Ex Parte Kirby

Board of Patent Appeals and Interferences

Jul 22, 2004

09683029 (B.P.A.I. Jul. 22, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

Paper No. 9

UNITED STATES PATENT AND TRADEMARK OFFICE

_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte
Mark E. Kirby
_______________

Appeal No. 2004-1263
Application No. 09/683,029
_______________

ON BRIEF
_______________

Before WALTZ, JEFFREY T. SMITH, and PAWLIKOWSKI, Administrative
Patent Judges.

PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1 through 7.

Appeal No. 2004-1263
Application No. 09/683,029

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Claim 1 is representative of the subject matter on
appeal and is set forth below:
1. An apparatus for building a shower curb
comprising:

a plurality of horizontally disposed boards stacked in
a vertical array, said boards being cut to a common length equal
to an elongate space within which is to be built said shower
curb;

a flexible shower liner disposed in overlying relation
to said plurality of boards;

a three-sided frame disposed in overlying relation to
said boards and in overlying relation to said flexible shower
liner;

said three-sided frame including a top wall, a front
wall, and a back wall;

said front wall and said back wall being disposed in
parallel relation to one another and in perpendicular, depending
relation to said top wall;

said three-sided frame having a predetermined depth;

a plurality of openings formed in said top wall, said
front wall, and said back wall;

said plurality of openings receiving a cementitious
material;

said boards and liner being completely covered by said
cementitious material when said cementitious material is applied
to said boards and liner through said plurality of openings at a
depth substantially equal to said predetermined depth of said
frame so that said top wall, front wall, and back wall of said
frame are substantially flush with said cementitious material;

Appeal No. 2004-1263
Application No. 09/683,029

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whereby tile is laid atop said cementitious material
to complete said shower curb.

The examiner relies upon the following references as
evidence of unpatentability:
Powers 5,092,002 Mar. 3, 1992
Fernandes 6,000,184 Dec. 14, 1999

Claims 1 through 7 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Powers in view of Fernandes.

We note that the rejection involving Powers in view of
Presti has been withdrawn. Answer, page 4.

On page 3 of the brief, appellant states that the
claims stand or fall together. We accordingly consider claim 1
in this appeal. 37 CFR § 1.192(c)(7) and (8) (2002).

OPINION
We have carefully reviewed appellant’s arguments set
forth on pages 3 through 8 of the brief. For the reasons set
forth in the answer, and below, we affirm the rejection.
We refer to the examiner’s position as set forth on
pages 3 through 4 of the answer. The examiner relies upon
Powers for teaching the apparatus as set forth in appellant’s
claim 1, except for teaching openings in the three-sided frame
12 for receiving a cementitious material in order to bond tiles
laid atop of frame 12.
Appeal No. 2004-1263
Application No. 09/683,029

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The examiner relies upon Fernandes for teaching the
use of a base with openings for the installation of tiled
coverings upon an underlying substrate. See column 4, lines 65
through 68. The base comprises openings 3 as depicted, for
example, in Figure 1 of Fernandes. The shape of the base and
the distance between the front and back surfaces of the base may
vary to cooperate with the shape, texture and weight of the
tiled covering to be supported by the base as well as the
material and contour of the underlying substrate. See column 5,
lines 36 through 42 of Fernandes.
Appellant’s primary argument is that there is no
motivation to substitute the base of Fernandes for the insert 12
of Powers. Appellant argues that the only motivation is found
in appellant’s disclosure. Brief, pages 6-8.
We refer to the examiner’s comments beginning on
page 5 of the answer. Here, the examiner explains that Powers
discloses placing tiles 34 on the three-sided frame insert 12.
The examiner states that Fernandes is relied upon for teaching
how a plastic supporting frame could be provided with a
plurality of openings to receive cementitious material for
permitting quick attachment of tiles on the building surface.
The examiner discusses how Powers, in column 3 at lines 48
through 49, teaches that the outer periphery of the inclined
insert 12 is tiled with tile sections 34. See Figure 4, for
example. Answer, page 5.
As discussed above, Fernandes does teach that the
shape of the base can vary to cooperate with the shape, texture
and weight of the tiled covering to be supported by the base as
Appeal No. 2004-1263
Application No. 09/683,029

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well as the material and contour of the underlying substrate.
Hence, variation of the shape of the base is suggested by
Fernandes.
We note that obviousness can be established by
combining or modifying the teachings of the prior art to produce
the claimed invention where there is some teaching, suggesting,
or motivation to do so found either in the reference or in the
knowledge generally available to one of ordinary skill in the
art. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). Here, Powers’ frame 12 does not include openings,
as discussed above. At least part of the frame of Powers is
tiled (see Fig. 4). Fernandez does teach the benefits of
utilizing a base having openings for installing tile; hence, the
suggestion to modify the frame of Power by including openings in
the frame for improved attachment of tile is found in the
reference of Fernandez. Therefore, a prima facie case of
obviousness has been established. Id.
In view of the above, we therefore affirm the
rejection.
Appeal No. 2004-1263
Application No. 09/683,029

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No time period for taking any subsequent action
in connection with this appeal may be extended under 35 CFR
§ 1.136(a).

AFFIRMED

THOMAS A. WALTZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY T. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

BAP:psb

Appeal No. 2004-1263
Application No. 09/683,029

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