Ex Parte 7396471 et al

Patent Trial and Appeal Board

Dec 17, 2013

90011699 (P.T.A.B. Dec. 17, 2013)

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.
90/011,699 06/07/2011 7396471 W38.18-0006 5042
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 2013-006791
Reexamination control 90/011,699
Patent 7,396,471 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
7,396,471 B2 (hereinafter the “’471 patent”), appeals under 35 U.S.C. §§ 134(b)
and 306 from the Examiner’s decision to reject claims 1-5, 8 and 9 (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.”).
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Patent 7,396,471 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 6 and 7 were not subject to the reexamination request. See Ans.
3, n. 2. Original claims 1-5, 8 and 9 of the ’471 patent have not been amended
during this reexamination proceeding. Claims 1-9 were confirmed in a prior Ex
Parte Reexamination Certificate issued January 4, 2011 (Reexamination Control
90/009,718).
The ’471 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 (’471 patent, col. 1, ll. 11-36).
The ’471 patent is related to U.S. Patent 7,488,414, the subject of Reexamination
Control 90/011,700, also currently on appeal. The ’471 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 having
an opening;
a filter supported by the structure proximate the opening; and
a 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, the deflecting wall
being imperforate and
Appeal 2013-006791
Reexamination Control 90/011,699
Patent 7,396,471 B2

3
wherein storm water enters the structure through the grate and
the water flows though the filter and the opening in the structure to
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. 14.)
II. REJECTIONS
The Examiner maintains the following rejections on appeal;
1. Claims 1, 8 and 9 under 35 U.S.C. § 102(e) as anticipated by Gauldin;2
2. Claims 1-5, 8 and 9 under 35 U.S.C. § 102(e) as anticipated by Morris;3
3. Claims 1-5, 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over
Morris, Lewis4 and Isaacson;5
4. Claims 1-5, 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over
Paoluccio6 and Gauldin;
5. Claims 1-5 under 35 U.S.C. § 103(a) as unpatentable over Paoluccio,
Morris, and Lewis; and
6. Claims 1-5, 8 and 9 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.
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Reexamination Control 90/011,699
Patent 7,396,471 B2

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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 ’471 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 that the deflecting wall “extends into the curb box” as recited in both
independent claims 1 and 8. Ans. 12.
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 that the deflecting
wall “extends 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

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Patent 7

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Appeal 2013-006791
Reexamination Control 90/011,699
Patent 7,396,471 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 ’471 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.
Accordingly, we agree with the Examiner’s interpretation that the claims
require the deflecting wall to extend from the structure into the curb box. We find
this consistent with the additional limitation in claim 1, which recites that the
deflecting wall extends “upwardly” into the curb box. While we understand that
the term “upwardly” is not recited expressly in claim 8, as discussed above, we

8 See e.g., , accessed
December 5, 2013.
Appeal 2013-006791
Reexamination Control 90/011,699
Patent 7,396,471 B2

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find no other direction from which the deflecting wall can reasonably “extend” that
would be consistent with the claims or the disclosure of the ’471 patent, as the
deflecting wall does not appear to be connected or attached in any other manner so
as to extend from an alternative direction.
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
Appeal 2013-006791
Reexamination Control 90/011,699
Patent 7,396,471 B2

9
practice the claimed invention, particularly an apparatus having a deflecting wall
that “extends into a curb box.” The Examiner states that “the photographs
submitted with the Declaration, in particular Exhibits A2 and A3, depict the
deflecting wall 18 as being outside of the curb box 5.” Ans. 12. 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 from the flange out of the curb
box and not “into the curb box” as required by the claims and interpreted above.
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
“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,
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Patent 7,396,471 B2

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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. 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 2013-006791
Reexamination Control 90/011,699
Patent 7,396,471 B2

11
AFFIRMED

FOR PATENT OWNER AND REQUESTER:

WESTMAN CHAMPLIN & KELLY, P.A.
Suite 1400
900 Second Avenue South
Minneapolis, MN 55402