Ex Parte Sandlin

Patent Trial and Appeal Board

Oct 24, 2013

11586878 (P.T.A.B. Oct. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DELBERT SANDLIN
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Appeal 2011-007949
Application 11/586,878
Technology Center 3600
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Before MEREDITH C. PETRAVICK, JAMES A. TARTAL, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/586,878

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-15 and 30-32.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).
The rejected claims are directed to a method for temporarily
protecting tree root systems, as during a construction project (Spec. 1, ll. 5-
6). Claim 1, reproduced below and representative of the other claims on
appeal, is the only independent claim.
1. A method of performing a discrete task
involving moving heavy equipment over a porous
and compressible ground surface around trees with
roots that are prone to being damaged under heavy
weight applied to the ground surface, the method
comprising the steps of:
providing a plurality of modules;
in preparation for performing the discrete
task, joining the plurality of modules to each other
in an operative state using cooperating connector
components on adjacent modules to thereby cause
adjacent modules to have a maintained relationship
over a substantial area over the ground surface and
over roots of at least one tree so that water can be
directed at least one of (a) through at least one of
the joined modules and (b) between the joined
modules, to be directed against, and evaporated
from, the ground surface,

1 Our decision will refer to Appellant’s Specification (“Spec.,” filed October
26, 2006), Appeal Brief (“App. Br.,” filed September 23, 2010), and Reply
Brief (“Reply Br.,” filed February 7, 2011), as well as the Examiner’s
Answer (“Ans.,” mailed December 7, 2010).

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wherein the step of joining the plurality of
modules comprises joining adjacent first and
second modules through at least first and second
connector components that cooperate between the
first and second modules in a predetermined
manner to allow the first and second modules to
selectively be placed in different maintained
relationships that result: a) from movement of at
least one of the first and second modules relative
to the other of the first and second modules along a
horizontal line; and b) in different collective
footprints for the first and second modules on the
ground surface;
performing the defined task which involves
moving heavy equipment against the plurality of
joined modules so that weight forces for the
equipment are distributed through the plurality of
modules over the ground surface adequately to
avoid application of concentrated forces that may
inflict damage to the tree roots; and
after completing the discrete task, removing
the plurality of modules from the site.
THE REJECTIONS
The Examiner rejects the claims as follows:
Claims 1-3, 5-14, and 30-32 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dunkel (DE 3410469 A1, pub. Sep. 5, 1985) in view of
Henry (US 6,202,565 B1, iss. Mar. 20, 2001);
claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Dunkel in view of Henry and Spica (US 3,868,798, iss. Mar. 4, 1975); and
claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Dunkel in view of Henry and MacLeod (US 5,364,204, iss. Nov. 15, 1994).
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ANALYSIS
Obviousness rejection of claims 1-3, 5-14, and 30-32
Independent claim 1 requires “joining the plurality of modules to each
other in an operative state using cooperating connector components on
adjacent modules.” In the obviousness rejection, the Examiner states that
Dunkel’s tree ventilation plates 30, 50, and 52 teach the limitation of a
plurality of modules, that Henry’s plug member 800, receiving members
805, and channels 806 teach the limitation of cooperating connectors, and
that it would be obvious to combine these teachings (Ans. 4-6).
Appellant first argues that Dunkel does not teach the limitation of
cooperating connector components on adjacent modules (App. Br. 4). Even
assuming arguendo this is true, we note the Examiner relies on Henry to
teach this limitation (Ans. 4-5).
Appellant then argues that because Henry is in a different field of
endeavor than Dunkel, the Examiner erred in combining the references
(App. Br. 5-6; see also Reply Br. 1-4). We disagree with Appellant. As the
Examiner points out, both Dunkel and Henry are directed to structures
placed over components to protect the underlying components (Ans. 16-17);
for example Dunkel’s tree ventilation plates protect the soil by preventing
pedestrians from walking on it, and Henry’s ramps and central members
protect cables by preventing pedestrians from walking on the cables.
Appellant also argues that Henry is not concerned with allowing water
through its device (App. Br. 6). As the Examiner points out, however,
Henry is used to teach the claimed limitation of cooperating connectors,
while Dunkel is used to teach “adjacent modules . . . hav[ing] a maintained
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relationship so that water can be directed at least one of (a) through at least
one of the joined modules and (b) between the joined modules” (Ans. 4, 17).
Appellant agues “[i]t is also questionable whether Dunkel discloses
any ‘openings’ in the ‘modules’ therein. As can best be understood from the
available translation, it appears that ‘openings’/slits 32 are actually filled
with a porous material and thus a solid, porous layer without openings
results” (App. Br. 6, bold original). We note, however, that claim 1 does not
require the limitation “openings,” but only that “adjacent modules . . . have a
maintained relationship so that water can be directed at least one of (a)
through at least one of the joined modules and (b) between the joined
modules,” which Appellant admits is provided by Dunkel by Appellant’s
characterization of Dunkel as “porous” (id.).
Appellant argues that while claim 1 requires joining the plurality of
modules to allow the first and second modules to selectively be placed in
different maintained relationships, “Henry contemplates no different
configurations or capabilities resulting from moving allegedly corresponding
modules relative to each other” (App. Br. 6), and thus the combination of
Dunkel and Henry does not teach the limitation of the claim (App. Br. 6-7).
We note, however, that combining Dunkel’s tree ventilation plates 30, 50,
and 52 with Henry’s plug members 800, receiving members 805, and
channels 806 would result in a structure that may be selectively placed in
different maintained relationships, as required by claim 1. Notwithstanding
the above discussion, we also note that Henry does in fact teach numerous
different configurations resulting from the parts being selectively placed in
different maintained relationships (see, for example, Figures 1 and 3 of
Henry).
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Appellant argues that while claim 1 requires removing the plurality of
modules from the site after completing the discrete task, “Dunkel, on the
other hand, appears to teach a permanent placement of components” (App.
Br. 8). We agree with the Examiner, however, that it would have been
obvious to remove the modules when the user no longer wishes to use them
(Ans. 5). Based on the foregoing, we sustain the rejection of claim 1.
With respect to dependent claim 2, Appellant argues that the claim
requires that “there is at least one opening extending fully through the first
module between the top and bottom surfaces that allows water to be directed
therethrough” (App. Br. 9). Pursuant to 37 C.F.R. § 41.50(b), we
denominate our affirmance of claim 2 a NEW GROUND OF REJECTION
under 35 U.S.C. § 103(a). Specifically, we find that to the extent Dunkel
does not teach that the openings in the tree ventilation plates, which
Appellant admits is filled with a porous material, extend fully between the
top and bottom surfaces of the plates, it would be obvious to so-form the
openings to ensure that tree roots under the soil receive adequate water.
With respect to dependent claim 3, Appellant argues “[g]iven the
different environments and function of the systems in Dunkel and Henry, it
would not be appropriate to combine the teachings to provide the ramp
component in Henry in a system such as Dunkel’s” (App. Br. 9). Inasmuch
as we found it appropriate to sustain the rejection of independent claim 1
based on the combination of Dunkel and Henry, we also sustain the rejection
of claim 3.
With respect to claims 5-10 and 30-32, Appellant argues “[e]ach of
these claims requires a connector cooperating between adjacent modules that
allows the modules to be maintained in different relationships as set forth in
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claim 1” (App. Br. 9), and that “[g]iven the different function and purpose of
the Dunkel and Henry systems, it would not be appropriate to combine them
as proposed by the Examiner” (App. Br. 10). Inasmuch as we found it
appropriate to sustain the rejection of independent claim 1 based on the
combination of Dunkel and Henry, we also sustain this rejection.
With respect to dependent claims 11-14, Appellant argues the
rejection is in error for the same reasons as the rejection of claim 1.
Inasmuch as we sustained the rejection of claim 1, we also sustain the
rejection of claims 11-14.
Obviousness rejection of claim 4
With respect to dependent claim 4, Appellant argues that there is no
motivation to modify Dunkel to include a plurality of openings fully through
the modules, as the Examiner states is taught by Spica, because “Dunkel
expressly teaches that the corresponding openings are actually filled with a
material” (App. Br. 11). We agree with the Examiner, however, that it
would have been obvious to combine the openings of Spica, which are
described by Spica’s Abstract as permitting drainage therethrough, with the
combination of Dunkel and Henry used in the rejection of independent claim
1 (Ans. 20).
Obviousness rejection of claim 15
With respect to dependent claim 15, Appellant argues there is no
motivation to modify Dunkel and Henry to include a first module with a
discrete locating projection that is directed through the ground surface with
the first module in the operative state, as the Examiner states is taught by
MacLeod, because
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Dunkel and Henry are directed to systems over
ground that is reasonably hard or compacted.
Consequently, the incorporation of a locating
projection to be directed through a ground surface
would not be practical, whereas with module
placement directly against soil, the locating
projection can be readily inserted to perform a
stabilizing function
(App. Br. 11-12). We disagree with Appellant, and agree that it would have
been obvious to combine the references as proposed by the Examiner to
provide anchorage to the ground (Ans. 21).
DECISION
The decision of the Examiner to reject claims 1-15 and 30-32 is
affirmed. We designate our affirmance of claim 2 as a NEW GROUND OF
REJECTION.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner.…

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.…
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)

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