Ex Parte Potts

Patent Trial and Appeal Board

Sep 30, 2016

12730817 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121730,817 03/24/2010
85173 7590 10/04/2016
GRASSOPLLC
1818 LIBRARY STREET, SUITE 500
RESTON, VA 20190
FIRST NAMED INVENTOR
David A. Potts
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.
353_0310_USl_CIP2_DIV2 9892
EXAMINER
SINGH, SUNIL
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
admin@grassoip.com
fgrasso@grassoip.com
vromme@grassoip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte DAVID A. POTTS
Appeal2014-005483
Application 12/730,817 1
Technology Center 3600
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 59-75. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellant, the real party in interest is the inventor.
Appeal Br. 1.
Appeal2014-005483
Application 12/730,817
Claimed Subject Matter
Independent claim 59 is representative of the subject matter on appeal
and is reproduced below.
59. A method of making a leach field comprising:
using a form to shape alternating channels of fill material
one and fill material two at a location, fill material one and fill
material two being permeable;
and
placing or constructing a conduit for connecting an
effluent source from a septic tank or other component of a
wastewater treatment system to be in fluid communication with
one or more of the alternating channels,
wherein the alternating channels of fill material one
and fill material two were shaped with the form at the
location, the form moved from the location after shaping
alternating channels of fill material one and fill material
two,
wherein the conduit is placed to traverse or abut
alternating channels of fill material in the leach field.
Objection and Rejections2
The Specification is objected to as failing to provide proper
antecedent basis for the claimed subject matter. Final Act. 2.
Claims 59-75 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. Final Act. 3.
Claims 59-75 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the enablement
requirement. Final Act. 3--4.
2 The Examiner has withdrawn the rejection of claims 59-75 under 35
U.S.C. § 103(a) as unpatentable over Minor et al. (US 5,017,042, iss.
May 21, 1991) and Hoppe (US 3,478,524, iss. Nov. 18, 1969). Ans. 2.
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Application 12/730,817
Claims 59-75 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as indefinite. Final Act. 4.
ANALYSIS
Objection and Written Description
Ordinarily an objection is petitionable, and a rejection is appealable to
the Board. When the issue of new matter presented is the subject of both an
objection and a rejection, the issue is appealable. Manual of Patent
Examining Procedure (MPEP) § 2163.06 II. Review of New Matter
Objections and/or Rejections (9th Ed. Rev. 7, Nov. 2015)). See also MPEP
§ 608.04(c); 35 U.S.C. § 134(a); 37 C.F.R. § 1.181(a)(l). While the
Examiner has not made a new matter rejection or objection, in this case, the
objection to the Specification for lack of antecedent basis and the written
description rejection tum on the same issue of whether the claimed subject
matter finds adequate support in the original disclosure. As such, we will
decide both the objection and the rejection.
The Examiner objects to the Specification because "[t]he term channel
recited in at least claim 59 has no basis in the specification." Final Act. 2.
Similarly, the Examiner rejects independent claim 59 and its dependent
claims as failing to comply with the written description requirement because
the original filed disclosure fails to provide a basis for "creating alternating
channels." Id. at 3. The Examiner's rejection is primarily based on a
premise that to satisfy the written description requirement the Specification
must use the term "channel" in its description of the forms of Figures 25-27,
which are said to be representative of a species in a restriction requirement.
See, e.g., Ans. 9.
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Application 12/730,817
The Appellant's argument to the contrary is persuasive. Appeal
Br. 16-19, Reply Br. 4--14. Notably, the Appellant explains how "shaping
alternating channels of fill material also finds support from Figure 25."
Reply Br. 6-9. We agree with the Appellant's explanation.
To satisfy the written description requirement, "the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed."
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en bane). The claimed invention need not be recited in haec verba in the
original specification to satisfy the written description requirement. Id. at
1352; MPEP § 2163.02 (9th Ed. Rev. 7, Nov. 2015) ("[t]he subject matter of
the claim need not be described literally (i.e., using the same terms or in
haec verba) in order for the disclosure to satisfy the description
requirement."). Accordingly, merely because the term "channel" is not used
in paragraphs describing the forms of Figures 25-2 7, such is not dispositive
of an Appellant's failure to comply with the written description requirement.
Thus, we do not sustain the rejection of claims 59-75 under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply
with the written description requirement. We likewise do not sustain the
objection to the Specification.
Enablement
The Examiner rejects independent claim 59 and its dependent claims
as failing to comply with the enablement requirement because one of
ordinary skill in the art cannot make or use the invention of claim 59, which
calls for "creating alternating channels." Final Act. 3--4. The Examiner's
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Application 12/730,817
support for the rejection is primarily based on a premise that the originally
filed disclosure lacks the claimed language. See id.; see Ans. 10-11.
However, the enablement requirement of 35 U.S.C. § 112, first
paragraph, is separate and distinct from the description requirement. Vas-
Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). And, the
Examiner's rejection appears to conflate the two requirements-written
description and enablement - as the premise of the Examiner's rejection of
claim 59 appears to be based only on the Specification's use of terminology.
See Ans. 10-11.
Moreover, the Examiner's rejection fails to explain why the
disclosure, as filed, is not sufficiently complete to enable one of ordinary
skill in the art to make and use the claimed invention without undue
experimentation. See U.S. v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir.
1988). Notably, determining whether any necessary experimentation is
undue involves considering relevant factors including, but not limited to: (1)
the quantity of experimentation necessary; (2) the amount of direction or
guidance presented; (3) the presence or absence of working examples; (4)
the nature of the invention; (5) the state of the prior art; (6) the relative skill
of those in the art; (7) the predictability or unpredictability of the art; and (8)
the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
The Examiner's rejection does not discuss many of the factors set forth in
Wands as they relate to undue experimentation. Although the Examiner is
not required to provide a discussion as to every Wands factor, it is not
apparent from the Final Office Action or the Answer that many of these
factors have been considered. The support for the Examiner's rejection
appears to relate to the amount of direction or guidance presented, which is
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Application 12/730,817
only one of the eight Wands factors. Based on the foregoing, we determine
that the Examiner's rejection under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement, is not sufficiently
complete to establish a prima facie case. See also Appeal Br. 21-22, Reply
Br. 15. Thus, we do not sustain the rejection of claims 59-75 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
Indefiniteness
At the outset, we note that the Examiner provides specific rejections
for independent claim 59 and dependent claims 60, 64, 72, and 73. Final
Act. 4. The Examiner's rejection of dependent claims 61---63, 65-71, 74, and
75 is based on one or more of the specific rejections of claims 59, 60, 64, 72,
and 73. See id. However, as discussed below, we do not sustain the
Examiner's rejections of claims 59, 60, 64, 72, and 73, and as such, we
likewise do not sustain the rejections of claims 61---63, 65-71, 74, and 75.
Independent claim 59
The Examiner rejects independent claim 59 as indefinite because it is
unclear exactly what structure "channels" in "using a form to shape
alternating channels," as recited in claim 59, refers to as the term was never
mentioned in the Specification. Final Act. 4; see Ans. 11-12. The Examiner
adds "[i]t is unclear how the forms depicted in Figures 25-27 can produce
alternating channels since the forms have a single interior (volume) and a
single (space, [ ] gap) between the trench walls and the exterior of the forms
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Application 12/730,817
(as described in para. [0076]) cannot form a plurality of discrete spaced apart
channels." Ans. 11-12.
During examination, after applying the broadest reasonable
interpretation to the claim, if the metes and bounds of the claimed invention
are not clear, the claim is indefinite. In re Packard, 751F.3d1307, 1310
(Fed. Cir. 2014). The test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether "those skilled in the art would understand what is
claimed when the claim is read in light of the specification." Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted). The Examiner appears to have a rigid focus on the term
"channel" and its failure to be explicitly used in paragraphs describing
Figures 25-27, which is insufficient to support the rejection. In light of the
Specification, we determine the term "channels" in "using a form to shape
alternating channels," as recited in claim 59, to be clear to those skilled in
the art. See Reply Br. 16; see, e.g., id. at 6-9. Thus, we do not sustain the
rejection of independent claim 59 as indefinite.
Dependent claim 60
The Examiner rejects claim 60 as indefinite because it is unclear
"what is the 'elongated portions'." Final Act. 4. The Examiner appears to
support this rejection by stating "the specification sheds no light so as to
interpret the "elongated portions" see para [0076]." Ans. 12. Based on the
foregoing, it appears that the Examiner is suggesting that the claims must
use the exact terms in the Specification or else they are indefinite. See Reply
Br. 17. However, the test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether "those skilled in the art would understand what is
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claimed when the claim is read in light of the specification." Orthokinetics,
806 F.2d at 1576. The Appellant contends that "support and insight into the
elongated portion language can be at least found in the exemplary fingers
412 of the form 400 of Figure 25 and the related portions of the
specification." Reply Br. 17. We agree with the Appellant. Thus, we do
not sustain the rejection of dependent claim 60 as indefinite.
Dependent claim 64
The Examiner rejects claim 64 as indefinite because it is unclear "how
'fingers' relate back to channels." Final Act. 4. The Examiner appears to
support the rejection with a rigid focus on the terms used to describe Figure
25 in paragraph 76 of the Specification. See Ans. 12-13. However, the
Appellant points out that "Figure 25 of the as-filed application includes
numerous fingers labeled 412. These fingers would assist the form 400 in
shap[ing] the alternating channels of claim 59 as the form is placed, covered,
backfilled, and filled as described in embodiments, and for example,
paragraphs 72-78 of the as-filed specification." Appeal Br. 24; see also
Reply Br. 18-19. We agree with the Appellant. Thus, we do not sustain the
rejection of dependent claim 64 as indefinite.
Dependent claims 72 and 73
The Examiner rejects claims 72 and 73 as indefinite because it is
unclear "what 'connection at one end is'." Final Act. 4. The Examiner
appears to support this rejection by stating "the specification sheds no light
so as to interpret the 'connection at one end' see para [0076]." Ans. 13.
Based on the foregoing, it appears that the Examiner is suggesting that the
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claims must use the exact terms in the Specification or else they are
indefinite. However, the test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether "those skilled in the art would understand what is
claimed when the claim is read in light of the specification." Orthokinetics,
806 F.2d at 1576. The Appellant contends that the disputed claim language
is "amenable to construction on its face." Reply Br. 19. We agree.
Moreover, the Appellant explains:
[W]hen the form shown in Figure 25 is placed in the ground and
then a first fill material is placed inside of the form and a second
fill material placed outside of the form, the fill material inside the
fingers may be considered to be connected at one end by fill
material in the central volume 411 located in the middle of the
form 400.
Reply Br. 20. Although the foregoing is not necessary to interpret the
language of claims 72 and 73, it provides helpful guidance to explain the
breath of the claims. Thus, we do not sustain the rejection of dependent
claims 72 and 73, as indefinite.
DECISION
We REVERSE the Examiner's decision objecting to the Specification
and rejecting claims 59-75.
REVERSED
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