Ex Parte Adam

Patent Trial and Appeal Board

Mar 3, 2015

13136275 (P.T.A.B. Mar. 3, 2015)

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.
13/136,275 07/27/2011 Paul Adam 24069-030 2717
89205 7590 03/03/2015
David H. Chervitz
458 Whitestone Farm Drive
Chesterfield, MO 63017
EXAMINER
HUSON, JOSHUA DANIEL
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
03/03/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL ADAM
____________

Appeal 2013-001714
1

Application 13/136,275
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1–20.
2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
According to the Specification, Appellant invented “a landscape
edging system that provides a low edge surface upon which a lawn mower

1
Appellant states, “[t]he real party in interest is the inventor and applicant
Paul Adam.” Appeal Br. 3.
2
Our decision references Appellant’s Specification (“Spec.,” filed July 27,
2011), Appeal Brief (“Appeal Br.,” filed Oct. 1, 2012), and Reply Brief
(“Reply Br.,” filed Nov. 6, 2012), as well as the Examiner’s Answer
(“Answer,” mailed Oct. 24, 2012).
Appeal 2013-001714
Application 13/136,275

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may ride or travel when cutting grass[,] and a high edge surface for retaining
landscape elements such as mulch or rock.” Spec. ¶ 1. Claims 1, 9, and 15
are the only independent claims under appeal. We reproduce below claim 1
as representative of the appealed claims.
1. A landscape edging system comprising a
plurality of blocks for forming an edging with one
of the blocks comprising a back face that is
configured to be placed against a raised area, a
bottom face for placement on the ground, an
elevated top portion, a lower top portion, an
elevated front face between the elevated top
portion and the lower top portion, a lower side
front face, a right elevated side face, a right lower
side face having a tongue portion positioned on the
right lower side face extending out from the right
lower side face and the lower top portion and the
bottom face and extending from the lower top
portion to the bottom face, a left elevated side face,
a left lower side face having a groove portion
positioned on the left lower side face and
extending into the left lower side face, the bottom
face, and the lower top portion.
Appeal Br., Claims App.
REJECTION AND PRIOR ART
Appellant appeals the Examiner’s rejection of claims 1–20 under 35
U.S.C. § 103(a) as unpatentable over Anderson (US 2005/0034362 A1, pub.
Feb. 17, 2005) and Riccobene (US 6,668,484 B2, iss. Dec. 30, 2003).
3

3
The Examiner indicates that, “[e]very ground of rejection set forth in the
Office [A]ction dated 8/16/2012[,] from which the appeal is taken[,] is being
maintained by the [E]xaminer.” Answer 3. The Office Action dated August
16, 2012 (“Final Action”) rejects the claims as indicated. See Final Action
2–8.
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Application 13/136,275

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ANALYSIS
Appellant states:
As MPEP 2143.01(VI) requires, if the
proposed modification or combination of the prior
art would change the principle of operation of the
prior art invention being modified, then the
teachings of the references are not sufficient to
render the claims prima facie obvious. See also In
re Ratti, 270 F.2d 810 . . . (CCPA 1959). Further,
if the proposed modification would render the
prior art invention being modified unsatisfactory
for its intended purpose, then there is no
suggestion or motivation to make the proposed
modification. In re Gordon, 733 F.2d 900 . . .
(Fed. Cir. 1984).
Appeal Br. 10; see also Reply Br. 3–4. Appellant argues that the
Examiner’s proposed modification of Anderson based on Riccobene would
change Anderson’s principle of operation and render Anderson
unsatisfactory for its intended purpose, and thus claims 1–20 are not obvious
(see Appeal Br. at 10–19; see also Reply Br. 3–8). In particular, Appellant
argues, “Anderson specifically teaches that the reason that the landscape
edging has overlapping joints is to inhibit growth of grass and other
vegetation between the blocks and thus inhibit the growth from entering the
landscape area,” and therefore Anderson requires an “overlapping joint . . .
[that] must extend along the entire joint. If it does not, then there would be a
gap where grass could grow[,] which would defeat the entire purpose of the
overlapping joint of Anderson.” Appeal Br. 10–11. According to Appellant,
the Examiner’s proposed modification to Anderson, and in fact a similar
modification to any of Anderson’s disclosed embodiments, would result in
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Application 13/136,275

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configurations in which “there is a portion of the modified block where there
is no overlap[,] as [is] required by Anderson.” Id. at 11.
Although we have considered carefully Appellant’s arguments, we do
not agree with Appellant that Anderson requires an “overlapping joint . . .
[that] must extend along the entire joint.” Appeal Br. 11. None of the
portions of Anderson cited by Appellant state that an overlapping joint must
extend along the entire joint, or define “overlapping” as requiring that a first
portion is positioned above a second portion (with which the first portion
engages to form a joint) along an entire length of the joint. Further, even
assuming arguendo that Anderson’s principle of operation would be
changed impermissibly if a proposed modification would fail to inhibit
growth of grass as Appellant argues (see id. at 10–11), we agree with the
Examiner that the proposed modifications with an overlapping joint
extending along only a portion of the joint length, but in which contact
surfaces abut against one another where the joint does not overlap, would
still inhibit grass growth (see Answer 3–5). We note that the definitions of
“inhibit” include “to prevent or slow down the activity or occurrence of
(something)” and “to hold in check: restrain.” http://www.merriam-
webster.com/dictionary/inhibit (last accessed Mar. 2, 2015) (emphases
added). We reasonably conclude that the partially-overlapping joint, which
Appellant concedes would result from the Examiner’s proposed combination
of Anderson and Riccobene, would prevent or slow down, or restrain, at
least some grass growth, consistent with Appellant’s alleged principle of
operation for Anderson.
For the above reasons, we sustain the rejection of claims 1–20.
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Application 13/136,275

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DECISION
The Examiner’s rejection of claims 1–20 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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