David William. StaufferDownload PDFPatent Trials and Appeals BoardAug 16, 201913734978 - (D) (P.T.A.B. Aug. 16, 2019) Copy Citation 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. 13/734,978 01/06/2013 David William Stauffer 5951 111654 7590 08/16/2019 David William Stauffer David Stauffer 5334 N Amherst Portland, OR 97203 EXAMINER SINGH, SUNIL ART UNIT PAPER NUMBER 3678 MAIL DATE DELIVERY MODE 08/16/2019 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 PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID WILLIAM STAUFFER ____________ Appeal 2019-003065 Application 13/734,9781 Technology Center 3600 ____________ Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and MICHAEL L. WOODS, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated July 11, 2018, hereinafter “Final Act.”) rejecting claims 1–3. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 The inventor, Mr. David William Stauffer, is identified as the real party in interest in Appellant’s Appeal Brief (filed Oct. 17, 2018, hereinafter “Appeal Br.”). Appeal Br. 5. Appeal 2019-003065 Application 13/734,978 2 INVENTION Appellant’s invention is directed to a submerged pipeline that flows from higher to lower elevations due to gravity. Spec. para. 29.2 Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. An apparatus comprising a submerged system comprising air-tight and water-tight plastic pipelines that consist of about 10 individual pipelines that are about 10 meters in diameter and, together, about 100 meters wide and 10 meters tall, and that have their river water input point upriver from the mouth of the river, where the river is about 100 meters above sea level, and such pipelines will transport water by gravity and siphon principals, without any pumping, and such pipelines will run, along the bottom of the river, down the river to the ocean, and then along the ocean shoreline in ocean waters that are about 20 meters deep to points where the river water captured in the pipelines is diverted to go up the mouths of rivers, without any pumping, to elevations that are under 100 meters above sea level and deliver that river water to dry lands inland from the ocean coast for drinking, irrigation and fire suppression. REJECTIONS3 I. The Examiner rejects claim 3 under 35 U.S.C. § 112(b) as being indefinite.4 2 We refer to the Second Amended Specification, filed on August 14, 2015, and entered by the Examiner in the Advisory Action, dated September 29, 2015. 3 The rejection of claims 1–3 under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement has been withdrawn by the Examiner. See Examiner’s Answer (dated Feb. 1, 2019, hereinafter “Ans.”) 3–4. 4 The rejection of claims 1 and 2 under 35 U.S.C. § 112(b) as being indefinite has been withdrawn by the Examiner. See Advisory Action (dated Aug. 24, 2018, Appeal 2019-003065 Application 13/734,978 3 II. The Examiner rejects claims 1 and 2 under 35 U.S.C. § 103(a) as being unpatentable over Robin Madel, A Really Big Straw for a Really Big Gulp: The Washington-to-California Pipeline, 1–2 (Aug. 12, 2010) (hereinafter “Pipeline Article”) and Ross (US 2012/0020734 A1, published Jan. 26, 2012). III. The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as being unpatentable over Pipeline Article, Ross, Campbell et al. (CA 2,296,088, published Apr. 4, 2001, hereinafter “Canadian Document”), and Henderson (US 2011/0254179 A1, published Oct. 20, 2011). ANALYSIS Rejection I The Examiner finds that the limitations “the turbines,” “the hydroelectric plants,” and “the siphon pipelines” lack antecedent basis. Final Act. 3. Appellant argues that the “the” before “turbines;” the “the” before “hydroelectric plants;” and “the siphon” before ‘pipelines” have been deleted “in the Fifth Amended Claims . . . submitted with the Request for Reconsideration 5.” Appeal Br. 17. The Examiner does not rebut Appellant’s argument. See Ans. 4–34. Indeed, Appellant is correct that the above noted terms were deleted in the Response After- Final Amendment, filed July 19, 2018 (hereinafter “Amendment”), which was entered by the Examiner in the Advisory Action dated August 24, 2018. Moreover, the hereinafter “Adv. Act.”); see also Ans. 3 (The Examiner lists only claim 3 as being indefinite). Appeal 2019-003065 Application 13/734,978 4 Examiner explicitly acknowledges in the Advisory Action of August 24, 2018, that Appellant’s amendments have overcome the indefiniteness rejection. See Adv. Act. 1. We appreciate that the set of claims filed with the Appeal Brief of October 17, 2018, does not include Appellant’s amendments with respect to claim 3 discussed supra. Compare Appeal Br. 36, with Amendment 2. However, we view Appellant’s filing as an inadvertent error. Accordingly, for the purpose of this appeal, we consider the claims as filed in the Amendment.5, 6 Therefore, as claim 3 does not include the disputed terms noted above, we do not sustain the Examiner’s rejection of claim 3 under 35 U.S.C. § 112(b) as being indefinite. Rejection II We are not persuaded by Appellant’s argument that the Examiner’s determination of obviousness is based on impermissible hindsight reconstruction. See Appeal Br. 18 (“It is impermissible for [the] Examiner . . . to use Inventor Stauffer’s invention as a blueprint . . . to reconstruct Inventor Stauffer’s . . . invention.”). The Examiner has provided sufficient reasoning with rational underpinning to combine the teachings of Pipeline Article and Ross, namely, to 5 We consider the filing of claim 3 in the Supplemental Response After Final Rejection, filed August 27, 2018, to correct claim status identifiers, an inadvertent error on Appellant’s part, as this version of claim 3 does not include the changes made in the Amendment. 6 In regards to the claim amendments filed in the Supplemental Appeal Brief, filed February 12, 2019, although the Examiner did not complete an Advisory Action, the amendments are not enterable because they are not of either kind of limited amendment permitted by 37 C.F.R. § 41.33(b)(1) and (2), i.e., canceling a claim or rewriting a dependent claim in independent format. Nonetheless, we note that the claim 3 amendments filed in the Supplemental Appeal Brief include deletion of the indefinite terms discussed above. Appeal 2019-003065 Application 13/734,978 5 “allow[] fresh water to be delivered to a desired end user.” See Final Act. 5; In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] . . . some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co v. Teleflex Inc., 550 U.S. 398, 418 (2007)). For the reasons discussed below, we are not apprised of Examiner error. Here, we agree with the Examiner that Pipeline Article discloses employing a submerged 10m diameter pipe to transfer water from the mouth of the Columbia River, along the Pacific Ocean coastline at a depth of about 100m to inland water systems. Final Act. 4–5. We further agree with the Examiner that Pipeline Article does not disclose “the pipeline being air-tight and water-tight plastic pipeline powered by gravity and siphon principles without any pumping and including 10 pipelines creating a 10m high by 100m wide pipeline.” Id. at 5. We further agree with the Examiner that Pipeline Article fails to disclose the input of the pipeline being located “upriver from the mouth of the river, where the river is about 100 meters above sea level,” and, furthermore, that “[t]he pipeline run[s] along the ocean coastline at water depths of about 20m” to “mouths of rivers . . . that are under 100 meters above sea level to deliver water inland.” Id. Nonetheless, we agree with the Examiner that Ross discloses an “air-tight and water-tight pipeline powered by gravity and siphon principles without any pumping . . . running under fresh and salt water” to transport water “inland for use.” Id. (citing Ross paras. 1, 8, Fig. 8). Thus, the Examiner is correct that it would have been obvious for a person of ordinary skill in the art “to modify the Pipeline [A]rticle to have the pipeline be air-tight and water-tight and powered by gravity and siphon principles as taught by Ross” in order to “allow[] fresh water to be delivered to a desired end user.” Id. Appellant has not identified any Appeal 2019-003065 Application 13/734,978 6 particular error in the Examiner’s findings and reasoning in combining the teachings of Pipeline Article and Ross. Furthermore, as Ross discloses that the pipe material should be selected “to provide the lowest flow resistance on the interior of the pipeline” (see Ross para. 8), the Examiner is correct that choosing a plastic material for making the pipe of Pipeline Article, as modified by Ross, would have been obvious to a skilled artisan as a matter of obvious design choice. Id. at 6 (citing In re Leshin, 277 F.2d 197, 199 (CCPA 1960) (choosing a material to make a structure involves only routine skill in the art when such choice is based upon the material’s suitability for its intended use)). Moreover, Appellant’s factually unsupported assertion that a 10m diameter plastic pipe7 cannot be manufactured to be strong enough to transport water (see Appeal Br. 15–16), as required by the pipe of Pipeline Article, as modified by Ross, is unsupported attorney argument and cannot take the place of evidence in the record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Appellant has not identified any particular error in the Examiner’s findings and reasoning in further modifying the Pipeline Article and Ross as discussed supra. We further agree with the Examiner that providing 10 pipes in the system of Pipeline Article, as modified by Ross, would have been obvious to a person of ordinary skill in the art because such a modification is a “mere duplication of essential working parts,” where each pipe would function in the same manner as the pipe of Pipeline Article, as modified by Ross, that is, would “provide[] a desired amount of fresh water to the end user.” Id. at 6 (citing St. Regis Paper Co. v. Bemis Co., 549 F.2d 833 (7th Cir. 1977)); see also In re Harza, 274 F.2d 669, 671 (CCPA 1960) (a plurality of pipes is a “mere duplication of parts [that] has no 7 We note that the Kevlar pipe of Pipeline Article is 10m in diameter and is located at about 100m below the surface of the water. Appeal 2019-003065 Application 13/734,978 7 patentable significance unless a new and unexpected result is produced.”). Appellant has not identified any particular error in the Examiner’s findings and reasoning in further modifying the Pipeline Article and Ross as discussed supra. Also, the Examiner is on solid ground to conclude that it would have been obvious to a skilled artisan to locate the river water input point of the pipe of Pipeline Article, as modified by Ross, upriver from the mouth of the Columbia River where the altitude is about 100m above sea level because it is well known to a skilled artisan that such a location avoids salt water intrusion.8 Final Act. 6. Appellant has not identified any particular error in the Examiner’s findings and reasoning in further modifying the Pipeline Article and Ross as discussed supra. We also agree with the Examiner that because Ross’s pipe runs along the coast of the Pacific Ocean and as it is well known that the depth along this area is about 20m,9 it would have been obvious to a person of ordinary skill in the art to run the pipe of Pipeline Article and Ross “along the [Pacific O]cean’s coastline at water depths of about 20m” because “such a modification would be deep enough to avoid interference with moving vessels and close enough to the end user to avoid expenses related to [installing] pipeline in deep sections of the ocean.” Id. at 6–7 (citing Ross Fig. 810). Appellant has not identified any particular error in the Examiner’s findings and reasoning in further modifying the Pipeline Article and Ross as discussed supra. 8 As evidence, the Examiner relies on “Colorado River Basin Study” article, November 10, 2008. 9 As evidence, the Examiner relies on “Map of Mouth of Columbia River 1887” (http://volcanoes.usgs.gov/observatories/cvo/Historical/LewisClark/volcanoes_lew is_clark_november_08_1805.shtml); see also Advisory Action, dated December 1, 2015, at 21–25. 10 We view the Examiner’s reference to Figure 6 of Ross as a harmless typographical error. Appeal 2019-003065 Application 13/734,978 8 Lastly, we note that as water in the pipe of Pipeline Article and Ross is powered by gravity and siphon principles, a person of ordinary skill in the art would know to choose the altitude where to place the river water input point also on the altitude of the end user’s location. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (An artisan must be presumed to know something about the art apart from what the references disclose.). We, thus, agree with the Examiner that as the altitude of the inland water system where the water is transported for usage is below 100m above sea level, a skilled artisan would know to place the river water input point at an altitude of 100m above sea level. Final Act. 7 (citing the altitude of inland location Shasta Lake, California as being 19m above sea level); see also Ans. 19, 28, 30 (citing Advisory Action, dated December 1, 2015). Appellant has not identified any particular error in the Examiner’s findings and reasoning in further modifying the Pipeline Article and Ross as discussed supra. We are also not persuaded by Appellant’s argument that the reasoning to combine the prior art must come from the five references listed on page 22 of the Appeal Brief. See also Appeal Br. 19–20 (None of Pipeline Article, Ross, Colorado River Basin Study, Canadian Document, and Henderson “cites all the . . . structures and functions in Applicant’s . . . invention.”). The proper inquiry is whether the Examiner has articulated adequate reasoning based on a rational underpinning to explain why a person of ordinary skill in the art would have combined the teachings of the applied prior art. For the reasons discussed supra Appellant has not identified any particular error in the Examiner’s findings and reasoning in combining the teachings of Pipeline Article and Ross and further modifying the pipe of Pipeline Article and Ross as discussed above. We are also not persuaded by Appellant’s individual arguments against the teachings of Pipeline Article, Ross, Colorado River Basin Study, Canadian Appeal 2019-003065 Application 13/734,978 9 Document, and Henderson (see Appeal Br. 23–26) because “[n]on-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. [Each reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, we do not agree with Appellant that the Examiner’s rejection needs to address all 36 features listed on pages 23 through 24 of the Appeal Brief because many of the features asserted are not positively recited in claims 1–3. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). For example, none of the claims recites that the pipeline has to take water from the riverbed, be so low in the water that no ships hit it and environmentalists do not see it, or includes 10 pipes that go in different locations where one to three of the pipes makes a U-turn. See Appeal Br. 23. As to Appellant’s arguments regarding the level of ordinary skill in the art (see Appeal Br. 32–34), we consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (Quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Lastly, although we fully appreciate all of Appellant’s concerns regarding the world’s environmental problems (see Appeal Br. 27–32) and the features of the invention that would solve such problems (see id. at 18–19, 33–34), this does not mean that persons skilled in the art would not make the Examiner’s combination because of some technological incompatibility. See In re Farrenkopf, 713 F.2d Appeal 2019-003065 Application 13/734,978 10 714, 718 (Fed. Cir. 1983) (only technological incompatibility is relevant in determining whether a skilled artisan would make the combination). As Appellant has not shown a persuasive technological incompatibility in the Examiner’s rejection, we agree with the Examiner’s conclusion of obviousness. Accordingly, for the foregoing reasons, we sustain the rejections under 35 U.S.C. § 103(a) of claims 1 and 2 as unpatentable over Pipeline Article and Ross and of claim 3 as unpatentable over Pipeline Article, Ross, Canadian Document, and Henderson. SUMMARY The Examiner’s decision to reject claim 3 under 35 U.S.C. § 112(b) as being indefinite is reversed. The Examiner’s decision to reject claims 1–3 under 35 U.S.C. § 103(a) is affirmed. 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 Copy with citationCopy as parenthetical citation