Ex Parte Burkhart et al

Patent Trials and Appeals Board

Feb 29, 2016

12395182 - (D) (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/395, 182 0212712009 Kurt A. Burkhart SR.
24126 7590 03/02/2016
ST. ONGE STEW ARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
04995-P0003A 3873
EXAMINER
MAYO-PINNOCK, TARA LEIGH
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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.
Appeal2013-007366
Application 12/395, 182
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
Kurt A. Burkhart Sr. and Ronald E. Burkhart Sr. (Appellants) seek our
review under 35 U.S.C. § 134 from the Examiner's decision rejecting claims
1, 4--7, 10-14, 16, 20-34, and 57---61. 1, 2 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART
1 Claims 35-56 are withdrawn. Appeal Br. 2. Claims 2, 3, 8, 9, 15, and 17-
19 are canceled. Appeal Br. 14--16.
2 An oral hearing was conducted on February 23, 2016.
Appeal2013-007366
Application 12/395, 182
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to an apparatus for fluid retention or
detention. Spec. 1. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A fluid retention or detention system comprising:
a plurality of modules, each module having at least one
vertically disposed side portion supporting a horizontally
disposed roof, each said side portion having a bottom edge;
at least one side portion of each of said plurality of modules
defining a fluid passage extending therethrough, said fluid
passage extending upward from the bottom edge of said side
portion;
at least some of said plurality of modules are boundary
modules that form a boundary of the assembly;
said plurality of modules being arranged in an assembly
having a plurality of rows and a plurality of columns;
each of the plurality of modules in the assembly being in
fluid communication, either directly or indirectly, with each of
the other modules;
each of said plurality of rows and plurality of columns
containing at least one flow obstructer positioned within a
boundary of the assembly such that fluid flow through each of
said rows and columns is circuitous;
said flow obstructer being a wall having no openings.
Appeal Br. 14.
REFERENCES RELIED ON BY THE EXAMINER
Burkhart US 6,991,402 B2 Jan. 31, 2006
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Application 12/395, 182
THE REJECTIONS ON APPEAL
(I) Claims 21, 22, 60, and 61 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
(II) Claims 1, 4--7, 10-14, 16, 20, 23-34, and 57---60 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Burkhart.
Claim 1
ANALYSIS
Rejection (I)
The Examiner's position is that claims 21, 22, 60, and 61 are
indefinite based on a lack of antecedent basis for certain recited features.
Non-Final Act. 3--4. 3 Appellants do not make arguments addressing this
rejection. Accordingly, we summarily affirm the Examiner's rejection of
claims 21, 22, 60, and 61 as indefinite.
Rejection (II)
The Examiner finds that Burkhart teaches many of the features recited
in claim 1, but fails to disclose "each of the plurality of rows and plurality of
columns ... containing at least one flow obstructer positioned within a
boundary of the assembly." Non-Final Act. 4, 5, and 10. Nonetheless, the
Examiner determines that structural braces 18, disposed in module 2 of
Burkhart, qualify as flow obstructers, and it would have been obvious "to
replace each of modules 15C, 15E and 15F of Figure IA with a module (2)
of Figure 6" "to reinforce the outer perimeter of the system and increase the
later load capacity of the modules." Non-Final Act. 10. In the Examiner's
proposed modification, "each of the plurality of rows and columns [recited
3 Mailed on December 12, 2012.
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Application 12/395, 182
in independent claim 1] and each of the plurality of rows and columns of the
plurality of interior modules [recited in independent claim 14] would contain
at least one flow obstructer (18) positioned within a boundary of the
assembly." Non-Final Act. 10.
Appellants argue that Burkhart repeatedly states the intention to
provide unrestricted or relatively unrestricted flow and thus teaches away
from adding flow obstructers to provide circuitous flow. Appeal Br. 5-7,
12; see also Reply Br. 2--4. According to Appellants, the Examiner's
proposed modification "would cut against the purpose of Burkhart and
would render Burkhart [ ] unsatisfactory for its intended purpose [ ] (i.e.[,]
the modification would prevent relatively unconstrained storm water flow
between the modules in both the longitudinal and lateral directions of the
assembly)." Reply Br. 4--5.
We do not agree with Appellants' arguments on this point. A given
course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate motivation to combine. See Winner Int 'l
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) ("The fact
that the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another."). Where the prior art contains
"apparently conflicting" teachings (i.e., where some references teach the
combination and others teach away from it) each reference must be
considered "for its power to suggest solutions to an artisan of ordinary skill
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Application 12/395, 182
.... consider[ing] the degree to which one reference might accurately
discredit another."4 In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991)
(citation omitted).
Although Burkhart discusses providing unconstrained flow (see, e.g.,
col. 1, 11. 3 8--40 stating "it is desirous to provide a system which can permit
relatively unconstrained flow throughout the system"), Burkhart also
explains that lateral loads may exceed the structural capacity of side modules
2. See Burkhart, col. 10, 11. 61---64 stating "[w]hen 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." Thus, Burkhart explicitly teaches the
benefit of braces 18. Weighing the teaching of the preference for "relatively
unconstrained flow" against the benefit of increased structural capacity
provided by braces 18 in side modules 2, we are not persuaded by
Appellants' argument that, based on the flow preferences described,
Burkhart teaches away from the Examiner's proposed modification or that
this modification would render Burkhart unsuitable for its intended use.
Appellants also argue that Burkhart teaches away from providing side
modules on the comers and ends of the assembly as proposed by the
Examiner based on the different sizes of the various modules involved.
Appeal Br. 8. Specifically, Appellants state, "[t]here is absolutely no
teaching in Burkhart []to replace an end module 15E with a side module 2.
Indeed, the fact that end modules 15E are half the length of a side module 2
4 Additionally, it is not necessary for the prior art to serve the same purpose
as that disclosed in Appellants' Specification in order to support the
conclusion that the claimed subject matter would have been obvious. See In
re Linter, 458F.2d1013, 1016 (CCPA 1972)
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Application 12/395, 182
clearly teaches away from replacing an end module 15E with a side module
2." Appeal Br. 8.
In response, the Examiner finds that the dimensions of the comer
modules vary depending on the requirements of the plan site, and therefore,
comer and end modules sizes can be replaced with modules 2 as proposed.
Ans. 13-14.
Burkhart states, "[i]n one aspect of the invention, these modules
provide great versatility in the configuration of a modular assembly. The
modules may be assembled in any customized orientation to suit any plan
area or footprint as desired by the particular application involved and its side
boundaries." Col. 4, 11. 13-18. Thus, Burkhart teaches that there is
versatility in the modules' configuration. Burkhart further states, "[ t ]he
dimensions of the comer modules may be similar to those described for
FIGS. 2 and 3 although the actual dimensions will vary [based] on the
requirements of the plan site. For example, in the assembly of FIG. 1, the
front comer module 15C has dimension similar to module 1 or module 2."
Col. 8, 11. 7-12. Thus, Burkhart explicitly teaches one of the comer modules
having a dimension similar to side module 2. Burkhart further states, "[t]he
rear comer modules 15A, 15B have a shorter length due to the preferred plan
area of the parking lot under which the assembly is placed." Col. 8, 11. 12-
14. Accordingly, Burkhart teaches that two other comer modules have
dimensions that differ (i.e., are shorter) based on where the assembly is
installed. In other words, Burkhart teaches adaptability in its module sizes,
shapes, and configurations. Accordingly, we are unpersuaded by
Appellants' contention that, based on the disclosed sizes and shapes of
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Application 12/395, 182
various modules, Burkhart teaches away from the Examiner's proposed
combination.
Appellants further argue that, "even if the person of ordinary skill in
the art were so motivated, replacing modules 15C, 15E and 15F in the
system shown in Figure 1 A with the side module 2 would not produce the
assembly of modules claimed in [claim 1 ]." Appeal Br. 8. In this regard,
Appellants state, "even if any of modules 15C, 15E or 15F were replaced
with a side module (2), such side modules would also 'define an outer
boundary' of the assembly. Accordingly, the modified system of Figure IA
would have side modules 2 with a 'flow obstructer' 18 that are positioned at
and actually define an outer boundary of the assembly." Appeal Br. 9.
Appellants contend, "[ s ]uch a modified system would not constitute a
system in which ... each of the plurality of rows and plurality of columns
contains at least one flow obstructer positioned within a boundary of the
assembly such that fluid flow through each of the rows and columns is
circuitous, as required by claim 1." Appeal Br. 9.
We do not agree with Appellants' arguments on this point. Claim 1
recites, in part, "each of said plurality of rows and plurality of columns
containing at least one flow obstructer positioned within a boundary of the
assembly." Thus, the flow obstructer must be within the boundary of the
assembly, not still further within the assembly so as to be separate from the
modules that form the boundary. Appellants do not provide any persuasive
explanation as to why a flow obstructer in any module that is part of the
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Application I2/395, I 82
assembly is not also within the boundary of the assembly, even if such
module is also a boundary module that forms a boundary of the assembly. 5
Referring to Figure IA in Burkhart, Appellants also argue that the
orientation of brace I 8 would be parallel to the direction of fluid flow.
Appellants assert that brace I 8, if implemented in modules on the comers in
Figure IA of Burkhart, would be out of position or in the wrong orientation
to provide circuitous flow as required by claim 1. See Appeal Br. 9--I 0.
In response, the Examiner states, "Appellant improperly assumes the
direction of fluid flow." Ans. I4. The Examiner also notes that Burkhart
discloses customizability in the location of the flow inlet ports that provide
inflow to the assembly. Ans. I4 (citing Burkhart, col. 5, 1. 54---col. 6, 1. I4).
We do not agree with Appellants' arguments on this point. As noted
above, Burkhart teaches versatility in the arrangement of modules based on
the location of the assembly. Further, we agree with the Examiner that
Burkhart also teaches versatility in the location of flow inlet ports as
discussed in columns 5 and 6. Moreover, we note that the Examiner
specifically refers to Figures I, 3, and 6 of Burkhart in the rejection of claim
1. See Non-final Act. 4; see also Burkhart, Fig. 9 (depicting "an alternate
embodiment of an underground installation assembly demonstrating the
assembly's versatility to fit constraints of a site and underground
obstacles."). Col. 3, 11. I9-22. Accordingly, given the versatility in
arrangement of the modules and flow inlet ports in Burkhart, we agree with
the Examiner that the proposed modification to Burkhart would result in
each of said plurality of rows and plurality of columns containing at least
5 For example, Minnesota, New York, and California are border states, but
they are also within the border of the United States.
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Appeal2013-007366
Application I2/395, I 82
one flow obstructer positioned within a boundary of the assembly such that
fluid flow through each of said rows and columns is circuitous.
We also note that Appellants do not provide any persuasive argument
or evidence that a flow obstructer as recited in claim I must always be
disposed with its longest dimension extending across a direction of flow. In
other words, Appellants do not adequately explain why a flow obstructer
that may be aligned with a direction of flow (disposed such that its longest
dimension is parallel to a direction of flow) in some instances, but is
disposed directly across the direction of flow in other instances, does not
qualify as a flow obstructer as required by claim I.
Appellants further assert, in reference to Figure IA of Burkhart, that
"the row passing through module I between the two I 5E modules would not
contain a flow obstructer that would cause fluid flow through that row [that]
would be circuitous." Appeal Br. 9.
We do not agree with Appellants' argument on this point. First, we
note that the Examiner also refers to Figure I of Burkhart, not just Figure
IA. See Non-final Act. 4; see also Ans. 5 and I3. Thus, Appellants'
argument does not address the full scope of the Examiner's rejection of
claim I. Second, Appellants do not provide any persuasive explanation or
evidence that the term "row" as used by Appellants' Specification and
recited in claim I allows for there to be a "row passing through module I
between the two I 5E modules" as Appellants allege. Third, assuming, for
the purposes of argument, that a row does pass through module I between
the two I 5E modules, Appellants do not explain why the comer modules
(which include brace I 8 in the Examiner's proposed modification) are not
part of this row.
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Application 12/395, 182
Claim 14
Independent claim 14 recites, in part, "each of said rows and columns
of said plurality of interior modules containing at least one flow obstructer
such that fluid flow through each of said rows and columns of said plurality
of interior modules is circuitous." Appeal Br. 16. Thus, in contrast to claim
1, claim 14 specifies that it is each of the rows and columns of the plurality
of interior modules that contains at least one flow obstructer.
Appellants contend that the Examiner focuses on adding module 2
(containing brace 18) to the perimeter of the assembly disclosed in Burkhart.
Appeal Br. 8-9. Therefore, according to Appellants, the Examiner's
proposed modification does not place the flow obstructer in any of the rows
or columns of interior modules. Appeal Br. 8-9.
The Examiner's position is that the rows and columns of the plurality
of interior modules recited in claim 1 "actually refers to the rows and
columns of the assembly which are inclusive of the peripherally located
exterior modules; i.e., the rows and columns of the interior modules are
shared by, or the same as, the rows and columns of the exterior modules."
Ans. 15.
We agree with Appellants on this point. Placement of module 2 on
the perimeter of the assembly does not provide that each of the rows and
columns of the plurality of interior modules contains at least one flow
obstructer. Rather, these rows and columns do not include perimeter
modules. Accordingly, we do not sustain the Examiner's rejection of claim
14.
DECISION
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Application 12/395, 182
(I) We affirm the Examiner's rejection of claims 21, 22, 60, and 61 as
indefinite.
(II) We affirm the Examiner's rejection of claims 1, 4--7, 10-13, 20,
57-59, and 60 as unpatentable over Burkhart. We reverse the Examiner's
rejection of claims 14, 16, 23-34 as unpatentable over Burkhart.
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-IN-PART
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