Ex Parte Diamond

Patent Trial and Appeal Board

Sep 7, 2016

13349603 (P.T.A.B. Sep. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/349,603 01/13/2012
25191 7590 09/07/2016
BURR & BROWN, PLLC
POBOX7068
SYRACUSE, NY 13261-7068
FIRST NAMED INVENTOR
Martin DIAMOND
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
799_005 CON 4533
EXAMINER
STEPHAN, BETH A
ART UNIT PAPER NUMBER
3633
MAILDATE DELIVERY MODE
09/07/2016 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 MARTIN DIAMOND
Appeal2014--007944
Application 13/349,603 1
Technology Center 3600
Before LYNNE H. BROWNE, MICHELLE R. OSINSKI, and
THOMAS F. SMEGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
1\1artin Diamond (i\.ppellant) seeks our revie\v under 35 U.S.C. § 134
of the Examiner's Final Rejection under 35 U.S.C. § 103(a) of claims 1, 2,
6-15 and 17-23 as unpatentable over Bates (US 5,680,735, iss. Oct. 28,
1997) and Farris (6,620,363 B2, iss. Sept. 16, 2003) or Ciao (US 5,704, 178,
iss. Jan. 6, 1998) or Drews (US 5,316,708, iss. May 31, 1994) or Tucker (US
5,758,466, iss. June 2, 1998) or Nordberg (US 5,746,037, iss. May 5, 1998)
or Gates (US 5,507, 127, iss. Apr. 16, 1996); and of claim 16 as
unpatentable over Bates and Farris or Ciao or Drews or Tucker or Nordberg
1 According to Appellant, the real party in interest is the inventor. Appeal
Br. 1.
Appeal2014--007944
Application 13/349,603
or Gates, and Grieb (US 4,774,794, iss. Oct. 4, 1988).2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 7, 12, 20, and 23 are independent. Claim 23 is reproduced
below and illustrates the claimed subject matter, with disputed limitations
emphasized.
23. A kit for a modular dwelling structure comprising:
a plurality of panel members having dimensions of at least
4 'x 8 'x 4", said panels each comprising a recycled tire material,
wherein said recycled tire material defines an entire outer surface
of said panel members,
one or more reinforcement members embedded within
said panel members, said reinforcement members each
comprising a discrete elongate body embedded within said panel
members and extending along a length direction of said panel
members, said reinforcement members comprising a material
selected from the group consisting of plastic materials, fiberglass
materials and metal-based materials;
a plurality of engagement members for maintaining said
panel members in a predetermined configuration with respect to
one another to form a shape of said structure;
a plurality of fastener members fixing said panel members
to one another and to said engagement members; and
a water-tight sealing compound adhering said panel
members to one another at respective mating junctions
therebetween and adhering said panel members to said fasteners
at respective mating junctions therebetween.
2 Claim 3-5 have been canceled. Appeal Br. 20, Claims App.
2
Appeal2014--007944
Application 13/349,603
ANALYSIS
Obviousness of Claims 1, 2, 6-15 and 17-2 3 over Bates and Farris or
Ciao or Drews or Tucker or Nordberg or Gates
Appellant argues claims 1, 2, 6-15 and 17-23 together in contesting
the rejection of these claims as obvious over Bates and Farris or Ciao or
Drews or Tucker or Nordberg or Gates. See Appeal Br. 13-17 and Reply
Br. 3-5. We select claim 23 as the representative claim for this group, and
the remaining claims stand or fall with claim 23. See 37 C.F.R. §
41.37(c)(l)(iv); In re McDaniel, 293 F.3d 1379, 1383 (Fed. Cir. 2002); see
also In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004).
In rejecting claim 23, reciting inter alia, "a water-tight sealing
compound," the Examiner finds that "Bates discloses the claimed invention
[including] the use of mortar or adhesives between the panels ... but lacks
the specific adhesive used [as] a sealant to provide a seal between the
panels." Final Act. 6-7 (citing Bates, col. 5, 11. 28-34) (emphasis omitted).
However, "[the Examiner] takes Official Notice that it would be obvious to
use a mortar or construction adhesive that is impermeable to water to
prevent leaks in buildings," because "[t]he panels of Bates are used in a
building," and that "it would have been obvious ... to have substituted the
adhesive of Bates with a water-tight sealing compound in order to have
prevented the wall of the building from leaking." Id. at 6-7 (emphasis
omitted).
In response, Appellant first contends that "Bates merely discloses that
mortars and construction adhesives are known, but fails to disclose or
suggest any specific mortars or construction adhesives, much less any that
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Appeal2014--007944
Application 13/349,603
are specifically identified as water-tight agents."3 Appeal Br. 13. Appellant
also asserts that "Bates is silent with respect to any need whatsoever for a
water-tight adhesive or mortar ... or to acknowledge any need to provide a
sealant or perform any measures to otherwise ensure water-tightness, no
such need exists in the context of Bates." Appeal Br. 15-16.
However, we agree with the Examiner that "[ w ]hile Bates does not
specifically disclose that the adhesive or mortar chosen is water-tight," that
"[ t ]here is nothing in the Bates reference that precludes the use of a water
impermeable adhesive or mortar or teaches away from the use of a water
tight adhesive or mortar," as "Bates is merely silent as to the specifics of the
mortar/adhesive used [while disclosing] that 'mortar or any other suitable
adhesive may be applied."' Ans. 4--5 (again citing Bates, col. 5, 11. 28-34).
Appellant continues by asserting that, "in the context of Bates, there is
no recognized need for any particular water-tight mortar in the first place,
and accordingly, one skilled in the art seeking to optimize Bates would not
have had any logical reason to try to specifically use a water-tight
adhesive/mortar, or to otherwise seal the adhesive/mortar," contending "that
the search results and technical articles [included in] Appendix B4 ...
contradict the Examiner's assertion that Bates' simple recognition of the
3 Without identifying any specific "water-tight sealing compound,"
Appellant's Specification merely discloses panels that "engage one another
in a secured relationship at least via the mating surfaces to form a water-tight
junction," with "a suitable adhesive, such as a joining compound," where
"the adhesive or joining compound is a material selected from the group
consisting of rubbers, glues, epoxies, composite resins, and the like." See
Spec., page 8, 11. 5-11.
4 The materials included in Exhibit B were first submitted with an
Amendment filed March 27, 2013.
4
Appeal2014--007944
Application 13/349,603
existence of known adhesive/mortars means that those adhesives/mortars
necessarily provide 'some 'water-tight characteristics."" Appeal Br. 16-17.
However, we find Appellant's contentions to be unavailing.
Appellant is simply attacking Bates in isolation for lacking support for
findings not relied upon by the Examiner, rather than addressing the
Examiner's combination of Bates with OFFICIAL NOTICE. As the
Examiner explains, "[r]egarding claim 23, [A]ppellant's argument is moot
given that the Bates reference is not relied upon to show the water-tight
sealing compound." Ans. 3.
In challenging the Examiner's reliance on OFFICIAL NOTICE,
Appellant contends that 'it is well established that an Examiner cannot rely
on mere speculation, unsubstantiated by any evidence in the record, to fill in
gaps in the prior art, in an attempt to maintain an otherwise unsustainable
rejection," and "this fundamental principle applies even when such
speculation is instead labeled as 'Official Notice' and used in the same
manner simply to fill in gaps in the prior art without any evidentiary basis in
the prior art of record." Appeal Br. 17.
However, as required by MPEP § 2144.03 (c), the Examiner explains
that "the use of water-tight mortars are well known in the construction art, as
evidenced by Walker (5,921,047)," who "discloses the use of panels (12a,
12b) having an adhesive applied to the joints of the panels to insure a
watertight, weatherproof seal between the panels."5 Ans. 5---6 (citing
5 The Walker reference (US 5,921,047, iss. July 13, 1999) was cited by
Appellant in an Information Disclosure Statement (IDS) filed January 13,
2012, requesting "that [Walker] be expressly considered during the
prosecution of this application."
5
Appeal2014--007944
Application 13/349,603
Walker, col. 6, 11. 1-5, disclosing that "[a]n adhesive can be easily applied to
the locking protrusions, insuring a tight, weatherproof seal and a
'permanent' joining of the panels").
Based on the disclosure of Walker, the Examiner reasons that "[t]he
panels of Bates are used on an exterior of a building and [because of] the
well known use of a water-tight joint, as evidenced by Walker, [it] would
have been common sense for a skilled artisan to have used [a water-tight
joint] with exterior panels of Bates [to provide] on the exterior of the
building a waterproof adhesive to prevent [water] from penetrating the
joints." Id. at 6. We agree. "[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). Furthermore, Appellant has not
apprised us that the Examiner's rationale regarding Walker is in error. See
generally Reply Brief. 6
Having considered all of the evidence presented by Appellant against
obviousness, including Exhibit B resubmitted with the Appeal Brief, we
conclude that the subject matter of claim 23 would have been obvious to one
having ordinary skill in the art at the time of the invention in view of the
prior art relied upon by the Examiner, including the Official Notice
supported by documentary evidence in the form of Walker.
6 In an appeal under 35 U.S.C. § 134(a), it is the Examiner's final rejection
that we review. See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990).
6
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Application 13/349,603
In view of the foregoing, we sustain the Examiner's unpatentability
rejection of claims 1, 2, 6-15 and 17-23 over Bates and Farris or Ciao or
Drews or Tucker or Nordberg or Gates, and Walker.
Obviousness of Claims 16 over Bates and Farris or Ciao or Drews or
Tucker or Nordberg or Gates, and Grieb
Other than observing that "Grieb does not overcome the deficiencies
of Bates" (Appeal Br. 18), we understand Appellant's appeal of the rejection
of claim 16, dependent on claim 12, rests on the arguments presented against
the rejection of claim 12, which we found not demonstrative of error in the
Examiner's rejection of claims 1, 2, 6-15 and 17-23, as set forth supra.
DECISION
We AFFIRM the Examiner's rejections.
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)(l )(iv).
AFFIRMED
7