Ex Parte Spinelli

Board of Patent Appeals and Interferences

Nov 23, 2010

11150545 (B.P.A.I. Nov. 23, 2010)

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.
11/150,545 06/11/2005 Thomas Spinelli 10041C 2939
79998 7590 11/24/2010
Thomas Spinelli, Esq.
14 Mystic Lane
Northprot, NY 11768
EXAMINER
HARTMANN, GARY S
ART UNIT PAPER NUMBER
3671
MAIL DATE DELIVERY MODE
11/24/2010 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 PA TENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS SPINELLI
____________

Appeal 2009-007900
Application 11/150,545
Technology Center 3600
____________

Before LINDA E. HORNER, JOHN C. KERINS, and
FRED A. SILVERBERG, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007900
Application 11/150,545

STATEMENT OF THE CASE
Thomas Spinelli (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s final rejection of claims 1-5, 7, 8 and 12-18. Claims 6 and
9-11 were previously withdrawn. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION UNDER 37 C.F.R. § 41.50(b).
THE INVENTION
Appellant’s claimed invention is to a flotation bridge formed from at
least one expandable member. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A flotation bridge formed from at least one
expandable member and for spanning a body of
water in a spanning direction, wherein the
expandable member comprises:

a covering capable of expansion in the spanning
direction, the covering defining a cavity; and

expansion means for expanding foam in the cavity
in the spanning direction to expand the covering
into a predetermined shape.

THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 2, 4, 5, 7, 8, 12 and 16-18 under 35 U.S.C. § 102(b) as
being anticipated by Woodfin (US 6,381,792 B1, issued May 7, 2002); and
(ii) claims 3 and 13-15 under 35 U.S.C. § 103(a) as being
unpatentable over Woodfin.

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ISSUES
Did the Examiner err in finding that Woodfin discloses an expandable
member comprising a covering capable of expanding in a spanning direction
and expansion means for expanding foam in a cavity of the covering in the
spanning direction to expand the covering into a predetermined shape?
Did the Examiner err in finding that Woodfin discloses one or more
tensile wires disposed in the cavity of the covering for carrying at least a
portion of the tensile load on the expandable member?
Did the Examiner err in finding that Woodfin discloses a fastener
having a portion disposed outside the cavity that is configured to fix the
expandable member to another structural member?
Did the Examiner err in finding that Woodfin discloses a first or
second endplate on an expandable member having an interlocking means for
locking the member to another expandable member?
Did the Examiner err in concluding that it would have been obvious in
view of Woodfin to have the covering pleated in the spanning direction
when compact?
Does claim 17 particularly point out and distinctly claim subject
matter that Appellant regards as the invention?

ANALYSIS
Claims 1, 2, 4, 5, 7, 8, 12 and 16-18--Anticipation by Woodfin
Appellant separately argues the patentability of each of independent
claims 1, 16 and 17, and also separately argues the patentability of claims 8

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and 12, which each depend from claim 1. (Appeal Br. 8-12)2. The
remaining claims not separately argued will stand or fall with the
independent claim from which they depend. 37 C.F.R. § 41.37(c)(1)(vii).
The rejection of claim 17 as anticipated by Woodfin will be reversed,
for the reasons set forth in the new ground of rejection below.
Appellant contends that the rejection of claim 1 as anticipated by
Woodfin is in error, in that, while Woodfin is acknowledged as disclosing a
member 10 that is expanded by injection of an expandable foam, Woodfin is
asserted to neither disclose nor contemplate expansion of member 10 in a
spanning direction. (Appeal Br. 8-9). Appellant supports this contention by
noting that Woodfin discloses that the member 10 may be folded prior to the
expansion into final configuration, but that the folding would not be in a
spanning direction, rather it would be in a direction perpendicular to the
spanning direction. (Id.). Appellant further argues that the disclosure in
Woodfin that pipes extending through member 10 fix the length of the
member in the spanning direction and prevent expansion in the spanning
direction. (Appeal Br. 9).
We fail to see the significance, relative to the language set forth in
claim 1, of how or in what direction or orientation the Woodfin member 10
is folded. Woodfin discloses that the member is unfolded at the desired
location, and is then injected with foam, causing it to expand (fill and
stretch) to shape. (Woodfin, col. 4, ll. 23-29). As noted by the Examiner,
the material from which member 10 is constructed is a supple material that,

2 Citations to the Appeal Brief are made to the document titled
“Supplemental Appeal Brief”, filed February 11, 2008.

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in the terminology of claim 1, is “capable of expansion”, in all three
dimensions, which includes the claimed spanning direction. (Ans. 5).
We are further not persuaded by Appellant’s argument that the
positioning of pipes within member 10 would prevent expansion in the
spanning direction. Indeed, the disclosure in Woodfin (col. 4, ll. 25-26) that
the envelope of member 10 is stretched out along the pipes buttresses the
Examiner’s finding that the envelope is capable of expansion and is, in fact,
expanded (stretched) in the spanning direction.
To the extent that Appellant is contending that the stretching of the
envelope along the pipes prevents further expansion of the member in that
direction, the contention is unavailing in that it is not commensurate in scope
with claim 1. As noted previously, claim 1 requires that the covering
(envelope) be capable of expansion in the spanning direction, which, as
discussed above, Woodfin plainly evidences. Claim 1 further calls for an
“expansion means for expanding foam in the cavity in the spanning
direction to expand the covering into a predetermined shape.” (Appeal Br.,
Claims Appendix, Claim 1)(emphasis added). Appellant does not argue that
the foam used in Woodfin is not expanded in the spanning direction.
Woodfin further explicitly discloses that the injected foam causes the
envelope “to fill and stretch to [a predetermined] shape.” (Woodfin, col. 4,
ll. 28-29). Thus, Woodfin discloses these claim elements. We further note
that, in any event, the pipes in Woodfin do not appear to limit further
expansion of the envelope 10 in a spanning direction, particularly in the
regions of the envelope that extend above and below the positions of the
pipes. (See, e.g., Woodfin, Fig. 3, upper right and lower left extents of
parallelogram-shaped envelope).

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The rejection of claim 1 as anticipated by Woodfin will be sustained.
Claims 2, 4, 5, 7 and 18, which depend from claim 1 and are not separately
argued, fall with claim 1.
Appellant separately argues the patentability of claim 8, which
depends from claim 1, and contains the further limitation that one or more
tensile wires are disposed in the cavity of the covering of the expandable
member for carrying at least a portion of the tensile load on the member.
Appellant contends that the cables 80 (alternatively, 100, 102) in Woodfin,
identified by the Examiner as corresponding to the claimed tensile wires,
neither carry a tensile load on the expandable member nor are disposed in
the cavity of the expandable member. (Appeal Br. 11).
Taking the latter contention first, the “cavity” as claimed is defined by
the covering of the expansion means. (Claim 1). The envelope of Woodfin
similarly defines a cavity. (Woodfin, Figs. 1-4). Pipes 82 are disposed
within this cavity. (Woodfin, Fig. 4; col. 4, ll. 23-25). Appellant
acknowledges that Woodfin discloses an embodiment in which the cables
are disposed within these pipes or tubes. (Appeal Br. 11). In this
embodiment, then, the cables are plainly disposed in the cavity as called for
in claim 8.
We are not persuaded either that the cables in Woodfin do not carry at
least a portion of the tensile load on the expandable members. In contrast to
Appellant’s bare disavowal that the claimed function is not performed, the
Examiner notes that the cables are tightened when the bridge is assembled,
and that any load applied to the bridge is transferred as a tensile load in the
cables to the supports to which the cables are affixed. (Ans. 8). We find this
to be technically sound reasoning in the absence of evidence to the contrary.

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The rejection of claim 8 as anticipated by Woodfin will be sustained.
Claim 12 also depends from claim 1 and is separately argued by
Appellant. Appellant contends that eyelets 88 of Woodfin, relied upon by
the Examiner as corresponding to a second portion of a fastener that is
disposed outside the cavity of the expandable member, are not fasteners, and
even if they are regarded as fasteners, they are not configured for fixing the
expandable member to another structural member. (Appeal Br. 11-12).
The Examiner’s position is that the eyelet 88 is “configured for fixing
(via cable 100) an expandable member . . . to another structural member
(broadly including other modules and the immovable objects to which the
cable is fastened).” (Ans. 8). Claim 12, in its broadest reasonable
interpretation (see Spec., p. 14, ll. 25-26 and Fig. 5e), requires the portion of
the fastener extending outside the cavity to be configured to fix3 the
expandable member to another structure. While a cable passing through
eyelet 88 in Woodfin will seemingly aid in restraining movement of the
expandable member in one or more (but not all) directions (see Woodfin,
Fig. 5), the eyelet does not appear to be configured to fix the expandable
member to another structure in the overall construction disclosed by
Woodfin. The Examiner’s finding quoted above essentially admits as much.
The rejection of claim 12 as anticipated by Woodfin will not be
sustained.

3 fix: 3. to make fast, firm, or stable. 4. to place definitely and more or less
permanently: to fix a circus poster to a wall. Dictionary.com Unabridged
Based on the Random House Dictionary, © Random House, Inc. 2010,
accessed at http://dictionary.reference.com/browse/fix, on November 17,
2010.

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Appellant separately argues the patentability of independent claim 16.
(Appeal Br. 9-10). Appellant assigns error to the Examiner’s finding that
the endplates of the expandable members in Woodfin functioning as a wedge
to tightly hold adjacent modules together amounts to a disclosure of the
claimed interlocking means provided on at least one endplate of the
expandable member for locking a first end of an expandable member to
another expandable member. (Id.). More specifically, Appellant contends
that the wedge shape of the endplates of the Woodfin expandable members
“does not lock the endplates together as such is described in the
specification.” (Appeal Br. 10).
The Examiner maintains that Figure 1 and the description at column 3,
lines 37-40 of Woodfin evince that the configuration of the endplates
themselves on adjacent expandable members serve to interlock the members
to one another. However, the cited passage in Woodfin states only that a
keystone module serves as a wedge to ensure that the bridge modules are
tightly held against each other. This tight holding of one module against
another also requires the cables running therethrough or therealong to be
properly tensioned. (Woodfin, col. 3, ll. 35-37; Fig. 1). The configuration
of the endplates, without additional structural elements, do nothing to lock
one module to another.
The Examiner also counters Appellant’s argument that the
complementary-shaped endplates of Woodfin do not lock the endplates
together “as such is described in the specification”, taking the position that
such an argument could only be afforded any weight if additional structural
limitations were added to claim 16, or if Appellant were to “invoke 35
U.S.C. 112 6th paragraph”. (Ans. 6). We view this as a concession on the

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Examiner’s part that the structure relied on in Woodfin as disclosing the
claimed interlocking means would not be regarded as any of the structures
disclosed by Appellant, or any equivalents thereof, and would thus fall
outside the scope of the claimed interlocking means. At a minimum, there is
no finding that the Woodfin structure relied on is an equivalent of any of the
structures actually disclosed in Appellant’s Specification.
Appellant need not formally invoke the constraints provided in the
sixth paragraph of 35 U.S.C. § 112, particularly in a case such as this where
it should have been presumed that the interlocking means clause was to be
regarded as a means-plus-function limitation.4 The broadest reasonable
interpretation of the claimed “interlocking means for locking [one end of a
member to another member]”, covers only the corresponding structure,
material or acts described in the Specification and equivalents thereof. (35
U.S.C. § 112, para. 6; In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994)
(en banc)).
The rejection of claim 16 as anticipated by Woodfin will not be
sustained.
Claims 3 and 13-15--Obviousness over Woodfin
Appellant argues that the rejection of claim 3 as being obvious over
Woodfin is in error because, “at best, Woodfin discloses pleating in Figure 5
in a direction perpendicular to the spanning direction.” (Appeal Br. 11).
Appellant further contends that such a configuration does not permit the

4 MPEP § 2181 I. (8th ed., Rev. 8, Jul. 2010) (A claim limitation will be presumed to
invoke 35 U.S.C. 112, sixth paragraph, if it meets the provided 3-prong analysis.)

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unexpanded member to be as compact as one with pleating in the spanning
direction. (Id.).
Putting aside the disagreement between Appellant and the Examiner
regarding the orientation or direction of pleating specifically disclosed in
Woodfin, the Examiner further concluded that it would have been obvious to
provide pleats in the cover in any direction that would best suit storage
needs. (Ans. 3). In addition, the Examiner noted that since the envelope in
Woodfin is capable of expansion in three dimensions, a person having
ordinary skill in the art could position pleats in any direction desired without
defeating the purpose and function of the Woodfin structure. (Ans. 7).
Appellant’s argument is essentially that, according to Appellant’s
interpretation of the Woodfin disclosure, claim 3 is not anticipated by
Woodfin. Appellant does not take issue with, or assign error to, the
Examiner’s reasoning and conclusion that the subject matter of claim 3
would have been obvious to a person of ordinary skill in the art.
The rejection of claim 3 as being unpatentable over Woodfin will be
sustained.
Appellant does not present any arguments for patentability directed
specifically to claims 13-15, which each depend from claim 12. We above
found that the Examiner failed to establish a sustainable case of anticipation
of claim 12 in view of Woodfin. Notwithstanding the omission of argument
by Appellant in opposition to the rejection of these claims as being obvious
over Woodfin, we will not sustain the rejection, in that the findings and
conclusions set forth by the Examiner (Ans. 4) do not address the
shortcoming of Woodfin in anticipating claim 12. In other words, there is no
reasoning presented as to why it would be deemed obvious to modify the

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Woodfin fastener (eyelet 88) such that it would be configured to fix one
expandable member to another structural member, as is required by claim
12.
NEW GROUND OF REJECTION
Section 41.50(b) of Title 37 of the Code of Federal Regulations
confers authority on the Board to reject any pending claim for which the
Board has knowledge of any grounds of rejection not on appeal. 37 C.F.R.
§ 41.50(b) (2009). Under this authority, we enter new grounds of rejection
directed to claim 17.
Claim 17 is rejected under 35 U.S.C. § 112, second paragraph as
being indefinite for failing to particularly point out and distinctly claim the
subject matter that Appellant regards as the invention.
Claim 17 is, by its preamble, directed to a flotation bridge. The
flotation bridge, as claimed, is formed from at least one expandable member.
The expandable member is further recited in the claim as comprising a roof
panel. However, nowhere in Appellant’s application is it disclosed that an
expandable member that forms a part of a flotation bridge might be
simultaneously employed as a roof panel, and no such structure is described
or illustrated. Appellant’s Specification instead discloses the use of an
expandable member as a component of either a flotation bridge (Fig. 6) or a
roof structure (Fig. 5).
It is thus unclear whether the scope of the claim includes a flotation
bridge that has an expandable member, with the expandable member
including (comprising) a roof panel, or whether the recitation in the
preamble calling for a flotation bridge should be attributed to careless claim
drafting and therefore ignored, with the claim scope being directed to an

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expandable member, per se, comprising a roof panel. In either case, it is
also unclear from Appellant’s disclosure how an expandable member can
“comprise” a roof panel. As we can not conclusively determine which of
these two interpretations is appropriate, the claim is sufficiently ambiguous
as to warrant a rejection based on indefiniteness. Ex parte Miyazaki, 89
USPQ2d 1207, 1212 (BPAI 2008).
Because we have concluded that claim 17 is indefinite, the prior art
rejection of claim 17 must fall because it is necessarily based on a
speculative assumption as to the meaning of the claims. In re Steele, 305
F.2d 859, 862-63. We reverse the rejection of claim 17 under 35 U.S.C.
§ 102(b) as being anticipated by Woodfin. It should be understood,
however, that our decision in this regard is based solely on the indefiniteness
of the claimed subject matter, and does not reflect on the adequacy of the
prior art evidence applied in support of the rejection.

CONCLUSIONS
The Examiner did not err in finding that Woodfin discloses an
expandable member comprising a covering capable of expanding in a
spanning direction and expansion means for expanding foam in a cavity of
the covering in the spanning direction to expand the covering into a
predetermined shape.
The Examiner did not err in finding that Woodfin discloses one or
more tensile wires disposed in the cavity of the covering for carrying at least
a portion of the tensile load on the expandable member.

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The Examiner did err in finding that Woodfin discloses a fastener
having a portion disposed outside the cavity that is configured to fix the
expandable member to another structural member.
The Examiner did err in finding that Woodfin discloses a first or
second endplate on an expandable member having an interlocking means for
locking the member to another expandable member.
The Examiner did not err in concluding that it would have been
obvious in view of Woodfin to have the covering pleated in the spanning
direction when compact.
Claim 17 does not particularly point out and distinctly claim subject
matter that Appellant regards as the invention.

DECISION
The decision of the Examiner to reject claims 1, 2, 4, 5, 7, 8 and 18 is
AFFIRMED. The decision of the Examiner to reject claims 3, 12-15, 16 and
17 is REVERSED. Claim 17 is subject to a new ground of rejection as set
forth in greater detail above.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”

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Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the proceeding will be remanded to
the examiner . . .
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the
same record . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 41.50(b)

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JRG

THOMAS SPINELLI, ESQ.
14 MYSTIC LANE
NORTHPROT, NY 11768

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