Ex Parte Potts

Patent Trial and Appeal Board

Nov 15, 2017

13682491 (P.T.A.B. Nov. 15, 2017)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/682,491 11/20/2012 David A. Potts 353_0310_US1_CIP2_CON2 2427
85173 7590 11/17/2017
GRAS SO PLLC
1818 LIBRARY STREET, SUITE 500
RESTON, VA 20190
EXAMINER
SINGH, SUNIL
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
11/17/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. POTTS
Appeal 2015-007632
Application 13/682,4911
Technology Center 3600
Before: STEFAN STAICOVICI, JAMES P. CALVE, and
LEE L. STEPINA, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
David A. Potts (“Appellant”) timely filed a Request for Rehearing
(“Request”) under 37 C.F.R. § 41.52 on October 27, 2017, requesting that
we reconsider our decision of August 31, 2017 (“Decision”) affirming the
rejection under 35 U.S.C. § 112, first paragraph, of claims 23—55, as failing
to comply with the written description requirement.
Rehearing is limited to matters overlooked or misapprehended by the
Board in rendering the initial decision.
1 According to Appellant’s Appeal Brief (hereinafter “Appeal Br.”), filed
December 22, 2014, the real party in interest is the inventor, David A. Potts.
Appeal Br. 4.
Appeal 2015-007632
Application 13/682,491
In the Request, Appellant contends that: (1) the disclosed Advanedge®
Flat Pipe from Advanced Drainage Systems, Inc. provides support for the
claimed “hollow” limitation; (2) the quote from Superguide Corp. v.
DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004), recited by the
Decision on page 5, relates to claim construction and not written description;
and (3) the Decision does not mention paragraphs 42 and 62 and Figures 2,
3, 13—15, 18, and 24, which were discussed in the Appeal Brief at Section
4.1, as support for the claimed “hollow” limitation. Request 2.
Issue (1)
Appellant argues that Appellant’s Specification describes geonet 40 as
including “various different things, one of which is a flat pipe,”
Advanedge®, which “includes sequential groupings of exemplary hollows
. . . spaced after each other, along the length of the pipe,” and that “may be
placed ... in both the low-aspect ratio and high-aspect ratio channels.”
Request 3 (citing to Appeal Br., Section 4.1; Spec, paras. 42, 62). Appellant
points to original Figure 13, and explains that when “the Advanedge flat
pipe is placed as geonet 40 in the channel 41 of Figure 13, the flat pipe
would be upright and its exemplary hollows would be spanning the space
between the sheeting 48 of the channel 41 of Figure 13.” Id. Thus,
according to Appellant, because the Advanedge® flat pipe includes a
plurality of hollows, when it is used as geonet 40, the Advanedge® flat pipe
constitutes “more than ample support for a high aspect ratio channel that
includes a ‘hollow, ’ that is unfilled space or void between the sides of the
2
Appeal 2015-007632
Application 13/682,491
channel.” Id. at 4; see also id. at 5 (Figure showing the hollows of the
Advanedge® flat pipe.).
Appellant’s arguments were acknowledged on page 5 of our Decision.
Specifically, after reviewing the claim language of independent claims 23,
46, and 47, we determined that none of the claims “requires a pipe having a
hollow, as Appellant argues.” Decision 5 (citing to Appeal Br. 9). As noted
in our Decision, “[although Appellant’s disclosure provides support for
high aspect ratio channels including a . . . pipe . . . Appellant’s disclosure
does not provide support for a high aspect ratio channel that includes a
“hollow,” that is, unfilled space or void between the sides of the channel.”
Id. More specifically, we determined that Appellant’s disclosure provides
support for high aspect ratio channels having granular material, crushed
stone, pea stone, a pipe, or polystyrene aggregate located between the
infiltrative sides of the channel. Id. Stated differently, Appellant’s
disclosure provides support for high aspect ratio channels having a hollow,
defined by the channel walls, that holds granular material, crushed stone, pea
stone, a pipe, or polystyrene aggregate.
However, as noted in our Decision, Appellant’s disclosure does not
support high aspect ratio channels having a hollow that holds another
hollow, that is, an embodiment where unfilled space or void is defined by
and present between the infiltrative sides of the channel. See Decision 5. As
such, when the Advanedge® flat pipe is used as geonet 40 within a channel,
as Appellant argues (see Request 7), the “hollow” of the pipe spans the walls
of the Advanedge® flat pipe, and not the infiltrative sides of the channel, as
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Application 13/682,491
required by each of independent claims 23, 46, and 47.2 Therefore, as stated
in our Decision, “Appellant’s disclosure does not support a high aspect ratio
channel having an unfilled space or void between the sides of the high aspect
ratio channel.” Decision 5.
Issue (2)
Appellant argues that the Board’s reliance on Superguide Corp. is in
error because “the Federal Circuit’s discussion is not directed to written
description and what one of skill in the art would understand is conveyed by
an as-filed application, but is, instead, directed to claim construction.”
Request 9.
We appreciate Appellant’s contention that the quote from Superguide
Corp., recited by the Decision on page 5, relates to claim construction and
not written description. However, our intent in the Decision was to show
that a particular embodiment appearing in the written description, such as,
the Advanedge® flat pipe, may not be read into a claim when the claim
language is broader than the embodiment. See Decision 5. Specifically,
Appellant’s argument that the disclosed Advanedge® flat pipe provides
support for the claimed “hollow” limitation, in essence, equates the “hollow”
limitation with a particular embodiment appearing in the written description,
2 Independent claim 23 recites “high aspect ratio channels . . . wherein each
of the . . . channels . . . comprises ... a hollow spanning the majority of the
width and aligned directly between infiltrative sides of the .. . channel.”
Appeal Br. 25—26. Independent claims 46 and 47 require a similar
limitation. See id. at 32—33.
4
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Application 13/682,491
namely, the Advanedge® flat pipe. See Request 3; see also Appeal Br. 8—93.
In other words, stating that the claimed “hollow” limitation is supported by
the disclosed Advanedge® flat pipe confines the claims to the Advanedge®
flat pipe embodiment described in Appellant’s Specification, which,
according to Superguide Corp., is not permitted. Hence, for the foregoing
reasons, our reliance on Superguide Corp. is appropriate in light of
Appellant’s arguments.
Issue (3)
We did not overlook or misapprehend Appellant’s reliance on
paragraphs 42 and 62 of the Specification and Figures 2, 3, 13—15, 18, and
24 describing the use of Advanedge® flat pipe as geonet 40 because we
stated in our Decision that Appellant’s disclosure provides support for high
aspect ratio channels including, among other materials, a pipe. See Decision
5. However, we also stated that such disclosure “does not provide support
for a high aspect ratio channel that includes a ‘hollow, ’ that is, unfilled space
or void between the sides of the channel.” Id. (citing Spec, paras. 56, 64).
Furthermore, we note that Appellant’s reliance on paragraphs 42 and
62 of the Specification and Figures 2, 3, 13—15, 18, and 24, as support for
the claimed “hollow” limitation is not persuasive for the same reasons
discussed supra in Issue (1). See Request 10-12. We, thus, do not agree
with Appellant’s position that providing support for the Advanedge® flat
3 For example, Appellant argues that paragraph 42 of the Specification
describes a flat pipe geonet 40 with a hollow and thus, when such a pipe is
used in high aspect ratio channels 40, the channels 40 would likewise
include a hollow.
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Appeal 2015-007632
Application 13/682,491
pipe being between the interfaces of high aspect ratio channels is the same as
providing support for the “hollow” of the Advanedge[®] flat pipe being
between the same interfaces of high aspect ratio channels because the
claimed “hollow” is an unfilled space or void between the sides of the
channel and therefore excludes a pipe. See id. at 11—12.
In conclusion, for the foregoing reasons, Appellant’s Request does not
persuade us that the Decision misapprehended or overlooked any matter or
that we erred in affirming the Examiner’s rejection of claims 23—55 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
CONCLUSION
We have granted Appellant’s Request to the extent that we have
considered our Decision in light of the points raised therein, but have denied
the Request with respect to any modification to the Decision.
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).
DENIED
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