Kurt A. Burkhart et al.

Patent Trials and Appeals Board

Dec 18, 2019

15236843 - (D) (P.T.A.B. Dec. 18, 2019)

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.
15/236,843 08/15/2016 Kurt A. Burkhart SR. 04995-P0003B 4371
24126 7590 12/18/2019
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
MAYO-PINNOCK, TARA LEIGH
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
12/18/2019 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):
patentpto@ssjr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KURT A. BURKHART SR. and RONALD E. BURKHART SR.
Appeal 2019-000884
Application 15/236,843
Technology Center 3600
Before MICHAEL L. HOELTER, JILL D. HILL, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 and 5–17.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Arrow Concrete
Products, Inc, and Retain-It, LLC. Appeal Br. 2.
2 Claim 4 is cancelled and claims 18–22 are withdrawn. Appeal Br. 20–22
(Claims App.).
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CLAIMED SUBJECT MATTER
Appellant’s disclosure is related to systems for the detention or
retention of storm water or runoff beneath a ground surface. Spec. 1.
Claim 1, reproduced below with emphasis added, is illustrative of the
claimed subject matter.
1. A fluid retention or detention system comprising:
a plurality of interior modules, each interior module
having at least one vertically disposed side portion supporting a
horizontally disposed roof each said side portion having a bottom
edge; and
a plurality of exterior modules, each exterior module
having at least one vertically disposed side portion supporting a
horizontally disposed roof;
each of said plurality of interior modules having at least
one side portion defining a fluid passage extending therethrough,
each said fluid passage extending upward from the bottom edge
of said side portion;
said plurality of interior and exterior modules being
arranged in an assembly in a plurality of rows and columns, said
plurality of exterior modules being peripherally located in said
assembly with respect to said interior modules so as to define a
boundary of the assembly;
each of one or more of the plurality of the interior and
exterior modules in the assembly being in fluid communication,
either directly or indirectly, with each of the other of the one or
more of the plurality of interior and exterior modules; and
a plurality of flow obstructers located in said plurality of
interior modules such that at least one flow obstructer is located
in each of: said rows of said plurality of interior modules, or said
columns of said plurality of interior modules, or said rows and
said columns of said plurality of interior modules;
wherein the plurality of flow obstructers cause circuitous
fluid flow through said one or more of the plurality of interior
modules.
Appeal Br. 19 (Claims App.).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Nicholas ’780 US 1,394,780 Oct. 25, 1921
Nicholson ’319 US 2,866,319 Dec. 30, 1958
Burkhart ’473 US 2004/0076473 A1 Apr. 22, 2004
Graf ’975 EP 1 932 975 A1 Dec. 15, 2006

REJECTIONS
I. Claims 1–3 and 5–17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Burkhart ’473 and Graf ’975. Final Act. 5, 6–10.
II. Claims 1–3 and 5–17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Burkhart ’473 and Nicholas ’780. Final Act. 5, 7–8, 10–
11.
III. Claims 1–3 and 5–17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Burkhart ’473 and Nicholson ’319. Final Act. 5, 7–8, 11–
12.
OPINION
Rejection I–Burkhart ’473 and Graf ’975
Claims 1–3, 5–10, and 13–17
The Examiner finds that Burkhart ’473 discloses many of the elements
recited in claim 1, including pluralities of interior and exterior modules, but
does not disclose a plurality of flow obstructers. Final Act. 5, 8. The
Examiner relies on Graf ’975 to remedy this deficiency, stating,
Graf ’975, as best illustrated in Figure 8, discloses a fluid
retention or detention system comprising a plurality of modules
(K) arranged in an assembly and a plurality of flow obstructers
(20) located in some of the modules such that at least one flow
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obstructer is located in each of the rows of modules, or the
columns of modules, or the rows and the columns of the modules
(para. 0033), wherein the plurality of flow obstructers causes
circuitous fluid flow through the modules, and wherein the
plurality of flow obstructers enhance the dimensional stability of
the assembly (para. 0033).
Final Act. 8–9. Thus, the Examiner finds that Graf ’975 discloses flow
obstructers in some modules of a fluid detention system. The Examiner
reasons:
It would have been obvious for one having ordinary skill in the
art at the time of invention to have modified the plurality of
interior modules in the system of Burkhart ’473 such that it
would have included flow obstructers as taught to be known by
Graf in each of the rows or each of the columns of the assembly
or each of the rows and columns of the assembly. The motivation
would have been to add dimensional stability to each of the rows
and/or columns of the assembly.
Id. at 9.
Appellant argues “Burkhart [’473] seeks to have relatively
unconstrained flow.” Appeal Br. 6 (citing Burkhart ’473, 1:38–40, 4:43–
47). Appellant’s position is that this disclosure in Burkhart ’473 would have
led a person of ordinary skill in the art away from including flow obstructers
in interior modules. Id. at 10.
In response, the Examiner refers to a related appeal (Appeal Number
2013-007366) and states,
Appellants presented the same argument in the appeal of the
parent application, and the Board was not persuaded on this
point. The Board found Burkhart (US Patent No. 6,991,402 B2),
which is the corresponding patent of Burkhart (US Patent
Application Publication No. 2004/0076473 Al) applied against
the appealed claims of the instant application, is concerned with
excessive lateral loads on the fluid retention/detention structure
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and teaches the benefit of structural braces 18 for supporting
these loads.
Ans. 5. The Examiner’s discussion on this issue points out the fact that the
motivation/benefit statement in the Final Office Action 9 (finding that the
proposed modification would enhance dimensional stability) corresponds to
a similar statement discussed in the appeal of a related case in which the
patent corresponding to Burkhart ’473 was used as prior art.
In reply, Appellant asserts that the Examiner’s proposed modification
would change the principle of operation of Burkhart ’473 and
the combination cannot be something that the prior art teaches
away from. Here, the examiner is proposing adding the “filler
plates 20” to the Burkhart reference which describes over and
over the desirability to provide relatively unconstrained flow.
(See e.g. Burkhart Col. 4, II. 43-47, 1, II. 38-40). However, these
filler plates would necessarily add flow constraint to the Burkhart
system and especially in the interior modules where examiner
proposes the addition of the Graf “filler plates 20”. Thus,
examiner's motivation to combine the references relies on
ignoring an express teaching of the Burkhart to avoid
constraining flow and favors disclosure of Graf which fails to
explicitly teach or suggest use of the “filler plates 20.” This is
the very picture of a failure to consider the references as a whole.
Ans. 4. Thus, Appellant reiterates the assertion that Burkhart ’473 intends to
achieve “relatively unconstrained flow.” However, Appellant does not
address the Examiner’s discussion of the benefit the Examiner finds would
result from the proposed combination or how this should be balanced against
the preference in Burkhart ’473 for relatively unconstrained flow.
The Examiner has the better position on this point. We agree with
Appellant that Burkhart ’473 discloses a preference for relatively
unconstrained flow. “Another disadvantage of current underground systems
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is that they do not provide unrestricted storm water flow throughout the
system. So it is desirous to provide a system which can permit relatively
unconstrained flow throughout the system.” Burkhart ’473 ¶ 4. “Preferably,
each channel has about the same cross section and extends upwardly from
the bottom edges to allow relatively unconstrained fluid flow in the
longitudinal and lateral directions.” Id. ¶ 9.
However, Burkhart ’473 is also concerned with the structural capacity
of its side modules. “When the side modules are required to support lateral
loads that exceed the structural capacity of the cantilever beam configuration
of the side modules, one or more integral structural braces 18 may be added.
This variation is illustrated in FIG. 6.” Id. ¶ 68. Although this concern is
discussed in relation to side modules rather than interior modules, a person
of ordinary skill in the art would understand that the entire assembly
(including interior modules) must provide structural support. “The modules
are suitable for numerous applications, and, by way of example but not
limitation, may be located under lawns, parkways, parking lots, roadways,
airports, railroads, or building floor areas.” Id. ¶ 43. Paragraph 33 of Graf
’975 explicitly teaches “for reasons of structural strength, some or all of the
internal arcuate apertures 11 could be provided with filler plates 20, if
deemed desirable,” which provides rational underpinning to the Examiner’s
reasoning. Accordingly, the Examiner’s determination that it would have
been obvious “included flow obstructers as taught to be known by Graf in
each of the rows or each of the columns of the assembly or each of the rows
and columns of the assembly . . . to add dimensional stability to each of the
rows and/or columns of the assembly” is adequate to support the rejection,
even if such a modification might further curtail the ability to provide
“relatively” unconstrained flow as preferred by Burkhart ’473. See In re
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Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) (“As the Board properly
found, one of ordinary skill would have been motivated to pursue the
desirable properties taught by Wong, even if that meant foregoing the
benefit taught by Gross;” see also Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.”).
Appellant also argues that Graf ’975 does not disclose flow
obstructers on interior modules. See Appeal Br. 6–11. Specifically,
Appellant states:
In order to teach the plurality of flow obstructers,
examiner relies upon Graf to disclose “a plurality of modules (k)
arranged in an assembly and a plurality of low obstructers (20)
located in some of the modules” (Final Office Action at 8,
emphasis added). Notably, examiner seems to acknowledge that
Graff does not expressly disclose flow obstructers in interior
modules.
Id. at 6.
In response, the Examiner finds that Graf ’975 discloses including
flow obstructers on interior modules. Ans. 4–5 (citing Graf ’975 ¶¶ 8, 33).
In this regard, the Examiner states:
as the [Graf ’975] relates width and length of the overall fluid
retention/detention structure (V) to the number of modules (K)
required to assemble the fluid retention/detention structure (V),
the examiner finds a clear teaching for adding modules (K) to the
width and/or length of the fluid retention/detention structure (V)
to increase its overall size thereby creating interior modules.
Id. at 4. Thus, according to the Examiner, Graf ’975 discloses changing the
size of the structure V by adding or subtracting molds K. Id. at 4–5.
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Citing paragraph 34 of Graf ’975, the Examiner finds that Graf ’975
discloses that openings within structure V may include filling plates 20,
which the Examiner considers to correlate to flow obstructers. Id. Based on
this finding, the Examiner concludes that Graf ’975, when provided with a
sufficient number of modules K, would include interior modules, and these
would include flow obstructers. Id. at 5.
In reply, Appellant contends that when Graf ’975 discloses increasing
or decreasing the size of structure V, Graf ’975 discloses changing the size
of each module K, not changing the number of modules K. Reply Br. 2.
Appellant asserts, “[the] Examiner continues to [misconstrue] the disclosure
of Graf. [0033] of Graf says that the size of element ‘K’ can be ‘larger or
smaller than shown in each direction (height direction and lateral direction).’
Element ‘K’ in Graf is [a]n individual module and not the entire 2x3
structure disclosed.” Id.
Even assuming for the sake of argument that Graf ’975 does not
disclose interior modules, the Examiner has the better position because the
original statement of the rejection relied on Burkhart ’473 to teach interior
modules and did not rely on Graf ’975 to teach this element. See Final Act.
5–6, 8–10. Indeed, as Appellant correctly points out (Appeal Br. 6), the
Examiner appears to acknowledge that Graf ’975 does not expressly disclose
flow obstructers on interior modules (see Final Act. 8). The Examiner’s
reasoning for modifying Burkhart ’473 to include flow obstructers on the
interior modules disclosed by Burkhart ’473 (in order to enhance
dimensional stability of the assembly) does not rely on the disclosure of any
interior modules in Graf ’975. See id. at 9. The Examiner’s attempt, noted
supra, to address Appellant’s argument regarding the alleged failure of Graf
’975 to disclose interior modules (or flow obstructers therein) was not in
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accordance with the original statement of the rejection and was unnecessary.
Appellant does not contest the Examiner’s finding that adding flow
obstructers would enhance dimensional stability, and this finding is not
premised on a finding that Graf ’975 discloses interior modules, much less
flow obstructers in interior modules. Accordingly, we sustain the
Examiner’s rejection of claim 1 as unpatentable over Burkhart ’473 and Graf
’975. Appellant does not make arguments for the patentability of claims 2,
3, and 5–17 aside from those discussed above regarding claim 1. See Appeal
Br. 6–11. Accordingly, these claims fall with claim 1, from which they
depend.
Claims 11 and 12
Claim 11 depends from claim 1 and recites, “at least one of said
plurality of interior modules has a side portion having no openings.” Appeal
Br. 20 (Claims App.). Claim 12 depends from claim 1 and recites, “at least
one of said plurality of interior modules has two side portions having no
openings.” Id. at 21.
In the statement of rejection of claim 11, the Examiner states:
It would have been obvious for one having ordinary skill in the
art at the time of invention to have modified at least one of the
interior modules of Burkhart such that it would have included a
side portion having no openings. The motivation would have
been to preclude the passage of fluid flow beyond the side
portion; i.e., redirect the fluid flow as desired.
Final Act. 13. The Examiner makes a similar statement regarding claim 12.
See id.
Appellant argues that the Examiner’s reasoning is not supported by
rational underpinnings because the Examiner has not identified any factual
basis supporting the reasoning. Appeal Br. 16–17. In this regard, Appellant
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states, “[the] Examiner simply concludes that one reference fails to teach the
limitation and then decides that despite this lack of teaching that one of skill
in the art would somehow be motivated to have no openings. Graf discloses
that the flow obstructer has holes therein.” Id. (citing Graf ’975, Fig. 8).
In response, the Examiner states a person of ordinary skill in the art
would have found it obvious to further modify the Burkhart
system such that at least one interior module would have had one
or two side portions with no openings to preclude the passage of
fluid beyond the side portions. As Burkhart teaches exterior
modules having side portions with no openings to preclude the
passage of fluid beyond the system boundary, it follows that the
same structure, side portions with no openings, could be
selectively added to interior modules to preclude the passage of
fluid within the system boundary.
Ans. 11 (emphasis added).
In reply, Appellant contends, “[a]gain, [the Examiner’s statement of]
motivation is contrary to Burkhart[’]s repeated disclosure of and desire for
unconstrained flow in interior modules. Further, each and every alleged
flow obstructer in Graf/Nicholson and Nicholas is provided on a portion
which has openings.” Reply Br. 7.
We note that, unlike the reasoning used in the rejection of claim 1, the
reasoning for the rejections of claims 11 and 12 is simply the reverse of the
stated preferred manner of operation disclosed by Burkhart ’473, namely, to
provide relatively unrestricted flow. See Final Act. 9, 13; Burkhart ’473 ¶ 4.
Further, in the rejection of claim 1, the Examiner’s proposed rejection relied
on a benefit explicitly disclosed by Graf ’975, enhanced dimensional
stability (improved structural strength). See Final Act. 9; Graf ’975 ¶ 33.
The Examiner identifies no such factual support of any benefit that would
support the reasoning presented in the rejections of claims 11 and 12. See
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Final Act. 13; Ans. 11. The Examiner’s explanation that Burkhart ’473
prevents water from leaving the system by using exterior modules that have
side portions with no openings, and this teaching would have been obvious
to apply to interior modules (Ans. 11) is not supported by the record or any
technical explanation. In contrast, the Examiner’s determination, in the
rejection of claim 1, that adding flow obstructers to interior modules would
enhance their strength, just as it would do for exterior modules, is a natural
extension of the teachings of paragraph 33 of Graf ’975. Accordingly, we
do not sustain the rejection of claims 11 and 12 as unpatentable over
Burkhart ’473 and Graf ’975.
Rejection II— Burkhart ’473 and Nicholas ’780
Similar to Rejection I, Examiner finds that Burkhart ’473 discloses the
elements recited in claim 1 except for a plurality of flow obstructers. Final
Act. 5, 10. The Examiner relies on Nicholas ’780 to disclose “a fluid
retention or detention system comprising a plurality of modules (7) arranged
in an assembly and a plurality of flow obstructers (10, 10') located in some
of the modules.” Id. at 10. The Examiner determines it would have been
obvious to a person of ordinary skill in the art to include such flow
obstructers in each row or column in Burkhart ’473 “to restrain or regulate
fluid flow and form settlement pools within each of the rows and/or columns
of the assembly.” Id.
Appellant contends that the Examiner’s reasoning is contrary to the
teachings of Burkhart ’473, which intends to produce relatively unrestricted
flow. Appeal Br. 15.
Appellant has the better position on this point. The Examiner does
not adequately explain, via technical reasoning or by reference to objective
evidence, why it would have been beneficial to restrain flow in the system
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disclosed by Burkhart ’473, considering the intention of Burkhart ’473 to
achieve “relatively unconstrained flow.” Burkhart ’473 ¶¶ 4, 9. Unlike the
Examiner’s proposed combination of the teachings of Burkhart ’473 and
Graf ’975, which was supported by rational underpinnings based on the
teaching of enhanced structural strength in paragraph 33 of Graf ’975, the
reasoning for the proposed combination of the teachings of Burkhart ’473
and Nicholas ’780 appears to be based on merely reversing the purpose of
the system disclosed by Burkhart ’473 from one that facilitates flow to one
that constrains flow. Accordingly, we do not sustain the rejection of claim 1
and claims 2–3 and 5–17 depending therefrom as unpatentable over
Burkhart ’473 and Nicholas ’780.
Rejection III— Burkhart ’473 and Nicholson ’319
Using reasoning similar to the reasoning set forth in Rejection II, the
Examiner reasons it would have been obvious to add flow obstructers, as
taught by Nicholson ’319, to the system disclosed by Burkhart ’473, “to
restrain or regulate fluid flow and form settling chambers within each of the
rows and/or columns of the assembly.” Final Act. 11–12.
For the same reason discussed above regarding Rejection II, we do not
agree that this reasoning is supported by rational underpinnings. Rather, it is
based on reversing the purpose of the system disclosed by Burkhart ’473
from one that facilitates flow to one that constrains flow without (in the
context of the system in Burkhart ’473) any benefit. Accordingly, we do not
sustain the rejection of claims 1–3 and 5–17 as unpatentable over Burkhart
’473 and Nicholson ’319.

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CONCLUSION
The Examiner’s rejections are AFFIRMED-IN-PART.
More specifically,
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–3, 5–17 103(a) Burkhart ’473, Graf
’975
1–3, 5–10,
13–17
11, 12
1–3, 5–17 103(a) Burkhart ’473,
Nicholas ’780
1–3, 5–17
1–3, 5–17 103(a) Burkhart ’473,
Nicholson ’319
1–3, 5–17
Overall
Outcome
1–3, 5–10,
13–17
11, 12

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART