Ex Parte Alirol

Patent Trial and Appeal Board

Jan 16, 2018

14012735 (P.T.A.B. Jan. 16, 2018)

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.
14/012,735 08/28/2013 Matt Alirol AWTT.303 8410
88172 7590 01/18/2018
Mohr Intellectual Property Law Solutions, P.C.
522 SW 5th Avenue
Suite 1390
Portland, OR 97204-2137
EXAMINER
WEINERTH, GIDEON R
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
01/18/2018 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):
j oey @ mohriplaw .com
docketing@mohriplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATT ALIROL
Appeal 2017-004757
Application 14/012,73 51
Technology Center 3700
Before HUBERT C. LORIN, BRUCE T. WIEDER, and
BRADLEY B. BAYAT Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1—20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is assumed to be the inventor Matt Alirol.
See 37 C.F.R. § 41.37(c)(l)(i).
Appeal 2017-004757
Application 14/012,735
CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates “to buoyant liquid cover
members, systems, and methods for covering the surface of a body of
liquid.” (Spec. 11.)
Claims 1, 6, and 18 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A system for covering the surface of a body of liquid,
comprising:
a plurality of independent buoyant members each having
the shape of a rhombic dodecahedron configured to float on the
surface of the body of liquid and to substantially cover the
surface of the body of liquid, each of the independent buoyant
members including twelve quadrilateral faces; and
wherein the plurality of independent buoyant members
naturally align when floating on the surface of the body of liquid
with a quadrilateral face of a rhombic dodecahedron abutting a
quadrilateral face of an adjacent rhombic dodecahedron and the
plurality of independent buoyant members forming a closely
packed floating arrangement of face-to-face abutting rhombic
dodecahedrons.
REJECTION
Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Usab (US 3,993,214, iss. Nov. 23, 1976) and Maistre (US 3,842,768,
iss. Oct. 22, 1974).
ANALYSIS
Appellant argues independent claims 1, 6, and 18 together. (See
Appeal Br. 6.) Appellant does not present separate arguments for dependent
2
Appeal 2017-004757
Application 14/012,735
claims 2—5, 7—17, 19 and 20. We select claim 1 as representative.
Claims 2—20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Usab discloses substantially covering the surface of a liquid using a
plurality of floating pentagonal dodecahedrons. (Usab, Abstract.) Maistre
discloses “[a] cellular flotation structure made up of identical regular
rhombododecahedra.” (Maistre, Abstract.) The Examiner finds that Usab
discloses every limitation of claim 1 except that the dodecahedrons disclosed
are pentagonal dodecahedrons rather than the claimed rhombic
dodecahedrons. (See Final Action 2—3.) The Examiner finds that Maistre
discloses rhombic dodecahedrons. (Id. at 3.) The Examiner determines that
[i]t would have been obvious for one having ordinary skill in the
art before the effective filing date of the claimed invention to
modify the pentagonal dodecahedral shape of the buoyant
members in Usab with the rhombic dodecahedral shape of
Maistre as the rhombic dodecahedral shape in Maistre improves
the stacking of the individual cells so as to occupy the whole of
the available space, and so that each of the twelve faces match
up perfectly with a face of up to twelve neighboring cells
(Maistre Col. 2 Lines 7—20).
(Id.)
Appellant argues that Maistre is not analogous art. (Appeal Br. 6—8.)
According to Appellant, Maistre is not from the same field of endeavor as
the claimed invention because “the field of endeavor of the claimed
invention is coverings for liquid surfaces” (id. at 6) and “the field of
endeavor of Maistre is buoyant structures for submarines” (id. at 7).
“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant’s endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986—87 (Fed.
3
Appeal 2017-004757
Application 14/012,735
Cir. 2006). In determining the field of endeavor, “the examiner and the
Board must consider the ‘circumstances’ of the application—the full
disclosure—and weigh those circumstances from the vantage point of the
common sense likely to be exerted by one of ordinary skill in the art in
assessing the scope of the endeavor.” In re Bigio, 381 F.3d 1320, 1326 (Fed.
Cir. 2004).
Here, the Examiner finds that “Usab and Maistre are both relevant to
the art of dodecahedral buoyant members which float on the surface of a
body of water.” (Answer 3.) According to the Examiner, “a person having
ordinary skill in the art considering different twelve sided floatation
members would naturally look to other buoyant bodies having twelve sides.”
(Id.)
We find that the Examiner has the better position. The Specification
describes the problem faced by the inventor as “a need for buoyant
members, systems, and methods for covering the surface of a body of liquid
that improve upon and advance the design of known liquid covering
systems.” (Spec. 1 5.2) Claim 1 recites “a plurality of independent buoyant
members.” Accordingly, we find that the field of endeavor is properly
characterized as designs for buoyant members for floating on and covering a
liquid.
Maistre relates to “a cellular flotation structure” (Maistre col. 1,11. 2—
3), and more specifically to “a cellular flotation structure including at least
two superposed layers of juxtaposed watertight cells, the cells being
2 The Specification contains two paragraphs marked “[0005].” We refer
here to paragraph 5 on page 2 of the Specification.
4
Appeal 2017-004757
Application 14/012,735
identical regular rhombododecahedra arranged face to face without voids
between them” (id. col. 1,11. 48—52). In other words, Maistre discloses
buoyant members (floating watertight cells) where the buoyant members are
“arranged face to face without voids between them” to form cellular
flotation structures. (Id.)
A person of ordinary skill in the art confronted with the task of
designing buoyant members for floating on and covering a liquid would
naturally look to previous designs for other buoyant members, such as the
flotation structures comprising watertight cells disclosed in Maistre. While
we agree with Appellant that Maistre is suited for use “[i]n the field of
submarine applications” (see id. at col. 1,11. 9-12), Maistre specifically
discloses that “[t]he structure of the invention is particularly but not
exclusively adapted to resist very high hydrostatic pressures, and to be used
as a flotation volume when immersed at depth” (id. at col. 1,11. 5—8,
emphasis added). In short, Maistre discloses a cellular flotation structure
that floats on and covers that portion of the liquid upon which it is floating.
Therefore, we are not persuaded that Maistre is not analogous art.
Appellant next argues that the Examiner’s articulated reasoning for
combining Usab with Maistre is not rational. (Appeal Br. 8—9.) Regarding
the Examiner’s first articulated reason, namely that the rhombododecahedral
shape disclosed in Maistre “improves the stacking of the individual cells so
as to occupy the whole of the available space” (Final Action 3), Appellant
contends that “one of ordinary skill in the art of liquid surface coverings
would have no use for filling space in three dimensions” and that “[t]he
relevant property is how a single, two dimensional layer of a given solid will
behave” (Appeal Br. 9).
5
Appeal 2017-004757
Application 14/012,735
The Examiner disagrees and finds that “additional space filling
arrangements would be relevant to one having ordinary skill in the art in
forming other surface covering formations.” (Answer 4.)
Usab “relates to an open liquid surface cover and, more particularly,
to a highly efficient and economical float for substantially reducing
evaporation and heat loss from an open liquid surface.” (Usab col. 1,11. 6—
9.) Usab discloses that
[i]n operation, it is simply necessary to dump a plurality of
dodecahedrons 10 into tank 11, whereupon the floating
dodecahedrons 10 disperse themselves over surface 12. Any
turbulence, vibration, or agitation of liquid surface 12 will cause
dodecahedrons 10 to automatically align themselves into a
position providing a better than 99% cover for surface 12,
assuming a sufficient number of dodecahedrons 10 are provided.
{Id. at col. 4,11. 51—58.) Usab further discloses that “if a second layer of
dodecahedrons 10 are superimposed over the first layer, they will
automatically align themselves in close geometric juxtaposition to
effectively eliminate any open area exposed to the atmosphere.” {Id. at
col. 4,11. 10-14.) In other words, Usab discloses using two layers of floating
dodecahedrons for covering a liquid. Additionally, as discussed above,
Maistre discloses using two layers of floating rhombododecahedra for a
flotation structure. (Maistre col. 1,11. 48—52.)
In view of the above, we do not find persuasive Appellant’s argument
that “one of ordinary skill in the art of liquid surface coverings would have
no use for filling space in three dimensions.” {See Appeal Br. 9.) Nor, we
note, does Appellant argue that any claims are limited to two dimensions.
Thus, we are not persuaded of error in the Examiner’s articulated reasoning
that one of ordinary skill in the art would be motivated to look to other
6
Appeal 2017-004757
Application 14/012,735
geometric shapes, such as the rhombododecahedra of Maistre, in order to
improve the stacking of the individual cells.
Because we find the Examiner’s first articulated reason for the
combination sufficient to sustain the rejection, we need not address
arguments (see Appeal Br. 9) regarding the Examiner’s second articulated
reason.
Appellant further argues that “the results of combining Usab and
Maistre would not have been predictable to one of ordinary skill in the art.”
(Appeal Br. 10.) According to Appellant, “there are an estimated 6,384,634
topologically distinct convex dodecahedra” (id. at 11) and that “one of
ordinary skill in the art would not apply the teachings of Usab to all
dodecahedra” (id. at 12).
The Examiner responds that Maistre “discloses known and
appreciable benefits of twelve sided bodies each having a four sided rhombic
face” and, “[tjherefore, it does not matter that there are millions of known
convex dodecahedral shapes (including ‘bizarre tetaroids’).” (Answer 5.)
We agree with the Examiner. Maistre discloses the geometric
structure claimed, i.e., rhombic dodecahedrons. (See, e.g., Maistre,
Abstract.) The number of other types of dodecahedrons that may exist is
therefore irrelevant. Additionally, and contrary to Appellant’s assertion, we
do not view the Examiner’s rejection as based on any assumption about the
behavior of “all dodecahedra.”
Appellant next argues that “[tjhere is no suggestion in Maistre of how
the rhombic dodecahedra would behave when allowed to naturally align
with each other, in a single layer, on the surface of a body of liquid.”
(Appeal Br. 14.) According to Appellant, “the fact that a plurality of
7
Appeal 2017-004757
Application 14/012,735
rhombic dodecahedra can be purposefully arranged and glued together to
form a solid three dimensional structure tells us nothing about how rhombic
dodecahedra will naturally arrange in two dimensions on the surface of a
body of liquid.” (Id.) However, “one cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.” In re Keller, 642 F.2d at 426. That Maistre
alone does not disclose every limitation recited in claim 1 does not show
error in the obviousness rejection based on the combination of Usab and
Maistre.
Finally, we do not find Appellant’s arguments regarding 35 U.S.C.
§ 101 on pages 15—19 of the Appeal Brief persuasive of error. These
arguments are not germane to the obviousness rejection before us.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1 under § 103(a). Claims 2—20 fall with claim 1. See
37 C.F.R. § 41.37(c)(l)(iv).
DECISION
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 103(a) as
unpatentable over Usab and Maistre 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
8