Ex Parte Louie

Patent Trial and Appeal Board

Jun 15, 2016

13414682 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/414,682
7590
James M Smedley
50 Christy Drive
Warren, NJ 07059
FILING DATE FIRST NAMED INVENTOR
03/07/2012 Rick Steven Louie
06/15/2016
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.
13068-4 1015
EXAMINER
LUTZ, JESSICA H
ART UNIT PAPER NUMBER
3671
MAILDATE DELIVERY MODE
06/15/2016 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 RICK STEVEN LOUIE
Appeal2014-004380
Application 13/414,682
Technology Center 3600
Before MICHAEL L. HOELTER, MARK A. GEIER, 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,
3, and 7-16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to retaining wall blocks with a built-in
drainage and filtration system. Claims 1 and 10 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A two-part retaining wall block with built-in drainage and
filtration system, said retaining wall block comprising:
Appeal2014-004380
Application 13/414,682
a heavy member, wherein said heavy member is comprised of
one or more high density materials selected from a group ofhigh-
density materials comprising, sand, gravel, cement, and stone;
and
a light member, slidably connectable to said heavy member and
comprising a built-in network of interconnected horizontal and
vertical drainage channels,
wherein said built-in network of interconnected horizontal and
vertical drainage channels are configured to facilitate drainage of
water,
wherein said light member comprises a light-weight, water-
resistant material,
whereby the connection of said light member with said heavy
member is accomplished by either sliding said light member over
a portion of said heavy member or inserting a portion of said
heavy member into said light member, so as to form said two-
part retaining wall block.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Torch
Boys
US 5,788,424 Aug. 4, 1998
US 2006/0188344 Al Aug. 24, 2006
REJECTIONS
The Examiner makes the following rejections:
Claims 1, 3, and 7-16 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
Claims 1, 3, and 7-16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Boys and Torch.
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OPINION
Rejection 1- Claimed Invention Not Enabled
Appellant argues the Examiner wrongly rejected all the claims
pending on appeal for failure to comply with 35 U.S.C. § 112, first
paragraph. Final Act. 2-3. Appellant argues all the claims as a group, and
we select claim 1 as representative. Appeal Br. 5-6. Claims 3 and 7-16
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1 includes the limitation "whereby the connection of said light
member with said heavy member is accomplished by either sliding said light
member over a portion of said heavy member or inserting a portion of said
heavy member into said light member, so as to form said two-part retaining
wall block." Appeal Br., Claims App. 1 For the reasons that follow, we
agree with the Examiner and affirm the rejection of claim 1 because the
limitation quoted above is not enabled by the Specification.
The Examiner cites the relevant portion of the Specification (i-f 66) and
Figures 5A-5E, and concludes that these indicate that the heavy member
abuts the light member and fail to disclose any connection therebetween
accomplished by sliding or insertion as recited. Final Act. 3. "Nowhere in
the drawings does there indicate a sliding or interlocking connection
between the heavy and light member." Id. The Appellant cites the same
text (while misidentifying the paragraph number), Figure 5, and also Figure
11. Appeal Br. 5---6. Appellant urges that these passages and Figures enable
the claim language quoted above.
1 The Claims Appendix is found on five unnumbered pages following page
11 of the Appeal Brief.
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Application 13/414,682
An analysis of whether the claims under appeal are supported by an
enabling disclosure requires a determination of whether that disclosure
contained sufficient information regarding the subject matter of the appealed
claims as to enable one skilled in the pertinent art to make and use the
claimed invention. The test for enablement is whether one skilled in the art
could make and use the claimed invention from the disclosure coupled with
information known in the art without undue experimentation. See United
States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988); In re
Stephens, 529 F.2d 1343, 1345 (CCPA 1976).
The claim describes two ways of forming a connection between the
heavy member and the light member: ( 1) sliding the light member over a
portion of the heavy member and (2) inserting a portion of the heavy
member into the light member. The word "insert" does not appear in the
Specification, and there is no description of inserting a portion of the heavy
member into the light member. The only alleged support in the
Specification for a connection accomplished by sliding is Paragraph 66 (and
relied upon by Appellant as indicated supra):
FIG SA illustrates a front elevation view of a retaining
wall block 10 with built in drainage and filtration capability
according to an embodiment of the present device. The heavy
member 60 which can be 8" high and 18" wide, is seen
connected to a light member 62 which can be smaller in
dimension than the heavy member. The bottom surface of the
heavy member can stand about 1 Yz" above the bottom surface
of the light member and towards its end slides into the light
member thus making a small step-like structure. 2
2 Appellant identifies this as Paragraph 68, but this appears to be a
typographical error. Appeal Br. 5. In the Specification the phrases quoted
by Appellant appear in paragraphs 65---66.
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Figure SA shows a single block formed from one light member 62 and
one heavy member 60 and covered in part by filter member 66. Paragraph
66 does not support a claim to sliding a light member over a portion of a
heavy member for two reasons. First, we understand the word "slides" as
used in Appellant's Specification to be a figurative description of the
inclined bottom surface of heavy member 60 leading to light member 62
(there is no indication of any movement of the heavy member with respect to
the light member). Otherwise, the final clause, "thus making a small step-
like structure," lacks meaning. Second, none of Figures 5-5E shows a light
member over a portion of the heavy member. Instead, all of the Figures
show a light member which abuts a heavy member. In addition, as noted by
the Examiner in his Answer, the description of Figures 5 and 5A-5E makes
clear that these are all views of the retaining wall block; and if there were a
connection accomplished between the light and heavy members by sliding,
there would be some sort of jagged line, such as might show a dovetail joint,
but any such line is completely absent. See Ans. 2.
Appellant cites many places in the Specification where the heavy
member is described as being "connected to" a light member. These
portions do nothing to show error, since the method of connection is never
described.
Appellant also argues that the Figures, especially Figures 5 and 11,
show a stepped portion of the heavy member inside the light member. The
Specification in several places describes the light member as covered by
fabric, i.e. "filter member 66," but never describes the fabric as being part of
the light member. Accordingly the fabric is not relevant to how the
connection between the light and heavy members is effectuated. Appellant
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does not point out any part of Figure 11 as showing the heavy member
inside the light member, and Figure 11, like Figure 5, shows the two
members abutting but not overlapping or being one inside the other.
Appellant, in its Reply Brief, argues that "tapers into" and "slides
into," as used in the Specification, describe the position of the light and
heavy members. Reply Br. 2. We read the Specification differently. The
terms "taper into" and "slides into" are used in the Specification to describe
the change in cross section of the heavy member so that it matches that of
the smaller, light member. See i-f 65 ("The heavy member being of larger
dimension can taper into the light member on all the sides") and i-f 66
(quoted in full above.) This is shown clearly in Figure 5D inter alia.
Appellant also argues in its Reply Brief that the straight line in Figure
5C marked as separating "STYROFOAM" from "MANUFACTURED
STONE" somehow marks the comer of the heavy member. Reply Br. 2.
This assertion is inconsistent with the drawings which show a flat surface on
the heavy member 62 matching a flat surface on the light-weight member
66. Appellant also contends that if the heavy member and the light member
are merely "abutting," the light member could easily be moved out of
position by the wind or other disturbances. Reply Br. 2. This argument is
not persuasive because it ignores the Specification's repeated statement that
the two are "connected."
In summary, the Specification shows heavy and light members that
are connected to each other along a flat plane marked by the vertical line
between "MANUFACTURED STONE" and "STYROFOAM" in Figure 5
C. The "slide[ s ]" in the Specification, paragraph 66, are the inclined
surfaces (between the letters 0 and N in "STONE" in Figure 5C and the
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Application 13/414,682
parallel surface below) that make a small step-like structure. Appellant has
not apprised us of Examiner error, and accordingly, we affirm the rejection
of claims 1, 3, and 7-16 under 35 U.S.C. § 112, first paragraph.
Rejection 2- Obvious in view of Boys and Torch
Claims 1, 3, and 7-9
Appellant argues claims 1, 3, 7-9, and 16 as a group, and we select
claim 1 as representative of the group. Appeal Br. 8-9. Claims 3, 7-9, and
16 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Boys discloses everything in claim 1 except
for having the heavy member and light member separable and connected
slidably. Final Act. 4. For these last two features the Examiner relies on
Torch. Final Act. 4--5.
Appellant argues that the references are not combinable because the
retaining wall block of Boys is a unitary device, and there would be no
motivation to make it a multipart device. Appeal Br. 7-8. Appellant relies
on In re Dulberg, 289 F.2d 522, 523 (CCPA 1961), arguing there is no
reason to separate the block of Boys into two pieces. Dulberg dealt with
whether it was obvious to make separable two parts which were disclosed as
being press fit together. The court held "if it were considered desirable for
any reason to obtain access to the end of Peterson's holder to which the cap
is applied [by the press fit], it would be obvious to make the cap removable
for that purpose." Id. (emphasis added). Here, the Examiner has provided a
reason, namely to facilitate separate repair or servicing of the retaining wall
units. Indeed, this reason is specifically stated to be an advantage in Torch.
Torch 3:11-18.
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In the Reply Brie±: Appellant argues that hindsight was used to
construct the rejection of this claim. Reply Br. 5. We disagree.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F. 2d 1392, 1395 (CCPA 1971). Here, the Examiner
reasons that making the blocks of Boys as two parts and connecting those
parts as taught by Torch renders repair of the wall easier. Final Act. 4--5,
Ans. 7. Thus, the motivation, as well as all of the required components of
claim 1, are found in the prior art, and no impermissible hindsight has been
used. In light of the reasons provided by the Examiner, we are not
persuaded that the Boys device is not divisible, and it may be properly
combined with Torch.
Next Appellant argues that in Torch the fastener 44 is not "a portion"
of the heavy member, as required by claim 1. Appeal Br. 8. Similarly, the
spacer 40 is not "a portion" of the light member as also required by claim 1.
Id. The question presented is essentially one of claim construction.
[T]he PTO applies to the verbiage of the proposed claims
the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We agree with the
Examiner's finding that the fastener components 40 and 44 may reasonably
be considered to be a portion of the member to which each is attached. Ans.
8.
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Next, Appellant argues that if the fastener components 40 and 44 are
"portions of' the block assembly of Torch, then the geo-textile fabric 66 in
Appellant's disclosure must be part of the light member 62. Reply Br. 5.
This argument is, in effect, a return to Appellant's § 112 arguments, but we
address it here, where Appellant raised it. A reference, such as Torch, "must
be considered not only for what it expressly teaches but for what it fairly
suggests." In re Bell, 991 F.2d 781, 785 (Fed. Cir. 1993) quoting In re
Burkel, 592 F.2d 1175, 1179 (CCPA 1979). We have concluded that the
spacer 40 and fastener 44 of Torch are reasonably considered to be a portion
of the members to which they are attached. However, it does not follow
from this that the "filter member" recited in claim 1 is part of or integral
with the "light-weight member."
The Examiner properly treats the Appellant's claims differently from
the Torch reference. As noted above, the Examiner applies the broadest
reasonable interpretation to the proposed claim language. Appellant's
disclosure consistently treats the fabric 66 as a separate component. See
Spec. i-fi-1 65, 67, 68, and 70. In each instance the fabric is called a "filtration
member." The use of the word "member" when applied to the filtering
fabric is consistent with the language used to identify the "heavy member
60" and the "light-weight member 62" and shows the equal status as
separate components of these three parts. Appellant has not identified any
part of the Specification which would justify reading the textile covering 66
as part of the light-weight member.
Because modifying Boys in view of the teaching of Torch leads to a
retaining wall block in which a portion of the heavy member is inserted into
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the light-weight member, we are not persuaded by Appellant's argument that
claim 1 should be allowed.
In light of the foregoing, we have not been apprised of error, and the
rejection of claims 1, 3, 7-9, and 16 is affirmed.
Claims 10--15
Appellant argues for the patentability of claims 10-15 as a group. We
select independent claim 10 as representative. Appeal Br. 9-10. Claims 11-
15 stand or fall with claim 10. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant focuses on the provision in claim 10:
wherein each retaining block of said second plurality of
retaining blocks is engaged in a manner such that the built-in
drainage and filtration system of said retaining block is engaged
with at least one of the other retaining blocks of said second
plurality of retaining blocks.
In Boys, the bottom row of blocks has channels that laterally connect
adjacent blocks to each other as the Examiner notes, citing Boys, Figure 5a.
Final Act. 7. Boys also shows blocks that permit drainage from rows above
to rows below. See Boys Fig. 2 (showing blocks) and Fig. 6 (showing wall
assembled from blocks). Ans. 9. The Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of the
invention to modify the second row of blocks in Boys to have sideways
drainage in addition to vertical drainage. Ans. 9.
Appellant argues that using the blocks from the bottom row of Boys in
the row above would not work because there would be no holes for
downward drainage from the second row to the first. The argument fails to
address the rejection, since the rejection is based on modifying the second
layer of blocks to have sideways drainage as well as the pre-existing vertical
drainage. Ans. 9 ("[I]t would have been obvious to modify the second layer
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of blocks to have sideways drainage as well as an alternative configuration .
. . "). "[I]t is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review." In re Sneed, 710
F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant's argument on pages 9-
10 fails to address the combination of teachings on which the rejection was
based and so is not persuasive.
Appellant also briefly repeats the argument made in connection with
claim 1 concerning "slidably inserting" etc. (Appeal Br. 10), and this
argument is not persuasive for the same reasons it was not persuasive in
connection with claim 1.
We have not been apprised of error in connection with claim 10, and
the rejection of claims 10-15 is affirmed.
Claim 16
Appellant also argues claim 16 separately. App. Br. 10-11. Claim 16
depends from claim 1 adding, "wherein a section of said heavy member is
shaped to slidably connect with said light member." Appeal Br., Claims
App. Appellant argues that the heavy member in Torch is the slab 4, but it is
not shaped to connect slidably with the light member. We have already
considered this argument in connection with claim 1, and find it as
unpersuasive when raised in support of claim 16.
Appellant also repeats the arguments about a lack of reason to split the
block of Boys into two pieces, an argument we addressed and rejected
above.
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We have not been apprised of error in connection with claim 16, and
the rejection of claim 16 is affirmed,
DECISION
For the above reasons, the Examiner's rejection of claims 1, 3 and 7-
16 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) (2009).
AFFIRMED
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