11128561 (P.T.A.B. Oct. 22, 2012)

Ex Parte Schafer et al

Patent Trial and Appeal BoardOct 22, 2012

11128561 (P.T.A.B. Oct. 22, 2012)

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. 11/128,561 05/13/2005 Charlie J. Schafer 14500/0009 8403 47608 7590 10/22/2012 Brown, Winick, Graves, Gross, Baskerville and Schoenebaum, P.L.C 666 Grand Ave Suite 2000 Des Moines, IA 50309 EXAMINER MAYO-PINNOCK, TARA LEIGH ART UNIT PAPER NUMBER 3671 MAIL DATE DELIVERY MODE 10/22/2012 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 CHARLIE J. SCHAFER and PHIL ALGREEN ____________________ Appeal 2010-011709 Application 11/128,561 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, MICHAEL C. ASTORINO, and JAMES P. CALVE, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011709 Application 11/128,561 2 STATEMENT OF THE CASE Charlie J. Schafer and Phil Algreen (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 21-40. Specifically, the Examiner rejected claims 21-32 and 40 under 35 U.S.C. § 103(a) as unpatentable over McCarthy (US 5,342,144, iss. Aug. 30, 1994), Van Der Grinten (WO 00/55611, pub. Sep. 21, 2000), and Hampton (US 5,323,317, iss. Jun. 21, 1994), and rejected claims 33-39 under 35 U.S.C. § 103(a) as unpatentable over McCarthy and Van Der Grinten. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Claimed Subject Matter Claim 21, reproduced below, is illustrative of the claimed subject matter. 21. A groundwater control system for an agricultural field to regulate the level of groundwater in said field according to selected criteria, said system comprising: (a) a buried field drainage tile line extending underground in said field to serve to drain water therefrom; (b) a water flow regulator located in said tile line and having a movable gate that is powered to control the flow of water therethrough; (c) means located in-ground for sensing the purity by measuring the conductivity of the groundwater in said field before the groundwater enters said tile line on at least a periodic basis and for providing output signals representative of said groundwater conductivity information, wherein said sensing means is physically located exterior to said tile line and said water flow regulator; (d) processing means for receiving said groundwater conductivity information and providing output signals to said flow regulator to control the position of said gate for meeting said selected criteria; and Appeal 2010-011709 Application 11/128,561 3 (e) a communication link linking said processing means, said sensing means and said flow regulator, said link comprising satellite receiving and transmitting means. OPINION Claim 21 requires, in pertinent part, “means located in-ground for sensing the purity by measuring the conductivity of the groundwater in said field before the groundwater enters said tile line. . . wherein said sensing means is physically located exterior to said tile line and said water flow regulator.” Claim 30 requires, in pertinent part, “means located in-ground for sensing the purity by measuring the conductivity of the groundwater in each of said fields . . . wherein said sensing means is physically located exterior to said tile line and said water flow regulator.” Claim 33 requires, in pertinent part, the steps of installing a water drainage system including, inter alia, “means for determining information concerning purity by measuring the conductivity of groundwater in said field” and “collecting said information from said groundwater while said groundwater is exterior to said tile line and said flow regulator.” Claim 35 requires, in pertinent part, the step of “sensing the purity by measuring the conductivity level of the groundwater outside of said tile line and in said field.” Claim 38 requires, in pertinent part, “means located exterior of said regulator for sensing the purity by measuring the conductivity of the groundwater in said field.” Appellants argue that McCarthy fails to teach means for sensing purity exterior of the control structure 30 (i.e., the water flow regulator), as required in claims 21 and 30. App. Br. 11. Appellants also argue that McCarthy fails to teach sensing means for sensing the purity level of the groundwater before it enters the tile line (i.e., in the field and exterior of the Appeal 2010-011709 Application 11/128,561 4 tile line and flow regulator), as called for in claims 21, 33 and 38, and the step of sensing the purity level of the groundwater outside of the tile line and in the field, as called for in claim 35. App. Br. 11, 16. In responding to these arguments, the Examiner finds that McCarthy “lists exemplary sensors which may be used with the prior art system (col. 9, line 48 through col. 10, line 7) including soil moisture meters. This teaching by the prior art reference clearly suggests sensing means placed outside the tile line.” Ans. 11. Soil moisture meters, however, are not sensors for sensing the purity of (or the concentration of dissolved substances or pollution in) the groundwater. Thus, a person of ordinary skill in the art would not have had a reason to replace the soil moisture meters of McCarthy with the conductivity probe of Van Der Grinten. See App. Br. 15 (contesting the Examiner’s determination that it would have been obvious to combine the references to make the claimed invention). The Examiner finds that McCarthy “teaches the use of a variety of sensors . . . which serve to accomplish a multitude of stormwater management objectives including ‘constant discharge . . ., water quality improvement through increased detention time, reduced turbidity in stormwater exiting sedimentation ponds, . . . .’” Ans. 12. While these “other such instrument[s] for measuring environmental parameters” (McCarthy, col. 10, ll. 6-7) might include or suggest a sensor for sensing purity of the stormwater, the Examiner’s findings directed to soil moisture meters, which, as mentioned above, are not sensors for sensing purity of the groundwater, are unavailing with respect to other sensors for measuring other environmental parameters. The Examiner reasons that because McCarthy teaches using a microcontroller “for programming data based on ‘external environmental parameters’” it would have been obvious to include Appeal 2010-011709 Application 11/128,561 5 sensing means for sensing the purity of groundwater before it enters the tile line “since the modification would have helped to establish a predetermined water retention time.” Ans. 7. However, it is not apparent, and the Examiner has not adequately explained, why this is so. In short, the Examiner does not provide sufficient findings and reasoning to establish an apparent reason why it would have been obvious to place purity sensors in the locations called for in claims 21, 30, 33, 35, and 38 to perform the sensing called for in these claims. The Examiner relies on Van Der Grinten for modifying McCarthy to use a conductivity probe to perform the step of sensing purity, and not for any teaching directed to the location of such conductivity probe within the stormwater control system of McCarthy. See Ans. 7. The Examiner relies on Hampton for its teachings directed to satellite communication links and not for any teaching directed to the location of a purity sensor within the stormwater control system of McCarthy. See Ans. 8. For the above reasons, the Examiner fails to establish a prima facie case of obviousness of the subject matter of claims 21, 30, 33, 35, and 38 and their dependent claims. We do not sustain the rejection of claims 21-32 and 40 under 35 U.S.C. § 103(a) as unpatentable over McCarthy, Van Der Grinten, and Hampton, and the rejection of claims 33-39 under 35 U.S.C. § 103(a) as unpatentable over McCarthy and Van Der Grinten. DECISION The Examiner’s decision rejecting claims 21-40 is reversed. REVERSED hh