Ex Parte Salazar et alDownload PDFPatent Trial and Appeal BoardDec 16, 201311361715 (P.T.A.B. Dec. 16, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte LORENZO L. SALAZAR, JAY J. BOWMAN, and GREGORY S. RALPH ____________________ Appeal 2012-000398 Application 11/361,715 Technology Center 3600 ____________________ Before: CHARLES N. GREENHUT, BART A. GERSTENBLITH, and FRANCES L. IPPOLITO, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000398 Application 11/361,715 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 12 and 15-27. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a composite pre-formed building panel. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A composite building panel comprising: a central body, substantially parallelepipedic in shape, comprised of an expanded polymer matrix, having a first surface and an opposing second surface; and one or more reinforcing structural elements longitudinally extending across the central body having a first side portion embedded in the expanded polymer matrix, and a second side portion extending away from the first surface of the central body and one or more expansion holes located in the reinforcing structural element between the first side portion of the reinforcing structural element and the first surface of the central body; wherein the central body comprises the polymer matrix that expands through the expansion holes; and a space defined by the first surface of the central body and the second side portion of the reinforcing structural elements is adapted for accommodating utilities through said space, and wherein the one or more reinforcing structural elements comprise a stud selected from the group consisting of: C-type stud; CT-type stud; and CC-type stud. Appeal 2012-000398 Application 11/361,715 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Daniels Balinski Altizer Lanahan Tylman US 4,001,993 US 4,152,878 US 4,813,193 US 6,167,624 B1 US 6,233,892 B1 Jan. 11, 1977 May 8, 1979 Mar. 21, 1989 Jan. 2, 2001 May 22, 2001 REJECTIONS Claims 1-12, and 15-271 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 4. Claims 1, 4, 7-11, 15-20, and 27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tylman and Balinski. Ans. 4. Claims 2, 3, 5, 6, and 21-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tylman, Balinski and Lanahan. Ans. 11. Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Tylman, Balinski and Daniels. Ans. 15. Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tylman, Balinski and Altizer. Ans. 15. OPINION The Examiner indicated that the Amendment of January 24, 2011 would be entered for purposes of this appeal. Adv. Action Feb. 8, 2011; Reply Br. 3. Accordingly the claims no longer contain the language quoted by the Examiner as causing the claims to fail to comply with the second paragraph of 35 U.S.C. § 112. Ans. 4-5. Accordingly, the Examiner’s 1 Claims 13, 14, 28-32 are withdrawn. App. Br. 5. Appeal 2012-000398 Application 11/361,715 4 rejection under 35 U.S.C. § 112, second paragraph is summarily reversed as being based on a previous version of the claims. In each of the prior-art rejections involved in this appeal the Examiner interprets Tylman’s support members 14 as “reinforcing structural elements longitudinally extending across the central body.” Ans. 4. Appellants dispute this interpretation, arguing that Tylman’s support members extend laterally instead of longitudinally. The Examiner states: Longitudinal is understood to mean lengthwise. And since the support members run from one end of the body to another end of the body, then they could be considered to extend across the central body in a lengthwise or longitudinal direction. Ans. 19. However, Tylman characterizes the direction in which the support members are spaced, as opposed to the direction in which they extend, as being along the length of the panel system. Col. 2, ll. 41-42; figs. 5, 10. We recognize that the nomenclature used by the prior art is not necessarily controlling in an obviousness analysis. Application of Neugebauer, 330 F.2d 353, 356 (CCPA 1964). However, the Examiner has not apprised us of any reason to adopt a meaning of the term contrary to that used by the prior art. In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)(“Prior art references may be ‘indicative of what all those skilled in the art generally believe a certain term means ... [and] can often help to demonstrate how a disputed term is used by those skilled in the art.’”). We understand longitudinal or lengthwise to refer to the longer of the two dimensions of the general planar panels. While no specific dimensions appear to be disclosed by Tylman, the Examiner’s interpretation of “longitudinal” appears to conflict with Tylman’s figures (see, e.g., Fig. 1) and Tylman’s understanding of the Appeal 2012-000398 Application 11/361,715 5 “lengthwise” direction. Accordingly, we see no reason to sustain the Examiner’s conflicting interpretation. The Examiner further asserts that: the recitation “longitudinally extending” does not patentably distinguish the claimed invention from the prior art. Since the prior art structure is capable of performing the intended use, then it meets the claim. For example, the claim limitations are met when the panel of Tylman is simply rotated 90-degrees, whereby the lateral would become the longitudinal. Ans. 19. We do not see how the recited relationship of the reinforcing elements and central body can be considered “intended use.” While it is true that Tylman’s panels can be rotated and are designed to be used in different orientations, the rotation of Tylman’s proposed by the Examiner would not change the relative relationship between the central body and reinforcing elements. Even if the panel is rotated, the reinforcing elements would remain laterally extended across the panel’s foam material 16, which is interpreted by the Examiner as the recited “central body.” Since the Examiner does not offer any further evidence or reasoning to account for this deficiency we must reverse the Examiner’s rejections. DECISION The Examiner’s rejections are reversed. REVERSED tkl Copy with citationCopy as parenthetical citation