11355353 (P.T.A.B. Jan. 14, 2013)

Ex Parte Stokes

Patent Trial and Appeal BoardJan 14, 2013

11355353 (P.T.A.B. Jan. 14, 2013)

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. 11/355,353 02/17/2006 Jonathan D. Stokes STOK100 1410 23590 7590 01/15/2013 RICHARD L HUFF 19304 OLNEY MILL ROAD OLNEY, MD 20832 EXAMINER KWIECINSKI, RYAN D ART UNIT PAPER NUMBER 3635 MAIL DATE DELIVERY MODE 01/15/2013 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 JONATHAN D. STOKES ____________________ Appeal 2010-012143 Application 11/355,353 Technology Center 3600 ____________________ Before: STEFAN STAICOVICI, HYUN J. JUNG, and SCOTT A. DANIELS, Administrative Patent Judges. JUNG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012143 Application 11/355,353 2 STATEMENT OF THE CASE Jonathan D. Stokes (Appellant) appeals under 35 U.S.C. § 134 from an Examiner’s decision rejecting claims 20-24. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The claimed subject matter relates to “concrete construction utilizing foam block forms.” Spec., para. [0001]. Claims 20, 21, and 23 are independent. Claim 20, reproduced below, is illustrative of the claimed subject matter: 20. An insulating sidewall form for concrete, which form is stackable horizontally and vertically above and below with other like forms, comprising two rectangular foam plastic sidewalls making up an inner sidewall and an outer sidewall the inner and outer sidewalls each having: an interior surface, such that when the two sidewalls are positioned to create the form, the interior surfaces of the sidewalls form a plurality of vertical cavities and vertical slots, a flat exterior surface, the inner sidewall further having: a first horizontal surface having a raised portion along the interior surface and a non-raised portion along the exterior surface, a second horizontal surface having a non- raised portion along the interior surface and a raised portion along the exterior surface, and opposed vertical surfaces, a first vertical surface having a tongue and a second vertical surface having a complimentary groove, the outer sidewall further having: Appeal 2010-012143 Application 11/355,353 3 a first horizontal surface having a non-raised portion along the interior surface and a raised portion long the exterior surface, a second horizontal surface having a raised portion along the interior surface and a non-raised portion along the exterior surface, the raised and non-raised portions being arranged so as to allow attachment of the upper surfaces of one form with the lower surfaces of like forms, and opposed vertical surfaces, a first vertical surface having a tongue and a second vertical surface having a complimentary groove, the tongues and grooves of the form being so arranged that each end of the form will contain one tongue and one groove so as to allow end-to-end attachment of like forms, the form containing a plurality of ties connecting the sidewalls and maintaining the sidewalls at a constant distance from each other. THE REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Smith US 5,568,710 Oct. 29, 1996 Cymbala US 2005/0223669 A1 Oct. 13, 2005 THE REJECTIONS Appellant seeks our review of the rejection of claim 20 under 35 U.S.C. § 102(b) as anticipated by Smith and the rejection of claims 21-24 under 35 U.S.C. § 103(a) as unpatentable over Cymbala and Smith. Appeal 2010-012143 Application 11/355,353 4 ANALYSIS Anticipation The Examiner finds that Smith discloses the insulating sidewall form of independent claim 20. Ans. 4-5. In particular, the Examiner finds that Smith discloses an inner and outer sidewalls (sidewalls 12 and 14 as shown in Figure 8) having first and second horizontal surfaces and opposed vertical surfaces (vertical edges 20 and 22 as shown in Figure 1) with a first vertical surface (vertical edge 26) having a tongue (protrusion on vertical edge 26) and a second vertical surface (end wall 24) having a complimentary groove (groove on vertical edge 24 as shown in Figure 6). Id. at 4. The Examiner also finds that Smith discloses an outer sidewall having opposed vertical surfaces, a first vertical surface having a tongue, a second vertical surface having a complementary groove, and the tongues and grooves being so arranged that each end of the form contains one tongue and one groove so as to allow end-to-end attachment of like forms (column 3, lines 1-9). Id. at 5. Appellant argues that claim 20 is not anticipated because claim 20 requires that the form have one tongue and one groove at each end. Br. 13. Appellant also argues that Smith does not disclose tongues and grooves as called for by claim 20. Id. Appellant contends that Smith has half lap joints so that the end sections of the form overlap and connect to produce an extended form. Id. The Examiner responds that the form of Smith has a tongue. Ans. 12. However, Smith discloses that, for each form, an end wall extends beyond a sidewall or a sidewall extends beyond an end wall to form lap joint surfaces. Smith, col. 3, ll. 1-3. Smith discloses tongues 34 that mate with complementary grooves 36, but such tongues 34 and grooves 36 are on the Appeal 2010-012143 Application 11/355,353 5 upper and lower longitudinal edges 16 and 18. Smith, col. 2, ll. 64-67 (“Each form 10 has complementary tongues 34 along the respective upper 16 edges which mate with complementary grooves 36 located along the lower edges of an overlying form 10”). Thus, Smith distinguishes the extension of an end wall beyond a sidewall or a sidewall beyond an end wall on its vertical edges 20, 22 from the tongues and complementary grooves on its upper and lower longitudinal edges 16 and 18. Therefore, Smith does not disclose by a preponderance of the evidence that its vertical edges 20, 22, which the Examiner cites as disclosing the vertical surfaces of claim 20, have tongues and complementary grooves similar to its upper and lower edges 16, 18, as required by claim 20. Moreover, the Examiner cites column 3, lines 1-9, of Smith for disclosing tongues and grooves arranged so that each end of the form has one tongue and one groove for end-to-end attachment. Ans. 5. The cited portion of Smith describes the end wall extending beyond the sidewall or the sidewall extending beyond the end wall to form lap joint surfaces. Although the extension of an end wall beyond a sidewall or the extension of a sidewall beyond an end wall may be viewed as a structure similar to a “tongue,” the extensions are arranged so that one end of the form of Smith has only one such structure, either a tongue or a groove, and not arranged so that each end of the form contains a tongue and a groove so as to allow end-to-end attachment of like forms, as required by claim 20. See Smith, fig. 6. Therefore, for the reasons supra, Smith does not disclose by a preponderance of the evidence the tongues and grooves of claim 20. Thus, based on the record before us, we cannot sustain the Examiner’s rejection of claim 20 under 35 U.S.C. § 102(b). Appeal 2010-012143 Application 11/355,353 6 Obviousness For independent claims 21 and 23, the Examiner finds that Smith discloses an inner sidewall having a first vertical surface with a tongue and a second vertical surface with a complimentary groove and an outer sidewall having a first vertical surface with a tongue, a second vertical surface with a complementary groove, and the tongues and grooves being so arranged that each end of the form contains one tongue and one groove so as to allow end- to-end attachment of like forms. Ans. 7-8 and 9-10. As discussed supra, Smith does not disclose by preponderance of the evidence tongues and grooves. The Examiner relies on Cymbala for disclosing an insulating corner form or an insulating sidewall form. Ans. 6 and 9. The Examiner thus does not rely on Cymbala for any teaching that overcomes the deficiencies of Smith. Accordingly, on the record before us, we cannot sustain the rejection of independent claims 21 and 23 or their dependent claims 22 and 24 under 35 U.S.C. § 103(a) as unpatentable over Cymbala and Smith. DECISION For the above reasons, the Examiner’s rejection of claims 20-24 is reversed. REVERSED Klh