Ex Parte Hamel

Patent Trial and Appeal Board

Apr 28, 2014

11452519 (P.T.A.B. Apr. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DENIS HAMEL
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Appeal 2012-005237
Application 11/452,519
Technology Center 3600
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Before JENNIFER D. BAHR, EDWARD A. BROWN, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-005237
Application 11/452,519
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, 4, 5, 8, 9, 12, 13, 18, 21-26, 44-46, 48-51, 53-
57, 59, 60, and 62-64. App. Br. 2. Claims 3, 6, 7, 10, 11, 14-17, 19, 20, 27-
43, 47, 52, 58, and 61 have been cancelled. Id. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claims are directed to a dry-cast concrete block. Claims 1, 44, 51,
and 57 are independent. Claim 1 is reproduced below.
1. A dry-cast concrete block comprising a surface to be
exposed, at least a portion of said surface having a cast texture
with a natural stone appearance, wherein each of a plurality of
points of said cast texture defines a respective texture angle
between 75° and 90° and wherein said cast texture comprises a
plurality of peaks and valleys and at least one of said valleys
has a depth greater than 4 mm.

PRIOR ART
Unruh US 4,001,361 Jan. 4, 1977
Ball US 5,131,202 Jul. 21, 1992
Nasvik US 5,232,646 Aug. 3, 1993
Brown US 5,535,563 Jul. 16, 1996
Riccobene US 6,881,463 B2 Apr. 19, 2005

GROUNDS OF REJECTION
Appellant requests review of the following rejections:
I. Claims 1, 2, 4, 5, 13, 18, 21-26, 44-46, 48, 50, 51, 53, 54 and 56
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nasvik,
Brown, and Unruh.
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II. Claims 8, 9, 12 and 49 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Nasvik, Brown, Unruh, and Ball.
III. Claim 55 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nasvik, Brown, Unruh, and Riccobene.
IV. Claims 57, 59, 60 and 62-64 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Riccobene, Brown, and Unruh.

OPINION
Rejection I
Independent claim 1 calls for “[a] cast texture compris[ing] a plurality
of peaks and valleys and at least one of said valleys has a depth greater than
4 mm.” Each of independent claims 44, 51, and 57 recites a similar
limitation.
The Examiner finds, inter alia, that “Unruh describes a cast texture
having peaks and a valley being a depth greater than 4 mm or 6 mm
(interpreted as the difference of 1.25 inches and 1.5 inches) … .” Ans. 5.1
(apparently referring to column 4, line 56 of Unruh). The Examiner
concludes that
[i]t would have been obvious to a person having ordinary
skill in the art at the time the invention was made to make the
Nasvik et al. texture angle between 75 and 90 degrees, as
depicted by Brown et al., in order to give a realistic appearance
and create texture on the combined block greater than 4 or 6
mm, as described by Unruh, in order to simulate a construction
façade.
Ans. 5-6.

1 We note that Unruh describes that “[t]he panel had a thickness of
approximately ¾ inch with the thickness of the raised portions being from
1¼ to 1½ inches.” Col. 4, ll. 54-56.
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Appellant contends that Unruh fails to render obvious the claimed
dry-cast concrete block because, inter alia, “Unruh neither discloses nor
suggests a plurality of peaks and valleys wherein at least one valley has a
depth greater than 4 mm.” App. Br. 17; Reply Br. 4. Appellant points out
that Unruh indicates “that the thickness of the rectangular raised portions 16
representing masonry units is from ‘1¼ to 1½ inches.’” App. Br. 17.
Appellant contends that “[t]his does not imply that the texture of a
rectangular raised portion 16 necessarily has a variation in height of ¼ inch,
and certainly does not imply that a rectangular raised portion 16 has a
‘valley’ with a depth of ¼ inch.” Id. Appellant explains, “For instance, this
may mean that different rectangular raised portions 16 have different
thicknesses which range from 1¼ to 1½ inches.” Id.
Appellant’s contentions are persuasive. The Examiner does not
adequately identify what particular portions of Unruh’s panel are considered
to correspond to the claimed “peaks and valleys.” The Examiner also does
not adequately explain where Unruh provides support for the finding that “at
least one of the said valleys has a depth greater than 4 mm,” as claimed. To
the extent that the Examiner is implying that because the thickness of the
raised portions on the panel disclosed by Unruh can vary by ¼ inch, or 6.35
mm, the variance suggests that there can be at least one valley having a
depth greater than 4 mm on the surface of a raised portion, such implication
is not supported by Unruh. The Examiner neither discusses the texture of
the raised portions described in Unruh, nor identifies any disclosure in
Unruh relating to peaks or at least one valley on the surface of a raised
portion. The Patent and Trademark Office has the initial duty of supplying
the factual basis for its rejection. It may not resort to speculation, unfounded
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assumptions or hindsight reconstruction to supply deficiencies in its factual
basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Here, the
Examiner does not identify evidence that Unruh discloses “[a] cast texture
[that] comprises a plurality of peaks and valleys and at least one of said
valleys has a depth greater than 4 mm,” as claimed.
In response to Appellant’s arguments, the Examiner further states that
“[t]he claims are not considered patentable since the criticality of the valley
depth is deemed expected, predictable and obvious.” Ans. 10. However, the
Examiner’s statement is merely conclusory, and the Examiner does not
otherwise set forth an adequate rationale or additional evidence supporting
this determination of obviousness. Ans. 10. For example, the Examiner
does not explain why the claimed valley depth is either expected or
predictable. As explained by our reviewing court, “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)(quoted with approval in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)).
Accordingly, we agree with Appellant that the Examiner did not
establish a prima facie case of obviousness for claims 1, 2, 4, 5, 13, 18, 21-
26, 44-46, 48, 50, 51, 53, 54 and 56. Thus, we reverse the rejection of these
claims.
Rejections II and III
In applying the additional teachings of Ball and Riccobene to reject
the remaining claims depending from claim 1, 44, or 51, the Examiner did
not articulate any additional findings or reasoning that cure the deficiencies
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in the combination of Navsik, Brown, and Unruh. Ans. 6-7. Thus, we also
do not sustain the obviousness rejections of claims 8, 9, 12, and 49 over
Navsik, Brown, Unruh, and Ball, or claim 55 over Navsik, Brown, Unruh,
and Riccobene.
Rejection IV
In rejecting claims 57, 59, 60, and 62-64, the Examiner relies on the
same findings and reasoning in regard to Unruh as discussed above for
Rejection I. Ans. 7-9. Accordingly, we also do not sustain the obviousness
rejection of claims 57, 59, 60, and 62-64 over Riccobene, Navsik, Brown,
and Unruh.

DECISION
The Examiner's decision rejecting claims 1, 2, 4, 5, 8, 9, 12, 13, 18,
21-26, 44-46, 48-51, 53-57, 59, 60, and 62-64 is REVERSED.

REVERSED

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