Ex Parte Baker

Patent Trial and Appeal Board

Apr 27, 2018

13055839 (P.T.A.B. Apr. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/055,839 01125/2011
23935 7590 05/01/2018
KOPPEL, PATRICK, HEYBL & PHILPOTT
2815 Townsgate Road
SUITE 215
Westlake Village, CA 91361-5827
FIRST NAMED INVENTOR
David Baker
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
301-2F-001 8465
EXAMINER
TOLEDO-DURAN, EDWIN J
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
05/01/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
GENERALMAIL@KOPPELPATENT.COM
eofficeaction@appcoll.com
usptointake@koppelpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID BAKER 1
Appeal2017-007157
Application 13/055,839
Technology Center 3600
Before STEFAN STAICOVICI, JAMES P. CALVE, and
BRANDON J. WARNER, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Office Action
rejecting claims 1---6 and 8. Br. 2. Claims 7 and 9--12 are cancelled. Id. at
69--70 (Claims App'x). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Balfour Beatty PLC is identified as the real party in interest. Br. 1.
Appeal2017-007157
Application 13/055,839
CLAIMED SUBJECT MATTER
Claims 1 and 6 are independent. Illustrative claim 1 is reproduced
below.
1. A retaining wall for retaining matter on a side thereof
compnsmg:
a plurality of upwardly projecting primary structural
members spaced apart from each other and having a first
structural property comprising depth installed in a supporting
body; and
one or more intermediate panels of material arranged so
as to span horizontally the gap between a pair of the primary
structural members and thus retain matter between the primary
structural members,
wherein the primary structural members are sheet piles,
and wherein the one or more intermediate panels project
downwardly into the supporting body to a lesser depth than the
primary structural members so as to have a structural property
different from the first structural property,
and wherein the one or more intermediate panels are only
adequate to retain the matter such that the primary structural
members are adapted to provide the main structural restraint to
bending and shear in the retaining wall.
Br. 68 (Claims App'x).
REJECTIONS
Claims 1---6 and 8 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1-3, 5, 6, and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over di Zoppola (US 1,942,163, iss. Jan. 2, 1934).
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
di Zoppola and Gifford (US 776,131, iss. Nov. 29, 1904).
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Appeal2017-007157
Application 13/055,839
ANALYSIS
Claims 1-6 and 8
Rejected As Being Indefinite
The Examiner determines the limitation in claims 1 and 6, reciting the
one or more intermediate panels "are only adequate to retain the matter," is
unclear. Non-Final Act. 3. The Examiner finds that the Specification's use
of "adequate" as "[the intermediate panels] need only be adequate to retain
the matter, and not provide the primary structural support to the wall" is
vague as to what actual structure is adequate. Ans. 6-7; see Non-Final Act.
3. The Examiner also points out that the term "adequate" can mean different
things to different people, particularly in different environments. Ans. 7.
Appellant argues that the meaning of this limitation is clear from the
context of claims 1 and 6. Br. 6. Appellant argues that claim 1 is exemplary
and recites "one or more intermediate panels of material arranged so as to
span horizontally the gap between a pair of the primary structural members"
"wherein the one or more intermediate panels are only adequate to retain the
matter such that the primary structural members are adapted to provide the
main structural restraint to bending and shear in the retaining wall." Id.
Appellant also argues that "only adequate" "means only adequate to perform
this horizontal load transfer function and not any other structural function
normally required in a retaining wall." Id. Appellant argues that "only
adequate to retain the matter" means the intermediate panels do not
contribute to the bending and shear restraint in the wall and are "structurally
adequate to span horizontally and transfer load from the retained matter
horizontally to the adjacent primary structural members so [the latter can
provide] the main structural restraint to bending and shear." Id. at 6-7.
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Appeal2017-007157
Application 13/055,839
Inventors must "claim their invention in 'full, clear, concise, and exact
terms."' One-E-Way, Inc. v. Int'! Trade Comm 'n, 859 F.3d 1059, 1062
(Fed. Cir. 2017) (quoting 35 U.S.C. § 112). A "claim is indefinite when it
contains words or phrases whose meaning is unclear." Ex parte McAward,
No. 2015-006416, slip op. at 11 (PTAB Aug. 25, 2017) (precedential)
(quoting In re Packard, 751F.3d1307, 1310, 1314 (Fed. Cir. 2014)). Thus,
"claims are required to be cast in clear-as opposed to ambiguous, vague,
indefinite-terms." Id. (quoting Packard, 751 F.3d at 1313)).
It is unclear what is meant by "the one or more intermediate panels
are only adequate to retain the matter. Neither the language of claim 1 nor
the Specification clarifies the meaning of this limitation. Appellant disclose
and claim a retaining wall having two elements: primary structural members
and intermediate panels. Appellant argues that the intermediate panels "do
not have to contribute to bending and shear restraint in the wall." Br. 6.
However, claim 1 recites that the primary structural members "are adapted
to provide the main structural restraint to bending and shear in the retaining
wall" (emphasis added). The fact that the intermediate panels "do not have
to contribute to bending and shear restraint in the wall" does not mean they
cannot do so. Claiming that primary structural members provide the "main"
structural restraint implies that another element provides some additional
structural restraint that supplements that "main" structural restraint. It is
unclear if the intermediate panels or another unclaimed element provides
some structural restraint, or if the primary structural members provide "all"
(versus the "main) structural restraint. The Specification discloses that the
primary sheet piles "provide the majority of the structural capacity for the
vertical spanning function of the retaining wall." Spec. 2 (emphasis added).
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Appeal2017-007157
Application 13/055,839
Second, claim 1 recites the intermediate panels are "arranged so as to
span horizontally the gap between a pair of the primary structural members
and thus retain matter between the primary structural members." Appellant
argues that the intermediate panels "transfer load from the retained matter
horizontally to the adjacent primary structural members." Br. 6-7. Claim 1
does not recite this feature, however. The Specification discloses only that
the intermediate panels "may bear on or be connected to the pair of primary
sheet piles." Spec. 2. Thus, it is unclear whether intermediate panels "span"
the gap by bearing on or being connected to primary structural members or
some other arrangement is claimed. If intermediate panels transfer a load to
primary structural members when they "span" the gap, it is unclear if this
relationship also causes the intermediate panels to provide some (but not the
main) structural restraint. This interpretation is consistent with the language
that the primary structural members provide the "main" structural restraint.
Thus, it is not clear what structural or functional features are claimed by
"span" the gap, e.g., bear on, connect to, transfer loads, and if "span" the gap
also causes the intermediate panels to provide some structural restraint.
Third, claim 1 requires the primary structural members to have a "first
structural property comprising a depth installed in a supporting body."2 The
intermediate panels project into the supporting body to a lesser depth to have
a different structural property and are "only adequate to retain the matter."
It is unclear whether the intermediate panels are "only adequate to retain the
matter" because of their installed depth or because their relationship to the
primary structural members only allows them to transfer load to the primary
structural members without also receiving bending or shear forces back.
2 The supporting body is disclosed to be the supporting ground. Spec. 3.
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Appeal2017-007157
Application 13/055,839
In this regard, the Specification discloses that intermediate panels are
driven into the supporting body to a lesser depth "D2" than the depth "D 1"
to which primary sheet piles 12 are driven into the supporting body, but are
sufficient to "retain at least a portion of the retained matter 11." Spec. 3.
Appellant discloses that this vertical offset between "D 1" and "D2" can be
"more than 1 Ocm, preferably more than 50cm, and even more preferably
more than 1 m." Id. Therefore, it is unclear whether the different structural
property of the intermediate panels than "depth" means that the intermediate
panels are not driven into the supporting ground at all (i.e., to a zero depth),
whether the intermediate panels are driven to a depth of 10 cm less than the
depth of the primary structural members in which case they might provide
some structural restraint, or whether they are driven to a depth of 1 m less
than the depth of the primary piles or to some other depth that makes them
"only adequate to retain the matter" as claimed. Appellant discloses that
intermediate panels "may be identical structurally to the primary piles but
differ in being shorter." Id. at 4. The Specification also discloses that "the
intermediate panels 14 may be of lesser weight, size and/ or strength than the
primary sheet piles 12 and are normally not driven into the supporting
ground as far as the primary sheet piles." Id. However, the Specification
further discloses that "the intermediate panels 14 are of the minimum length
required to support the retained material by spanning horizontally between
primary panels or to satisfy ... water cut-off." Id. (emphasis added). Thus,
it is unclear whether the structural property of the intermediate panels that is
only adequate to retain the matter is the length of the intermediate members
or their depth, or some other structural property.
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Appeal2017-007157
Application 13/055,839
Finally, as the Examiner points out, the term "adequate" is a relative
term and has no fixed meaning depending on the context. Ans. 6-7. The
Specification does not disclose what materials or dimensions or structures
are adequate for the intermediate panels to retain matter while spanning the
gap between the primary piles with or without providing structural restraint.
To the contrary, the Specification indicates that intermediate panels may be
( 1) the same dimensions as primary sheet piles but different weight and/ or
strength, (2) identical structurally to primary piles but shorter, (3) a lesser
weight, size, and/or strength than primary sheet piles 12 and normally not
driven into the supporting ground as far as primary sheet piles, (4) formed
from the same material as primary sheet piles 12 in which case intermediate
panels 14 may be sheet piles 12, and/or (5) any suitable material including
plastic, reinforced plastic, wood, cloth, concrete, reinforced concrete, and
metal, for example. Id. Given this disclosure and the lack of clarity of the
language of claim 1, as explained above, what is "adequate" in any given
context for any given retained soil or water "matter," is left largely to the
unrestricted judgment and opinion of a person without sufficient guidance
provided in the Specification. See Datamize, LLC v. Plumtree Software,
Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005), cited with approval in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014).
For all of the foregoing reasons, we sustain the rejection of claims 1-6
and 8 for indefiniteness.
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Appeal2017-007157
Application 13/055,839
Prior Art Rejections of Claims 1-6 and 8
Over di Zappala or di Zappala and Gifford
We agree with the Examiner that di Zoppola teaches the structural
features of the claimed retaining wall. di Zoppola teaches primary structural
members as master piles 10 and intermediate pilings 12 that are longer and
heavier to provide beam strength at given intervals by extending deeply into
stationary, harder penetration material 11. di Zoppola, 1:5-10, 1 :41--46.
di Zoppola also teaches intermediate panels as shorter, lighter pilings 13, 13
that span the gap between structural piles 10, 12 and retain soil or sand 14
against shifting but only extend a short distance into harder penetration
material 11. Id. at 1:1-10, 1:41-53, 1:59---62, Fig. 1; Non-Final Act. 4--5.
We also agree with the Examiner that di Zoppola teaches that this
configuration provides similar benefits as the claimed retaining wall of using
longer, heavier pilings 10, 10 as master piles and beams and short elements
13, 13 as elements of the bulkhead/seawall "because they have little or no
penetration into the harder penetration material 11." di Zoppola, 1 :56-62;
As a result, "[b ]y this gradation there is secured a balance between economy
of the structure and the stability thereof." Id. at 1:66-68; see Spec. 2, 5.
However, because the claims are indefinite, as discussed above, we
cannot adjudicate the prior art rejections of the claims. In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970) ("Ifno reasonably definite meaning can be
ascribed to certain terms in the claim, the subject matter does not become
obvious-the claim becomes indefinite."); see also In re Steele, 305 F.2d
859, 862---63 (CCPA 1962) (determinations of obviousness cannot be made
for claims where a determination of claim scope requires considerable
speculation and assumptions).
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Appeal2017-007157
Application 13/055,839
As a result of the indefiniteness of the claims, we reverse proforma
the Examiner's rejections of those claims under 35 U.S.C. § 103(a). Our
decision is based solely on the indefiniteness of the claimed subject matter,
and does not reflect on the adequacy of the prior art evidence applied in
support of the prior art rejections.
DECISION
We affirm the rejection of claims 1---6 and 8 as indefinite.
We reverse proforma the prior art rejections of claims 1---6 and 8.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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