Ex Parte Aston et al

Patent Trial and Appeal Board

Oct 26, 2017

14223616 (P.T.A.B. Oct. 26, 2017)

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.
14/223,616 03/24/2014 Scott D. Aston 027262-00364U S CIP1 1263
27805 7590 10/30/2017
THOMPSON HTNF T T P
EXAMINER
10050 Innovation Drive CHU, KATHERINE J
Suite 400
DAYTON, OH 45342-4934 ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
ipdocket @ thompsonhine. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT D. ASTON, MICHAEL G. CARFAGNO, and
PHILIP A. CREAMER
Appeal 2016-008679
Application 14/223,616
Technology Center 3600
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Scott D. Aston et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—13.2 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Contech Engineered
Solutions LLC. Appeal Br. 3.
2 Claims 14—20 are cancelled. Appeal Br. 31 (Claims App.).
Appeal 2016-008679
Application 14/223,616
THE CLAIMED SUBJECT MATTER
Claims 1 and 9 are independent. Claim 1 is reproduced below and is
illustrative of the subject matter on appeal.
1. A multi-channel culvert assembly, comprising:
a first culvert unit having an arch-shaped top wall, a first
side wall extending substantially vertically downward from the
top wall and a second sidewall extending downward and outward
from the top wall;
a second culvert unit having an arch-shaped top wall, a
first side wall extending substantially vertically downward from
the top wall and a second sidewall extending downward and
outward from the top wall;
wherein the first culvert unit is positioned with its first side
wall toward an inner part of the assembly and the second culvert
unit is positioned with its first side wall toward the inner part of
the assembly to create first and second channels of the assembly,
the first channel beneath the first culvert unit, the second channel
beneath the second culvert unit, wherein the first channel has an
inner side that is substantially vertical and an outer side that is
angled from vertical and the second channel has an inner side
that is substantially vertical and an outer side that is angled from
vertical.
The Examiner relied on the following evidence in rejecting the claims
EVIDENCE
on appeal:
Moore
Niswander
US 1,734,392
US 4,564,313
Nov. 5, 1929
Jan. 14, 1986
June 12, 2001
Aug. 10, 2010
Mar. 18,2014
Bernini
Boresi
Mailhot
US 6,243,994 B1
US 7,770,250 B2
US 8,672,583 B1
2
Appeal 2016-008679
Application 14/223,616
REJECTIONS
I. Claims 1—3 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Boresi and Mailhot. Final Act. 2—3.
II. Claims 4—7 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Boresi, Mailhot, and Niswander. Id. at 3^4.
III. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Boresi, Mailhot, and Bernini. Id. at 4.
IV. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Boresi, Mailhot, and Moore. Id. at 4—5.
V. Claims 11—13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Boresi, Mailhot, Moore, and Niswander. Id. at 5—6.
OPINION
Rejection I
In rejecting independent claim 1, the Examiner finds that Boresi
teaches a multi-channel culvert unit including most of the limitations of
independent claim 1. Final Act. 2—3 (citing Boresi, Fig. 8). The Examiner
takes a first position that the side walls shown in Figure 8 of Boresi “can be
considered as both substantially vertical and extending outward and
downward.” Ans. 3; see also Final Act. 2 (finding that Boresi teaches first
and second culvert units each having “a first side wall extending
substantially vertically downward . . . and a second sidewall extending
downward and outward”). Although the Examiner asserts that “the claims
did not provide a limitation stating that the first side wall must be different
from the second side wall” (Ans. 3), we find the Examiner’s interpretation in
which the same wall can be considered both substantially vertical, and
extending downward and outward, to be unreasonable. Rather, we view a
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Application 14/223,616
reasonable interpretation of the claim to require some difference in the angle
at which the two distinctly claimed walls extend downward (“substantially
vertically” versus “downward and outward”) in order to provide adequate
meaning to the claim terms. Accordingly, we do not agree with the
Examiner’s finding that Figure 8 of Boresi teaches first and second culvert
units having a first side wall extending substantially vertically downward
from the top wall and a second sidewall extending downward and outward
from the top wall, as claimed.
The Examiner takes a second position that Boresi teaches prior art
culvert units with vertical legs (Boresi, Figs, la, lb) and culvert units with
angled (outward and downward) legs {id., Fig. 8). Ans. 3; see also Final
Act. 3 (finding that “Boresi discloses in Figure lb that a culvert unit with an
arch-shaped top wall is prior art, and further, with substantially vertical side
walls.”). The Examiner finds that Mailhot teaches culverts having “arch­
shaped sections that can be semi-ellipses, other regular geometric shapes, as
well as irregular and asymmetrical shapes.” Id. (citing Mailhot, col. 5,11. 5—
10). The Examiner determines that it would have been obvious “to modify
Boresi’s culvert unit with design elements of a culvert unit known in [the]
prior art in view of Mailhot’s disclosure that similar units can be asymmetric
based on design incentives.” Id. According to the Examiner, “[t]he
resulting combination yields the first channel ha[ving] an inner side that is
substantially vertical and an outer side that is angled from vertical and the
second channel ha[ving] an inner side that is substantially vertical and an
outer side that is angled from vertical.” Id.
Appellants argue that “the Examiner has failed to provide a sufficient
rationale to support a prima facie case of obviousness.” Appeal Br. 9. In
particular, Appellants assert “that an unlimited number of possible
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Application 14/223,616
asymmetrical shapes exist, and therefore, a generic and vague statement
regarding asymmetry does not necessarily lead to any particular asymmetric
shape.” Id. at 11; see id. (asserting that “Mailhot only states that a shape of
the molded plastic chamber may be asymmetrical (note the use of permissive
language),” but does not suggest the desirability of an asymmetrical shape or
explain why one of ordinary skill in the art might be led to pursue an
asymmetrical shape (citing Mailhot, col. 5,11. 8—10)). According to
Appellants, “a generic disclosure of the potential for asymmetry in Mailhot
would not lead one of ordinary skill in the art to the specific shape of the
culvert units required by claim 1 or the particular arrangement of the culvert
units specified in claim 1.” Id. at 12—13. We agree that a sustainable case of
obviousness has not been established.
Here, the Examiner has not sufficiently articulated a rational
evidentiary underpinning to explain why, given the teachings of Boresi and
Mailhot, an ordinary artisan would have been prompted to modify Boresi,
which teaches culverts having both side walls extend downward from the top
wall either outwardly (i.e., sloped) (see Boresi, Fig. 8) or substantially
vertically (see id., Fig. la, lb), to include one of each type of side wall and
to position the substantially vertical wall of each culvert toward the center of
the culvert assembly, as required by the claim. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (requiring “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness”) (cited
with approval in KSRIntI Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007)).
Although we appreciate the Examiner’s position that the proposed
modification “is simply an option, and one of ordinary skill in the art would
determine whether an option like that would be desirable in each
construction project” (Ans. 4), we agree with Appellants that the mere
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Application 14/223,616
possibility that such a modification could be made does not provide a reason
for making such a modification (Reply Br. 2). Moreover, the Examiner has
not provided evidence or reasoning to show that this is a situation where
there is a design need or market pressure to solve a problem with a finite
number of identified, predictable solutions to solving that problem, such that
achieving the claimed invention is the product of ordinary skill and common
sense, not the product of innovation. See KSR, 550 U.S. at 402. In
particular, it appears there are countless ways to achieve asymmetry or to
meet engineering demands on a particular site (see Ans. 6), not simply
choosing between a straight or angled leg.
Rejections based on 35 U.S.C. § 103(a) must rest on a factual basis.
In making such a rejection, the Examiner has the initial duty of supplying
the requisite factual basis and may not, because of doubts that the invention
is patentable, “resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in [the] factual basis.” In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). Absent improper hindsight
reconstruction, we fail to see a sufficient reasoned explanation based on
some rational underpinning as to why one of ordinary skill in the art would
have been led to modify the culvert assembly of Boresi as proposed by the
Examiner. Namely, the Examiner’s proffered reasoning, i.e., “based on
design incentives” (see, e.g., Final Act. 3, Ans. 6) does not provide an
apparent reason explaining why one of ordinary skill in the art would modify
the culvert of Boresi so that each culvert unit has a side wall that extends
substantially vertically downward from the top wall at an inner part of the
culvert assembly and a side wall that extends downward and outward from
the top wall, as required by claim 1, and a reason for such modification is
not otherwise evident from the record.
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Application 14/223,616
For the foregoing reasons, we are persuaded that the Examiner erred
in concluding that the combination of Boresi and Mailhot renders obvious
the subject matter of independent claim 1. Accordingly, we do not sustain
the rejection of claim 1, and its dependent claims 2 and 3, under 35 U.S.C.
§ 103(a) as unpatentable over Boresi and Mailhot.
Rejections II—V
The Examiner’s rejections of claims 4—13 rely on the same deficient
reasoning for combining Boresi and Mailhot as discussed above in
connection with the rejection of independent claim 1, and the Examiner does
not explain how Niswander, Bernini, and/or Moore might remedy this
deficiency. See Final Act. 3—6. Accordingly, for the above reasons, we do
not sustain the rejections, under 35 U.S.C. § 103(a), of: claims 4—7 as
unpatentable over Boresi, Mailhot, and Niswander; claim 8 as unpatentable
over Boresi, Mailhot, and Bernini; claims 9 and 10 as unpatentable over
Boresi, Mailhot, and Moore; and claims 11—13 as unpatentable over Boresi,
Mailhot, Moore, and Niswander.
DECISION
The Examiner’s decision to reject claims 1—13 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
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