Ex parte Del Monte

Board of Patent Appeals and Interferences

Nov 6, 1998

08179770 (B.P.A.I. Nov. 6, 1998)

Application for patent filed January 10, 1994. 1
According to appellant, the application is a continuation of
Application 07/888,916, filed May 26, 1992, abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ERNEST J. DEL MONTE
__________
Appeal No. 95-4866
Application 08/179,7701
___________
ON BRIEF
___________
Before GARRIS, WARREN and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 38-46 and 48 and refusal to allow claims 32-37 and 47
as amended after final rejection. These are all of the claims
Appeal No. 95-4866
Application 08/179,770
2
remaining in the application.
THE INVENTION
Appellant claims a portable concrete molding apparatus
which includes, inter alia, 1) a first fixed wall affixed to a
portable trailer, wherein the wall has an outer substantially
planar mold surface and a second plenum surface, 2) a second
fixed wall affixed to the trailer parallel to the first fixed
wall and spaced apart therefrom, wherein the second fixed wall
has an outer substantially planar mold surface which opposes
the plenum surface of the first fixed wall, and has a second
plenum surface, and 3) first and second movable walls
connected to the trailer and movable, respectively, relative
to the first and second fixed walls between a casting position
adjacent to the mold surface of the respective fixed walls and
a discharging position remote from the respective fixed walls.
Claim 46 is illustrative and reads as follows:
46. A portable concrete molding apparatus, comprising;
(a) a portable trailer having a longitudinal axis;
(b) a first fixed wall affixed to the trailer, the first
fixed wall including an outer substantially planar mold
Appeal No. 95-4866
Application 08/179,770
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surface and a second plenum surface;
(c) a second fixed wall affixed to the trailer parallel
to the first fixed wall and spaced apart from the first fixed
wall by a given distance, the second fixed wall including an
outer substantially planar mold surface and a second plenum
surface,
wherein the plenum surface of the second fixed wall opposes
the plenum surface of the first fixed wall;
(d) a housing extending between the first fixed wall and
the second fixed wall to form a furnace plenum therebetween,
the furnace plenum including a return duct the furnace plenum
having an inlet exposed to the first plenum surface and the
second plenum surface, and an outlet exposed to the return
duct;
(e) a heater having an inlet and an outlet, wherein the
heater outlet is fluidly connected to the furnace plenum inlet
and the heater inlet is fluidly connected to the furnace
plenum outlet to form a substantially closed fluid circuit
between the heater and the furnace plenum;
(f) a plurality of transverse channels connected to the
trailer transverse to the longitudinal axis;
(g) a first set of transverse beams slideably disposed
within the transverse channels;
(h) a second set of transverse beams slideably disposed
within the transverse channels;
(i) a first movable wall connected to the first set of
transverse beams for movement relative to the first fixed wall
between a casting position adjacent the mold surface of the
first fixed wall for forming a first mold therebetween and a
discharging position remote from the first fixed wall, the
first mold including a first concrete inlet for introducing
concrete into the first mold; and
Appeal No. 95-4866
Application 08/179,770
4
(j) a second movable wall connected to the second set of
transverse beams for movement relative to the second fixed
wall between a casting position adjacent the mold surface of
the second fixed wall for forming a second mold therebetween
and a discharging position remote from the second fixed wall,
the second mold including a second concrete inlet for
introducing concrete into the second mold.
THE REFERENCES
Therneau 3,604,455 Sep. 14,
1971
Rossetti 3,689,022 Sep. 5,
1972
Johnstone et al. (Johnstone) 3,770,016 Nov. 6,
1973
Hummelshoj 3,822,855 Jul. 9,
1974
Sontag 3,837,613 Sep. 24,
1974
Botting et al. (Botting) 4,042,659 Aug. 16,
1977
Welden 4,147,323 Apr. 3,
1979
Willingham 4,244,682 Jan. 13,
1981
Bogenschutz 4,548,237 Oct. 22,
1985
Lowndes, III et al. (Lowndes) 4,884,958 Dec. 5,
1989
Rost 224,665 Jul. 27,
1910
(German Patentschrift)
Appeal No. 95-4866
Application 08/179,770
Our consideration of this reference is based on an2
English translation thereof, a copy of which is provided to
appellant with this decision.
5
SOMECAL 2,306,058 Oct. 29,2
1976
(French patent application)
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as
follows: claims 46 and 48 over Willingham, Hummelshoj and
either Rossetti or SOMECAL, in view of Botting; claims 32, 36-
39, 44, 45 and 47 over these references, further in view of
Rost; claims 33-35 and 41-43 over the references applied to
claims 32, 36-39, 44, 45 and 47, further in view of Sontag,
Welden and Lowndes; claim 40 over the references applied to
claims 32, 36-39, 44, 45 and 47, further in view of any one of
Bogenschutz, Johnstone and Therneau.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejections are not well
founded. Accordingly, these rejections will be reversed.
Willingham discloses a portable concrete molding
Appeal No. 95-4866
Application 08/179,770
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apparatus having a rectangular first mold (39) which is fixed
to the bed of a trailer (col. 3, lines 54-55; Figs. 1 and 2).
This mold has a plenum therein (col. 9, lines 39-65; Fig. 16).
Thus, the first mold (39) has, attached to the trailer, a
first fixed wall having an outer substantially planar mold
surface (outer surface of first mold face 41 in Fig. 16) and a
second plenum face (inner surface of first mold face 41 in
Fig. 16). The Willingham apparatus does not have a second
fixed wall which is parallel to the first fixed wall and has
an outer substantially planar mold surface and a second plenum
surface, as required by all of appellant’s independent claims.
Both of Willingham’s second and third molds (71 and 103; Fig.
16) are movably attached to the bed of the trailer (col. 4,
lines 8-9 and 35-36).
Hummelshoj discloses a concrete molding apparatus having
a number of molds (5) assembled into a battery such that
spaces between the molds are filled with concrete to form
plate-shaped building elements (col. 2, line 65 - col. 3, line
7). The molds rest on wheeled bogies (6) which are
displaceable along a wheel track which may serve for transport
or as a production line (col. 3, lines 8-11).
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Rossetti discloses an apparatus for making cast polymer
sheets (col. 1, lines 11-13). The apparatus includes a
housing having therein a number of hollow metal plates which
are in a substantially vertical, parallel orientation and are
laterally moveable (col. 2, lines 32-41; col. 4, line 64 -
col. 5, line 10). Each pair of hollow metal plates has
therebetween a pair of glass plates, wherein each glass plate
is detachably attached to a surface of a hollow metal plate
(col. 2, lines 45-51; col. 5, lines 11-16). The hollow metal
plates have spacers to facilitate adjustment of the distance
to the next metal plate and thereby adjust the distance
between the glass plates (col. 3, lines 9-12; col. 6, lines
55-58). After the spacers have been adjusted and casting
liquid pored into the glass molds, the entire assembly is
pushed together in the manner of a filter press (col. 3, lines
13-17; col. 6, line 55 - col. 7, line 15). During
polymerization, fluid flows through the hollow metal plates to
maintain a uniform temperature distribution (col. 3, lines 28-
36).
SOMECAL discloses a molding apparatus for making concrete
beams, which includes a number of vertical walls which move
Appeal No. 95-4866
Application 08/179,770
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laterally to form mold cavities therebetween (page 2, figure).
Fluid flows in closed circulation through the walls (see id.).
The examiner argues that it would have been obvious to
one of ordinary skill in the art to modify Willingham by
providing a plenum between two fixed mold walls, as indicated
by Hummelshoj, in order to simultaneously mold two planar
concrete panels with a single heating means, thereby
increasing productivity, and to provide a return duct for the
heat exchange medium, as disclosed in either Rossetti or
SOMECAL, to use residual heat and thereby provide a more
economical apparatus (answer, page 5).
The examiner does not explain, and we do not
independently find, where Hummelshoj discloses simultaneously
molding two planar concrete panels with a single heating
means. In Hummelshoj’s Fig. 2, each concrete panel is heated
by two heaters, one on each side of the panel.
The examiner asserts that “plural molds formed by two
movable mold walls cooperating with a fixed mold member
located between the movable mold walls is well known in the
concrete casting art as shown by the applied prior art”
Appeal No. 95-4866
Application 08/179,770
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(answer, page 9), and relies upon Hummelshoj in support of
this assertion (answer, page 11). The examiner argues that
Hummelshoj’s first, third and fifth molds in his Fig. 2 are
movable and cooperate with intermediate mold members (answer,
page 11). Hummelshoj, however, as indicated by appellant
(brief, page 10), does not disclose which of his molds are
fixed or movable.
To establish a prima facie case of obviousness, an
examiner must explaining why the teachings from the prior art
itself appear to have suggested the claimed subject matter to
one of ordinary skill in the art. See In re Rinehart, 531
F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact
that the prior art could be modified as proposed by the
examiner is not sufficient to establish a prima facie case of
obviousness. See In re Fritsch, 972 F.2d 1260, 1266, 23
USPQ2d 1780, 1783 (Fed. Cir. 1992).
The motivation relied upon by the examiner for combining
the teachings of the references to arrive at appellant’s
claimed invention comes from the disclosure of appellant’s
apparatus in his specification rather than from the prior art.
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Thus, 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); In re Rothermel, 276
F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).
The references applied by the examiner other than those
discussed above are relied upon for teachings of features of
appellant’s claimed apparatus other than the fixed and movable
walls.
For the above reasons, we find that the examiner has not
set forth a factual basis which is sufficient to support a
conclusion of obviousness of the invention recited in any of
appellant’s claims.
DECISION
The rejections under 35 U.S.C. § 103 of claims 46 and 48
over Willingham, Hummelshoj and either Rossetti or SOMECAL, in
view of Botting, claims 32, 36-39, 44, 45 and 47 over these
references, further in view of Rost, claims 33-35 and 41-43
over the references applied to claims 32, 36-39, 44, 45 and
47, further in view of Sontag, Welden and Lowndes, and claim
Appeal No. 95-4866
Application 08/179,770
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40 over
the references applied to claims 32, 36-39, 44, 45 and 47,
further in view of any one of Bogenschutz, Johnstone and
Therneau, are reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Appeal No. 95-4866
Application 08/179,770
12
TERRY J. OWENS )
Administrative Patent Judge )
TJO/pgg
Brain B. Shaw
Two State Street, Suite 850
Rochester, NY 14614