Ex Parte Skidmore et al

Board of Patent Appeals and Interferences

Dec 22, 2009

10632491 (B.P.A.I. Dec. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID A. SKIDMORE
and JAMES B. LINK
____________

Appeal 2008-005909
Application 10/632,491
Technology Center 1700
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Decided: December 22, 2009
____________

Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-5, 7-20, and 22-24. We have
jurisdiction pursuant to 35 U.S.C. § 6.

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Appellants’ claimed invention is directed to a method of forming a
masonry unit having a filler plug effect. Claim 1 is illustrative and
reproduced below:
1. A method for forming a masonry unit, said method comprising the
steps of:

raising a pallet to a bottom surface of a mold;

inserting a filler plug into the side of the mold between a partition
plate and a pallet;

dispensing mix into the mold;

compressing the mix with a shoe; and

responsive to the compressing, forming a filler plug effect in the
compressed mix whereby a masonry unit having a filler plug effect is
provided.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Stuckey 1,872,522 Aug. 16, 1932
Rasmussen 2,475,435 Jul. 5, 1949
Wittke 2,532,049 Nov. 28, 1950
Knipper 3,509,250 Apr. 28, 1970
Koyama 3,662,438 May 16, 1972
Whissell 4,802,836 Feb. 7, 1989
Battlle 5,358,214 Oct. 25, 1994
LaCroix 6,113,379 Sep. 5, 2000

Claims 1-5 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Whissell in view of Batlle. Claims 7, 8, and 9-20 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Whissell in
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view of Batlle, LaCroix, and Stuckey. Claims 9-20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Whissell in view of Batlle,
LaCroix, Stuckey, Knipper, Rasmussen, and Wittke. Claim 22 stands
rejected under 35 U.S.C. § 103(a) as being unpatentable over Whissell in
view of Batlle and Koyama. Claim 23 stands rejected under 35 U.S.C. §
103(a) as being unpatentable over Whissell in view of Batlle, Knipper,
Rasmussen, and Wittke. Claim 24 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Whissell in view of Batlle, LaCroix, Stuckey,
and Koyama.
The principal issue before us is:
Have Appellants shown that the Examiner erred by failing to set forth
a prima facie case of obviousness with respect to claims 1 and 24, the only
independent claims on appeal, and, consequently failed in presenting a prima
facie case with respect to all of the dependent claims on appeal?
We answer this question in the affirmative and we reverse the stated
obviousness rejections for substantially the reasons set forth by Appellants
in the Appeal Brief and Reply Brief.
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984). Here, the Examiner’s reliance on a
combination of Whissell and Batlle to underpin all of the stated obviousness
rejections is ill-founded. In this regard, the Examiner acknowledges that
Whissell does not teach the steps of inserting a filler plug into a side of the
mold between a pallet and partition plate (appealed claim 1) or the insertion
of multiple filler plugs as required by appealed claim 24 so as to provide a
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filler plug effect in the masonry unit(s) formed from the compressed
molding mix of Whissell (Ans. 3, 8, and 9).
To make up for this lack of teaching in Whissell with respect to the
here-claimed compression molding method, the Examiner turns first to
Batlle. According to the Examiner, “Batlle teaches inserting a filler plug
into the side of the mold between a partition plate and a pallet (Figs. 1-5)
and a filler plug effect in the compressed mix whereby a filler plug effect is
provided (Fig. 5 and 2:46-49)” (Ans. 4). The Examiner additionally refers to
another section of Batlle and further generally refers to Koyama for an
alleged teaching of simultaneous or automated action in rejecting claim 24
but does not explain where Koyama teaches or suggests inserting filler
plug(s) in the manner as Appellants’ claimed process requires (Ans. 9;
Batlle, col. 3, ll. 35-47; Koyama;, Fig. 3).1
Based on the aforementioned findings and with respect to independent
claim 1, the Examiner opines that:
[i]t would have been prima facie obvious to one of
ordinary skill in the art at the time of the invention to
incorporate the method of Batlle into that of Whissell for the
following reasons:
a) Battle teaches that stripping of the part from a mold
causes serious problems since the adherence thereof to the mold
itself and to the strips causes stresses to be formed in
precastings, causing deterioration thereof, which Batlle’s
method resolves.
b) Batlle suggests use in precastings, and Whissell’s
concrete blocks are considered to be precastings.
Ans. 4.

1 Additionally, the Examiner relies on LaCroix and Stuckey in the rejection
of independent claim 24 for allegedly teaching or suggesting other features
required by that claim, but not the filler plug insertion step.
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Furthermore and with regard to independent claim 24, the Examiner
relies on similar reasons that would have allegedly led an ordinary skilled
artisan into incorporating the method of Batlle into Whissell’s method and
further asserts that a skilled artisan would have incorporated Koyama’s
method into Whissell’s method because of “the obvious benefits of rapid and
automated operation” (Ans. 9).
However, the Examiner has not identified where a pallet is described
in Batlle, much less a step of inserting a filler plug between a pallet and a
partition plate (see generally Ans.). More particularly, the Examiner has not
furnished an adequate explanation as to why one of ordinary skill in the art
would have modified the compression molding process of Whissell that
employs a moveable pallet 11 or moveable vibrating table 13 as a bottom for
mold 7 in forming concrete blocks using compaction shoes 17 based on the
disparate teachings of Batlle concerning the use of a mold having a fixed
bottom 4 having spaced apart fillets 12 attached to the bottom and moveable
strips 16 to form a slot in molded precastings while avoiding undesired
stresses during mold stripping (see generally Ans., Whissell, and Batlle).
As explained by Appellants, Batlle is not related to a compression
molding process as is Whissell and the here-claimed method and would not
be suggestive of a modification to Whissell based on the differing problems
presented and addressed by Batlle with respect to a fixed bottom mold used
in a non-compression process (App. Br. 13-15, 23; Reply Br. 2-4).
Consequently, the Examiner has not established that the non-compression,
fixed-bottom molding method of Batlle instructs or suggests to one of
ordinary skill in the art a modification of Whissell’s method that would have
resulted in a process corresponding to the claim 1 method so as to fulfill the
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Examiner’s burden of presenting a prima facie case of obviousness, as urged
by Appellants (id.).
Nor has the Examiner convincingly explained how any of the other
prior art references as broadly aggregated and conclusively applied in
rejecting claim 24 and/or the additional references as applied in rejecting the
variously grouped dependent claims make up for the deficiency in supplying
an adequate teaching and/or suggestion that would have led an ordinarily
skilled artisan to modify the process of Whissell to include the here-claimed
filler plug insertion step as part of Whissell’s compression molding method.
In this regard, “rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness” being asserted. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007)). After all, rejections based on § 103(a) must rest on a factual
basis with these facts being interpreted without hindsight reconstruction of
the invention from the prior art. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967).
On this record, we reverse the Examiner’s obviousness rejections of
the appealed claims.

REVERSED

cam

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AUZVILLE JACKSON, JR.
8652 RIO GRANDE ROAD
RICHMOND, VA 23229