Ex Parte Roberts et al

Board of Patent Appeals and Interferences

Aug 30, 2011

11119907 (B.P.A.I. Aug. 30, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/119,907 05/03/2005 R. Lee Roberts PA-241 1652
21920 7590 08/31/2011
MEREK, BLACKMON & VOORHEES, LLC
673 S. WASHINGTON ST.
ALEXANDRIA, VA 22314
EXAMINER
SAVAGE, MATTHEW O
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
08/31/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte R. LEE ROBERTS and
MARK KEVIN ADDISON
________________

Appeal 2010-004562
Application 11/119,907
Technology Center 1700
________________

Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1 through 30. We have jurisdiction
pursuant to 35 U.S.C. § 6.
We AFFIRM-IN-PART.

STATEMENT OF THE CASE
The subject matter on appeal is directed to an underdrain system.
Claim 1 is illustrative:
1. An underdrain system for a filter having filter media,
comprising:
(a) a bottom formed of concrete, said bottom having a
plurality of generally cone-shaped depressions formed therein,
fluid flows through said plurality of generally cone-shaped
depressions during filtration and washing; and,
(b) a fluid flow distribution member operably associated
with at least one of said generally cone-shaped depressions,
said fluid flow distribution member having a plurality of
elongated slots for distributing the flow of fluid passing into
and out of said generally cone-shaped depressions, said
plurality of slots being sized to prevent filter media supported
by said fluid flow distribution member from passing through
said plurality of slots.
The Examiner maintains the rejection of claims 1-30 under 35 U.S.C.
§ 103(a) as unpatentable over Roberts (US 2003/0047502 A1, published
Mar. 13, 2003) and Bartlow (US 3,716,144, issued Feb. 13, 1973).
Appellants argue the claims in 19 groups: (1) claim 1; (2) claim 2;
(3) claims 3 and 4; (4) claim 5; (5) claim 6; (6) claim 7; (7) claim 8; (8)
claim 9; (9) claim 10; (10) claim 11; (11) claim 12; (12) claim 13; (13)
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claims 14, 15, 18, and 19; (14) claims 16 and 17; (15) claims 20-23; (16)
claims 24-26; (17) claim 27-28; (18) claim 29; and (19) claim 30.
With respect to claim groups (3), (13), (14), (15), (16) and (17),
Appellants’ arguments focus on claims 3, 14, 16, 20, 24, and 27,
respectively. Accordingly, we address Appellants’ arguments with respect
to these claims only.

CLAIMS 1, 8, 14, and 24

ISSUE
Did Appellants establish that the Examiner reversibly erred by failing
to provide a reason to combine Roberts and Bartlow to arrive at the
inventions recited in claims 1, 8, 14, and 24 within the meaning of § 103(a)?
We decide this issue in the negative.

FACTUAL FINDINGS, ANALYSIS, AND CONCLUSION
Appellants argue that it would not have been obvious to combine
Roberts and Bartlow because Roberts is directed to a fluid flow distribution
member designed to prevent filter media from passing through the fluid flow
distribution member while Bartlow is directed to a much larger apparatus
having screens designed to allow materials such as sand to pass through the
screen. (App. Br. 16, 17, 19, 26, 27, 28, 35, 36, 38, 43, and 44 and Reply
Br. 11).
In addition, with respect to claim 1, Appellants argue that Roberts
does not teach the claimed fluid flow distribution member feature because
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the Specification’s definition (Spec. 12, line 12) of a fluid flow distribution
member specifically excludes a porous plate. (App. Br. 11, 16).
Appellants also argue that the Examiner’s modification of Bartlow
would have rendered Bartlow’s screens unsatisfactory for their intended
purpose (i.e., sizing coal and ore, and sand recovery). (App. Br. 11).
Appellants do not specifically dispute the Examiner’s finding that
Roberts teaches all of the features required by claims 1, 8, 14, and 24, except
for the fluid flow distribution member feature and the specific distributor
structure. Compare Ans. 3, 5, 6, 8, and 9 with App. Br. 11-20, 24-29, 34-40,
and 43-46 and Reply Br. 4-16. In this regard, Roberts teaches an underdrain
system for filtering water and waste water comprising underdrain structure B
(corresponding to the claimed bottom feature) formed of concrete and
having a plurality of underdrain hoppers 2 that are cone shaped
(corresponding to the claimed cone shaped depressions feature). (Roberts,
paras. [0001], [0029] and [0030]).
While Roberts teaches (Roberts, para. [0031]) a porous plate D
secured to underdrain structure B via an anchor assembly E, Roberts does
not teach the use of a fluid flow distribution member feature or the specific
distributor structure required by the claims.
Bartlow teaches a screen (corresponding to the claimed fluid flow
distribution member feature) used for drainage, dewatering, and washing
coal and ores. (Bartlow, col. 1, ll. 5-9). Bartlow’s Figure 5 illustrates a
screen formed from cylindrical rods 52 mounted on the elongated slots of
support members 56. (Bartlow, Fig. 5). Bartlow teaches varying the
number of cylindrical rods along the length of the support members
depending on the particular application. (Bartlow, col. 4, ll. 17-20).
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Thus, we agree with the Examiner’s determination (Ans. 4, 5, 6, and
9-11) that it would have been obvious to employ Bartlow’s screen as
Roberts’ porous plate D because such a substitution is nothing more than the
predictable use of a prior art element (i.e., a screen) according to its
established function (i.e., to drain liquid). KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007) (stating that when assessing whether a claimed
invention would have been obvious, a court must ask “whether the
improvement is more than the predictable use of prior art elements according
to their established functions”).
In addition, in making such a substitution, we agree with the
Examiner that it would have been within the skill level of one of ordinary
skill in the art to modify the size of Bartlow’s screen and slots to suit
Roberts’ underdrain application in order to effectively drain liquid. Id. at
418 and 421 (stating that “a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ” and
that “[a] person of ordinary skill is also a person of ordinary creativity, not
an automaton”).
With respect to Appellants’ argument that Roberts does not teach the
claimed fluid flow distribution member, Appellants’ argument is without
persuasive merit because, in reference to our above discussion, the Examiner
does not rely on Roberts to teach the disputed claim feature as argued by
Appellants but instead relies upon Bartlow.
With respect to Appellants’ argument that Bartlow is directed to a
much larger apparatus than Roberts’ apparatus, Appellants’ argument is
unpersuasive because it is focuses on whether it would have been obvious to
bodily incorporate Bartlow’s screen into Roberts’ underdrain system and not
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what the combination of references would have made obvious to the person
of ordinary skill in the art. In re Mapelsden, 329 F.2d 321, 322 (CCPA
1964) (stating that “[t]he issue [in determining obviousness] lies in what the
combination of references makes obvious to the person of ordinary skill and
not whether a feature of one reference can be bodily incorporated in the
other to produce the subject matter claimed”).
With regard to Appellants’ argument that the Examiner’s modification
of Bartlow would render it unsuitable for its intended purpose, we note that
the Examiner’s modification involves substituting Bartlow’s screens for
Roberts’ porous plate. Accordingly, the proper inquiry is whether the
modification would render the primary reference (i.e., Roberts) unsuitable
for its intended purpose, which Appellants have not argued. See, In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
With respect to Appellants’ arguments that Bartlow teaches away
from the substitution of Bartlow’s screens for Roberts distributor F , we
need not reach these arguments. Appellants made these arguments in
response to positions taken by the Examiner in the “Response to Arguments”
section of the Answer. The Examiner’s positions rely on a new theory of
how Bartlow’s screens would have been substituted in Roberts’ drain.
However, the final rejection focuses solely on the substitution of Bartlow’s
screens for the porous plate D of Roberts. For the purpose of this appeal, we
focus on the rejection made by the Examiner in the Final rejection, which is
based on employing Bartlow’s screen as Roberts’ porous plate D.
Accordingly, we sustain the Examiner’s rejection of claims 1, 8, 14,
15, 18, 19, and 24-26.

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CLAIM 2
Appellants argue that neither Bartlow nor Roberts would have
suggested a reason to modify the size of Bartlow’s metal screen so that at
least a portion of Bartlow’s screen could extend into a generally cone-shaped
depression to arrive at the invention recited in claim 2. (App. Br. 21).
In reference to our above discussion, Appellants’ argument is
unpersuasive because it is directed to whether it would have been obvious to
bodily incorporate Bartlow’s screen in Roberts’ underdrain system and not
what the combination of references would have made obvious to the person
of ordinary skill in the art. Mapelsden, 329 F.2d at 322.
In this regard, in reference to our above discussion, it would have
been within the skill level of one of ordinary skill in the art to modify the
size of Bartlow’s screen and slots to suit Roberts’ underdrain application in
order to effectively drain liquid. Id. at 418 and 421.
Accordingly, we sustain the Examiner’s rejection of claim 2.

CLAIM 3
Appellants argue that there is no reason to employ an insert below the
screens of Bartlow to arrive at the invention recited in claim 3. (App. Br. 22
and 23).
Appellants’ argument is without persuasive merit because the
Examiner’s stated case does not involve employing an insert below
Bartlow’s screen as argued by Appellants. Instead, in reference to our above
discussion, the Examiner relies on Roberts to teach distribution insert C
(corresponding to the claimed insert feature), which is positioned below the
porous plate. Therefore, once Bartlow’s screen is substituted for Roberts’
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porous plate, the distribution insert C would have been below the screen.
Appellants’ arguments fail to address the Examiner’s stated rejection.
Accordingly, we sustain the Examiner’s rejection of claims 3 and 4.

CLAIMS 5-7
Appellants argue that since the Specification explicitly excludes a
porous plate from being a fluid flow distribution member, Roberts, which
teaches an underdrain system having a porous plate, cannot teach an anchor
member for anchoring a fluid flow distribution member as required by claim
5. (App. Br. 23-25).
Appellants’ argument is without persuasive merit because the
Examiner’s stated case is not based on Roberts alone but is instead based on
the combined teachings of Roberts and Bartlow.
In this regard and in reference to our above discussion, the apparatus
suggested by Roberts and Bartlow has a fluid flow distribution member and
an anchor assembly. (See Roberts, Fig. 2, item E).
Accordingly, we sustain the Examiner’s rejection of claims 5-7.

CLAIMS 9, 10, 16, and 27
We begin by noting that Appellants’ Specification does not define or
limit the term “housing” recited in claim 9. Therefore, we give the broadest
reasonable meaning to this term in its ordinary usage as it would be
understood by one of ordinary skill in the art. In doing so, we determine that
the term “housing” refers to a structure that supports. See, e.g., WEBSTER’S
II NEW RIVERSIDE UNIVERSITY DICTIONARY 595 (The Riverside Publishing
Company 1994) (housing defined as “something that covers, protects, or
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supports.”). This interpretation is consistent with Appellants’ disclosure
since upper frame member 18 and lower frame member 20, which form a
housing, cover and support the distribution members 22. (See Spec. 14 and
15 and Figs. 1-4).
Turning our attention to the rejection, Appellants argue that the
Examiner erred in maintaining the rejection because Roberts’ insert C does
not correspond to the housing required by claim 9. (App. Br. 31).
Appellants also argue that none of the applied prior art references
teaches or would have suggested (1) a housing having first and second walls
as required by claim 10 (id. at 32); (2) a plurality of hollow tubes disposed
between an upper and lower member of a housing as required by claim 16.
(id. at 40); and (3) a housing having at least a first portion and second
portion, where the first portion is detachably connected to said second
portion as required by claim 27 (id. at 45).
In light of the proper construction of the term “housing” discussed
above, we agree with the Examiner’s determination at pages 5 and 14 of the
Answer that Roberts’ first, second and third segments of insert C and bottom
surface of the head of bolt 16 correspond to the claimed housing. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). In this regard, Roberts
plainly teaches a porous plate disposed between the head of bolt 16
(corresponding to a first wall, member, or portion) and the first, second and
third segments of insert C (corresponding to a second wall, member, or
portion) to support the porous plate. (Roberts, paras. [0031] and [0033]).
In addition, with respect to Appellants’ argument that none of the
applied prior art references teaches or would have suggested a first portion
detachably connected to said second portion as required by claim 27,
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Appellants’ argument is without persuasive merit because Roberts’ Figures 1
and 2 plainly illustrate that head of bolt 16 (corresponding to a first wall,
member, or portion) may be removed (i.e., detachably connected) from the
first, second and third segments of insert C (corresponding to a second wall,
member, or portion). See also Roberts, paras. [0029] and [0031].
With respect to Appellants’ argument that none of the applied prior art
references teaches or would have suggested a plurality of hollow tubes
disposed between an upper and lower member of a housing as required by
claim 16, Appellants’ argument is without persuasive merit because, while
Bartlow does not expressly teach hollow rods (corresponding to the claimed
tubes), Appellants do not specifically dispute the Examiner’s rationale that it
would have been within the skill of one ordinary skill in the art to use a
hollow rod in order to reduce the cost of fabricating the the rod. (Compare
Ans. 6-7 with App. Br. 20 and Reply Br. 4-17).
Accordingly, we sustain the Examiner’s rejection of claims 9, 10, 16,
17, 27, and 28.

CLAIMS 11 and 12
Appellants argue that none of the applied prior art references teaches
or would have suggested the spacer required by claim 11. (App. Br. 32 and
33). Appellants further argue that Roberts and Bartlow fail to teach a spacer
attached to one of the first or second walls as required by claim 12. (App.
Br. 33).
Appellants’ argument is unpersuasive because it fails to address the
Examiner’s stated case (Ans. 5, 14, and 15) based on (1) the finding that
Bartlow’s bridges 66 correspond to the claimed spacers feature as Bartlow’s
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Figure 5 illustrates that bridges 66 spaces the rods 52 (corresponding to the
claimed cylindrical member) from each other and the walls and thus function
as spacer and (2) the finding that Roberts’ head of bolt 16 corresponds to
the claimed first wall, member, or portion feature and Roberts’ first, second
and third segments of insert C correspond to the claimed second wall,
member, or portion feature. (Compare Ans. 3-10 with App. Br. 32-33 and
Reply Br. 4-17).
Therefore, once Bartlow’s screen is substituted for Roberts’ porous
plate, the bridges 66 (corresponding to the claimed spacers feature) would
have been attached to one of the head of bolt 16 (corresponding to the
claimed first wall, member, or portion feature) or the first, second and third
segments of insert C (corresponding to the claimed second wall, member, or
portion feature) via the anchor assembly E.
Accordingly, we sustain the Examiner’s rejection of claims 11 and 12.

CLAIM 13
Appellants argue that Bartlow does not teach a spacer mounted on the
first generally cylindrical member as required by claim 13 since Bartlow
teaches that only members 52 are mounted on the supports 56. (App. Br. 33-
34).
We begin by noting that it is well settled that “[d]uring examination,
‘claims . . . are to be given their broadest reasonable interpretation consistent
with the specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In
this case, Appellants’ Specification and drawings disclose in one
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embodiment that spacers 30 serve as a support and form slots so that
cylindrical distribution members 22 having a generally cylindrical shape are
positioned or mounted into these slots. (Spec. pp. 14 and 15 and Figs. 3 and
6).
Thus, giving the claim term “mounted” its broadest reasonable
interpretation consistent with the Specification, we agree with the
Examiner’s determination that this term does not exclude the arrangement
taught by Bartlow. In this regard, Bartlow’s bridges 66 (corresponding to
the claimed spacers feature) serve as a support and form slots so that rods
52 (corresponding to the claimed cylindrical member) are positioned or
mounted into these slots. See also In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004) (stating that “[a]bsent claim language carrying a narrow meaning,
the PTO should only limit the claim based on the specification or
prosecution history when those sources expressly disclaim the broader
definition.”).
Accordingly, we sustain the Examiner’s rejection of claim 13.

CLAIM 20
Appellants argue that the Examiner failed to properly interpret the
“means for changing the size of said opening in said distributor” feature
recited in claim 20. (App. Br. 41). Specifically, Appellants argue that pages
15 and 17 of the Specification disclose the structure for performing the
claimed function. (App. Br. 41). We agree.
We begin by noting that we agree with Appellants that the “means for
changing the size of said opening in said distributor” invokes the sixth
paragraph of § 112 because it recites a “means for” that is modified by the
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functional language “for changing the size of said opening in said
distributor,” and does not recite sufficient structure to perform the recited
function.
Thus, the Examiner is required to establish that the prior art must
(1) perform the identical function recited in the means limitation and
(2) perform that function using the structure disclosed in the Specification or
using an equivalent structure. See Valmont Indus. Inc. v. Reinke Mfg. Co.
Inc., 983 F.2d 1039, 1042 (Fed. Cir. 1993).
While the Examiner alleges (Ans. 7) that Bartlow discloses a
corresponding structure disclosed in the Specification, the Examiner fails to
direct us to any particular structure disclosed in the Specification to support
the Examiner’s allegation that Barlow teaches performing the identical
function using a structure disclosed in the Specification. Indeed, we find
that while Bartlow at column 4, lines 18-20 teaches performing the identical
function recited in the means limitation, Bartlow does not teach performing
this function using a structure disclosed in the Specification (i.e., varying the
size of the distribution members 22, the spacers 30 and/or the width of the
adjacent walls). Rather, Bartlow’s column 4 discloses that the number not
size of the screen rods per inch is varied.
In addition, we note that no analysis has been made to show that this
structure (i.e., varying the number of rods) is an equivalent structure to the
structure disclosed in the Specification. See Kemco Sales, Inc. v. Control
Papers Co., Inc., 208 F.3d 1352, 1364 (Fed. Cir. 2000) (stating that one way
to support a conclusion of equivalence is whether the prior art element
performs the identical function recited in the means limitation in
substantially the same way with substantially the same result).
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Accordingly, we reverse the Examiner’s rejection of claims 20-23.

CLAIMS 29 and 30
We begin by noting that independent claim 27 requires a distribution
assembly composed of, inter alia, a housing and that dependent claim 29,
which depends from independent claim 27, requires an insert for directing
fluid to and from the distribution assembly. Claim 30 depends from claim
29.
Thus, claim 29, based on its plain meaning, requires that the insert be
separate from the housing, which is part of the distribution assembly. This
construction is consistent with the Appellants’ disclosure as it discloses that
its housing 18, 20 is separate from the insert C. (Spec. 14 and 15; see also
Figs. 1-4).
In light of this claim construction, we turn our attention to the
Examiner’s rejection. The Examiner states that Roberts’ insert C
corresponds to both the insert feature and the housing feature. Contrary to
the Examiner’s position, however, claim 29 requires that the housing feature
is separate from the insert feature.
Indeed, as correctly pointed out by Appellants, Roberts’ insert C
cannot reasonably correspond to both the insert feature and the housing
feature required by claim 29. (App. Br. 45 and 46).
Accordingly, we reverse the Examiner’s rejection of claims 29 and 30.

ORDER
The Examiner’s decision is affirmed-in-part.

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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED-IN-PART

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