Ex Parte BrownDownload PDFPatent Trial and Appeal BoardDec 30, 201613757272 (P.T.A.B. Dec. 30, 2016) 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. 13/757,272 02/01/2013 Franklin Brown 2170177-000016 6461 49840 7590 01/04/2017 Atlanta Raker Dnnelsinn EXAMINER Intellectual Property Department Monarch Plaza, Suite 1600 CHU, KATHERINE J 3414 Peachtree Rd. ATLANTA, GA 30326 ART UNIT PAPER NUMBER 3671 NOTIFICATION DATE DELIVERY MODE 01/04/2017 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): atlip@bakerdonelson.com tdavis@bdbc.com ipdocketing @bakerdonelson. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANKLIN BROWN Appeal 2015-001254 Application 13/757,272 Technology Center 3600 Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and GORDON D. KINDER, Administrative Patent Judges. KINDER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1— 10. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2015-001254 Application 13/757,272 CLAIMED SUBJECT MATTER The claims are directed to an earth retaining wall. Claims 1, 4, and 7 are independent. Claim 1, reproduced below, illustrates the claimed subject matter: 1. An earth retaining wall comprising at least two piles, and at least one panel having to laterally opposed end hinges, each said end hinge having a generally cylindrical barrel configured to receive one said pile for pivotal movement of said panel relative to said pile, said piles and said panel being of a size, construction, and strength to retain dirt backfilled against the entirety of said panel without collapsing said earth retaining wall. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Adelman US 3,537,687 Nov. 3, 1970 REJECTIONS The Examiner made the following rejections: Claims 1, 4, 7, and 8 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Adelman. Claims 2, 3, 5, 6, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Adelman. OPINION Claims 1, 4, and 7 are independent. The Examiner finds that Adelman discloses every element of claim 1. Final Act. 2. The Examiner specifically found Adelman discloses that the panels are block units of masonry (column 1, line 30) and the piles are steel rods (column 6, line 2 Appeal 2015-001254 Application 13/757,272 52), and that the steel rods may be driven into the ground (column 6, lines 53 — 54). As such, Adelman’s wall comprises piles and at least one panel being of a size, construction, and strength to retain dirt backfilled against the entirety of said panel without collapsing. Id. Appellant makes several arguments in favor of claim 1, all centered on the fact that Adelman discloses a system for building a wall or fence and not a retaining wall. Appeal Br. 4—7. Appellant first argues that claim 1 calls for a “retaining wall [that] is recited to retain dirt backfilled against the entirety of the panel.” Appeal Br. 4. In contrast, according to Appellant, the Adelman patent discloses a fence which “would simply collapse under the stress of dirt backfill.” Id. at 5. The Examiner responds that the height of the wall and backfill is not claimed and that “[i]f, for example, a retaining wall was [sic] to be installed adjacent to a driveway where the height of the wall is only 1 foot, it is easy to see that Adelman’s wall would be capable of retaining that amount of dirt backfilled against the entirety of the wall without collapsing.” Ans. 2—3. We agree with the Examiner that because no particular height of wall and backfill is claimed, Adelman’s wall is capable of retaining backfill against the entirety of its panel without collapsing the wall. Appellant’s next argument is that the Adelman patent should be considered non-analogous art. “[T]he question whether a reference is analogous art is irrelevant to whether that reference anticipates.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Because the rejection of claim 1 was under 35 U.S.C. § 102, Appellant’s argument is not persuasive. 3 Appeal 2015-001254 Application 13/757,272 Appellant’s third argument is that Adelman does not disclose “piles and at least one panel being of a size, construction, and strength to retain dirt backfilled against the entirety of said panel without collapsing.” Appeal Br. 6—7. As the Examiner found, “[b]oth appellants [sic] invention as claimed and Adelman are capable of retaining dirt backfilled against the panel, the size [of the panel] being totally dependent [on] the particular job.” Ans. 3. “Given the structure disclosed and the fact that there is no minimum height for retaining wall, the structure disclosed by Adelman is capable of performing the function of a retaining wall.” Id. at 4. In other words, there is no particular size requirement found in claim 1, and we agree with the Examiner that Adelman’s panels could be made of a size that would “retain dirt backfilled against the entirety of the panel without collapsing said earth retaining wall” as required by claim 1. As noted above, the use disclosed in the prior art has no bearing in an anticipation rejection so long as the device is capable of performing the claimed functions, and so the fact that Adelman does not disclose backfilled dirt against the entirety of one of the panels does not persuade us of examiner error under the controlling decisions. In view of the foregoing, we are not persuaded that the Examiner erred in rejecting claim 1. Appellant makes the same arguments in connection with independent claims 4 and 7, and for the reasons stated above, we find no error in the Examiner’s rejection of these claims. Appellant makes no separate argument for the dependent claims, and therefore, we affirm the rejections of claims 2, 3, 5, 6, and 8—10. 4 Appeal 2015-001254 Application 13/757,272 DECISION For the above reasons, the Examiner’s rejection of claims 1—10 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 5 Copy with citationCopy as parenthetical citation