Ex Parte Jansen et al

Patent Trial and Appeal Board

Oct 19, 2018

14211967 (P.T.A.B. Oct. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/211,967 03/14/2014
14232 7590
Forrest Law Office, P.C.
2388 NE 12th Way
Hillsboro, OR 97124
10/19/2018
FIRST NAMED INVENTOR
Grant Jansen
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.
P217801PAT 1372
EXAMINER
ARMSTRONG, KYLE
ART UNIT PAPER NUMBER
3678
MAIL DATE DELIVERY MODE
10/19/2018 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 GRANT JANSEN and
AUSTIN HUANG
Appeal 2018-000315
Application 14/211,967
Technology Center 3600
Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and
SEAN P. O'HANLON, 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 1-12. Final Act. 1 (Office Action
Summary). We have jurisdiction under 35 U.S.C. § 6(b ). For the reasons
explained below, we find error in the Examiner's rejections.
Accordingly, we REVERSE.
Appeal 2018-000315
Application 14/211,967
THE CLAIMED SUBJECT MATTER
The disclosed subject matter relates to erosion control which "is a
common problem along waterways including ocean shores, river beds, lake
shores, etc." Spec. ,r 2. Apparatus claim 1 and method claim 10 are the only
independent claims. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A buoyancy compensated erosion control module,
compnsmg:
a shell having at least one wall oriented at an off-vertical
angle;
a substantially enclosed inner cavity, the inner cavity at
least partially filled with a foam core;
a perimeter footing at the bottom of the shell, the
perimeter footing having a lower cavity that is open on the
bottom;
at least one vertical pile sleeve and at least one battered
pile sleeve; and
at least one connector to couple the module to a second
module, wherein the erosion control module is buoyancy
compensated by the inner cavity and foam core.
REFERENCES RELIED ON BY THE EXAMINER
Schaaf et al.
Y odock Jr. et al.
Fillingame et al.
Aristaghes et al.
us 4,367,978
US 2003/0185629 Al
US 2009/0110484 Al
US 2009/0238645 Al
THE REJECTIONS ON APPEAL
Jan. 11, 1983
Oct. 2, 2003
Apr. 30, 2009
Sept. 24, 2009
Claims 1-3, 5, and 7-12 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Y odock Jr. and Fillingame.
Claim 4 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Y odock Jr., Fillingame, and Schaaf.
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Application 14/211,967
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Yodock Jr., Fillingame, and Aristaghes.
ANALYSIS
The rejection of claims 1-3, 5, and 7-12
as unpatentable over Yodock Jr. and Fillingame
Each of these claims is directed to erosion control, whether pertaining
to a module for such control (claims 1-3, 5, 7-9) or a method for such
control (claims 10-12). Each independent claim (i.e., claim 1 and claim 10)
includes language directed to the module/method as comprising "at least one
vertical pile sleeve and at least one battered pile sleeve." The Examiner
acknowledges that the primary reference to "Y odock fails to disclose the
device having pin piles and sleeves." Final Act. 5. The Examiner relies on
Fillingame for teaching this limitation. Final Act. 5. The Examiner also
provides multiple reasons why it would have been obvious "to modify the
device of Y odock by adding the vertical and battered piles as described by
Fillingame." Final Act. 5. One is "to increase the strength of the system by
providing additional resistance to lateral movement," and another is so that
the modified "system will achieve maximum protection against tidal surges
and high wave action." Final Act. 5. The Examiner further states, "Yodock
discloses the inspiration for his invention stemmed from Jersey style
concrete highway barriers," and, consequently, the Examiner states that it
would have been obvious to construct the device "in such a manner should
the desired engineering properties and site specific parameters call for such a
design." Final Act. 5.
Regarding both independent claims, Appellants disagree with the
Examiner's stated combination of Yodock Jr. and Fillingame "because the
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Application 14/211,967
proposed modification o(Yodock would render it unsatisfactory for its
intended purpose." App. Br. 8, 11; see also Reply Br. 2. Appellants explain
that "Y odock is directed to a floating barrier wall which is portable and
easily deployed around a ship for water-based security." App. Br. 9; see
also Y odock Jr. Fig. 1, Abstract ("a barrier wall which can encircle a vessel
or otherwise isolate an area within a seaport to provide security"). However,
Appellants contend, "[ t ]he use of pin piles and sleeves would make the
Yodock floating barrier be semi-permanently secured to ground in a non-
portable manner." App. Br. 10; see also Reply Br. 2. As per Appellants, the
proposed modification would render "Y odock unsatisfactory for its intended
purpose of a portable and easily deployed floating barrier wall and would
also require removal of all pin pilings in order to move any vessel protected
by the barrier wall." App. Br. 10. Because of such pilings driven into the
ground, Appellants ask how a captain or harbor master, whose vessel was
enclosed by such a barrier, "would then get the boat out of the barrier."
Reply Br. 3.
The Examiner states that the modification of Y odock Jr. with
Fillingame' s teachings of piles and sleeves "would not prevent [Y odock
Jr.' s] device from being portable." Ans. 3. This is because, as per the
Examiner, "the Yodock and Fillingame devices are clearly capable of being
transported to a project site particularly since neither are disclosed as being
fabricated in-situ[] and [thus,] 'easily' deployed." Ans. 3. The Examiner
also reasons that it would be "easy" for "someone already owning the proper
equipment (e.g.[,] a vessel with a lifting arm and a pin pile device)" to both
install and remove the barrier. Ans. 3. To this, Appellants reply that the
Examiner "is essentially stating that if you make the proposed modification,
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Application 14/211,967
and then unmake the proposed modification (remove pilings fixed to the sea
floor), then the barrier would be portable." Reply Br. 2-3. Appellants state,
"It is in fact the nature of fixing an object to the ground with a piling that
makes the object not portable." Reply Br. 3.
We are instructed that where the proposed modification would render
the prior art invention being modified inoperable for its intended purpose,
the proposed modification would not have been obvious. See Tee Air, Inc. v.
Denso Mfg. Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999). Stated
another way, if the proposed modification or combination of the prior art
would change the principle of operation of the prior art invention being
modified, then the teachings of the references are not sufficient to render the
claims prima facie obvious. See In re Ratti, 270 F.2d 810 (CCPA 1959).
In the matter before us, it is not disputed that Y odock Jr. is directed to
a portable barrier that can surround or protect a docked ship. Y odock Jr. ,r 4.
The Examiner does not explain why one skilled in the art, based on Y odock
Jr.' s teachings or portability, would instead envision securing Y odock Jr.' s
barriers to the seafloor by pilings as taught by Fillingame. Such a construct
would greatly hamper, if not absolutely defeat, the ability to remove such
barriers when a ship is to pass. Even assuming the task of removing the
individual barriers can be accomplished, the ship would still need to avoid
the pilings projecting from the seabed that were used to support Yodock Jr. 's
removed barriers. We thus agree with Appellants that modifying Y odock Jr.
as suggested by the Examiner so as to accommodate pilings is unreasonable
and would, if implemented, render Y odock Jr. unsatisfactory for its intended
purpose. Consequently, we do not sustain the Examiner's rejection of
claims 1-3, 5, and 7-12 as unpatentable over Yodock Jr. and Fillingame.
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Appeal 2018-000315
Application 14/211,967
The rejection of claims 4 and 6 under Yodock Jr. and Fillingame, and,
additionally, Schaaf (claim 4) and Aristaghes (claim 6)
In the rejection of claim 4, the Examiner relies on the additional
teachings of Schaaf for disclosing "a concrete erosion control device having
welded wire fabric located within its walls." Final Act. 6; see also Ans. 7.
Regarding claim 6, the Examiner relies on the additional reference to
Aristaghes as teaching "a wave dissipation device having elastomeric pads."
Final Act. 7. Neither such reference is employed in a manner that might
cure the defect of the combination of Y odock Jr. and Fillingame discussed
above. Accordingly, we likewise do not sustain the rejection of claims 4 and
6 in view of their respectively cited additional reference.
DECISION
The Examiner's rejections of claims 1-12 are reversed
REVERSED
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