Ex Parte Husted

Patent Trial and Appeal Board

Sep 29, 2016

12501346 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/501,346
68543 7590
Arent Fox LLP
555 West Fifth Street
48th Floor
07/10/2009
10/03/2016
Los Angeles, CA 90013
FIRST NAMED INVENTOR
Martin D. Husted
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.
031445.00032 4180
EXAMINER
CORBOY, WILLIAM
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
10/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAR TIN D. HUSTED
Appeal2015-001176
Application 12/501,3461
Technology Center 3700
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO and
MATTHEWS. MEYERS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 3-5, and 14-16. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellant, "[t]he real party in interest is IHP Lennox of
Nashville, Tennessee." Appeal Br. 4.
Appeal2015-001176
Application 12/501,346
Claimed Subject Matter
Claims 1 and 14 are the independent claims on appeal. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A brick assembly, comprising:
a molded brick having a planar surface; and
at least one magnetic attachment embedded in the molded
brick, the at least one magnetic attachment having an exterior
planar surface, the exterior planar surface of the magnetic
attachment and the planar surface of the molded brick together
forming a planar brick assembly surface.
Appeal Br., Claims App.
Rejections
I. Claims 1and5 are rejected under 35 U.S.C. § 102(b) as
anticipated by Langley (US 4,026,086, iss. May 31, 1977).
II. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Langley.
III. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Langley and Tummarello (US 4,027,711, iss. June 7, 1977).
IV. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Langley and Ruud et al. (US 6,592,961 Bl, iss. July 15, 2003,
hereinafter "Ruud").
V. Claims 14 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Langley, Bourne (US 2008/0013931 Al, pub. Jan. 17,
2008) and Good (US 4,338,913, iss. July 13, 1982).
VI. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Langley, Bourne, Good, and Dollinger (US 2,429,748, iss. Oct. 28,
1947).
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Application 12/501,346
ANALYSIS
Rejections I-IV
The Appellant asserts "the brick assemblies disclosed by Langley
contain not only a planar surface of the molded brick and an exterior planar
surface of the magnetic attachment, but projecting members 18 and
indentations 17." Appeal Br. 12. Based on this assertion, the Appellant
argues that "when the protruding members and depressions are taken into
account, as they must be, it can be seen that the assembly surface of the
brick taught by Langley are [sic is] not planar as recited in claim 1." Id. at
13. The Appellant's argument is not persuasive.
In response, the Examiner explains that indentations 17 and projecting
members 18 do not preclude the planar surfaces 20 and 19 of Langley's
brick and the exterior planar surface of the magnetic attachments 21 and 22,
respectively, from forming a planar brick assembly surface. Ans. 13. We
agree.
The Appellant's argument is supported by a premise that projecting
members 18 and indentations 17 are part of the "planar brick assembly
surface," as recited in claim 1. As such, the Appellant appears to construe
the term "planar brick assembly surface" to be a "side" of the brick
assembly. However, there is insufficient support in the Specification to
require such as construction.
The Appellant also provides a definition of the term "planar" as "1:
of, relating to, or lying in a plane or 2: two-dimensional in quality." Reply
Br. 8 (citing Merriam-Webster Online Dictionary, http://www.merriam-
webster.com/dictionary/planar). Although we understand these definitions
to be consistent with Specification, the definitions and Appellant's
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Appeal2015-001176
Application 12/501,346
arguments do not explain why Langley's surface 20 and magnetic strip 21 or
surface 19 and magnetic strip 22 do not form a "planar brick assembly
surface," as recited in claim 1. See Final Act. 3--4, Ans. 13.
Thus, we sustain the Examiner's rejection of independent claim 1 and
dependent claim 5, which is not argued separately by Appellant.
Additionally, the Appellant has not provided further arguments for the
rejections of claims 3 and 4 under 35 U.S.C. § 103(a). Appeal Br. 8-9. The
Appellant merely relies on the unpersuasive argument presented for the
Examiner's rejection of claim 1 for these grounds of rejection and asserts
that the additional findings and reasoning for these grounds of rejection do
not remedy the alleged error discussed above with regard to the rejection of
claim 1. See id. For the same reasons we have sustained the rejection of
claim 1, we likewise sustain the rejections of claims 3 and 4.
Rejections V & VI
Independent claim 14 recites:
14. A firebox assembly, comprising:
a firebox having an interior surface; and
at least one molded brick comprising a planar surface and
at least one magnetic attachment embedded in the molded brick,
the at least one magnetic attachment having an exterior planar
surface, the exterior planar surface of the magnetic attachment
and the planar surface of the molded brick together forming a
planar brick assembly surface that abuts the interior surface of
the firebox, wherein the embedded magnetic attachment
magnetically secures the planar brick assembly surface to the
interior surface of the firebox.
Appeal Br., Claims App. (emphasis added).
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Appeal2015-001176
Application 12/501,346
The Examiner's rejection of independent claim 14 relies on a
combination of teachings from Langley, Bourne, and Good. Final Act. 9-
11. The Examiner relies on Langley for teaching a molded brick having a
planar surface and a magnetic attachment embedded in the molded brick, but
not for the limitations of claim 14 that recite "a firebox having an interior
surface" and "wherein the planar surface of the bricks abuts the interior
surface of the firebox wherein the embedded magnetic attachment
magnetically secures the planar brick assembly surface to the interior surface
of the firebox." See id.; see also Ans. 5---6. The Examiner relies on
teachings of Bourne and Good to remedy the deficiencies of Langley. More
particularly, the Examiner relies on Bourne's firebox as "a replacement for
the suitable foundation of Langley so that the suitable foundation is that of a
metal firebox." Ans. 8 (emphasis added). The Examiner appears to rely on
Good's firebox to establish a similar rationale. See id. at 10-11.
The Appellant argues that the Examiner's proposed combination of
Langley, Bourne, and Good would not have suggested the subject matter of
independent claim 14. See Appeal Br. 7-11; see also Reply Br. 2---6. We
determine that the Appellant's argument is persuasive.
First, Langley teaches the use of magnets to attach different bricks
together, not to attach bricks to other structures, such as foundation 13.
Appeal Br. 8; see also Reply Br. 4--5. Notably, Langley describes, "walls
[ 10 and 11] are constructed by laying a first tier of bricks 12 on a suitable
foundation 13 comprised of a suitable substance, such as concrete."
Langley, col. 2, 11. 12-14. Langley's disclosure of foundation 13 is limited
to the foregoing, and as such, it is unclear how the first tier of bricks 12 is
secured to foundation 13. Second, Bourne discloses removably attaching, by
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Application 12/501,346
use of magnetic fasteners 128, cosmetic panels 122, 124, and 126, which
have brick textured front faces, to a metal housing 100. See Final Act. 10
(citing Bourne, para. 26). Here, we agree with the Appellant's argument that
"nothing in the records suggests" (Reply Br. 4) that because Bourne "us[ es]
magnetic brick assemblies in firebox construction" that it "was recognized
as a way to easily attach[] the bricks to the firebox" (Ans. 4; see also id. at
8-9). See Reply Br. 2--4. Third, Good is similar to Bourne in that it teaches
a metal firebox, but does not teach the use of magnetism to connect
structures together. See id. at 6. As such, the Examiner's proposed
combination of Langley, Bourne, and Good would not have suggested
"wherein the embedded magnetic attachment magnetically secures the
planar brick assembly surface to the interior surface of the firebox," as
recited by claim 14.
Thus, we do not sustain the Examiner's rejection of independent
claim 14, and dependent claim 16, as unpatentable over Langley, Bourne,
and Good. Further, the remaining rejection based on Langley, Bourne, and
Good in combination with Dollinger relies on the same findings and
rationale discussed above. As such, we do not sustain the Examiner's
rejection of claim 15 as unpatentable over Langley, Bourne, Good, and
Dollinger.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1 and 3-5.
We REVERSE the Examiner's decision rejecting claims 14--16.
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Appeal2015-001176
Application 12/501,346
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-IN-PART
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