David William. Stauffer

Patent Trials and Appeals Board

Aug 16, 2019

13734978 - (D) (P.T.A.B. Aug. 16, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/734,978 01/06/2013 David William Stauffer 5951
111654 7590 08/16/2019
David William Stauffer
David Stauffer
5334 N Amherst
Portland, OR 97203
EXAMINER
SINGH, SUNIL
ART UNIT PAPER NUMBER
3678
MAIL DATE DELIVERY MODE
08/16/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID WILLIAM STAUFFER
____________

Appeal 2019-003065
Application 13/734,9781
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and
MICHAEL L. WOODS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE.
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in
the Final Office Action (dated July 11, 2018, hereinafter “Final Act.”) rejecting
claims 1–3. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 The inventor, Mr. David William Stauffer, is identified as the real party in
interest in Appellant’s Appeal Brief (filed Oct. 17, 2018, hereinafter “Appeal Br.”).
Appeal Br. 5.
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INVENTION
Appellant’s invention is directed to a submerged pipeline that flows from
higher to lower elevations due to gravity. Spec. para. 29.2
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. An apparatus comprising a submerged system
comprising air-tight and water-tight plastic pipelines that
consist of about 10 individual pipelines that are about 10 meters
in diameter and, together, about 100 meters wide and 10 meters
tall, and that have their river water input point upriver from the
mouth of the river, where the river is about 100 meters above
sea level, and such pipelines will transport water by gravity and
siphon principals, without any pumping, and such pipelines will
run, along the bottom of the river, down the river to the ocean,
and then along the ocean shoreline in ocean waters that are
about 20 meters deep to points where the river water captured
in the pipelines is diverted to go up the mouths of rivers,
without any pumping, to elevations that are under 100 meters
above sea level and deliver that river water to dry lands inland
from the ocean coast for drinking, irrigation and fire
suppression.

REJECTIONS3
I. The Examiner rejects claim 3 under 35 U.S.C. § 112(b) as being
indefinite.4

2 We refer to the Second Amended Specification, filed on August 14, 2015, and
entered by the Examiner in the Advisory Action, dated September 29, 2015.
3 The rejection of claims 1–3 under 35 U.S.C. § 112(a) as failing to comply with
the enablement requirement has been withdrawn by the Examiner. See Examiner’s
Answer (dated Feb. 1, 2019, hereinafter “Ans.”) 3–4.
4 The rejection of claims 1 and 2 under 35 U.S.C. § 112(b) as being indefinite has
been withdrawn by the Examiner. See Advisory Action (dated Aug. 24, 2018,
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II. The Examiner rejects claims 1 and 2 under 35 U.S.C. § 103(a) as
being unpatentable over Robin Madel, A Really Big Straw for a Really
Big Gulp: The Washington-to-California Pipeline, 1–2 (Aug. 12,
2010) (hereinafter “Pipeline Article”) and Ross (US 2012/0020734
A1, published Jan. 26, 2012).
III. The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over Pipeline Article, Ross, Campbell et al. (CA
2,296,088, published Apr. 4, 2001, hereinafter “Canadian
Document”), and Henderson (US 2011/0254179 A1, published Oct.
20, 2011).

ANALYSIS
Rejection I
The Examiner finds that the limitations “the turbines,” “the hydroelectric
plants,” and “the siphon pipelines” lack antecedent basis. Final Act. 3.
Appellant argues that the “the” before “turbines;” the “the” before
“hydroelectric plants;” and “the siphon” before ‘pipelines” have been deleted “in
the Fifth Amended Claims . . . submitted with the Request for Reconsideration 5.”
Appeal Br. 17.
The Examiner does not rebut Appellant’s argument. See Ans. 4–34. Indeed,
Appellant is correct that the above noted terms were deleted in the Response After-
Final Amendment, filed July 19, 2018 (hereinafter “Amendment”), which was entered
by the Examiner in the Advisory Action dated August 24, 2018. Moreover, the

hereinafter “Adv. Act.”); see also Ans. 3 (The Examiner lists only claim 3 as being
indefinite).
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Examiner explicitly acknowledges in the Advisory Action of August 24, 2018, that
Appellant’s amendments have overcome the indefiniteness rejection. See Adv. Act. 1.
We appreciate that the set of claims filed with the Appeal Brief of October 17,
2018, does not include Appellant’s amendments with respect to claim 3 discussed
supra. Compare Appeal Br. 36, with Amendment 2. However, we view
Appellant’s filing as an inadvertent error. Accordingly, for the purpose of this
appeal, we consider the claims as filed in the Amendment.5, 6 Therefore, as claim 3
does not include the disputed terms noted above, we do not sustain the Examiner’s
rejection of claim 3 under 35 U.S.C. § 112(b) as being indefinite.

Rejection II
We are not persuaded by Appellant’s argument that the Examiner’s
determination of obviousness is based on impermissible hindsight reconstruction.
See Appeal Br. 18 (“It is impermissible for [the] Examiner . . . to use Inventor
Stauffer’s invention as a blueprint . . . to reconstruct Inventor Stauffer’s . . .
invention.”). The Examiner has provided sufficient reasoning with rational
underpinning to combine the teachings of Pipeline Article and Ross, namely, to

5 We consider the filing of claim 3 in the Supplemental Response After Final
Rejection, filed August 27, 2018, to correct claim status identifiers, an inadvertent
error on Appellant’s part, as this version of claim 3 does not include the changes
made in the Amendment.
6 In regards to the claim amendments filed in the Supplemental Appeal Brief, filed
February 12, 2019, although the Examiner did not complete an Advisory Action,
the amendments are not enterable because they are not of either kind of limited
amendment permitted by 37 C.F.R. § 41.33(b)(1) and (2), i.e., canceling a claim or
rewriting a dependent claim in independent format. Nonetheless, we note that the
claim 3 amendments filed in the Supplemental Appeal Brief include deletion of the
indefinite terms discussed above.

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“allow[] fresh water to be delivered to a desired end user.” See Final Act. 5; In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
[require] . . . some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co
v. Teleflex Inc., 550 U.S. 398, 418 (2007)). For the reasons discussed below, we
are not apprised of Examiner error.
Here, we agree with the Examiner that Pipeline Article discloses employing
a submerged 10m diameter pipe to transfer water from the mouth of the Columbia
River, along the Pacific Ocean coastline at a depth of about 100m to inland water
systems. Final Act. 4–5. We further agree with the Examiner that Pipeline Article
does not disclose “the pipeline being air-tight and water-tight plastic pipeline
powered by gravity and siphon principles without any pumping and including 10
pipelines creating a 10m high by 100m wide pipeline.” Id. at 5. We further agree
with the Examiner that Pipeline Article fails to disclose the input of the pipeline
being located “upriver from the mouth of the river, where the river is about 100
meters above sea level,” and, furthermore, that “[t]he pipeline run[s] along the
ocean coastline at water depths of about 20m” to “mouths of rivers . . . that are
under 100 meters above sea level to deliver water inland.” Id.
Nonetheless, we agree with the Examiner that Ross discloses an
“air-tight and water-tight pipeline powered by gravity and siphon principles
without any pumping . . . running under fresh and salt water” to transport water
“inland for use.” Id. (citing Ross paras. 1, 8, Fig. 8). Thus, the Examiner is correct
that it would have been obvious for a person of ordinary skill in the art “to modify
the Pipeline [A]rticle to have the pipeline be air-tight and water-tight and powered
by gravity and siphon principles as taught by Ross” in order to “allow[] fresh water
to be delivered to a desired end user.” Id. Appellant has not identified any
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particular error in the Examiner’s findings and reasoning in combining the
teachings of Pipeline Article and Ross.
Furthermore, as Ross discloses that the pipe material should be selected “to
provide the lowest flow resistance on the interior of the pipeline” (see Ross para.
8), the Examiner is correct that choosing a plastic material for making the pipe of
Pipeline Article, as modified by Ross, would have been obvious to a skilled artisan
as a matter of obvious design choice. Id. at 6 (citing In re Leshin, 277 F.2d 197,
199 (CCPA 1960) (choosing a material to make a structure involves only routine
skill in the art when such choice is based upon the material’s suitability for its
intended use)). Moreover, Appellant’s factually unsupported assertion that a 10m
diameter plastic pipe7 cannot be manufactured to be strong enough to transport
water (see Appeal Br. 15–16), as required by the pipe of Pipeline Article, as
modified by Ross, is unsupported attorney argument and cannot take the place of
evidence in the record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Appellant has not identified any particular error in the Examiner’s findings and
reasoning in further modifying the Pipeline Article and Ross as discussed supra.
We further agree with the Examiner that providing 10 pipes in the system of
Pipeline Article, as modified by Ross, would have been obvious to a person of
ordinary skill in the art because such a modification is a “mere duplication of
essential working parts,” where each pipe would function in the same manner as
the pipe of Pipeline Article, as modified by Ross, that is, would “provide[] a
desired amount of fresh water to the end user.” Id. at 6 (citing St. Regis Paper Co.
v. Bemis Co., 549 F.2d 833 (7th Cir. 1977)); see also In re Harza, 274 F.2d 669,
671 (CCPA 1960) (a plurality of pipes is a “mere duplication of parts [that] has no

7 We note that the Kevlar pipe of Pipeline Article is 10m in diameter and is located
at about 100m below the surface of the water.
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patentable significance unless a new and unexpected result is produced.”).
Appellant has not identified any particular error in the Examiner’s findings and
reasoning in further modifying the Pipeline Article and Ross as discussed supra.
Also, the Examiner is on solid ground to conclude that it would have been
obvious to a skilled artisan to locate the river water input point of the pipe of
Pipeline Article, as modified by Ross, upriver from the mouth of the Columbia
River where the altitude is about 100m above sea level because it is well known to
a skilled artisan that such a location avoids salt water intrusion.8 Final Act. 6.
Appellant has not identified any particular error in the Examiner’s findings and
reasoning in further modifying the Pipeline Article and Ross as discussed supra.
We also agree with the Examiner that because Ross’s pipe runs along the
coast of the Pacific Ocean and as it is well known that the depth along this area is
about 20m,9 it would have been obvious to a person of ordinary skill in the art to
run the pipe of Pipeline Article and Ross “along the [Pacific O]cean’s coastline at
water depths of about 20m” because “such a modification would be deep enough to
avoid interference with moving vessels and close enough to the end user to avoid
expenses related to [installing] pipeline in deep sections of the ocean.” Id. at 6–7
(citing Ross Fig. 810). Appellant has not identified any particular error in the
Examiner’s findings and reasoning in further modifying the Pipeline Article and
Ross as discussed supra.

8 As evidence, the Examiner relies on “Colorado River Basin Study” article,
November 10, 2008.
9 As evidence, the Examiner relies on “Map of Mouth of Columbia River 1887”
(http://volcanoes.usgs.gov/observatories/cvo/Historical/LewisClark/volcanoes_lew
is_clark_november_08_1805.shtml); see also Advisory Action, dated December 1,
2015, at 21–25.
10 We view the Examiner’s reference to Figure 6 of Ross as a harmless
typographical error.
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Lastly, we note that as water in the pipe of Pipeline Article and Ross is
powered by gravity and siphon principles, a person of ordinary skill in the art
would know to choose the altitude where to place the river water input point also
on the altitude of the end user’s location. See In re Jacoby, 309 F.2d 513, 516
(CCPA 1962) (An artisan must be presumed to know something about the art apart
from what the references disclose.). We, thus, agree with the Examiner that as the
altitude of the inland water system where the water is transported for usage is
below 100m above sea level, a skilled artisan would know to place the river water
input point at an altitude of 100m above sea level. Final Act. 7 (citing the altitude
of inland location Shasta Lake, California as being 19m above sea level); see also
Ans. 19, 28, 30 (citing Advisory Action, dated December 1, 2015). Appellant has
not identified any particular error in the Examiner’s findings and reasoning in
further modifying the Pipeline Article and Ross as discussed supra.
We are also not persuaded by Appellant’s argument that the reasoning to
combine the prior art must come from the five references listed on page 22 of the
Appeal Brief. See also Appeal Br. 19–20 (None of Pipeline Article, Ross,
Colorado River Basin Study, Canadian Document, and Henderson “cites all the . . .
structures and functions in Applicant’s . . . invention.”). The proper inquiry is
whether the Examiner has articulated adequate reasoning based on a rational
underpinning to explain why a person of ordinary skill in the art would have
combined the teachings of the applied prior art. For the reasons discussed supra
Appellant has not identified any particular error in the Examiner’s findings and
reasoning in combining the teachings of Pipeline Article and Ross and further
modifying the pipe of Pipeline Article and Ross as discussed above.
We are also not persuaded by Appellant’s individual arguments against the
teachings of Pipeline Article, Ross, Colorado River Basin Study, Canadian
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Document, and Henderson (see Appeal Br. 23–26) because “[n]on-obviousness
cannot be established by attacking references individually where the rejection is
based upon the teachings of a combination of references. [Each reference] must be
read, not in isolation, but for what it fairly teaches in combination with the prior art
as a whole.” See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Moreover, we do not agree with Appellant that the Examiner’s rejection needs to
address all 36 features listed on pages 23 through 24 of the Appeal Brief because
many of the features asserted are not positively recited in claims 1–3. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims
cannot be relied upon for patentability). For example, none of the claims recites
that the pipeline has to take water from the riverbed, be so low in the water that no
ships hit it and environmentalists do not see it, or includes 10 pipes that go in
different locations where one to three of the pipes makes a U-turn. See Appeal Br.
23.
As to Appellant’s arguments regarding the level of ordinary skill in the art
(see Appeal Br. 32–34), we consider the cited prior art as representative of the
level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art
does not give rise to reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not shown’”) (Quoting Litton Indus.
Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).
Lastly, although we fully appreciate all of Appellant’s concerns regarding
the world’s environmental problems (see Appeal Br. 27–32) and the features of the
invention that would solve such problems (see id. at 18–19, 33–34), this does not
mean that persons skilled in the art would not make the Examiner’s combination
because of some technological incompatibility. See In re Farrenkopf, 713 F.2d
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714, 718 (Fed. Cir. 1983) (only technological incompatibility is relevant in
determining whether a skilled artisan would make the combination). As Appellant
has not shown a persuasive technological incompatibility in the Examiner’s
rejection, we agree with the Examiner’s conclusion of obviousness.
Accordingly, for the foregoing reasons, we sustain the rejections under 35
U.S.C. § 103(a) of claims 1 and 2 as unpatentable over Pipeline Article and Ross
and of claim 3 as unpatentable over Pipeline Article, Ross, Canadian Document,
and Henderson.

SUMMARY
The Examiner’s decision to reject claim 3 under 35 U.S.C. § 112(b) as being
indefinite is reversed.
The Examiner’s decision to reject claims 1–3 under 35 U.S.C. § 103(a) is
affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED