`
`PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. D527,834
`PURSUANT TO 35 U.S.C. § 311 AND 37
`C.F.R. § 42.100
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Application/Control
`Number
`Patent For Which Inter
`Partes Review is Presently
`Requested
`Filing Date
`First Named Inventor
`Title
`Confirmation Number
`Group Art Unit
`Examiner Name
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`TBD
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`D527,834
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`April 20, 2004
`Thimons et al.
`BUILDING PANEL
`TBD
`TBD
`TBD
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`I. 
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`TABLE OF CONTENTS
`INTRODUCTION .............................................................................................................. 6 
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`1
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`IX. 
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`X. 
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`NOTICE OF REAL PARTY IN INTEREST UNDER 37 C.F.R. § 42.8(b)(1) ................. 6 
`II. 
`NOTICE OF RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2) ............................. 6 
`III. 
`NOTICE OF LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(b)(3) ......... 6 
`IV. 
`NOTICE OF SERVICE INFORMATION UNDER 37 C.F.R. § 42.8(b)(4) ..................... 6 
`V. 
`CERTIFICATION OF GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a) ... 7 
`VI. 
`VII.  CERTIFICATION OF SERVICE UNDER 37 C.F.R. §§ 42.6(e)(4) AND 42.105(a) ....... 7 
`VIII.  STATEMENT OF PRECISE RELIEF REQUESTED UNDER 37 C.F.R. §§ 42.22(a)(1)
`AND 42.104(b)(1)-(2) ......................................................................................................... 7 
`STATEMENT OF PROPOSED CLAIM CONSTRUCTION UNDER 37 C.F.R. §
`42.104(b)(3) ........................................................................................................................ 9 
`SUMMARY OF PRIOR ART PRINTED PUBLICATIONS RELIED UPON IN THE
`PRESENT PETITION FOR INTER PARTES REVIEW ................................................ 11 
`A. 
`ATAS, Inc. Model MPS120 Panel ........................................................................ 11 
`1. 
`Introduction ............................................................................................ 11 
`2. 
`ATAS Web Page (www.atas.com) ......................................................... 11 
`3. 
`2002 Sweet’s Catalog File, Volume 4 .................................................... 12 
`4. 
`2002 ATAS Metal Wall Panels Brochure .............................................. 13 
`ATAS, Inc. RIGID-Wall™ Panel ......................................................................... 14 
`1. 
`Introduction ............................................................................................ 14 
`2. 
`2002 Sweet’s Catalog File, Volume 4 .................................................... 14 
`3. 
`2002 ATAS Metal Wall Panels Brochure .............................................. 14 
`Centria Model IW60A Panel ................................................................................ 15 
`C. 
`ATAS, Inc. Model MPH080 Panel ....................................................................... 15 
`D. 
`Centria Model FWDS-59 Panel ............................................................................ 16 
`E. 
`OVERVIEW OF THE ‘834 PATENT .............................................................................. 16 
`A. 
`Background ........................................................................................................... 16 
`B. 
`Prosecution and Enforcement History .................................................................. 16 
`STATEMENT OF REASON FOR THE RELIEF REQUESTED UNDER 37 C.F.R. §§
`42.22(a)(2) AND 42.104(b)(4), SHOWING THAT THERE IS A REASONABLE
`LIKELIHOOD THAT THE REQUESTER WILL PREVAIL UNDER 35 U.S.C. § 314 18 
`A. 
`The Applicable Legal Standards ........................................................................... 18 
`1. 
`Obviousness ........................................................................................... 18 
`2. 
`Anticipation ............................................................................................ 22 
`3. 
`Multiple Embodiments ........................................................................... 22 
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`B. 
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`XI. 
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`XII. 
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`B. 
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`C. 
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`D. 
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`E. 
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`F. 
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`G. 
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`4. 
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`3. 
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`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 
`1. 
`MPS120 Panel as compared to FIGS. 37-41 of the ‘834 Patent ............ 23 
`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 desig ................................................................................ 27 
`Any of the BKR160 Publications, which show the BKR160 Panel, is a
`suitable secondary reference for modifying any of the MPS120
`Publications ............................................................................................ 29 
`The ‘834 Patent is unpatentable under 35 U.S.C. § 103(a) over the
`MPS120 Panel in view of the BKR160 Panel ........................................ 30 
`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 ............................................................. 31 
`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) ................................................................................... 32 
`1. 
`The BKR160 Panel as compared to FIGS. 37-41 of the ‘834 Patent ..... 33 
`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 ............................................................................................ 35 
`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) ................................................................................... 37 
`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 ..................................... 39 
`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..................................... 41 
`1. 
`The MPH080 Panel as compared to FIGS. 37-41 of the ‘834 Patent .... 41 
`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 
`
`3
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`3. 
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`4. 
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`2. 
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`3. 
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`Any of the BKR160 Publications, which show the BKR160 panel, is a
`suitable secondary reference for modifying any of the MPH080
`Publications ............................................................................................ 47 
`The ‘834 Patent is unpatentable under 35 U.S.C. § 103(a) as obvious
`over the MPH080 Panel in view of the BKR160 Panel ......................... 47 
`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 ............................................ 50 
`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) .............................................................................................. 51 
`Patentably indistinct embodiment later canceled by Patentee should be
`1. 
`considered for anticipation and obviousness analysis ............................ 52 
`The FWDS-59 Panel as compared to patentably indistinct embodiment
`later canceled by Patentee ...................................................................... 52 
`The ‘834 Patent is unpatentable under 35 U.S.C. § 102(b) as being
`anticipated by the FWDS-59 Panel ........................................................ 53 
`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 ......................................... 54 
`XIII.  CONCLUSION ................................................................................................................. 55 
`
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`H. 
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`I. 
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`J. 
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`Table of Exhibits
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`Exhibit A
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`U.S. Design Patent No. D527,834
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`Exhibit B
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`Prosecution history of U.S. Design Patent No. D527,834
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`Exhibit C
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`ATAS Website content from December 3, 2000 showing ATAS MPS120 Panel
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`Exhibit D
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`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
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`Exhibit E
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`Declaration of Noah A. Sharkan; Summer 2000 Sweet’s CD, showing ATAS
`MPS120 and MPH080 Panels
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`Exhibit F
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`Declaration of Theodorus Bus
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`Exhibit G
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`“Commercial & Industrial Metal Wall Systems” Robertson Product Brochure
`(dated 1994) showing IW60A Panel (prior art of record from D527,834)
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`Exhibit H
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`Centria Technical Data Manual dated December 1996 showing IW60A Panel
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`Exhibit I
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`Admitted Art Not Considered By Examiner
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`Exhibit J
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`Canceled Original Figures 31-36 of U.S. Design Patent No. D527,834
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`Exhibit K
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`ATAS Website content from August 15, 2000 showing Sweet’s CD information
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`Exhibit L
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`Declaration of Teresa Warmkessel
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`I. INTRODUCTION
`The present document is a petition (hereinafter “Petition”) for inter partes review of the
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`sole claim of U.S. Design Patent No. D527,834 (hereafter the “‘834 Patent”), issued on
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`September 5, 2006 to Thimons et al. The assignee of record for the ‘834 Patent is Centria, of
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`Moon Township, Pennsylvania. A copy of the ‘834 Patent is provided as Exhibit A to this
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`Petition. The fee for this Petition, pursuant to 37 C.F.R. § 42.103, is submitted herewith.
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`II. NOTICE OF REAL PARTY IN INTEREST UNDER 37 C.F.R. § 42.8(b)(1)
`
`
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`For petitioner, the real party in interest is ATAS International, Inc., a corporation
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`organized under the laws of the state of New York and having its corporate headquarters and
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`principal place of business in Allentown, Pennsylvania.
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`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
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`Western District of Pennsylvania, alleging infringement of U.S. Design Patent No. D527,834.
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`The case is captioned Centria v. ATAS International, Inc., 2:13-cv-309.
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`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
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`Registration No. 44,964. Backup counsel for petitioner is James J. Aquilina of Design IP, P.C.,
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`USPTO Registration No. 63,550.
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`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 18104
`damonneagle@designip.com
`phone: 610-395-4900
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`fax: 610-680-3312
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`VI. CERTIFICATION OF GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a)
`Petitioner hereby certifies that U.S. Design Patent No. D527,834 is available for inter partes
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`review and that it is not barred or stopped from requesting an inter partes review challenging the
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`claim of the ‘834 Patent on the grounds identified in this petition.
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`VII. CERTIFICATION OF SERVICE UNDER 37 C.F.R. §§ 42.6(e)(4) AND 42.105(a)
`Petitioner hereby certifies that a copy of this Petition and all Exhibits has been served in
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`its entirety on the Patent Owner’s counsel of record at the following address, pursuant to 37
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`C.F.R. §§ 42.6(e)(3) and 42.105(a):
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`Buchanan Ingersoll & Rooney PC
`P.O. Box 1404
`Alexandria, VA 22313-1404
`Service of the present Petition was also effected on Patent Owner’s counsel of record in
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`the related district court litigation at the following address, pursuant to 37 C.F.R. § 42.105(a):
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`Richard L. Byrne, Esq.
`The Webb Law Firm, P.C.
`One Gateway Center
`420 Fort Duquesne Blvd., Suite 1200
`Pittsburgh, PA 15222
`An appropriate certificate of service, in accordance with 37 C.F.R. § 42.6(e)(4), is
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`included herewith.
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`VIII. STATEMENT OF PRECISE RELIEF REQUESTED UNDER 37 C.F.R. §§
`42.22(a)(1) AND 42.104(b)(1)-(2)
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`The ‘834 Patent is a design patent, and thus has a single claim. In regard to the ‘834 Patent,
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`Petitioner respectfully requests the following relief:
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`(1) a holding that the sole claim of the ‘834 Patent is unpatentable under 35 U.S.C. § 103(a)
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`as obvious over any one of the “MPS120 Publications,” as defined below, in view of any
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`one of the “BKR160 Publications,” as defined below;
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`(2) a holding that the sole claim of the ‘834 Patent is unpatentable under 35 U.S.C. § 103(a)
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`as obvious over any one of the “MPS120 Publications,” as defined below, in view of any
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`one of the “IW60A Publications,” as defined below;
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`(3) a holding that the sole claim of the ‘834 Patent is unpatentable under 35 U.S.C. § 102(b)
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`as anticipated by any one of the ““BKR160 Publications,” as defined below;
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`(4) a holding that the sole claim of the ‘834 Patent is unpatentable under 35 U.S.C. § 103(a)
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`as obvious over any one of the “BKR160 Publications,” as defined below, in view of
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`common knowledge to one having ordinary skill in the art;
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`(5) a holding that the sole claim of the ‘834 Patent is unpatentable under 35 U.S.C. § 103(a)
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`as obvious over any one of the “BKR160 Publications,” as defined below, in view of any
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`one of the “MPS120 Publications,” as defined below;
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`(6) a holding that the sole claim of the ‘834 Patent is unpatentable under 35 U.S.C. § 103(a)
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`as obvious over any one of the “MPH080 Publications,” as defined below, in view of any
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`one of the “BKR160 Publications,” as defined below;
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`(7) a holding that the sole claim of the ‘834 Patent is unpatentable under 35 U.S.C. § 103(a)
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`as obvious over any one of the “MPH080 Publications,” as defined below, in view of any
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`one of the “IW60A Publications,” as defined below;
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`(8) a holding that the sole claim of the ‘834 Patent is unpatentable under 35 U.S.C. § 102(b)
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`as anticipated by any one of the “FWDS-59 Publications,” as defined below; and/or
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`8
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`(9) a holding that the sole claim of the ‘834 Patent is unpatentable under 35 U.S.C. § 103(a)
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`as obvious over any one of the “FWDS-59 Publications,” as defined below, in view of
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`any one of the “BKR160 Publications,” as defined below.
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`IX. STATEMENT OF PROPOSED CLAIM CONSTRUCTION UNDER 37 C.F.R.
`§ 42.104(b)(3)
`“Given the recognized difficulties entailed in trying to describe a design in words, the
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`preferable course ordinarily will be [to not] attempt to ‘construe’ a design patent claim by
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`providing a detailed verbal description of the claimed design.” Egyptian Goddess, Inc. v. Swisa,
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`Inc., 543 F.3d 665, 679 (Fed. Cir. 2008). However, it may be “helpful to point out … various
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`features of the claimed design as they relate to the … prior art.” Id. at 680.
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`Petitioner notes some inconsistencies in the the drawings of each of the embodiments of
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`the ‘834 Patent. Specifically, a “bent portion” of each of the embodiments is shown in solid
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`lines (claimed) in the respective side view figure, but in broken lines (disclaimed) in the two
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`respective perspective view figures. An annotated image of portions of FIGS. 1, 2, and 6 of the
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`‘834 Patent, showing these drawing inconsistencies, is provided below. These drawing
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`inconsistencies are present in the sets of drawings for each of the embodiments of the ‘834
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`Patent.
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`Since the majority of the drawings of each of the embodiments of the design shown in the
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`‘834 Patent show this bent portion disclaimed, Petitioner submits that the claim of the ‘834
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`Patent should be construed to exclude this bent portion (i.e., consider it unclaimed subject
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`matter).
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`Moreover, many figures of the ’834 Patent show the drawing convention for a design
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`having indeterminate length, and the special description of the ‘834 Patent likewise describes the
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`design of the building panel to be of indeterminate length. Petitioner submits that the claim of
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`the ‘834 Patent should be construed to include a building panel as shown and described in the
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`drawings of the ‘834 Patent having any length.
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`A perspective view of each of the embodiments of the ‘834 Patent is provided in which
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`the applicant displayed that multiple units of the wall panels shown in the ‘834 Patent were
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`designed to be interlocked adjacently to one another in order to form a wall panel “sheet”
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`comprised of multiple wall panels. These perspective views (see, e.g., FIG. 6) make clear that
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`portions of the claimed design are more clearly visible than others when installed on a wall
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`surface, and that the design of the wall panel as shown and described in the ‘834 Patent is very
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`likely to be viewed by an ordinary observer in a repeating fashion (for example, while installed
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`on a wall surface).
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`Finally, the ‘834 Patent comprises a claimed design having seven embodiments. Multiple
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`embodiments may be included in the same design patent only if they are patentably indistinct.
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`See In re Rubinfield, 270 F.2d 391 (CPA 1959). Unlike during litigation, the scope of the claim
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`of the ‘834 Patent must be given its broadest reasonable scope before the USPTO, Atlantic
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`Thermoplastics Co., Inc. v. Faytex Corp., 970 F.2d 834, 846 (Fed. Cir. 1992), it being
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`understood that a determination by the Board that a single embodiment of the ‘834 Patent is
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`unpatentable would render every embodiment of the ‘834 Patent unpatentable. In re Klein, 987
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`F.2d 1569, 1570 (Fed. Cir. 1993).
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`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
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`printed publications:
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`A. ATAS, Inc. Model MPS120 Panel
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`1. Introduction
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`As explained in greater detail below, the ATAS, Inc. model MPS120 panel (hereafter the
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`“MPS120 Panel”) appears in multiple prior art printed publications cited in this Petition. These
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`publications are collectively referred to hereinafter as the “MPS120 Publications.”
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`2. ATAS Web Page (www.atas.com)
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`The MPS120 Panel appears on a web page published on the Internet at URL
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`http://www.atas.com/SpecSheets/TechSheet_Multi.htm (hereinafter the “ATAS Web Page”),
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`which was publically available at least as early as December 3, 2000. An archived copy of the
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`ATAS Web Page is provided by the Wayback Machine and attached hereto as Exhibit C. The
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`URL of the Wayback Machine archive is provided in Exhibit C.
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`An electronic publication, including an on-line database or Internet publication, is
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`considered to be a "printed publication" within the meaning of 35 U.S.C. §§ 102(a) and 102(b)
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`provided that the publication was accessible to persons concerned with the art to which the
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`document relates. MPEP § 2128. Archived content provided by the Wayback Machine has long
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`been acknowledged by the USPTO as a proper means for establishing website content as prior
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`art. See Wynn W. Coggins, Prior Art in the Field of Business Method Patents – When is an
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`Electronic Document a Printed Publication for Prior Art Purposes?, Fall 2002,
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`http://www.uspto.gov/patents/resources/methods/aiplafall02paper.jsp (“Websites can be used as
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`references if posting dates can be found, and those posting dates predate the invention. ...
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`Examiners utilize commercial databases and the Wayback Machine to help establish website
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`posting dates in order to qualify the website as prior art”). In addition, the Declaration of
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`Theodorus Bus (attached hereto as Exhibit F; hereinafter “Bus Declaration”) also establishes that
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`the ATAS Web Page was publicly available via the Internet at least as early as December 2000.
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`Based on the foregoing, the ATAS Web Page was available on a publicly accessible
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`website at least as early as December 3, 2000. The earliest priority date for the ‘834 Patent is
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`April 20, 2004. The ATAS Web Page, as shown in the archived content, therefore qualifies as a
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`“printed publication” and is available as prior art under 35 U.S.C. § 102(b).
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`3. 2002 Sweet’s Catalog File, Volume 4
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`The MPS120 Panel also appears in Volume 4 of the 2002 Sweet’s Catalog File
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`(hereinafter “2002 Sweet’s Catalog”), attached hereto in pertinent part as Exhibit D. The 2002
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`Sweet’s Catalog included an ATAS, Inc. Wall Panels product brochure showing the MPS120
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`Panel (see pages 5-7 and 9) and is available as prior art under 35 U.S.C. § 102(b).
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`The 2002 Sweet’s Catalog is a printed publication upon a satisfactory showing that the
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`Sweet’s Catalog File has been disseminated or otherwise made available to the extent that
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`persons interested and ordinarily skilled in the subject matter or art, exercising reasonable
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`diligence, can locate it. In re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981); MPEP § 2128. As
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`reflected in the Bus Declaration (Exhibit F), the 2002 Sweet’s Catalog is the most widely-used
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`building material product data reference for roof and wall panels and was made available in 2002
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`to over 60,000 industry professionals (Bus Declaration ¶¶5 and 10; see also 2002 Sweet’s
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`Catalog at page 4). Further, the same ATAS, Inc. Wall Panels product brochure that is featured
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`in the 2002 Sweet’s Catalog was also distributed to ATAS customers (Bus Declaration ¶13), and
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`was made available without restriction at multiple industry trade shows between January 1, 2002
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`and December 31, 2002 (Bus Declaration ¶14). In addition, as reflected in the Declaration of
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`Teresa Warmkessel and attachments thereto (Exhibit L, hereinafter “Warmkessel Declaration”),
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`the 2002 Sweet’s Catalog is in the collection and listed in the card catalog of least five (5) major
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`public libraries (Warmkessel Declaration ¶6). As further set forth in the Warmkessel
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`Declaration, the 2002 Sweet’s Catalog was added to the card catalog of the Free Library of
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`Philadelphia on May 25, 2002 (Warmkessel Declaration ¶¶2-5). Based on the foregoing, the
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`2002 Sweet’s Catalog was clearly disseminated and made available to the extent that persons
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`interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence,
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`could have located it prior to December 31, 2002.
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`The foregoing establishes that the 2002 Sweet’s Catalog was a “printed publication” at
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`least as early as December 31, 2002, which is more than one year prior to the effective filing date
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`of the ‘834 Patent. Accordingly, the 2002 Sweet’s Catalog is prior art to the ‘834 Patent under
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`35 U.S.C. § 102(b).
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`4. 2002 ATAS Metal Wall Panels Brochure
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`The MPS120 Panel also appears on pages 3 and 8 of the 2002 ATAS Metal Wall Panels
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`Brochure (hereinafter “ATAS Brochure”), which is attached hereto as Exhibit D (see pp. 5-7 and
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`9 of Exhibit D). The ATAS Brochure is available as prior art under 35 U.S.C. § 102(b).
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`The ATAS Brochure is a printed publication upon a satisfactory showing that the ATAS
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`Brochure has been disseminated or otherwise made available to the extent that persons interested
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`and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.
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`In re Wyer, 655 F.2d at 226; MPEP 2128. As reflected in the Bus Declaration (Exhibit F), the
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`ATAS Brochure was also widely distributed to ATAS customers (Bus Declaration ¶13), and was
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`made available without restriction at multiple industry trade shows between January 1, 2002 and
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`December 31, 2002 (Bus Declaration ¶14). Based on the foregoing, the ATAS Brochure was
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`clearly disseminated and made available to the extent that persons interested and ordinarily
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`skilled in the subject matter or art, exercising reasonable diligence, could have located it prior to
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`December 31, 2002.
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`The foregoing establishes that the ATAS Brochure was a “printed publication” at least as
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`early as December 31, 2002, which is more than one year prior to the effective filing date of the
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`‘834 Patent. Accordingly, the ATAS Brochure is prior art to the ‘834 Patent under 35 U.S.C. §
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`102(b).
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`B. ATAS, Inc. RIGID-Wall™ Panel
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`1. Introduction
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`As explained in greater detail below, the ATAS, Inc. model RIGID-Wall / BKR160 panel
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`(hereafter “BKR160 Panel”) appears in multiple prior art publications cited in this Petition.
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`These publications are collectively referred to hereinafter as the “BKR160 Publications.”
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`2. 2002 Sweet’s Catalog File, Volume 4
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`The BKR160 Panel appears in the 2002 Sweet’s Catalog (Exhibit D, see pp. 10 and 11),
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`which, as set forth above in Section X.A.3., is prior art to the ‘834 Patent under 35 U.S.C.
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`§102(b).
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`3. 2002 ATAS Metal Wall Panels Brochure
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`The BKR160 Panel appears on page 6 of the ATAS Brochure (Exhibit D, see pp. 10 and
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`11), which, as set forth above in Section X.A.4., is prior art to the ‘834 Patent under 35 U.S.C. §
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`102(b).
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`C.
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`Centria Model IW60A Panel
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`The Centria model IW60A Panel (hereafter “IW60A Panel”) is prior art of record for the
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`‘834 Patent (see Exhibit B, p. 106). The IW60A Panel was disclosed on page 9 of the
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`“Commercial & Industrial Metal Wall Systems” Robertson Product Brochure (1994) (hereinafter
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`“Robertson Brochure”), which is attached hereto as Exhibit G.
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`D.
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`ATAS, Inc. Model MPH080 Panel
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`The ATAS, Inc. model MPH080 panel (hereafter “MPH080 Panel”) is shown in the 2002
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`Sweet’s Catalog (Exhibit D, pp. 5, 6, and 8) and the ATAS, Inc. Wall Panels Brochure (Exhibit
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`D, see pp. 5, 6, and 8). As set forth above in sections X.A.3. and X.A.4., respectively, the 2002
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`Sweet’s Catalog and ATAS Brochure are prior art to the ‘834 Patent under 35 U.S.C. § 102(b).
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`In addition, the MPH080 Panel is shown on the Summer 2000 Sweet’s CD (hereafter
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`“Sweet’s CD”), screenshots of which are attached hereto as Exhibit E. As reflected in the
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`declaration of Noah A. Sharkan, attached hereto as part of Exhibit E, the screenshots included in
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`Exhibit E are true and accurate representations of the images accessible via the Sweet’s CD on a
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`Windows-based personal computer. The Sweet’s CD software includes, among other things, a
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`CAD illustration of the MPH080 Panel (see Exhibit E, p. 14) and a CAD file of the MPH080
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`Panel that can be saved and opened in CAD software (see Exhibit E, pp. 15 and 16).
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`Images taken of the Sweet’s CD and product packaging (Exhibit E, pp. 1-9) indicate that
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`the Sweet’s CD was distributed by Sweet’s Group, a division of McGraw Hill, via US mail with
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`a mailing permit. Further, Sweet’s Internet webpage
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`“http://www.sweets.com/topic/swprod.htm”, as archived by the Wayback Machine on August
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`15, 2000 and attached hereto as Exhibit K, indicates that the Sweet’s CD is updated and
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`distributed quarterly. As reflected in the Bus Declaration (Exhibit F), the 2000 Sweet’s CD was
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`even more widely distributed than the 2002 Sweet’s Catalog, which, as discussed above, was
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`made available in 2002 to over 60,000 industry professionals (Bus Declaration ¶¶8 and 10-11).
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`Accordingly, Petitioner respectfully submits that the Sweet’s CD was also disseminated and
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`made available to the extent that persons interested and ordinarily skilled in the subject matter or
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`art, exercising reasonable diligence, could have located it more than one year prior to the
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`effective filing date of the ‘834 Patent. Therefore, the Sweet’s CD, and the representations of the
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`MPH080 Panel appearing therein, are prior art to the ‘834 Patent under 35 U.S.C. § 102(b).
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`The portions of the 2002 Sweet’s Catalog, ATAS Brochure, and Sweet’s CD showing the
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`MPH080 Panel are referred to herein as the “MPH080 Publications.”
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`E.
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`Centria Model FWDS-59 Panel
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`The Centria Model FWDS-59 panel (hereafter “FWDS-59 Panel”) is shown in the 2002
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`Sweet’s Catalog and the ATAS Brochure (Exhibit D, see pp. 12 and 13). As set forth above in
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`Sections X.A.3. and X.A.4, respectively, the 2002 Sweet’s Catalog and the ATAS Brochure are
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`prior art to the ‘834 Patent under 35 U.S.C. § 102(b). Therefore, the FWDS-59 Panel, as it
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`appears in these publications, is prior art to the ‘834 Patent under 35 U.S.C. § 102(b).
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`XI. OVERVIEW OF THE ‘834 PATENT
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`A.
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`Background
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`The ‘834 Patent claims “[t]he ornamental design for a building panel, as shown and
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`described.” The ‘834 Patent discloses seven embodiments of a building panel design.
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`B.
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`Prosecution and Enforcement History
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`U.S. Design Patent Application No. 29/203,806 was filed on April 4, 2004 with 54
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`figures consisting of eighteen (18) embodiments of a design for a wall panel.
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`A restriction requirement was mailed on August 25, 2005 (hereinafter “Restriction
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`Requirement”), requiring restriction to one of the inventions of Group I, Group II, Group III, and
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`Group IV. Group III included embodiment 13 disclosed in original figures 37-41.
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`A response to the Restriction Requirement was filed on September 15, 2005, in which
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`Applicants elected the invention of Group I with traverse, arguing that Group I and Group II
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`should be combined.
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`A Notice of Allowability was mailed on November 29, 2005, which included an
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`Examiner’s amendment and comment. The Notice of Allowability states that a telephone
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`interview occurred on November 28, 2005, during which the Applicants and Examiner agreed to
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`combine Groups I and II, consisting of original figures 1-36 and 43 through 54, and Applicants
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`agreed to place the additional attached panel in broken lines in the appropriate figures. In view of
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`the telephone interview, Groups III and IV, consisting of figures 37 through 42, were canceled,
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`and the figure designations and descriptions were adjusted accordingly. The embodiment of
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`canceled Group III was filed on February 10, 2006 as divisional U.S. Design Patent Application
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`No. 29/253,797, which later issued on March 20, 2007 as U.S. Design Patent No. D538,948.
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`An Amendment After Notice of Allowance was filed on February 2, 2006. Applicants
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`submitted amendments to the specification and drawings to make corrections requested in the
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`Notice of Allowability. Concurrently therewith, Applicants submitted a Supplemental IDS citing
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`new prior art, which is attached as Exhibit I hereto, and canceled original figures 31-36 in view
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`of that newly submitted prior art reference. Canceled original figures 31-36 are attached hereto
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`as Exhibit J.
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`The Issue Fee was paid on February 28, 2006.
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`On July 6, 2006, a Response to Rule 312 Communication was mailed, in which the
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`Examiner entered the Amendment After Notice of Allowance. The Examiner indicated that the
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`prior art submitted by the Applicant on February 2, 2006 had not been considered.1
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`On August 16, 2006, Applicants filed a payment authorization for a large entity fee,
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`stating that they had inadvertently claimed small entity status when filing the application. A
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`Petition Decision was mailed on March 13, 2008, accepting the fee deficiency submission.
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`On September 18, 2012, a Report on the Filing or Determination of an Action Regarding
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`Patent or Trademark was entered, identifying U.S. Design Patent Nos. D527,834 and D538,948
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`as the subject of an infringement action filed by Centria against Cleburne Sheet Metal in the
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`United States District Court for the Western District of Pennsylvania.
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`XII. STATEMENT OF REASON FOR THE RELIEF REQUESTED UNDER 37 C.F.R.
`§§ 42.22(a)(2) AND 42.104(b)(4), SHOWING THAT THERE IS A REASONABLE
`LIKELIHOOD THAT THE REQUESTER WILL PREVAIL UNDER 35 U.S.C. §
`314
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`A. The Applicable Legal Standards
`1. Obviousness
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`Proposed rejections set forth below represent a finding of obviousness under 35 U.S.C.
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`§103(a). In the context of a design patent, the fact finder employs a two step process to
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`determine whether one of ordinary