Appeal No. 1999-1081 Page 5
Application No. 08/458,983
appellants have provided evidence in the form of excerpts from publications in the
construction field. Nevertheless, the examiner maintains his position that “the terms to
panel and block are merely nomenclature and do not, by themselves, serve to establish
any patentable distinction. Size of the block or panel notwithstanding,” without making any
comment at all regarding the appellants’ evidence or offering evidence in rebuttal (Answer,
page 6).
We are persuaded by the evidence presented by the appellants that, in the field of
building construction, “panel” and “block” are not merely alternative designations for the
same structural element, but denote different elements. Of particular interest in this regard
are pages 131 and 180 of Exhibit 2, in which the distinctions between “blocks” and
“panels” clearly are established. It is our conclusion, therefore, that the claimed invention is
not anticipated by either of the applied references.
The rejection of independent claim 1 and dependent claims 2-9, 11-14 and 66-71 is
not sustained.
The Rejections Under 35 U.S.C. § 103
Dependent claims 15 and 18 stand rejected as being unpatentable over either
Marks or Dunker, and dependent claim 71 over Marks. Even considering these
2
references in the context of Section 103, the deficiency in each reference that was pointed
2The test for obviousness is what the teachings of the prior art would have
(continued...)
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007