Ex Parte Bechtold

Board of Patent Appeals and Interferences

Jan 4, 2002

07949567 (B.P.A.I. Jan. 4, 2002)

The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HEINZ BECHTOLD
____________
Appeal No. 1998-0784
Application No. 07/949,567
____________
ON BRIEF
____________
Before KIMLIN, GARRIS, and TIMM, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's final rejection of
claims 1, 4-9, 14, 16-18, and 24. Claims 19-23 and 25-39, the only other pending claims, were
withdrawn from prosecution pursuant to a restriction requirement.
Appeal No. 1998-0784
Application No. 07/949,567
Page 2
BACKGROUND
Appellant’s invention relates to a base plate for use in the production of concrete
products. According to Appellant, during concrete product production, the base plate supports a
mold which is filled from above with a mixture of cement and sand (specification, page 1). After
densification of the concrete mixture, the mold is lifted off the base plate leaving the molded
concrete on the base plate (Id.). The molded concrete, supported on the base plate, is conveyed
to a drying room (Id.). During drying and storage, the loaded based plate rests on only two
border areas on stacking rails or stacking feet (specification, page 2). Appellant indicates that if
the base plate is not entirely flat, hair cracks will develop during hardening of the concrete-sand
mixture rendering the finished concrete product useless (Id.). To prevent such cracking, the
bending rigidity of the base plate must be high (Id.). At the time of invention, those in the art
normally used solid wood plates as wood is inexpensive and possesses the necessary bending
rigidity (Id.).
Instead of wood, Appellant’s base plate is produced using recycled plastic waste.
Importantly, the base plate includes reinforcing rails at a particular location and of a particular
height. Claim 1 is illustrative:
1. A base plate configured for preparation of concrete products comprising:
a planar support body made of a plate material, wherein said plate material includes an
extruded or pressed thermoplastic component containing recycled plastic waste; and
reinforcing rails located at longitudinal edges of said planar support body;
Appeal No. 1998-0784
Application No. 07/949,567
Page 3
wherein said reinforcing rails exhibit a height smaller than said planar support body
resulting in a projection of the finished product past the top and bottom sides of the reinforcing
rails.
The prior art references of record relied upon by the Examiner in rejecting the appealed
claims are:
Japanese 63-19234 January 27, 1988
“Recycling Mixed Plastics: New Markets” Society of Plastics Industry, Inc.,
Washington, D.C. pp.1-8, 1990
Claims 1, 4-9, 14, 16-18 and 24 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Applicant’s Admission of Prior Art in view of Matsuo and the Recycling
Article. See the Office Action mailed October 19, 1994, Paper No. 12, for details of the
rejection. We reverse for the reasons cogently presented by Appellant and add the following for
emphasis.
OPINION
Claim 1 is the only independent claim. This claim is directed to a base plate comprising a
planar support body and reinforcing rails. Two requirements are made of the reinforcing rails:
(1) they must be located at longitudinal edges of the planar support body and (2) they must
exhibit a height smaller than the height of the planar support body. We agree with Appellant that
the Examiner has not established a factual basis supporting a conclusion that base plates with
such reinforcing rails would have been obvious to one of ordinary skill in the art at the time of
invention.
Appeal No. 1998-0784
Application No. 07/949,567
Page 4
First, we agree with Appellant that the Examiner has misinterpreted “longitudinal” as
used in the claim (Reply Brief, page 1). In the Brief at page 3, Appellant reproduces a sketch of a
prior art base plate with metal profiles on the frontal sides of wood planks as was known in the
prior art. The location of the metal profiles is shown on the short or width dimension of the
rectangular base plate. In the Answer, the Examiner states that the sketch presented in the Brief
accurately depicts reinforcing rails on two of the longitudinal ends (Answer, page 4).
The frontal edges as depicted in the Brief are not longitudinal edges. As pointed out by
Appellant, “longitudinal” is defined as “1: placed or running lengthwise 2: of or relating to length
or the lengthwise dimension” (Reply Brief, page 1, quoting Merriam Webster’s Collegiate
Dictionary, 10th Ed. 1996). In order for the planar support body to have “longitudinal edges”, the
body must have a lengthwise dimension and a widthwise dimension. The lengthwise dimension
must necessarily be the longer dimension. The rails must be located on the long edge. Location
of the rails on the widthwise dimension or short edge as shown in Appellant’s sketch of the prior
art does results in a base plate which is different than that claimed.
We also agree with Appellant that the Examiner has failed to present any basis to believe
that base plates having longitudinal rails were known in the prior art (Brief, pages 3-4). As
discussed above, the admitted prior art suggests a metal profile on the frontal sides and Appellant
has established, without dispute by the Examiner, that such frontal sides were conventionally
shorter than the edges running perpendicular to the frontal sides. Neither Matsuo nor the
Appeal No. 1998-0784
Application No. 07/949,567
Page 5
Recycling Article describes longitudinal rails. There simply is no evidence that one of ordinary
skill in the art would have found it obvious to incorporate reinforcing rails on the longitudinal
edges of the planar support body.
Even if it would have been obvious to incorporate longitudinal rails in general, we agree
with Appellant that there is no evidence that one of ordinary skill in the art would have found it
obvious to incorporate such rails having a height smaller than the height of the planar support
body (Brief, pages 4-5). The Examiner cites no basis in the prior art for the use of rails of such
height. In the Response to Argument section of the Answer, the Examiner seems to imply that
Appellant must establish that the height of the rails is critical in view of the fact that the
specification, on page 3, states that “[t]he height of the reinforcing rails may be equal to or
smaller than the height of the base plate.” The Examiner seems to think that since Appellant
discloses that either height can be used, the height is an art recognized variable. But Appellant
did not disclose that use of either height was prior art to him. There is a basic difference between
(a) a showing by an applicant of what was known in the art to be equivalents and (b), a showing
that the applicant has found, as a part of his or her discovery or inventive process, that certain
things may be used to achieve the same result. Equivalence taught by an applicant but not known
to those of ordinary skill in the art at the time cannot be said to be recognized in the prior art.
In re Ruff, 256 F.2d 590, 596-597, 118 USPQ 340, 346 (CCPA 1958). A determination of
obviousness cannot be based on Appellant’s own invention. There must be some basis in the
Appeal No. 1998-0784
Application No. 07/949,567
Page 6
references or knowledge known to those of ordinary skill in the art for concluding that the
claimed subject matter would have been obvious.
“A critical step in analyzing the patentability of claims pursuant to section 103(a) is
casting the mind back to the time of invention, to consider the thinking of one of ordinary skill in
the art, guided only by the prior art references and the then-accepted wisdom in the field.” In re
Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). “The invention
must be viewed not with the blueprint drawn by the inventor, but in the state of the art that
existed at the time.” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999)(quoting Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547
(Fed. Cir. 1985). To establish a prima facie case of obviousness, “there must be some teaching,
suggestion or motivation in the prior art to make the specific combination that was made by the
applicant.”
In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998). In our view, the
Examiner used the description of the invention provided in the specification as a blueprint for the
rejection. Thus, the record indicates that the Examiner used impermissible hindsight when
rejecting the claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re Rothermel, 276
F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960). Accordingly, we reverse the examiner’s
rejection for the reasons set forth above and as developed in Appellant’s Brief.
Appeal No. 1998-0784
Application No. 07/949,567
Page 7
As all the other claims on appeal depend from claim 1, we conclude that the Examiner
has failed to establish a prima facie case of obviousness with respect to the subject matter of
claims 1, 4-9, 14, 16-18, and 24.
OTHER ISSUES
The language used on line 9 of claim 1 appears to be inaccurate. It appears that “finished
product” is meant to read “finished base plate” as that is the language used in the specification at
page 7, line 32 and “product” is used in the preamble of the claim to refer to the concrete article
formed and not to the base plate. We trust that the Appellant and Examiner will resolve
inconsistency in the claim.
Appeal No. 1998-0784
Application No. 07/949,567
Page 8
CONCLUSION
To summarize, the decision of the Examiner to reject claims 1, 4-9, 14, 16-18, and 24
under 35 U.S.C. § 103 is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
CT/jrg
Appeal No. 1998-0784
Application No. 07/949,567
Page 9
ROBERT J. KOCH
FULBRIGHT AND JAWORSKI
801 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20004