support the formliner in a
desired position; and
a rib system comprising a plurality of ribs
extending along the cell and forming at least a part of a
boundary of the cell, the plurality of ribs comprising:
an overlapping section connected with the
cell and comprising a first rib edge, the
overlapping section configured to face the curable
material in use, the first rib edge being a free end
of the overlapping section; and
an overlapped section connected with the
cell and comprising a second rib edge, at least a
portion of the overlapping section configured to
overlay onto at least a portion of the overlapped
section,
wherein an inner periphery is formed where the
overlapped section connects with the base of the cell, the
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inner periphery extending generally along the boundary
of the cell and extending generally along the framework
when the formliner is in use with the framework,
wherein the first rib edge extends along the
boundary of the cell without contacting the inner
periphery of the cell when the at least a portion of the
overlapping section overlays onto the at least a portion of
the overlapped section, and
wherein the second rib edge extends along the
boundary of the cell, the second rib edge extending
toward the backing of the framework such that the
second rib edge provides structural support to the
overlapped section and the overlapping section when the
at least a portion of the overlapping section overlays onto
the at least a portion of the overlapped section and when
the formliner is in use with the framework.
Appeal Br. 26–27 (Claims App.).
Appellant appeals the following rejection:
1. Claims 1–25 are rejected under 35 U.S.C. § 103 as unpatentable
over Fitzgerald et al. (WO 2010/036971 A1; published April 1, 2010,
“Fitzgerald”) (Final Act. 3–12).
Claims 1, 9, and 22 are independent; Appellant’s arguments focus
solely on claim 1 (see, e.g., Appeal Br. 16–23). We select claim 1 as
representative. Appellant offers separate arguments in support of dependent
claims 4, 6, 8, and 25. Accordingly, claims 1–3, 5, 7, and 9–24 will stand or
fall with our analysis of claim 1. The remaining claims will be discussed
separately.
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FINDINGS OF FACT & ANALYSIS
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s prior art rejection under 35 U.S.C.
§ 103. We add the following for emphasis.
The Examiner’s findings and conclusions regarding Fitzgerald are
located on pages 3–12 of the Final Office Action.
The Examiner finds that Fitzgerald teaches each component and
limitation of the formliner recited in independent claim 1, except Fitzgerald
does not explicitly disclose that a rib’s overlapping section comprises “a first
rib edge,” which is “a free end” (Final Act. 3–5; claim 1). The Examiner,
however, finds Fitzgerald teaches that interlocking or overlapping adjacent
“formliners can be accomplished by complete or partial surface contact
between the external and internal surfaces of overlapping rib portions”
(Final Act. 4 (citing Fitzgerald ¶ 207)). The Examiner determined that it
would have been obvious for one of ordinary skill in the art at the time of the
invention to modify Fitzgerald’s overlapping rib section as a free end by
reducing this section’s length (Final Act. 4–5).
Appellant argues that the Examiner has not established a prima facie
case of obviousness because the motivation to modify Fitzgerald’s
overlapping rib portion is deficient (Appeal Br. 17). Appellant contends,
inter alia, that the Examiner erred in taking Fitzgerald’s isolated disclosure
out of context (id.).
Fitzgerald discloses
that in some embodiments, the overlapped portion of the rib
(such as the rib of the formliner 120) can contact only a portion
of the internal surface of the overlapping portion of the rib
(such as the rib of the formliner 122). In this regard, some
embodiments can be configured such that the interlocking or
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overlapping of the formliners can be accomplished by complete
or partial surface contact between the external and internal
surfaces of overlapping rib portions.
(Fitzgerald ¶ 207; see also id. at Fig. 3) (emphasis added).
Appellant argues that the Examiner’s findings erroneously ignore the
first sentence, which allegedly limits what rib portions and surfaces are in
contact in the second sentence (Appeal Br. 17; Reply Br. 2–3). In particular,
Appellant contends that “[t]he sentence introduced by ‘[i]n this regard’
refers to the overlapped portion [of the previous sentence] contacting all or a
portion of the internal surface of the overlapping portion” (Reply Br. 3
(citing ¶ 207)) (emphasis added). Appellant essentially interprets paragraph
207 as describing that only an overlapped ribbed portion can be configured
to provide the portion contacting the internal surface of the overlapping rib
portion (Appeal Br. 17; see also Reply Br. 2). According to Appellant,
Fitzgerald does not teach that overlapping rib portions are amenable to
modification because the initial sentence in the disputed passage fails to
disclose that these portions are actively contacting the external surface of the
overlapped portion (Appeal Br. 17).
We, however, find that Fitzgerald generally describes which portions
and surfaces “can contact” each other (Fitzgerald ¶ 207). In other words,
Fitzgerald’s disputed passage does not limit the rib sections that are
amenable to configuration to only those that are actively contacting another
surface. Rather, Fitzgerald describes that any rib portion that “can contact”
a corresponding surface in an interlocked or overlapped arrangement can be
configured (id.) (emphasis added). See In re Burckel, 592 F.2d 1175, 1179
(CCPA 1979) (“[A] reference must be considered not only for what it
expressly teaches, but also for what it fairly suggests.”). Thus, we agree
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with the Examiner that “‘[i]n this regard’ applies to both the coverage of the
overlapped portion with respect to the overlapping portion and the
overlapping portion with respect to the overlapped portion” (Ans. 18 (citing
Fitzgerald ¶ 207)).
The Examiner finds that Fitzgerald would have motivated the
ordinarily skilled artisan to create a rib edge via a shortened overlapping
section for the benefit of reduced costs, which results from using less
formliner material (Final Act. 4–5 (citing Fitzgerald ¶ 283)).
Appellant argues that the Examiner’s relied upon disclosure merely
provides that a reduction in costs stems from using already lightweight
formliners, which have not been configured to possess less formliner
material (Appeal Br. 18 (citing Fitzgerald ¶ 283)). Appellant proffers the
Declaration of named-inventor Edward Fitzgerald under 37 C.F.R. § 1.132,
which asserts that the Examiner’s proposed modification would have instead
“result[ed] in an increase in excess material (that is trimmed and discarded)
without cost savings” (Appeal Br. 19).2 Appellant thus concludes that the
Examiner’s “motivation of cost savings to modify Fitzgerald is deficient”
(id.; see also Reply Br. 5).
Even assuming, however, that the Examiner erred in finding that
Fitzgerald’s alleged benefit of reduced costs would have motivated the
proposed modification, Fitzgerald already provides the requisite motivation.
For the reasons set forth above, Fitzgerald teaches or suggests that
overlapping rib portions are amenable to configuration as a first rib edge,

2 We, however, note that a mold already configured to have less
thermoformed formliner material would have precluded allegedly
undesirable production, trimming, and discarding of excess material.
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which is a free end of the overlapping section (i.e., partial surface contact
between the overlapping and overlapped ribs) (Fitzgerald ¶ 207).
When the Examiner establishes a prima facie case of obviousness,
“[t]he burden then shifts to the applicant, who then can present arguments
and/or data to show that what appears to be obvious, is not in fact that, when
the invention is looked at as a whole.” In re Dillon, 919 F.2d 688, 696 (Fed.
Cir. 1990) (en banc); see also In re Skoner, 517 F.2d 947, 950 (CCPA 1975)
(“Expected beneficial results are evidence of obviousness of a claimed
invention. Just as unexpected beneficial results are evidence of
unobviousness.”). Appellant’s briefs and declaration, however, do not
provide any evidence showing that the claimed overlapping section
comprising a first rib edge is critical and thereby yields unexpected benefits
over the prior art’s formliner. Therefore, in light of Appellant’s evidence
and argument of nonobviousness considered in combination with the
Examiner’s evidence of obviousness, we determine that the subject matter of
claim 1 would have been obvious over Fitzgerald. Thus, based on this
record, we sustain this rejection as to claims 1–3, 5, 7, and 9–24.
Appellant separately argues for reversal of the Examiner’s rejection of
claims 4, 6, and 8 based on the same contention (Appeal Br. 23–24). In
particular, Appellant contends that each of these claims are patentable
because the Examiner concedes “that Fitzgerald does not disclose ‘the first
rib edge being a free end of the overlapping section’ and further deficiencies
discussed” in the brief (id.).
Appellant also argues that paragraph 207 of Fitzgerald fails to render
obvious the limitations recited in claim 25 for the reasons provided in
support of independent claim 1 (Appeal Br. 24).
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Appellant’s arguments, however, do not adequately rebut the
Examiner’s findings that Fitzgerald teaches or suggests that overlapping rib
portions can be configured as a first rib edge, which is a free end of the
overlapping section. An appellant has the burden on appeal to the Board to
demonstrate error in the Examiner’s position. See Ex parte Yamaguchi, 88
USPQ2d 1606, 1614 (BPAI 2008) (on appeal, applicant must show
examiner erred). The Federal Circuit, moreover, has held that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Thus, in this
instance, Appellant has not met his burden of identifying error in the
rejections of claims 4, 6, 8, and 25 on appeal, as they have not identified
reversible error in the Examiner’s reasons for finding that Fitzgerald renders
these claims obvious.
Thus, based on this record, we sustain this rejection as to claims 4, 6,
8, and 25.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–25 103 Fitzgerald

1–25
Overall
Outcome
1–25
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED