Ex Parte Scuero

Patent Trial and Appeal Board

Oct 20, 2016

13062362 (P.T.A.B. Oct. 20, 2016)

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.
13/062,362 04/01/2011 Alberto Scuero SS629.1027 3483
122515 7590 10/24/2016
Silvia Salvadori, P.C.
Silvia Salvadori
270 Madison Avenue, 8th Floor
New York, NY 10016
EXAMINER
LAMBE, PATRICK F
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
10/24/2016 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):
silvia@salvadorilaw.com
silvia30121 @ me. com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERTO SCUERO
Appeal 2014-009925
Application 13/062,3621
Technology Center 3600
Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
7—11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
According to Appellant,
The present invention refers to waterproofing coverings for
hydraulic works, such as canals, tunnels, dams and the like, by a
waterproofing and protective membrane of synthetic resin
material, or plastic material in general term, usually termed as
1 According to Appellant, the real party in interest is Carpi Tech B.V.
Amsterdam, Balema Branch. Br. 3.
Appeal 2014-009925
Application 13/062,362
“geomembrane”, and in particular refers to a method and to a
punctual fastening system suitable to transmit to the same
hydraulic work or ground the forces and strains acting onto the
membrane caused by the flowing fluid.
Spec. 1,11. 6-12.
CLAIMS
Claims 7—11 are on appeal. Claim 7 is illustrative of the appealed
claims and recites:
7. A method for fastening a waterproofing and protective
membrane comprising an elastically stretchable sheet of plastic
material onto a bottom area or side surface areas of a structure of
a hydraulic work by stud shaped fastening devices, each stud
shaped fastening device comprising an anchoring portion
configured to penetrate into the structure of the hydraulic work
or an underlying ground, said method comprising
defining a plurality of punctual anchoring points for the
protective membrane, the plurality of punctual anchoring points
being arranged along parallel extending anchoring lines of a
surface area of the hydraulic work;
causing the anchoring portion of each of the stud shaped
fastening devices to penetrate into the structure of the hydraulic
work or into the ground, with an upper portion of each of the stud
shaped fastening devices extending out of a respective anchoring
point;
laying down the protective membrane in a stretched
condition by threading the upper portions of the stud shaped
fastening devices into holes of the protective membrane arranged
along the parallel extending anchoring lines; and
sealingly fastening the protective membrane, and
partitioning the forces and stresses acting on the protective
membrane in correspondence with the fastening devices with
annular seals and locking plates with annular frictional surfaces.
Br. 22.
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Appeal 2014-009925
Application 13/062,362
REJECTIONS
1. The Examiner rejects claims 7 and 8 under 35 U.S.C. § 103(a) as
unpatentable over Scuero ’2522 in view of Scuero ’576.3
2. The Examiner rejects claims 9 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Scuero ’252 in view of Scuero ’576 and Donan.4
3. The Examiner rejects claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Scuero ’252 in view of Scuero ’576, Donan, and
Galante.5
4. The Examiner rejects claim 7 under 35 U.S.C. § 102(b) as
anticipated by Schibi.6
5. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Schibi in view of Scuero ’252.
DISCUSSION
Rejection 1
With respect to claim 7, the Examiner finds that Scuero ’252 discloses
a method as claimed except that Scuero ’252 discloses rigid sheets and “does
not disclose using elastically and extensible sheets plastic material as the
protective membrane or covering the hydraulic work in a stretched
condition, distributing and transmitting any force and/or stress acting on the
membrane, to the individual punctual fastening devices, to the hydraulic
structure, and/or to the ground.” Final Act. 2—3 (citing Scuero ’252 at col. 5,
2 Scuero, US 5,806,252, iss. Sept. 15, 1998.
3 Scuero, US 5,720,576, iss. Feb. 24, 1998.
4 Donan, Jr., US 4,453,845, iss. June 12, 1984
5 Galante, US 5,244,311, iss. Sept. 14, 1993.
6 Schibi, US 6,755,596 B2, iss. June 29, 2004.
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Appeal 2014-009925
Application 13/062,362
11. 20-26, 49-58; col. 6,11. 1—10; Fig. 4). The Examiner also finds that
Scuero ’576 teaches the use of flexible synthetic membranes as underwater
impermeable protective sheathing that is “attached to the concrete body . . .
via a metal profile . . . which distributes forces from the membrane to the
structure.” Id. at 3 (citing Scuero ’576 at col. 3,11. 23—34). The Examiner
concludes that “[i]t would have been obvious to one of the ordinary skill in
the art at the time of the invention to modify the membrane of Scuero ’252
with the flexible membrane of Scuero ’576 as described in the claims as an
alternative method of protecting the surface of the hydraulic structure.” Id.
The Examiner further finds that the combination would be a simple
substitution of known protective elements. Ans. 4.
We agree with and adopt the Examiner’s findings and conclusions
with respect to Scuero ’252 and Scuero ’576. See Final Act. 2—3, 6—7; Ans.
3^4. As discussed below, we are not persuaded of error by Appellant’s
arguments.
First, Appellant argues that Scuero ’252 does not suggest using
elastically stretchable sheets or a plurality of anchoring points as claimed.
Br. 10-11. Appellant asserts that Scuero ’252 “describes mechanical
anchoring points, pre-selected depending upon the geo-physical
characteristics of the hydraulic structures, to hold the rigid sheets in place.”
Id. at 11. Thus, Appellant concludes that Scuero ’252 does not describe
anchoring points arranged along parallel lines as claimed. With respect to
the use of flexible sheets, Appellant is correct, but the Examiner relies on
Scuero ’576 for this teaching. Regarding the arrangement of the anchors, we
agree with the Examiner. Specifically, we find that Scuero ’252 teaches or
at least suggests to one of ordinary skill in the art placing anchors along
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Appeal 2014-009925
Application 13/062,362
parallel lines by disclosing that the anchoring points are based on the
geometry of the canal and then providing two locations for the anchoring
points (Fig. 1, elements 17 and 18). One of ordinary skill in the art would
assume that if the geometry of the canal remains the same, the anchoring
points would be consistently placed on a line extending the length of the
canal, which would result in parallel anchoring lines as claimed.
Second, Appellant argues that the art cannot be combined because one
teaches rigid members and one teaches flexible — “one skilled in the art
would not have been able to arrive at the presently claimed subject matter”
Br. 12. This statement alone does not persuade us of any error in the
rejection.
Next, Appellant asserts:
Further, the presently claimed invention provides for a
plurality of punctual fastening devices each comprising an
anchoring portion conformed to penetrate into the hydraulic
work and/or the underlying ground, and a membrane fastening
portion extending from the anchoring portion of the fastening
device (e.g., page 2, lines 3-6). None of Scuero [’252] or Scuero
[’576] describes these features.
On the contrary, the anchoring points described in Scuero
[’252] are selected only on the basis of the geography and
configuration of the hydraulic structure and do not depend upon
the necessity to stretch the membrane, since Scuero [’252] only
describes rigid, unstretchable membranes.
Thus, there would be no motivation to combine the
teachings of the two cited references as suggested by the
Examiner.
Br. 12. Appellant goes on to describe alleged differences between the
anchoring points in the art and the claimed anchoring points and concludes
that “none of the two references, either alone or in combination describes the
anchoring by points presently claimed which advantageously provides for a
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Application 13/062,362
method for partitioning the forces and stresses acting on the protective
membrane.” Id. at 12—13. This argument appears to be based on the fact
that neither reference describes the claim features individually. The
argument is unpersuasive because one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Further, this argument is also unpersuasive because Scuero ‘252, as
discussed above, at least indicates that anchoring points would be placed in
parallel lines, as claimed, and does not point out why such would not be the
case if a flexible membrane as in Scuero ‘576 were used, as in the
combination proposed by the Examiner. Thus, Appellant’s discussion here
does not point to any error in the rejection.
Finally, Appellant provides us with a description of law regarding
improperly picking and choosing elements from the prior art to reconstruct
the claims and then provides a conclusory statement that the combination
relied upon by the Examiner would not have been obvious “unless the
artisan is permitted to select portions of the references rather than rely upon
what the references teach as a whole.” Br. 13—15. Without any further
explanation from Appellant, this assertion alone is not sufficient to show any
error in the rejection.
For these reasons, we sustain the rejection of claim 7. We also sustain
the rejection of dependent claim 8, for which Appellant does not provide any
separate arguments.
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Appeal 2014-009925
Application 13/062,362
Rejection 2
With respect to claim 9, the Examiner relies on Scuero ‘252 and
Scuero ‘576 as discussed above with respect to claim 7 and further relies on
Donan for teaching the type of stud shaped fastening device claimed. See
Final Act. 2—A.
Appellant argues that Donan is not analogous art because Donan
discloses a roof bolt used in mining and tunneling operations to reinforce
rock strata. Br. 16. Appellant asserts Donan is not in the same field of
endeavor and not reasonably pertinent to the problem faced by the inventors.
Id. at 17. In support, Appellant asserts that “[o]ne skilled in the art would
know that mining and tunneling are not activities which comprise the same
ground forces and strains applied to the membrane by a flowing fluid,” and
thus, “it is evident that the problems faced in a geotechnical setting cannot
be applied and extrapolated to a hydraulic setting without under
experimentation and with a reasonable expectation of success.” Id. 17—18.
The Examiner responds:
In this case, the problem solved by the fastening devices is
securing the membrane into the surface of the hydraulic work
below it. Many hydraulic works are made of concrete, stone, or
similar material. It would logically follow that bolts used to
secure rock strata, as in Donan, would be useful in securing the
membrane to such material. If the bolt can be secured in a mine
well enough to support the strata, it would follow that it could be
secured in a canal well enough to secure the membrane.
Therefore, one of ordinary skill in the art would find that
bolts designed for use in hard surfaces would be reasonably
pertinent to the task at hand.
Ans. 5.
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Application 13/062,362
We are not persuaded of error. We find that the Examiner’s
unrebutted finding that Donan is reasonably pertinent to the problem of
providing a suitable anchor in a hydraulic structure is supported by a
preponderance of the evidence on the record before us. Accordingly, we
sustain the rejection of claim 9. We also sustain the rejection of claim 10,
for which Appellant does not provide separate arguments.
Rejection 3
Appellant does not present separate arguments with respect to the
rejection of claim 11. See Br. 20. Thus, for the reasons set forth above, we
sustain the rejection of this claim.
Rejections 4 and 5
Because we have sustained rejections 1—3, which are dispositive with
respect to all claims on appeal, we do not reach the Examiner’s rejections
based on Schibi.
CONCLUSION
For the reasons set forth above, we find as follows.
We AFFIRM the rejection of claims 7 and 8 as obvious over
Scuero ’252 in view of Scuero ’576.
We AFFIRM the rejection of claims 9 and 10 as obvious over
Scuero ’252 in view of Scuero ’576 and Donan.
We AFFIRM the rejection of claim 11 as obvious over Scuero ’252 in
view of Scuero ’576, Donan, and Galante.
We do not reach the rejection of claim 7 as anticipated by Schibi or
the rejection of claim 8 as obvious over Schibi in view of Scuero ’252.
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Appeal 2014-009925
Application 13/062,362
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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