Ex Parte Morris

Patent Trials and Appeals Board

Mar 22, 2019

14725267 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/725,267 05/29/2015
22827 7590 03/26/2019
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
FIRST NAMED INVENTOR
James Morris
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.
USC-427 (1103) 8651
EXAMINER
ARMSTRONG, KYLE
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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):
USDOCKETING@DORITY-MANNING.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES MORRIS
Appeal2018-006005 1
Application 14/725,2672
Technology Center 3600
Before MICHAEL C. ASTORINO, BRADLEY B. BAY AT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED INVENTION
Appellant's invention relates to a "sediment management plan for the
restoration and/or maintenance of tidal marsh areas." Spec. 2, 11. 20-21.
1 Our decision references Appellant's Appeal Brief ("Br.," filed July 10,
2017), and the Examiner's Final Office Action ("Final Act.," mailed Oct. 21,
2016) and Answer ("Ans.," mailed Sept. 15, 2017).
2 Appellant identifies the University of South Carolina as the real party in
interest. Br. 1.
Appeal2018-006005
Application 14/725,267
Claim 1, reproduced below, is the sole independent claim on appeal,
and is representative of the claimed subject matter:
1. A method of restoring intertidal areas adjacent to
subtidal water areas, wherein the intertidal area is subaerial
during low tide stages and the subtidal water area has a volume
of water over a bottom surface at all tide levels, the method
compnsmg:
pumping water from the subtidal water area; and
directing a high-pressure water stream, using the water
pumped from the subtidal water area, to the bottom surface of the
subtidal water area during an incoming tide period, wherein the
high-pressure water stream impacts the bottom surface of the
subtidal water area with sufficient force to dislodge sediment
from the bottom surface into the subtidal water area, the
dislodged sediment thereafter being carried onto the intertidal
area by the incoming tide such that an elevation of the intertidal
area is increased.
REJECTION
Claims 1-7 are rejected under 35 U.S.C. § 103 as unpatentable over
Stewart (US 1,698,515, iss. Jan. 8, 1929).
ANALYSIS
We are persuaded by Appellant's argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103 because Stewart does
not teach or suggest
directing a high-pressure water stream ... to the bottom
surface of the subtidal water area during an incoming tide period,
wherein the high-pressure water stream impacts the bottom
surface of the subtidal water area with sufficient force to dislodge
sediment from the bottom surface into the subtidal water area,
the dislodged sediment thereafter being carried onto the intertidal
area by the incoming tide such that an elevation of the intertidal
area is increased[,]
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Application 14/725,267
as recited in claim 1. Br. 3-8. The Examiner finds that Stewart teaches
directing a high-pressure water stream, using water pumped from the
subtidal water area, to the bottom surface of the subtidal water area, wherein
the high-pressure water stream impacts the bottom surface of the subtidal
water area with sufficient force to dislodge sediment from the bottom
surface into the subtidal water area. Final Act. 4 ( citing Stewart 1: 13-20).
The Examiner acknowledges that "Stewart is silent as to directing the high-
pressure stream only during an incoming tide period." Id. But the Examiner
determines that this aspect of the claim would have been obvious to one of
ordinary skill in the art. Id. at 4--5; Ans. 5. The rejection does not address
how Stewart teaches that dislodged sediment is carried onto the intertidal
area by the incoming tide such that an elevation of the intertidal area is
increased. However, in the Response to Arguments section of the Final
Office Action, the Examiner finds that Stewart describes that dislodged
sediment may be directed onto the sides and bottoms of rivers, lagoons and
other bodies of water, and the Examiner reasons that even if the matter is
removed, "enough sediment [ would be] re-deposited to the banks of the
water body" to increase their elevation. Final Act. 3 ( citing Stewart 2: 11-
17).
Stewart's invention relates to clearing and scouring the bottom of
rivers to remove mud, weeds or silt; deepening or widening water courses;
digging new canals or channels for rivers; and loosening material from the
beds of rivers, lakes, or streams for treatment, such as separating gold or
other metallic contents. Stewart 1: 1-12. In particular, Stewart describes
that fitting a pontoon floating on the water with water pumps that can
provide a continuous and even flow of water. Id. at 1 :61-78. An outlet pipe
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Application 14/725,267
leads away from each pump, and a nozzle is fitted at the end of the outlet
pipe to ensure that water "issu[es] as a strong jet from the nozzle." Id. at
1: 82-87. The nozzles may be "directed to act upon any spot whether under
or above water." Id. at 1 :87-89. The jets may be used to set free deposits of
silt or mud upon a river's bed, which "may be directed on to the sides and
bottoms of river beds or lagoons, or other bodies of water, to loosen them
and render the loosened material suitable for handling by any approved
means." Id. at 2:11-19.
The Examiner takes the position that it would have been obvious to
direct the high pressure water stream "when the conditions of the tidal areas
along the river/lagoon bank are very shallow and wide, thus maximizing
how much of the water body width can be widened during the working
window afforded by the incoming tides such that the vessel won't become
beached when the tide rolls out." Final Act. 4--5; see also id. at 2-3 ("[I]t is
well-known in the river dredging art to enter the river from the estuary
during low tide periods."). The Examiner supports this argument (Final
Action 2-3; Ans. 4) by pointing to a sentence in Toyoshima (US 5,778,568,
iss. July 14, 1998) that instructs that "any ship having more than 10,000
gross tons is obliged to wait for the rising tide until the water depth reaches 7
through 9 meters before it can enter a predetermined port." Toyoshima
1 :27-30; see also id. at 1 :20-22 ("[ a ]vailing of certain depth, large vessels
can cruise on some of the above-cited huge rivers").
As an initial matter, Stewart does not describe performing the
dredging method in a tidal area having a subtidal water area and an intertidal
area, as claimed. But even if Stewart were applied in such an environment,
we agree with Appellant that the Examiner has not adequately explained
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Application 14/725,267
why one of ordinary skill in the art, upon reading Stewart's method for
dredging a river, would be motivated to restore an intertidal area, using a
high-pressure water pump in conjunction with an incoming tide, in the
manner recited by claim 1. Br. 8. Instead, it appears that the Examiner
employed improper hindsight analysis to arrive at the method of claim 1.
For example, Stewart's vessel is a pontoon adaptable for floating on
the water with the water jets and supporting the required pumps and motor.
Stewart 1 :61-78. Such pontoon is not equivalent to a large vessel having
more than 10,000 gross tons, as described by Toyoshima, and does not face
similar water depth requirements for vessel entry that would require an
incoming tide for entry to a port. Also, even if one were motivated to apply
Stewart's method of dredging in a tidal area by operating Stewart's pontoon
in a subtidal area, it is unclear that beaching of the pontoon in the subtidal
area when the tide rolls out would be a concern, as surmised by the
Examiner. A subtidal area is generally understood as the area below the low
tide water line that is submerged; whereas, the intertidal area is understood
as the area that is above water at low tide and underwater at high tide.
Consistent with this understanding, claim 1 specifies in the preamble that the
intertidal area is subarial during low tide stages, and the subtidal water area
has a volume of water over a bottom surface at all tide levels. See also
Spec. 3:5-7. In other words, Stewart's pontoon would be pumping water
from the subtidal area, and the subtidal area would have a volume of water
even when the tide rolls out.
Further, even if Toyoshima evidences that is known to enter a river
from an estuary during low tide (presumably at an incoming tidal period and
not an outgoing tidal period) to perform dredging, as maintained by the
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Application 14/725,267
Examiner, such knowledge does not teach or suggest timing Stewart's
dredging to occur during an incoming tide period, as required by claim 1.
Toyoshima itself highlights this distinction by suggesting that dredging
occurs during an outgoing tide, not an incoming tide. See Toyoshima 2:38-
53 ( describing that the estuary channel erosion is promoted by flowing
water; the natural force of the tide transfers sand to the offing side without
accumulation on the upstream side; dredging is carried out from the
upstream are to the estuary, and the carrying force of the tide current helps
quickly lower the channel bed).
Here, Stewart's disclosure does not indicate that dredging is limited to
any particular constraints, and Toyoshima's disclosure regarding the
particular water depth needs of a large vessel does not adequately support
the Examiner's determination that one of ordinary skill in the art would be
motivated to constrain Stewart's method of dredging to an incoming tide
period.
Moreover, Stewart does not teach directing the dislodged sediment
onto an intertidal area by the incoming tide such that an elevation of the
intertidal area is increased, as required by claim 1. At best, Stewart
discloses that sediment may be directed to river banks (not necessarily an
intertidal area), during any tidal period (not necessarily an incoming tide),
where it is removed for handling, such as separating metallic content. Here,
there is insufficient support for the Examiner's determination that a person
of ordinary skill in the art would be motivated to modify Stewart to direct a
high pressure stream during an incoming tide period to dislodge sediment
from the bottom surface of the subtidal water area so that the incoming tide
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carries the dislodged sediment onto the intertidal area such that an elevation
of the intertidal area is increased, as recited in claim 1.
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 103 of independent claim 1 and dependent claims 2-7.
DECISION
The Examiner's rejection of claims 1-7 under 35 U.S.C. § 103 is
reversed.
REVERSED
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