Ex Parte No Data

Board of Patent Appeals and Interferences

Jun 26, 2007

90006433 (B.P.A.I. Jun. 26, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte PHIL-INSUL CORPORATION
_______________

Appeal 2007-0694
Reexamination Control 90/006,433
Patent 5,428,933
Technology Center 3600
_______________

Decided: 26 June 2007

Before RICHARD E. SCHAFER, SALLY C. MEDLEY, and
MICHAEL P. TIERNEY, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. §§ 134 and 306
(2006) from the Examiner's final rejection of claims 1-30, which represent
all of the pending claims.
We affirm-in-part and enter a new grounds of rejection.

I. STATEMENT OF THE CASE
A request for reexamination was filed on October 31, 2002 by patent
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owner for reexamination of its U.S. Patent 5,428,933 (the ‘933 patent) issued
July 4, 1995 to Michel Philippe. The ‘933 patent is assigned to Phil-Insul
Corporation. (Appeal Br. at 6).
Patentee’s invention relates to insulating construction members
having top and bottom edges that contain at least two rows of alternating
projections and recesses. (‘933, Abstract). The projections and recesses
have substantially the same dimensions and the insulating construction
members can be interconnected in a bidirectional or reversible manner.
(Id.).
As explained in the background section of the ‘933 patent, foamed
plastic concrete forms and insulating block forms were known in the art.
(Id. at col. 1, ll. 15-31). The ‘933 patent identifies the prior art as describing
the use of interlocking means to permit the stacking of blocks one on top of
the other. (Id.). The ‘933 patent alleges however, that the prior art fails to
describe blocks that interconnect in a bi-directional and/or reversible
manner. (Id.). The ‘933 patent also alleges that bi-directional and/or
reversible blocks are less labor intensive and reduce waste as compared to
conventional blocks. (Id. at col. 1, ll. 34-48).
There are six (6) independent claims on appeal, claims 1, 11, 17, 18,
19 and 30, all of which are directed to insulating construction members and
blocks where the blocks can be interconnected with a like member in a bi-
directional or reversible manner. Claim 1 is generally representative of the
claims on appeal and reads as follows:
In an insulating construction member having top and bottom
edges and interconnecting means on said top and bottom edges,
the improvement wherein said interconnecting means comprise
at least two rows of alternating projections and recesses, said
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projections and recesses being of substantially the same
dimension, wherein said recess of one row is adjacent said
projection of the other row, and wherein said interconnecting
means on said top and bottom edges are offset arranged such
that said recess of one row on said top edge is opposed to said
projection of an opposite row of said bottom edge; whereby
said insulating construction member can be interconnected with
a like member in a bi-directional or reversible manner.

(Appeal Br., Claims Appdx.).
The Examiner has set forth four (4) prior art rejections as well as a
rejection under 35 U.S.C. §112, second paragraph definiteness and a
rejection under 35 U.S.C. §112, first paragraph for lack of enablement. The
rejections are as follows:
i) Claims 1-11, 13-19, 21-28 and 30 are rejected under 35 U.S.C.
§102(b) as anticipated by Guarriello, U.S. Patent 5,123,222
(“Guarriello”).
ii) Claim 12 is rejected under 35 U.S.C. §103(a) as obvious over
Guarriello in view of Horobin, U.S. Patent 4,894,969 (“Horobin
‘969”).
iii. Claim 20 is rejected under 35 U.S.C. §103(a) as obvious over
Guarriello in view of Horobin ‘969.
iv. Claim 29 is rejected under 35 U.S.C. §103(a) as obvious over
Guarriello in view of Horobin U.S. Patent 4,884,382 (“Horobin
‘382”).
v. Claim 30 is rejected under 35 U.S.C. §112, second paragraph,
as being indefinite for failing to point out and distinctly claim
the subject matter which applicant regards as his invention.
vi. Claim 30 is rejected under 35 U.S.C. §112, first paragraph,
because the specification does not enable the claimed subject
matter.

Patentee (Phil-Insul) generally contends that the prior art references
fail to describe insulated concrete forms having “projections and recesses
being of substantially the same dimension” and/or “at least two rows of
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alternating projections and recesses.” (Appeal Br., Table of Contents, p. 2,
VII(1)). In particular, Patentee contends that one of ordinary skill in the art
would have understood that “substantially the same dimension” means
essentially the same length but with allowances for minor variations that
typically arise due to variability in the manufacturing process. (Id. at 14 and
17). Patentee also states that the prior art shows a discrete pair of
projections in contrast to the claimed “two rows of alternating projections
and recesses.” (Id. at 32).
The Examiner found that substantially the same dimension means
“being largely but not wholly that which is specified.” (Ans. at 10). The
Examiner states that, as to the claimed dimensions, “[t]he claimed language
is simply lack of any degree of precision.” (Id. at 11). The Examiner further
states that Patentee has not defined any range for “minor variations” and that
the claims do not provide any “dimension to the size of the structures.” (Id.
at 10 and 12). The Examiner concluded that Guarriello describes concrete
forms having projections and recesses of substantially the same dimension.
The Examiner also found that Guarriello describes at least two rows of
alternating projections and recesses. (Id. at 13).
We affirm-in-part the Examiner’s rejections and enter a new grounds
of rejection.
ISSUE
The issue is whether Patentee has shown that the Examiner erred in
rejecting the claims. Specifically, the issue is:
Has Patentee demonstrated that the Examiner was incorrect in
finding that one of ordinary skill in the art would have
understood Guarriello to describe projections and recesses of
“substantially the same dimension”?
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Are Patentee’s claimed projections and recesses a predictable
use of prior art elements according to their established
function?

FINDINGS OF FACT
A. Patentee’s ‘933 Patent Specification and Claims
1) Patentee’s claims on appeal are directed to insulating construction
members and blocks having at least two rows of alternating projections and
recesses where the projections and recesses are substantially the same
dimensions. (Appeal Br., Independent claims 1, 11, 17, 18, 19 and 30).

2) The ‘933 patent acknowledges that it was known in the prior art to
interlock foamed concrete forms using tongue projections and groove
recesses. (‘933, col. 1, ll. 15-25).

3) The ‘933 patent states that its insulating bidirectional and reversible
blocks do not have to be interconnected in “only one right way.” (Id. at col.
3, ll. 46-53).

4) The ‘933 patent states that it is easier to interconnect blocks that are
capable of being connected in a bidirectional and/or reversible manner. (Id.
at col. 1, ll. 34-43 and col. 3, ll. 53-57).

5) ‘933 patent Figure 1, depicted below, depicts an insulating
construction block that is said to represent a preferred embodiment of the
‘933 patent:

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‘933 Figure 1 depicted above contains:
10 Side wall
12 Side wall
14 Interconnecting Web
16 Interconnecting Means
18 Projections
20 Recesses
22 Sealing Member

(Id. at col. 4, line 38 to col. 5, line 15).

6) The ‘933 patent states that the interconnecting web is preferably
formed from a suitable synthetic polymeric material. (Id. at col. 3, ll. 14-19)
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7) The ‘933 patent states that the web “may be a foamed polymer or
more generally, such webs are formed of a non-foamed material.” (Id. at
col. 3, ll. 25-27).

B. Declaration of Michel Philippe
8) During the reexamination proceeding, Patentee submitted a
declaration from Michel Philippe, the named inventor of the ‘933 patent.

9) Mr. Philippe testifies that he has worked in the concrete construction
industry for over twenty-five (25) years. (Philippe Dec., ¶ 2).

10) Mr. Philippe testifies that insulating blocks are generally made using
molds. (Philippe Dec., ¶ 2).

11) Mr. Philippe testifies that one of ordinary skill in the art understands
that there is an “inherent variability in the manufacturing process” for
forming insulating blocks, as described by the ‘933 patent. (Philippe Dec., ¶
10).

12) Mr. Philippe testifies that one of ordinary skill in the art would
understand that “substantially the same dimension,” as used in the claims on
appeal, would refer to “the same dimension with minor variations, or
intended to be the same dimension but permitting and including variation
implicit in manufacturing processes.” (Philippe Dec., ¶ 11).

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13) As to the implicit manufacturing process variation, Mr. Philippe
testifies that a block formed with foamed material will generally shrink by
about 1.0 % to about 2.0 % as it cures. (Philippe Dec., ¶ 4).

C. Prior Art
1. Guarriello, U.S. Patent 5,123,222
14) Guarriello is directed to a hollow foamed plastic form for concrete
that has a pair of opposed side walls where the upper and lower faces of the
side walls contain a series of elongated locking members. (Guarriello,
Abstract).

15) Guarriello teaches that construction using modular hollow plastic
units that are then filled with concrete has gained wide acceptance. (Id. at
col. 1, ll. 12-15).

16) Guarriello states that a “number of approaches” to modular hollow
plastic units have already been described, including the use of projections
and recesses on the upper and lower edges of the side walls for interlocking
several of the forms. (Id. at col. 1, ll. 17-18 and 23-28).

17) Guarriello Figure 8, depicted below, is a plastic form that permits
communication of concrete between two abutting forms:

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Guarriello Figure 8, depicted above, includes the following:
250, 252, 254, 256, 258, 260 Locking Members
262 Upper Face
264 Lower Face
266, 268 Side Walls
270, 272 Rectangular Rib Components
272’ Second Rib Component
274, 276 Rectangular Channels
278, 282 Channel Side Walls
280, 284 Channel End Walls
286 Transverse Slot
290, 292 Interior Separators
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(Id. at col. 4, line 67 to col. 6, ll. 3-5).

18) Guarriello’s blocks have opposed side walls, the interior and exterior
of which are substantially parallel to each other. (Guarriello, Fig. 8).

19) As with Patentee’s claimed sealing means, Guarriello’s upper face
surface 262 has a height above Guarriello’s recesses but below Guarriello’s
projections. (Id.).

20) Guarriello blocks contain an interior separator. (Guarriello, Fig. 8,
part 290, col. 5, ll. 64-68).

21) Guarriello Figure 9, depicted below, shows two forms abutting each
other:

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Guarriello Figure 9, depicted above, demonstrates that two forms may be
placed adjacent to each other via an interior separator 290 such that concrete
poured in one form is permitted to communicate to an adjacent form. (Id. at
col. 6, ll. 3-11).

22) The upper and lower faces of Guarriello’s side walls have locking
members in the form of projections and recesses. (Figs. 8 and 9).

23) Guarriello’s projections and recesses form two alternating rows. For
example, Guarriello 9 depicts alternating rows of projections (ribs) 270 and
alternating rows of recesses (channels) 276.

24) Guarriello’s projections and recesses are offset such that a recess on
one row on the top edge is opposed to a projection on the bottom edge.
(Guarriello, col. 4, l. 67 to col. 5, l. 9).

25) Guarriello’s blocks are formed such that they may be interconnected
in a bidirectional manner. (Guarriello, col. 5, ll. 9-14 and 45-48).

2. Horobin, U.S. Patent 4,894,969
26) Horobin ‘969 is directed to an insulating block form for use in the
construction of concrete wall structures. (Horobin, Abstract).

27) Horobin ‘969 states that its blocks are made from expandable styrene.
(Id.).

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28) Horobin ‘969 states that there is a need in the concrete block art for “a
new novel arrangement of concrete-block form that can become universally
accepted in the industry.” (Id. at col. 1, ll. 33-35).

29) Horobin ‘969 describes its concrete block form as follows:
Accordingly, there is defined a concrete-block form having
oppositely disposed side walls and transverse end walls. The
end walls include upper and lower insert members which are
removable when required. A plurality of transverse strut walls
are also integrally formed as part of the block structure and are
adapted to receive the upper and lower insert members when
the block form is divided into different lengths, as required.
Interlocking tongue-and-groove rails are formed along the
upper longitudinal edges of the side walls as well as the upper
edge of the upper insert member. The lower longitudinal edge
of each side panel includes a longitudinal groove that
corresponds to the upper interlocking tongue whereby the block
forms can be stacked and interlocked to define a wall structure.
The block forms are generally rectangular in shape wherein the
side walls and end walls define a body cavity which is divided
into a plurality of cells adapted to receive concrete therein.

(Id. at col. 2, ll. 9-27).

30) Horobin ‘969 states that an object of its invention is to provide a block
form that allows for interlocking stack forms without the need for mortar.
(Id. at col. 2, ll. 40-44).

31) Horobin ‘969 Figures 1 and 2, depicted below, provide a perspective
view and an end view of Horobin’s block form:

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Horobin ‘969 Figures 1 and 2, depicted above, include the following:
10 Block Form
12, 14 Side Walls
16, 18 End Walls
20, 22 Removable Inserts
24 Body Cavity
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26, 27 Transverse Strut Member
30, 32 Interlocking Means
34 Elongated Rail
36 Interlocking Rail Member
38 Lateral Locking Arm Member
40 Sockets
42 Corresponding Channel
45 Post Member
46 Corresponding Lateral Channel
84 Male Projecting Rib Member
86 Female Recessed Channel

(Id. at col. 3, ll. 16-55 and col. 4, ll. 40-43).

32) As shown in Figure 1 above, Horobin ‘969’s projections (lateral
locking arm members 38) and recesses (sockets 40) extend across the entire
length of its top and bottom edges. (Horobin ‘969, Fig. 1).

33) Horobin ‘969’s projections and recesses are substantially the same
dimensions where each has the same square shape. (Id.).

34) Horobin ‘969’s blocks have opposed side walls, the interior and
exterior of which are substantially parallel to each other. (Id.).

35) Horobin ‘969’s projections and recesses are offset such that a recess
on one row on a top edge is opposed to a projection on the bottom edge.
(Id.).

36) Horobin ‘969’s blocks contain an interior separator. (Horobin ‘969,
Fig. 3, part 82, col. 4, ll. 37-39).
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37) Horobin ‘969’s blocks contain removable end wall inserts 20 that
have projections 38 and recesses 40. (Horobin ‘969, Fig. 1 and col. 4, ll. 13-
28).

3. Horobin, U.S. Patent 4,884,382
38) Horobin ‘382 is directed to a modular concrete-block form that is
shaped in a rectangular configuration that is formed from side panels
adapted to receive strut members. (Horobin ‘382, Abstract).

39) As with Horobin ‘969, the concrete-block form of Horobin ‘382 has
square projections and recesses on its top and bottom edges. (Horobin ‘382,
Fig. 1).

40) Horobin ‘382 Figure 1, depicted below, provide a perspective view
and an end view of Horobin’s block form:

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Horobin ‘382 Figure 1, depicted above, includes the following:
10 Block Form
12, 14 Side Panels
16 End Wall
18 Strut Member
20, 22 Vertical Rib and Groove
24 Tongue and Grove Inner Surface
26 Spaced Apart Tongue Members
28 Interposed Grooves
30 Wedge-Shaped Projecting Members
34 Wedge-shaped Groove
38 Cutting Lines
40 Outer Surface
42 Longitudinal Rail Member
43 Laterally Protruding Arm Member
50 T-slot
51 Head Portion of T-shaped Slot

(Id. at col. 3, line 3 to col. 5, line 55).

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41) Horobin ‘382 teaches that its blocks are rigid, lightweight, modular
building-blocks made from styrene. (Id. at col. 2, ll. 16-21).

42) Horobin ‘382 teaches that the size of its blocks can be varied due to
the use of the separately formed strut members. (Id. at col. 2, ll. 23-31).

43) Horobin ‘382 teaches that its blocks can be interlocked as their upper
and lower edges possess interlocking projections and recesses (“rail
members” and “grooves”). (Id. at col. 2, ll. 43-50).

44) Horobin ‘382 teaches that its blocks are easy to assemble at a
construction site. (Id. at col. 2, ll. 58-61).

45) Additionally, Horobin ‘382 states that:
It is still a further object of the invention to provide a device of
this type that is relatively inexpensive to manufacture, is
lightweight for ease in shipping in its disassembled form, and
yet, when formed, provides a simple but rugged unit for use in
the building of walls and other types of construction where
concrete walls are employed.

(Id. at col. 2, ll. 62-68).

PRINCIPLES OF LAW
The fundamental principles of claim construction are well known and
have been discussed at length by the Federal Circuit. Several of the relevant
principles of claim construction are discussed below.
As explained by the Federal Circuit in ACTV, Inc. v. Walt Disney
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Co.:1
First and foremost, the analytical focus of claim construction
must begin, and remain centered, on the language of the claims
themselves. [citation omitted]. Because the claim language is
chosen by the patentee to “particularly point[ ] out and
distinctly claim[ ] the subject matter” of the invention, 35
U.S.C. §112, ¶ 2, the claim terms chosen by the patentee carry a
presumption that “they mean what they say and have the
ordinary meaning that would be attributed to those words by
persons skilled in the relevant art.” [citation omitted]. In the
absence of an express intent to impart a novel meaning to the
claim terms, the words are presumed to take on the ordinary and
customary meanings attributed to them by those of ordinary
skill in the art.

Id. at 1088, 68 USPQ2d at 1521. Thus, the starting point for claim
interpretation is from the vantage point of the person of ordinary skill in the
art. This principle was reiterated in Phillips v. AWH Corp.2 as follows
We have made clear, moreover, that the ordinary and customary
meaning of a claim term is the meaning that the term would
have to a person of ordinary skill in the art in question at the
time of the invention, i.e., as of the effective filing date of the
patent application. [Citations omitted].

The inquiry into how a person of ordinary skill in the art
understands a claim term provides an objective baseline from
which to begin claim interpretation. [Citation omitted]. That
starting point is based on the well-settled understanding that
inventors are typically persons skilled in the field of the
invention and that patents are addressed to and intended to be
read by others of skill in the pertinent art.

1 346 F.3d 1082, 68 USPQ2d 1516 (Fed. Cir. 2003).
2 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc).
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Id. at 1313, 75 USPQ2d at 1326.
Consistent with the principle that the claim construction inquiry
begins with the words of the claims, the “[c]laims of a patent may only be
limited to a preferred embodiment by the express declaration of the
patentee.” Playtex Products, Inc. v. Procter & Gamble Co., 400 F.3d 901,
907–08, 73 USPQ2d 2010, 2015 (Fed. Cir. 2005); Amgen Inc. v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1325, 65 USPQ2d 1385, 1392-93
(Fed. Cir. 2003) (“Because the claims are best understood in light of the
specification of which they are a part, however, courts must take extreme
care when ascertaining the proper scope of the claims, lest they
simultaneously import into the claims limitations that were unintended by
the patentee.”). This is especially true for applicants as an applicant can
resolve any ambiguity by amending the claim to contain the proposed
limitations from the specification.
Of course, the United States Patent & Trademark Office is tasked with
interpreting claims as broadly as their terms reasonably allow. In re Zletz,
893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). Indeed, Zletz
held that the Board erred in reading unwritten limitations into claims on
appeal and stated that it was incorrect for the Board to construe claims
narrowly, such as done in courts confronting issues of infringement and
validity.
Anticipation under 35 U.S.C. § 102 is a question of fact. Brown v.
3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001). A claim
is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described in a single prior art reference.
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
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USPQ2d 1051, 1053 (Fed. Cir. 1987).
Additionally, an invention is not patentable under 35 U.S.C. § 103 if it
is obvious. KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1745-46, 82 USPQ2d
1385, 1400 (2007). The facts underlying an obviousness inquiry include:
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). In addressing the
findings of fact, “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR at 1739, 82 USQP2d at 1395. As explained in KSR:
If a person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability. For the same
reason, 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. Sakraida and Anderson's-Black Rock are
illustrative — a court must ask whether the improvement is
more than the predictable use of prior art elements according to
their established functions.

KSR at 1740, 82 USPQ2d at 1396. As recognized in KSR, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR at 1742, 82 USPQ2d at 1397.
On appeal, Patentee bears the burden of showing that the Examiner
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has not established a legally sufficient basis for combining the teachings of
the prior art. Patentee may sustain its burden by showing that where the
Examiner relies on a combination of disclosures, the Examiner failed to
provide sufficient evidence to show that one having ordinary skill in the art
would have done what Applicant did. United States v. Adams, 383 U.S. 39
(1966); In re Fridolph, 134 F.2d 414, 416, 57 USPQ 122, 124 (CCPA 1943)
(does the prior art suggest doing the thing which the appellant has done?)

ANALYSIS
We begin our analysis of the rejections on appeal by construing the
disputed claim term “substantially the same dimension.”

A. Claim Construction
Patentee’s independent claims recite that the projections and recesses
are substantially the same dimension. (Appeal Br., Claims Appendix, claims
1, 11, 17, 18, 19 and 30). Patentee and the Examiner agree that the term
“substantially” permits some variation. Patentee and the Examiner disagree
however, on the amount of variation permitted.
Patentee states that the term “substantially” is used consistently
throughout the specification in its ordinary and common manner. (Appeal
Br. at 12). Patentee, citing a declaration from the inventor, states that the
term “substantially” refers to minor variations that are inherent in the
manufacturing process and material. (Appeal Br. at 12-13).
The inventor’s, Mr. Philippe’s, declaration states that he has worked
in the concrete construction industry for over twenty-five (25) years and that
he is familiar with the insulating concrete form industry. (Philippe Dec.,
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¶ 2). Mr. Philippe testifies that one of ordinary skill in the art understands
that there is an “inherent variability in the manufacturing process” for
forming insulating blocks, such as that described by the ‘933 patent. (Id. at
¶ 10). Mr. Philippe testifies that one of ordinary skill in the art would have
understood that the claimed “substantially the same dimension” refers to:
[T]he same dimension with minor variations, or intended to be
the same dimension but permitting and including variation
implicit in manufacturing processes.

(Id. at ¶ 11). Mr. Philippe testifies that, for a foamed block manufacturing
process, the form will generally shrink by about 1.0 to 2.0 % as it cures. (Id.
at ¶ 4).
The Examiner considered Mr. Philippe’s declaration but did not find it
persuasive. (Answer at 12). The Examiner states that Patentee has failed to
define a range for “minor variations” and that the language “minor
variations” is not in the claims on appeal. (Answer, p. 10). Instead, the
Examiner states that the term “substantially” is defined in the 10th Edition of
Webster’s Dictionary as “being largely but not wholly that which is
specified.” (Id.).
In determining the broadest reasonable interpretation of the term
substantially, we have evaluated and weighed Mr. Philippe’s declaration as
well as the Webster Dictionary definition provided by the Examiner. In
evaluating the evidence, we note that there is no magic formula or rigid
algorithm for determining the amount of weight to be given a particular
general source dictionary, such as Webster’s. Phillips at 1324, 75 USPQ2d
at 1334-1335. The principle focus of claim construction however, is on
understanding how a person of ordinary skill in the art would understand the
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claim term. Id. at 1323, 75 USPQ2d at 1334.
Mr. Philippe has extensive experience in the concrete construction
industry and declares that his testimony is taken from the vantage point of a
person of ordinary skill in the art. Further, Mr. Philippe’s “minor variation”
definition is reasonable on its face and is not inconsistent with Webster’s
definition. Based upon the evidence presented, we credit Mr. Philippe’s
testimony and conclude that the broadest reasonable interpretation for the
claim term “substantially” is minor variations, such as those implicit in
manufacturing processes. Additionally, we credit Mr. Philippe’s testimony
that “substantially the same dimensions” for foamed material forms would
be understood by a person of ordinary skill in the art to be about 1 to 2%
variation in dimension.
Patentee also argues that the term “substantially the same dimensions”
does not encompass “intentional” differences in dimensions. (Appeal Br. at
18). Patentee fails to provide a legal basis for such a subjective approach to
claim interpretation. Specifically, Patentee fails to direct our attention to a
legal basis for alleging that a prior art article that is identical in every way to
a claimed invention fails to anticipate the claimed invention unless the prior
art article was intentionally designed to be the same as that claimed. The
point is moot however, as the use of projections and recesses having the
same dimensions was known in the concrete block form art. (See, e.g.,
Horobin ‘969, Fig. 1, Parts 38 and 40).

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B. Prior Art Rejections
1. The Rejection of Claims 1-11, 13-19, 21-28 and 30
under 35 U.S.C. §102(b) as anticipated by
Guarriello.

Generally, claims 1, 11, 17, 18, 19 and 30 are independent claims and
directed to insulating construction block forms and members. Each
independent claim requires the presence of an interconnecting means that
comprises at least two rows of alternating projections and recesses where the
projections and recesses are substantially the same dimension. Each
independent claim also requires that the insulating forms are capable of
being interconnected with a like member in a bi-directional or reversible
manner.
Guarriello describes forms for poured concrete having locking
members. Guarriello’s forms interconnect via projections and recesses.
Guarriello however, refers to its projections and recess as ribs and channels.
(Guarriello, col. 4, l. 67 to col. 5, l. 44).
The Examiner and Patentee agree that Guarriello does not teach the
use of projections and recesses having the same dimensions. Patentee and
the Examiner disagree however, as to whether Guarriello teaches projections
and recesses of substantially the same dimension.
To aid the Board’s understanding of the differences in dimensions,
Patentee provided the following figure, which depicts the ribs and channels
of Guarriello Figure 8:

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(Appeal Br. at 26).3 The above depiction includes a comparison of rib 270
(rectangular) and rib 272 (rectangular with square discontinuity) and a
comparison of channel 274 (rectangular) and channel 276 (L-shape) as well
as comparing the ribs to the channels.
Patentee states that the above figure demonstrates that Guarriello’s

3 The Board notes that Patentee’s Brief refers to various colors for the figure.
The official record however, does not contain a colorized version and is
literally a black and white record.
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projections and recesses are not substantially the same dimensions. (Appeal
Br. at 26-28, Reply Br. at 4-5). The Examiner states that Guarriello’s
projections (270, 272) and recesses (274, 276) are substantially the same
dimension. The Examiner basis this conclusion on Webster’s definition of
the term substantially as “being largely but not wholly that which is
specified.” (Answer, p. 10).
We have credited Mr. Philippe’s testimony that one of ordinary skill
in the art would understand that the terminology substantially the same
dimensions refers to variations on the order of those implicit in the
manufacturing process. Mr. Philippe has testified that for blocks formed
with foamed material the size variation ranges from about 1 to 2%.
(Philippe Dec., ¶ 4).
Guarriello’s foamed blocks contain projections and recesses that
apparently vary by significantly more than 2%. Guarriello does state that,
for Figures 8 and 9, each of its channel and rib components will generally
have a dimension corresponding to about a third of the maximum width of
the upper and lower face. (Guarriello, col. 5, ll. 59-61). Yet, Guarriello
teaches that at least one transverse slot 286 is defined in its second rib
component 272, the transverse slot being a recess. (Id. at col. 5, ll. 45-48).
Further, Guarriello states that it is desirable that second rib 272 will have a
length of L + 2W where L is the length of rib component 270 and W is the
maximum width of first rib component. (Guarriello, col. 5, ll. 21-25).
Indeed, as depicted in Guarriello Figure 8, projection 270 is approximately
20% larger than projection 272. (See Guarriello Figures 8 and 9 and Appeal
Br. Figure 5 reproduced above). Similarly, Guarriello’s recesses 274 and
276 of Figures 8 and 9 are also significantly larger than projections 270 and
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272. We conclude that Guarriello does not describe insulating forms having
projections and recesses having substantially the same dimensions. On the
record before us, it follows that the Examiner erred in rejecting claims 1-11,
13-19, 21-28 and 30 as anticipated under 35 U.S.C. §102(b) by Guarriello.
Horobin ‘969 teaches that insulating blocks having projections and
recesses of the same dimensions were known in the art to provide a suitable
means of interlocking the blocks without the need for mortar or binder.
(Horobin ‘969, col. 2, ll. 40-44). Accordingly, a new ground of rejection
based upon obviousness is made below.

2. New Grounds of Rejection as to Claims 1-11, 13-19, 21-
28 as Obvious over Guarriello and Horobin ‘969 and/or
Horobin ‘382

Patentee’s claims are directed to insulating blocks and members that
have specifically claimed projections and recesses on their surfaces to allow
the blocks and members to be interlocked in a bi-directional or reversible
manner. As discussed below, the individual elements recited in Patentee’s
claims represent a combination of familiar elements according to known
methods that yields predictable results.
Patentee’s claimed insulating block and member elements were
known in the prior art. Guarriello and Horobin describe insulating blocks
for use in the construction of concrete walls. (Guarriello and Horobin ‘969
and ‘382, Abstracts). Guarriello states that its blocks are made of a foam
material and Horobin states that its blocks are made from expandable
styrene. (Guarriello Abstract, Horobin ‘969 Abstract, Horobin ‘382, col. 2,
ll. 16-21.). Guarriello and Horobin’s blocks have opposed side walls, the
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interior and exterior of which are substantially parallel to each other.
(Guarriello, Fig. 8 and Horobin ‘969 and ‘382, Fig. 1). The upper and lower
faces of Guarriello and Horobin’s side walls have locking members in the
form of projections and recesses. (Id.). Guarriello and Horobin’s
projections and recesses are offset such that a recess on one row on the top
edge is opposed to a projection on the bottom edge. (Guarriello, col. 4, l. 67
to col. 5, l. 9, Horobin ‘969 and ‘382, Fig. 1). Additionally, Guarriello and
Horobin’s blocks contain an interior separator. (Guarriello, Fig. 8, part 290,
col. 5, ll. 64-68 and Horobin ‘969 Fig. 3, part 82, col. 4, ll. 37-39, Horobin
‘382, Fig. 1, part 18).
Guarriello’s blocks are formed such that they may be interconnected
in a bidirectional manner. (Guarriello, col. 5, ll. 9-14 and 45-48).
Guarriello’s projections and recesses form two alternating rows. For
example, Guarriello Figs. 8 and 9 depict alternating rows of projections
(ribs) 270 and 372 and alternating rows of recesses (channels) 274 and 276.
As with Patentee’s claimed sealing means, Guarriello’s upper face surface
262 has a height above Guarriello’s recesses but below Guarriello’s
projections.
Horobin’s projections and recesses extend across the entire length of
its top and bottom edges. (Horobin ‘969 and ‘382, Fig. 1). The projections
and recesses are of substantially the same dimensions and each has the same
square shape. (Id.).
One of ordinary skill in the art would understand from Guarriello that
insulating blocks having alternating rows of projections and recesses can be
stacked together to form a wall. Horobin ‘969 and ‘382 inform one of
ordinary skill in the art that insulating blocks having square projections and
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recesses having the same dimension over the entire length of the block’s side
walls can be stacked together with the ‘969 teaching that the blocks can be
stacked without the need for mortar. Guarriello informs the person of
ordinary skill in the art that insulating blocks can be stacked in transverse
alignment (bidirectional), which allows for a greater flexibility in designing
the structure being built. Further, one skilled in the art would understand
that Guarriello’s transverse alignment requires the use of channels that can
accommodate projections that have been rotated 90o. A person of ordinary
skill in the art knows that a square projection rotated 90o will fit in a square
recess of substantially the same dimension.
A central question in analyzing obviousness is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR at 1740, 82 USPQ2d at 1396. As
evident from this record, Patentee’s building blocks represent a combination
of familiar building block elements, e.g., square projections and recesses and
alternating rows of projections and recesses with bi-directionality. These
known building block elements have been combined for their known
purpose to achieve a predictable result, i.e., the formation of a bi-directional
building block with square projections and recesses of substantially the same
dimension. Patentee has combined known elements in a predictable fashion
and did not produce a new or different function for the prior art elements.
Specifically, one of ordinary skill in the art desiring an insulating block that
is capable of being stacked in a bidirectional manner without the need for
mortar that is lightweight, but rigid, in structure, would have been guided to
employ Horobin’s square projections and recesses with Guarriello’s
alternating rows of projections and recesses. Accordingly, we conclude that
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Patentee’s claims are obvious in light of the prior art. Anderson's-Black
Rock v. Pavement Co., 396 U.S. 57, 61, 163 USPQ 673, 674 (1960)
(combination of old elements that added nothing to the nature and quality of
the product was obvious).
Patentee presented numerous arguments as to how Guarriello’s
insulating blocks differ from that of the claimed subject matter. We address
these arguments in the context of the Board’s obviousness rejection.

i. Patentee Contends that Guarriello does not Describe
Projections and Recesses having Substantially the Same
Dimensions

The difference between Patentee’s projections and those of Guarriello
is that Guarriello desirably employs an L-shaped recess to achieve its bi-
directional interconnectivity. Guarriello’s L-shaped recess has a dimension
of L + 2W where L and W are the length and width of the projection.
Patentee is correct that Guarriello, in achieving its bi-directionality, does not
describe projections and recesses of substantially the same dimensions.
Horobin teaches that the use of square projections and recesses of the
same size was known in the insulating block art. Indeed, Horobin ‘969
describes its square projections and recesses as allowing for lightweight, but
rigid, structures that can be stacked without the need for mortar or any other
binder. (Horobin ‘969, col. 2, ll. 33-44).
While Guarriello does not teach the use of square pegs and holes, the
function and use of square pegs and holes is predictable and their use on
insulating forms does not alter that fact. Specifically, one of ordinary skill in
the art knows that a square peg can fit in a square hole that is of the same
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dimension as the peg. Further, one of ordinary skill in the art knows that a
square peg can be rotated 90o, 180 o and 270 o and still fit in the square hole.
We find that one of ordinary skill in the art desiring a lightweight, but rigid,
structure that is formed with blocks capable of being stacked in a
bidirectional manner without the need for mortar, would have been guided to
employ Horobin’s square projections and recesses with Guarriello’s
alternating rows of projections and recesses.

ii. Patentee Contends that Guarriello Does not Teach “At
least Two Rows of Alternating Projections and Recesses”

Patentee states that Guarriello does not show “rows of alternating
projections and recesses.” (Appeal Br. at 32). Patentee states that the word
“row” means continuous or a succession without a break or gap. (Appeal
Br. at 34). Patentee cites the following dictionary definition as support for
its position:
Row n. 1. A series of objects placed next to each other usually
in a straight line. 2. A succession without a break or gap in
time: won the title for three years in a row. 3. A continuous
line of buildings along a street.

(Appeal Br. at 34, citing, The American Heritage Dictionary, Second
College Edition (1985)). Patentee identifies Guarriello’s insulating forms as
having a gap or discontinuity between the ribs and channels of each locking
member. (Id.). Patentee concludes that Guarriello describes discrete pairs
of projections and recesses as opposed to a row.
The United States Patent & Trademark Office is tasked with providing
claims their broadest reasonable interpretation. Zletz, 893 F.2d at 321, 13
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USPQ2d at 1322. The first dictionary definition of “row,” series of objects
placed next to each other, is reasonable on its face, and certainly as
reasonable as the second and third definitions relied upon by Patentee. That
the row objects are placed next to each other does not exclude the presence
of an additional structure such as a space.
Patentee also argues that the term “alternating” requires continuity.
(Appeal Br. at 35). Patentee states that Guarriello describes “repeating”
pairs as opposed to alternating projections and recesses. Patentee’s
contention fails to distinguish the prior art. Guarriello’s projections and
recesses form an alternating pattern along the top and bottom surfaces of the
insulating form.
Guarriello describes and depicts a series of projections and recesses
that are placed next to each other, albeit with a space between them.
(Guarriello Figs. 8 and 9, the space being upper face 262). We find that
Guarriello describes and depicts at least two rows of alternating projections
and recesses.

iii. Patentee Contends that Guarriello Does not Teach
a “Raised Sealing Member” that is “Between” or
Adjacent” the Rows of Alternating Projections and
Recesses

Patentee claims 4 and 17 require an “intermediate raised sealing
member” and claims 5 and 18 require a “raised sealing member.” Patentee
contends that Guarriello does not teach a “raised” sealing member and to the
extent it does, the raised member is not adjacent or between the rows of
projections and recesses. (Appeal Br. at 35-36). According to Patentee,
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Guarriello upper face 262 cannot be a raised sealing member as it is the
reference plane from which Guarriello’s recesses and projections are
defined.
Patentee claims 4, 5, 17 and 18 do not specify the position of the
raised sealing member other than it is raised. Thus, the claims on their face
do not require that the raised sealing member be above or below the
reference plane from which the recesses and projections are defined.
Further, Patentee fails to direct our attention to where the specification
explicitly requires the raised sealing member to have a height distinct from
the reference plane. Giving the term “raised sealing member” its broadest
reasonable interpretation, we conclude that Patentee’s claimed raised sealing
member does not exclude a height equal to that of the reference plane from
which recesses and projections are defined. We find that Guarriello’s upper
face 262 represents a raised sealing member that seals two forms together
when stacked one on top of another. Additionally, to the extent that Patentee
is correct and that the reference plane is excluded, we find that the use of
tongue projections (“raised sealing members”) for interlocking insulating
forms are well known in the art and their use as an interlocking member
would have been obvious to one of ordinary skill in the art. (See, e.g.,
Guarriello, Background of the Invention, col. 1, ll. 29-34).
Patentee states that claims 4 and 17 require that the raised sealing
member be positioned “between” the rows of projections and recesses.
Patentee contends that Guarriello fails to teach such an arrangement.
(Appeal Br. at 36). As mentioned above, Patentee’s raised sealing member
for insulating forms was known to those skilled in the insulating form art.
One skilled in the art would know how to place a raised sealing member on
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an insulating form to ensure that the stacked forms are properly interlocked
and sealed. Patentee does not allege, nor are we aware of, any criticality in
placing the raised sealing member “between” the rows. We conclude that it
would have been obvious to one of ordinary skill in the art to place the
raised sealing member in any suitable location so as to allow ease of
interconnection between blocks as well as structural strength for the walls
formed by the insulating forms.

iv. Patentee Contends that Guarriello Does Not Teach
Two Parallel Side Members that have a
“Substantially Parallel Interior Surface”

Independent claim 11, and the claims that depend from it, require two
parallel side members that have a substantially parallel interior surface.
Patentee contends that Guarriello describes what is known in the art as a
modified post-and-beam construction. (Appeal Br. at 37). Patentee states
that such construction employs forms with cavities that, when filled with
concrete, define vertical posts. (Id.). Patentee states that Guarriello Figure 1
depicts cavities that are generally rectangular with rounded corners. (Id.).
The interior surface of Guarriello’s side wall is substantially parallel
to the exterior surface of the side wall. (See Guarriello Fig. 9). Patentee has
failed to provide sufficient evidence otherwise. Additionally, to the extent
that Patentee’s contention is correct, we note that both Horobin teach and
depict the use of insulating forms having parallel interior surfaces. As
taught by Horobin ‘969, one skilled in the art would have employed such
parallel surfaces to achieve a lightweight but rigid structure that “is adapted
to withstand the internal force created by the concrete when it is poured into
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the body cavity thereof.” (See, e.g., Horobin ‘969, Fig. 1 and col. 2, ll. 34-
39).

v. Patentee Contends that Guarriello Does Not Teach
“Connecting Members” that “Extend Along the
Entire Length” of the Top and Bottom Edges of
the Construction Member

Patentee claims 7 and 13 require that the interconnecting means, i.e.,
projections and recesses, extend along the entire length top and bottom
edges of the construction member. Patentee argues that Guarriello fails to
describe such a structure. (Appeal Br. at 38 and 40-41).
According to Patentee, there are “clear and unmistakable
discontinuities or gaps between locking member on each cavity of the
Guarriello ‘222 form.” (Appeal Br. at 39). Patentee concludes that the
language “extend along the entire length” excludes the discontinuities
present in Guarriello’s form. We disagree.
The Board is tasked with providing claims their broadest reasonable
interpretation. The plain language “extend across the entire length” does not
exclude the presence of spaces as part of the interconnecting means as it
spans the length of the form. Further, Patentee’s specification does not
define the language “extend across the entire length” as excluding spaces
between its specific interconnecting means of projections and recesses as
they span the length of the form. Based, upon the plain language of the
claims, and interpreted in light of the specification, we conclude that the
language “extend across the entire length” does not exclude the presence of
spaces between projections and recesses. We find that Guarriello teaches
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interconnecting means of projections and recesses that “extend across the
entire length” of the top and bottom edges of the insulating form.
Additionally, both Horobin patents describe and depict insulating
block forms that have projections and recesses that extend across the length
of the form without any intervening spaces or discontinuities. Horobin ‘969
describes its forms as lightweight but rigid in structure and is able to
withstand the internal forces created by concrete when it is poured into the
cavity thereof. Horobin ‘969 also teaches that its projection and recess
locking mechanism allows forms to be stacked without the need for mortar
or binder interposed between the forms. One skilled in the art would have
recognized the benefits of Horobin’s insulating form and would have been
guided to employ projections and recesses that extend across the entire
length of an insulating form.

vi. Patentee Contends that Guarriello Fails to Describe
“Rectangular” Projections and Recesses

Patentee claim 8 requires that the projections and recesses be “of a
rectangular configuration.” Patentee contends that Guarriello requires the
presence of an L shaped channel. (Appeal Br. at 39-40). Patentee concludes
that Guarriello’s L-shaped channel is not a rectangle within the meaning of
its claims.
Patentee’s point is moot as both Horobin patents clearly describes and
depicts insulating blocks having square (rectangular) projections and
recesses where each projection and recess is of substantially the same size.
Horobin ‘969 teaches that its insulating blocks can be stacked without the
use of mortar or binder and are lightweight in structure but are able to
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withstand internal forces created by concrete poured into the cavity thereof.
One of ordinary skill in the art desiring an insulating block that is capable of
being stacked in a bidirectional manner without the need for mortar that is
lightweight, but rigid, in structure, would have been guided to employ
Horobin’s square projections and recesses with Guarriello’s alternating rows
of projections and recesses.

vii. Patentee Contends that Guarriello Does Not
Disclose Joining Means that Comprises a “Web”

Independent claims 11 and 19 require a joining means interconnecting
the side members. Claims 15 and 23 depend from claims 11 and 19,
respectively, and require that the joining means be a web. Claims 16 and 24
also depends from claims 11 and 19, respectively, and requires that the
joining means comprises at least one web interconnecting the side members
and that the web comprise a synthetic material.
Patentee states that its web is formed of a non-foamed material.
Patentee directs the Board’s attention to column 3, lines 20 to 24 of their
specification. (Appeal Br. at 41). This passage from the specification states
that the web can be formed from any suitable material but preferably are
from a synthetic polymeric material. Patentee, citing column 3, lines 26-27,
states that “[t]he specification further states that ‘such webs are formed of
non-foamed material.” (Id.). From these passages, Patentee concludes that:
Thus, the recitation of a web, in light of [our] specification, is
limited to a non-foamed material and is structurally distinct
from the separators shown in Guarriello ‘222.

(Appeal Br. at 42 and again relied upon at Appeal Br. 47).
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We find it odd that Patentee directs our attention to column 3, lines
20-24 and lines 26-27 of its specification but overlooks line 25. The
sentence starting at line 25 reads as follows:
The polymer may be foamed polymer, or more generally, such
webs are formed of non-foamed material.

(Philippe, ‘933 Specification, col. 3, ll. 25-27, emphasis added). We decline
to read Patentee’s preferred “non-foamed” web embodiment into Patentee’s
claims given the specification’s explicit statement that the webs may be
formed from foamed material.
Patentee also contends that:
The term “web” is therefore not only a different material but is
also a separate piece that joins the side panels when the web is
assembled.

(Appeal Br. at 42). Patentee’s specification states that the web “may” be an
adjustable web and does not require that the web be a separate piece.
(Philippe, ‘933 Specification, col. 3, ll. 31-33). As such, we do not read
Patentee’s claimed web as limited to a separate piece of material. We do not
credit Patentee’s alleged differences between Guarriello’s interior separator
formed of foamed polymer and Patentee’s broadly claimed “web,” which
also may be formed from foamed polymer.

viii. Patentee Contends that Guarriello Fails to Disclose
the Combination of (a) Projections and Recesses
that are “Continuous and Contiguous”, (b)
Rectangular Projections and Recesses and (c) Side
Panels with “Planar” Inner Surfaces

Independent claim 19, and claims 20-29 which depend upon claim 19,
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requires rectangular projections and recesses that are continuous and
contiguous with each other. Additionally, the claims require that the side
walls have substantially planar outer and inner surfaces. Dependent claim
21 further requires that the contiguous projections and recesses extend along
the entire length of the top and bottom edges of the side members.
Patentee contends that Guarriello fails to teach rectangular projections
and recesses that are contiguous with each other. (Appeal Br. at 43-45).
Patentee also argues that Guarriello fails to teach the contiguous projections
and recesses over the entire length of the top and bottom of the side
members. (Appeal Br. at 46).
Patentee’s contentions are moot in light of Horobin ‘969 and ‘382,
which describe and depict rectangular projections and recesses that are
contiguous with each other over the entire length of the side walls.
(Horobin, Fig. 1). As discussed above, Horobin ‘969 teaches that its blocks
with square projections and recesses that are continuous and contiguous with
each other over the entire top and bottom of the side walls allows for
stacking blocks without mortar and allows for a lightweight but rigid
structure. One of ordinary skill in the art seeking the benefits of Guarriello’s
bi-directionality and the ability to stack lightweight, but rigid, blocks
without mortar would have been guided to combine the projections and
recesses of Horobin with the bidirectional features of Guarriello, e.g.,
alternating rows of projections and recesses adapted to allow for a projection
to be rotated 90o yet still fit in a recess.
Patentee contends that Guarriello describes a modified post-and-beam
construction as opposed to an ordinary flat wall construction. (Br. at 45).
Patentee states that “[i]t is simply inconceivable that the Examiner would
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take the position that the inner surfaces of the side members shown in
Guarriello ’222 are ‘planar.’” (Appeal Br. at 46).
Guarriello Figure 9 depicts an insulating block having two side walls
and interior separators (290, 292) surrounding a cavity. The exterior and
interior side walls are depicted as straight lines. As such, one of ordinary
skill in the art would understand Guarriello’s insulating block to have
substantially planar interior and exterior surfaces. Additionally, we note that
Horobin ‘969 Fig. 1 and Horobin ‘382 Fig. 1 depict planar interior and
exterior surfaces on their side walls (12, 14).

ix. Patentee Contends that Guarriello Does Not Teach
Projections and Recesses of Substantially the Same
Shape

Claims 25-28 require that the claimed projections and recesses be of
“substantially the same shape.”
Patentee contends that Guarriello’s ribs and channels are not all of the
same shape. (Appeal Br. 48). Patentee states that Guarriello’s depicts an L
shaped channel to allow for its bi-directionality. (Id.).
We agree that Guarriello does not describe projections and recesses
having substantially the same shape. The Horobin patents however, describe
and depict square projections and recesses all of the same shape. Horobin
‘969 teaches that insulating blocks with square projections and recesses are
stackable without the need for mortar and providing a lightweight, but rigid,
structure. As discussed above, one of ordinary skill in the art desiring the
versatility of Guarriello’s bi-directional blocks with the stackability and
lightweight, but rigid, structure of Horobin would have been guided to form
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an insulating block having square projections and recesses.

x. Patentee Contends that Guarriello Does not
Disclose “Continuous” Projections and Recesses

Independent claim 30 requires at least two rows of alternating
rectangular projections and recesses. Claim 30 requires that the projections
and recesses each comprise:
[O]pposed walls parallel to the longitudinal direction and
opposed walls perpendicular to the longitudinal direction, each
row comprising more than one projection and more than one
recess, with such alternating projections and recesses
continuously repeated along each of the top and bottom edges
and with the opposed walls perpendicular to the longitudinal
direction of at least one projection also defining walls of two
adjacent recesses, wherein said recess of one row is adjacent
said projection of the other row, said projections and recesses
having substantially the same dimensions. . .

(Amendment filed November 16, 2004). 4
Patentee contends that Guarriello’s L shaped channel is distinct from
Patentee’s claimed opposed walls that are either parallel or perpendicular to
the axial direction. (Br. at 49). Patentee also states that Guarriello fails to
describe opposed walls that are perpendicular to the axial direction that
define walls of two adjacent recesses. (Id.). Patentee’s contentions are moot
in light of the new grounds of rejection.

4 Note, the Claims Appendix attached to Patentee’s Appeal Brief contains an
incorrect recitation of claim 30. For example, claim 30 on appeal requires a
“web interconnecting said side members” but the Claims Appendix recites
“joining means interconnecting said side members.” Further, claim 30 on
appeal refers to longitudinal direction whereas the Claims Appendix claim
30 refers to “axial direction.”
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Both Horobin patents teach that square projections and recesses allow
the interlocking of insulating blocks to form concrete structures such as
walls and the like. (Horobin ‘949, Fig. 1 and col. 1, ll. 8-15 and Horobin
‘382 Fig. 1, 43-50). Horobin ‘949 teaches that its arrangement of insulating
block form allows the stacking of blocks without the need for mortar and
provides a lightweight, but rigid, structure. (Horobin ‘949 at col. 1, ll. 33-35
and col. 2, ll. 33-44). Guarriello describes insulating blocks that have
alternating rows of projections and recesses where the blocks can be stacked
in a bidirectional manner. One of ordinary skill in the art desiring an
insulating block that is capable of being stacked in a bidirectional manner
without the need for mortar that is lightweight, but rigid, in structure, would
have been guided to employ Horobin’s square projections and recesses with
Guarriello’s alternating rows of projections and recesses.

xi. Summary of New Grounds of Rejection
We have considered Patentee’s arguments to the extent they apply to
the new grounds of rejection. We find however, that a person of ordinary
skill in the art would have had reason to combine the teachings of Guarriello
and Horobin and arrived at Patentee’s claimed subject matter. Essentially,
Patentee has done no more than combine known elements for their known
purpose to yield predictable results. We conclude that claims 1-11, 13-19,
21-28 and 30 are obvious over the combined teachings of Guarriello and
Horobin.

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2. The Rejection of Claims 12 and 20 as Obvious over
Guarriello in view of Horobin ‘969

Claim 12 depends from independent claim 11, which is directed to an
insulating block having projections and recesses of substantially the same
dimensions on the top and bottom edges of the side members. Claim 12
requires that the insulating block include removable end pieces that have
projections and side members having grooves for receiving the projections
of the end pieces. Similarly, claim 20 depends from independent claim 19
and also requires the presence of removable end pieces.
The Examiner found that Guarriello shows all the claimed limitation
except for the removable end pieces having projections slidable into the
grooves of side members. (Answer, p. 8-9). The Examiner further found
that Horobin ‘969 teaches end pieces that mate with side members to form a
wall structure. (Id. at 9). The Examiner concluded that one of ordinary skill
in the art would have modified Guarriello to include the removable end
pieces of Horobin ‘969 to increase the versatility of Guarriello’s blocks by
allowing the attachment of additional structures onto the side members. (Id.
at 9 and 17).
Patentee states that Guarriello does not show a removable end cavity
and that Guarriello solved the problem a different way. (Appeal Br. at 51).
From this Patentee concludes that Guarriello “teaches away from the idea of
a removable end member.” (Id.).
A reference “teaches 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, 31 USPQ2d
1130, 1131 (Fed. Cir. 1994).
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Guarriello describes the use of interior separators to define a plurality
of discrete cavities within its insulating block wall. (Guarriello, col. 2,
ll. 49-52). Guarriello teaches that removing a portion of the interior
separator creates an opening that permits the passage of uncured concrete
between two or more vertical cavities. (Id. at col. 2, ll. 63-66). Taking the
teachings of Guarriello as a whole, we find that Guarriello does not teach
away from “removable” end wall portions that, when removed, permit the
passage of concrete between two or more vertical cavities.
Patentee states that the rejection is improper as there is no teaching or
suggestion to combine the end member of Horobin with Guarriello. We
disagree.
As mentioned above, Guarriello describes removing a portion of its
interior separators to allow concrete to pass between cavities. Horobin ‘969
describes insulating blocks where concrete is poured into the cavity of the
block form. (Horobin ‘969, col. 1, ll. 8-15). Horobin ‘969 describes
transverse removable inserts connected to transverse end walls via tongue
and groove members. (Id. at col. 4, ll. 13-28). The end walls create vertical
posts when the ends of Horobin’s blocks are interlocked together. (Id. at
col. 4, ll. 40-43).
One of ordinary skill in the art would have understood that Horobin’s
removable end wall portions allow the skilled artisan to control the passage
of concrete between the interior cavities of an insulating block wall. We
conclude that one of ordinary skill in the art would have been guided to
employ Horobin’s removable wall inserts connected to transverse end walls
via tongue and groove projections and recesses in Guarriello’s insulating
blocks as Horobin’s inserts provide an easy design for controlling the
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passage of concrete from one vertical cavity to another. We conclude that
Patentee has failed to demonstrate that the Examiner erred in rejecting
claims 12 and 20 as obvious over Guarriello and Horobin.

3. The Rejection of Claim 29 as Obvious over Guarriello in
view of Horobin ‘382

Patentee claim 29 depends upon claim 15, which in turn depends from
independent claim 11. Independent claim 11 is directed to an insulating
block having projections and recesses on the top and bottom edges of
parallel side members and a joining means interconnecting the side
members. Dependent claim 15 states that the joining means is a web and
dependent claim 29 states that the web is formed separately from the side
panels.
The Examiner found that Guarriello teaches all the limitations of
claim 29 except for the web being formed separately from the side panels.
The Examiner further found that Horobin ‘382 describes a web member that
interconnects side panels and is formed separately from the side panels.
(Appeal Br. at 9). Accordingly, the Examiner found that the difference
between Patentee claim 29 and the prior art is whether it would have been
obvious to one of ordinary skill in the art to substitute Horobin’s “web” that
was formed separate from the side panels for that of Guarriello’s. Regarding
this difference, the Examiner stated that it would have been obvious to one
of ordinary skill in the art to modify Guarriello and form the side panels
separately to allow for the easy formation of the panels and webs and
facilitate transportation of the structures. (Id. at 10).
At the outset, one of ordinary skill in the art would have understood
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that Patentee’s web, Horobin’s end walls and struts, and Guarriello’s
separators all define a structure that connects their respective side panels.
Patentee does not dispute the Examiner’s finding that Horobin describes
webs connecting side walls together, the webs being formed separately from
the side walls. Patentee also does not dispute the Examiner’s finding that
one skilled in the art would have understood that separately formed side
panels allow for easy formation of the panels and webs and facilitate
transportation.
Patentee contends that the separators in Guarriello define vertical
cavities and separate one vertical post from another and that Horobin’s webs
do not function to space one vertical cavity from another. (Appeal Br. at
52). Horobin ‘382 teaches that its insulating block side walls may be
connected using struts (18) and end walls (16) that are inserted into slots on
the interior of the side walls. (Horobin ‘382, Fig. 1 and col. 5, ll. 65-68).
One skilled in the art would have recognized that, when connected end to
end, Horobin’s transverse end walls (16) form vertical posts that separate
one cavity from another.
Patentee contends that the Examiner has failed to identify where
Guarriello taught, disclosed or suggested that its separators could be
replaced with webs. (Appeal Br. at 52). Obviousness however, is not
limited to the express teachings of a single prior art reference but is based
upon what the combined teachings of the prior art suggest to the person of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981)(“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly
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suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”).
As to Patentee claim 29, the Examiner has demonstrated that Patentee
has substituted one known element for another to obtain a predictable result.
In particular, the Examiner has established that Horobin teaches one skilled
in the art how to make and use webs formed separately from the side panels.
The Examiner has also established that the use of Horobin’s web in the
insulating form of Guarriello involves a simple substitution of one known
element, a web formed separately from the side panels, for another known
element, a web not formed separately from the side panels. The Examiner
further established that one of ordinary skill in the art would have
understood that the substitution of Horobin’s web for that of Guarriello
would improve upon the teachings of Guarriello, namely that it would
facilitate transportation of the insulating blocks. Patentee has failed to
demonstrate that these findings were made in error. We conclude that
Patentee has failed to demonstrate that the Examiner erred in rejecting claim
29 over the cited Guarriello and Horobin.

C. The Rejections Under 35 U.S.C. §112
1. Rejection of Claim 30 as Indefinite
Independent claim 30 is directed to an insulating construction block
having rectangular projections and recesses. The projections and recesses
comprise opposed walls parallel to the longitudinal direction and opposed
walls perpendicular to the longitudinal direction. The opposed walls
perpendicular to the longitudinal direction of at least one projection define
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the walls of two adjacent recesses.
The Examiner states that:
The claimed language of each projection and each recess
comprising opposed walls . . . . at least one projection also
defining walls of two adjacent recesses is confusing. Applicant
initially claims the recesses having walls, and then later claims
the walls do not belong to the recesses, but to the projections.
The claim is thus indefinite.

(Answer, pages 3-4). Patentee disagrees. (Appeal Br. at 50 and Reply Br.
at 8-9).
A claim is indefinite if, when read in light of the specification, it does
not reasonably apprize those skilled in the art of the scope of the invention.
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342, 65
USPQ2d 1385, 1406 (Fed. Cir. 2003). Specifically, if the scope of the
invention sought to be patented cannot be determined from the language of
the claims, the specification or the teachings of the prior art with a
reasonable degree of certainty, a rejection of the claims under 35 U.S.C. §
112, second paragraph is appropriate. In re Wiggins, 488 F.2d 538, 541, 179
USPQ 421, 423 (CCPA 1973).
The Examiner fails to demonstrate that one skilled in the art would
fail to understand that the walls of a projection may be used to define the
walls of a recess or vice versa. We reverse the Examiner’s rejection of claim
30 as indefinite as the Examiner has failed to demonstrate that one skilled in
the art would fail to be apprized of the scope claimed by Patentee.

2. Rejection of Claim 30 as Lacking Enablement
Both the Final Rejection and the Examiner’s Answer state that claim
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30 is rejected as lacking enablement. According to the Examiner:
The specification does not enable any person skilled in the art
to which it pertains, or with which it is most nearly connected,
to make the invention commensurate in scope with these
claims. The limitation of “each projection and each recess
comprising opposed walls parallel to the longitudinal direction
and opposed walls perpendicular to the longitudinal direction . .
.” is not supported by the specification. The specification only
shows the projections having the opposed walls, not the
recesses.

(Final Rejection at 2, Answer at 3).
Patentee’s Appeal Brief does not identify this rejection as a ground of
rejection to be reviewed on appeal. (Appeal Br. at 10). Further, the Appeal
Brief contains a section heading “The Section 112 Rejection,” but provides
only a discussion of the Examiner’s rejection of claim 30 as indefinite under
the second paragraph of Section 112. (Appeal Br. at 49-50).
Since we have already determined that claim 30 is unpatentable as
obvious over Guarriello and Horobin ‘969 and/or ‘382, we need not and will
not consider the rejection of claim 30 based on 35 U.S.C. 112, ¶1, lack of
enablement.5 Accordingly, the rejection of claim 30 under 35 U.S.C. 112, ¶1
as lacking enablement is moot.

CONCLUSION
Patentee has failed to demonstrate that the Examiner erred in rejecting
claims 12 and 20 as obvious over the Guarriello and Horobin ‘969.

5 Scaltech, Inc. v. Retec/Tetra, L.L.C., 269 F.3d 1321, 1327 n.2, 60
USPQ2d 1687, 1690 n.2 (Fed. Cir. 2001) (not reaching best mode after
affirming an on-sale bar).
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Similarly, Patentee has failed to demonstrate that the Examiner erred in
rejecting claim 29 as obvious over Guarriello and Horobin ‘382. We
AFFIRM the Examiner's final rejection of claims 12, 20 and 29.
Patentee has demonstrated that the Examiner erred in rejecting claims
1-11, 13-19, 21-28 and 30 as anticipated by Guarriello. We REVERSE the
Examiner’s final rejection of these claims as anticipated.
We find that claims 1-11, 13-19, 21-28 and 30 do no more than
combine known elements for their known purpose to yield predictable
results. Based upon the facts presented, new grounds of rejection are
entered as to claims 1-11, 13-19, 21-28 and 30 under 35 U.S.C. §103(a).
Patentee has demonstrated that the Examiner erred in rejecting claim
30 as indefinite. We REVERSE the Examiner’s final rejection of claim 30
as indefinite.
As we have already determined that claim 30 is unpatentable based
upon prior art, the Examiner’s final rejection of claim 30 as unpatentable for
lack of enablement is MOOT.
This decision contains new grounds of rejection pursuant to 37 CFR
§ 41.50(b) (2006). 37 CFR § 41.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
ORDERED that since our rationale differs from the rationale of the
examiner, our affirmance is designated as a new rejection. 37 CFR
§ 41.50(b) (2006).
FURTHER ORDERED that our decision is not a final agency action.

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FURTHER ORDERED that within two (2) months from that date of
our decision appellant may further prosecute the application on appeal by
exercising one of the two following options:
1. Request that prosecution be reopened by submitting an
amendment or evidence or both. 37 CFR §41.50(b)(1) (2006).
2. Request rehearing on the record presently before the Board.
37 CFR § 41.50(b)(2) (2006).l
FURTHER ORDERED that the time for taking action under either 37
CFR §§ 41.50(b)(1) or 41.50 (b)(2) is not extendable under the provisions of
37 CFR § 1.136(a) (2006).

AFFIRMED-IN-PART - 37 CFR § 41.50(b)

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