Ex Parte Stavenjord

Patent Trial and Appeal Board

Jun 6, 2013

10675548 (P.T.A.B. Jun. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WALTER KARL STAVENJORD
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Appeal 2011-005320
Application 10/675,548
Technology Center 3600
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Before: WILLIAM V. SAINDON, JILL D. HILL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005320
Application 10/675,548

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to casing system. Claims 1, 12 and 15 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A casing system, comprising:
a generally flat first casing piece adapted to
cover gaps between framing members of structural
openings and vertical walls in buildings, said
casing piece having an outer face, an inner face, a
pair of linear side edges and a pair of linear end
edges, at least one of said linear side edges and at
least one of said linear end edges being provided
with a continuous decorative profile; and
a second casing piece also adapted to cover
gaps between framing members of structural
openings and vertical walls in buildings, said
second casing piece having an outer face, an inner
face, a pair of linear side edges and a pair of linear
end edges, at least one of said linear end edges
being provided with a continuous decorative
profile;
whereby said first casing piece is adapted to
be joined to said second casing piece by
engagement of said continuous decorative profile
of said first casing piece with said reverse image of
said decorative profile of said second casing piece.

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Application 10/675,548

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Pugh
Gascho
US 888,530
US 4,787,185
May 26, 1908
Nov. 29, 1988

REJECTIONS
Appellants seek our review of the following rejections:
Claim 1-15 stands rejected under 35 U.S.C. §102(b) as being
anticipated by Pugh. Ans. 3.
Claims 1-5, 7, 8 and 10 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Gascho. Ans. 4.
Claim 16 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Pugh. Ans. 5.

ANALYSIS
Anticipation Rejection
Claims 1-15, Pugh
Appellant argues claims 1-6 and 9-15 as a group, and provides
separate arguments for claims 7 and 8. App. Br. 6-10. We select claim 1 as
representative, treating claims 2-6 and 9-15 as standing or falling with
representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 1 is directed to a casing system having a first casing piece and a
second casing piece, each adapted to cover gaps between framing members
of structural openings and vertical walls in buildings, and the first casing
piece is adapted to be joined to the second casing piece.
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The Examiner found that Pugh discloses a first casing piece (20 left)
having at least one linear side edge (where 32, 24, 22 and 32 locate) and at
least one linear end edge (where 31, 21,33 locate) provided with a
continuous decorative profile, and a second casing piece (20 right) having at
least one linear side edge (where 32, 24, 22 and 32 locate) and at least one
linear end edge (where 31, 21 and 33 locate) such that a reverse image of the
continuous decorative profile and the first casing piece is adapted to be
joined to the second casing piece by engagement of the continuous
decorative profile of the first casing piece with the reverse image of the
decorative profile of the second casing piece. Ans. 3-4, citing Pugh, fig. 5.
Appellant argues that the Examiner incorrectly characterized the
limitation “adapted to” as an intended use limitation for the casing system of
claim 1 and not a structural limitation that specifies what the recited
components must be able to do. App. Br. 6-8. According to Appellant, the
language, “adapted to cover gaps between framing members of structural
openings and vertical walls in buildings,” refers to “attributes concerning the
structure of Appellant's claimed casing pieces and systems because they
specify what the recited components must be able to do.” App. Br. 8; Reply
Br. 3. In response, the Examiner indicated that the recitation of “adapted to”
in claim 1 was considered but given little patentable weight since “adapted
to cover gaps between framing members of structural openings and vertical
walls in buildings” refers to an intended use of the casing system. Ans. 5-6.
We discern no error on this point. Claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function.
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See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). 1 The
Examiner reasonably interpreted the language of claim 1 to mean that the
first and second casing pieces are “made to” cover gaps between framing
members of structural openings and vertical walls in buildings, imparting an
intended use. Appellant essentially concedes that the contested limitation
recites an intended use in stating “Appellant’s ‘adapted to’ language is
relevant to the patentability of these claims in that it provides structural
features that allow the casing pieces to be used in a casing system.” Reply
Br. 3. As correctly noted by the Examiner, Appellant is claiming a casing
system only and is not positively claiming the framing member or vertical
walls of a building. Ans. 5-6. Thus the Examiner had a sound basis for
determining that “adapted to cover gaps between framing members of
structural openings and vertical walls in buildings” is a limitation given little
patentable weight.
Appellant also argues that Pugh does not disclose a casing piece or
casing system since Pugh discloses floor tiles and “Pugh’s floor tiles are not
suitable for use in Appellant’s claimed casing pieces and system.” App. Br.
9. Reply Br. 2. Appellant contends that a person of ordinary skill in the art
would not use the Pugh floor tiles as casing pieces to cover gaps between
framing members of structural openings and vertical walls in buildings,
since such use would require “several tiles, and modifications to the same,
which would require considerable skill and time for installation.” App. Br.
10.

1 Also see, In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1948) (“the
patentability of apparatus claims must be shown in the structure claimed and
not merely upon a use, function, or result thereof”).
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Appellant’s contention that the tile system of Pugh would not be
capable of performing the claim function is unsupported attorney argument
and does not apprise us how the Examiner’s finding is erroneous. The
Examiner’s finding that Pugh discloses a first casing piece having an edge
with a continuous decorative profile and a second casing piece having an
edge with a reverse image of the continuous decorative profile, and the first
casing piece is joined to the second casing piece by engagement of the first
casing piece continuous decorative profile with the second casing piece
reverse continuous decorative profile is consistent with the plain language of
claim 1 interpreted in light of Appellant’s Specification. As correctly noted
by the Examiner, Pugh reads on the structural limitations as claimed and is
thus presumably capable of functioning as claimed, and there is nothing
offered by Appellant that would suggest the tiles could not function as
claimed. 2
As such, we sustain the rejection of claims 1-6 and 9-15.

Claim 7
Appellant argues claim 7 separately and submits that Pugh fails to
disclose “a linear edge that slopes from the upper face to the lower face ‘in
at least two stages’.” App. Br. 16; Reply Br. 4. According to Appellant, the
tiles have one stage with one continuous slope. Id. The Examiner found
that “stages are from curve a to curve b; in order word [sic], the upper face is

2 . “[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(citing In re King, 801, F.2d 1324, 1327 (Fed. Cir. 1986) and In re Ludtke,
441 F.2d 660, 664 (CCPA 1971)).

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located at the beginning of b and the lower surface is at the end of a.” Ans.
3-4, 7. Appellant’s argument that Pugh shows one stage having one
continuous slope is not persuasive. As correctly noted by the Examiner,
there is no recitation in claim 1 of any language defining the structure of the
stages or orientation of the stages.3 Ans. 8. Thus, Appellant’s arguments do
not persuade us of error in the Examiner’s findings or interpretation. As
such, we sustain the rejection of claim 7.

Claim 8
Appellant also argues that claim 8 is separately patentable alleging the
Pugh floor tiles do not have the claimed profile shapes of linear, rounded
convex or rounded concave. App. Br. 17. The Examiner found that Pugh
discloses stages having a convex or concave profile. Ans. 4, 8. On this
record, Appellant has not directed us to persuasive evidence to the contrary,
as Pugh clearly shows convex or concave profiles. See Pugh figs. 1-3, 5,
and 9-19. Accordingly, we sustain the rejection of claim 8.

Claims 1-5, 7-8 and 10, Gascho
Appellant argues claims 1-5, 7-8 and 10 as a group. App. Br.11-13.
We select claim 1 as representative, treating claims 2-5, 7-8 and 10 as
standing or falling with representative claim 1.
The Examiner found that Gascho discloses a casing system having a
first casing piece (top part) having at least one linear side edge and at least
one linear end edge provided with a continuous decorative profile, and a

3 We note that claim 7 recites the limitation “said upper face to said lower
face” and interpret this limitation to mean “said outer face to said inner
face”.
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second casing piece (54) having at least one linear side edge and at least one
linear end edge with a reverse image of the continuous decorative profile,
and the first casing piece is adapted to be joined to the second casing piece
by engagement of the continuous decorative profile of the first casing piece
with the reverse image of the decorative profile of the second casing piece.
Ans. 4-5, citing Gascho figs. 2, 4.
Appellant concedes that Gascho teaches a log system used to build
walls. App. Br. 11. However, Appellant argues that Gascho fails to disclose
each element of claim 1 since the log structure system of Gascho is not
capable of being used as casing pieces due to the weight and thickness of the
logs. App. Br. 12-13; Reply. Br. 5. According to the Examiner, Gascho
discloses all the structure required by claim 1 and there is nothing in Gascho
that would prevent the reference from being able to function as claimed in
claim 1. Ans. 6. Appellant has not explicitly informed us how the casing
system of claim 1 is structurally distinguishable from the log system of
Gascho, or demonstrated that Gascho’s structure is not capable of
performing the function of covering a gap formed between framing members
of structural openings and vertical walls in buildings.
Appellant also argues that Gascho fails to disclose a casing piece with
a continuous decorative element as set forth in claim 1. According to
Appellant, the ripples in the top and bottom surfaces of the logs of Gascho
insure a tight interlocking fit between stacked logs, and are not a decorative
profile. App. Br. 13. The Examiner noted that the “ripples feature disclosed
by Gascho is decorative; furthermore, whether or not a feature is
‘decorative’ is subjected to a person's opinion, and many people would have
many opinions of what would be considered ‘decorative’.” Ans. 7
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Appellant’s argument does not apprise us of error in the Examiner’s
finding that Gascho discloses a first casing piece having an edge with a
continuous decorative profile and a second casing piece having an edge with
a reverse image of the continuous decorative profile, and the first casing
piece is joined to the second casing piece by engagement of the first casing
piece continuous decorative profile with the second casing piece reverse
continuous decorative profile. As correctly noted by the Examiner, Gascho
shows all the claimed structural limitations, is presumably capable of
functioning as claimed, and there is nothing offered by Appellant that would
suggest the tiles could not function as claimed. Ans. 6-7. As such, we
sustain the rejection of claims 1-5, 7-8 and 10.

Obviousness Rejection
Claim 16 depends from claim 15, and recites that the casing system
kit includes instructions for assembly of the parts to form a casing. The
Examiner found that Pugh discloses all the limitations of claim 16 except for
an instruction for assembling the parts to form a casing. Ans. 5. Based on
this finding, the Examiner reasoned that it would have been obvious “to
modify Pugh to show an instruction for assembling the parts to form a casing
because it is well known in the art to provide instructions for assembling and
installing parts on site as such practice would allow users to easily assemble
parts together.” Ans. 5.
Appellant contends that Pugh does not disclose instructions for
assembling a casing but rather instructions for installing floor tiles. App. Br.
14; Reply Br. 5-6. As correctly noted by the Examiner, “since the
instructions (printed matter) are not functionally related to the structure of
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the kit, the claimed invention does not patentably distinguish from the prior
art reference.” Ans. 7. Appellant’s arguments do not apprise us of any new
and non-obvious functional relationship between the printed matter (i.e.
instructions) and some element of the kit in order to patentably distinguish
over Pugh.4
Appellant also argues that Pugh is nonanalogous art since Pugh is not
in Appellants field of endeavor (casing systems) but rather concerns the art
of floor tiles. App. Br. 15; Reply. Br. 6. Appellant contends that Pugh is not
reasonably pertinent to solving Appellants problem of covering gaps
between framing members of structural openings and vertical walls in
buildings, instead Pugh is concerned with covering gaps associated with
floor tiles. Ans. 15. The Examiner correctly pointed out that both the tiles
of Pugh and kit of claim 16 serve to provide a decorative feature on a
covered surface area. Ans. 7. Appellants’ argument based on Pughs’
purported purpose is not persuasive since it is not necessary for the prior art
to serve the same purpose as that disclosed in Appellant’s Specification in
order to support the conclusion that the claimed subject matter would have
been obvious.5 Appellants do not point to any feature of the kit of claim 16
that is structurally distinguishable from Pugh, or inform us that the Pugh tile
system is not capable of performing the decorative function. Thus,
Appellant does not apprise us of error in the Examiner’s findings or

4 See In re Ngai 367 F.3d 1336 (Fed. Cir. 2004).
5 See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). See also In re
Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418-421 (2007) (“A reference may be read for
all that it teaches, including uses beyond its primary purpose.”).
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conclusion of obviousness, which is supported by a rational underpinning.
The rejection of claim 16 is sustained.

DECISION
The Examiner’s rejection of claims 1-15 as anticipated by Pugh is
affirmed.
The Examiner’s rejection of claims 1-5, 7-8 and 10 as anticipated by
Gascho is affirmed.
The Examiner’s rejection of claim 16 as obvious is affirmed.
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) (2011).

AFFIRMED

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