Ex Parte Potts

Patent Trial and Appeal Board

Aug 29, 2017

13682491 (P.T.A.B. Aug. 29, 2017)

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.
13/682,491 11/20/2012 David A. Potts 353_0310_US1_CIP2_CON2 2427
85173 7590 08/31/2017
GRAS SO PLLC
1818 LIBRARY STREET, SUITE 500
RESTON, VA 20190
EXAMINER
SINGH, SUNIL
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
08/31/2017 ELECTRONIC
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. POTTS
Appeal 2015-007632
Application 13/682,4911
Technology Center 3600
Before STEFAN STAICOVICI, JAMES P. CALVE, and
LEE L. STEPINA, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David A. Potts (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 23—55. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellant, the inventor David A. Potts is the real party in
interest. Appeal Br. 4 (filed Dec. 22, 2014).
Appeal 2015-007632
Application 13/682,491
INVENTION
Appellant’s invention relates to “a high aspect ratio wastewater
system and leaching conduit.” Spec. 1, para. 2.
Claims 23, 46, and 47 are independent. Claim 47 is illustrative of the
claimed invention and reads as follows:
47. A wastewater system comprising:
a set of three or more high aspect ratio wastewater
channels, each of the channels in the set comprising an
infiltrative side boundary, a top boundary, a bottom boundary, a
height and a width; and
a wastewater distribution conduit positioned and
configured to dispense wastewater effluent to one or more
individual sections of each of the high aspect ratio wastewater
channels in the set, the effluent dispensed by the wastewater
distribution conduit to each high aspect ratio wastewater
channel in the set then being able to flow to other portions of
the same high aspect ratio wastewater channel;
wherein granular material is positioned outside of
and between adjacent high aspect ratio wastewater
channels,
wherein each of the high aspect ratio wastewater
channels in the set is substantially parallel and has a
height to width aspect ratio of 96 or 3 or between 96 and
3 and comprises at least: a granular material or crushed
stone, or pea stone, a hollow spanning the majority of the
width and aligned directly between infiltrative sides of
the high aspect ratio channel or polystyrene aggregate,
wherein the bottom boundary of each of the high
aspect ratio wastewater channels in the set is positioned
along a level plane of reference, the level plane of
reference shared by each of the high aspect ratio
wastewater channels in the set,
wherein the wastewater distribution conduit is
configured and positioned to direct and dispense effluent
towards the bottom boundary of each of the high aspect
ratio wastewater channels in the set.
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Appeal 2015-007632
Application 13/682,491
REJECTIONS
The following rejections are before us for review:2
I. The Examiner rejected claims 23—55 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
II. The Examiner rejected claims 47 and 49—53 under 35 U.S.C.
§ 103(a) as being unpatentable over Donlin (US 8,104,994 Bl,
issued Jan. 31, 2012) and Houck et al. (US 5,378,357, issued
Jan. 3, 1995, “Houck”).
III. The Examiner rejected claims 54 and 55 under 35 U.S.C.
§ 103(a) as being unpatentable over Donlin, Houck, and Laak
(US 5,597,264, issued Jan. 28, 1997,“ Laak ’264”).
IV. The Examiner rejected claims 23—33, 35—46, and 48 under 35
U.S.C. § 103(a) as being unpatentable over Donlin, Houck, and
Laak (US 6,048,131, issued Apr. 11, 2000, “Laak ’131”).
V. The Examiner rejected claim 34 under 35 U.S.C. § 103(a) as
being unpatentable over Donlin, Houck, Laak ’131, and Nexus
Design Article.3
2 The rejections under 35 U.S.C. § 103(a) of claims 47 and 49-53 as being
unpatentable over Tracy (US 4,824,287, issued Apr. 25, 1989) and Donlin
and of claims 54 and 55 as being unpatentable over Tracy, Donlin, and Laak
’264, have been withdrawn by the Examiner. Ans. 3 (transmitted June 19,
2015).
3 It is not clear from the electronic record which reference corresponds to the
“Nexus Design Article.” Nonetheless, for the purpose of this appeal we
assume the Examiner refers to the reference filed Nov. 29, 2012, entitled
“NEXUS, pantechnology for human development” that discloses the
“ELJEN In-Drain” system.
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Appeal 2015-007632
Application 13/682,491
ANALYSIS
Rejection I
The Examiner finds that the limitation of a “hollow . . . channel” as
recited in each of independent claims 23, 46, and 47 is not supported by the
original disclosure. Final Act. 2 (transmitted May 22, 2014). According to
the Examiner, a “[hjollow is the central void of [a]. . . pipe” and thus cannot
be used to replace the pipe. Ans. 3^4.
In response, Appellant points to Figure 15 of the instant application to
describe three high aspect ratio channels 41 including geonets 40 that
include stringy structures 44. Appeal Br. 7. Appellant further notes that
paragraph 42 of the Specification describes a flat pipe geonet 40 with a
hollow and thus, when such a pipe is used in high aspect ratio channels 40,
the channels 40 would likewise include a hollow. Id. at 8—9. According to
Appellant, as there is no requirement that the flat pipe needs to be claimed in
its entirety, “a hollow may be claimed because it was disclosed at the time of
filing along with other features of a flat pipe.” Reply Br. 5 (filed Aug, 18,
2015).
The written description requirement is designed “to prevent an
applicant from later asserting that he invented that which he did not; the
applicant for a patent is therefore required to ‘recount his invention in such
detail that his future claims can be determined to be encompassed within his
original creation.’” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
1313, 1330 (Fed. Cir. 2003) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1561 (Fed. Cir. 1991)). The fundamental factual inquiry is whether
the Specification conveys with reasonable clarity to those skilled in the art
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Application 13/682,491
that, as of the filing date sought, applicant was in possession of the invention
as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563—64. In this
case, independent claim 23 recites “high aspect ratio channels . . . wherein
each of the . . . channels . . . comprises ... a hollow spanning the majority of
the width and aligned directly between infiltrative sides of the . . . channel.”
Appeal Br. 25—26. Independent claims 46 and 47 require a similar
limitation. See id. at 32—33.
At the outset, we note that none of independent claims 23, 46, and 47
requires a pipe having a hollow, as Appellant argues. See Appeal Br. 9.
Although we appreciate that the Specification describes such a pipe (see
Spec. para. 42), nonetheless, we must be careful not to read a particular
embodiment appearing in the written description into the claim if the claim
language is broader than the embodiment. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). The claims merely
require “channels. . . comprising] ... a hollow spanning the majority of the
width and aligned directly between infiltrative sides of the . . . channel.”
Although Appellant’s disclosure provides support for high aspect ratio
channels including a granular material, crushed stone, pea stone, a pipe, or
polystyrene aggregate, Appellant’s disclosure does not provide support for a
high aspect ratio channel that includes a “hollow,” that is, unfilled space or
void between the sides of the channel. See Spec, paras. 56, 64. In other
words, Appellant’s disclosure does not support a high aspect ratio channel
having an unfilled space or void between the sides of the high aspect ratio
channel.
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As such, for the foregoing reasons, we sustain the rejection under 35
U.S.C. § 112, first paragraph, of claims 23—55 as failing to comply with the
written description requirement.
Rejections II and IV
The Examiner finds that Donlin discloses most of the limitations of
independent claims 23, 46, and 47, including, inter alia, a set of high aspect
ratio wastewater channels, a wastewater distribution conduit 12, 48, 52, and
granular material positioned outside and between adjacent channels. Final
Act. 3 (citing Donlin, cols. 4—8, col. 6,11. 60-col. 7,1. 15, Figs. 4, 11, and
16-40). The Examiner further finds that although Donlin fails to disclose
that the high aspect ratio channels include at least a granular material,
crushed stone, pea stone, a hollow, or polystyrene aggregate, Houck
discloses wastewater channels including at least a granular material, crushed
stone, pea stone, a hollow, or polystyrene aggregate. Id. at 4 (citing Houck,
col. 4—col. 10, Figs. 1—12), 7. The Examiner concludes that it would have
been obvious for a person of ordinary skill in the art
to modify Donlin by replacing the enclosed cuspated core sheet
with pipe section therein of the wastewater channels (14) of
Donlin with enclosed polystyrene with pipe section therein of
wastewater channels (see Figs. 1-12) taught by Houck et al.
’357 since according to KSR a simple substitution of one
known element for another to obtain predictable results is a
matter of obvious design choice. The modification is based on
design parameters such a leachate rate.
Id. at 4—5, 7.
Appellant argues that the Examiner’s combination of the teachings of
Donlin and Houck is based on impermissible hindsight because the
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Application 13/682,491
Examiner has not adequately explained “why [the] leachate rate would
allegedly promote the proposed combination.” Appeal Br. 10. According to
Appellant, substituting the polystyrene aggregate of Houck for Donlin’s
sheets, as per the Examiner’s rejection, “would not meet the functionality
provided by the core sheets o[f] Donlin” because “[t]he aggregate of Houck
would not at least provide the flow channels, void spaces, unobstructed fluid
path, and storage capacity between the core sheets as described and taught
by Donlin.” Id. at 14 (emphasis omitted). Thus, Appellant concludes that
the Examiner’s modification to Donlin according to Houck is superfluous.
Reply Br. 14.
In appropriate circumstances, a modification of prior art teachings
may be a matter of design choice. However, a proposed change that results
in different structure and function may not be an obvious design choice. In
re Gal, 980 F.2d 717, 719-20 (Fed. Cir. 1992). In this case, Donlin
discloses a subsoil fluid absorption system 10 including support pipe 12 and
support modules 14 that are made from flat parallel sheets or egg carton
shaped cuspated core sheets 20 held together by bands 22. See Donlin, col.
4,11. 24—37, Fig. 4. Donlin further discloses that support modules 14
“provide structural integrity, flow channels and void space for the subsoil
absorption system” 10. Id., col. 1,11. 57—60. Donlin also discloses that
sheets 20 provide “storage capacity for fluid until the fluid can be absorbed
into the soil contacting the support module” 14 and the fluid path from
sheets 20 “is almost completely unobstructed.” Id., col. 5,11. 34—37 and 46—
49.
We agree with Appellant that the Examiner has not adequately
explained how modifying Donlin’s drainage system by substituting Houck’s
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polystyrene aggregate filled pipe sections for Donlin’s support modules 14
having parallel sheets 20 would “provide the flow channels, void spaces,
unobstructed fluid path, and storage capacity between the core sheets as
described and taught by Donlin.” Appeal Br. 14 (emphasis omitted).
Rather, as Appellant correctly notes, “the aggregate in the sleeves of Houck
would settle in on themselves, filling interstitial spaces as the sleeves are
moved,” which is contrary to Donlin’s intent of maintaining unobstructed
fluid paths and void spaces. Id. at 14—15 (emphasis omitted). In other
words, the Examiner has not adequately explained why a skilled artisan
would have replaced Donlin’s support modules 14 having parallel sheets 20
with Houck’s polystyrene aggregate filled pipe sections as a mere design
choice when the modification would change the structure and operation of
Donlin’s subsoil drainage system. Merely asserting that the change is an
obvious design choice is insufficient. See Cutsforth, Inc. v. MotivePower,
Inc., 636 Fed. Appx. 575, 578 (Fed. Cir. 2016) (unpublished) (Stating that a
particular placement of an element is a design choice does not make it
obvious; a reason must be offered as to why a skilled artisan would have
made the specific design choice.). Just because Houck discloses a drainage
system, that does not mean that Houck’s polystyrene aggregate filled pipe
sections would provide the flow channels, void spaces, unobstructed fluid
path, and storage capacity as the system described and disclosed by Donlin.
See Ans. 7 (citing Houck, col. 1,11. 10-15).
Fastly, although we appreciate the Examiner’s position that choosing
the type of filtering material is merely another factor to be considered in
addition to other factors, such as climate, site topography, soil type, type of
leaching conduit, drainage rate, and material to be filtered, when designing a
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Application 13/682,491
drainage system, the Examiner has not adequately discussed that the type of
filtering material is a result-effective variable and thus can be optimized.
See Ans. 4—5, 10.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 47 and 49-53 as unpatentable
over Donlin and Houck.
As the Examiner’s use of the Laak ’131 disclosure does not remedy
the deficiency discussed supra (see Final Act. 7—8), we likewise do not
sustain the rejection of claims 23—33, 35—46, and 48 over the combined
teachings of Donlin, Houck, and Laak ’131.
Rejections III and V
The Examiner’s use of the disclosures of Laak ’264, Laak ’131, and
Nexus Design Article do not remedy the deficiency of the Donlin and Houck
combination discussed above. See Final Act. 6, 8.
Therefore, for the foregoing reasons, we do not sustain the rejections
under 35 U.S.C. § 103(a) of claims 54 and 55 as unpatentable over Donlin,
Houck, and Laak ’264 and of claim 34 as unpatentable over Donlin, Houck,
Laak ’131, and Nexus Design Article.
SUMMARY
The Examiner decision to reject claims 23—55 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
is affirmed.
The Examiner’s decision to reject claims 23—55 under 35
U.S.C.§ 103(a) is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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