Ex Parte Rainey

Patent Trial and Appeal Board

Sep 25, 2017

14187570 (P.T.A.B. Sep. 25, 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.
14/187,570 02/24/2014 Thomas L. Rainey 051813-1132 5043
24504 7590 09/27/2017
THOMAS I HORSTEMEYER, LLP
3200 WINDY HILL ROAD, SE
SUITE 1600E
ATLANTA, GA 30339
EXAMINER
HARTMANN, GARY S
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
uspatents @ tkhr.com
ozzie. liggins @ tkhr.com
docketing @ thomashorstemeyer. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS L. RAINEY
Appeal 2016-003237
Application 14/187,570
Technology Center 3600
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas L. Rainey (Appellant)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1 and 3—22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appeal Brief identifies Thomas L. Rainey as the real party in interest.
Appeal Br. 2.
Appeal 2016-003237
Application 14/187,570
CLAIMED SUBJECT MATTER
Claims 1,11, and 16 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A retaining wall, comprising:
a precast retaining wall block of a unitary material
comprising an opening defined by a plurality of interior walls of
the precast retaining wall block and the opening extending from
a top surface to a bottom surface of the precast retaining wall
block, the interior walls comprising a front face portion, a first
web portion, a second web portion, and a rear panel portion; and
a geogrid material wrapped around the rear panel portion
of the precast retaining wall block, a first end of the geogrid
material extending outwardly from and substantially planar to
the top surface of the precast retaining wall block and a second
end of the geogrid material extending outwardly from and
substantially planar to the bottom surface of the precast retaining
wall block, and the first end of the geogrid material and the
second end of the geogrid material being directly embedded in
an earth material for support.
Appeal Br. 36 (Claims App.).
EVIDENCE
The Examiner relies upon the following evidence:
Anderson US 6,079,908 June 27, 2000
Jansson US 6,692,195 B2 Feb. 17, 2004
Santha US 6,893,193 B2 May 17, 2005
Link US 7,185,470 B1 Mar. 6, 2007
Jaecklin US 7,845,885 B2 Dec. 7, 2010
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Application 14/187,570
REJECTIONS
I. Claims 1,3,4, and 6—22 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Link, Jansson, and Santha.2
II. Claims 1,3,4, and 6—22 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Link, Jansson, Santha, and Anderson.
III. Claims 1, 3, 4, and 6—22 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Jansson, Santha, Link, and Anderson.
IV. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Link, Jansson, Santha, and optionally Anderson, and Jaecklin.
ANALYSIS
Rejection I—Claims 1, 3, 4, and 6—22 over Link, Jansson, and Santha
Claims L 3, 4, 6—10, 21 and 22
Appellant argues for patentability of claims 1,3,4, 6—10, 21, and 22
as a group. See Appeal Br. 7—15. We select claim 1 as representative of this
group, and claims 3, 4, 6—10, 21 and 22 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(l)(iv).
Regarding claim 1, the Examiner finds that Link discloses a retaining
wall 68 comprising blocks 20 having openings defined by interior walls.
Final Act. 2 (citing Link, Fig. 1; see also id. at Figs. 7, 8). The Examiner
2 The Examiner explains that Rejections I—III have been modified to
correct a typographical error. Ans. 2. Namely, “claim 22 was omitted
in the rejection headings but, as discussed in the first full paragraph on
page 6 of [Ajppellanf s [Appeal Brief], it is understood that the
omission is typographical only.” Id. Accordingly, the Examiner has
added claim 22 to these rejections. Id.
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Application 14/187,570
also finds that Link discloses a block having a rear panel portion with planar
top and bottom surfaces. See Final Act. 2, Ans. 3. The Examiner
acknowledges that Link does not disclose a geogrid material. Final Act. 2.
The Examiner relies on Santha and Jansson to teach a geogrid or
wrapping material 14 and 50, respectively, having ends that are embedded in
earth material. Id. (citing Santha, Fig. 5; see also id. at Figs. 1—2; Jansson,
col. 3,11. 9-11; see also id. at Figs. 1, 3, col. 2,11. 49—51). The Examiner
finds that Santha also discloses wrapping geogrid material in a planar
configuration, that is, so that the ends of a geogrid material extend outwardly
from and substantially planar to a top surface and a bottom surface of a
block. Final Act. 3 (citing Santha, Fig. 5); see also Ans. 4. The Examiner
finds that Jansson also discloses wrapping a geogrid material behind a front
panel. Id.', see also Ans. 3.
The Examiner concludes that it would have been obvious to wrap the
geogrid material of Jansson or Santha around a rear panel of Link’s block to
reinforce Link’s wall because such wrapping would not require adding a rod,
pipe, or other element, or reconfiguring Link’s blocks. Final Act. 2; see also
Ans. 3. The Examiner explains that a skilled artisan, viewing Figure 3 of
Jansson, would have substituted Jansson’s batten for Link’s rear panel
portion. Ans. 3. The Examiner also concludes that it further would have
been obvious to 1) wrap a geogrid material in a planar configuration as
taught by Santha, and behind a front panel as taught by Jansson, around a
rear panel portion of Link’s block in order to prevent exposed geogrid
material; and 2) “have [the] terminated . . . ends of Jansson [embedded in
earth material] in the manner [disclosed by] Santha in order to ease
installation.” Final Act. 2—3.
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Application 14/187,570
Appellant contends that because Jansson discloses wrapping its
geogrid strip around a tubular batten, Jansson does not disclose the ends of a
geogrid material extending outwardly and substantially planar to the top
surface and the bottom surface of a block. Appeal Br. 9; see also id. at 10
(arguing Jansson’s batten does not extend from a top surface to a bottom
surface of its modules). Appellant further argues that in Jansson’s retaining
wall, different portions of the geogrid material extend at different angles
from the batten to another block, such that the geogrid material cannot
extend in a planar manner as claimed. Id. at 10.
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references .... [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, Appellant’s arguments focus on Jansson individually, rather than on
the Examiner’s combination of the teachings of Link, Jansson, and Santha.
In this regard, the Examiner relies on Link to disclose a block having a rear
panel portion with planar top and bottom surfaces. See Ans. 3. The
Examiner explains that by wrapping Jansson’s geogrid strip around the rear
panel portion of Link’s block, the ends of the geogrid strip would extend
outwardly and substantially planar to the top and bottom surfaces of the
block. Id. Moreover, we agree with the Examiner that a geogrid material
can extend outwardly at an angle and still be considered substantially planar
to a top or a bottom surface of a block, and that claim 1 does not exclude this
position. See id. at 4.
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Appellant also argues that Jansson fails to disclose that the ends of the
geogrid strip are directly embedded in an earth material because the geogrid
strip is deployed around the battens. Appeal Br. 9; see also id. at 10-11;
Reply Br. 4.
To the extent Appellant may be arguing that the noise absorbing mass
is not an earth material, we note Jansson discloses that this mass is
“preferably an earthen mass.” Janssen, col. 2,11. 50-51; see also Ans. 4. To
the extent Appellant may instead be arguing that the ends of Jansson’s
geogrid strip are not directly embedded in the earth material because the
geogrid strip is first wrapped around the battens (Appeal Br. 11), claim 1
does not recite any limitation that excludes the geogrid material from being
wrapped around another structure before the ends are embedded in the earth
material. Additionally, Appellant does not direct us to any disclosure in
Appellant’s Specification that clearly indicates that “directly embedded” has
a particular meaning that distinguishes the claimed elements from the
structural elements disclosed in Jansson relied on by the Examiner. Further,
even if the term “directly embedded” were construed to exclude wrapping a
geogrid material before embedding its ends in an earth material, Jansson
discloses that “[a]t each of its ends, the geogrid strip 50 is tied to one of the
battens or is embedded in the noise-absorbing mass 60.” Jansson, col. 3,11.
9—11 (emphasis added); see also Ans. 3. And, as noted by the Examiner,
Santha discloses “directly embedding” the ends of a geotextile into an earth
material, such that it would have been obvious to use direct embedding for
securing Link’s block. See Final Act. 2, Ans. 4. Thus, Appellant does not
apprise us of error in the Examiner’s findings.
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Appellant contends that Jansson’s batten is not comparable to the rear
panel portion of claim 1. Appeal Br. 9. Rather, Appellant argues, Jansson’s
batten is a separate piece from its concrete module, whereas Appellant’s rear
panel portion is part of a precast block, that is, Appellant’s block is a unitary
material. Id.
However, Jansson’s batten is positioned behind the front panel for a
geogrid material to wrap around. Ans. 3. The rear panel portion of Link’s
block—made of a unitary material—is also positioned behind a front panel
such that a geogrid material can be wrapped around it. See Link, Fig. 1.
Accordingly, we are not persuaded by Appellant’s contention that Jansson’s
batten is not comparable to the claimed rear panel portion. See Ans. 3.
Appellant argues that Santha fails to disclose a geogrid material
wrapped around a rear panel portion of a precast wall block. Appeal Br. 12.
Appellant contends that, in Santha, the block is a fiber block instead of a
precast retaining wall block, the block does not have an opening or a rear
panel portion, and a fabric is wrapped around the top, front and bottom of
the block, as opposed to being wrapped around a rear panel portion as
claimed. Id. at 12—13.
These contentions do not address the Examiner’s rejection. Santha is
not relied upon to teach these limitations, but rather, Link is relied upon to
teach a precast block having an opening and a rear panel portion. Ans. 4—5.
Appellant contends that the Examiner’s rejection is based on improper
piecemeal reconstruction or impermissible hindsight reconstruction because
the elements of the prior art are taken out of context: each of the references
provides different usage of the blocks, and Santha uses biodegradable
material, whereas Link and Jansson use concrete material. Appeal Br. 13—
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15; see also Reply Br. 6. Thus, according to Appellant, there is a different
configuration and design of each of the references’ blocks. Id. at 14—15.
Santha is relied upon to teach planar extension of a material and
embedding its ends in an earth material, and Jansson is relied upon to teach
positioning geogrid material such that it is hidden; these teachings are not
dependent on the blocks being a particular type of material. Ans. 5. Thus,
we are not persuaded that the Examiner’s rejection is based on improper
piecemeal reconstruction or impermissible hindsight reconstruction.
Appellant points out that Link discloses sliding the upper tier blocks
forward until the flat forward surfaces of their positioning wedges contact
the front inner wall surfaces of the lower tier blocks in order to form the
retaining wall. Appeal Br. 15 (citing Link, col. 5,11. 5—10). According to
Appellant, it would not have been obvious to combine Jansson’s geogrid
strip with Link’s blocks because if the geogrid strip extended out to the
lower tier blocks, the sliding motion would impact the position of the
geogrid strip. Id.', see also Reply Br. 5, 7.
The Supreme Court has emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As noted in KSR, “[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421. As the Examiner notes, claim 1 is not directed to a
method of positioning the blocks and, further, a skilled artisan would be
expected to be knowledgeable about block placement and using a geogrid
material. Ans. 5—6. Lor example, an ordinary skilled artisan, instead of
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Application 14/187,570
sliding an upper tier block forward, would know how to drop the upper tier
block directly on top of the lower tier block such that the wedge of the upper
tier block could still contact the front inner wall surface of the lower tier
block.
Thus, none of Appellant’s arguments apprise us of Examiner error.
Accordingly, we sustain the rejection of claim 1 as unpatentable over Link,
Jansson, and Santha. Claims 3, 4, 6—10, 21 and 22 fall with claim 1
Claims 11—15
Appellant argues claims 11—15 as a group. See Appeal Br. 21—24.
We select claim 11 as the representative claim, and claims 12—15 stand or
fall with claim 11.
Claim 11 is directed to a precast retaining wall system and recites
similar limitations as claim 1. Id. at 39-40 (Claims App.). In regard to
claim 11, Appellant’s arguments concerning the rejection based on the
combination of Link, Jansson, and Santha are similar to those discussed for
claim 1. See id. at 21—25. Appellant further argues that Santha fails to
disclose “the third part connecting the first part and the second part and
extending through the opening along the rear panel portion” as claimed. Id.
at 24—25. As discussed above, Link is relied upon to teach a precast block
having an opening and a rear panel. Ans. 4—5. And, as noted above, the
Examiner explains that by wrapping Jansson’s geogrid strip around the rear
panel portion of Link’s block, the ends of the geogrid strip would extend
outwardly and substantially planar to the top and bottom surfaces of the
block. Id. As such, the combined teachings of Link, Jansson, and Santha
would result in a third part of the geogrid material connecting the first part
and the second part while extending through an opening along a rear panel
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portion. Accordingly, we sustain the rejection of claim 11, and claims 12—
15 depending therefrom, as unpatentable over Link, Jansson, and Santha, for
the same reasons discussed above.
Claims 16—20
Appellant argues for patentability of claims 16—20 as a group. See id.
at 28—32. We select claim 16 as representative of this group, and claims 17—
20 stand or fall with claim 16.
Claim 16 is directed to a precast retaining wall block system and
recites similar limitations as claim 1. Id. at 41—42 (Claims App.). In regard
to claim 16, Appellant contends that the combination of Link, Jansson, and
Santha is deficient for similar reasons as discussed for claim 1. See id. at
28—32. As Appellant does not apprise us of any error in the rejection of
claim 1, we, accordingly, sustain the rejection of claim 16, and claims 17—20
depending therefrom, as unpatentable over Link, Jansson, and Santha, for
the same reasons discussed above.
Rejection II—Claims 1, 3, 4, and 6—22 over Link, Jansson, Santha,
and Anderson
Claims L 3, 4, 6—10, 21 and 22
Appellant argues for patentability of claims 1,3,4, 6—10, 21, and 22
as a group. See Appeal Br. 16—19. We select claim 1 as representative of
this group, and claims 3, 4, 6—10, 21 and 22 stand or fall with claim 1.
As to claim 1, the Examiner finds that Link discloses a retaining wall
comprising a precast block, and that Santha and Jansson disclose a block
with a geogrid or wrapping material, as discussed above. See Final Act. 4—5.
The Examiner finds that Anderson discloses a geogrid material 44 “in the
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manner [as] claimed,” that is, in a non-zig-zag pattern (Fig. 1), and also in a
zig-zag pattern (Fig. 17). Id. at 4. The Examiner concludes that it would
have been obvious to have the geogrid material, based on the combination of
Link, Jansson, and Santha, configured “in the manner [as] claimed,” that is,
in a non-zig-zag pattern, as taught by Anderson, “in order to suit the
application for which the blocks are being used.” Id.
Appellant contends that Anderson fails to disclose wrapping a geogrid
material around a rear panel portion of a precast retaining wall block
because Anderson discloses that a geogrid material is wrapped around a
tube. Appeal Br. 16—17. As such, Appellant argues that Anderson fails to
disclose a first end and a second end of a geogrid material extending
substantially planar to the top surface or a bottom surface of the precast
retaining wall block. Id. at 17—18.
Appellant’s arguments do not address the stated rejection. The
Examiner explains that Anderson is relied upon to teach that the non-zig-zag
pattern (straight pattern) of the geogrid material is equivalent to, or a
substitute to, the zig-zag pattern, and Link is relied upon to teach a precast
retaining wall block comprising a rear panel portion. Ans. 6. As discussed
above, the proposed combination of Link with Jansson and Santha would
result in a geogrid material wrapped around a rear panel portion and with
ends of the geogrid material extending outwardly from and substantially
planar to a top surface and bottom surface of the block, as claimed. Id.
Appellant argues that the Examiner’s rejection is based on improper
piecemeal reconstruction or impermissible hindsight reconstruction because
the elements of the prior art are taken out of context: each of the references
provides different usage of the blocks, and Santha uses biodegradable
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material while Link, Jansson, and Anderson use other materials, such as
concrete structures, dry cast, or composites. Appeal Br. 18—19. Thus,
according to Appellant, because Santha relates to temporary structures
whereas Jansson, Link, and Anderson relate to permanent structures, one of
ordinary skill in the art would not have combined these teachings to arrive at
the claimed invention. Id. at 19.
Santha is relied upon to teach planar extension of a geogrid material
and embedding its ends in earth material, Jansson is relied upon to teach
positioning a geogrid material such that it is hidden, Link is relied upon to
teach a precast retaining wall block having an opening and a rear panel
portion, and Anderson is relied upon to teach a geogrid material in a non-
zig-zag pattern; these teachings are not dependent on a particular type of
material. Id. We, thus, are not persuaded that the rejection is based on
improper piecemeal reconstruction or impermissible hindsight
reconstruction.
Thus, none of Appellant’s arguments apprise us of Examiner error.
We sustain the rejection of claim 1 as unpatentable over Link, Jansson,
Santha, and Anderson. Claims 3, 4, 6—10, 21 and 22 fall with claim 1.
Claims 11—15
Appellant argues for patentability of claims 11—15 as a group. See
Appeal Br. 25—27. We select claim 11 as representative of this group, and
claims 12—15 stand or fall with claim 11.
In regard to claim 11, Appellant contends that the combination of
Link, Jansson, Santha, and Anderson is deficient for similar reasons as
discussed for claim 1 (Rejection II). See id. at 25—27. As to Appellant’s
argument concerning the limitation of “the third part connecting the first part
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and the second part and extending through the opening along the rear panel
portion” {id. at 26—26), we are not persuaded for the same reasons discussed
above for claim 11 in Rejection I. As Appellant does not apprise us of any
error in the rejection of claim 1, we, accordingly, sustain the rejection of
claim 11, and claims 12—15 depending therefrom, over Link, Jansson,
Santha, and Anderson, for the same reasons discussed above.
Claims 16—20
Appellant argues for patentability of claims 16—20 as a group. See id.
at 32—35. We select claim 16 as representative of the group, and claims 17—
20 stand or fall with claim 16.
As to claim 16, Appellant contends that the combination of Tank,
Jansson, Santha, and Anderson is deficient for similar reasons as discussed
for claim 1 (Rejection II). See id. at 32—35. As Appellant does not apprise
us of any error in the rejection of claim 1, we sustain the rejection of claim
16, and claims 17—20 depending therefrom, over Link, Jansson, Santha, and
Anderson, for the same reasons discussed above.
Rejection III—Claims 1, 3, 4, and 6—22 over Jansson, Santha, Link, and
Anderson
As an alternative to Rejection II, the Examiner concludes that it would
have been obvious to substitute Jansson’s block with Link’s block “in order
to suit a particular application,” and it would have been obvious to configure
the geogrid material in a substantially perpendicular manner.3 Final Act. 5.
3 Claim 16 recites that the portions of the geogrid material extend outwardly
from and “perpendicular to the rear panel portion” of the precast block,
which appears equivalent to claim 1 ’s recitation of the ends of the geogrid
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Appellant relies on the same arguments as for Rejection II. Appeal
Br. 16—18, 25—27, 32—35. Accordingly, we sustain the rejection of claims 1,
3, 4, and 6—22 over Jansson, Santha, Link, and Anderson, for the same
reasons as for Rejection II.
Rejection IV-—Claim 5 over Link, Jansson, Santha, and optionally,
Anderson, and Jaecklin
Claim 5 depends from claim 1. Appellant relies on the arguments
presented for claim 1 (Rejections I—III). Id. at 20. As Appellant does not
apprise us of any error in the rejection of claim 1, we sustain the rejection of
claim 5 over Link, Jansson, Santha, and optionally, Anderson, and Jaecklin,
for the same reasons as for claim 1.
DECISION
We affirm the rejections of claims 1 and 3—22.
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
material extending outwardly from and “substantially planar to” the top and
bottom surfaces of the precast block. See Appeal Br. 36, 41 (Claims App.).
14