Ex Parte Nilsen

Patent Trial and Appeal Board

Jul 31, 2013

10555639 (P.T.A.B. Jul. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTOPHER NILSEN
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Appeal 2011-008555
Application 10/555,639
Technology Center 3600
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Before LYNNE H. BROWNE, ANNETTE R. REIMERS and
CARL M. DeFRANCO, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Christopher Nilsen (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims 16-18
and 23-30 as unpatentable over Nilsen (US 4,149,349; iss. Apr. 17, 1979)
and Kuelker (US 6,253,515 B1; iss. Jul. 3, 2001); and (2) claims 19-22 as
unpatentable over Nilsen, Kuelker and Frati (US 3,676,967; iss. Jul. 18,
1972). Claims 1-15 have been canceled. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
THE INVENTION
Appellant’s invention “relates to a consumable assembly for forming
a concrete wall structure.” Spec.1, ll. 7-8; figs. 9-10. Claims 16, 24 and 28
are independent.
Claims 16 and 28 are illustrative of the claimed invention and are
reproduced below:
16. A consumable assembly for forming a concrete
wall structure, the assembly comprising:
sheet metal side plates having major planar
sections forming opposite sides of the wall structure and
peripheral edge flanges substantially perpendicular to the
major planar sections of the side plates; and
transverse tie members constructed for
interconnecting side plates belonging to opposite sides of
the wall structure and hold said side plates in a spaced
apart substantially parallel relationship with respect to
each other when the transverse tie members are
connected to the side plates, wherein each parallel edge
flange of the side plates is separated from the major
planar section of the side plate by an associated
reinforcement groove forming a transition between the
major planar section and edge flange, such that, when
two side plates are brought together, the grooves of
adjacent plates form a channel that separates the exterior
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surfaces of the two plates and is externally visible, and
the edge flanges are constructed so that the edge flanges
of adjacent side plates bear on each other and are flush
when the edge flanges of adjacent side plates are brought
into contact.

28. A rectangular sheet metal side plate for a
consumable wall assembly, the side plate having a major
planar section and peripheral edge flanges substantially
perpendicular to the major planar section of the side
plate, at least some of the edge flanges having through-
holes enabling fasteners to be inserted such that the side
plate can be connected to another side plate having an
edge flange with a corresponding through-hole or a lug,
wherein at least one edge flange of the side plate is
separated from the major planar section of the side plate
by a reinforcement groove, and the edge flanges are
constructed so that the edge flanges of adjacent side
plates bear on each other and are flush when the edge
flanges of adjacent side plates are brought into contact.

ANALYSIS
Obviousness over Nilsen and Kuelker - Claims 16-18 and 23-27
Independent claim 16 recites, “wherein each parallel edge flange of
the side plates is separated from the major planar section of the side plate by
an associated reinforcement groove . . . such that, when two side plates are
brought together, the grooves of adjacent plates form a channel.” App. Br.
Clms. App’x. Similarly, independent claim 24 recites, “wherein the adjacent
edge flanges of at least two neighboring side plates are separated from the
major planar section of their respective side plate by a reinforcement
groove in such a way that the reinforcement grooves of the adjacent edge
flanges together form a channel.” Id. The Examiner finds that Nilsen
discloses all the limitations of claims 16 and 24 “except the claimed
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reinforcement groove.” Ans. 10; see also id. at 3-4. The Examiner further
finds that Kuelker discloses a panel construction including side plates 1
having adjacent edge flanges, wherein each adjacent edge flange of the side
plates 1 has a reinforcement groove 9, such that the grooves 9 of the adjacent
edge flanges of the side plates 1 form a channel. Id. at 4; Kuelker, figs. 20-
22. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to modify the side
plates of Nilsen to include a groove to separate the major planar surface
from the flange surfaces similar to that of the teaching of Kuelker “in order
to provide a recess which will allow for the finishing materials to have a
stronger grip on the side panels.” Id. at 5.
Appellant contends that the combination of Nilsen and Kuelker fails
to disclose “formation of the claimed channel.” App. Br. 7. Specifically,
Appellant contends that
Kuelker disclose[s] a groove 9 cut into the edge of
a solid rectangular body 2. The edges of the body
2 are beveled, so they cannot be made flush against
one another. See Fig. 22 [of Kuelker] which
shows two bodies 2 in mounting position showing
the beveled edges forming a V-joint (not flush) and
the grooves 9 in each body 2 not forming a
channel, but rather two separated groves [sic] 9.

In contrast, in the claimed invention, the flanges
(14, 15, 16, 17) are flat (not beveled) so that ‘edge
flanges of adjacent side plates bear on each other
and are flush when the edge flanges of adjacent
side plates are brought into contact.’ In this
manner, the reinforcement grooves can form a
channel (31 in Fig. 10) when the edge flanges of
adjacent side plates bear on each other. If the
flanges were beveled [as taught by Kuelker], the
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reinforcement grooves would not form a channel,
they would be separated. Compare the channel 31
shown in Fig. 10 of the present application to Fig.
22 of Kuelker’s V-joint with the separated grooves
9 not forming a channel.
Id. at 6-7.
Claims are to be given their broadest reasonable interpretation
consistent with the specification, reading claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Appellant’s Specification does not expressly define the term “channel;”
however, the Specification does disclose that
[a]s can be seen in Fig. 10, the adjacent edge
flanges 14, 15, 16, 17 of at least two neighbouring
side plates 12 are separated from the major planar
section 13 of their respective side plate 12 by a
groove 19 that is externally visible. In such a way,
the grooves 19 of the adjacent edge flanges 14, 15,
16, 17 together form a channel 31.
Spec., 11, ll. 25-29. As such, we agree with Appellant that “Fig. 10 in the
present specification . . . shows a clear channel 31 being formed by the
grooves 19, [i.e.,] no separation between the grooves 19,” which is
consistent with Appellant’s use of the term in the Specification. (Reply Br.
2).
Kuelker discloses
[a]s best shown in FIG. 22 a V-joint 61 results
when two adjoining panels 1 are installed adjacent
to each other. The apex of the V-joint 61 lies in
the plane of the rear surface of the panels 1, and
the beveled edges 9a extend from the rear of the
panel toward the front where the caulking shoulder
9 is formed.
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Kuelker, col. 7, ll. 56-61; fig. 22. Although a channel 61 is formed between
Kuelker’s adjoining panels 1, the channel 61 is formed by the beveled edges
9a of the adjoining panels 1 not by the grooves (shoulders) 9 of the panels 1
being brought together (i.e., without separation between the grooves
(shoulders) 9). We agree with Appellant that the beveled surfaces 9a of
Kuelker’s adjoining panels 1 prevent the surfaces 9a from being flush
against one another to allow the grooves (shoulders) 9 of the panels 1 to be
brought together to form a channel. See App. Br. 6-7; Reply Br. 2. As such,
Kuelker fails to disclose that the grooves 9 of the adjacent side plates 1 form
a channel, as required by the claims. Accordingly, for the foregoing reasons,
we cannot sustain the Examiner’s rejection of independent claims 16 and 24
and their respective dependent claims 17, 18, 23 and 25-27 as unpatentable
over Nilsen and Kuelker.
Claims 28-30
Appellant states that “[c]laims 28-30 stand or fall together for
purposes of this appeal only.” App. Br. 5. Accordingly, Appellant has
argued claims 28-30 as a group for purposes of the rejection of those claims
under § 103(a). Claim 28 is representative of the group and is selected for
review, with claims 29 and 30 standing or falling with claim 28. See 37
C.F.R. § 41.37(c)(1)(vii)(2011).
Independent claim 28 recites “wherein at least one edge flange of the
side plate is separated from the major planar section of the side plate by a
reinforcement groove.” App. Br., Clms. App’x. The Examiner finds that
Nilsen discloses all the claim limitations of claim 28 “except the claimed
reinforcement groove.” Ans. 10; see also id. at 3-4. The Examiner further
finds that Kuelker discloses a reinforcement groove 9. See Ans. 4, 10. The
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Examiner takes the position that “groove 9 of Kuelker is capable of
providing reinforcement, thus the intended use claim limitation is met.”
Ans. 4. The Examiner further reasons that
[t]he reinforcement groove is essentially a
chamfered edge between the planar surfaces which
will allow a settable material to fill in the area and
potentially create a stronger wall, since more
setting material will be added to fill in the groove
sections. Nilsen teaches all the elements of the
claim except the claimed reinforcement groove.
Kuelker teaches it is widely well known in the art
to provide a chamfered edge on wall panels in
order to create a large surface area for a settable
material to be placed and thus create a stronger
connection between adjacent wall elements. Thus
the chamfered edges of Kuelker fulfill the same
intended purpose as the reinforcement grooves of
the instant claims, and the examiner maintains that
it would have been obvious to use a similar
chamfered edge at the transition of the faces of
Nilsen to allow additional settable material to fill
in those chamfered edges and create a stronger
connection between adjacent wall elements.
Ans. 10.
Appellant contends that the combination of Nilsen and Kuelker fails
to “disclose the claimed grooves.” App. Br. 11. Specifically, Appellant
contends that (1) “Nilsen does not teach or suggest any groves [sic], as
admitted by the Examiner;” and (2) “the separate grooves 9 in each body 2
[of Kuelker] [do] not form[] a channel.” Id. at 10; see also Reply Br. 2.
We are not persuaded by Appellant’s arguments, because they are not
commensurate in scope with independent claim 28. Specifically,
independent claim 28 does not require reinforcement grooves to form a
channel, but merely requires that at least one edge flange of a side plate be
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separated from the major planar section of the side plate by a reinforcement
groove. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (rejecting
appellant’s arguments that were not commensurate in scope with the claims).
Appellant further argues that
[t]he Examiner’s argument that ‘the reinforcement
groove is essentially a chamfered edge between the
planar surfaces which will allow a settable material
to fill in the area and potentially create a stronger
wall, since more settling material will be added to
fill in the grove [sic] sections’ is not supported by
any evidence. If concrete is added to the channel
31, the small amount of concrete in the claimed
channel 31 will not provide any added strength to
the wall. The strength of the wall is created by the
continuous wall structure formed by the poured
concrete.

Furthermore, ‘the chamfered edges 9 of Kuelker’
do not ‘fulfill the same intended purpose as the
reinforcement gooves [sic].’ The claimed channel
31 (formed by two reinforcement grooves) does
not provide enhanced bonding between panels,
which is not even necessary since a continuous
wall is formed by the concrete. The channel 31
provides increased strength to the sheet metal
forms so that it can be built higher and make it
easier to apply a sealing compound between
adjacent side plates (panels). See page 16, lines 7-
12 of the present specification.

In contrast, the separate chamfered edges
(grooves) 9 of Kuelker serve the function of
increasing the strength of a ‘bond’ between the
solid panels of Kuelker, which does not strengthen
the panels of Kuelker. In the claimed invention,
the panels are not solid, but rather are sheet metal,
and the bonding occurs when the cement is poured
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between the sheet metal panels. Thus, the intended
purpose of the claimed grooves are very different
from the intended purpose of Kuelker’s grooves.
Reply Br. 2-3.
We are not persuaded by Appellant’s arguments because
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Additionally, the reason to modify the reference may often prompt a person
of ordinary skill in the art to do what the inventor has done, but for a
different purpose or to solve a different problem. It is not necessary that the
prior art suggest the combination to achieve the same advantage or result
discovered by an applicant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed.
Cir. 2006). As discussed supra, claim 28 does not require reinforcement
grooves to form a channel, but merely requires that at least one edge flange
of a side plate be separated from the major planar section of the side plate by
a reinforcement groove. In addition, Appellant acknowledges that Kuelker
discloses a groove. App. Br. 10-12. The Examiner has set forth specific
citations to the references relied upon (see Ans. 4-5), and has explained why
the skilled artisan would modify Nilsen with Kuelker (see Ans. 10).
Appellant has not provided any persuasive evidence of error regarding the
Examiner’s stated reasoning or conclusion of obviousness.
Appellant also argues that the subject invention provides unexpected
results over the cited prior art. App. Br. 12; Reply Br. 5. Specifically,
Appellant contends that
[t]he claimed invention provides the unexpected
advantages that side plates with the reinforcement
groove makes it possible to form higher wall
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structures in one single step without substantial
deformation of individual side plates.
Furthermore, it is also easier to apply a sealing
compound between adjacent side plates with the
claimed channel.
App. Br. 12 (citing Spec. 16, ll. 7-24).
[t]he unexpected advantages of increased strength
and higher wall capability disclosed in the
originally filed application are not mere
allegations. These structures were produced and
tested by Appellant. The accuracy of the increased
strength has been sworn to by the inventors in the
Declaration of record.1
Reply Br. 5.
We are not persuaded by Appellant’s contentions, because Appellant
has not come forth with any objective evidence of non-obviousness (i.e.,
secondary considerations). Specifically, Appellant has not provided any
objective evidence of unexpected results, commercial success, long-felt but
unsolved needs, or failure of others. In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998); U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1565
(Fed. Cir. 1997). An attorney’s arguments in a brief cannot take the place of
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). In addition,
Appellant has not set forth any arguments or objective evidence to show that
(1) modifying Nilsen to include the reinforcement groove of Kuelker, as
proposed by the Examiner, would have been beyond the technical grasp of a
person of ordinary skill in the art (See, e.g., KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007) (“When there is a design need or market pressure
to solve a problem and there are a finite number of identified, predictable

1 We could not find in the record any additional evidence submitted by
Appellant in the form of a Declaration filed under 37 C.F.R. § 1.132.
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solutions, a person of ordinary skill has good reason to pursue the known
options within his or her technical grasp”)); or (2) including a reinforcement
groove on the edge flange of a side plate provides unexpected results (Id.
(“If [pursuing known options] leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and common sense.”)).
Accordingly, for the foregoing reasons, the rejection of independent
claim 28 and of claims 29 and 30, which fall with claim 28, as unpatentable
over Nilsen and Kuelker is sustained.
Obviousness over Nilsen, Kuelker and Frati - Claims 19-22
The Examiner’s rejection of claims 19-22 over Nilsen, Kuelker and
Frati (see Ans. 7-9) is based on the same unsupported findings discussed
supra with respect to the disclosure of Kuelker. For the same reasons
discussed supra, we do not sustain the Examiner’s rejection of claims 19-22
as unpatentable over Nilsen, Kuelker and Frati.

DECISION
We REVERSE the decision of the Examiner as to claims 16-27.
We AFFIRM the decision of the Examiner as to claims 28-30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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