Ex Parte McStay

Board of Patent Appeals and Interferences

Mar 16, 2010

10134227 (B.P.A.I. Mar. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BUFFALOSTONE, INC.
____________________

Appeal 2009-005471
Application 10/134,227
Technology Center 3600
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Decided: March 16, 2010
____________________

Before RICHARD E. SCHAFER, JAMESON LEE, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, BuffaloStone,
Inc. (“BuffaloStone”), under 35 U.S.C. § 134(a) from a rejection of claims 1,
7, 8, 46, 55, and 56. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
References Relied on by the Examiner
Hettich 533,807 Feb. 5, 1895
Reagan 1,513,184 Oct. 28, 1924
Constantino 6,119,423 Sep. 19, 2000
Dieter US 6,286,287 B1 Sep. 11, 2001

Branko Grünbaum & G.C. Shephard, Tilings and Patterns 501 (W.H.
Freeman & Co.) (1987) (“Grünbaum”)

The Rejections on Appeal
The Examiner rejected claims 46, 55, and 561 under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter which BuffaloStone regards as the
invention.
The Examiner rejected claims 1 and 46 under 35 U.S.C. § 103(a) as
unpatentable over Reagan, Hettich, Constantino, and Grünbaum.
The Examiner rejected claims 7, 8, 55, and 56 under 35 U.S.C.
§ 103(a) as unpatentable over Reagan, Hettich, Constantino, Grünbaum, and
Dieter.

1 Although the Examiner’s Answer expressly lists only independent claim 46
in the statement of rejection, a deficiency in the definiteness of claim 46 also
extends to dependent claims 55 and 56 which include all the features of that
independent claim. Therefore, we presume that the Examiner also rejected
claims 55 and 56 as indefinite.
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The Invention
The invention relates to a stone building surface system for forming
surfaces that are made of specially sized surfacing units. (Spec. 1:3-10.)
The surfacing units are composed of pluralities of rectangular thin quarried
material that are divided into four separate groups with each group having
units of discrete length. In one disclosed embodiment, the lengths of the
units are determined based on a mathematical relationship that factors in the
width of the units and the width of a longitudinal separation spacing between
adjacent units. Presented in the form of an equation, the length of a unit
from each group is determined as follows (Id. at 10:25-11:5; 13:20-26):
Wu + Wlad = (1/2)L1 = (1/4)L2 = (1/6)L3 = (1/8)L4
Where:
Wu = the width of a unit

Wlad = the longitudinally adjacent separation width
between units

L1 = the length of a first unit
L2 = the length of a second unit
L3 = the length of a third unit
L4 = the length of a fourth unit

Claim 1, which reads on the above-described embodiment, is
reproduced below (App. Br. 25 Claims App’x.):
1. A relational stone, building surface system comprising:

a. a plurality of discrete predimensioned rectangular first
length thin quarried material surface units having a unit width and
having a first length, wherein a total of said unit width plus a non-
negligible, longitudinally adjacent thin quarried material surface unit
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design separation width is substantially equal to one-half said first
length;

b. a plurality of discrete predimensioned rectangular second
length thin quarried material surface units substantially having said
unit width and having a second length, wherein a total of said unit
width plus said non-negligible, longitudinally adjacent thin quarried
material surface unit design separation width is substantially equal to
one-fourth said second length;

c. a plurality of discrete predimensioned rectangular third
length thin quarried material surface units substantially having said
unit width and having a third length, wherein a total of said unit width
plus said non-negligible, longitudinally adjacent thin quarried material
surface unit design separation width is substantially equal to said one
sixth said third length; and

d. a plurality of discrete predimensioned rectangular fourth
length thin quarried material surface units substantially having said
unit width and having a fourth length, wherein a total of said unit
width plus said non-negligible, longitudinally adjacent thin quarried
material surface unit design separation width is substantially equal to
one-eighth said fourth length,

wherein a number of each installed discrete predimensioned
rectangular first length thin quarried material surface units, installed
discrete predimensioned rectangular second length thin quarried
material surface units, installed discrete predimensioned rectangular
third length thin quarried material surface units and installed discrete
predimensioned rectangular fourth length thin quarried material
surface units is approximately twenty-five percent the total number of
installed discrete predimensioned rectangular thin quarried material
surface units.
B. ISSUES
1. Has BuffaloStone shown that the Examiner was incorrect in
determining that the term “eight-three and one third percent” in claim 46 is
indefinite?
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2. Has BuffaloStone shown that the Examiner erred in
determining that the combination of Reagan, Hettich, Constantino, and
Grünbaum is sufficient to account for a building surface system that includes
pluralities of units having lengths that are proportional to both the widths of
the units and the separation spacing between adjacent units?
C. FINDINGS OF FACT
1. Reagan discloses an improved header block that lines the side
of a road structure. (Reagan col. 1, ll. 10-16):
2. Reagan’s Figure 1 is reproduced below:

The figure above depicts a perspective view of
Reagan’s road structure.

3. Neither Reagan’s figures nor its written description use any
reference characters designated “1,” “2,” “3,” or “4.”
4. Reagan does not recognize any proportional relationship
between the lengths of its blocks and the widths of those blocks or the
spacing between adjacent blocks.
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5. Hettich discloses tile flooring where individual tiles are
separated from one another by cement. (Hettich col. 2, ll. 72-80.)
6. Hettich also does not recognize that the lengths of its tiles are in
proportion to the widths of the tiles or the spacing of the tiles from one
another.
D. PRINCIPLES OF LAW
The legal standard for definiteness is whether a claim reasonably
apprises one of ordinary skill in the art of its scope. In re Warmerdam, 33
F.3d 1354, 1361 (Fed. Cir. 1994).
Rejections on obviousness grounds cannot be sustained by mere
conclusory statements as 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).
E. ANALYSIS
Rejection under 35 U.S.C. § 112, second paragraph
Independent claim 46 recites the term “eight-three and one third
percent” in the context of an expression for determining the length of the
material that makes up a stone surface system. The Examiner determined
that that expression is unclear, reasoning that the recitation of “eight-three”
for a numerical value is non-standard. The Examiner explained that that
term could have been intended as expressing “8.3” or “8/3” or “83.” (Ans.
9:5-10.)
BuffaloStone contends that a person of ordinary skill in the art would
have recognized “eight-three and one third percent” as meaning only the
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value “83 1/3 %.” In support of that contention, BuffaloStone points to its
specification in which a relationship that it urges corresponds to the claimed
“eight-three and one third percent” relationship appears as “L3/6 -
0.8333Wuds = Wu.” (App. Br. 11:8-17.)
The argument is not persuasive. The term “eight-three” is not a
standard representation of “eighty-three” or “83,” and BuffaloStone has not
shown that in the art of the claimed invention “eight” means “eighty.”
BuffaloStone also has not pointed to any part of its specification which uses
the term “eight-three” or defines the term as meaning “eighty-three” or “83.”
BuffaloStone’s reliance on an embodiment in its specification that uses the
recognized fractional value “0.8333” is inadequate to establish a meaning of
the non-standard term “eight-three.” The contention that the terms “eight-
three” and “eighty-three” mean the same is mere attorney argument which
cannot take the place of evidence lacking in the record. Estee Lauder Inc. v.
L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
It is undisputed that “eighty-three and one third percent” means the
same as “0.8333.” However, after the indefiniteness issue was raised by the
Examiner, BuffaloStone had the opportunity to amend the term “eight-three”
to “eighty-three” but declined to do so. The refusal to amend is not
consistent with the contention that “eight-three” means “eighty-three.” We
take the first term precisely as what is says, “eight-three,” and that is an
expression with no standard meaning and no meaning as defined in the
specification. The meaning of “eight-three” is unknown and uncertain.
The legal standard for definiteness is whether a claim reasonably
apprises one of ordinary skill in the art of its scope. In re Warmerdam, 33
F.3d at 1361. That standard is not met here. On this record, the Examiner
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has set forth a rational basis for determining that the term “eight-three and
one third percent” is indefinite. Accordingly, we sustain the rejection of
claim 46 and its dependent claims 55, and 56 as indefinite under 35 U.S.C.
§ 112, second paragraph.
Rejections over prior art
Claims 1 and 46 are the independent claims and were each rejected as
unpatentable over Reagan, Hettich, Constantino, and Grünbaum. Dependent
claims 7, 8, 55, and 56 were rejected as unpatentable over Reagan, Hettich,
Constantino, Grünbaum, and Dieter.
With respect to claim 1, the Examiner takes the position that Reagan
discloses a building surface system that allegedly includes four separate
pluralities of units or blocks. According to the Examiner, those blocks are
identified in Reagan’s Figure 1 using reference characters “1,” “2,” “3,” and
“4” and are allegedly dimensioned such that a width of each of the four
pluralities of blocks is equal to, respectively, one-half, one-quarter, one-sixth
and one-eighth of the lengths of the blocks. (Ans. 4:1-11.)
The Examiner’s position is without merit. Reagan discloses an
improved header block that lines the edge of a road structure. (Reagan col.
1, ll. 10-16.)

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Reagan’s Figure 1 is reproduced below:

The figure above depicts a perspective view of
Reagan’s road structure.

Reagan’s Fig. 1 does not show any reference characters designated
“1,” “2,” “3,” or “4.” Neither does any other portion of Reagan’s disclosure
use those reference characters. Reagan simply shows and describes a road
surface of general design made up of some collection of unnumbered blocks.
On this record, it is unclear what particular features in Reagan the Examiner
is relying upon to account for the four distinct pluralities of surfacing units
that are required by claim 1.
Furthermore, while Reagan shows that some arrangement of blocks
makes up its road surface, the reference does not describe that there is any
proportional relationship between the widths and lengths of the blocks.
Indeed, the reference does not disclose any particular dimensions for the
blocks. The Examiner has not explained the basis for his determination that
the alleged four pluralities of blocks have the lengths contended.
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Moreover, claim 1 does not require only that its units have lengths
that are proportional to their widths. Rather, the lengths of the units must be
proportional to both the widths of the units and a “non-negligible,
longitudinally adjacent thin quarried material surface unit design separation
width.” To account for the impact of the separation width on the unit
lengths, the Examiner turned to Hettich. Hettich discloses tile flooring
where individual tiles are separated from one another by cement. (Hettich
col. 2, ll. 72-80.) Given that disclosure, the Examiner simply states that it
would have been obvious to a person of ordinary skill in the art to modify
the lengths of the blocks in Reagan to account for the separation disclosed in
Hettich and obtain the unit lengths that are required by claim 1. (Ans. 5:12-
19.)
Rejections on obviousness grounds cannot be sustained by mere
conclusory statements as there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.
In re Kahn, 441 F.3d at 988. Here, that Hettich’s tiles are simply spaced
from one another is not itself a sufficient teaching to alter the lengths of the
blocks of Reagan’s road surface. As with Reagan, Hettich also does not
recognize any proportional relationship between the dimensions of its tiles
and the separation of those tiles from one another. Such a relationship,
however, is a required feature of BuffaloStone’s claim 1. The Examiner
does not provide any substantive reasoning as to how the teachings of
Reagan and Hettich are adequate to account for the necessary dimensional
relationships that establish the lengths of the claimed units.
With regard to the additional teachings of Constantino and Grünbaum,
the Examiner has evidently cited those teachings as alternatively showing
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that surfaces may be formed from elements having lengths that are related to
their widths. Those teachings, however, like Reagan and Hettich, are
similarly deficient in demonstrating that the components that make up a
surface have lengths that are proportional to both the width of the
components as well as the spacing between adjacent components.
For the foregoing reasons, we do not sustain the rejection of
independent claim 1 as unpatentable over the teachings of Reagan, Hettich,
Constantino, and Grünbaum.
Claims 7 and 8 are ultimately dependent on, and include all the
limitations of, claim 1. In addition to Reagan, Hettich, Constantino, and
Grünbaum, the Examiner also pointed to Dieter in rejecting claims 7 and 8.
The Examiner, however, relied on Dieter only to meet limitations added by
claims 7 and 8 and not to make-up the above-noted deficiencies of Reagan,
Hettich, Constantino, and Grünbaum with respect to the features of
independent claim 1. Accordingly, we do not sustain the rejection of claims
7 and 8 as unpatentable over Reagan, Hettich, Constantino, Grünbaum, and
Dieter.
Claims 46, 55, and 56 were also rejected over prior art. However, as
set forth above, we have already sustained the indefiniteness rejection of
those claims. The analysis of a claim rejection based on prior art should not
be performed where it is necessary to engage in speculation as to the
meaning of claim terms and assumptions as to the scope of a claim. See In
re Steele, 305 F.2d 859, 862 (CCPA 1962). We, therefore, do not reach the
merits of the prior art rejections of claims 46, 55, and 56.
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F. CONCLUSION
1. BuffaloStone has not shown that the Examiner was incorrect in
determining that the term “eight-three and one third percent” in claim 46 is
indefinite.
2. BuffaloStone has shown that the Examiner erred in determining
that the combination of Reagan, Hettich, Constantino, and Grünbaum is
sufficient to account for a building surface system that includes pluralities of
units having lengths that are proportional to both the widths of the units and
the separation spacing between adjacent units.
G. ORDER
The rejection of claims 46, 55, and 56 under 35 U.S.C. § 112, second
paragraph is affirmed.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Reagan, Hettich, Constantino, and Grünbaum is reversed.
The rejection of claims 7 and 8 under 35 U.S.C. § 103(a) as
unpatentable over Reagan, Hettich, Constantino, Grünbaum, and Dieter is
reversed.
We do not reach the merits of the rejection of claim 46 under 35
U.S.C. § 103(a) as unpatentable over Reagan, Hettich, Constantino, and
Grünbaum.
We do not reach the merits of the rejection of claims 55 and 56 under
35 U.S.C. § 103(a) as unpatentable over Reagan, Hettich, Constantino,
Grünbaum, and Dieter.
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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AFFIRMED-IN-PART

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