Ex Parte Tsambasis

Patent Trial and Appeal Board

Jun 28, 2016

13414298 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/414,298 03/07/2012
7590 06/29/2016
LEON D, ROSEN
LEON D. ROSEN & ASSOCIATES
Suite 1220
10960 Wilshire Blvd.
Los Angeles, CA 90024
FIRST NAMED INVENTOR
Costa Tsambasis
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
111107 1743
EXAMINER
IHEZIE, JOSHUA K
ART UNIT PAPER NUMBER
3633
MAILDATE DELIVERY MODE
06/29/2016 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 COST A TSAMBASIS
Appeal2014-005306
Application 13/414,298
Technology Center 3600
Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Costa Tsambasis (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 1-5, 10, 11, and 13-16. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal2014-005306
Application 13/414,298
CLAIMED SUBJECT MATTER
The claims are directed to a wall structure. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A wall structure comprising:
a plurality of wall units (31, 32, 33) that each has a pair of
face plate regions ( 40, 42, 94, 96) with primarily rectangular
faces, the face plate regions extending parallel to each other and
being spaced apart to leave a slot ( 64, 66) between the pair of
said face plate regions, each wall unit having a middle plate
region ( 44, 96) of approximately the same size and thickness as
said face plate regions and that is sandwiched between and fixed
to said pair of face plate regions, said middle plate region having
a front edge (60A) that projects forwardly beyond front edges
(52) of said face plate regions to leave a rear slot (64A) between
rear portions of said outer plate regions;
each pair of face plates of a first wall unit (31) having
parallel rear plate edge portions (55, 56) forming a groove (64A)
between them, and each middle plate region of a second wall unit
(32) forms a tongue (60B) that projects forwardly into the rear
groove (64A) of said first wall unit (31) and that has opposite
tongue surfaces (67, 68, Fig. 6);
said rear plate edge portions forming a pair of aligned
holes (140, 142) and forming a threaded nut (130) in one of said
holes, said middle plate region forming an aperture (144) aligned
with said holes, and including a bolt (150) that extends through
said holes and said aperture and that is threadably engaged with
said nut.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lindgren
Diedrich
vonRoenn
us 4,507 ,520
us 5,367,844
us 5,367,846
2
Mar. 26, 1985
Nov. 29, 1994
Nov. 29, 1994
Appeal2014-005306
Application 13/414,298
REJECTIONS
I. Claims 1--4, 13-15, and 16 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
II. Claims 1, 3, and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over vonRoenn and Lindgren.
III. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over vonRoenn, Lindgren, and Diedrich.
IV. Claims 5, 10, 11, 13, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over vonRoenn.
V. Claims 14 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over vonRoenn and Diedrich.
DISCUSSION
New Ground of Rejection
The second paragraph of pre-AIA 35 U.S.C. § 112 states, "[t]he
specification shall conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the applicant regards as
his invention."
Claims 10, 15, and 16 are rejected under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention.
Claim 10 requires a wall structure wherein "said face plates and said
middle plate are integrally molded." Appeal Br., Claims App. 2. Claim 15
similarly requires a wall structure wherein "the face plate regions and middle
plate region of each wall unit comprises a single integrally molded structure"
and claim 16 similarly requires a wall structure wherein "the face plate
3
Appeal2014-005306
Application 13/414,298
regions and middle plate region of each wall unit comprises a single
integrally molded structure." Id. at 4--5. We address the specific language
of claim 1 O; however, this discussion applies equally to the specific
language of claims 15 and 16.
"[I]f a claim is amenable to two or more plausible claim constructions,
the USPTO is justified in requiring an applicant to more precisely define the
metes and bounds of the invention by holding the claim unpatentable under
35 U.S.C. § 112, second paragraph, as indefinite." Ex parte Miyazaki, 89
USPQ2d 1207, 1211 (BP AI 2008) (precedential).
The limitation "said face plates and said middle plate are integrally
molded" is subject to multiple interpretations. This limitation could be
interpreted to require a wall unit wherein the face plates and middle plates
are all molded together as a single piece, or it could be interpreted to require
face plates and middle plates that are each individually molded as single
pieces. This limitation could even be interpreted to require that the face
plates are molded together as a single piece and that the middle plate is
molded as a separate single piece. Thus, claim 10 is indefinite. Claims 15
and 16 recite similar language which is indefinite for the same reason.
Rejection I
Appellant does not contest this rejection. See generally Appeal Br.
Accordingly, we summarily sustain the Examiner's decision rejecting claims
1--4, 13-15, and 16 as being indefinite.
4
Appeal2014-005306
Application 13/414,298
Rejection II
Claims 3 and 4 depend from independent claim 1. Appellant does not
present separate arguments for the patentability of claims 3 and 4.
Accordingly, claims 3 and 4 stand or fall with claim 1.
The Examiner finds that the combined teachings of vonRoenn and
Lindgren disclose or suggest all of the limitations of independent claim 1.
See Final Act. 4--5. In particular, the Examiner finds that vonRoenn
discloses "each wall unit having a middle plate region (104) of
approximately (relative term, the middle plate is less of an inch smaller col.
6 line 41) the same size and thickness (col. 6 line 41)." Id. at 4. The
Examiner further finds that:
Lindgren discloses a tongue and groove connection (fig.
3) wherein the plate edge portions (36, 38) forming the groove
( 5 8) have a pair of aligned holes ( 68) and the tongue ( 48) forming
an aperture aligned with the holes, and including a bolt (80) that
extends through the holes and the aperture and that is threadably
engaged \vith a nut (7 6) to rigidly connect the tongue and groove
parts of the assembly (col. 5 lines 5-12).
Id. at 4--5.
Appellant argues that "[ n ]either reference uses bolts that accurately
position the units to prevent any movement." Appeal Br. 4. Appellant's
argument is not commensurate in scope with the claim, which merely
requires "said middle plate region forming an aperture (144) aligned with
said holes, and including a bolt (150) that extends through said holes and
said aperture and that is threadably engaged 20 with said nut." Appeal Br.,
Claims App. 2. Thus, Appellant does not apprise us of error.
Appellant further argues that "[ n ]either reference shows middle plate
regions of the same thickness and length as the face plate regions." Appeal
5
Appeal2014-005306
Application 13/414,298
Br. 4. Again, Appellant's argument is not commensurate in scope with the
claim which merely requires "each wall unit having a middle plate region
( 44, 96) of approximately the same size and thickness as said face plate
regions." Appeal Br., Claims App. 1 (emphasis added). Moreover, as
discussed supra, the Examiner finds that vonRoenn discloses a middle plate
region of approximately the same thickness and length as the face plate
regions. Appellant does not explain why vonRoenn's middle plate region is
not approximately the same thickness and length as its face plate regions.
Accordingly, Appellant does not apprise us of error.
For these reasons, we sustain the Examiner's decision rejecting claim
1, and claims 3 and 4, which fall therewith as unpatentable over vonRoenn
and Lindgren.
Rejection III
Claim 2 depends from independent claim 1. Appellants do not contest
the rejection of claim 2. Accordingly, we sustain this rejection for the
reasons discussed supra.
Rejection IV
Claim 5
The Examiner finds that vonRoenn discloses or suggests all of the
limitations of independent claim 5. In particular, the Examiner determines
that "tongues (108) project from the ends of the first wall unit (it would be
obvious to make them project by at least three times the tongue thickness as
a matter of design choice and for ease of assembly)" and that "it would be
obvious to make the middle plate have the same length, width and thickness
as the corresponding face plate for ease of manufacture since all the plates
can be manufactured together." Final Act. 7-8.
6
Appeal2014-005306
Application 13/414,298
Appellant argues that "vonRoenn shows, in his Fig. 13, a tongue 108
that projects 1 1/2 times its thickness, not 3 times its thickness" and that
vonRoenn's "tongue thickness (measured to be 4 mm) is only 65% of his
face plate thickness (measured to be 6.2 mm)." Appeal Br. 5.
Appellant's arguments are based on measurements of vonRoenn' s
drawings. When the reference does not disclose that the drawings are to
scale and is silent as to dimensions, arguments based on measurement of the
drawing features are of little value. See Hockerson-Halberstadt, Inc. v. Avia
Group Int'!, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). Appellant does not
explain why selection of a projection of three times the thickness is beyond
the skill of one skilled in the art or why one skilled in the art would not make
the middle plate the same size and thickness as the face plate. Thus,
Appellant does not apprise us of error.
Appellant further argues that vonRoenn was not aware that a tongue
projection of at least twice that shown in vonRoenn has a large effect on the
stability of the total wall structure. Appeal Br. 5. However, we are unaware
of any requirement that the references relied upon to reject claims under 35
U.S.C. § 103(a) have the same objectives as the claimed invention. Rather,
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. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007) ("In determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the [Appellants] controls."); see also In re Linter, 458
F.2d 1013, 1016 (CCPA 1972).
7
Appeal2014-005306
Application 13/414,298
For these reasons, we sustain the Examiner's decision rejecting claim
5 as unpatentable over vonRoenn.
Claim 10
Having determined that claim 10 is indefinite, we cannot sustain the
rejection of this claim under 35 U.S.C. § 103(a) because to do so would
require speculation as to the scope of the claim. In re Steele, 305 F.2d 859,
862-63 (CCP A 1962) (Holding that the Board erred in affirming a rejection
of indefinite claims under 35 U.S.C. § 103(a)).
Claim 11
Claim 11 requires "said face plates and said middle plate, each
comprises a separate plate of the same solid material and of the same widths,
lengths, and thicknesses as the other plates, with said face plates and middle
plate fastened together." Appeal Br., Claims App. 3.
Appellant argues that vonRoenn shows "a middle region 23 that is a
'void, or airspace'. He actually uses aluminum tubes 60 or locking ribs 50
and adhesive 26 to hold his units together." Appeal Br. 5 (citations omitted).
Appellant's argument is not responsive to the rejection, which relies
upon the embodiment shown in Figures 12-15, as evidenced by the fact that
the rejection refers to reference numerals shown in this embodiment. See
Final Act. 8. In this embodiment, the plates are made of glass which is a
solid material. Id.; see also vonRoenn 6:36-39. Thus, Appellant does not
apprise us of error.
We sustain the Examiner's decision rejecting claim 11 as unpatentable
over vonRoenn.
8
Appeal2014-005306
Application 13/414,298
Claim 13
The Examiner finds that vonRoenn discloses or suggests all of the
limitations of independent claim 13. In particular, the Examiner determines
that "it would be obvious to apply the silicon cement on substantially all of
the opposite tongue surfaces of the wall unit to strengthen the connection
between the tongue and the groove of adjacent wall units." Final Act. 9.
Appellant argues that "vonRoenn shows adhesive (26, his Fig. 3) that
adheres to only comers of his locking rib 50 and comers at the edge of his
outer plates, rather than substantially all of his tongue surfaces." Appeal
Br. 6.
Appellant's argument is not responsive to the rejection as articulated
by the Examiner as it does not address the Examiner's reason for modifying
vonRoenn. Thus, Appellant's argument is unconvincing.
We sustain the Examiner's decision rejecting claim 13 as unpatentable
over vonRoenn.
Claims 15 and 16
Having determined that claims 15 and 16 are indefinite, we cannot
sustain the rejection of these claims under 35 U.S.C. § 103(a) because to do
so would require speculation as to the scope of the claims as discussed
supra.
Rejection V
Claim 14
The Examiner determines that "vonRoenn, Jr. does not disclose that
the wall structure includes a top joining beam with a single groove at its
bottom that receives the tongue." Final Act. 12. The Examiner finds that
Deidrich discloses "a top joining beam ( 40) that has a height less than half of
9
Appeal2014-005306
Application 13/414,298
the height of the wall unit (fig. 3) and that lies above a plurality of wall
units, the top joining beam (40)." Id.
Appellant argues that "vonRoenn shows, in his Fig. 5, a unit 22 that
lies over two wall units, not at least three, and that has the same height as
two of his wall units." Appeal Br. 6.
Appellant's argument is not responsive to the rejection as articulated
by the Examiner, which relies upon Deidrich, not vonRoenn to meet the
limitation at issue. Accordingly, Appellant's argument is unconvincing.
We sustain the Examiner's decision rejecting claim 14 as unpatentable
over vonRoenn and Deidrich.
DECISION
The Examiner's rejection of claims 1--4, 13-15, and 16 under 35
U.S.C. § 112, second paragraph, is AFFIRMED.
The Examiner's rejections of claims 1-9 and 11-16 under 35 U.S.C. §
103(a) are AFFIRMED.
The Examiner's rejection of claims 10, 15, and 16 under 35 U.S.C. §
103(a) is REVERSED.
We enter a NEW GROUND OF REJECTION of claims 10, 15, and
16 under 35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
10
Appeal2014-005306
Application 13/414,298
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
11