Ex Parte 7488414 et alDownload PDFPatent Trial and Appeal BoardDec 17, 201390011700 (P.T.A.B. Dec. 17, 2013) Copy Citation 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. 90/011,700 05/19/2011 7488414 W38.18-0007 5049 27367 7590 12/18/2013 WESTMAN CHAMPLIN & KOEHLER, P.A. SUITE 1400 900 SECOND AVENUE SOUTH MINNEAPOLIS, MN 55402 EXAMINER FETSUGA, ROBERT M ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 12/18/2013 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 APPEALS BOARD ____________________ Ex parte WIMCO, LLC, Patent Owner and Appellant ____________________ Appeal 2013-008339 Reexamination Control 90/011,700 Patent 7,488,414 B2 Technology Center 3900 ____________________ Before JEFFREY B. ROBERTSON, RAE LYNN P. GUEST, and JAMES P. CALVE, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF CASE Wimco, LLC (hereinafter “Appellant”), the real party in interest1 of Patent 7,488,414 B2 (hereinafter the “’414 patent”), appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s decision to reject claims 1-7 and 9-14 (Final Office Action, mailed June 14, 2012, pages 3-9). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. 1 See Appellant’s Appeal Brief 2, filed November 13, 2012 (hereinafter “App. Br.”). Appeal 2013-008339 Reexamination Control 90/011,700 Patent 7,488,414 B2 2 We AFFIRM. This reexamination proceeding arose from a third-party request for ex parte reexamination filed by Appellant (Request for Ex Parte Reexamination, filed May 19, 2011). Claims 8 and 15-19 were not subject to the reexamination request. See Ans. 3, n. 2. Original claims 1-7 and 9-14 of the ’414 patent have not been amended during this reexamination proceeding. Claims 1-19 were confirmed in a prior Ex Parte Reexamination Certificate issued January 11, 2011 (Reexamination Control 90/009,716). The ’414 patent relates to an erosion control basin and drain used during construction of curbs and gutters around storm sewer drain frames to prevent debris and sediment from entering a storm sewer (’414 patent, col. 1, ll. 17-42). The ’414 patent is related to U.S. Patent 7,396,471, the subject of Reexamination Control 90/011,699, also currently on appeal. The ’414 patent also is related to U.S. Patent 7,052,207, the subject of Reexamination Control 90/009,717, for which the Board issued a Decision on Appeal on September 26, 2011. Representative claim 1 on appeal reads as follows (with additional indentation for clarity): 1. An apparatus for positioning within an inlet to a storm sewer having a frame supporting a grate, and a curb box, the apparatus comprising: a structure engaging the frame such that the structure is suspended beneath an area covered by the grate, the structure comprising a filtered outlet; and an imperforate deflecting wall attached to the structure and substantially across a length of the frame and extending upwardly into the curb box and behind the grate when positioned on the frame and Appeal 2013-008339 Reexamination Control 90/011,700 Patent 7,488,414 B2 3 wherein storm water enters the structure through the grate and the water flows though the filtered outlet remove sediment and debris from the water entering the storm sewer and wherein the deflecting wall extends into the curb box to deflect water into the structure while allowing water to overflow the deflecting wall in the event that the filter plugs or a street floods due to excessive amounts of water flowing into the sewer. (Claims App’x, App. Br. 15.) II. REJECTIONS The Examiner maintains the following rejections on appeal; 1. Claim 1 under 35 U.S.C. § 102(e) as anticipated by Gauldin;2 2. Claims 1-7 and 9-14 under 35 U.S.C. § 102(e) as anticipated by Morris;3 3. Claims 1-7 and 9-14 under 35 U.S.C. § 103(a) as unpatentable over Morris, Lewis4 and Isaacson;5 4. Claims 1-7 and 9-14 under 35 U.S.C. § 103(a) as unpatentable over Paoluccio6 and Gauldin; 5. Claims 1-7 and 9-14 under 35 U.S.C. § 103(a) as unpatentable over Paoluccio, Morris, and Lewis; and 6. Claims 1-7 and 9-14 under 35 U.S.C. § 103(a) as unpatentable over Paoluccio, Morris, Lewis, and Isaacson. Examiner’s Answer 5-11, mailed January 23, 2013 (“Ans.”). 2 US Patent Application Publication 2002/0113025 A1, published August 22, 2002, and listing Patrick W. Gauldin, et al. as inventors. 3 US 6,531,059 B1, issued March 11, 2003, to James F. Morris, et al. 4 US 6,294,095 B1, issued September 25, 2001, to Randy Lewis. 5 US 6,214,216 B1, issued April 10, 2001, to Ronald Isaacson. 6 US 5,573,349, issued November 12, 1996, to John A. Paoluccio. Appeal 2013-008339 Reexamination Control 90/011,700 Patent 7,488,414 B2 4 III. ISSUES Appellant contends that it has submitted sufficient evidence to demonstrate that the claimed invention antedates each of the Gauldin and Morris disclosures, thus removing them as appropriate prior art references. See App. Br. 8-13. In support thereof, Appellant relies on three declarations of Brian Wimberger, inventor of the ’414 patent.7 The Examiner finds that the Declaration evidence is insufficient to demonstrate that the claimed subject matter antedated the Gauldin and Morris disclosures because the Declaration evidence does not demonstrate the “relationship between the claimed ‘deflecting wall’ and ‘curb box’ features,” namely a deflecting wall “extending upwardly into the curb box” as recited in the independent claims. Ans. 12-13. Accordingly, the issues on appeal are: 1. Do the claims require a specific relationship between the deflecting wall and the curb box by the language in the claims reciting a deflecting wall “extending upwardly into the curb box”? and 2. If so, does the evidence show that the inventor had reduced to practice this recited relationship prior to the disclosure dates of Gauldin and Morris? 7 The first Declaration under 37 C.F.R. § 1.131 of Brian Wimberger, dated November 15, 2011 (hereinafter “First Declaration” or “First Decl.”). The Second Declaration under 37 C.F.R. § 1.131 of Brian Wimberger, dated May 8, 2012 (hereinafter “Second Declaration” or “Second Decl.”). The Third Declaration under 37 C.F.R. § 1.131 of Brian Wimberger, dated August 13, 2012 (hereinafter “Third Declaration” or “Third Decl.”). Appeal Reexam Patent 7 W addition In the curb upward T made so storm se re 4 in ’414 pa F F installed 2013-0083 ination Co ,488,414 B e adopt th al finding dependen box.” Cl ly into the he ’414 pa that it wi wer cham The b ar or curb 7 that can let openin tent, col. 2 igures 1 an igure 1 d curb and 39 ntrol 90/0 2 e Examin s of fact ap t claims 1 aims 1 and curb box.” tent descr ll provide ber 36.” C asin also h end. The rest on fra g in the cu , ll. 51-55 d 2 of the epicts a fr gutter. Co 11,700 IV. D er’s findin pearing b Claim and 9 both 9 also rec ibes that a a shield w ol. 2, ll. 2 as a sedim plate 46 is me cross m rb box 30 . ’414 pate ont persp l. 2, ll. 3-5 5 ISCUSSI gs in the A elow for em interpretat recite tha ite that a d “curb box all 32 and 9-32. The ent deflec offset from ember 26 to partiall nt are repr ective vie . ON nswer as phasis. ion t the defle eflecting 30 is part an opening ’414 pate tion wall the rear . The wall y block th oduced be w of a ca our own an cting wall wall “exte of the fram 34 leadin nt further shown at 4 wall with 46 fits int e opening. low. tch basin d add any “extends i nding e 24, and g into the states that 6 at the a flange o the in a part nto is ially Appeal Reexam Patent 7 F inventio box. Co F appears box 30 consiste “substan that the illustrat curb bo aligned A wall to imprope D interpre 2013-0083 ination Co ,488,414 B igure 2 de n installed l. 3, ll. 6- igures 1 an to be with are entirel nt with th tially acr wall 46 “ es that fla x 30 in tha with the fo ppellant c be within r.” App. B uring reex tation con 39 ntrol 90/0 2 picts a sc in a fram 8. d 2 illustr in the hor y visible a e language oss a leng fits into t nge 47 is t the forw rward mo ontends t the curb b r. 10. amination sistent with 11,700 hematic s e after a cu ate a defle izontal ope round the in claims th of the f he inlet o dimensio ard most e st extent o hat the cla ox, and re , “claims . the speci 6 ectional v rb and gu cting wall ning of th periphery 1 and 9 t rame” and pening in ned such xtent of th f the curb ims “do ading this . . are to b fication, a iew showi tter have b 46 having e curb box of the def hat the de the state the curb b that deflec e deflecti 50 and cu not requir limitation e given th nd . . . clai ng a catc een forme a horizon 30 as the lecting w flecting w ment in th ox.” Fur ting wall ng wall 46 rb box 30. e the enti into the c eir broade m languag h basin of d using a tal length edges of all 46. Th all is attac e ’414 pa ther, Figu 46 sits in appears t re imperfo laim woul st reasona e should b the curb that curb is is hed tent re 2 side o be rate d be ble e Appeal 2013-008339 Reexamination Control 90/011,700 Patent 7,488,414 B2 7 read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)). The independent claims recite that it is the deflecting wall that “extends” into the curb box. However, the ’414 patent does not use the word “extends” with respect to the deflecting wall 46. The common meaning of “extend” is “to stretch forth,” such as to extend one’s arms.8 Thus, the claims are reasonably interpreted to require that the deflecting wall extends or stretches forth from where it is attached to the structure, into the curb box. Appellant’s argument that the bottom of the deflecting wall is within the curb box is not consistent with the language of the claims. That is, in order for such a configuration to meet the claim limitation, the point from which the deflecting wall would “extend” into the curb box, would be a point on the deflecting wall above the structure, and extending downward from space into the curb box where it is then connected to the structure. This is inconsistent with the language of the claims, which recite that the structure has a deflecting wall that extends into the curb box, rather than a deflecting wall that extends into the curb box and attaches to the structure. Thus, the deflecting wall must extend into the curb box from the perspective of the structure. The independent claims further recite expressly that the deflecting wall “extend[s] upwardly into the curb box”, which further supports the interpretation of the claims discussed supra. Accordingly, we agree with the Examiner’s interpretation that the claims require the deflecting wall to extend upwardly from the structure into the curb box. 8 See e.g., , accessed December 5, 2013. Appeal 2013-008339 Reexamination Control 90/011,700 Patent 7,488,414 B2 8 The deflecting wall does not appear to be connected or attached in any other manner so as to extend upwardly in any other manner. The Wimberger Declarations To resolve the question of whether the Wimberger Declarations presents enough evidence to overcome the rejections, the main question we must answer is whether the showing is sufficient to establish a reduction to practice of the invention claimed. We emphasize the words “invention claimed” because Appellant must establish that each and every limitation of the claim was present in its evidence showing reduction to practice. See In re Tanczyn, 347 F.2d 830, 833 (CCPA 1965) (Reduction to practice of a nitrogen-containing stainless steel did not overcome a rejection because the appellant did not establish possession the claimed stainless steel that contained molybdenum as well as nitrogen). The burden for establishing reduction to practice of the claimed invention lies with the Appellant. In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011) (“A party seeking to antedate a reference based on reduction to practice must present evidence of the actual reduction to practice of the invention prior to the effective date of the reference. An inventor cannot rely on uncorroborated testimony to establish a prior invention date. It has long been the case that an inventor’s allegations of earlier invention alone are insufficient—an alleged date of invention must be corroborated.”) (internal citation omitted). The Wimberger Declarations rely on photographs A1 to A4 attached thereto as evidence of a reduction to practice of the claimed invention. The Examiner found that the photographs are insufficient evidence that the inventor reduced to practice the claimed invention, particularly an apparatus having a deflecting wall “extending upwardly into a curb box.” The Examiner states that “the photographs Appeal 2013-008339 Reexamination Control 90/011,700 Patent 7,488,414 B2 9 submitted with the Declaration, in particular Exhibits A2 and A3, depict the deflecting wall 18 as being outside of the curb box 5.” Ans. 13. The Examiner also found that the photographs are insufficient evidence to corroborate Mr. Wimberger’s testimony that the presence of a gap between the deflecting wall and the basin “allows the bottom portion of the imperforate deflecting wall to be positioned with the curb box.” Ans. 13 (citing Third Decl. ¶ 6). We agree with the Examiner that photographs A1-A4 do not provide sufficient evidence to corroborate Mr. Wimberger’s testimony that (1) “the bottom portion of the imperforate wall is within the curb box” or (2) that the “inset edges” of the back flange “allows the bottom portion of the imperforate deflecting wall to be positioned with the curb box.” Third Decl. ¶¶ 6-7. Photographs A2 and A3 are not sufficiently clear to show whether or not the “bottom portion” of deflecting wall 18 is “within the curb box.” The images are not taken from an angle and/or have not been provided with sufficient resolution to reliably corroborate the statements made by Mr. Wimberger. Even if there was sufficient corroborating evidence to show that a bottom portion of the deflecting wall is within the curb box, we agree with the Examiner that the photographs A2 and A3 clearly show the deflecting wall extending upwardly from the flange out of the curb box and not “into the curb box” as required by the claims and interpreted above. Appellant has presented no argument addressing why positioning of the bottom portion of the deflecting wall in the curb box would constitute the deflecting wall “extending upwardly into the curb box.” Appellant further contends that “[t]he length [horizontal width] of the deflecting wall is merely a design choice to fit a particular sewer inlet” and that Appeal 2013-008339 Reexamination Control 90/011,700 Patent 7,488,414 B2 10 “modifying a length of an imperforate deflecting wall to fit within a curb box . . . was obvious to one of ordinary skill in the art.” App. Br. 10 and Reply Brief 6, filed March 25, 2013. To antedate these prior art references, Appellant must establish possession of either the whole claim or something falling within the claim. Tanczyn, 347 F.2d at 833. In the case of an obviousness rejection, Appellant need only show possession of as much of the claimed invention as is shown in the reference that is to be antedated. Here, the Examiner found that both Gauldin and Morris disclose a deflecting wall that fits within a curb box. Ans. 5-7. Thus, Appellant’s position that modifying a deflecting wall such that it extends into a curb box would have been a mere design choice or obvious to the skilled artisan is not persuasive. Further, Appellant has provided no meaningful evidence that the inventor was aware of such a modification or had considered modifying the deflecting wall to fit the size of the curb box. Accordingly, we agree with the Examiner that the evidence is not sufficient to antedate the Gauldin and Morris references. Since Appellant presents no arguments against the substance of the rejections based on Gauldin and Morris, we affirm all the rejections maintained by the Examiner. V. CONCLUSION On the record before us, we affirm the rejections maintained by the Examiner. VI. TIME PERIOD FOR RESPONSE Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). Appeal 2013-008339 Reexamination Control 90/011,700 Patent 7,488,414 B2 11 AFFIRMED FOR PATENT OWNER AND REQUESTER: WESTMAN CHAMPLIN & KELLY, P.A. Suite 1400 900 Second Avenue South Minneapolis, MN 55402 Copy with citationCopy as parenthetical citation