Ex Parte Morse et al

Board of Patent Appeals and Interferences

Sep 28, 2010

10892839 (B.P.A.I. Sep. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/892,839 07/16/2004 Rick James Morse D0932-000430 3668
8933 7590 09/28/2010
DUANE MORRIS LLP - Philadelphia
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103-4196
EXAMINER
GILBERT, WILLIAM V
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
09/28/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RICK JAMES MORSE and DAVID H. BECK
____________________

Appeal 2009-013910
Application 10/892,839
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, JOHN C. KERINS, and
STEVEN D.A. MCCARTHY, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-013910
Application 10/892,839
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 8-
10, 12 and 21-27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to an imitation stone siding system. Claim 8,
reproduced below, is illustrative of the claimed subject matter:
8. Imitation stone comprising:
an imitation stone material replicating one or more actual
natural stones and having a mold formed topography formed by
a mold following a topography of each of the one or more
actual natural stones;
different pigments on the mold formed topography, the
different pigments replicating different colors on the
topography of each of the one or more actual natural stones;
and
the different pigments being distributed on the molded
topography of the imitation stone material to replicate a
distribution of the different colors on the topography of each of
the one or more actual natural stones.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gadsby
Lents
US 3,899,855
US 4,875,622
Aug. 19, 1975
Oct. 24, 1989

REJECTIONS
Claims 8-10, 12, 22-24 and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lents. Ans. 4.
Claims 8, 21, 25 and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gadsby and Lents. Ans. 6.
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Application 10/892,839
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OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellants and the Examiner. As a result of this review, we
have determined that the applied patent to Lents establishes the prima facie
obviousness of claims 8-10, 12, 22-24 and 27. The applied prior art of
Gadsby and Lents establishes the prima facie obviousness of claims 8, 21,
25 and 26. Therefore, all rejections on appeal are affirmed.
The following comprises our findings of fact with respect to the scope
and content of the prior art and the differences between the prior art and the
claimed subject matter. Lents discloses a system that imitates stone. The
system is comprised of a roadside structure of light weight rigid plastic foam
material covered by cementitious material in a manner that permits recesses
to be formed, texturing to be given and coloring to be added so as to closely
match and simulate the external stone, brick or other masonry appearance of
the associated main structure. Col. 1, ll. 55-68. We emphasize that Lents is
concerned with closely matching and simulating the appearance of stone or
other masonry. Lents uses one or more coloring pigments on the structure of
the formed stone. See col. 2, ll. 5-6, and 64-68. We further note that Lents
shapes the outer layer of stucco using shapers, templates or similar
implements. Col. 3, ll. 6-7. In our view, some molding is taking place when
shapers and templates are involved. Lents further discloses that when the
second coating is applied, it is applied to a much deeper depth if stonework
is to be imitated. For example, Lents discloses simulating Tennessee rock
exterior (col. 3, l. 31) and states that the stucco might be up to 2 ½ inches
thick for stone simulation. See col. 3, ll. 29-37. Based on these findings, it is
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Application 10/892,839
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our conclusion that the imitation stone wall disclosed in Lents is identical to
or only slightly different than Appellants’ claimed article.
“The patentability of a product does not depend on its method of
production.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citing In re
Pilkington, 411 F.2d 1345, 1348 (CCPA 1969)). “If the product in a product-
by-process claim is the same as or obvious from a product of the prior art,
the claim is unpatentable even though the prior product was made by a
different process.” Id. (citing In re Marosi, 710 F.2d 799, 803 (Fed. Cir.
1983); Johnson & Johnson v. W.L. Gore, 436 F.Supp. 704, 726 (D. Del.
1977); see also In re Fessmann, 489 F.2d 742, 744 (CCPA 1974)); and
Amgen Inc. v. F. Hoffman-LA Roche Ltd, 580 F.3d 1340 (Fed. Cir. 2009).
As the Court Customs and Patent Appeals stated in In re Brown,
459 F.2d 531, 535 (CCPA 1972) (internal citation and emphasis omitted):
In order to be patentable, a product must be novel, useful
and unobvious. In our law, this is true whether the product is
claimed by describing it, or by listing the process steps used to
obtain it. This latter type of claim, usually called a
product-by-process claim, does not inherently conflict with the
second paragraph of 35 U.S.C. § 112. That method of claiming
is therefore a perfectly acceptable one so long as the claims
particularly point out and distinctly claim the product or genus
of products for which protection is sought and satisfy the other
requirements of the statute. It must be admitted, however, that
the lack of physical description in a product-by-process claim
makes determination of the patentability of the claim more
difficult, since in spite of the fact that the claim may recite only
process limitations, it is the patentability of the product claimed
and not of the recited process steps which must be established.
We are therefore of the opinion that when the prior art discloses
a product which reasonably appears to be either identical with
or only slightly different than a product claimed in a
product-by-process claim, a rejection based alternatively on
either section 102 or section 103 of the statute is eminently fair
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and acceptable. As a practical matter, the Patent Office is not
equipped to manufacture products by the myriad of processes
put before it and then obtain prior art products and make
physical comparisons therewith.
In effect, the USPTO bears a lesser burden of proof in making out a
prima facie case of obviousness in a product-by-process situation because of
the peculiar nature of these types of claims. Fessmann, 489 F.2d at 744.
Once the Examiner provides a rationale tending to show that the claimed
product appears to be the same or similar to that of the prior art, although
produced by a different process, the burden shifts to applicant to come
forward with evidence establishing an unobvious difference between the
claimed product and the prior art product. Marosi, 710 F.2d at 803.
We must emphasize that a product-by-process claim is not limited to a
claim that merely recites process steps. For example, consider In re Dike,
394 F.2d 584, 589 (CCPA 1968) wherein it was held that an article, a “blow-
molded” one-piece bottle, was in the nature of a product-by-process claim.
In fact, in that case, the Court Customs and Patent Appeals held that the line
of flashing formed on the article from the parting line of the two molds
could not serve to patentably distinguish over the article from the prior art
that was not blow-molded. Id.
We further note that the Dike case is actually directed to an article
which was claimed as molded, but the article was found to be unpatentable
over an unmolded product that was the same or similar to Dike’s claimed
molded bottle. Thus to the extent that Appellants have argued the molded
nature of the imitation stone, these arguments are unavailing to show error
on the part of the Examiner with respect to the Lents prior art.
In this instance, the Examiner provided reasoning establishing that the
imitation stone material of Lents is identical or only slightly different from
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Application 10/892,839
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the imitation stone claimed, and, in our view, has shifted the burden to
Appellants to establish that the subject matter is patentably distinct. This
Appellants have not done.
Appellants argue that the Lents structure is built up by spray and
troweling. App. Br. 5. As noted above, the manner in which Lents is
produced is not germane to patentability as long as the articles produced are
essentially the same. Appellants argue the topography limitation of claim 8
establishes the patentability of the subject matter. App. Br. 6. However, as
noted above, Lents indicates that his simulated stone has up to 2 ½ inches of
topography and that his stonework can simulate Tennessee rock exterior.
Therefore, Appellants’ reliance on the topography limitation does not define
over the Lents reference. Likewise, Appellants’ argument based on
weathered smooth surfaces or fractured quarry marks does not define over
Lents either, as Lents has stated he can simulate Tennessee stone.
Furthermore, Lents uses different pigments and distributes these
pigments throughout the stucco surfaces to mimic the appearance of natural
stone. Thus a reliance on distributed pigments does not render Appellants’
claimed subject matter patentable over the disclosure of Lents. Appellants
again argue that Lents gives a sprayed or troweled topography which
Appellants claim they are not using. This argument is belied by Lents’
express disclosure that he can simulate rock and Lents’ suggestion of a
specific rock that can be simulated by his method.
Appellants state that Lents only imitates natural stone without being a
copy or replica of such stone. App. Br. 8. This argument is not well taken. It
is true that Lents is an artificial stone made of stucco. However, Appellants’
stone is made of high density and low density polyurethane. Making the
stone of plastic, on the one hand, or of stucco, on the other, does not actually
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produce a stone that is closer to the natural stone than the alternative
constituent. In our view, a plastic stone is no closer to a natural stone than a
stone made of stucco.
Turning to the rejection under § 103 as unpatentable over Gadsby in
view of Lents, we are in agreement with the Examiner that it would have
been obvious to use the process of Gadsby to make panels that simulate
stone. In our view, this is merely the use of a known technique to improve
similar methods in the same way with predictable results. See KSR, Int’l. Co.
v. Teleflex, Inc., 550 U.S. 402, 417 (2007). While Gadsby expressly
discloses the use of polyurethane molding to make panels of simulated roof
shingles, the disclosure that the panels can simulate hand-split shakes,
shingles, clapboard or other particular surfaces, along with Lents’ disclosure
of making simulated stone paneling, would have suggested to one of
ordinary skill that stone paneling could have been made by the polyurethane
process disclosed in Gadsby. See Gadsby, col. 1, l. 61–col. 2, l. 19. Here
again, Appellants argue the topography limitation as establishing the
patentability of the independent claim. In view of the express disclosure of
Lents that simulated rock can be produced with up to 2 ½ inches of relief, it
is our view that Lents renders obvious Appellants’ topographic limitation.
Finally Appellants have argued Ex Parte Hilton, 148 USPQ 356
(BPAI 1965) for the proposition that a change in shape can be a
distinguishing factor in patentability. We acknowledge that this is the case.
However, in this instance it is clear that the applied prior art to Lents
discloses an article of similar shape to the shape to Appellants’ claimed
article. This includes topography and pigmented surfaces. Therefore, in our
view the Examiner has established that the article of Lents is identical with,
or only slightly different from the article that Appellants claim, shifting the
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burden to Appellants to come forward with evidence to rebut the Examiner’s
finding. This the Appellants have not done. Therefore, all the rejections on
appeal are affirmed.

DECISION
The rejection of claims 8-10, 12, 22-24 and 27 under 35 U.S.C. § 103
as unpatentable over Lents is affirmed.
The rejection of claims 8, 21, 25 and 26 under 35 U.S.C. § 103 as
unpatentable over Gadsby in view of Lents is also 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

nlk

DUANE MORRIS LLP - Philadelphia
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA PA 19103-4196