Ex Parte Canney et al

Patent Trials and Appeals Board

Mar 14, 2019

13500231 - (D) (P.T.A.B. Mar. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/500,231 06/26/2012
27367 7590 03/18/2019
WESTMAN CHAMPLIN & KOEHLER, P.A.
SUITE 1400
900 SECOND A VENUE SOUTH
MINNEAPOLIS, MN 55402
FIRST NAMED INVENTOR
James Canney
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.
Al30.12-0001 7265
EXAMINER
CHU, KATHERINE J
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
03/18/2019 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):
docketing@wck.com
tsorbel@wck.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte
JAMES CANNEY, THOMAS DAU,
TIMO ELIAS, PRASANNA KUMAR, and
ARNE MEIN CKE 1
Appeal2018-005091
Application 13/500,231
Technology Center 3600
Before DANIEL S. SONG, MICHAEL L. HOELTER, and
FREDERICK C. LANEY, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1--4, 7-13, 15, and 17-20. See App. Br.
1 "ACO SEVERIN AHLMANN GMBH & GO., KG, ... is the owner by
assignment of the entire right, title and interest in and to the invention, the
application and any and all patents obtained therefor and is [the] real part[y]
in interest in the application." App. Br. 3. We thus proceed on the basis
that, for purposes of this appeal, ACO SEVERIN AHLMANN GMBH &
GO., KG is the "Appellant."
Appeal2018-005091
Application 13/500,231
1, 5. We have jurisdiction under 35 U.S.C. § 6(b ). For the reasons
explained below, we AFFIRM the Examiner's rejections of these claims.
CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to a drainage body" and
particularly, "a drainage unit that comprises a plurality of [] drainage
bodies." Spec. 1. 2 Apparatus claims 1, 15, and 19 are independent. Claim 1
is representative of the claims on appeal and is reproduced below.
1. A drainage body comprising:
substantially identically shaped surface units including a
plurality of base units and a plurality of substantially identically
shaped top units; and
a plurality of spacers being formed as hollow bodies and
projecting from each of the base units and each of the top units
in opposing directions;
wherein:
the spacers projecting from the bottom units are
connected to the spacers of the top unit;
the base units and the top units overlap one another
and are adjoined via said spacers together in the manner of a
masonry bond;
each of a plurality of said top units overlaps and is
joined via said spacers to two of the base units;
the spacers and/ or the surface units include
complementary plug sections and socket fastening sections that
are distributed in such a way that the fastening sections
interlock with the plug sections and join the base units to the
top units; and
the fastening sections are disposed on each surface
unit in such a manner that the following rules are applicable:
a) the arrangement of the fastening sections
each identically formed on one half of the surface unit is
2 Appellant's Specification lacks both paragraph and line numbering.
Hence, we reference Appellant's Specification by page number only.
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Application 13/500,231
laterally reversed in respect of a diagonal of this half of the
surface unit;
b) the arrangement of the fastening sections
is mirrored in respect of a first area bisector of the surface unit;
and
c) in respect of a second area bisector of the
surface unit, the arrangement of the fastening sections is
inverted such that in each case the other fastening section is
located in a mirrored position.
Obermeyer
Sadaishi
Marshall
Roelfsema
Suzuki3
REFERENCES
US 2011/0255921 Al
DE 4304609 Al
EP O 612 888 Al
EP 1 607 535 Al
JP 2008-231681 A
THE REJECTIONS ON APPEAL
Oct. 20, 2011
Dec. 2, 1993
Aug.31, 1994
Dec. 21, 2005
Oct. 2, 2008
Claims 1--4, 7, and 18 are rejected under pre-AIA 35 U.S.C. § I03(a)
as unpatentable over Obermeyer and Suzuki.
Claims 8, 12, and 13 are rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Obermeyer, Suzuki, and Roelfsema.
Claim 9 is rejected under pre-AIA 35 U.S.C. § I03(a) as unpatentable
over Obermeyer, Suzuki, and Marshall.
Claims 10, 11, 15, 17, 19, and 20 are rejected under pre-AIA
35 U.S.C. § I03(a) as unpatentable over Obermeyer, Suzuki, and Sadaishi.
3 This reference appears to be an electronic translation and Appellant has not
raised any objections to its accuracy.
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Application 13/500,231
ANALYSIS
The rejection of claims 1-4, 7, and 18
as unpatentable over Obermeyer and Suzuki
Appellant argues claim 1 separate from claims 4, and 7. See App. Br.
11-19. Regarding claims 2, 3, and 18, Appellant relies on the same
arguments presented for claim 1. See App. Br. 18. Accordingly, we select
claims 1, 4, and 7 for review, with the remaining claims standing or falling
with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1
The Examiner primarily relies on the teachings of Obermeyer for
disclosing the limitations of claim 1, but relies on Suzuki for disclosing the
overlapping of adjacent units "in the manner of a masonry bond," as recited.
See Final Act. 2 (referencing Suzuki Fig. 3); see also Suzuki ,r 28.
Regarding the three "rules" recited in claim 1, the Examiner states, "[i]t
would be obvious to provide a different array, the array based on design
choice, such as a 3x6 dependent upon the size of the block needed for any
particular project." Final Act. 2-3. The Examiner also annotates Figure 3 of
Obermeyer (see below) illustrating the disclosure of these "rules."
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Application 13/500,231
r··r:;r, ;~·Ji
~ 3xi* f:
L~~~:~~;::!!:i,~,J•
The above is "a top plan view" of "an array of frustum-shaped conical
bodies" annotated by the Examiner. Final Act. 3; Obermeyer ,r,r 8, 9.
Appellant contends, "[ n ]either Obermeyer nor Suzuki, alone or in
combination, offer any teaching, suggestion or motivation for selecting any
3x6 portion, let alone the particular 3x6 portion cited by the Examiner."
App. Br. 11; see also id. at 15, Reply Br. 4. Appellant's contention
regarding the teachings of Obermeyer is contrary to the express teachings
therein which repeatedly discloses that both the size and shape of the array
can vary, and that the disclosed "10x9 array" is only a "preferred
embodiment." See, e.g., Obermeyer ,r,r 14, 27, 29, 32, 35, 36. In fact,
Paragraph 34 of Obermeyer specifically states that the product may be cut as
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Application 13/500,231
desired "onsite."4 This is consistent with the Examiner's statement
regarding "design choice," and the provision of a 3x6 array "dependent upon
the size of the block needed for any particular project." Final Act. 3.
Further, and specifically addressing Appellant's contention regarding
"let alone the particular 3x6 portion cited by the Examiner" (see supra), the
Examiner states, "but really any 3x6 portion, whether in the comers or sides
or in the interior, works." Ans. 4. The Examiner also "maintains that the
arrays required to meet Appellant's rules are simply subsets of a known
structure, Obermeyer's structure." Ans. 5. Appellant has not demonstrated
persuasively that the Examiner's reasoning on this point was improper.
Appellant also argues that "any infinite number of sizes might be
needed according to the need of the particular project." Reply Br. 3; see
also App. Br. 14 (the number of options "is essentially endless"). While this
might be true (and is equally applicable to Appellant's own device), such
possibility does not distract from the Examiner's "design choice" rationale
4 On this point, the Examiner states, "[i]n a construction site, it is common to
cut bricks or wood planks in order to obtain the size needed. It is easy to see
how one of ordinary skill in the art would think to cut Obermeyer's
structure." Ans. 5. Appellant replies, "[t]he Examiner fails to provide any
evidence to show that water retention cells are cut at construction sites, or at
any other place." Reply Br. 3. Our reviewing court has provided
instructions that "the proper test of a description in a publication as a bar to a
patent ... requires a determination of whether one skilled in the art to which
the invention pertains could take the description of the invention in the
printed publication and combine it with his own knowledge of the particular
art and from this combination be put in possession of the invention on which
a patent is sought." In re LeGrice, 301 F.2d 929, 939 (CCPA 1962). We are
not persuaded that one skilled in the art would not consider cutting
Obermeyer's device to size as needed, and as explicitly taught in
Obermeyer. Appellant's arguments are not persuasive of Examiner error.
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Application 13/500,231
that sizes smaller than the "preferred embodiment" (i.e., subsets) Obermeyer
illustrates might be needed, or Obermeyer' s teachings that the size and shape
of the device may vary. See supra. As above, Obermeyer discloses altering
the size of the array, and Appellant does not explain how altering the size to
a 3x6 array is precluded.
Appellant further contends, "any support inferred by the Examiner is
gleaned solely from Appellant's disclosure, and thus is firmly rooted in
impermissible hindsight." App. Br. 11; see also id. at 14--17, Reply Br. 4.
This contention is not persuasive in view of Obermeyer's disclosed array
and Obermeyer's teaching of cutting/sizing the array as needed. See
Obermeyer ,r,r 14 ("[t]he invention, however, is not limited to the forms
illustrated and described"), 35 ("[t]he shape and size of the assembly ...
may be varied as desired to accommodate a wide variety of applications").
Hence, we are not persuaded the Examiner's findings are "based on
Appellant's claim 1" (App. Br. 12), or "gleaned solely from Appellant's
disclosure" (Reply Br. 4) and not, instead, premised upon the express
teachings of Obermeyer.
Appellant additionally acknowledges that upon a partitioning of
Obermeyer's array, "five different shapes fulfilling the limitations of
Appellant's claim 1 can be cut from [Obermeyer's] 10x9 assembly." App.
Br. 13. Appellant, nevertheless, contends that these "arrays fulfilling the
limitations of claim 1 are not the rule, but clearly the exception." App. Br.
13. However, whether the rule or the exception, Appellant acknowledges
that different subsets of Obermeyer's array satisfies the limitations of claim
1. In effect, Appellant is confirming the Examiner's finding that different
arrays cut from Obermeyer meet the recited limitations. See Final Act. 3.
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Appellant additionally states "[al departure from the 1 Ox9 array of
Obermeyer is neither disclosed nor suggested in the teaching of Obermeyer."
App. Br. 17; Reply Br. 5. The Examiner states, "Obermeyer literally
suggests that in paragraph [0036]." Ans. 6. We agree with the Examiner in
view of the abundant recitations in Obermeyer that contradict Appellant's
assertion (see supra).
The parties also dispute whether a Declaration by Ame Meineke was
properly filed or not, and whether it could/should be considered. See Final
Act. 7; App. Br. 29; Ans. 3--4. Even if considered, the Declaration merely
repeats the arguments that Appellant already makes in the Appeal Brief and
offers little, if any, additional persuasive value to those arguments.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 1-3 and 18 as being obvious over
Obermeyer and Suzuki. We sustain the Examiner's rejection of these
claims.
Claim 4
Claim 4 includes language directed to units being "stackable," with
Appellant's Specification indicating that this is for "storage and transport"
reasons. Spec. 3. The Examiner states, "Obermeyer, the primary reference,
already teaches stacking." Ans. 7; see also Final Act. 4. There is merit to
the Examiner's reliance on Obermeyer for this because Obermeyer teaches
that the frustum-shaped assemblies "may be compactly nested and stacked
for shipment." Obermeyer ,r 6; see also id. at 34 ("the assemblies 20 may be
arranged in nested stacks for shipment and storage"). Thus, Appellant's
contention that the Examiner erred in relying on Obermeyer for such
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teachings is not persuasive. See App. Br. 18. We, therefore, sustain the
Examiner's rejection of claim 4.
Claim 7
Claim 7 recites fastening sections "each having devices for mutual
interlocking." On this point, "the Examiner takes Official Notice that a
connection with teeth that slope in one direction that prevents removal after
insertion ... is old and well-known." Final Act. 4 (referencing "the teeth of
cable ties or zip ties"). The Examiner states that it would have been obvious
to modify the combination of Obermeyer and Suzuki "using the locking
mechanism such as those of zip ties to provide a more permanent
connection." Final Act. 4. The Examiner also notes that when he first "took
Official Notice and made the limitation obvious in the first Office Action of
this application dated 9/18/2013," "Appellant did not challenge the Official
Notice" or make any argument thereagainst. Ans. 7. The Examiner also
states, "Appellant received eight office actions between 9/18/2013 and the
present, and never traversed the Official Notice which was present in every
office action." Ans. 7-8. Accordingly, as per the Examiner, due to "the
Examiner's assertion of Official Notice [ without adequate traverse], the facts
are now considered to be admitted prior art (MPEP 2144.03)." Ans. 8.
Appellant does not dispute this handling of the matter described by
the Examiner. Instead, Appellant contends, "[k ]no wing of a type of locking
device without a teaching of a locking device in general does not make claim
7 obvious." App. Br. 19. Nevertheless, even if Appellant were able to
protest the Examiner's finding of Official Notice at this late date, Appellant
does not dispute that the identified teeth arrangement was well-known by a
skilled artisan at the time of the invention or demonstrate why it would not
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have been obvious for a skilled artisan to have modified the recited
combination with such teeth "to provide a more permanent connection," as
the Examiner finds. Final Act. 4. Given that the Examiner has provided a
rationale for the proposed combination, which has a rational underpinning,
we find Appellant's argument conclusory and unpersuasive of error.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claim 7 as being obvious over Obermeyer,
Suzuki and Official Notice. We sustain the Examiner's rejection of claim 7.
The rejection of (a) claims 8, 12, and 13 as unpatentable over Obermeyer,
Suzuki, and Roelfsema; (b) claim 9 as unpatentable over Obermeyer, Suzuki,
and Marshall; and, (c) claims 10, 11, 15, 17, 19, and 20 as unpatentable
over Obermeyer, Suzuki, and Sadaishi
In responding to each rejection, Appellant merely submits that the
additionally cited art (i.e., Roelfsema, Marshall, and Sadaishi) "fails to
provide any teachings which overcome the failure of Obermeyer and
Suzuki." App. Br. 20-21; see also Reply Br. 5---6. In short, Appellant relies
on arguments presented and discussed above in an effort to reverse these
rejections. See App. Br. 20-22. We are not so persuaded. We sustain the
Examiner's rejections of these claims.
DECISION
The Examiner's rejections of claims 1--4, 7-13, 15, and 17-20 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal (see 37 C.F.R. § 1.136(a)(l )) may be extended (see 37 C.F.R.
§ 1.136(a)(l )(iv)).
AFFIRMED
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