Ex Parte Calmes

Patent Trial and Appeal Board

Jun 26, 2017

14213284 (P.T.A.B. Jun. 26, 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.
14/213,284 03/14/2014 Shane Calmes A90.2P-15701-US02 5298
490 7590 06/28/2017
VIDAS, ARRETT & STEINKRAUS, P.A.
Richard A. Arrett
9531 West 78th Street
Suite 400
Eden Prairie, MN 55344
EXAMINER
MAESTRI, PATRICK J
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
mail@vaslaw.com
rleaf@vaslaw.com
rarrett @vaslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHANE CALMES
Appeal 2016-006488
Application 14/213,284
Technology Center 3600
Before THU A. DANG, ERIC S. FRAHM, and
JOHN P. PINKERTON, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006488
Application 14/213,284
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
A. INVENTION
According to Appellant, the invention relates to “a layout panel
suitable for supporting and positioning] objects, such as building materials,
bricks, tile and the like,” and also to “walls comprising a layout panel”
(Spec. 1,11. 9-11).
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A panel comprising:
a body comprising a front side, a back side and a
plurality of cavities;
said front side comprising:
a plurality of face portions and cavity openings
arranged on a first plane; and
a plurality of guide members, each guide member
comprising a front edge arranged on a second plane, said
second plane offset from said first plane;
'wherein said guide members define a plurality of
spaces of predetermined volume between said first plane
and said second plane.
C. REJECTION
Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shanklin (US 1,896,188; iss. Feb. 7, 1933) and Heyns (US
2008/0092473 Al; pub. Apr. 24, 2008).
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Application 14/213,284
II. ISSUE
The main issue before us is whether the Examiner erred in finding the
combination of Shanklin and Hayns teaches or would have suggested a panel
comprising “guide members” that “define a plurality of spaces of
predetermined volume between said first plane and said second plane,” as
recited in claim 1 (emphasis added).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellant’s Invention
1. Appellant’s invention is directed to a support panel attached to a
structural wall, wherein Figure 4 is reproduced below:
Figure 4 shows a support panel 10 comprising rear channels 47 used
to secure the panel 10 to another material such as a support material (Spec.
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Application 14/213,284
12,11. 19—22). A rear panel 47 comprises a cavity span 78 that is greater
than a mouth span 75, wherein the wall material 14 can form a mechanical
lock with the channel 47, for example {id., 11. 22—27). As shown in Figure 4
guide members are provided for guiding the layout of objects that will be
attached to the panel 10 (Spec. 9,11. 6—8), wherein the guide members are
horizontal when panel 10 is affixed to the supporting structural wall 14 and
are tranversely spaced across the support panel 10 such that the spacing
between adjacent guide members is sufficient to accommodate objects that
are to be mounted onto support panel {id., 11. 27—32).
Shanklin
2. Shanklin discloses a masonry facing adapted to be secured to a
building superstructure, wherein Figure 1 is reproduced below:
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Application 14/213,284
Figure 1 shows a masonry facing secured by mechanical and plastic
means to a metal frame adapted to be secured to a building superstructure
(col. 1,11. 41^44). As shown in Figure 1, facing units 1 provided with
recesses 2 and frameworks 3 are adapted to engage within the recessed
facing units (col. 2,11. 69—75).
Heyns
3. Heyns discloses modular tiling elements, wherein Figure 1 is
reproduced below:
Figure 1 shows a substrate element 14 onto which the tile 16 can be
bonded (1118). As shown in Figure 1, spacers 46 are provided which
extend upwardly from the substrate element 14 such that the tile is bonded to
the face in close abutment with the spacers (| 115). The substrate element
may then be attached to a support structure (190).
IV. ANALYSIS
Appellant contends the claims “require a plurality of guide members,
and require the guide members to ‘define a plurality of spaces of
predetermined volume’” (App. Br. 8). According to Appellant, in Heyns,
“[a]ny volume defined between adjacent protective spacers 46 of adjacent
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Application 14/213,284
modules would not be a ‘predetermined volume’” because “the modules are
free to move with respect to one another ” (id. at 9).
Appellant then contends the Examiner’s modification of Shanklin’s
panel “to create a screed stems from an impermissible hindsight use of
Appellant’s teachings” (id. at 10). That is, “the proposed modification
would render the Shanklin device unsatisfactory for its intended purpose”
because “spacer 46 of Heyns would interfere with Shanklin’s decorative
member/brick and prevent the decorative member/brick from being used
with the panel” (id. at 12).
However, the Examiner points out that although Heyns provides “tile
members between each guide member..., this does not preclude the guide
members from defining an open volume” (Ans. 3). The Examiner also finds
“placing the guide members onto the body to use as a screed” is “a well-
known use in the art when combining bricks or tiles, mortar, and an
upstanding member” (id.). The Examiner concludes that one of ordinary
skill in the would “would have the insight” to combine the teachings, as
demonstrated below:
Annotated Figor® 1 ©t Shanklin
(id. 4).
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Application 14/213,284
Based on the record before us, we find no error with the Examiner’s
conclusion that the claims would have been obvious over the combined
teachings of the references.
We give the claims their broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed.
Cir. 1997). Although Appellant argues, in Heyns, “[a]ny volume defined
between adjacent protective spacers 46 of adjacent modules would not be a
‘predetermined volume’” because “the modules are free to move with
respect to one another ” (App. Br. 9), such argument is not commensurate in
scope with the recited language of the claims. In particular, contrary to
Appellant’s contention, the claims only require a “predetermined volume,”
but nothing in the claims precludes the modules freely moving with respect
to one another to provide the predetermined volume. Giving the claims their
broadest, reasonable interpretation, we conclude that the claims merely
require “guide members” that define a “volume,” including guide members
that define a particular (predetermined) volume by moving the guide
members around with respect to one another.
The test for obviousness is what the combined teachings would have
suggested to one of ordinary skill in the art. See In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, we find no error with the Examiner’s reliance on Shanklin for
disclosing and suggesting a “front side” comprising “a plurality of face
portions and cavity openings arranged on a first plane,” as recited in claim 1
and similarly recited in claim 17 (Final Rej. 3). That is, like Appellant’s
invention (FF 1), Shanklin discloses a facing unit/panel comprising a front
side, a back side, and a plurality of cavities arranged on a plane (FF 2). We
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Application 14/213,284
find that the only clear teaching missing from Shanklin of the contested
limitation is the inclusion of “guide members” that “define a plurality of
spaces of predetermined volume” (claim 1).
However, we agree with the Examiner’s reliance on Heyns for the
disclosure of guide members (Final Rej. 4). In particular, Heyns discloses
spacers 49 that define spaces between adjacent spacers (FF 3) such that, like
Appellant’s invention (FF 1), such spaces are sufficient to guide and
accommodate objects to be mounted thereon. In view of the broadest,
reasonable interpretation of the claims, we agree that Heyns teaches or at
least suggests guide members that define a plurality of spaces of
predetermined volume, as recited in the claims.
We also find no error with the Examiner’s conclusion that it would
have been obvious “to create the device as taught by Shanklin with the
characteristic of having a guide member as taught by Heyns in order to
support a decorative member while it is being adhered” (Final Rej. 3). Thus,
although Appellant contends that in the combination, “spacer 46 of Heyns
would interfere with Shanklin’s decorative member/brick and prevent the
decorative member/brick from being used with the panel” (App. Br. 12),
Appellant appears to view the combination in a different perspective than
that of the Examiner. Here, the issue is whether the skilled artisan, upon
reading Heyns, would have found it obvious to include a guide member to
guide/accommodate objects to be mounted thereon.
We agree with the Examiner that it would have been obvious to one
of ordinary skill in the art to include such guide member to guide/support the
decorative member while it is being adhered (Final Rej. 3). Thus, we find
no error with the Examiner’s ultimate legal conclusion that it would have
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Application 14/213,284
been obvious to the skilled artisan at the time the invention was made to
combine the teachings of Shanklin and Heyns (id.).
Appellant has provided no evidence that adding a guide member for
supporting and positioning objects on a panel comprising cavities was
“uniquely challenging or difficult for one of ordinary skill in the art,”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007), nor has Appellant presented evidence that the claimed combination of
known elements would have yielded more than expected results.
Rather, we find Appellant’s invention is simply a combination of
known elements that would have realized a predictable result. The Supreme
Court has 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. KSR Int 7
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The skilled artisan would
“be able to fit the teachings of multiple patents together like pieces of a
puzzle” since the skilled artisan is “[a] person of ordinary creativity, not an
automaton.” Id. at 420—21.
Accordingly, we find no error in the Examiner’s rejection of
independent claims 1 and 17 (App. Br. 8) over Shanklin and Heyns.
Appellant does not provide separate, substantive arguments for claims 2—16,
18 and 19 depending respectively from claims 1 and 17 (App. Br. 13), and
thus, these claims fall with claims 1 and 17 over Shanklin and Heyns.
Appellant does not provide substantive arguments for claim 20 other
than repeating the claim language and asserting that the “applied references
do not disclose or suggest” the contested limitation (App. Br. 13—14). That
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is, Appellant presents mere attorney arguments without any factual support.
Id. Our reviewing court guides that such mere attorney conclusory
statements that are unsupported by factual evidence are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, 2009
WL 2477843, at *3^4 (BPAI Aug. 10, 2009) (informative). Thus, on this
record we are unconvinced the Examiner erred in also rejecting claim 20
over Shanklin and Heyns.
V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 103(a) 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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