Ex Parte PottsDownload PDFPatent Trial and Appeal BoardSep 30, 201612730817 (P.T.A.B. Sep. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121730,817 03/24/2010 85173 7590 10/04/2016 GRASSOPLLC 1818 LIBRARY STREET, SUITE 500 RESTON, VA 20190 FIRST NAMED INVENTOR David A. Potts 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. 353_0310_USl_CIP2_DIV2 9892 EXAMINER SINGH, SUNIL ART UNIT PAPER NUMBER 3678 NOTIFICATION DATE DELIVERY MODE 10/04/2016 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): admin@grassoip.com fgrasso@grassoip.com vromme@grassoip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte DAVID A. POTTS Appeal2014-005483 Application 12/730,817 1 Technology Center 3600 Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and BRUCE T. WIEDER, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 59-75. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellant, the real party in interest is the inventor. Appeal Br. 1. Appeal2014-005483 Application 12/730,817 Claimed Subject Matter Independent claim 59 is representative of the subject matter on appeal and is reproduced below. 59. A method of making a leach field comprising: using a form to shape alternating channels of fill material one and fill material two at a location, fill material one and fill material two being permeable; and placing or constructing a conduit for connecting an effluent source from a septic tank or other component of a wastewater treatment system to be in fluid communication with one or more of the alternating channels, wherein the alternating channels of fill material one and fill material two were shaped with the form at the location, the form moved from the location after shaping alternating channels of fill material one and fill material two, wherein the conduit is placed to traverse or abut alternating channels of fill material in the leach field. Objection and Rejections2 The Specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. Final Act. 2. Claims 59-75 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Final Act. 3. Claims 59-75 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the enablement requirement. Final Act. 3--4. 2 The Examiner has withdrawn the rejection of claims 59-75 under 35 U.S.C. § 103(a) as unpatentable over Minor et al. (US 5,017,042, iss. May 21, 1991) and Hoppe (US 3,478,524, iss. Nov. 18, 1969). Ans. 2. 2 Appeal2014-005483 Application 12/730,817 Claims 59-75 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite. Final Act. 4. ANALYSIS Objection and Written Description Ordinarily an objection is petitionable, and a rejection is appealable to the Board. When the issue of new matter presented is the subject of both an objection and a rejection, the issue is appealable. Manual of Patent Examining Procedure (MPEP) § 2163.06 II. Review of New Matter Objections and/or Rejections (9th Ed. Rev. 7, Nov. 2015)). See also MPEP § 608.04(c); 35 U.S.C. § 134(a); 37 C.F.R. § 1.181(a)(l). While the Examiner has not made a new matter rejection or objection, in this case, the objection to the Specification for lack of antecedent basis and the written description rejection tum on the same issue of whether the claimed subject matter finds adequate support in the original disclosure. As such, we will decide both the objection and the rejection. The Examiner objects to the Specification because "[t]he term channel recited in at least claim 59 has no basis in the specification." Final Act. 2. Similarly, the Examiner rejects independent claim 59 and its dependent claims as failing to comply with the written description requirement because the original filed disclosure fails to provide a basis for "creating alternating channels." Id. at 3. The Examiner's rejection is primarily based on a premise that to satisfy the written description requirement the Specification must use the term "channel" in its description of the forms of Figures 25-27, which are said to be representative of a species in a restriction requirement. See, e.g., Ans. 9. 3 Appeal2014-005483 Application 12/730,817 The Appellant's argument to the contrary is persuasive. Appeal Br. 16-19, Reply Br. 4--14. Notably, the Appellant explains how "shaping alternating channels of fill material also finds support from Figure 25." Reply Br. 6-9. We agree with the Appellant's explanation. To satisfy the written description requirement, "the [original] specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). The claimed invention need not be recited in haec verba in the original specification to satisfy the written description requirement. Id. at 1352; MPEP § 2163.02 (9th Ed. Rev. 7, Nov. 2015) ("[t]he subject matter of the claim need not be described literally (i.e., using the same terms or in haec verba) in order for the disclosure to satisfy the description requirement."). Accordingly, merely because the term "channel" is not used in paragraphs describing the forms of Figures 25-2 7, such is not dispositive of an Appellant's failure to comply with the written description requirement. Thus, we do not sustain the rejection of claims 59-75 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. We likewise do not sustain the objection to the Specification. Enablement The Examiner rejects independent claim 59 and its dependent claims as failing to comply with the enablement requirement because one of ordinary skill in the art cannot make or use the invention of claim 59, which calls for "creating alternating channels." Final Act. 3--4. The Examiner's 4 Appeal2014-005483 Application 12/730,817 support for the rejection is primarily based on a premise that the originally filed disclosure lacks the claimed language. See id.; see Ans. 10-11. However, the enablement requirement of 35 U.S.C. § 112, first paragraph, is separate and distinct from the description requirement. Vas- Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). And, the Examiner's rejection appears to conflate the two requirements-written description and enablement - as the premise of the Examiner's rejection of claim 59 appears to be based only on the Specification's use of terminology. See Ans. 10-11. Moreover, the Examiner's rejection fails to explain why the disclosure, as filed, is not sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. See U.S. v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). Notably, determining whether any necessary experimentation is undue involves considering relevant factors including, but not limited to: (1) the quantity of experimentation necessary; (2) the amount of direction or guidance presented; (3) the presence or absence of working examples; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability or unpredictability of the art; and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The Examiner's rejection does not discuss many of the factors set forth in Wands as they relate to undue experimentation. Although the Examiner is not required to provide a discussion as to every Wands factor, it is not apparent from the Final Office Action or the Answer that many of these factors have been considered. The support for the Examiner's rejection appears to relate to the amount of direction or guidance presented, which is 5 Appeal2014-005483 Application 12/730,817 only one of the eight Wands factors. Based on the foregoing, we determine that the Examiner's rejection under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement, is not sufficiently complete to establish a prima facie case. See also Appeal Br. 21-22, Reply Br. 15. Thus, we do not sustain the rejection of claims 59-75 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Indefiniteness At the outset, we note that the Examiner provides specific rejections for independent claim 59 and dependent claims 60, 64, 72, and 73. Final Act. 4. The Examiner's rejection of dependent claims 61---63, 65-71, 74, and 75 is based on one or more of the specific rejections of claims 59, 60, 64, 72, and 73. See id. However, as discussed below, we do not sustain the Examiner's rejections of claims 59, 60, 64, 72, and 73, and as such, we likewise do not sustain the rejections of claims 61---63, 65-71, 74, and 75. Independent claim 59 The Examiner rejects independent claim 59 as indefinite because it is unclear exactly what structure "channels" in "using a form to shape alternating channels," as recited in claim 59, refers to as the term was never mentioned in the Specification. Final Act. 4; see Ans. 11-12. The Examiner adds "[i]t is unclear how the forms depicted in Figures 25-27 can produce alternating channels since the forms have a single interior (volume) and a single (space, [ ] gap) between the trench walls and the exterior of the forms 6 Appeal2014-005483 Application 12/730,817 (as described in para. [0076]) cannot form a plurality of discrete spaced apart channels." Ans. 11-12. During examination, after applying the broadest reasonable interpretation to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite. In re Packard, 751F.3d1307, 1310 (Fed. Cir. 2014). The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether "those skilled in the art would understand what is claimed when the claim is read in light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). The Examiner appears to have a rigid focus on the term "channel" and its failure to be explicitly used in paragraphs describing Figures 25-27, which is insufficient to support the rejection. In light of the Specification, we determine the term "channels" in "using a form to shape alternating channels," as recited in claim 59, to be clear to those skilled in the art. See Reply Br. 16; see, e.g., id. at 6-9. Thus, we do not sustain the rejection of independent claim 59 as indefinite. Dependent claim 60 The Examiner rejects claim 60 as indefinite because it is unclear "what is the 'elongated portions'." Final Act. 4. The Examiner appears to support this rejection by stating "the specification sheds no light so as to interpret the "elongated portions" see para [0076]." Ans. 12. Based on the foregoing, it appears that the Examiner is suggesting that the claims must use the exact terms in the Specification or else they are indefinite. See Reply Br. 17. However, the test for definiteness under 35 U.S.C. § 112, second paragraph, is whether "those skilled in the art would understand what is 7 Appeal2014-005483 Application 12/730,817 claimed when the claim is read in light of the specification." Orthokinetics, 806 F.2d at 1576. The Appellant contends that "support and insight into the elongated portion language can be at least found in the exemplary fingers 412 of the form 400 of Figure 25 and the related portions of the specification." Reply Br. 17. We agree with the Appellant. Thus, we do not sustain the rejection of dependent claim 60 as indefinite. Dependent claim 64 The Examiner rejects claim 64 as indefinite because it is unclear "how 'fingers' relate back to channels." Final Act. 4. The Examiner appears to support the rejection with a rigid focus on the terms used to describe Figure 25 in paragraph 76 of the Specification. See Ans. 12-13. However, the Appellant points out that "Figure 25 of the as-filed application includes numerous fingers labeled 412. These fingers would assist the form 400 in shap[ing] the alternating channels of claim 59 as the form is placed, covered, backfilled, and filled as described in embodiments, and for example, paragraphs 72-78 of the as-filed specification." Appeal Br. 24; see also Reply Br. 18-19. We agree with the Appellant. Thus, we do not sustain the rejection of dependent claim 64 as indefinite. Dependent claims 72 and 73 The Examiner rejects claims 72 and 73 as indefinite because it is unclear "what 'connection at one end is'." Final Act. 4. The Examiner appears to support this rejection by stating "the specification sheds no light so as to interpret the 'connection at one end' see para [0076]." Ans. 13. Based on the foregoing, it appears that the Examiner is suggesting that the 8 Appeal2014-005483 Application 12/730,817 claims must use the exact terms in the Specification or else they are indefinite. However, the test for definiteness under 35 U.S.C. § 112, second paragraph, is whether "those skilled in the art would understand what is claimed when the claim is read in light of the specification." Orthokinetics, 806 F.2d at 1576. The Appellant contends that the disputed claim language is "amenable to construction on its face." Reply Br. 19. We agree. Moreover, the Appellant explains: [W]hen the form shown in Figure 25 is placed in the ground and then a first fill material is placed inside of the form and a second fill material placed outside of the form, the fill material inside the fingers may be considered to be connected at one end by fill material in the central volume 411 located in the middle of the form 400. Reply Br. 20. Although the foregoing is not necessary to interpret the language of claims 72 and 73, it provides helpful guidance to explain the breath of the claims. Thus, we do not sustain the rejection of dependent claims 72 and 73, as indefinite. DECISION We REVERSE the Examiner's decision objecting to the Specification and rejecting claims 59-75. REVERSED 9 Copy with citationCopy as parenthetical citation