Ex Parte Gordon et alDownload PDFPatent Trial and Appeal BoardNov 27, 201512660559 (P.T.A.B. Nov. 27, 2015) Copy Citation 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. 12/660,559 03/01/2010 Ann p. Gordon 20685-18984 3121 7590 11/27/2015 J. WILEY HORTON, ESQUIRE Pennington, Moore, Wilkinson, Bell & Dunbar, P.A. Post Office Box 10095 Tallahassee, FL 32302-2095 EXAMINER DYE, ROBERT C ART UNIT PAPER NUMBER 1747 MAIL DATE DELIVERY MODE 11/27/2015 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 ANN P. GORDON, and DONALD R. GORDON ____________ Appeal 2013-010966 Application 12/660,559 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, PETER F. KRATZ, and JEFFREY W. ABRAHAM, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1–20. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants’ claimed invention is directed to a method of producing a concrete casting characterized by a stone-mimicking surface using a high viscosity paste made with water and baking soda that can be broken into clumps and used in the casting process. Appellants acknowledge that is known to sprinkle baking soda powder onto the surface of a concrete casting mold to make decorative concrete castings (App. Br. 4). Claim 1 is illustrative and reproduced below: Appeal 2013-010966 Application 12/660,559 2 1. A method of producing a concrete casting having a stone- mimicking surface, comprising: a. providing a mold having a base, encircling side walls, and an open top; b. providing an aggregate, including, i. sand, ii. Portland cement, iii. coloring dye, and iv. water; c. providing a high-viscosity paste of water infused baking soda wherein said paste includes a volumetric baking soda to water ratio between about 2.5 to 1 and about 5.0 to 1; d. transforming said high-viscosity paste of water infused baking soda into baking soda clumps having a size distribution between about 2 mm and about 25 mm; e. randomly distributing said baking soda clumps on said base of said mold; f. filling said mold with said aggregate; g. allowing said aggregate to harden into a solid, thereby forming said casting; and h. removing said casting from said mold. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Price US 5,248,338 Sept. 28, 1993 Stain or More? Concrete Countertop Forums [online] http://concretecountertops.ning.com/forums/topics/stain-or-more (June 2009) (“June 2009 Forum”) Pressed Look Concrete Countertop Forums [online] http://concretecountertops.ning.com/forums/topics/pressed-look (Sept. 2009) (“Sept. 2009 Forum”) Appeal 2013-010966 Application 12/660,559 3 The Examiner maintains the following grounds of rejection: Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Price in view of the June 2009 Forum and Sept. 2009 Forum (Ans. 4–7). We affirm the stated rejection for substantially the reasons set forth by the Examiner in the Final Rejection and the Examiner’s Answer. We offer the following for emphasis. Appellants argue the rejected claims together as a group (App. Br. 12– 17). Accordingly, we select claim 1 as the representative claim on which we shall primarily focus in deciding this appeal. Appellants do not dispute the Examiner’s determination that: Price discloses a method for making a concrete that simulates the appearance of stone (col 2, line 18-25) wherein a mold is provided; an aggregate mixture comprising sand, cement, water, pea gravel, and a coloring dye is mixed (col 2, lines 27-38); aggregate is poured into a prepared mold of the shape and size desired (col 2, lines 50-51); allowed to dry; and removed from the mold (col 3, lines 60-65). (Ans. 4–5; App. Br. 12–17). Nor do Appellants contest the Examiner’s determination that “Portland cement is a conventional and widely used type of cement” and that ‘[i]t would have been obvious to a person having ordinary skill in the art to employ Portland cement in the method of Price for the purpose of selecting a well-known and widely used material that is known to be suitable for concrete manufacture and which is readily available” (Ans. 5; see generally App. Br.). Appeal 2013-010966 Application 12/660,559 4 Rather, Appellants argue that: (1) the Second Declaration of Donald R. Gordon furnished by Appellants is sufficient to swear behind the cited secondary references; and (2) the applied secondary references, even if they were considered to be available as prior art, do not teach or suggest the use of a “high-viscosity paste” including baking soda that can be broken into clumps (transformed into clumps of baking soda) (App. Br. 12–17; Declaration II1).2 Concerning Appellants’ first argument, the one asserting a prior date of invention bears the burden of establishing facts necessary to prove earlier conception or an earlier actual reduction to practice. 37 C.F.R. § 1.131(b); In re Facius, 408 F.2d 1396, 1404 (CCPA 1969). The Examiner has reasonably determined that the Declaration evidence, including the attached invoice and accompanying statements submitted, are inadequate to establish a prior reduction to practice of the claimed method. This is because the general allegation that the B15 concrete pavers were made by a method that corresponds to the claimed method is not corroborated with sufficient facts to establish a prior reduction 1 A Declaration of Donald R. Gordon (a named co-inventor) was filed April 26, 2012 (Declaration I) and a Second Declaration of Donald R. Gordon was filed December 3, 2012 (Declaration II). Declaration II purports to establish a reduction to practice of the claimed invention prior to the Stain or More? - Concrete Countertop Forums of June 2009 and the Pressed Look- Concrete Countertop Forums of September 2009 (Declaration II, ¶¶ 12–14, Exhibit C). 2 Appellants do not contend that any of the claims before us on appeal in the present continuation-in-part Application are entitled to the filing date of parent Application No. 11/265, 839 (now abandoned) pursuant to 35 U.S.C. § 120. Appeal 2013-010966 Application 12/660,559 5 to practice of a method that includes steps corresponding to all of the claimed method steps (Ans. 9). In order to antedate a reference, an affidavit or declaration and exhibits must clearly explain which facts or data applicant is relying on to show completion of his or her invention prior to the particular date. Vague and general statements in broad terms about what the exhibits describe along with a general assertion that the exhibits describe a reduction to practice “amounts essentially to mere pleading, unsupported by proof or a showing of facts” and, thus, does not satisfy the requirements of 37 C.F.R. § 1.131(b). Applicant must give a clear explanation of the exhibits pointing out exactly what facts are established and relied on by applicant. In re Borkowski, 505 F.2d 713, 718–19 (CCPA 1974). In particular, a declaration submitted pursuant to 37 CFR § 1.131 is evaluated on its merits by considering the evidence relied upon in light of the arguments made explaining why the evidence is sufficient. The Board has broad discretion as to the weight to be given the evidence. In re American Academy of Science Tech Center, 367 F.3d 1359, 1368 (Fed. Cir. 2004); In re Inland Steel, Co., 265 F.3d 1354, 1366 (Fed. Cir. 2001). Here, co-inventor Donald R. Gordon declares, inter alia, that “[t]he high-viscosity lump process was used to create our ‘B15’ product, a 23.5” by 23.5” buff-colored concrete paver” and, based on a receipt evidencing the sale of 1,480 of such pavers on June 29, 2009, Mr. Gordon declares “that the presently-claimed invention (as recited in claim 1) was reduced to practice before June 29, 2009 and was on sale as of June 29, 2009” (Declaration II, ¶ 14, Exhibit C). Exhibit C is a copy of an invoice dated June 29, 2009 showing that, among other products, 1,480 B15 products were paid for and Appeal 2013-010966 Application 12/660,559 6 shipped to C.S Brown Tile and Marble of Charlotte, North Carolina on the above-noted date by Peacock Enterprises, Inc. of Atmore, Alabama. The statement of Mr. Gordon in paragraph 14 of Declaration II taken with the copy of the invoice attached as Exhibit C lacks the requisite corroborating evidence furnishing a detailed description of the actual method steps employed by the Applicants in making the B15 product pavers identified in the Declaration and in the attached Exhibit C, and amounts to no more than a general allegation that the invention was completed by Applicants prior to the date of the reference. Such is not sufficient proof to antedate a reference. Ex parte Saunders, 1883 C.D. 23, 23 O.G. 1224 (Comm’r Pat. 1883). In this regard, actual reduction to practice requires proof of a physical embodiment that includes all limitations of the claims or, by extension, proof of performance of a process in the case of a method that includes all limitations of the claims. See UMC Elecs. Co. v. U.S., 816 F.2d 647, 652 (Fed. Cir. 1987) (“Under our precedent there cannot be a reduction to practice of the invention here without a physical embodiment which includes all limitations of the claim.”). Accordingly, we concur with the Examiner that Appellants have not satisfied their burden to establish an actual reduction to practice of a method corresponding to a method according to any of the appealed claims at a date prior to the publication dates of any of the applied secondary references so as to antedate these applied references and overcome the stated obviousness rejection on the basis of this argument and the Declaration evidence submitted. Appeal 2013-010966 Application 12/660,559 7 As indicated above, Appellants additionally argue that the applied secondary references would not have taught or suggested the use of a “high- viscosity paste” including baking soda that can be broken into clumps (transformed into clumps of baking soda) for use in a concrete casting/molding process (App. Br. 13–15). However, and as determined by the Examiner, the disclosures in the internet forum discussions/articles include teachings to employ a baking soda and water mixture that can be made as a paste and tossed or sponged into a casting mold for achieving a desired texture in a concrete casting product, which disclosures, upon routine experimentation, would have suggested to one of ordinary skill in the art the use of the claimed high viscosity paste and soda clumps of a size as claimed for random distribution in a casting mold (Ans. 8; June 2009 Forum, pp. 2-3; September 2009 Forum, pp. 2–4). Consequently, Appellants’ arguments do not indicate reversible error in the Examiner’s determination that the combined teachings of the applied references would have suggested the claimed process, including randomly distributing clumps formed from a “high-viscosity paste” of baking soda on a bottom of the mold that is to be filled with the aggregate in Price to obtain the expected textured concrete casting desired by Price and, in so doing, to arrive at a process corresponding to the method as required by representative appealed claim 1 based on the additional teachings of the applied secondary references (Forum discussions/articles). It follows that we shall affirm the Examiner’s obviousness rejection. Appeal 2013-010966 Application 12/660,559 8 CONCLUSION The Examiner’s decision to reject the appealed claims under 37 C.F.R. § 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). 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