Appeal No. 2004-2160 Page 3
Application No. 09/818,851
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
Each of the independent claims 1 and 13 before us in this appeal requires the
aggregate pieces within the construction block to have a circumference “in excess of 5
cm.”2 The examiner concedes that “Kirkpatrick does not specifically disclose that said
circumferences are in excess of 5 cm.”3 (answer, page 4) but takes the position that It
would have been obvious to one of ordinary skill in the art at the time of appellant’s
invention to use aggregate pieces having circumferences in excess of 5 cm “because
said pieces will create firm contact between the aggregate pieces in order to transfer
vibrations” (answer, page 5). For the following reason, the examiner’s position is not
well taken.
Kirkpatrick discloses a building block “provided with a crushed rock veneer face
or the like, and provided with reinforcing elements [16, 17] to afford the block maximum
strength” (lines 10-13 of Kirkpatrick). Kirkpatrick gives absolutely no indication that the
crushed rock is intended to serve any purpose other than to provide an aesthetically
pleasing veneer face and, in any event, provides no teaching or suggestion that the
2 Our review of the record indicates that this limitation first appeared in appellants’ claims in the
amendment filed January 22, 2003. Upon return of jurisdiction of this application back to the primary
examiner, the examiner may wish to consider whether this limitation lacks written description support in
the application as originally filed as required by the first paragraph of 35 U.S.C. § 112. The only mention
we find of aggregate piece size in the original application is on page 9 of the specification, wherein
appellants disclose three circumference ranges, namely, 50 to 60 cm (large), 20 to 40 cm (medium) and 5
to 10 cm (small). Appellants’ claims, on the other hand, cover aggregate pieces of any circumference in
excess of 5 cm, such as 15 cm, 45 cm or greater than 60 cm, for example.
3 Kirkpatrick is silent with respect to the circumference or size of the “crushed rock or the like” (line
43) used to form the crushed rock veneer face 10.
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