Ex Parte Matthews et al

Patent Trial and Appeal Board

Mar 25, 2013

11054638 (P.T.A.B. Mar. 25, 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.
11/054,638 02/08/2005 Paul C. Matthews III 8323
7590 03/25/2013
Paul C. Matthews
P.O. Box 1066
Mattituck, NY 11952
EXAMINER
PARSLEY, DAVID J
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
03/25/2013 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 APPEAL BOARD
____________________

Ex parte PAUL C. MATTHEWS, III and
JOHN G. BRADLEY
____________________

Appeal 2010-011901
Application 11/054,638
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011901
Application 11/054,638

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STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-4 and 6-171, 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The rejected claims are directed to methods of establishing clam beds
(Spec. 1-2). Claims 1, 11, and 15 are the sole independent claims.
EXEMPLARY CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of establishing a clam bed,
comprising:
raising clam larvae through a trochophore
stage of development in a captive environment;
and
releasing the clam larvae into waters above
an area selected to contain the clam bed during a
veliger stage of development following the
trochophore stage.

1 Our decision will reference Appellants’ Specification (“Spec.,” filed Feb.
8, 2005), and Appeal Brief (“Br.,” filed Apr. 8, 2010), as well as the
Examiner’s Answer (“Ans.,” mailed Jun. 7, 2010).
2 We note although the Listing of Appealed Claims included with the Appeal
Brief does not indicate the dependency of claim 6, Appellants’ Amendment
filed January 19, 2006, indicates claim 6 depends from claim 1.
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Application 11/054,638

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THE REJECTIONS
The Examiner rejects the claims as follows:
Claims 15 and 17 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement;
Claim 15 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter Appellants regards as the invention;
Claims 1, 4, 6, 8, 11, 12, and 14-16 under 35 U.S.C. § 102(b) as
anticipated by Sweeney (US 3,916,832, iss. Nov. 4, 1975);
Claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over
Sweeney in view of Marcum (US 4,876,985, iss. Oct. 31, 1989);
Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Sweeney in
view of Fay (US 4,675,110, iss. Jun. 23, 1987);
Claims 9, 10, and 13 under 35 U.S.C. § 103(a) as unpatentable over
Sweeney;
Claims 1-4, 6, 8, 11, 12, 14 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Marcum in view of Sweeney;
Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Marcum and
Sweeney in view of Fay;
Claims 9, 10, and 13 under 35 U.S.C. § 103(a) as unpatentable over
Marcum in view of Sweeney;
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Application 11/054,638

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Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Sweeney in
view of Hodges (US 3,998,186 , iss. Dec. 21, 1976); and
Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Marcum and
Sweeney in view of Hodges.
ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
Independent claim 15 is rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Specifically, the Examiner states “[t]he limitations of ‘releasing the clam
larvae during a veliger stage of development following the trochophore stage
into waters of a ... harbor, or other suitable aquatic habitat. …’ are not
described in the specification” (Ans. 3), because
appellant’s specification discloses
establishing clam beds in bays or harbors as seen
in page 2 lines 1-2 of appellant’s specification, but
appellant’s specification doe [sic] not disclose
releasing clam larvae during a veliger stage of
development into a bay or harbor. Further,
appellant’s specification does not disclose any
other suitable aquatic habitats and does not
disclose releasing clam larvae into any other
suitable aquatic habitat
(Ans. 12). As Appellants point out, however, page 7, lines 11-12 of the
Specification describe the “release [of] the veliger larvae at a site selected
for seeding of the prospective clam bed” (Br. 9). Further, the Examiner
concedes that Appellants “disclose[ ] establishing clam beds in bays or
harbors.” We find, however, Appellants have not established that the
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Application 11/054,638

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Specification shows possession of “releasing . . . into waters of . . . other
suitable aquatic habitat” as recited in claim 15. Thus, we sustain the
rejection of claim 15 under 35 U.S.C. § 112, first paragraph, on this basis.
Dependent claim 17 is rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. Specifically,
the Examiner first states
The limitations of the captive environment is
a closed system isolated from the natural body of
water are not described in applicant’s
specification. As seen [on] page 6 lines 17-20 of
applicant’s specification the invention is
described as being in a closed system. However,
applicant’s specification does not specifically
state the closed system is isolated from the
natural body of water. As seen in applicant’s
drawing figure 1 the system is located directly in
the natural body of water and has an open top
which allows the clam larvae to move from inside
the system to the natural body of water as seen at
item - 8. Therefore the system is not isolated
from the natural body of water in that the clam
larvae can be moved directly from the system to
the natural body of water
(bold and underlining added) (Ans. 4). But, then the Examiner states
appellant’s specification does not disclose
the captive environment is a closed system. As
seen in appellant’s drawing figure and
specification the captive environment is open to
allow water and clams into the captive
environment and to allow the clams to be moved
from the captive environment to the body of water
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(bold and underlining added) (Ans. 12). Thus, we cannot ascertain on what
basis the Examiner intends to reject claim 17. Therefore, we reverse the
rejection of claim 17 under 35 U.S.C. § 112, first paragraph.
Rejection under 35 U.S.C. § 112, second paragraph
Independent claim 15 is rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Specifically, the Examiner states “[i]t is
unclear to [sic] what the other suitable aquatic habitats are” (Ans. 5), and
that “appellant has not disclosed any other suitable aquatic habitats in the
specification or claims such as a lake or ocean or other specific body of
water” other than bays and harbors (Ans. 12). Contrary to Appellants’
arguments, we cannot determine the precisely metes and bounds of this
claim, as to what constitutes other suitable aquatic habitats. Thus, we
sustain the rejection of claim 15 under 35 U.S.C. § 112, second paragraph.
Rejections under 35 U.S.C. §§ 102(b) and 103(a)
Independent claim 1 recites “releasing the clam larvae into waters
above an area selected to contain the clam bed during a veliger stage of
development following the trochophore stage.” Independent claims 11 and
15 recite similar features. In each of the anticipation rejections of the
independent claims based on Sweeney, as well as the obviousness rejections
based on Marcum and Sweeney, the Examiner relies on columns 27-28 and
Figures 9-17 of Sweeney to disclose releasing the clam larvae during a
veliger stage (Ans. 5, 6, 8, 9). We agree with Appellants, however, that
these portions of Sweeney do not disclose releasing the clam larvae into
waters above an area selected to contain the clam bed during a veliger stage
of development following the trochophore stage (Br. 13-14). We note, for
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example, these portions of Sweeney do not even appear to discuss anything
about a trochophore stage or a veliger stage of clam larvae, or when any
actions are taken relative to these stages. Thus, we reverse each of the
rejections of the claims under 35 U.S.C. §§ 102(b) and 103(a).
DECISION
The Examiner’s rejection of claim 15 under 35 U.S.C. § 112, first
paragraph, is SUSTAINED;
The Examiner’s rejection of claim 17 under 35 U.S.C. § 112, first
paragraph, is REVERSED;
The Examiner’s rejection of claim 15 under 35 U.S.C. § 112, second
paragraph, is SUSTAINED;
The Examiner’s rejection claims 1, 4, 6, 8, 11, 12, and 14-16 under
35 U.S.C. § 102(b) as anticipated by Sweeney is REVERSED;
The Examiner’s rejection of claims 2 and 3 under 35 U.S.C. § 103(a)
as unpatentable over Sweeney in view of Marcum is REVERSED;
The Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Sweeney in view of Fay is REVERSED;
The Examiner’s rejection of claims 9, 10, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Sweeney is REVERSED;
The Examiner rejection of claims 1-4, 6, 8, 11, 12, 14 and 15 under
35 U.S.C. § 103(a) as unpatentable over Marcum in view of Sweeney is
REVERSED;
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Application 11/054,638

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The Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Marcum and Sweeney in view of Fay is REVERSED;
The Examiner’s rejection of claims 9, 10, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Marcum in view of Sweeney is REVERSED;
The Examiner’s rejection of claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Sweeney in view of Hodges is REVERSED; and
The Examiner’s rejection of claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Marcum and Sweeney in view of Hodges is REVERSED.
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-IN-PART
JRG