Wywrot, Joe et al.

Patent Trials and Appeals Board

Feb 3, 2020

14029501 - (D) (P.T.A.B. Feb. 3, 2020)

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.
14/029,501 09/17/2013 Joe Wywrot SGCI 0116 PUS 8234
22045 7590 02/03/2020
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
CANFIELD, ROBERT
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOE WYWROT and NEAL BILLETDEAUX

Appeal 2019-003677
Application 14/029,501
Technology Center 3600
____________

Before DANIEL S. SONG, MICHAEL J. FITZPATRICK, and
ANNETTE R. REIMERS, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appellant, SmithGroupJJR, Inc.,1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1, 2, and 9. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant is the “applicant” under 37 C.F.R. § 1.42(b) and identifies itself
as the sole real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The Specification
The Specification’s “disclosure relates to techniques for managing the
impact development has on site rain water drainage.” Spec. ¶1.
The Claims
Claims 1, 2, and 9 are rejected. Final Act. 1. The remaining pending
claims, namely claims 3–8, are withdrawn from consideration. Id. Claim 1
is representative and reproduced below.
1. A site having a surface area, the site comprising:
post-development buildings, parking lots or sidewalks
arranged to occupy a portion of the surface area greater than
existing buildings, parking lots and sidewalks of the site; and
post-development rainwater containers or rainwater
infiltration systems configured to slow a rate at which rain
water drains from the site and arranged on the site such that a
water score of the site falls within a predetermined range of
values, wherein the water score is an amount of rain water
runoff associated with post-development conditions that is
derived from expected rainfall and curve numbers for the site
under the post-development conditions and is normalized such
that
one of (i) an amount of rain water runoff associated with
pre-settlement conditions that is derived from expected rainfall
and curve numbers for the site under the pre-settlement
conditions and (ii) an amount of rain water runoff associated
with existing conditions that is derived from expected rainfall
and curve numbers for the site under existing conditions defines
a maximum achievable water score,
the other of the amount of rain water runoff associated
with the pre-settlement conditions and the amount of rain water
runoff associated with the existing conditions defines a
minimum achievable water score, and
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the water score falls between the minimum and
maximum achievable water scores.
Appeal Br. Claims App. 1.
The Examiner’s Rejections
The following rejections are before us:
1. claims 1 and 9, under 35 U.S.C. § 102(a)(1), as anticipated by
Day2 (Final Act. ); and
2. claim 2, under 35 U.S.C. § 103, as unpatentable over Day (id. at
5).
DISCUSSION
Rejection 1 – Claims 1 and 9 as Anticipated
Appellant argues the patentability of claims 1 and 9 together. Appeal
Br. 2–4. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Day begins by explaining:
Urbanization disrupts natural soil profiles, increases impervious
surfaces and decreases vegetative cover. These disruptions
increase stormwater runoff at the expense of groundwater
recharge, degrading water quality and impairing aquatic habitats.
. . . Creative Best Management Practices (BMPs) that harness
the ability of vegetation and soils to mitigate urban runoff are
needed.
Day 1. Day proceeds to disclose, as cited by the Examiner, “using structural
soils to simultaneously allow healthy tree growth, water infiltration, and
pavement–all on the same land area.” Day 5 (cited at Final Act. 3). “Tree
root systems and the structural soil that supports them combine to form a

2 Susan Downing Day et al., “Managing Stormwater for Urban
Sustainability Using Trees and Structural Soils,” VIRGINIA POLYTECHNIC
INSTITUTE AND STATE UNIVERSITY (2008) (“Day”).
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shallow but extensive reservoir for capturing and storing stormwater.” Id.
“Structural soils are engineered soil mixes with a high porosity that allow
tree root to penetrate freely, and stormwater to infiltrate rapidly and then be
stored until it percolates into the soil beneath.” Id.
The Examiner found that Day’s use of structural soils satisfies claim
1’s recitation that the site comprise “post-development rain water containers
or rain water infiltration systems . . . configured to slow a rate at which
rainwater drains from the site . . . and arranged on the site.” Final Act. 3.
The Examiner found that Day’s use of structural soils in conjunction with
“urban infill development” satisfies claim 1’s recitation that the site
comprise “post-development buildings, parking lots or sidewalks arranged to
occupy a portion of the surface area greater than existing buildings, parking
lots and sidewalks of the site.” Final Act. 3 (citing Day 3). The Examiner
found that adding structural soils as taught by Day would “bring the [water]
score to somewhere between” the water scores under the pre-settlement and
existing conditions, thereby satisfying claim 1’s language directed to the
water score. Id. at 3–4.
Appellant argues that Day does not anticipate claim 1 because Day
“does not contemplate post-development buildings, parking lots or sidewalks
arranged to occupy a portion of the surface area greater than existing
buildings, parking lots and sidewalks of the site.” Appeal Br. 3. In making
this argument, Appellant attacks additional findings by the Examiner, which
were set forth on pages 6 and 7 of the Final Action. Id. at 3–4. Neither the
Appeal Brief nor the Reply Brief ever addresses Day’s teaching that the use
of structural soils “may prove particularly useful in areas of urban infill
development.” Day 3. The Examiner cited this teaching both in the Final
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Action and in the Answer. See Final Act. 3; Ans. 3. We find Day’s
teaching that adding structural soils may be particularly useful for urban
infill development sites satisfies the claim language reciting “post-
development buildings, parking lots or sidewalks arranged to occupy a
portion of the surface area greater than existing buildings, parking lots and
sidewalks of the site.”
Appellant additionally argues that Day “does not make clear that any
resulting post-development water score necessarily falls between limits
bounded by existing conditions and pre-settlement conditions.” Appeal Br.
3 (footnote quoting MPEP § 2163.09(a) omitted). Appellant explains its
argument as follows:
[T]he addition of a rain water container or water infiltration
system will not inherently normalize the water score as asserted
by the [E]xaminer because the surface area occupied by the post-
development buildings, parking lots or sidewalks could be so
much greater than that of existing conditions that the simple
addition of a rain water container may not be sufficient to drive
the water score between that defined by pre-settlement and
existing conditions.
Id. at 4. This argument does not apprise us of error for at least two reasons.
First, Appellant’s argument is premised falsely; the hypothetical Day
embodiment contemplated by Appellant is not within the scope of Day’s
teachings. Day teaches:
The goals of stormwater [best management practices] are to
reduce peak flow, reduce runoff volume and remove pollutants.
The system described in this manual addresses all three of these
goals by utilizing trees and structural soils to aid in water
interception, storage, and infiltration while increasing
evapotranspiration potential.
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Day 1 (emphasis added). Appellant has not identified any teaching by Day
to post-develop a site in a manner that would result in a net increase of peak
flow or runoff volume. Indeed, such post-development would be
inconsistent with the explicit goals of Day.
Second, Appellant’s argument is based on a misunderstanding of the
inherency doctrine. Under that doctrine, “[a] single prior art reference may
anticipate without disclosing a feature of the claimed invention if such
feature is necessarily present, or inherent, in that reference.” Allergan, Inc.
v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014). It is sufficient if the
missing feature is necessarily present in a single embodiment. See Toro Co.
v. Deere & Co., 355 F.3d 1313, 1321 (Fed. Cir. 2004) (“For inherent
anticipation, the [prior art reference] must have sufficiently described and
enabled at least one embodiment that necessarily featured or resulted in the
subject matter embraced by limitation (c).” (emphasis added)). However,
the missing feature need not be necessarily present in all embodiments
taught by Day. As discussed above, we do not agree that Day teaches any
embodiments that would increase a site’s peak flow and/or runoff volume.
Regardless, it cannot be disputed reasonably that Day teaches embodiments
with the opposite result. Day 3. Such embodiments would necessarily have
a “water score [that] falls between the minimum and maximum achievable
water scores,” as recited in claim 1. In this regard, “a reference can
anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations
arranged or combined as in the claim, if a person of skill in the art, reading
the reference, would ‘at once envisage’ the claimed arrangement or
combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d
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1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681
(CCPA 1962)).
Appellant has not apprised us of Examiner error. Thus, we affirm the
rejection of claim 1, as well as that of claim 9, which falls therewith. See
37 C.F.R. § 41.37(c)(1)(iv).
Rejection 2 – Claim 2 as Obvious
Appellant does not present arguments against this rejection beyond
those already considered and found unavailing above. See Appeal Br. 2–4
(arguing all claims and all rejections together). Accordingly, for similar
reasons, we affirm Rejection 2.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference/
Basis
Affirmed Reversed
1, 9 102(a)(1) Day 1, 9
2 103 Day 2
Overall
Outcome
1, 2, 9

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED