Ex Parte Karanikas

Board of Patent Appeals and Interferences

Jan 25, 2010

10661445 (B.P.A.I. Jan. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TERRY KARANIKAS
____________

Appeal 2009-000523
Application 10/661,445
Technology Center 3600
____________

Decided: January 25, 2010
____________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
STEVEN D.A. MCCARTHY, and MICHAEL W. O’NEILL, Administrative
Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Terry Karanikas (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 15-21. Appellant canceled claims 1-14. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).
The Invention
The invention is directed to constructing a wall unit having layered
discrete veneer components, such as stones, on the outer surface. Spec. 1:4-
7.
Wall units with stone veneers are usually formed by first building a
form. The veneer stones are placed within the form. Concrete is then
poured over the stones and fills any gaps between the stones. The concrete
is poured to a depth that covers the stones completely. The concrete is
allowed to set. The resulting wall unit is removed from the form and set into
position. See Spec. 1:9-13 (citing to US 1,856,906, issued on May 3, 1932,
to Richard Carvel).
The process described in Carvel only permits a stone veneer on a
single surface. If the construction design requires a stone veneer on more
than one surface, e.g. two opposing sides, then two of these wall units would
have to be separately constructed and positioned back-to-back. This would
require more than one pour and increase the costs of the construction design.
Spec. 1:14 to 2:4.
Accordingly, Appellant discloses as the invention a molding process
that produces a wall unit with stone veneers on multiple sides and is
completed with a single pour of concrete. Spec. 2:12-15.
The claimed invention is to a combination of a wall unit form and the
formed wall.
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Claim 15, reproduced below, is representative of the subject matter on
appeal.
15. A combination of a wall unit form and a wall formed
inside therein, the combination comprising:
a first surface, formed by an interior surface of a
first wall panel;
a second surface operatively attached to said first
surface, said second surface formed by an interior surface of a
second wall panel;
end surfaces operatively attached to said first and
second surfaces thereby forming an upright form and opposing
sides, said end surfaces formed by interior surfaces of end wall
panels;
wherein at least one of said first, second and end
surfaces horizontally supports a plurality of irregularly-shaped
discrete veneer components stacked vertically from the ground
surface up against at least one panel, wherein the wall is formed
during a single pour application of a binding material to the
wall unit form; and
further wherein at least of one of said first, second
and end panels is configured to be removably attached from one
another to facilitate entry into a volume defined by the upright
form, wherein said entry allows for placement of said plurality
of irregularly-shaped discrete components.

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Carvel ‘504 (Carvel) US 1,809,504 Jun. 9, 1931
Torricelli US 3,116,570 Jan. 7, 1964
Schultz US 5,511,761 Apr. 30, 1996
Sugiyama US 5,836,572 Nov. 17, 1998
Dial, Jr. (Dial) US 6,032,424 Mar. 7, 2000

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The Rejections1
The following Examiner’s rejections are before us for review:
Claims 15-21 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. The claims
contain subject matter which was not described in the Specification in such a
way as to reasonably convey to one skilled in the relevant art that the
inventor, at the time the application was filed, had possession of the claimed
invention.
Claims 15-21 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention.
Claims 15, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable given Dial and Sugiyama.
Claims 15 and 18-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable given Carvel and Sugiyama.
Claims 19 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable given Dial or Carvel, Sugiyama, and Schultz.
Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable given Dial or Carvel, Sugiyama, and Torricelli.

1 The Examiner withdrew the obviousness rejections based on Dial or Carvel
and Torricelli. Ans. 2-3. We will address the contentions directed against
Dial and Carvel infra notwithstanding that these rejections are withdrawn
because Appellant relies on said contentions within the sections of the
Appeal Brief referenced as “Issue 3” and “Issue 4” to urge for the
patentability of the claims rejected based on Dial or Carvel and Sugiyama.
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Contentions
35 U.S.C § 112, first paragraph, rejection
Appellant contends that the claimed limitations of “irregularly-shaped
discreet veneer components” and “curvilinear edges” are supported in Figure
9 showing irregularly shaped pieces. App. Br. 7-8. Appellant contends that
the claimed subject matter of “horizontally supports,” as called for in claim
15, is “inherently supported and necessarily present by Figures 1 and 9 and
the totality of the teaching of the specification regarding stacking of the
veneer components against the panel.” App. Br. 8.
35 U.S.C. § 112, second paragraph, rejection
Appellant contends that a person having skill in the art “has ample
guidance after reading the plain meaning of the claim [language
‘horizontally supports’] in light of the enclosed Figure 1” to understand that
the “surfaces of the wall unit form provides horizontally supports for the
stacked veneer components and stop them from tipping over before the wall
unit form is filled with binding material.” App. Br. 10. Appellant further
contends a person of ordinary skill in the art would understand, after
reviewing the drawings and the Specification, that the term curvilinear refers
to objects bounded by curved lines and thus is definite. Id.
35 U.S.C. § 103(a) rejections based on Dial and Sugiyama
Appellant contends that Dial teaches away from Appellant’s invention
of “stacking of irregularly-shaped veneer components” as claimed because
Dial “teaches the insertion of rectangular bricks into holes within the face of
the mold” and does “NOT teach using ‘irregularly-shaped veneer
components stacked from the ground up.’” App. Br. 11. Appellant further
contends that Dial “does not teach a panel that is ‘configured to be
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removably attached from one another to facilitate entry into a volume
defined by the upright form, wherein said entry allow for placement of said
plurality of irregularly-shaped discrete components.’” App. Br. 12.
Appellant acknowledges that Dial may allow removal of the form, but that
removal is not for placing irregularly-shaped discreet components within the
panel because “no stacking occurs.” Id. Appellant acknowledges that Dial
teaches positioning veneer rectangular bricks within the pockets in the face
of the mold. However, the Appellant contends that Dial “does NOT teach
being opened for placement by stacking because the bricks are placed in the
pockets 62, prior to mold assembly because of the SMALL size of the wall
unit that is then stacked in a fashion similar to a brick to form a wall.” Id.
Appellant contends that Sugiyama teaches away from Appellant’s
invention and “does NOT teach a wall having ‘irregularly-shaped veneer
components stacked vertically from the ground surface up against at least
one panel’ because Sugiyama’s irregularly-shaped veneer components are
glued with adhesive into the receiving recess. App. Br. 17. To support the
contention that Sugiyama fails to teach the claim language supra, the
Appellant further contends that based on Sugiyama’s disclosure of the stone
recesses being molded integrally within the foamed plastic substrate; this
permits reasoning that “no veneer components [are] present BEFORE the
addition of binding material to form the wall.” Id. Further, Appellant
contends that Sugiyama’s “veneer components could not be stacked against
the wall unit form as taught because the presence of projections to form the
receiving recesses 22 would interfere .... [and] the wall unit form would
NOT be taught to be reattached after the irregularly-shaped veneer
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components are glued into the receiving recesses 22 forming the claimed
invention.” App. Br. 17-18.
35 U.S.C. § 103(a) rejections based on Carvel and Sugiyama
Appellant acknowledges that Carvel teaches “forming a wall unit
producing a wall with ‘irregularly-shaped veneer components.’” App. Br.
13. Appellant contends that the formation of the wall unit occurs “ONLY
when the wall is produced laying face down on the ground ... vertically
supported by the ground (wall face down).” App. Br. 13. Appellant
contends that Carvel “does NOT teach using the applicant’s claimed ‘first
wall panel’ or ‘second wall panel’ as required because it is formed against
the ground and the panels are not required and therefore not present.” App.
Br. 14. Appellant contends that because the irregularly-shaped veneer as
taught in Carvel is produced by laying the veneer against the ground,
applying the binding material, allowing it to set, and then physically
propping the veneer into position, the wall produced “may not be as
structurally sound or stable as the applicant’s claimed wall because it is not
vertically stable before binding material is added and can more easily
collapse if the binding material is deficient ... [and] may require use of heavy
lifting equipment.” Id.
Appellant contends that a difference between a wall unit formed by
Carvel and the claimed invention is that the claimed invention can have an
irregularly-shaped veneer on at least two sides whereas Carvel allows an
irregularly-shaped veneer on only one side. Id. Appellant acknowledges
that Carvel does teach an embodiment that uses regular rectangular bricks
stacked upon each other from the ground up, but Appellant contends that
“one skilled in the art would only be motivated to look toward the solution
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provided in the first embodiment when building a wall having an
‘irregularly-shaped veneer’ and would NOT be motivated to combine the
two separate embodiments of wall unit forms having walls formed inside
without further guidance.” App. Br. 15. Appellant contends while in one
embodiment in Carvel the veneer bricks are stacked vertically and then the
form is placed around to allow the binding material to be poured into the
wall unit form, this embodiment is “NOT placed against (leaned against) at
least one panel as is required with independent claim 15.” Id. The
Appellant contends that Carvel’s vertically formed wall requires the veneer
rectangular bricks to be vertically supported by spacers in order for the
binder to adhere to the veneer. Id.
For the rejection based on Carvel and Sugiyama, the Appellant further
contends that the Examiner “selectively chooses that the ‘572 patent teaches
the use of irregular-shaped veneer components and then ignores all of the
other teachings.” App. Br. 19-20. Appellant contends that the combination
of Carvel and Sugiyama does not render obvious the claimed subject matter
because Sugiyama “does not teach the irregular veneer structures as claimed
by Applicant.” App. Br. 20.

SUMMARY OF DECISION
We AFFIRM.

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OPINION
Issues
In light of the Appellant’s contentions, the issues before us are as
follows:
(1) Has Appellant shown the Examiner erred in finding that the
claimed subject matter of “irregularly shaped discreet veneer
components,” “curvilinear edges,” and “horizontally supports”
lacks an adequate written description within the originally filed
disclosure?
(2) Has Appellant shown the Examiner erred in finding that the
claimed subject matter of “curvilinear edges” and “horizontally
supports,” is indefinite?
(3) Has Appellant shown that the Examiner erred in concluding that
the claimed subject matter would be rendered obvious when the
teachings of Dial or Carvel with Sugiyama are combined?
Pertinent Facts
1. Appellant’s Figure 9 is reproduced below.

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Appellant’s Figure 9 depicts a wall unit having irregularly-shaped
veneer components and curvilinear edges.
2. Dial discloses a construction block and a mold form. As shown in
Figures 15 and 16, Dial discloses an embodiment of its mold form
(shown overall in Figures 6 and 8) that has recesses 62 in the interior
surface 60 for receiving regularly-shaped veneer, e.g. bricks 64. Dial,
col. 8, ll. 10-15.
3. Dial discloses that the veneer is placed within the mold. Dial, col. 8,
l. 25.
4. Dial discloses that the mold form, shown in Figures 6 and 8, is formed
of two separate side walls 17 and 17a that have posts 29. C-clamps
28 attached to the posts 29 serve to hold the side walls together during
the pour of the binding material, e.g., concrete. Dial, col. 5, ll. 22-28.
5. Sugiyama discloses applying irregularly-shaped veneer components,
artificial stones 10, into irregularly-shaped recesses 22 in an upright
form, e.g., gate post shown in Figure 2. Sugiyama, col. 4, ll. 7-60.
6. Sugiyama discloses that adhesive mortar 23 is applied either to the
veneer stones 10 or the receiving recesses 22. Sugiyama, col. 4, ll.
66-67.
7. Sugiyama discloses that protruding ribs 21 conform to the respective
shapes of the stone veneer 10. Sugiyama, col. 4, ll. 28-30.
8. Carvel discloses a frame for forming a concrete wall corner section
having the external appearance of a masonry or brick wall. Carvel, p.
1, ll. 1-10, p. 3, ll. 58-62 and figs. 26-33.
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Principles of Law
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact.
Regents of Univ. of Cal. v. Eli Lilly and Co., 119 F.3d 1559, 1566 (Fed. Cir.
1997), cert. denied, 523 U.S. 1089 (1998) (citing Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). To fulfill the written
description requirement, a patent specification must describe an invention
and do so in sufficient detail that one skilled in the art can clearly conclude
that “the inventor invented the claimed invention.” Id. (citing Lockwood v.
Am. Airlines, Inc., 107 F.3d 1565, 1572 (1997) and In re Gosteli, 872 F.2d
1008, 1012 (Fed. Cir. 1989) (“[T]he description must clearly allow persons
of ordinary skill in the art to recognize that [the inventor] invented what is
claimed.”)). Thus, an applicant complies with the written description
requirement “by describing the invention, with all its claimed limitations,
not that which makes it obvious,” and by using “such descriptive means as
words, structures, figures, diagrams, formulas, etc., that set forth the claimed
invention.” Id. (citing Lockwood, 107 F.3d at 1572). It is important to note
that “[t]he invention is, for purposes of the ‘written description’ inquiry,
whatever is now claimed.” Vas-Cath, 935 F.2d at 1564. Further, “[i]n
deciding the issue [of written description], the specification as a whole must
be considered.” In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). The second paragraph of 35 U.S.C. § 112 requires claims to set
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out and circumscribe a particular area with a reasonable degree of precision
and particularity. In re Johnson, 558 F.2d 1008, 1015 (CCPA 1977). In
determining whether this standard is met, the definiteness of the language
employed in the claim must be analyzed, not in a vacuum, but always in
light of the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary level of
skill in the pertinent art. Id.
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). A prima facie
conclusion of obviousness may be supported by a showing that the claims
are directed to a process, machine, manufacture, or composition of matter
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, and such modification yields a
predictable result. See id. (citing United States v. Adams, 383 U.S. 39, 40
(1966)). The Court further stated that, “if 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, 550
U.S. at 417. When considering obviousness of a combination of known
elements, the operative question is thus “whether the improvement is more
than the predictable use of prior-art elements according to their established
functions.” Id.
“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983).
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Rigid application of a “teaching, suggestion, motivation” test for
nonobviousness is incompatible with Supreme Court precedent. KSR Int’l,
550 U.S. at 419. The Examiner thus need not establish the existence of a
teaching, suggestion, and motivation in combining teachings from prior art
references; rather, the Examiner must provide an articulated reasoning with
some rational underpinning to support a legal conclusion of obviousness. In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The analysis need not seek out
precise teachings directed to the specific subject matter of the claim but can
take into account the inferences and the creative steps that a person of
ordinary skill in the art would employ. KSR Int’l, 550 U.S. at 418.
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See Ex parte Yamaguchi, 88 USPQ2d 1606,
1614 (BPAI 2008) (on appeal, applicant must show examiner erred); Ex
parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan, 83
USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d 1509,
1519 (BPAI 2007).
Analysis
Issue (1)
Appellant has shown that the Examiner erred in finding that the claim
limitations of “irregularly-shaped discreet veneer components” and
“curvilinear edges” lack an adequate description within the originally filed
Specification. “[T]he written description requirement is satisfied by the
patentee’s disclosure of ‘such descriptive means as words, structures,
figures, diagrams, formulas, etc., that fully set forth the claimed invention.’”
Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002)
(quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
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1997)). In this case, the Appellant has descriptive means such as Figure 9
(Fact 1) that fully set forth irregularly-shaped veneer components and
curvilinear edges on a surface of the wall form unit such that the originally
filed Specification would convey with reasonable clarity to those skilled in
the art that, as of the filing date sought, Appellant was in possession of the
invention as now claimed concerning these two claim limitations. See Vas-
Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
Appellant’s arguments demonstrate that the Examiner erred in finding
the claimed subject matter of a wall unit form panel horizontally supporting
the veneer of the wall unit formed during a single pour application of the
binding material was not adequately described within the originally filed
Specification. The purpose of the written description requirement is to
convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, applicant was in possession of the invention as now claimed.
See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
The Appellant’s position that a person having ordinary skill in the art would
understand that the term “horizontally supports” means that the wall unit
form panel prevents the veneer from tipping over is reasonable in light of the
descriptive means of Figures 1 and 9.
Issue (2)
Appellant’s arguments demonstrate that the Examiner erred in finding
the claimed subject matter indefinite. The definiteness of claim language
must be analyzed, not in a vacuum, but always in light of the teachings of
the prior art and of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill in the pertinent art.
In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). The curvilinear aspect of
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the wall form unit and wall form itself is reasonably shown in Figure 9 as the
Specification would be interpreted by a person possessing the ordinary level
of skill in this art. As Appellant argues, just as the veneer components are
vertically supported by the ground and each underlying veneer component
previously stacked, the interior surfaces of the wall unit form provide the
horizontal support for the stacked veneer and, as such, stop the veneer
components from tipping over before binding material is poured.
Issue (3)
Appellant has not shown the Examiner erred in concluding that the
claimed subject matter is rendered obvious by the combined teachings of
either Dial or Carvel with Sugiyama. While Dial does not teach the
utilization of an irregularly-shaped veneer as Appellant contends, the
Examiner acknowledged this omission in Dial. Instead, Dial discloses
utilizing a regularly-shaped veneer in the mold form (Fact 2) and, as such,
the Examiner utilized Sugiyama’s teaching of an irregularly-shaped veneer
(Fact 5). The Examiner found that a person of ordinary skill in the art could
readily provide the mold form of Dial with an irregularly-shaped veneer in
conjunction with or as a substitute for the regularly-shaped veneer disclosed
in Dial based on the teachings of Sugiyama in order to provide “a natural
look to the wall surface.” Ans. 6-7.
Dial provides the wall form that receives the regularly-shaped veneer
(Fact 2) and Sugiyama provides the teaching for receiving an irregularly-
shaped veneer into recesses of a mold form (Fact 5). A person having
ordinary skill in the art based on these teachings could readily substitute an
irregularly-shaped veneer and provide recesses therefor, or provide a
regularly-shaped veneer in conjunction with an irregularly-shaped veneer
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into the wall unit form disclosed in Dial. Such a technique for improvement
of Dial’s mold form does not appear to be beyond the skill level of a person
of ordinary skill in the art. Moreover, the Appellant has not provided
evidence that the improvement of combining a wall unit form and wall unit
with an irregularly-shaped veneer yields something more than the
predictable result of a wall unit having an irregularly-shaped veneer on the
visible surfaces.
Appellant’s argument that Dial does not have a panel that is
configured to be removably attached from another panel to facilitate entry
into a volume defined by the form created by the panels, and wherein the
entry allows for placement of a veneer, is unconvincing to demonstrate that
the Examiner erred. Dial’s two separate side walls (panels) are secured
together by clamps attached to the posts of each side wall (panel) and a
veneer is placed on the interior surface of the mold form. (Fact 4.) The
panels are separate prior to being secured with the clamps. As such, a
person having ordinary skill in the art would consider that the panels are
configured to be removably attached from each other.
Dial discloses that interior surface 60 of the outside mold wall 66 has
recesses 62 that receive veneer components 64 and that the veneer 64 is
placed within the mold. (Facts 2 and 3.) A person of ordinary skill in the art
would understand that prior to clamping the side walls together, in order to
place the veneer inside the mold form, at least an artisan’s hand would have
to place the veneer components on the interior surface of the mold. Thus,
the side walls of Dial facilitate an entry into the interior volume in order to
place the veneer components within the recesses of the mold. As such,
Dial’s disclosure would render obvious having a panel that is configured to
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be removably attached from another panel to facilitate entry into a volume
defined by the form created by the panels and the entry allows placement of
a veneer.
Concerning the placement of an irregularly-shaped veneer into the
volume, the Examiner utilized Sugiyama to teach using an irregularly-
shaped veneer. Nothing unpredictable occurs by having an artisan’s hand
inserting irregularly-shaped veneer components inside Dial’s volume when
the recesses were modified to accept an irregularly-shaped veneer as the
Examiner found. Thus, the combined teachings of Dial and Sugiyama
render obvious the claimed subject matter of a panel that is configured to be
removably attached from another panel to facilitate entry into a volume
defined by the form created by the panels, and wherein the entry allows for
placement of an irregularly-shaped veneer.
Appellant’s argument that Sugiyama teaches away from the
Appellant’s invention is unconvincing.
A reference may be said to teach away when a
person of ordinary skill, upon reading the
reference, would be discouraged from following
the path set out in the reference, or would be led in
a direction divergent from the path that was taken
by the applicant. The degree of teaching away will
of course depend on the particular facts; in general,
a reference will teach away if it suggests that the
line of development flowing from the reference’s
disclosure is unlikely to be productive of the result
sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). See also KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416-417 (2007) (explaining that when the prior
art teaches away from a combination, that combination is more likely to be
nonobvious).
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Appellant contends that Sugiyama teaches away because Sugiyama
teaches that the veneer is glued into the recess, no veneer is present before
the addition of binding material, and its projections to form the recesses
would interfere. These teachings neither lead in a direction divergent from
the Appellant’s path, discourage a person having ordinary skill in the art
from following the path taken by Appellant, nor suggest a line of
development that is unlikely to be productive. Sugiyama teaches applying
irregularly-shaped veneer components into irregularly-shaped recesses in an
upright form. (Fact 5.) Sugiyama uses an adhesive mortar. (Fact 6.)
Adhesive mortar is a binding material. Claim 15 just requires a single pour
application of a binding material. Sugiyama teaches that the binding
material is either applied to the veneer or the recess. (Fact 6.) Thus, binding
material does not have to be present before application of the veneer, but can
be applied with the veneer. The projections (ribs) are in conformity with the
veneer. (Fact 7.) Thus, the projections do not interfere with the application
of the veneer as Appellant’s contention suggests. As such, Sugiyama’s
teachings appear to follow the path taken by Appellant with respect to
placing irregularly-shaped veneer components into a mold form capable of
receiving such a veneer.
Appellant’s contentions against Carvel are unconvincing to
demonstrate that the Examiner erred. The contentions focus on an
embodiment not utilized by the Examiner to conclude that the claimed
subject matter is obvious. The Examiner did not utilize Carvel’s mold form
that produces the veneer on the ground as shown in Figures 1-4. The
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Examiner utilized Carvel’s mold form taught in Figures 26-33.2 As such,
the Appellant’s contentions do not address the Examiner’s findings.
Appellant’s contention directed to Carvel’s veneer wall would not be as
strong as Appellant’s veneer wall is speculative and not commensurate with
the claims on appeal. Nothing in the claim is directed to the strength of the
wall unit. Appellant’s contention that the difference between Carvel and the
claimed invention is that the claimed invention can have an irregularly-
shaped veneer on at least two sides as compared to Carvel one-sided veneer
is not commensurate with the scope of the claim. Claim 15 only requires
one side to have a veneer.
Appellant’s contention that a person of ordinary skill in the art would
only look to Carvel’s first embodiment and would not combine the two
separate embodiments within Carvel does not address the findings of the
Examiner. The Examiner applied the teachings of Carvel’s second
embodiment and the irregularly-shaped veneer teachings within Sugiyama.
Appellant’s contention that the difference between Carvel and the claims is
that Carvel’s veneer is not leaned against the panel as claimed is not
commensurate with the scope of claim 15. Claim 15 does not limit the
veneer to leaning against a panel. Claim 15 just requires the veneer to be
stacked vertically from the ground surface up against a panel. Stacking the
veneer vertically against a panel does not require the veneer to lean against
the panel, i.e., the panel can be considered a plumb line that the veneer is
touching in order to make sure the veneer is vertical.

2 Here, Carvel discloses a frame for forming a concrete wall corner section
having the external appearance of a masonry or brick wall. (Fact 8.)
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Appellant’s contention that Carvel requires spacers for support does
not show error in the Examiner’s rejection because the claims are open-
ended and as such does not exclude additional, unrecited elements such as
spacers. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.
1997) (“Comprising” is a term of art used in claim language which means
that the named elements are essential, but other elements may be added and
still form a construct within the scope of the claim.) Appellant’s argument
that the Examiner is improperly picking and choosing some teachings of the
references while not using others overlooks well-settled precedent. “[I]n
many cases a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.” KSR Int’l., 550 U.S. at
420. Moreover, in obviousness determinations, all of the features of the
secondary reference need not be bodily incorporated into the primary
reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellant’s contention that Carvel and Sugiyama fail to render
obvious the claimed subject matter because Sugiyama does not teach the
irregularly-shaped veneer structures as claimed attacks Sugiyama
individually rather than attacking what the combined teachings of Carvel
and Sugiyama would render obvious to a person having ordinary skill in the
art. Again, the relevant inquiry is whether the claimed subject matter would
have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d at 425.
Further, “[c]ombining the teachings of references does not involve an ability
to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968
(CCPA 1973). Additionally, the contention is not commensurate with the
scope of claim 15. Claim 15 just requires irregularly-shaped veneer
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components. Nothing limits the shape other than that the shape is irregular.
Sugiyama teaches an irregularly-shaped veneer. (Fact 5.)
In view of the foregoing, we sustain the Examiner’s rejections of
claim 15 given Dial or Carvel and Sugiyama. Appellant does not separately
argue claims 19 and 20 with respect to the rejection given Dial and
Sugiyama nor separately argue claims 18-20 given Carvel and Sugiyama.
As such, claims 18-20 fall with claim 15 for the same reasons.
Appellant’s contention against the rejection of claims 19 and 21 given
Dial or Carvel, Sugiyama, and Schultz (App. Br. 21-22), and the rejection of
claims 16 and 17 given Dial or Carvel, Sugiyama, and Torricelli (App. Br.
23-24) essentially rely on the same arguments against the rejection of claim
15, simply pointing out what the claims recite and not specifically pointing
out supposed errors in the Examiner’s position. For the reasons given
above, Appellant’s contentions that repeat the claim language associated
with claim 15 are unconvincing as to show error in the Examiner’s position
concerning the rejections of the dependent claims 16, 17, 19, and 21.
Further, statements that merely point out what a claim recites will not be
considered an argument for separate patentability of the claim. Thus,
Appellant’s contentions are unconvincing in demonstrating that the
Examiner erred in rejecting claims 16, 17, 19, and 21 with the given prior art
used in these rejections.

CONCLUSIONS
Appellant has shown the Examiner erred in finding that the claimed
subject matter of “irregularly shaped discreet veneer components,”
“curvilinear edges,” and “horizontally supports” lacks an adequate written
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description within the originally filed disclosure, and erred in finding that
the claimed subject matter of “curvilinear edges” and “horizontally
supports,” is indefinite.
Appellant has not shown that the Examiner erred in concluding that
the claimed subject matter would be rendered obvious when the teachings of
Dial or Carvel are combined with Sugiyama.

DECISION
The Examiner’s decision to reject the claims under 35 U.S.C. § 112,
first and second paragraphs, is reversed.
The Examiner’s decision to reject the claims under 35 U.S.C. § 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

mls

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