Ex Parte Pierzynski et al

Patent Trial and Appeal Board

Feb 21, 2013

11668134 (P.T.A.B. Feb. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TIMOTHY M. PIERZYNSKI and ERIK SKOV
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Appeal 2011-000155
Application 11/668,134
Technology Center 3600
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Before JAMES P. CALVE, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000155
Application 11/668,134

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 2, 4-6, 8, 12 and 17-19. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM and ENTER A NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).

THE INVENTION
Appellants’ invention places a three-dimensional pattern on a building
panel. Spec. 1, paras. [0001] and [0003]. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A plastic material panel comprising:
a primary pattern molded into the plastic panel having a
plurality of raised areas and a plurality of recessed areas said
raised areas and said recessed areas defining said primary
pattern in relief and being arranged such that said raised areas
and said recessed areas are visible when the panel is mounted
on a roof;
a first secondary pattern molded into the plastic panel
comprising a first configuration of raised areas and a second
secondary pattern molded into the plastic panel comprising a
second configuration of raised areas where said first
configuration is different than said second configuration, the
first secondary pattern located in selected ones of said plurality
of raised or recessed areas and the second secondary pattern
located in other selected ones of said plurality of raised or
recessed areas different than the selected ones of said plurality
of raised or recessed areas.
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EVIDENCE RELIED UPON AND THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Felton
Morse
US 6,983,571
US 2006/0026919 A1
Jan. 10, 2006
Feb. 9, 2006

The following rejections are before us for review:
1. Claims 1, 2, 4-6, 8, 17 and 19 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Morse.1
2. Claim 12 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morse and Felton.
3. Claim 18 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morse.
OPINION
Anticipation by Morse
Claims 1, 17 and 19
Appellants challenge the Examiner’s anticipation rejection of
independent claims 1, 17 and 19, respectively, on essentially the same,
single ground. Appellants do not deny that Morse discloses a textured
building panel with a primary pattern having raised and recessed areas.
However, they assert that Morse’s panel has its first “secondary pattern” in a
raised area of the primary pattern and has its second “secondary pattern” in a
recessed area of the primary pattern. App. Br. 5. Appellants argue that
claims 1, 17 and 19, respectively, do not read on such an embodiment and
that, therefore, Morse does not anticipate.

1 Claim 3 is listed in the Claims Appendix as Cancelled.
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The Examiner responds that Morse teaches two secondary patterns
within a primary pattern as claimed. Ans. 4-6, 8.
The first secondary pattern is the texture of the stones and the
second secondary pattern is the texture of the mortar. Each one
of these secondary patterns would have raised and recessed
areas as an inherent characteristic of being a texture. If these
patterns did not have raised areas, the pattern would be a
smooth surface. These two textures are not the same because
they represent different materials. The first secondary pattern
(stone texture) is placed on the raised sections of the primary
pattern (stones) and the second secondary pattern (mortar
texture) is placed on the recessed sections of the primary pattern
(mortar lines). Each of the secondary patterns are a texture and
are not necessarily tied to a specific location in the primary
pattern.
Ans 8.
In reply, Appellants argue that Morse’s recessed area is smooth, thus
lacking a secondary pattern, and, even if Morse’s recessed area is patterned:
the panel of Morse would not anticipate Applicants’ claims
because one secondary pattern would occur only in the raised
areas of Morse, and the other only in the recessed areas.
Reply 2. Appellants assert that claims 1, 17 and 19 require the differing
secondary patterns to occur in the raised areas of the primary pattern. Id.
We begin with Appellants’ argument that Morse’s recessed, mortar
area is smooth and, therefore, lacks a secondary pattern. Appellants raise
this argument, for the first time, in their Reply Brief. Appellants were on
notice that this was a potential issue in the Final Rejection. See Final
Rejection 7.2 Nevertheless, it was not raised in the Appeal Brief and no
reason is given for failing to raise the issue earlier and, consequently, the

2 “The second secondary pattern is the texture of the grout . . . grout is
not perfectly smooth like glass.” Id.
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argument is untimely and we decline to consider it. See Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010).3
Next, we consider Appellants’ argument that two different secondary
patterns must reside in the raised areas of the primary pattern. The plain and
literal reading of claim 1 allows that the first secondary pattern can reside in
a raised area “or” a recessed area of the primary pattern. App. Br., Clms.
App’x. The claim language further provides that the second secondary
pattern may be located in “other” either raised “or” recessed areas of the
primary pattern. Id. The claim language does not preclude one secondary
pattern from residing in a raised area of the primary pattern and a second
secondary pattern from residing in a recessed area of the primary pattern.
Accordingly, we sustain the Examiner’s rejection of claim 1.
Furthermore, with respect to claims 17 and 19, Appellants raised essentially
the same issue and argument as in claim 1. The analysis is essentially the
same as in claim 1 and we reach the same result, sustaining the rejection of
claims 17 and 19.
Claims 2, 4-6 and 8
Claims 2, 4-6 and 8 all depend directly from claim 1. In traversing
these dependent claims, Appellants raise no new arguments beyond what
was previously argued with respect to claim 1. Therefore, claims 2, 4-6 and
8 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

3 “The reply brief is not an opportunity to make arguments that could
have been made during prosecution, but were not. Nor is the reply brief an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”
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Rejection of Claim 12 Over Morse and Felton
Claim 12 depend directly from claim 1. In traversing the rejection of
claim 12, Appellants raise no new arguments beyond what was previously
argued with respect to claim 1. Therefore, claim 12 falls with claim 1. See
37 C.F.R. § 41.37(c)(1)(vii).
Rejection of Claim 18 Over Morse
Claim 18 is an independent claim. In traversing the rejection of claim
18, Appellants raise no new arguments beyond what was previously argued
with respect to claim 1. Therefore, claim 18 falls with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii).
New Ground of Rejection
Anticipation of Claims 1, 2, 4-6, 8 and 19 by Morse
As discussed more fully above, Appellants’ sole argument to traverse
the anticipation rejection was that Morse lacked two different secondary
patterns on raised portions of the primary pattern. Although we disagree
with Appellants and agree with the Examiner on this point, we nevertheless
find that claims 1, 2, 4-6, 8 and 19 are anticipated for an additional reason
not articulated in the Final Rejection or Answer and, accordingly, we hereby
designate a new ground of rejection, pursuant to our authority under 37
C.F.R. § 41.50(b).
Morse discloses a building panel where the primary pattern simulates
the appearance of stone siding. Morse, para [0008]. The imitation stone is
made by shaping a mold cavity with a surface that follows a topography of
one or more natural stones. Id., para. [0009]. That primary pattern
comprises a plurality of raised areas simulating the shapes of a plurality of
stones. See Figure 1. A person of ordinary skill in the art reading the
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specification of Morse, as a whole, would understand that each of the
individual, simulated stones in the primary pattern is capable of bearing a
unique, three-dimensional surface texture or pattern in order to simulate the
variety of natural stone shapes and textures exhibited in nature. See, e.g.,
Morse, para [0009] (“An imitation stone material is formed in the mold
cavity to replicate the topography of each natural stone on the imitation
stone material . . .”). This variation in topography among the plurality of
simulated stones (i.e., no two stones are alike) in the raised area of the
primary pattern in Morse satisfies the limitation in claim 1 directed to first
and second secondary patterns located in selected ones of the plurality of
raised or recessed areas.
In addition to the foregoing, we adopt the Examiner’s findings with
respect to claims 1, 2, 4-6, 8 and 19 set forth on pages 4-6 of the Answer,
such that all limitations of such claims are met by Morse. For the foregoing
reasons, we designate a new ground of rejection under 35 U.S.C. § 102(b) of
claims 1, 2, 4-6, 8 and 19 as anticipated by Morse.
DECISION
The Examiner’s decision to reject claims 1, 2, 4-6, 8, 17 and 19 under
35 U.S.C. § 102(b) as being anticipated by Morse is affirmed.
The Examiner’s decision to reject claim 12 under 35 U.S.C. § 103(a)
as being unpatentable over Morse and Felton is affirmed.
The Examiner’s decision to reject claim 18 under 35 U.S.C. § 103(a)
as being unpatentable over Morse is affirmed.
We designate a NEW GROUND OF REJECTION of claims 1, 2, 4-6,
8 and 19 under 35 U.S.C. § 102(b) as anticipated by Morse.
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FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejections,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejections are
overcome. If Appellants elect prosecution before the Examiner and this
does not result in allowance of the application, abandonment or a second
appeal, this case should be returned to the Patent Trial and Appeal Board for
final action on the affirmed rejections, including any timely request for
rehearing thereof.
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; 37 C.F.R. § 41.50(b)
Appeal 2011-000155
Application 11/668,134

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