14692056 (P.T.A.B. Feb. 15, 2019)

Ex Parte Greco et al

Patent Trial and Appeal BoardFeb 15, 2019

14692056 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 14/692,056 62439 7590 SINORICA, LLC 20251 Century Blvd. Suite 140 FILING DATE 04/21/2015 02/20/2019 Germantown, MD 20874 FIRST NAMED INVENTOR Joseph Greco 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. TUP23671 9286 EXAMINER CLEMENTE, ROBERT ARTHUR ART UNIT PAPER NUMBER 1773 NOTIFICATION DATE DELIVERY MODE 02/20/2019 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): SINORICA@GMAIL.COM sinorica@outlook.com pair@sinorica.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH GRECO, JAMES A. ELKIN, and PERRY R. BURT Appeal2018-004644 Application 14/692,056 Technology Center 1700 Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and JEFFREY R. SNAY, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 requests our review under 35 U.S.C. Â§ 134(a) of the Examiner's final decision rejecting claim 1 under 35 U.S.C. Â§ 103(a) over Tyler (US 2003/0031511 Al; Feb. 13, 2003) in view of Medoff (US 9,605,288 B2; Mar. 28, 2017). We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1The Real Party in Interest is identified as the applicant, Joseph Greco (Appeal Br. 2). Appeal2018-004644 Application 14/692,056 Independent claim 1 is illustrative ( emphasis added to highlight disputed limitations): 1. A biodegradable runoff filter comprises: a biodegradable filter sock; a botanical biomass filling; a plurality of seeds; a fastener; the biodegradable filter sock comprises a lateral portion, an open end and a closed end; the open end and the closed end being positioned opposite to each other along the biodegradable filter sock; the lateral portion comprises a deformed section and an unaltered section; the deformed section being positioned adjacent to the unaltered section about the lateral portion; the biodegradable filter sock being photodegradable; the botanical biomass filling being a quantity of switchgrass; the botanical biomass filling being positioned within the biodegradable filter sock; the botanical biomass filling being evenly distributed through the lateral portion; the plurality of seeds being positioned within the biodegradable filter sock; the plurality of seeds being distributed throughout the botanical biomass filling; the open end being cinched by the fastener; and the fastener being a clip, a tie or a clamp. 2 Appeal2018-004644 Application 14/692,056 ANALYSIS We have reviewed each of Appellant's arguments for patentability. However, we determine that a preponderance of the evidence supports the Examiner's finding that the claimed subject matter is unpatentable within the meaning ofÂ§ 103 in view of the applied prior art. Accordingly, we will sustain the Examiner's Â§ 103 rejection, for essentially those reasons expressed in the Final Action and the Answer, including the Examiner's Response to Argument section. We add the following primarily for emphasis. Appellant's arguments focus on whether the claim limitation regarding "the lateral portion comprises a deformed section" encompasses Tyler's mesh tube structure that can be attached to the ground by an attachment device (thus "a deformed section is unnecessary") and the mesh tube can at least partially impede a flow of water (Appeal Br. 6). Specifically, Appellant de facto argues that Tyler's mesh tube is not capable of deforming (Appeal Br. 7 ("the mesh tube 1040 [of Tyler] cannot have a deformed section")). Appellant also argues that Tyler does not teach that the biomass filling is "evenly distributed" as recited in claim 1 (Appeal Br. 8, 9). These arguments are not persuasive of error in the Examiner's rejection. As pointed out by the Examiner, the claim language of independent claim 1 encompasses, and does not distinguish over, Tyler's flexible mesh tube that may be filled with the same biomass ( switchgrass) as claimed (see generally Ans.; Tyler ,r,r 26, 28-31). The Examiner's determination that this mesh tube appears to be capable of the disputed function, i.e., to have a "deformed section" as well as an unaltered section when placed on the ground (e.g., Ans. 3) is reasonable. 3 Appeal2018-004644 Application 14/692,056 Appellant has also not disputed the Examiner's finding that placing a stake to anchor the mesh tube as taught in Tyler would have deformed the mesh tube (Ans. 4, Tyler ,r 30; no reply brief has been filed). Appellant has also not sufficiently disputed the Examiner's determination that when Tyler's mesh tube is completely filled with biomass, that biomass will be evenly distributed (Ans. 4, 5; Tyler ,r 28). Moreover, it is well established that when there is a reason to find that the structure of the prior art is capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellant has not provided any persuasive reasoning or credible evidence to refute the Examiner's determination that flexible mesh tube of Tyler/Medoff would have deformed when placed on the ground, same as Appellant's filter sock does (see e.g., Ans. 4). Attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellant has not directed our attention to any special definition of the disputed phrases/language of claim 1 in the Specification, or to any persuasive reasoning or credible evidence to establish that the Examiner's interpretation of the language in independent claim 1 is unreasonable. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (if the specification does not provide a definition for claim terms, the broadest reasonable interpretation consistent with the specification is applied; as claims may be amended to narrow their scope, "a broad construction during prosecution creates no unfairness to the applicant or patentee."). 4 Appeal2018-004644 Application 14/692,056 Accordingly, the Examiner'sÂ§ 103 rejection of claim 1 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 5