Ex Parte DUDDING

Patent Trials and Appeals Board

Apr 25, 2019

14300210 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/300,210 06/09/2014 CARLTON DUDDING
99344 7590 04/29/2019
Patent Law of Virginia, PLLC
PO Box 9319
Richmond, VA 23227
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.
AWT3C3 1030
EXAMINER
MAYO-PINNOCK, TARA LEIGH
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
04/29/2019 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):
brian@patentlawva.com
brianjteague@gmail.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARL TON DUDDING
Appeal2018-006283
Application 14/300,210
Technology Center 3600
Before DANIEL S. SONG, WILLIAM A. CAPP, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-3, 6-8, and 11 under 35 U.S.C. § 103(a) as
unpatentable over Cunningham (US 4,268,993, iss. May 26, 1981) and
Johnson (US 4,526,615, iss. July 2, 1985); claims 4 and 5 over Cunningham,
Johnson, and Marienfeld (US 5,056,960, iss. Oct. 15, 1991); and claims 9
and 10 over Cunningham, Johnson, and Nandlal (US 4,521,131, iss. June 4,
1985). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 AWT IP, LLC is the Applicant and real party in interest. Appeal Br. 2.
Appeal 2018-006283
Application 14/300,210
THE INVENTION
Appellant's invention relates to containment berms. Spec. ,r 2.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A berm comprising:
a reinforced portion having opposing inner and outer
surfaces and comprising structural fill material and a plurality
of reinforcing members disposed therein;
backfill material having an inner surface adjacent the inner
surface of the reinforced portion, the backfill material being at
least partially encapsulated by a fluid-impermeable membrane,
the backfill material comprising contaminated fill material;
a drainage system in the backfill material within the
impermeable membrane; and
a drainage layer adjacent an inner surface of the
impermeable membrane and contacting the drainage system;
wherein the contaminated fill material comprises one or
more of fossil fuel combustion product, fly ash, bottom ash,
boiler slag, flue gas desulphurization material, nonhazardous
contaminated soil, contaminated crushed glass, contaminated
crushed concrete, contaminated crushed asphalt, sand blast grit,
foundry sand, properly dewatered dredge spoils, or
combinations thereof; and wherein the contaminated fill
material is contaminated with one or more of a metal, an acid, a
base, a volatile organic compound, a semi-volatile organic
compound, a petroleum product, selenium, mercury, lead,
boron, cadmium, thallium, a polycyclic aromatic hydrocarbons
compound, or combinations thereof.
Claim 1
OPINION
Unpatentability of Claims 1-3, 6-8, and 11
over Cunningham and Johnson
The Examiner finds that Cunningham discloses the invention
substantially as claimed except for using contaminated fill, for which the
Examiner relies on Johnson. Final Action 2--4.
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Application 14/300,210
Appellant argues that Cunningham does not disclose structural fill
material as claimed. Appeal Br. 6. Appellant argues that the Examiner
identifies Cunningham element 210 as corresponding to Appellant's claimed
structural fill material. Id. Appellant contends that Cunningham
element 210 is top soil, which Appellant differentiates from structural fill.
Id. According to Appellant, a "person of ordinary skill in the art readily
recognizes that top soil and structural fill material are very different, and are
used for very different purposes." Id.
In response, the Examiner observes that Cunningham's top soil is
relatively homogeneous and relatively free of debris, foreign objects, excess
silt, roots, and organics. Ans. 4. According to the Examiner, this
description conforms to Appellant's description of structural fill material.
Id. at 3--4 (citing Spec. ,r 36). Furthermore, the Examiner notes that berms
and embankments are known to comprise reinforced portions including top
soil and reinforcing members. Id. at 4 (citing Ferraiolo,2 ,r 16; Figs. 1, 4).
Next, Appellant argues that the grass roots of Cunningham fail to
correspond to Appellant's claimed "reinforcing members." Appeal Br. 7.
Appellant respectfully asserts that grass roots are not the same
as the claimed reinforcing members, and a person of ordinary
skill in the art would readily recognize that these are very
different. While grass may be used to help prevent erosion of
the top surface of a structure, grass does not provide the
industry-recognized structural strength and stability of the
claimed reinforcing members.
Id. In support of this position, Appellant relies, in part, on declaration
testimony from Scott Sheridan, P .E. According to Mr. Sheridan:
2 US 2005/0271478 Al (pub. Dec. 8, 2005), to Ferraiolo, entitled Element
For Forming Ground Covering, Restraining and Reinforcing Structures.
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Application 14/300,210
a. Grass roots are not the same as the claimed reinforcing
members, and a person of ordinary skill in the art of MSE
berms would readily recognize that these are very different.
b. While grass may be used to help prevent erosion of the top
surface of a structure, grass does not provide the structural
strength and stability of the claimed reinforcing members.
Sheridan Declaration ,r,r 8a and 8b. 3
In response, the Examiner observes that Appellant fails to recite
features or attributes of reinforcing members that limit their form, strength
or ability. Ans. 5. According to the Examiner:
[ A ]bsent any additional limitations, the examiner finds a person
having ordinary skill in the art ... would not have been able to
ascertain a difference between the degree of reinforcement
provided by the prior art grass roots and the degree of
reinforcement provided by the broadly claimed "plurality of
reinforcing members."
Id. In addition, the Examiner contends that vegetation such as grass roots is
not only useful to help prevent erosion, but is commonly used to stabilize
soil volumes. Id. (citing Ferraiolo ,r 2, and Hilfiker,4 col. 5, 11. 11-15).
Whether grass roots qualify as reinforcing members depends, in the
first instance, on the meaning and scope of the term "reinforcing member."
During examination of a patent application, pending claims are given their
broadest reasonable construction consistent with the specification. In re Am.
3 The Appeal Brief does not include an Evidence Appendix. Nevertheless,
we have located a certain Declaration of Scott Sheridan, P .E. ("Sheridan
Declaration"), sworn to on February 17, 2017, and filed in the prosecution
history on February 19, 2017. We have read and considered the Sheridan
Declaration in reaching our Decision.
4 US 4,117,686 (iss. Oct. 3, 197 8), to Hilfiker, entitled Fabric Structures for
Earth Retaining Walls.
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Appeal 2018-006283
Application 14/300,210
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the
broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Trans logic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Construing claims broadly
during prosecution is not unfair to the applicant, because the applicant has
the opportunity to amend the claims to obtain more precise claim coverage.
Sci. Tech Ctr., 367 F.3d at 1364. During patent prosecution when claims
can be amended, ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed. See In re Zietz, 893 F.2d 319,
321 (Fed. Cir. 1989).
Claim construction is generally a matter of law, but may have
underlying factual determinations. Summit 6, LLC v. Samsung Elecs. Co.,
Ltd. 802 F.3d 1283, 1290 (Fed. Cir. 2015). The process of construing a
claim term begins with the words of the claims. Phillips v. A WH Corp., 415
F.3d 1303, 1312-14 (Fed. Cir. 2005) (en bane). However, the claims "must
be read in view of the specification, of which they are a part." Id. at 1315.
In the instant case, the term "reinforcing members" appears repeatedly
throughout the Specification. Spec. 1, 2, 6, 11, 13, 18. With the sole
exception of page 18, the Specification provides no detailed description of
what a reinforcing member is, what it is made of, or what strength and other
physical attributes are possessed. No operational definition of the term is
provided. There is no indication that it is a term of art in the industry that
has an established meaning. There is no cross reference in the Specification
to a scientific or technical dictionary that restricts its meaning in the field
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Application 14/300,210
related to the invention. There is, at best, a single mention of a layer of
"geogrid" as an example of a reinforcing member. Spec. 18.
Appellant relies on extrinsic evidence in the form of the Sheridan
Declaration to bolster Appellant's claim construction arguments. However,
we are mindful that expert testimony can suffer from bias that is not present
in intrinsic evidence. Phillips, 415 F.3d at 1318. Moreover, extrinsic
evidence, like expert testimony, is of less significance than the intrinsic
record. Id. at 1317. Conclusory, unsupported assertions by experts as to the
definition of a claim term are not useful to a tribunal. Id.
We find Mr. Sheridan's declaration testimony to be entitled to little
weight. Sheridan's testimony is abbreviated and conclusory. He testifies
that a person of ordinary skill in the art would recognize that grass roots are
"very different" from reinforcing members. However, he provides no details
as to the attributes of reinforcing members and provides no analysis as to
how such attributes differentiate them from grass roots. Sheridan
Declaration ,r 8a. He then concludes that, although grass prevents erosion on
the top of a structure, it does not provide structural strength and stability like
the claimed reinforcing members. Id. ,r 8b. Sheridan provides no details or
analysis as to what constitutes the "strength and stability" of Appellant's
reinforcing members, nor does he compare such strength and stability to that
of grass roots. Id.
Ferraiolo states that the growth of vegetation helps to stabilize the
slope of embankments. Ferraiolo ,r 2. Similarly, Hilfiker teaches that
vegetation roots add strength to a retaining wall structure. Hilfiker, col. 5,
11. 11-15.
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We find the Examiner's position to be more persuasive than
Appellant's. The Examiner's position is supported by Hilfiker and
Ferraiolo, sound reasoning, and by the absence of disclosure in the
Specification that limits the meaning of the term. Given the paucity of
detailed disclosure in the Specification as to the amount of strength and
stability that is provided by the reinforcing members, the Examiner's
determination that the meaning of reinforcing member is broad enough to
encompass grass roots is reasonable in light of the record before us.
Finally, Appellant argues against the Examiner's proposed
combination. Appeal Br. 8-9. Appellant argues that it would not have been
obvious to replace Cunningham's granular fill 208 with contaminated fill
material. Id. at 8. Appellant argues that Cunningham discloses perimeter
trenching and drainage to allow excess water to flow off the field. Id.
According to Appellant,
A person of ordinary skill in the art would not be motivated to
replace Cunningham's granular fill 208 with contaminated fill,
as suggested by the Examiner. It would not be desirable to have
such repeated and, at times, significant fluid flow through
contaminated fill, as this would result in a large amount of
contaminated drainage that would need to be collected, treated,
and properly disposed of.
Id. at 8-9.
In response, the Examiner states that whether or not the modification
would have resulted in further collection and treatment of fluids is
immaterial to the patentability of claim 1. Ans. 6.
Cunningham discloses a grass sports surface. Cunningham, Abstract.
Cunningham isolates the sports surface with membrane 5 8 that establishes
an enclosed dish-like area for irrigation and grass support purposes. Id.,
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col. 7, 11. 38-56. The structure that the Examiner finds corresponds to the
claimed berm is perimeter berm 60 that is disposed outside of the dish-like
area formed by membrane 58. Id. col. 7, 11. 58---60, col. 10, 11. 18-33. Select
granular fill 208 and top soil 210 are bounded on one side by membrane 58.
Id. Fig. 10. Perimeter drainage system 204 is disposed at the bottom of
granular fill 208 and immediately above sand 206. Id.
Johnson is directed to a process for leaching metal values from ore.
Johnson, Abstract. Johnson constructs a plurality of cellular heaps formed
by loading ore onto an impermeable pad. Id. Johnson features a triangular
earthen dam 84 ( or berm) surrounding the heaps that serves to contain the
ore in the adjacent cell. Id. col. 4, 11. 54--55; col. 12, 11. 4--11. Johnson
discloses a drain line 62 for removing solution from collection pipe 58 and
permeable layer 50. Id. col. 8, 11. 3-13. Thus, both Cunningham and
Johnson disclose the use of drain lines to remove fluid from a berm.
Appellant's arguments against the combinability of Cunningham and
Johnson are not persuasive. There is no evidence in the record to support
Appellant's unsubstantiated assertion that Cunningham would experience
difficulty in the handling and processing the amount of drainage if
contaminated fill were substituted for granular fill 208. In re Cole, 326
F .2d 7 69, 773 ( CCP A 1964) ( explaining that statements by counsel in a brief
cannot take the place of evidence). Appellant explicitly discloses and claims
a drainage system in contaminated backfill material. Claims App. claim 1.
Appellant presents neither evidence nor persuasive technical reasoning that
draining the contaminated backfill material of the claimed invention requires
more skill than that which resides in a person of ordinary skill in the art
armed with the combined teachings of Cunningham and Johnson.
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In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner's unpatentability rejection of claim 1.
Claims 2, 3, 6-8, and 11
Appellant does not argue for the separate patentability of these claims
apart from arguments presented with respect to claim 1, which we have
previously considered. We sustain the Examiner's rejection of claims 2, 3,
6-8, and 11. See 37 C.F.R. § 4I.37(c)(l)(iv) (failure to separately argue
claims).
Unpatentability of Claims 4 and 5
over Cunningham, Johnson, and Marienfeld
Claims 4 and 5 depend, directly or indirectly, from claim 1. Claims
App. Appellant does not argue for their separate patentability, such that we
sustain the Examiner's rejection of claims 4 and 5 over Cunningham,
Johnson, and Marienfeld. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 9
Unpatentability of Claims 9 and 10
over Cunningham, Johnson, and Nandlal
Claim 9 depends from claim 1 and adds the following two limitations:
wherein the backfill material further comprises opposing
top and bottom surfaces, and upper and lower sloped outer
surfaces; and
wherein the lower sloped outer surface slopes outward and
upward from the bottom surface to the upper sloped outer
surface, wherein the upper sloped outer surface slopes outward
and downward from the top surface to the lower sloped outer
surface.
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Application 14/300,210
The Examiner finds that this configuration is satisfied by Nandlal.
Final Action 6-7. Appellant argues that Nandlal's configuration does not
satisfy the claim language because it is adjacent to a reinforced portion and
the claimed slope configuration is only depicted on the left side of the
drawing. Appeal Br. 10.
In response, the Examiner points out the N andlal satisfies the claim
language and that it does not matter whether the configuration is depicted on
the left or the right side of the drawing. Ans. 7.
The Examiner's position is the better one. Appellant's arguments are
not commensurate with the scope of the claim. There is no requirement in
the claim regarding whether the backfill material is adjacent a reinforced
portion or that the slope configuration must be the same around the entire
perimeter of the berm.
We sustain the Examiner's rejection of claim 9.
Claim 10
Claim 10 depends from claim 1 and is substantially similar in scope to
claim 9. Claims App. Appellant raises the same argument against the
claim 10 rejection that we considered and found unpersuasive with respect to
claim 9. Appeal Br. 11. Such argument is equally unpersuasive here.
DECISION
The decision of the Examiner to reject claims 1-11 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)(l )(iv).
AFFIRMED
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