Ex Parte Morgan et al

Board of Patent Appeals and Interferences

Jul 30, 2007

10003037 (B.P.A.I. Jul. 30, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM D. MORGAN, MICHAEL A. MORGAN,
and MICHAEL S. GALLANT
____________

Appeal 2006-2384
Application 10/003,037
Technology Center 1700
____________

Decided: July 30, 2007
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2006-2384
Application 10/003,037

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, 5, 6, 9-15, 28, 29, and 32.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
I. BACKGROUND
The invention relates to a covering system and methods relating to
venting the covering system. Claims 1,2 28, and 32 are illustrative of the
subject matter on appeal:
1. A covering system comprising:

a first membrane a top surface and an opposing bottom surface;

a first flotation member coupled to the first membrane, wherein the
first flotation member includes a first float and a first float
compartment membrane having an inside surface and an
opposing outside surface, and wherein the first float
compartment membrane is coupled to the first membrane; and

a first plurality of gas-relief passageways positioned either:

within the first float compartment membrane and extending
between the inside and opposing outside surfaces, or

1 An amendment was filed concurrently with the Notice of Appeal canceling
claim 33 (Amendment filed November 21, 2005). This Amendment was
entered and, therefore, claim 33 has been canceled (Advisory Action of
Dec. 22, 2005).
2 Appellants filed an amendment with the Brief which inserts “having” into
the first clause of claim 1 “in order to correct its inadvertent omission from
the claim 1 amendment of the March 22, 2005 response.” (Br. 1 at ¶ IV; see
also Amendment filed December 20, 2005). The Examiner should enter the
amendment upon receipt of the application so that the inadvertent omission
is corrected.
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Application 10/003,037

within the first membrane, extending between the top and
opposing bottom surfaces, and adjacent to the first
flotation member;

wherein at least one of the gas-relief openings within the first plurality
is structured so that gas flows unobstructed through it when the
system is used.

28. A venting method comprising:

coupling a first membrane to a first flotation member, wherein the
first flotation member includes a first float and a first float
compartment membrane, and wherein the coupling includes
coupling the first float compartment membrane to the first
membrane, the first membrane having a top surface and an
opposing bottom surface, and the first float compartment
membrane having an inside surface and an opposing outside
surface;

forming gas-relief passageways either:

within the first float compartment membrane and extending
between the inside and opposing outside surfaces, or

within the first membrane, extending between the top and
opposing bottom surfaces, and adjacent to the first
flotation member; and

elevating at least a portion of the first membrane;

so as to cause the first membrane to float when placed over a
body containing some liquid; and

so that gas from the body is directly vented to atmosphere
through at least one of the gas-relief passageways.

32. A method of venting gas from a body containing some liquid,
comprising:

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Application 10/003,037

placing a covering system over the body, the covering system
comprising:

a first membrane having an outer edge and a width;

a first flotation member coupled to the first membrane, wherein
the first flotation member includes a first float and a first
float compartment membrane, the first float has a width
that is not more than twenty-five percent of the width of
the first membrane and a first float compartment
membrane, and the first float compartment membrane is
coupled to the first membrane;

elevating portions of the first membrane above the body; and

positioning the covering system to allow gas from the body to vent
directly to atmosphere around the outer edge of the first
membrane.

The Examiner relies on the following prior art references to show
unpatentability:
Wilson US 4,438,863 Mar. 27, 1984
Gerber US 4,503,988 Mar. 12, 1985
Gagle US 4,678,375 Jul. 7, 1987
Morgan US 5,562,759 Oct. 8, 1996

Reference designated “C1,” Proposals for Pond Membrane, November 8,
1984.

Reference designated “C2,” Color copy of Lemma brochure published more
than one year prior to the filing date (see Exhibit 6 of the evidence appendix
accompanying the Brief; Information Disclosure Statement of Feb. 6, 2004).

Reference designated “C4,” Depiction of structure in public use more than
one year prior to the filing date (see Exhibit 5 of the evidence appendix
accompanying the Brief; Information Disclosure Statement of Feb. 6, 2004).

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Appeal 2006-2384
Application 10/003,037

The rejections maintained by the Examiner are as follows:
1. Claims 1, 2, 5, 6, 9-15, 28, 29, and 32 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the Appellants’ own admission of prior
art (C2 and C4) in view of Gerber;
2. Claims 1, 2, 5, 6, 11-13, 28, 29, and 32 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wilson in view of Morgan; and
3. Claims 9, 10, 14, and 15 are rejected under 35 U.S.C § 103(a) as
unpatentable over Wilson and Morgan, further in view of C1.
II. DISCUSSION
A. Issue
The issue before us is: Has the Examiner properly established a prima
facie case of obviousness within the meaning of 35 U.S.C § 103(a)?
B. Facts
The following Factual Findings are supported by a preponderance of
the evidence:
1. Gerber and C4 describe and illustrate a cover system including a
membrane and a flotation member with a float and float
compartment member as required by claim 1 (e.g., Gerber, col. 7,
ll. 55-68; C4 Fig.)
2. Neither Gerber nor C4 include a plurality of gas-relief
passageways positioned as required by claims 1 and 28.
3. C2 describes a cover system including blocks of insulation
(floats) sealed between membrane sheets to form casings. The
casings are laced together to leave an opening between adjacent
casings through which gases can escape. (See C2, p. 2, cols. 1-3,
and the figure on p. 2.)
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Application 10/003,037

4. The opening between the adjacent casings is between
membranes, not “within” a membrane (C2, figure on p. 2).
5. To anchor the cover of C4, the cover is either placed down in an
anchor trench (about 3 feet deep covered with earth) or is
battened to the top of a concrete ringwall. Venting is neither
discussed nor depicted.
6. Wilson describes a gas venting cover including membrane 10 and
upper and lower flotation blocks 22. Each block is encased by an
outer cover or sleeve 28. Sets of blocks define passages 26
through which gas may pass into passage 32 (Wilson, col. 3, ll.
26-48; col. 4, ll. 5-10; Fig. 4).
7. Wilson suggests including vent openings 66 in the portion of the
cover between the outer edge and the sump 16 as shown in
Figure 2 (Wilson, col. 5, ll. 26-32; Fig. 2).
8. The outer edges of the cover 10 are “attached in fluid-tight
relationship to the upper part of the container 12.” (Wilson, col.
3, ll. 21-25).
9. Morgan describes a gas collection system with casings similar to
those of C2. Gas may escape between casings as in C2.
C. Principles of Law
The examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). In order to establish a prima facie case of obviousness, the
examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
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Application 10/003,037

knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
D. Analysis
We agree with Appellants that the Examiner has failed to identify a
teaching or suggestion in the art of gas-relief passageways meeting the
requirements of claims 1 and 28 (Br. 5 and 13). In the rejections of claims 1
and 28, the Examiner relies upon C2 and Morgan, respectively, as teaching
the claimed passageways. Specifically, the Examiner relies upon a space
between the casings of C2 and the seams of Morgan as the claimed
passageways. But as claimed, the passageways must be positioned “within”
a membrane (within either the first float compartment membrane or the first
membrane). The spaces between the casings of C2 and between the seams
of Morgan are not “within” a membrane as claimed (FF 4 and 9).
The Examiner did not specifically discuss claim 32 in the rejection
over the admitted prior art (C2 and C4) in view of Gerber (Answer 3-5).
However, in response to Appellants’ contention that the prior art contains no
suggestion of “positioning the covering system to allow gas from the body to
vent directly to atmosphere around the outer edge of the first membrane,”
the Examiner contends that the cover of C4 “is capable of this venting,”
because “the membrane in C4 is described, alternately, as ‘battened to the
top of a concrete ring wall’” and “battening is not a gas tight seal. (Webster
Dictionary meaning of battening is to fasten with a thin narrow strip of
lumber).” (Answer 13).
Claim 32 is a method claim which affirmatively requires a step of
positioning the covering system to allow venting “around the outer edge of
the first membrane.” There is no convincing evidence that venting around
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Application 10/003,037

the edge of the C4 membrane either inherently takes place or is suggested.
C4 describes a perimeter anchor system in which the cover is buried within a
trench or battened to a ringwall (FF 5). There is no depiction or discussion
of venting (FF 5). There is simply little evidentiary support for the
proposition that battening does not, or is not intended to, result in a fluid
tight seal.
The Examiner further contends that openings 66 in membrane 10 of
Wilson vent gas as claimed. However, the cover 10 of Wilson is fluid tight
around the outer edge of the membrane as the edge is “attached in fluid-tight
relationship to the upper part of the container 12” (FF 8). Therefore, Wilson
does not teach or suggest positioning the covering system to allow venting
“around the outer edge of the first membrane” as claimed.
III. CONCLUSION
The evidence as applied by the Examiner does not support either the
rejection over the admitted prior art in view of Gerber or the rejection over
Wilson in view of Morgan. Moreover, C1 as applied by the Examiner does
not remedy the deficiencies of the rejection over Wilson in view of Morgan.
IV. DECISION
The decision of the Examiner to reject claims 1, 2, 5, 6, 9-15, 28, 29,
and 32 is reversed.

REVERSED

clj

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Appeal 2006-2384
Application 10/003,037

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