Ex Parte Shockey et alDownload PDFPatent Trials and Appeals BoardSep 17, 201312139377 - (D) (P.T.A.B. Sep. 17, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/139,377 06/13/2008 Brian Shockey 19958.001US01 1307 67559 7590 09/17/2013 Parsons Behle & Latimer Attn: Docketing 960 Broadway Ave., Suite 250 Boise, ID 83706 EXAMINER PAINTER, BRANON C ART UNIT PAPER NUMBER 3635 MAIL DATE DELIVERY MODE 09/17/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte BRIAN SHOCKEY, DUANE ARMIJO, and CHRISTOPHER SHOCKEY ________________ Appeal 2011-009709 Application 12/139,377 Technology Center 3600 ________________ Before BIBHU R. MOHANTY, MICHAEL W. KIM, and JAMES A. TARTAL, Administrative Patent Judges. TARTAL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009709 Application 12/139,377 2 STATEMENT OF THE CASE1 Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-7 and 21-33. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). An oral hearing was held on September 12, 2013. We AFFIRM. Appellants’ claimed invention relates generally to the molding and finish of insulating panels and Insulated Concrete Forms (ICFs). Spec., para. [0001]. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. An insulating concrete form comprising: an exterior outer surface; an interior outer surface, substantially parallel to the exterior outer surface; and a cavity between the exterior outer surface and the interior outer surface, the cavity being configured to receive a volume of a concrete mixture, wherein the exterior outer surface of the insulating concrete form has an applied faux finish pattern comprising a plurality of pattern features having a feature depth of at least about 1/8 inch, the feature depth selected such that the insulating concrete form is capable of showing the pattern features in a finished structure, and wherein the applied pattern can be reproduced on a plurality of surfaces in a repeatable manner. 1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,” filed Dec. 6, 2010) and Reply Brief (“Reply Br.,” filed May 16, 2011), and the Examiner’s Answer (“Ans.,” mailed Mar. 15, 2011). Appeal 2011-009709 Application 12/139,377 3 The Examiner relies upon the following evidence: Cymbala US 5,896,714 Apr. 27, 1999 Dunn US 2004/0045238 A1 Mar. 11, 2004 Claims 1-4, 6, 7, 21-23, and 25-33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cymbala. Claims 5 and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cymbala and Dunn. FINDINGS OF FACT We find that the findings of fact which appear in the Analysis below are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). ANALYSIS Obviousness based on Cymbala Claims 1-4, 6, 7, 21-23, and 25-33 We are not persuaded by Appellants’ argument that Cymbala fails to disclose certain elements of the claimed invention. Independent claim 1 recites “pattern features” with a “depth selected such that the insulating concrete form is capable of showing the pattern features in a finished structure.” Appellants argue that the Examiner misconstrued “finished structure” to include each concrete form block, rather than a completed building. See Reply Br. 3. Presumably, Appellants are contending that Cymbala fails to disclose a “finished structure” as a completed building. The claim, however, does not positively recite, and therefore does not require, a “finished structure.” The claim requires only that the concrete Appeal 2011-009709 Application 12/139,377 4 form “is capable” of showing features in a finished structure. The concrete form disclosed by Cymbala is capable of showing features in the concrete form, itself. We agree with the Examiner that under the broadest reasonable meaning a concrete form, alone, may be a “finished structure,” the Cymbala concrete form also is capable of being a part of a completed building. Thus, the Cymbala concrete form is inherently capable of showing features in a completed building or “finished structure,” as claimed. Appellants argue that Cymbala fails to disclose a “faux finish,” as claimed, on the grounds that the term “inherently includes a specific intended use—namely, intentional visibility in a completed building.” See Reply Br. 4-6. The Specification does not specifically define the term “faux finish,” but it includes figures which presumably depict a “faux finish,” as claimed, including Figure 2H which shows a series of vertical lines on a surface. Similarly, Cymbala (Fig. 7) also discloses a concrete form with a series of vertical lines on a surface. Thus the Examiner’s determination that Cymbala discloses the claimed structural feature, a “faux finish,” was reasonable. Moreover, it is well established that “[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); see also In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (the recitation of a new intended use for an old product without distinguishing structure or functional features does not make a claim to that old product patentable). Appellants’ intent that the claimed invention be visible in a completed building, alone, is insufficient to overcome the Appeal 2011-009709 Application 12/139,377 5 obviousness rejection based on Cymbala’s disclosure of the structure claimed. Appellants argue that Cymbala fails to disclose “pattern features having a feature depth of at least 1/8 inch.” See Reply Br. 6. Appellants’ argument is not commensurate with the scope of the claim, which only requires a feature depth of “at least about 1/8 inch.” Similarly, Appellants’ argument that Cymbala fails to disclose grooves or flutes is not commensurate with the scope of the claims, as the claims do not require grooves or flutes. See App. Br. 13. We further agree with the Examiner that the indicia lines, embossing or bas relief disclosed by Cymbala (col. 6, ll. 29-36) discloses a feature having a depth. The claim only requires “pattern features having a feature depth,” and even if an embossment provides for a raised surface, areas between adjacent embossment would have a feature depth as claimed. Additionally, Appellants’ argument that the depth of the feature was not recognized in Cymbala as a result-effective variable, and therefore could not be determined through routine experimentation, is misplaced. The Examiner recognized that Cymbala does not expressly disclose 1/8 inch as the feature depth, but instead maintained that it would have been an obvious matter of design choice. See Ans. 5. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Appellants have not directed us to a disclosure of either the critical nature of the claimed feature depth or any unexpected result. Indeed, rather than suggest that the feature depth is a critical element, the Specification (para. [0036]) states that it may Appeal 2011-009709 Application 12/139,377 6 range from “about 1/8 inch to about 2 inches,” and that “[t]hose of ordinary skill in the art will understand that the feature depth may vary from the stated values.” Accordingly, we agree with the Examiner that Appellants have not shown that the invention, as claimed, performs any differently from the prior art device merely by reciting a feature depth of “at least about 1/8 inch.” Appellants’ argument that Cymbala teaches away from the claimed invention also is not persuasive. See App. Br. 15-16. In particular, Appellants argue that because Cymbala discloses covering the concrete form with finishing materials, it teaches away from the claimed invention. See App. Br. 16. Appellants have not convincingly shown that the prior art reference criticizes, discredits, or otherwise discourages the solution claimed in the application. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed in the ... application.”). Moreover, as discussed above, Appellants have not shown any structural difference between Cymbala’s concrete form, and the claimed invention. Thus, the Examiner has not proposed a modification of Cymbala from which Appellants could argue Cymbala teaches away. The only element absent from Cymbala is the express claimed depth of features, and Appellants do not suggest that Cymbala teaches away from the claimed feature depth. Appellants offer no separate argument with respect to the dependent claims. See App. Br. 16-17. Accordingly, we sustain the Examiner’s Appeal 2011-009709 Application 12/139,377 7 rejection of claims 1-4, 6, 7, 21-23, and 25-33 under 35 U.S.C. § 103(a) as being unpatentable over Cymbala. Obviousness based on Cymbala and Dunn Claims 5 and 24 Appellants argue that claims 5 and 24 are patentable for the same reasons Appellants raise with respect to claims 1 and 21. We are not persuaded by Appellants’ arguments for the same reasons discussed above with respect to claims 1 and 21. Accordingly, we sustain the Examiner’s rejection of claims 5 and 24 under 35 U.S.C. § 103(a) as being unpatentable over Cymbala and Dunn. DECISION We AFFIRM the decision of the Examiner to reject claims 1-7 and 21-33. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh Copy with citationCopy as parenthetical citation