2020000338 (P.T.A.B. Mar. 1, 2021)

Keith Underwood

Patent Trials and Appeals BoardMar 1, 2021

2020000338 (P.T.A.B. Mar. 1, 2021)

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. 12/292,642 11/21/2008 Keith R. Underwood 208469-9002-US01 2873 23409 7590 03/01/2021 MICHAEL BEST & FRIEDRICH LLP (Mke) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER MAYO-PINNOCK, TARA LEIGH ART UNIT PAPER NUMBER 3671 NOTIFICATION DATE DELIVERY MODE 03/01/2021 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): mkeipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KEITH R. UNDERWOOD Appeal 2020-000338 Application 12/292,642 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and MATTHEW S. MEYERS, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), the Appellant2 appeals from the Examiner’s decision to reject claims 1–14, 17, and 18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Throughout this opinion, we refer to the Appeal Brief (“Appeal Br.,” filed April 15, 2019), Reply Brief (“Reply Br.,” filed Oct. 15, 2019), the Examiner’s Answer (“Ans.,” mailed Aug. 14, 2019), and Final Office Action (“Final Act.,” mailed July 5, 2018). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as the inventor, Keith R. Underwood. Appeal Br. 1. Appeal 2020-000338 Application 12/292,642 2 STATEMENT OF THE CASE Illustrative Claim Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A regenerative stormwater conveyance system for treating and dispersing stormwater runoff, the system comprising: an entry point from which water enters the system; an entry pool operable to collect water entering from the entry point, said entry pool being located at an upstream point in said system; a first aquatic bed having a filtration structure operable to filter water; and a first riffle weir grade control structure operable to transition overflow water from said entry pool to said first aquatic bed, wherein said first aquatic bed is lower than said entry pool; and a sand base disposed beneath at least the filtration structure and operable to carry filtered water from the filtration structure downstream. Petitionable Matter The Appellant seeks review of the Examiner’s restriction and withdrawal of claims 16 and 19 as being independent or distinct from the originally claimed invention. Appeal Br. 5, 16–17; Reply Br. 9–10. This matter is reviewable by petition under 37 C.F.R. §§ 1.144 and 1.181 (see Manual of Patent Examining Procedure (“MPEP”) §§ 1002, 1002.02(c), 1201 (9th ed. rev. 10, June 2020)) and is not within the jurisdiction of the Board. In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971). Rejections We have set forth the rejections in a different order than the order presented in the Final Office Action. Appeal 2020-000338 Application 12/292,642 3 Claims 7 and 8 are rejected under 35 U.S.C. § 102(b) as anticipated by R. Newbury & M. Gaboury, The Use of Natural Stream Characteristics for Stream Rehabilitation Works Below the Manitoba Escarpment, 13 J. Canadian Water Resources 35–51 (1988) (“Newbury”). Claims 9–11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Newbury. Claim 12 is rejected under 35 U.S.C. § 102(b) as anticipated by the prior public use project described in Keith R. Underwood et al., Atlantic White Cedar Species Recovery And Wetland Enhancement Project At Howard’s Branch, Anne Arundel County, Maryland, Atlantic White Cedar: Ecology, Restoration, and Management, Proc. Arlington Echo Symposium 54–61 (2003) (“AWC”). Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over the prior public use project described in AWC. Claims 1–11 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over the prior public use project described in AWC in view of Coffman (US 2001/0045383 A1, pub. Nov. 29, 2001). Claims 14 and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over the prior public use project described in AWC in view of Georgia Stormwater Management Manual, 2 Technical Handbook (2001) (“Georgia”). Appeal 2020-000338 Application 12/292,642 4 Claims 1–3, 7, and 9 are provisionally rejected on the ground of non- statutory obviousness-type double patenting as unpatentable over claims 1, 5, and 9 of co-pending US Application No. 11/482,891.3 ANALYSIS Rejections based on Newbury The Appellant argues that the Examiner’s finding that Newbury expressly or inherently discloses “a plurality of aquatic beds each including a filtration structure operable to filter water from the respective aquatic bed and a sand base disposed beneath the filtration structure, wherein said filtration structure includes compost,” as recited in claim 7, is inadequately supported. Appeal Br. 6; see Reply Br. 2–4. The Appellant contends that the Examiner’s reliance on Newbury’s disclosure, a dictionary definition of the word “sand,” and technical reasoning is inadequate to explain why the aquatic bed in Newbury’s Mink River necessarily includes a filtration structure with compost and a sand base. See Appeal Br. 7–8; Reply Br. 3–4. The Appellant asserts that “[b]ecause Newbury [] is silent on the issue of what lies on the water bed, it is equally possible that the bed of the Mink River is coated with clay and does not provide for filtration at all.” Appeal Br. 7. Also, the Appellant asserts that “a mere possibility that a sand base might exist, e.g., under ideal conditions, beneath an imaginary, undisclosed, filtration structure, is not sufficient to satisfy the requirement for relying on inherency.” Id. at 8. The Appellant’s argument is persuasive. 3 Co-pending US Application No. 11/482,891 is on appeal (Appeal 2021- 000287) and is being decided concurrently with this appeal. Appeal 2020-000338 Application 12/292,642 5 In this case, the Examiner offers some helpful evidence and technical reasoning why Newbury’s disclosure, including that of the Mink River, may disclose “a plurality of aquatic beds each including a filtration structure operable to filter water from the respective aquatic bed and a sand base disposed beneath the filtration structure, wherein said filtration structure includes compost,” as recited in claim 7. See Final Act. 3–4, 14–15; Ans. 4– 6. However, on this record, we determine that the Examiner fails to provide adequate evidence and/or technical reasoning why the disputed claim limitation is necessarily present, i.e., inherent, in Newbury’s disclosure. Thus, we do not sustain the Examiner’s rejection of claims 7 and 8 under 35 U.S.C. § 102(b) as anticipated by Newbury. We likewise do not sustain the Examiner’s rejection of claims 9–11 under 35 U.S.C. § 103(a) as unpatentable over Newbury. Rejections based on the prior public use project described in AWC The Appellant argues “that the AWC project was, and was always intended to be, an experimental project and, thus, subject to the experimental use exception of 35 U.S.C. § 102[(b)].” Appeal Br. 9; see id. at 10–16; Reply Br. 4–9. The Examiner responds to the merits of the Appellant’s argument in the Answer. Ans. 6–22; see Final Act. 15–26. The Appellant’s argument is persuasive. The Appellant presented evidence in the form of a Declaration by Keith R. Underwood under 37 C.F.R. § 1.132, filed May 1, 2012 (“Underwood Decl. May 2012”). In this Declaration, the inventor references “a copy of a letter from the U.S. Army Corps of Engineers to the Anne Arundel County Department of Public Works confirming the experimental nature of The Howard’s Branch Project . . . and outlining various conditions Appeal 2020-000338 Application 12/292,642 6 that had to be followed for the project to be approved by the [Department of the Army]” i.e., “Exhibit A”.4 Underwood Decl. May 2012 ¶ 11. The letter establishes that success of the project will be determined by the results of the monitoring efforts described in annual reports, which were required over the course of five years. Underwood Decl. May 2012, Exhibit A, ¶ 8 (“The permittee shall submit annual post-construction monitoring reports on the results of the monitoring efforts to determine the success of the project by December 31 of each calendar year.”). The Appellant also presented evidence in the form of a Declaration by Keith R. Underwood under 37 C.F.R. § 1.131 and/or § 1.132, filed August 7, 2014 (“Underwood Decl. Aug. 2014”). This Declaration establishes that experiments were taking place for the public use project described in AWC through December 2005. Underwood Decl. Aug. 2014 ¶¶ 15–17; see id., passim. We have considered the positions of both the Examiner and the Appellant, and agree with the Appellant that the prior public use project described in AWC was an experimental use. See Appeal 2021-000287, pp. 6–8. The Appellant also presented evidence in the form of Declaration by Keith R. Underwood under 37 C.F.R. § 1.131 and/or § 1.132, filed June 13, 2011 (“Underwood Decl. June 2011”). This Declaration establishes that the inventor “completed [AWC] sometime in early 2005 and subsequently filed it with the USPTO . . . on July 8, 2005, as a provisional patent application, serial no. 60/697,390.” Underwood Decl. June 2011 ¶ 7; see id. ¶¶ 2–6. 4 “The Howard’s Branch Project” is synonymous with the project described in AWC. See AWC, Title. Appeal 2020-000338 Application 12/292,642 7 This statement establishes that the experimental use ended and the Appellant’s invention was reduced to practice in early 2005. The present application, US Application No. 12,292,642, is “a continuation-in-part application claiming the benefit pursuant to 35 U.S.C. § 120 of pending U.S. Non-Provisional Application Ser. No. 11/482,891 filed July 10, 2006, which claims the benefit of the filing date of Provisional Application Ser. No. 60/697,390 filed July 8, 2005.” Spec. ¶ 1. Notably, the actual reduction to practice, i.e., early 2005, is not one year prior to July 8, 2005 (the filing date of the Provisional Application). In view of the foregoing, we determine there is adequate evidence that the experimental use continued through a time period ending after July 7, 2004. In other words, the invention was not actually reduced to practice, i.e., a complete invention, prior to the 35 U.S.C. § 102(b) date. Thus, we do not sustain the Examiner’s rejections of claims 12 and 13 under 35 U.S.C. § 102(b) and § 103(a) as anticipated by and unpatentable over, respectively, the prior public use project described in AWC. We likewise do not sustain the Examiner’s rejections of claims 1–11, 14, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over the prior public use project described in AWC in view of Coffman or Georgia. Double patenting We do not reach the merits of the Examiner’s provisional rejection on the ground of non-statutory obviousness-type double patenting. In this case, it is premature to address the Examiner’s provisional double patenting rejection because it is the only remaining rejection on appeal. See Ex Parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). The Examiner’s attention is directed to the guidance found in MPEP Appeal 2020-000338 Application 12/292,642 8 § 804(I)(B)(1)(b) (9th ed., rev. 10, June 2020) specifying situations when a provisional non-statutory double patenting rejection should be withdrawn. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 7, 8 102(b) Newbury 7, 8 9–11 103(a) Newbury 9–11 12 102(b) AWC 12 13 103(a) AWC 13 1–11, 18 103(a) AWC, Coffman 1–11, 18 14, 17 103(a) AWC, Georgia 14, 17 1–3, 7, 9 Provisional Obviousness- type Double Patenting5 Overall Outcome 1–14, 17, 18 REVERSED 5 As explained above, we do not reach this rejection per Ex parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (holding that it is premature to address a provisional rejection) (precedential).