Appeal 2007-0694
Reexamination Control 90/006,433
Patent 5,428,933
2. The Rejection of Claims 12 and 20 as Obvious over
Guarriello in view of Horobin ‘969
Claim 12 depends from independent claim 11, which is directed to an
insulating block having projections and recesses of substantially the same
dimensions on the top and bottom edges of the side members. Claim 12
requires that the insulating block include removable end pieces that have
projections and side members having grooves for receiving the projections
of the end pieces. Similarly, claim 20 depends from independent claim 19
and also requires the presence of removable end pieces.
The Examiner found that Guarriello shows all the claimed limitation
except for the removable end pieces having projections slidable into the
grooves of side members. (Answer, p. 8-9). The Examiner further found
that Horobin ‘969 teaches end pieces that mate with side members to form a
wall structure. (Id. at 9). The Examiner concluded that one of ordinary skill
in the art would have modified Guarriello to include the removable end
pieces of Horobin ‘969 to increase the versatility of Guarriello’s blocks by
allowing the attachment of additional structures onto the side members. (Id.
at 9 and 17).
Patentee states that Guarriello does not show a removable end cavity
and that Guarriello solved the problem a different way. (Appeal Br. at 51).
From this Patentee concludes that Guarriello “teaches away from the idea of
a removable end member.” (Id.).
A reference “teaches away” if it suggests that the line of development
flowing from the reference's disclosure is unlikely to be productive of the
result sought by the applicant. In re Gurley, 27 F.3d 551, 553, 31 USPQ2d
1130, 1131 (Fed. Cir. 1994).
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