Ex Parte Farrell et al

Patent Trial and Appeal Board

Oct 25, 2012

10696583 (P.T.A.B. Oct. 25, 2012)

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.
10/696,583 10/30/2003 William J. Farrell JR. 548A.0001 7235
25534 7590 10/25/2012
CAHN & SAMUELS LLP
1100 17th STREET NW
SUITE 401
WASHINGTON, DC 20036
EXAMINER
GILBERT, WILLIAM V
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
10/25/2012 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 WILLIAM J. FARRELL JR. and JOHN M. METROCK
____________

Appeal 2010-007340
Application 10/696,583
Technology Center 3600
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007340
Application 10/696,583

2
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision twice rejecting claims 22-35. More specifically, claims 22 and 23
are rejected under 35 U.S.C. § 103(a) as unpatentable over Chen (US
4,611,450, iss. Sep. 16, 1986) in view of Strand (US 1,664,837, iss. Apr. 3,
1928) and Ritter (US 6,272,805 B1, iss. Aug. 14, 2001), and claims 24-35
are rejected under § 103(a) as unpatentable over Chen in view of Strand,
Ritter, and Sacks (US 6,820, 387 B2, iss. Nov. 23, 2004). Claims 1-21 have
been cancelled.1 The Appellants provide the following declaratory
evidence: Declaration of Mark D. Heath under 37 C.F.R. § 1.132 (“Heath
Decl.”), and Declaration of William J. Farrell, Jr. under 37 C.F.R. § 1.132
(“Farrell Decl.”). The Appellants’ representative presented oral argument on
October 10, 2012. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Claims 22, 28, and 32 are the independent claims on appeal. Claim
22, reproduced below, is illustrative of the subject matter on appeal.
22. A construction panel comprising:
an outer wire mesh member and an inner wire mesh
member; each of said wire mesh members defining at least two
outwardly projecting screed ridges extending parallel to one
another a length of said wire mesh members;

1 A Request for Continued Examination (RCE) was filed December 12,
2008. The RCE was accompanied by a claim amendment cancelling claims
1-21. Thus, the Appellants incorrectly identified claims 14-20 as withdrawn
in the Appeal Brief at page 2.

Appeal 2010-007340
Application 10/696,583

3
a middle member comprising a plurality of layers
comprising wire trusses and polystryene disposed between said
outer and inner mesh members and positioned to define a first
gap between said middle member and said outer mesh member
and a second gap between said middle member and said inner
mesh member, said middle member being connected to said
inner and outer mesh members by attaching said mesh members
to trusses on outside ends of said middle member and wherein
when attached the orientation of respective apexes of the screed
ridges on said inner and outer members are diametrically
opposed such that the apexes of the screed ridges on said inner
member extend away from said middle member in a first
direction and the apexes of the screed ridges on said outer
member extend away from said middle member in a second
direction, said second direction being the opposite direction of
the first direction; and
first and second outer layers of concrete material applied
to said inner and outer mesh members to a depth extending
from said middle member to the apexes of said inner and outer
mesh members.
OPINION
Obviousness over Chen in view of Strand and Ritter
The Examiner finds that Chen’s two flat metal meshes 223, as shown
in Figure 2-3, correspond to the outer wire mesh member and the inner wire
mesh member as called for by claim 22, except that Chen’s mesh members
223 lack “screed ridges with an impression having an apex projecting
outwardly from the member[s].” Ans. 4-5. The Examiner turns to Strand’s
disclosure of a “mesh screed member (Fig. 1: 15 and 18) and having
outwardly pointing apices[, i.e., bumps,] (see 'A' from attached Fig. 2 from
Strand below)” to remedy Chen’s deficiency with respect to claim 22. Ans.
5. The Examiner’s reference to “attached Fig. 2 from Strand” is reproduced
below.
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Appeal 2010-007340
Application 10/696,583

5
long piece of metal or wood having a ridge, attached to a wall or ceiling
where the ridge is intended to be used as a guide to ensure the straight, level,
and uniform thickness of plaster or stucco. For example, the apexes of V-
shaped impressions 105, 106 in the Specification can serve as screed ridges.
See Spec. paras. [0006], [0038], and fig. 1 and App. Br. 8-10; see also App.
Br. 3-4. To the extent the Examiner construes the term “screed” or “screed
ridge” to be merely an “intended use of the invention” as opposed to a
structural limitation of the claimed outer and inner wire mesh members, the
Examiner’s construction is incorrect. But see Ans. 12-13.
The Appellants correctly contend that Strand “shows a checkerboard
matrix of wires having a regular pattern of bumps . . . caused by the stapling
of portions of the wires to a composite” and that the “bumps . . . do not meet
the physical structure of 'screed ridges'” because the “bumps, are not long,
straight, flat, of a uniform depth or otherwise capable of allowing a
board/edge/level to be pulled across them to cut a coating to provide a flat,
smooth, and uniform layer.” Reply Br. 4. Indeed, “[i]f one were to treat the
bumps [of Strand] as screeds, the resultant coating would be a bumpy,
uneven, surface.” Id., see also Heath Decl. paras. 27-29. As such, the
Examiner’s finding that “Strand discloses a mesh screed member (Fig. 1:15
and 18) and having outwardly pointing apices[, i.e., bumps,]” is not
supported by a preponderance of the evidence.
The Examiner also finds that “Ritter discloses a construction element
with a foam core and concrete outer layers” and further modifies Chen to
include a concrete coating. Ans. 5. However, this additional finding and
proposed modification do not remedy the unsubstantiated finding that
Strand’s bumps correspond to “screed ridges,” and as such, the combination
Appeal 2010-007340
Application 10/696,583

6
of Chen, Strand, and Ritter would not have resulted in outer and inner mesh
members including screed ridges, as called for by claim 22.
Thus, the rejection of claim 22 as unpatentable over Chen in view of
Strand and Ritter is not sustained. The Examiner’s rejection of claim 23,
which depends from claim 22, likewise is not sustained.
Obviousness over Chen in view of Strand, Ritter, and Sacks
Claim 24, which ultimately depends from claim 22, recites “wherein
said screed ridges are configured as V-shaped impressions in said wire mesh
members.” App. Br., Claims Appendix. Independent claim 28 recites a
constructional panel including “a pair of wire mesh members . . . defining
two outwardly projecting screed ridges extending a length of said wire mesh
members, wherein each of said screed ridges are configured as V-shaped
impressions having an apex extending about ½ inch and oriented such that
the apexes of each wire mesh member extend away from said middle
member.” Id. Independent claim 32 recites a construction panel including a
similar pair of wire mesh members as compared to claim 28, the notable
difference being that the wire mesh members have three, not two, outwardly
projecting screed ridges. See Id.
Regarding the limitation of the “screed ridges . . . configured V-
shaped impressions” the Examiner relies on the modification of Chen’s
mesh members 223 in view of Strand’s U-shaped screed ridge (Ans. 18), and
further modifies Chen’s mesh members 223 with the shape of trusses 15 of
Sacks’s lath 10, which the Examiner finds to be a V-shaped screed ridge.
Ans. 6-7, 10-11, 17-18; Sacks, fig. 2, and col. 5, ll. 44-45. Regarding the
limitation of the “screed ridges . . . having an apex extending about ½ inch”
the Examiner concludes that such would have been obvious to a person of
Appeal 2010-007340
Application 10/696,583

7
ordinary skill in the art. Ans. 6-8, 10-11. However, the modifications do not
remedy the incorrect conclusion that the modified outer and inner mesh
members 223 of Chen would result in a pair of inner and outer mesh
members having screed ridges. After all, even if the shape of Chen’s wire
meshes were further modified to include a V-shaped bump instead of a U-
shaped bump and the apex of the bump extends to about ½ inch, the bump,
by virtue of being a bump, is not a “screed ridge.”
Thus, the rejection of dependent claim 24, independent claim 28, and
independent claim 32, and the claims that directly or indirectly depend from
those claims, claims 25-27, claims 29-31, and claims 33-35, respectively, is
not sustained.

DECISION
We REVERSE the rejections of claims 22-35.

REVERSED

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