IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. D527,834 PURSUANT TO 35 U.S.C. 311 AND 37 C.F.R Application/Control Number Patent For Which Inter Partes Review is Presently Requested TBD D527,834 Filing Date April 20, 2004 First Named Inventor Thimons et al. Title BUILDING PANEL Confirmation Number Group Art Unit Examiner Name TBD TBD TBD TABLE OF CONTENTS I. INTRODUCTION

2 II. NOTICE OF REAL PARTY IN INTEREST UNDER 37 C.F.R. 42.8(b)(1)... 6 III. NOTICE OF RELATED MATTERS UNDER 37 C.F.R. 42.8(b)(2)... 6 IV. NOTICE OF LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. 42.8(b)(3)... 6 V. NOTICE OF SERVICE INFORMATION UNDER 37 C.F.R. 42.8(b)(4)... 6 VI. CERTIFICATION OF GROUNDS FOR STANDING UNDER 37 C.F.R (a)... 7 VII. CERTIFICATION OF SERVICE UNDER 37 C.F.R. 42.6(e)(4) AND (a)... 7 VIII. STATEMENT OF PRECISE RELIEF REQUESTED UNDER 37 C.F.R (a)(1) AND (b)(1)-(2)... 7 IX. STATEMENT OF PROPOSED CLAIM CONSTRUCTION UNDER 37 C.F.R (b)(3)... 9 X. SUMMARY OF PRIOR ART PRINTED PUBLICATIONS RELIED UPON IN THE PRESENT PETITION FOR INTER PARTES REVIEW A. ATAS, Inc. Model MPS120 Panel Introduction ATAS Web Page ( Sweet s Catalog File, Volume ATAS Metal Wall Panels Brochure B. ATAS, Inc. RIGID-Wall Panel Introduction Sweet s Catalog File, Volume ATAS Metal Wall Panels Brochure C. Centria Model IW60A Panel D. ATAS, Inc. Model MPH080 Panel E. Centria Model FWDS-59 Panel XI. OVERVIEW OF THE 834 PATENT A. Background B. Prosecution and Enforcement History XII. STATEMENT OF REASON FOR THE RELIEF REQUESTED UNDER 37 C.F.R (a)(2) AND (b)(4), SHOWING THAT THERE IS A REASONABLE LIKELIHOOD THAT THE REQUESTER WILL PREVAIL UNDER 35 U.S.C A. The Applicable Legal Standards Obviousness Anticipation Multiple Embodiments

3 B. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on any of the MPS120 Publications in view of any of the BKR160 Publications MPS120 Panel as compared to FIGS of the 834 Patent Any of the MPS120 Publications, which show the MPS120 Panel, is a suitable primary reference, having the same basic design characteristics as the claimed desig Any of the BKR160 Publications, which show the BKR160 Panel, is a suitable secondary reference for modifying any of the MPS120 Publications The 834 Patent is unpatentable under 35 U.S.C. 103(a) over the MPS120 Panel in view of the BKR160 Panel C. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on any of the MPS120 Publications in view of the IW60A Panel D. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on any of the BKR160 Publications (Anticipation) The BKR160 Panel as compared to FIGS of the 834 Patent The 834 Patent is unpatentable under 35 U.S.C. 102(b) as being anticipated by the BKR160 Panel, as shown in any of the BKR160 Publications E. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on any of the BKR160 Publications (Obviousness) F. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on any of the BKR160 Publications in view of any of the MPS120 Publications G. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on any of the MPH080 Publications in view of any of the BKR160 Publications The MPH080 Panel as compared to FIGS of the 834 Patent Any of the MPH080 Publications, which show the MPH080 Panel, is a suitable primary reference, having the same basic design characteristics as the claimed design

4 3. Any of the BKR160 Publications, which show the BKR160 panel, is a suitable secondary reference for modifying any of the MPH080 Publications The 834 Patent is unpatentable under 35 U.S.C. 103(a) as obvious over the MPH080 Panel in view of the BKR160 Panel H. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on Any of the MPH080 Publications in View of the IW60A Panel I. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on the FWDS-59 Panel (Anticipation) Patentably indistinct embodiment later canceled by Patentee should be considered for anticipation and obviousness analysis The FWDS-59 Panel as compared to patentably indistinct embodiment later canceled by Patentee The 834 Patent is unpatentable under 35 U.S.C. 102(b) as being anticipated by the FWDS-59 Panel J. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on the FWDS-59 Panel in view of any one of the BKR160 Publications XIII. CONCLUSION

5 Table of Exhibits Exhibit A U.S. Design Patent No. D527,834 Exhibit B Prosecution history of U.S. Design Patent No. D527,834 Exhibit C Exhibit D Exhibit E Exhibit F Exhibit G Exhibit H Exhibit I ATAS Website content from December 3, 2000 showing ATAS MPS120 Panel 2002 Sweet s Catalog, including ATAS Wall Panels product brochure showing ATAS MPS120, MPH080, and RIGID-WALL (BKR160) Panels and Centria product brochure showing FWDS-59 Panel Declaration of Noah A. Sharkan; Summer 2000 Sweet s CD, showing ATAS MPS120 and MPH080 Panels Declaration of Theodorus Bus Commercial & Industrial Metal Wall Systems Robertson Product Brochure (dated 1994) showing IW60A Panel (prior art of record from D527,834) Centria Technical Data Manual dated December 1996 showing IW60A Panel Admitted Art Not Considered By Examiner Exhibit J Canceled Original Figures of U.S. Design Patent No. D527,834 Exhibit K Exhibit L ATAS Website content from August 15, 2000 showing Sweet s CD information Declaration of Teresa Warmkessel 5

6 I. INTRODUCTION The present document is a petition (hereinafter Petition ) for inter partes review of the sole claim of U.S. Design Patent No. D527,834 (hereafter the 834 Patent ), issued on September 5, 2006 to Thimons et al. The assignee of record for the 834 Patent is Centria, of Moon Township, Pennsylvania. A copy of the 834 Patent is provided as Exhibit A to this Petition. The fee for this Petition, pursuant to 37 C.F.R , is submitted herewith. II. NOTICE OF REAL PARTY IN INTEREST UNDER 37 C.F.R. 42.8(b)(1) For petitioner, the real party in interest is ATAS International, Inc., a corporation organized under the laws of the state of New York and having its corporate headquarters and principal place of business in Allentown, Pennsylvania. III. NOTICE OF RELATED MATTERS UNDER 37 C.F.R. 42.8(b)(2) The patent owner has sued the petitioner in the United States District Court for the Western District of Pennsylvania, alleging infringement of U.S. Design Patent No. D527,834. The case is captioned Centria v. ATAS International, Inc., 2:13-cv-309. IV. NOTICE OF LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. 42.8(b)(3) Lead counsel for the petitioner is Damon A. Neagle of Design IP, P.C., USPTO Registration No. 44,964. Backup counsel for petitioner is James J. Aquilina of Design IP, P.C., USPTO Registration No. 63,550. V. NOTICE OF SERVICE INFORMATION UNDER 37 C.F.R. 42.8(b)(4) Petitioner may be served as follows: DESIGN IP, P.C. Commerce Corporate Center 5100 W. Tilghman St., Suite 205 Allentown, PA damonneagle@designip.com phone:

7 fax: VI. CERTIFICATION OF GROUNDS FOR STANDING UNDER 37 C.F.R (a) Petitioner hereby certifies that U.S. Design Patent No. D527,834 is available for inter partes review and that it is not barred or stopped from requesting an inter partes review challenging the claim of the 834 Patent on the grounds identified in this petition. VII. CERTIFICATION OF SERVICE UNDER 37 C.F.R. 42.6(e)(4) AND (a) Petitioner hereby certifies that a copy of this Petition and all Exhibits has been served in its entirety on the Patent Owner s counsel of record at the following address, pursuant to 37 C.F.R. 42.6(e)(3) and (a): Buchanan Ingersoll & Rooney PC P.O. Box 1404 Alexandria, VA Service of the present Petition was also effected on Patent Owner s counsel of record in the related district court litigation at the following address, pursuant to 37 C.F.R (a): Richard L. Byrne, Esq. The Webb Law Firm, P.C. One Gateway Center 420 Fort Duquesne Blvd., Suite 1200 Pittsburgh, PA An appropriate certificate of service, in accordance with 37 C.F.R. 42.6(e)(4), is included herewith. VIII. STATEMENT OF PRECISE RELIEF REQUESTED UNDER 37 C.F.R (a)(1) AND (b)(1)-(2) The 834 Patent is a design patent, and thus has a single claim. In regard to the 834 Patent, Petitioner respectfully requests the following relief: 7

8 (1) a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as obvious over any one of the MPS120 Publications, as defined below, in view of any one of the BKR160 Publications, as defined below; (2) a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as obvious over any one of the MPS120 Publications, as defined below, in view of any one of the IW60A Publications, as defined below; (3) a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 102(b) as anticipated by any one of the BKR160 Publications, as defined below; (4) a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as obvious over any one of the BKR160 Publications, as defined below, in view of common knowledge to one having ordinary skill in the art; (5) a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as obvious over any one of the BKR160 Publications, as defined below, in view of any one of the MPS120 Publications, as defined below; (6) a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as obvious over any one of the MPH080 Publications, as defined below, in view of any one of the BKR160 Publications, as defined below; (7) a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as obvious over any one of the MPH080 Publications, as defined below, in view of any one of the IW60A Publications, as defined below; (8) a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 102(b) as anticipated by any one of the FWDS-59 Publications, as defined below; and/or 8

9 (9) a holding that the sole claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as obvious over any one of the FWDS-59 Publications, as defined below, in view of any one of the BKR160 Publications, as defined below. IX. STATEMENT OF PROPOSED CLAIM CONSTRUCTION UNDER 37 C.F.R (b)(3) Given the recognized difficulties entailed in trying to describe a design in words, the preferable course ordinarily will be [to not] attempt to construe a design patent claim by providing a detailed verbal description of the claimed design. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008). However, it may be helpful to point out various features of the claimed design as they relate to the prior art. Id. at 680. Petitioner notes some inconsistencies in the the drawings of each of the embodiments of the 834 Patent. Specifically, a bent portion of each of the embodiments is shown in solid lines (claimed) in the respective side view figure, but in broken lines (disclaimed) in the two respective perspective view figures. An annotated image of portions of FIGS. 1, 2, and 6 of the 834 Patent, showing these drawing inconsistencies, is provided below. These drawing inconsistencies are present in the sets of drawings for each of the embodiments of the 834 Patent. 9

10 Since the majority of the drawings of each of the embodiments of the design shown in the 834 Patent show this bent portion disclaimed, Petitioner submits that the claim of the 834 Patent should be construed to exclude this bent portion (i.e., consider it unclaimed subject matter). Moreover, many figures of the 834 Patent show the drawing convention for a design having indeterminate length, and the special description of the 834 Patent likewise describes the design of the building panel to be of indeterminate length. Petitioner submits that the claim of the 834 Patent should be construed to include a building panel as shown and described in the drawings of the 834 Patent having any length. A perspective view of each of the embodiments of the 834 Patent is provided in which the applicant displayed that multiple units of the wall panels shown in the 834 Patent were designed to be interlocked adjacently to one another in order to form a wall panel sheet comprised of multiple wall panels. These perspective views (see, e.g., FIG. 6) make clear that portions of the claimed design are more clearly visible than others when installed on a wall surface, and that the design of the wall panel as shown and described in the 834 Patent is very likely to be viewed by an ordinary observer in a repeating fashion (for example, while installed on a wall surface). Finally, the 834 Patent comprises a claimed design having seven embodiments. Multiple embodiments may be included in the same design patent only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391 (CPA 1959). Unlike during litigation, the scope of the claim of the 834 Patent must be given its broadest reasonable scope before the USPTO, Atlantic Thermoplastics Co., Inc. v. Faytex Corp., 970 F.2d 834, 846 (Fed. Cir. 1992), it being understood that a determination by the Board that a single embodiment of the 834 Patent is 10

11 unpatentable would render every embodiment of the 834 Patent unpatentable. In re Klein, 987 F.2d 1569, 1570 (Fed. Cir. 1993). X. SUMMARY OF PRIOR ART PRINTED PUBLICATIONS RELIED UPON IN THE PRESENT PETITION FOR INTER PARTES REVIEW Inter partes review of the claim of the 834 Patent is requested in view of the following printed publications: A. ATAS, Inc. Model MPS120 Panel 1. Introduction As explained in greater detail below, the ATAS, Inc. model MPS120 panel (hereafter the MPS120 Panel ) appears in multiple prior art printed publications cited in this Petition. These publications are collectively referred to hereinafter as the MPS120 Publications. 2. ATAS Web Page ( The MPS120 Panel appears on a web page published on the Internet at URL (hereinafter the ATAS Web Page ), which was publically available at least as early as December 3, An archived copy of the ATAS Web Page is provided by the Wayback Machine and attached hereto as Exhibit C. The URL of the Wayback Machine archive is provided in Exhibit C. An electronic publication, including an on-line database or Internet publication, is considered to be a "printed publication" within the meaning of 35 U.S.C. 102(a) and 102(b) provided that the publication was accessible to persons concerned with the art to which the document relates. MPEP Archived content provided by the Wayback Machine has long been acknowledged by the USPTO as a proper means for establishing website content as prior art. See Wynn W. Coggins, Prior Art in the Field of Business Method Patents When is an Electronic Document a Printed Publication for Prior Art Purposes?, Fall 2002, 11

12 ( Websites can be used as references if posting dates can be found, and those posting dates predate the invention.... Examiners utilize commercial databases and the Wayback Machine to help establish website posting dates in order to qualify the website as prior art ). In addition, the Declaration of Theodorus Bus (attached hereto as Exhibit F; hereinafter Bus Declaration ) also establishes that the ATAS Web Page was publicly available via the Internet at least as early as December Based on the foregoing, the ATAS Web Page was available on a publicly accessible website at least as early as December 3, The earliest priority date for the 834 Patent is April 20, The ATAS Web Page, as shown in the archived content, therefore qualifies as a printed publication and is available as prior art under 35 U.S.C. 102(b) Sweet s Catalog File, Volume 4 The MPS120 Panel also appears in Volume 4 of the 2002 Sweet s Catalog File (hereinafter 2002 Sweet s Catalog ), attached hereto in pertinent part as Exhibit D. The 2002 Sweet s Catalog included an ATAS, Inc. Wall Panels product brochure showing the MPS120 Panel (see pages 5-7 and 9) and is available as prior art under 35 U.S.C. 102(b). The 2002 Sweet s Catalog is a printed publication upon a satisfactory showing that the Sweet s Catalog File has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it. In re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981); MPEP As reflected in the Bus Declaration (Exhibit F), the 2002 Sweet s Catalog is the most widely-used building material product data reference for roof and wall panels and was made available in 2002 to over 60,000 industry professionals (Bus Declaration 5 and 10; see also 2002 Sweet s Catalog at page 4). Further, the same ATAS, Inc. Wall Panels product brochure that is featured 12

13 in the 2002 Sweet s Catalog was also distributed to ATAS customers (Bus Declaration 13), and was made available without restriction at multiple industry trade shows between January 1, 2002 and December 31, 2002 (Bus Declaration 14). In addition, as reflected in the Declaration of Teresa Warmkessel and attachments thereto (Exhibit L, hereinafter Warmkessel Declaration ), the 2002 Sweet s Catalog is in the collection and listed in the card catalog of least five (5) major public libraries (Warmkessel Declaration 6). As further set forth in the Warmkessel Declaration, the 2002 Sweet s Catalog was added to the card catalog of the Free Library of Philadelphia on May 25, 2002 (Warmkessel Declaration 2-5). Based on the foregoing, the 2002 Sweet s Catalog was clearly disseminated and made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, could have located it prior to December 31, The foregoing establishes that the 2002 Sweet s Catalog was a printed publication at least as early as December 31, 2002, which is more than one year prior to the effective filing date of the 834 Patent. Accordingly, the 2002 Sweet s Catalog is prior art to the 834 Patent under 35 U.S.C. 102(b) ATAS Metal Wall Panels Brochure The MPS120 Panel also appears on pages 3 and 8 of the 2002 ATAS Metal Wall Panels Brochure (hereinafter ATAS Brochure ), which is attached hereto as Exhibit D (see pp. 5-7 and 9 of Exhibit D). The ATAS Brochure is available as prior art under 35 U.S.C. 102(b). The ATAS Brochure is a printed publication upon a satisfactory showing that the ATAS Brochure has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it. In re Wyer, 655 F.2d at 226; MPEP As reflected in the Bus Declaration (Exhibit F), the 13

14 ATAS Brochure was also widely distributed to ATAS customers (Bus Declaration 13), and was made available without restriction at multiple industry trade shows between January 1, 2002 and December 31, 2002 (Bus Declaration 14). Based on the foregoing, the ATAS Brochure was clearly disseminated and made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, could have located it prior to December 31, The foregoing establishes that the ATAS Brochure was a printed publication at least as early as December 31, 2002, which is more than one year prior to the effective filing date of the 834 Patent. Accordingly, the ATAS Brochure is prior art to the 834 Patent under 35 U.S.C. 102(b). B. ATAS, Inc. RIGID-Wall Panel 1. Introduction As explained in greater detail below, the ATAS, Inc. model RIGID-Wall / BKR160 panel (hereafter BKR160 Panel ) appears in multiple prior art publications cited in this Petition. These publications are collectively referred to hereinafter as the BKR160 Publications Sweet s Catalog File, Volume 4 The BKR160 Panel appears in the 2002 Sweet s Catalog (Exhibit D, see pp. 10 and 11), which, as set forth above in Section X.A.3., is prior art to the 834 Patent under 35 U.S.C. 102(b) ATAS Metal Wall Panels Brochure The BKR160 Panel appears on page 6 of the ATAS Brochure (Exhibit D, see pp. 10 and 11), which, as set forth above in Section X.A.4., is prior art to the 834 Patent under 35 U.S.C. 102(b). 14

15 C. Centria Model IW60A Panel The Centria model IW60A Panel (hereafter IW60A Panel ) is prior art of record for the 834 Patent (see Exhibit B, p. 106). The IW60A Panel was disclosed on page 9 of the Commercial & Industrial Metal Wall Systems Robertson Product Brochure (1994) (hereinafter Robertson Brochure ), which is attached hereto as Exhibit G. D. ATAS, Inc. Model MPH080 Panel The ATAS, Inc. model MPH080 panel (hereafter MPH080 Panel ) is shown in the 2002 Sweet s Catalog (Exhibit D, pp. 5, 6, and 8) and the ATAS, Inc. Wall Panels Brochure (Exhibit D, see pp. 5, 6, and 8). As set forth above in sections X.A.3. and X.A.4., respectively, the 2002 Sweet s Catalog and ATAS Brochure are prior art to the 834 Patent under 35 U.S.C. 102(b). In addition, the MPH080 Panel is shown on the Summer 2000 Sweet s CD (hereafter Sweet s CD ), screenshots of which are attached hereto as Exhibit E. As reflected in the declaration of Noah A. Sharkan, attached hereto as part of Exhibit E, the screenshots included in Exhibit E are true and accurate representations of the images accessible via the Sweet s CD on a Windows-based personal computer. The Sweet s CD software includes, among other things, a CAD illustration of the MPH080 Panel (see Exhibit E, p. 14) and a CAD file of the MPH080 Panel that can be saved and opened in CAD software (see Exhibit E, pp. 15 and 16). Images taken of the Sweet s CD and product packaging (Exhibit E, pp. 1-9) indicate that the Sweet s CD was distributed by Sweet s Group, a division of McGraw Hill, via US mail with a mailing permit. Further, Sweet s Internet webpage as archived by the Wayback Machine on August 15, 2000 and attached hereto as Exhibit K, indicates that the Sweet s CD is updated and distributed quarterly. As reflected in the Bus Declaration (Exhibit F), the 2000 Sweet s CD was 15

16 even more widely distributed than the 2002 Sweet s Catalog, which, as discussed above, was made available in 2002 to over 60,000 industry professionals (Bus Declaration 8 and 10-11). Accordingly, Petitioner respectfully submits that the Sweet s CD was also disseminated and made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, could have located it more than one year prior to the effective filing date of the 834 Patent. Therefore, the Sweet s CD, and the representations of the MPH080 Panel appearing therein, are prior art to the 834 Patent under 35 U.S.C. 102(b). The portions of the 2002 Sweet s Catalog, ATAS Brochure, and Sweet s CD showing the MPH080 Panel are referred to herein as the MPH080 Publications. E. Centria Model FWDS-59 Panel The Centria Model FWDS-59 panel (hereafter FWDS-59 Panel ) is shown in the 2002 Sweet s Catalog and the ATAS Brochure (Exhibit D, see pp. 12 and 13). As set forth above in Sections X.A.3. and X.A.4, respectively, the 2002 Sweet s Catalog and the ATAS Brochure are prior art to the 834 Patent under 35 U.S.C. 102(b). Therefore, the FWDS-59 Panel, as it appears in these publications, is prior art to the 834 Patent under 35 U.S.C. 102(b). XI. OVERVIEW OF THE 834 PATENT A. Background The 834 Patent claims [t]he ornamental design for a building panel, as shown and described. The 834 Patent discloses seven embodiments of a building panel design. B. Prosecution and Enforcement History U.S. Design Patent Application No. 29/203,806 was filed on April 4, 2004 with 54 figures consisting of eighteen (18) embodiments of a design for a wall panel. 16

17 A restriction requirement was mailed on August 25, 2005 (hereinafter Restriction Requirement ), requiring restriction to one of the inventions of Group I, Group II, Group III, and Group IV. Group III included embodiment 13 disclosed in original figures A response to the Restriction Requirement was filed on September 15, 2005, in which Applicants elected the invention of Group I with traverse, arguing that Group I and Group II should be combined. A Notice of Allowability was mailed on November 29, 2005, which included an Examiner s amendment and comment. The Notice of Allowability states that a telephone interview occurred on November 28, 2005, during which the Applicants and Examiner agreed to combine Groups I and II, consisting of original figures 1-36 and 43 through 54, and Applicants agreed to place the additional attached panel in broken lines in the appropriate figures. In view of the telephone interview, Groups III and IV, consisting of figures 37 through 42, were canceled, and the figure designations and descriptions were adjusted accordingly. The embodiment of canceled Group III was filed on February 10, 2006 as divisional U.S. Design Patent Application No. 29/253,797, which later issued on March 20, 2007 as U.S. Design Patent No. D538,948. An Amendment After Notice of Allowance was filed on February 2, Applicants submitted amendments to the specification and drawings to make corrections requested in the Notice of Allowability. Concurrently therewith, Applicants submitted a Supplemental IDS citing new prior art, which is attached as Exhibit I hereto, and canceled original figures in view of that newly submitted prior art reference. Canceled original figures are attached hereto as Exhibit J. The Issue Fee was paid on February 28,

18 On July 6, 2006, a Response to Rule 312 Communication was mailed, in which the Examiner entered the Amendment After Notice of Allowance. The Examiner indicated that the prior art submitted by the Applicant on February 2, 2006 had not been considered. 1 On August 16, 2006, Applicants filed a payment authorization for a large entity fee, stating that they had inadvertently claimed small entity status when filing the application. A Petition Decision was mailed on March 13, 2008, accepting the fee deficiency submission. On September 18, 2012, a Report on the Filing or Determination of an Action Regarding Patent or Trademark was entered, identifying U.S. Design Patent Nos. D527,834 and D538,948 as the subject of an infringement action filed by Centria against Cleburne Sheet Metal in the United States District Court for the Western District of Pennsylvania. XII. STATEMENT OF REASON FOR THE RELIEF REQUESTED UNDER 37 C.F.R (a)(2) AND (b)(4), SHOWING THAT THERE IS A REASONABLE LIKELIHOOD THAT THE REQUESTER WILL PREVAIL UNDER 35 U.S.C. 314 A. The Applicable Legal Standards 1. Obviousness Proposed rejections set forth below represent a finding of obviousness under 35 U.S.C. 103(a). In the context of a design patent, the fact finder employs a two step process to determine whether one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design: First, "one must find a single reference, 'a something in existence, the design characteristics of which are basically the same as the claimed design.'" Durling, 101 F.3d [100,] 103 [(Fed. Cir. 1996)] (quoting In re Rosen, 673 F.2d 388, 391 (CCPA 1982). Second, "other references may be used to modify [the primary 1 The Applicant Admitted Prior Art, therefore, should not be considered as being of record for purposes of evaluating whether the USPTO has previously considered any grounds of rejection under 35 U.S.C. 102 or 103 relating to this reference. 18

19 reference] to create a design that has the same overall visual appearance as the claimed design." Id. However, the secondary references may only be used to modify the primary reference if they are so related to the primary reference that the appearance of certain ornamental features in one would suggest the application of those features to the other. Id., quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996). Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, (Fed. Cir. 2012). The Federal Circuit s decision in Titan Tire Corp. v. Case New Holland, 566 F.3d 1372 (Fed. Cir. 2009), is one of the most recent Federal Circuit opinions applying the basically the same standard and provides a helpful illustration of the Federal Circuit s view on the acceptable degree of difference between the claimed design and potential primary references. In Titan Tire, the court held that the District Court did not abuse its discretion in concluding that each of three prior art references were basically the same as the patent in question, US Patent No. D360,862. Id at The designs at issue in the Titan Tire case are reproduced below with the claimed design on the left and the three prior art references on the right. 19

20 FIG. 2A of the 683 Patent FIG. 1 of the 862 Patent FIG. 2 of the 814 Patent As is clear from a comparison of the drawings, there are differences between the claimed design and the prior art, including, for example, the overall height-to width ratio of the tires, the depth 20

21 of the treads, the width of the lugs, the spacing of the lugs, the angle of the lugs, changes in curvature of the lugs along their length, and the shape of the outer edge of each lug. Despite these differences, the Federal Circuit concluded that the design characteristics of each of the three prior art references was basically the same as the claimed design, and therefore, all three references were appropriate primary references for purposes of a potential 103 rejection. Id at If a hypothetical prior art reference is created through combination of one or more secondary references and the primary reference, the prior art reference and the claimed design are then analyzed from the point of view of the ordinary observer. Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1241 (Fed. Cir. 2009) ( For design patents, the role of one skilled in the art in the obviousness context lies only in determining whether to combine earlier references to arrive at a single piece of art for comparison with the potential design or to modify a single prior art reference. Once that piece of prior art has been constructed, obviousness, like anticipation, requires application of the ordinary observer test, not the view of one skilled in the art ). The ordinary observer test looks at whether an ordinary observer, familiar with the prior art, would be deceived into believing that the prior art reference and the claimed design are the same. Crocs, Inc. v. Int l Trade Com n, 598 F.3d 1294, 1303 (Fed. Cir. 2010) (citing Egyptian Goddess v. Swisa, 534 F.3d 665, 681 (Fed. Cir. 2008)). The ordinary observer test requires consideration of the prior art and claimed design as a whole. See Egyptian Goddess, 534 F.3d at 675. The mere presence of inconsequential or de minimis differences between the claimed design and the hypothetical prior art reference created through combination of one or more 21

22 secondary references and the primary reference is insufficient to overcome a finding that the claimed design is unpatentable under 35 U.S.C. 103(a). In re Lamb, 286 F.2d 610, (CCPA 1961); MPEP (B) 2. Anticipation Some of the proposed grounds of rejection set forth below request a finding of anticipation under 35 U.S.C. 102(b). In the context of a design patent, the ordinary observer test discussed above is the sole test for determining anticipation. Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d at A prior art reference therefore anticipates a claimed design under 35 U.S.C. 102(b) if an ordinary observer, familiar with the prior art, would be deceived into believing the prior art reference and the claimed design are the same. Crocs, Inc. v. Int l Trade Com n, 598 F.3d 1294, 1303 (Fed. Cir. 2010) (citing Egyptian Goddess v. Swisa, 534 F.3d 665, 681 (Fed. Cir. 2008)). 3. Multiple Embodiments The 834 Patent comprises a claimed design having seven embodiments. Multiple embodiments may be included in the same design patent only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391 (CPA 1959). Accordingly, each proposed ground of rejection in the Petition will hereafter focus on a single embodiment of the claimed design of the 834 Patent, it being understood that a determination that one embodiment of the 834 Patent is unpatentable would render the entire 834 Patent unpatentable. In re Klein, 987 F.2d 1569, 1570 (Fed. Cir. 1993). B. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on any of the MPS120 Publications in view of any of the BKR160 Publications 22

23 The MPS120 Panel, as shown in the MPS120 Publications (Exhibits C and D), and the BKR160 Panel, as shown in the BKR160 Publications (Exhibit D), are prior art under 35 U.S.C. 102(b), as previously discussed above. Neither the MPS120 Panel nor the BKR160 Panel was considered by the Examiner during examination of the 834 Patent. The MPS120 Panel, as shown in the MPS120 Publications, in view of the BKR160 Panel, as shown in the BKR160 Publications, is more similar in overall visual appearance than the references cited during prosecution of the 834 Patent and is non-cumulative. 2 As discussed in the detailed analysis below, the MPS120 Panel, as shown in any of the MPS120 Publications, is a suitable primary reference having design characteristics that are basically the same as the claimed design of the 834 Patent. Durling, 101 F.3d at 103. One of ordinary skill in the art would look to the BKR160 Panel, as shown in any of the BKR160 Publications, to modify the MPS120 Panel because both references are metal wall panels. All non-de minimis differences between the claimed design and the MPS120 Panel are shown in the BKR160 Panel. From the point of view of an ordinary observer, a hypothetical prior art reference created by modifying the MPS120 Panel as shown by the BKR160 Panel would have the same overall visual appearance as the claimed design of the 834 Patent. Therefore, the claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as being obvious over the MPS120 Panel in view of the BKR160 Panel. 1. MPS120 Panel as compared to FIGS of the 834 Patent The ATAS Web Page prior art reference (Exhibit C) and the 2002 Sweet s Catalog and ATAS Brochure prior art references (Exhibit D, pp. 5-7 and 9) show the MPS120 Panel in 2 Petitioner notes that the BKR160 Panel is similar to the design of the IW60A Panel, which was disclosed in a reference considered by the Examiner during prosecution of the 834 Patent. The BKR160 Panel is believed to be closer in overall visual appearance to the claimed design of the 834 Patent because, as discussed in greater detail later in this Petition, it has an overall length and length-to-depth ratio that is more similar to the claimed design. 23

24 axonometric, partially extruded views. Petitioner respectfully submits that one of ordinary skill in the art could easily understand and visualize the appearance of other views of the MPS120 Panel from these axonometric, partially extruded views, and/or from profile views. In fact, until recently, the profile view was often the only technical drawing provided on product data sheets. See, e.g., Exhibit H (Centria Technical Data Manual dated December, 1996, showing IW60A Panel and additional panels in profile view). In order to assist in comparing the MPS120 Panel to all of the views of the seventh embodiment of the claimed design, Petitioner has prepared drawings showing perspective, profile, front, top and bottom views which accurately depict the MPS120 Panel design to scale and were created from the drawings appearing in the MPS120 Publications. These drawings are shown below, side-by-side with the corresponding figures of the claimed design. Any difference in width between the MPS120 Panel and FIGS. 37 and of the claimed design are irrelevant, as the claimed design is broken on the left side to indicate indefinite length. 24

25 25

26 26

27 2. Any of the MPS120 Publications, which show the MPS120 Panel, is a suitable primary reference, having the same basic design characteristics as the claimed design As shown, the design of the MPS120 Panel, which appears in all of the MPS120 Publications, is a suitable primary reference because it has the same basic design characteristics as the seventh embodiment of the claimed design. Apple, Inc., 678 F.3d at The MPS120 Panel and the seventh embodiment of the claimed design share the following visual features: 1. planar upper and lower faces that are coplanar and are roughly equal in height; 2. a U-shaped central recess, protruding inwardly from the upper and lower faces and having a planar floor connected to the upper and lower faces by linear upper and lower recess legs, respectfully; 3. an upper end having a planar floor that is coplanar with the floor of the central recess and is connected to the upper face by a linear upper end leg; 4. a lower end having a linear lower end leg that extends outwardly from the lower face and a inwardly curved tip located at the end of the lower end leg that curls upwardly; 27

28 5. the lower recess leg intersects the lower face at the same angle as the upper end leg intersects the upper face and the angle at which the upper recess leg intersects the upper face is the same as the angle at which the lower end leg intersects lower upper face; and 6. when connected to another panel, the upper and lower ends combine to create a recess that is very similar in shape to the central recess (see FIG. 42). The MPS120 Panel has the following differences from the seventh embodiment of the claimed design: 1. the central recess of the MPS120 Panel has a symmetrical shape, whereas the central recess of the claimed design has an asymmetrical shape in which the lower recess leg intersects the lower face at a shallower angle that the upper leg intersects the upper face; and 2. the ratio of the depth D of the central recess and the upper end floor to the overall length L of the panel is less in the MPS120 Panel than in the claimed design. The differences between the claimed design and the MPS120 Panel do not result in an overall appearance that is substantially different and patentably distinct from the MPS120 Panel. Presence of invention is as essential to granting of design patent as to granting of mechanical patent; obvious changes in arrangement and proportioning are no more patentable in one case than in the other. In re Stevens, 173 F.2d 1015, 1019 (CPA 1949). Further, the differences between the claimed design and the MPS120 Panel must be evaluated based on all of the views of the claimed design. Egyptian Goddess, Inc., 534 F.3d at 675. Although the above-described differences are discernible in the side view (FIG. 38), the designs are much less distinguishable from one another in the other views. 28

29 In addition, by virtue of the restriction requirement set forth in the Office Action mailed on August 25, 2005 and the Reply submitted to the Office on September 15, 2005 during examination of the 834 Patent, both the Patentee and the Examiner acknowledged that all claimed differences between the seven embodiments of the claimed design of the 834 Patent are patentably indistinct. In re Rubinfield, 270 F.2d 391 (CPA 1959) (multiple embodiments may be included in the same design patent only if they are patentably indistinct). Accordingly, it is respectfully submitted that the degree of similarity required to conclude that the design characteristics of the prior art are basically the same as the claimed design should be less stringent in this case. For all of the reasons set forth above, the MPS120 Panel clearly has design characteristics that are basically the same as the claimed design, and therefore any of the MPS120 Publications is a proper primary reference. 3. Any of the BKR160 Publications, which show the BKR160 Panel, is a suitable secondary reference for modifying any of the MPS120 Publications The BKR160 Panel, which appears in all of the BKR160 Publications, is a suitable secondary reference for modifying the MPS120 Panel, which is shown in all of the MPS120 Publications, to create a design that has the same overall visual appearance as the claimed design. The BKR160 Panel and the MPS120 Panel are both designs for building panels, and both designs have an overall planar shape with two opposed ends for interlocking with additional building panels. As shown below, the panel design of the BKR160 Panel includes certain ornamental features, such as recessed regions having a particular shape and size, opposed ends having a particular shape, and a particular overall length. The BKR160 Panel, which is shown in all of the BKR160 Publications, is a suitable secondary reference because it is so related to the MPS120 Panel that the appearance of these recessed regions, opposed ends, and overall 29

30 dimensions of the BKR160 Panel would suggest the application of those features to the MPS120 Panel. Apple, Inc., 678 F.3d at The 834 Patent is unpatentable under 35 U.S.C. 103(a) over the MPS120 Panel in view of the BKR160 Panel The claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as being obvious over the MPS120 Panel, as shown in any of the MPS120 Publications, in view of the BKR160 Panel, as shown in any of the BKR160 Publications, because the MPS120 Panel modified by the BKR160 Panel has the same overall visual appearance as the seventh embodiment of the claimed design, and an ordinary observer, familiar with the prior art, would be deceived into believing the seventh embodiment of the claimed design is the same as the MPS120 Panel modified by the BKR160 Panel. Crocs, Inc., 598 F.3d at As previously discussed, the appearance of the MPS120 Panel differs from the appearance of the seventh embodiment of the claimed design in only two significant respects: (a) the precise shape of the central recess, and (b) the ratio of the depth of the central recess to the overall length of the panel. The BKR160 Panel, as shown in all of the BKR160 Publications (Exhibit D, pp. 10 and 11) includes recessed portions that are virtually identical to the central recess of the claimed design and has a depth-to-length ratio that is also virtually identical to the claimed design, as shown below. Therefore, the MPS120 Panel, modified with the ornamental features of the BKR160 Panel, including the shape and size of the recessed regions, the shape of the opposed ends, and 30

31 the overall length of the panel, creates a building panel design that has the same overall visual appearance as the seventh embodiment of the claimed design. In addition, the overall appearance of the BKR160 Panel is sufficiently similar to the MPS120 Panel such that the appearance of certain ornamental features in the BKR160 Panel would suggest the application of those features to the MPS120 Panel. It is respectfully submitted that any differences between the claimed design and the MPS120 Panel modified by the BKR160 Panel are de minimis and would be imperceptible to an ordinary observer familiar with the prior art. Accordingly, the MPS120 Panel modified by the BKR160 Panel has the same overall visual appearance as the seventh embodiment of the claimed design, and an ordinary observer, familiar with the prior art, would be deceived into believing the seventh embodiment of the claimed design is the same as the MPS120 Panel modified by the BKR160 Panel. The claim of the 834 Patent is therefore unpatentable under 35 U.S.C. 103(a) as being obvious over the MPS120 Panel in view of the BKR160 Panel. Based on the foregoing arguments, Petitioner has established that there is a reasonable likelihood that it will prevail upon consideration of this proposed ground of rejection. C. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on any of the MPS120 Publications in view of the IW60A Panel The MPS120 Panel, as shown in any of MPS120 Publications (Exhibits C and D), and the IW60A Panel, as shown in the Robertson Brochure (Exhibit G) are prior art under 35 U.S.C. 102(b), as previously discussed above. The IW60A Panel was disclosed in a reference cited during prosecution of the 834 Patent (the Robertson Brochure, Exhibit G, p. 9), but the MPS120 Panel, as disclosed in any of the MPS120 Publications, was not considered by the Examiner during examination of the 834 Patent. 31

32 As discussed above in Section XII.B., the MPS120 Panel, as shown in any of the MPS120 Publications, is a suitable primary reference. Further, the design features of the IW60A Panel, including the size and shape of the recess portions, are substantially the same as those of the BKR160 Panel. The overall length of the IW60A Panel is shorter than that of the BKR160 Panel, however Petitioner respectfully submits that this and any other differences between the IW60A Panel and the BKR160 Panel are de minimis. Accordingly, Petitioner respectfully submits that the remarks made above in Section XII.B. with regard to the MPS120 Panel modified by the BKR160 Panel are equally applicable to the MPS120 Panel modified by the IW60A Panel. For these reasons, the IW60A Panel is a suitable secondary reference, and the MPS120 Panel modified by the IW60A Panel has the same overall visual appearance as the seventh embodiment of the claimed design. An ordinary observer, familiar with the prior art, would be deceived into believing the seventh embodiment of the claimed design is the same as the MPS120 Panel modified by the IW60A Panel. The claim of the 834 Patent is therefore unpatentable under 35 U.S.C. 103(a) as being obvious over the MPS120 Panel in view of the IW60A Panel. Based on the foregoing arguments, Petitioner has established that there is a reasonable likelihood that it will prevail upon consideration of this proposed ground of rejection. D. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on any of the BKR160 Publications (Anticipation) The BKR160 Panel, as shown in all of the BKR160 Publications (Exhibit D), is prior art under 35 U.S.C. 102(b), as previously discussed above. The BKR160 Panel was not considered by the Examiner during examination of the 834 Patent. The BKR160 panel is more 32

33 similar in overall visual appearance than the references cited during prosecution of the 834 Patent and is non-cumulative. As discussed in the detailed analysis below, from the point of view of an ordinary observer familiar with the prior art, the BKR160 Panel has the same overall visual appearance as the claimed design and the ordinary observer would be deceived into believing the BKR160 Panel and the claimed design are the same. Therefore, the claim of the 834 Patent is unpatentable under 35 U.S.C. 102(b) as being anticipated by the BKR160 Panel, as shown in any of the BKR160 Publications. 1. The BKR160 Panel as compared to FIGS of the 834 Patent The 2002 Sweet s Catalog and ATAS Brochure prior art references (Exhibit D, pp. 10 and 11) show profile and axonometric views of the BKR160 Panel. As previously discussed, Petitioner respectfully submits that one of ordinary skill in the art could easily understand and visualize the appearance of other views of the BKR160 Panel from these views. In order to assist in comparing the BKR160 Panel to the claimed design, Petitioner has prepared drawings showing perspective, profile, front, top and bottom views which accurately depict the BKR160 Panel design to scale. These drawings are shown below, side-by-side with the corresponding figures of the claimed design. Any difference in width between the BKR160 Panel and FIGS. 37 and of the claimed design are irrelevant, as the claimed design is broken on the left side to indicate indefinite length. 33

34 34

35 2. The 834 Patent is unpatentable under 35 U.S.C. 102(b) as being anticipated by the BKR160 Panel, as shown in any of the BKR160 Publications The design of the BKR160 Panel has the same basic design characteristics as the seventh embodiment of the claimed design. Most notably, the BKR160 Panel includes recessed portions that are virtually identical to the recesses of the claimed design and has a depth-to-length ratio 35

36 that is also virtually identical to the claimed design. As shown below, the BKR160 Panel shares these same design characteristics with many of the embodiments of the claimed design. As shown, the primary differences between the third through seventh embodiments of the claimed design and the BKR160 Panel are the numbers and locations of the recessed regions. However, by virtue of the restriction requirement set forth in the Office Action mailed on August 25, 2005 and Reply submitted to the Office on September 15, 2005, both the Patentee and the Examiner acknowledged that all claimed differences between all seven embodiments of the claimed design of the 834 Patent are patentably indistinct. In re Rubinfield, 270 F.2d 391 (CPA 1959) (multiple embodiments may be included in the same design patent only if they are 36

37 patentably indistinct). Therefore, both the Patentee and Examiner acknowledged that the different numbers and locations of the recessed regions among the embodiments are patentably indistinct variations of the same claimed design. Stated another way, the patentee has admitted that a panel having one recessed region is patentably indistinct from a panel having two recessed regions. Petitioner respectfully submits that a panel having three recessed regions (i.e., the BKR160 Panel) is also a patentably indistinct variation of the claimed design. In fact, due to the positions taken by the patentee during examination of the 834 Patent, petitioner respectfully submits that patentee should be stopped from arguing that the BKR160 Panel is patentably distinct from the claimed design of the 834 Patent. Based on the foregoing, an ordinary observer, familiar with the prior art, would be deceived into believing the BKR160 Panel and the claimed design, which Petitioner submits includes the patentably indistinct variant having a third recessed region, are the same. Therefore, the claim of the 834 Patent is unpatentable under 35 U.S.C. 102(b) as being anticipated by the BKR160 Panel, as shown in any of the BKR160 Publications. Therefore, Petitioner has established that there is a reasonable likelihood that it will prevail upon consideration of this proposed ground of rejection. E. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on any of the BKR160 Publications (Obviousness) In the event that the design of the BKR160 Panel is found to not anticipate the claimed design under 35 U.S.C. 102(b), the claimed design is also unpatentable under 35 U.S.C. 103(a) as being obvious over the BKR160 Panel, as shown in any of the BKR160 Publications, alone. 37

38 As discussed above, both the Patentee and Examiner acknowledged that the different numbers and locations of the recessed regions among the embodiments of the claimed design are patentably indistinct variations of the same claimed design. As can be seen, the removal or rearrangement of recessed regions from embodiments of the claimed design results in other embodiments of the claimed design (e.g., removing the right recessed region from the fifth embodiment results in the seventh embodiment; removing the center recessed region from the fifth embodiment results in the sixth embodiment). Petitioner respectfully submits that simply removing one or two recessed regions from the design of the BKR160 Panel results in all of the embodiments of the claimed design, and that so removing one or two recessed regions from the design of the BKR160 Panel is an obvious modification that does not create a patentable distinction, just as the removal or rearrangement of recessed regions amongst the embodiments of the claimed design are patentably indistinct modifications. For example, removing the right recessed region of the BKR160 Panel results in the third embodiment; removing the left recessed region of the BKR160 Panel results in the fifth embodiment; removing the center recessed region of the BKR160 Panel results in the fourth embodiment; and removing the left and right recessed regions of the BKR160 Panel results in the seventh embodiment. Again, obvious changes in arrangement and proportioning are no more patentable in design patents than they are in mechanical patents. In re Stevens, 173 F.2d 1015, 1019 (CPA 1949). An ordinary observer, familiar with the prior art, would be deceived into believing the design of the BKR160 Panel, which Petitioner submits includes the obvious and patentably indistinct variants having one or two of the recessed regions removed, and the claimed design, 38

39 are the same. Therefore, the claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as being obvious over the BKR160 Panel, as shown in any of the BKR160 Publications. Based on the foregoing arguments, Petitioner has established that there is a reasonable likelihood that it will prevail upon consideration of this proposed ground of rejection. F. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on any of the BKR160 Publications in view of any of the MPS120 Publications The MPS120 Panel, as shown in any of the MPS120 Publications (Exhibits C and D), and the BKR160 Panel, as shown in any of the BKR160 Publications (Exhibit D), are prior art under 35 U.S.C. 102(b), as previously discussed above in Section XII.B. Neither the BKR160 Panel or the MPS120 Panel was considered by the Examiner during examination of the 834 Patent. The BKR160 Panel in view of the MPS120 Panel is more similar in overall visual appearance than the references cited during prosecution of the 834 Patent and is non-cumulative. The BKR160 Panel, as shown in any of the BKR160 Publications, is a suitable primary reference for the reasons discussed above with regard to the claim of the 834 Patent being anticipated by the BKR160 Panel. Similarly, the MPS120 Panel, as shown in any of the MPS120 Publications, is a suitable secondary reference for modifying the MPS120 Panel to create a design that has the same overall visual appearance as the claimed design. The BKR160 Panel and the MPS120 Panel are both designs for building panels, and both designs have an overall planar shape with two opposed ends for interlocking with additional building panels. As previously shown, the design of the MPS120 Panel includes certain ornamental features, such as a single, centrally located recessed region. The MPS120 Panel is a suitable secondary reference because it is so related to the BKR160 Panel that the appearance of the single, centrally located 39

40 recessed region would suggest the application of that feature to the BKR160 Panel. Apple, Inc., 678 F.3d at The claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as being obvious over the BKR160 Panel, as shown in any of the BKR160 Publications, in view of MPS120, as shown in any of the MPS120 Publications, because the BKR160 Panel modified by the MPS120 Panel to have a single, centrally located recessed region instead of three recessed regions has the same overall visual appearance as the seventh embodiment of the claimed design. It is respectfully submitted that any differences between the claimed design and the BKR160 Panel modified by the MPS120 Panel are de minimis and would be imperceptible to an ordinary observer familiar with the prior art, and the ordinary observer would be deceived into believing the seventh embodiment of the claimed design is the same as the BKR160 Panel modified by the MPS120 Panel. Crocs, Inc., 598 F.3d at The claim of the 834 Patent is therefore unpatentable under 35 U.S.C. 103(a) as being obvious over the BKR160 Panel, as shown in any of the BKR160 Publications, in view of the MPS120 panel, as shown in any of the MPS120 Publications. Based on the foregoing arguments, Petitioner has established that there is a reasonable likelihood that it will prevail upon consideration of this proposed ground of rejection. 40

41 G. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on any of the MPH080 Publications in view of any of the BKR160 Publications The MPH080 Panel, as shown in any of the MPH080 Publications (Exhibits D and E), and the BKR160 Panel, as shown in any of the BKR160 Publications (Exhibit D), are prior art under 35 U.S.C. 102(b), as previously discussed above. Neither the MPH080 Panel or the BKR160 Panel was considered by the Examiner during examination of the 834 Patent. The MPH080 Panel, as shown in any of the MPH080 Publications, in view of the BKR160 Panel, as shown in any of the BKR160 Publications, is more similar in overall visual appearance than the references cited during prosecution of the 834 Patent and is non-cumulative. As discussed below, the MPH080 Panel, as shown in any of the MPH080 Publications, is a suitable primary reference having design characteristics that are basically the same as the claimed design of the 834 Patent. Durling, 101 F.3d at 103. One of ordinary skill in the art would look to the BKR160 Panel, as shown in any of the BKR160 Publications, to modify the MPH080 Panel because both references are metal wall panels. All non-de minimis differences between the claimed design and the MPH080 Panel are shown in the BKR160 Panel. From the point of view of an ordinary observer, a hypothetical prior art reference created by modifying the MPH080 Panel as shown by the BKR160 Panel would have the same overall visual appearance as the claimed design. Therefore, the claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as being obvious over the MPH080 Panel in view of the BKR160 Panel. 1. The MPH080 Panel as compared to FIGS of the 834 Patent The MPH080 Panel shows a profile of an extruded wall panel. As previously discussed with respect to the MPS120 Panel, Petitioner respectfully submits that one of ordinary skill in the art could easily understand and visualize the appearance of other views of the MPH080 panel 41

42 from the profile view. In addition, Petitioner respectfully submits that one of ordinary skill in the art could easily understand and visualize the appearance of two (or more) interlocked MPH080 Panels, a point that is also demonstrated by the inclusion of such views for each embodiment of the 834 Patent (i.e., FIGS. 6, 12, 18, 24, 30, and 42). Petitioner further submits that such interlocked panels represent the overall visual appearance of the MPH080 Panel as envisioned by one of ordinary skill in the art and as they would actually appear when installed on a building wall. In order to assist in comparing the design of the MPH080 Panel to the claimed design, Petitioner has prepared drawings showing perspective, front, rear, top and bottom views which accurately depict two interlocked MPH080 Panels to scale. These drawings are shown below, side-by-side with the corresponding figures of the claimed design. Again, any differences in length between the MPS120 Panel and FIGS. 37 and of the claimed design are irrelevant, as the claimed design is broken on the left side to indicate indefinite length. 42

43 43

44 2. Any of the MPH080 Publications, which show the MPH080 Panel, is a suitable primary reference, having the same basic design characteristics as the claimed design 44

45 As shown, the design of the MPH080 Panel, which appears in all of the MPH080 Publications, is a suitable primary reference because when two MPH080 Panels are interlocked a configuration that one of ordinary skill in the art would readily envision and in which the panels are ultimately installed on a building wall they have the same basic design characteristics as the seventh embodiment of the claimed design. Apple, Inc., 678 F.3d at Specifically, two interlocked MPH080 Panels and the seventh embodiment of the claimed design share the following visual features, again with reference to the annotated FIG. 38: 1. planar upper and lower faces that are coplanar and are roughly equal in height; 2. a U-shaped central recess, protruding inwardly from the upper and lower faces and having a planar floor connected to the upper and lower faces by linear upper and lower recess legs, respectfully; 3. an upper end having a planar floor that is coplanar with the floor of the central recess and is connected to the upper face by a linear upper end leg; 4. a lower end having a linear lower end leg that extends outwardly from the lower face and a inwardly curved tip located at the end of the lower end leg; 45

46 5. the lower recess leg intersects the lower face at the same angle as the upper end leg intersects the upper face and the angle at which the upper recess leg intersects the upper face is the same as the angle at which the lower end leg intersects lower upper face; and 6. when connected to another panel, the upper and lower ends combine to create a recess that is very similar in shape to the central recess (see FIG. 42). The MPH080 Panel has the following differences from the seventh embodiment of the claimed design: 1. the central recess of the two interlocked MPH080 Panels has a symmetrical shape, whereas the central recess of the claimed design has an asymmetrical shape in which the lower recess leg intersects the lower face at a shallower angle that the upper leg intersects the upper face; 2. the ratio of the depth D of the central recess and the upper end floor to the overall length L of the two interlocked MPH080 Panels is greater than in the claimed design; and 3. the lower side of the central recess of the two interlocked MPH080 Panels includes additional structure that enables the two panels to interlock. As previously discussed, in view of the many embodiments included in the 834 Patent, Petitioner respectfully submits that the degree of similarity required to conclude that the design characteristics of the prior art are basically the same as the claimed design should be less stringent in this case. Also, the differences between the claimed design and the MPH080 Panel must be evaluated based on all of the views of the claimed design, Egyptian Goddess, Inc.,

47 F.3d at 675, and the designs are much less distinguishable from one another in views other than the profile view. For all of the reasons set forth above, MPH080 clearly has design characteristics that are basically the same as the claimed design, and therefore, is a proper primary reference. 3. Any of the BKR160 Publications, which show the BKR160 panel, is a suitable secondary reference for modifying any of the MPH080 Publications The BKR160 Panel, which appears in all of the BKR160 Publications, is a suitable secondary reference for modifying the MPH080 Panel, which is shown in all of the MPH080 Publications, to create a design that has the same overall visual appearance as the claimed design. The MPH080 Panel and the BKR160 Panel are both designs for building panels, and both designs have an overall planar shape with two opposed ends for interlocking with additional building panels. As previously discussed, the panel design of the BKR160 Panel includes certain ornamental features, such as recessed regions having a particular shape and size, opposed ends having a particular shape, and a particular overall length. The BKR160 Panel, which is shown in all of the BKR160 Publications, is a suitable secondary reference because it is so related to the MPH080 Panel that the appearance of these recessed regions, opposed ends, and overall dimensions of the BKR160 Panel would suggest the application of those features to the MPH080 Panel. Apple, Inc., 678 F.3d at The 834 Patent is unpatentable under 35 U.S.C. 103(a) as obvious over the MPH080 Panel in view of the BKR160 Panel The claim of the 834 Patent is unpatentable under 35 U.S.C. 103(a) as being obvious over the MPH080 Panel, as shown in any of the MPH080 Publications, in view of the BKR160 Panel, as shown in any of the BKR160 Publications, because the MPH080 Panel modified by the BKR160 Panel has the same overall visual appearance as the seventh embodiment of the claimed 47

48 design, and an ordinary observer, familiar with the prior art, would be deceived into believing the seventh embodiment of the claimed design is the same as the MPH080 Panel modified by the BKR160 Panel. Crocs, Inc., 598 F.3d at As previously discussed, the appearance of the two interlocked MPH080 Panels differs from the appearance of the seventh embodiment of the claimed design in only three significant respects. Two of these differences, (a) the precise shape of the recess that is formed by the two interlocked panels, and (b) the ratio of the depth of the recess to the overall length of the two interlocked panels, are taught by the BKR160 Panel. As explained above, the BKR160 Panel includes recessed portions that are virtually identical to the central recess of the claimed design and has a depth-to-length ratio that is also virtually identical to the claimed design. With regard to the third difference, the additional structure on the lower side of the central recess of the two interlocked MPH080 Panels, Petitioner respectfully submits that the additional structure would be treated as de minimis by an ordinary observer because this additional structure is hidden when the panels are installed on a building, and therefore, would be visually unimportant to an ordinary observer. Examples of installations of MPH080 Panels and Centria model CS-620 panels, which are believed to be a commercial product based on the seventh embodiment of the claimed design, are shown below: 48

49 The argument that the structures used to connect the panels together should be treated as de minimis is further supported by the fact that these same structures are disclaimed in the claimed design of the 834 Patent and the fact that every embodiment of the claimed panel is shown in a view in which it is interlocked with a second panel (see, e.g., FIG. 42 of Exhibit A). Therefore, the MPH080 Panel, modified with the ornamental features of the BKR160 Panel, including the shape and size of the recessed regions, the shape of the opposed ends, and the overall length of the panel, creates a building panel design that has the same overall visual appearance as the seventh embodiment of the claimed design. In addition, the overall appearance of the BKR160 Panel is sufficiently similar to the MPH080 Panel such that the appearance of certain ornamental features in the BKR160 Panel would suggest the application of those features to the MPH080 Panel. It is respectfully submitted that any differences between 49

50 the claimed design and the MPH080 Panel modified by the BKR160 Panel are de minimis and would be imperceptible to an ordinary observer familiar with the prior art. Accordingly, the MPH080 Panel modified by the BKR160 Panel has the same overall visual appearance as the seventh embodiment of the claimed design, and an ordinary observer, familiar with the prior art, would be deceived into believing the seventh embodiment of the claimed design is the same as the MPH080 Panel modified by the BKR160 Panel. The claim of the 834 Patent is therefore unpatentable under 35 U.S.C. 103(a) as being obvious over the MPH080 Panel in view of the BKR160 Panel. Based on the foregoing arguments, Petitioner has established that there is a reasonable likelihood that it will prevail upon consideration of this proposed ground of rejection. H. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on Any of the MPH080 Publications in View of the IW60A Panel The MPH080 Panel, as shown in the MPH080 Publications (Exhibits D and E), and the IW60A Panel, as shown in the Robertson Brochure (Exhibit G, p. 9) are prior art under 35 U.S.C. 102(b), as discussed above. The IW60A Panel was disclosed in a reference cited during prosecution of the 834 Patent (the Robertson Brochure, Exhibit G, p. 9), but the MPH080 Panel, as disclosed in any of the MPH080 Publications, was not considered by the Examiner during examination of the 834 Patent. The MPH080 Panel in view of the IW60A Panel is more similar in overall visual appearance than the references cited during prosecution of the 834 Patent and is non-cumulative. As discussed above, the MPH080 Panel is a suitable primary reference. Further, the design features of the IW60A Panel, including the size and shape of the recess portions, are substantially the same as those of the BKR160 Panel. The overall length of the IW60A Panel is 50

51 shorter than that of the BKR160 Panel, however Petitioner respectfully submits that this and any other differences between the IW60A Panel and the BKR160 Panel are de minimis. Accordingly, Petitioner respectfully submits that the remarks made above with regard to the MPH080 Panel modified by the BKR160 Panel are equally applicable to the MPH080 Panel modified by the IW60A Panel. For these reasons, the MPH080 Panel modified by the IW60A Panel has the same overall visual appearance as the seventh embodiment of the claimed design, and an ordinary observer, familiar with the prior art, would be deceived into believing the seventh embodiment of the claimed design is the same as the MPH080 Panel modified by the IW60A Panel. The claim of the 834 Patent is therefore unpatentable under 35 U.S.C. 103(a) as being obvious over the MPH080 Panel in view of the IW60A Panel. Based on the foregoing arguments, Petitioner has established that there is a reasonable likelihood that it will prevail upon consideration of this proposed ground of rejection. I. There is a Reasonable Likelihood that the Petitioner Will Prevail Upon Consideration of Its Proposed Grounds of Rejection Based on the FWDS-59 Panel (Anticipation) The FWDS-59 Panel, as shown in the 2002 Sweet s Catalog (Exhibit D, pp ), is prior art under 35 U.S.C. 102(b), as discussed above. The FWDS-59 Panel was not considered by the Examiner during examination of the 834 Patent. The FWDS-59 Panel is more similar in overall visual appearance than the references cited during prosecution of the 834 Patent and is non-cumulative. 3 As discussed below, from the point of view of an ordinary observer familiar with the prior art, the FWDS-59 Panel has the same overall visual appearance as the claimed design and 3 Petitioner notes that, as discussed in greater detail below, FWDS-59 is the same panel design that was shown in the admitted prior art that was not considered by the Examiner during examination of the 834 Patent. Compare Exhibit D, pp. 12 and 13 and Exhibit I. 51

52 the ordinary observer would be deceived into believing the FWDS-59 Panel and the claimed design are the same. Therefore, the claim of the 834 Patent is unpatentable under 35 U.S.C. 102(b) as being anticipated by the FWDS-59 Panel. 1. Patentably indistinct embodiment later canceled by Patentee should be considered for anticipation and obviousness analysis During prosecution of the 834 Patent, Applicants submitted a Supplemental IDS on February 2, 2006, citing new prior art (Exhibit I) and also canceled an embodiment shown in canceled original figures (Exhibit J; hereinafter Canceled Embodiment ) in view of that admitted prior art reference. The admitted prior art reference was never considered by the Examiner (See Exhibit B, p.16, the Information Disclosure Statement citing Applicant Admitted Prior Art (one page) was lined through and not considered by the Examiner, per the document entitled List of References cited by applicant and considered by examiner issued by the USPTO on July 6, 2006). By virtue of the restriction requirement set forth in the Office Action mailed on August 25, 2005 and the Reply submitted to the Office on September 15, 2005, both the Patentee and Examiner admitted that the panel design of that embodiment and the remaining embodiments of the claimed design of the 834 Patent are patentably indistinct. In re Rubinfield, 270 F.2d 391 (CPA 1959) (multiple embodiments may be included in the same design patent only if they are patentably indistinct). Therefore, any prior art reference or combination of references that anticipates or renders obvious the Canceled Embodiment must also anticipate or render obvious the claimed design of the 834 Patent. 2. The FWDS-59 Panel as compared to patentably indistinct embodiment later canceled by Patentee 52

53 As shown below, the FWDS-59 Panel has the same basic design characteristics as the patentably indistinct embodiment of the claimed design shown in canceled original figure 32. Most notably, the FWDS-59 Panel and the canceled embodiment both include planar upper and lower faces and recessed regions having similar dimensions, as well as a very similar overall length. The primary differences between the FWDS-59 Panel and the canceled embodiment are the opposed ends, depth of the recessed region, and the thickness of the panel. However, the differences between the claimed design and the FWDS-59 Panel must be evaluated based on all of the views of the claimed design. Egyptian Goddess, Inc., 534 F.3d at 675. Although the above-described differences are discernible in the side view, the designs are much less distinguishable from one another in the other views. For example, from a front view, which is a view that an ordinary observer would encounter when the panels are ultimately installed on a building wall, the differences in panel dimensions and opposed ends would be imperceptible. 3. The 834 Patent is unpatentable under 35 U.S.C. 102(b) as being anticipated by the FWDS-59 Panel For the reasons discussed above, the claim of the 834 Patent is unpatentable under 35 U.S.C. 102(b) as being anticipated by the FWDS-59 Panel because the FWDS-59 Panel has the same overall visual appearance as the patentably indistinct embodiment of the claimed design shown in canceled original figure 32, such that an ordinary observer, familiar with the prior art, 53