Ex Parte Bussey et al

Patent Trial and Appeal Board

Oct 31, 2012

11591420 (P.T.A.B. Oct. 31, 2012)

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.
11/591,420 11/02/2006 Harry Bussey JR. 8405
7590 10/31/2012
Francis C. Hand, Esq.
c/o Carella, Byrne, Bain, Gilfillan, Cecchi,
Stewart & Olstein
5 Becker Farm Road
Roseland, NJ 07068
EXAMINER
KRECK, JOHN J
ART UNIT PAPER NUMBER
3672
MAIL DATE DELIVERY MODE
10/31/2012 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 APPEAL BOARD
____________________

Ex parte HARRY BUSSEY JR. and BUDDY HARRY BUSSEY III
____________________

Appeal 2010-008790
Application 11/591,420
Technology Center 3600
____________________

Before LINDA E. HORNER, PATRICK R. SCANLON, and
BRADFORD E. KILE, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Harry Bussey Jr. et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 11-14 and 23. Claims 2-5,
10 and 24-28 have been allowed, and claims 1, 6-9 and 15-22 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to a drainage element “having a
light weight aggregate encased in a tubular membrane.” Spec. 1, ll. 2-5.
Independent claim 11, reproduced below, is illustrative of the subject matter
on appeal.
11. A drainage element comprising:
a mass of discrete aggregate defining
passageways for a flow of fluid therethrough;
a tubular membrane encasing said mass of
discrete aggregate; and
a pipe extending from within said mass of
aggregate and beyond one end of said tubular
membrane, said pipe being of a length less than the
length of said tubular membrane.1
tie means closing around each end of said
membrane to retain said aggregate therein.
REFERENCES
The Examiner relies upon the following prior art references:
Burkstaller
DiTullio
Ring
Bussey
Wilson
US 4,881,846
US 6,679,653 B1
US 6,854,924 B2
US 2005/0063781 A1
US 2005/0229481 A1
Nov. 21, 1989
Jan. 20, 2004
Feb. 15, 2005
Mar. 24, 2005
Oct. 20, 2005
THE REJECTIONS
Appellants seek review of the following rejections:
The rejection of claims 11 and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Ring and DiTullio.

1 We note that this penultimate section of claim 11 is improperly punctuated
with a period in the Claims Appendix of Appellants’ Appeal Brief.
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The rejection of claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Ring, DiTullio and Burkstaller.
The rejection of claim 14 under 35 U.S.C. § 103(a) as being
unpatentable over Ring, DiTullio and Wilson.
The rejection of claim 23 under 35 U.S.C. § 103(a) as being
unpatentable over Ring, DiTullio and Bussey.
ANALYSIS
Claims 11 and 13
The Examiner finds that Ring discloses a drainage element including a
mass of aggregate, a tubular membrane encasing the aggregate, a pipe
extending from the aggregate, and tie means as recited in claim 11 but fails
to disclose the pipe having a length less than the length of the tubular
membrane. Ans. 4. The Examiner further finds that DiTullio discloses a
gallery (i.e., a drainage element) having a pipe extending a short distance
therein and concludes that it would have been obvious to one of ordinary
skill in the art to make the pipe of Ring less than the length of the membrane
so that the drainage element could be used at the end of a chain of such
drainage elements. Ans. 4, 7.
Appellants argue that there is no teaching in Ring or DiTullio as to
how to place a pipe in only one end of the drainage line unit 20 of Ring.
App. Br. 5, 6. Appellants also argue that the Examiner has not provided any
evidence of a known method for placing a pipe in the drainage line unit 20
that extends only partially therein. App. Br. 7.
These arguments are not persuasive. An obviousness analysis “need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
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steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). Furthermore, “if a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” Id. at 417. Appellants do not provide any evidence as to why
modifying Ring in the proposed manner would have been uniquely
challenging or difficult for one of ordinary skill in the art.2 See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Ring demonstrates that one of ordinary skill in the art would have been
familiar with machinery employing a tubular mandrel having an inner cavity
for receiving a vent pipe, a hopper assembly containing plastic aggregate
bodies, a conduit for feeding the aggregate into the cavity, a blower for
moving the aggregate from the conduit through the inner cavity of the
mandrel to fill a void space between the vent pipe and the wall of the
mandrel, and a sleeve feeder for feeding a continuous sleeve of netting over
the plastic aggregate and the vent pipe as they emerge from an opening in
the mandrel. Ring, col. 4, ll. 6-39; figs. 6, 7. Based on this disclosure in
Ring as to the level of skill of one of ordinary skill in the art, and in the
absence of evidence from Appellants as to why the proposed modification of
Ring would have been beyond the level of skill of one of ordinary skill in the
art, we find that providing the drainage line unit 20 of Ring with a pipe in

2 Appellants submit arguments alleging technical difficulties in making the
proposed modification, but arguments of counsel cannot take the place of
evidence. Manual of Patent Examining Procedure (MPEP) § 2145, I. (8th
ed., Rev. 9, August 2012) (quoting In re Schulze 346 F.2d 600, 602 (CCPA
1965); In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997)).
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only one end thereof would have been within the skill and creativity of the
ordinarily skilled person.
Appellants further argue that the galleries taught by DiTullio are not
drainage units. Reply Br. 2. The galleries of DiTullio are described as
structures used for guiding liquid through a leaching or drain field and
allowing liquid to seep into adjacent ground. DiTullio, Abstract. Given that
these galleries are a key part of the drainage system and Appellants’
Specification does not assign or suggest a particular definition of “drainage
element” that is different from the ordinary and customary meaning of the
term, we agree with the Examiner’s finding (See Ans. 4) that the galleries
are “drainage elements.”
In addition, we are not persuaded by Appellants’ contention that the
Examiner’s rationale for combining Ring and DiTullio is contrary to the
teachings of DiTullio. Reply Br. 2-3. DiTullio discloses that a leaching or
drain field can be constructed from a plurality of galleries arranged in end-
to-end relation. DiTullio, col. 4, l. 64-col. 5, l. 2. DiTullio further discloses
that “[t]he adjoining galleries are lifted and dropped onto one another using
the procedure described above in order to couple all the galleries one to
another. An infeed drainpipe is passed through the openings in at least one
end wall.” DiTullio, col. 5, ll. 5-9 (emphasis added). The reference to plural
openings suggests that all of the galleries in the drain field receive an infeed
drainpipe.3 In view of this, and the teaching in DiTullio that the drainpipe
can extend a short distance into the gallery or entirely through the length of

3 This notion is further supported by the disclosure of US Patent No.
5,087,151, issued Feb. 11, 1992 and incorporated by reference in DiTullio
(see DiTullio, col. 4, ll. 52-55).
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the gallery (DiTullio, col. 5, ll. 9-11), we conclude that a person having
ordinary skill in the art would have recognized the proposed modification of
Ring as the simple substitution of one known mechanical element for
another that produces predictable results. KSR, 550 U.S. at 416 (“when a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result”). The Examiner’s
rationale thus provides adequate reasoning based on rational underpinnings
to explain why one of ordinary skill would have been led to make the pipe of
Ring less than the length of the membrane.
As Appellants’ arguments do not apprise us of error in the Examiner’s
rejection, we sustain the rejection of claim 11 under 35 U.S.C. § 103(a) as
being unpatentable over Ring and DiTullio. We also sustain the rejection of
claim 13, which depends from claim 11 and for which Appellants do not set
forth any separate arguments.
Claim 12
The Examiner finds that Ring does not disclose a screen disposed over
the end of the pipe, as recited in claim 12, but determines that Burkstaller
discloses a screen 62 disposed over the end of a pipe in a drainage system.
Ans. 5 (citing Burkstaller, col. 9, ll. 12-15). The Examiner then concludes
that it would have been obvious to one of ordinary skill in the art to further
modify Ring by providing a screen over the end of the pipe within the
aggregate to prevent aggregate from entering the pipe. Ans. 5.
Appellants argue that there is no teaching in Burkstaller that would
motivate one of ordinary skill in the art to place a screen over an end of the
pipe “within said mass of aggregate.” App. Br. 8. We disagree. Burkstaller
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discloses placing a screen over the end of a pipe to prevent aggregate from
entering the pipe. Burkstaller, col. 9, ll. 13-16; fig. 7. Appellants emphasize
the “within said mass of aggregate” language, but this argument is not
compelling. Figure 7 of Burkstaller depicts the end of the pipe 60 covered
by the screen 62 being within the mass of aggregate 36, albeit not deeply.
Even if the end of the pipe 60 was not within the mass of aggregate, the
depiction of the pipe and screen at the edge of the aggregate in Figure 7 of
Burkstaller would suggest to a person having ordinary skill in the art to
consider adding a screen to the pipe of Ring.
For the above reasons, we sustain the rejection of claim 12 under 35
U.S.C. § 103(a) as being unpatentable over Ring, DiTullio and Burkstaller.
Claim 14
Claim 14 recites that the membrane is embossed. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
to further modify Ring by embossing the membrane (i.e., barrier 28) to
improve the membrane’s appearance and/or strength as taught by Wilson.
Ans. 6, 8. Appellants argue that the sleeve member 22 of Ring is a nylon
netting or mesh that cannot be embossed. App. Br. 9. However, the
Examiner’s position is that it would have been obvious to emboss the barrier
28 rather than the sleeve 22. Ans. 8. As noted by the Examiner, the barrier
28 is disclosed as comprising a geotextile material that can encase the
aggregate. Ans. 8 (citing Ring, col. 3, ll. 18 and 21). In addition, we agree
with the Examiner that Wilson discloses embossing a geotextile material to
increase its strength. See Wilson, para. [0026]. As such, we find the
Examiner’s stated reason for modifying the barrier 28 of Ring by embossing,
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as taught by Wilson, to increase its strength is based on rational
underpinnings.
Appellants do not apprise us of error in the Examiner’s rejection. We
therefore sustain the rejection of claim 14 under 35 U.S.C. § 103(a) as being
unpatentable over Ring, DiTullio and Wilson.
Claim 23
Claim 23 recites that the aggregate is made of an expanded
thermoplastic material having a residual capacity to expand upon further
curing. The Examiner finds that Ring does not disclose such an aggregate
but determines that Bussey discloses using expanded thermoplastic in a
similar apparatus. Ans. 6. The Examiner then concludes that it would have
been obvious to one of ordinary skill in the art to further modify Ring by
using expanded thermoplastic aggregate because of its lightweight quality.
Id. The Examiner states that the Bussey expanded thermoplastic is deemed
to have the claimed residual capacity to expand because it is substantially
identical to the thermoplastic disclosed by Appellants. Id.
Appellants assert that the Bussey thermoplastic is not substantially
identical to the thermoplastic disclosed by Appellants and does not have the
same residual capacity to expand. Reply Br. 3. Regarding the finding that
the Bussey expanded thermoplastic is substantially identical to Appellants’
thermoplastic, the Examiner states that Appellants’ “aggregate is understood
to be expanded thermoplastic, such as expanded polystyrene” and Bussey
teaches expanded polystyrene. Ans. 8. The Examiner appears to be
referring to the portion of Appellants’ Specification that describes the
aggregate as being an expanded thermoplastic material having a residual
capacity to expand and cites copending patent application 11/248,753 as
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disclosing an example of such material. Spec. 9, ll. 18-22. Based on this
passage, we agree with the Examiner that Appellants’ Specification
contemplates using the aggregate described in the referenced copending
application. The copending application, now issued as US Patent No.
7,708,350, states in col. 1, ll. 9-26:
[a]s is known, expanded thermoplastic materials such as
expanded polystyrene (EPS) have been used for many
years as packaging elements, filling elements, padding
and the like. …
It has also been known that the initially expanded
thermoplastic elements contain some residual
hydrocarbon in a liquid state. Thus, the elements can be
subsequently heated in a chamber in order to bring about
a further expansion of the elements. It has also been
known that the elements can be subjected to a third stage
of expansion.
From this, we conclude that expanded thermoplastic materials, and in
particular expanded polystyrene, commonly have a residual capacity to
expand. As such, we agree with the Examiner’s finding that the Bussey
expanded thermoplastic has the claimed residual capacity to expand. We
thus sustain the rejection of claim 23 under 35 U.S.C. § 103(a) as being
unpatentable over Ring, DiTullio and Bussey.
DECISION
We affirm the decision of the Examiner rejecting claims 11-14 and 23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED
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