Ex Parte Shalev et al

Patent Trial and Appeal Board

Apr 28, 2017

13807012 (P.T.A.B. Apr. 28, 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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/807,012 04/24/2013 Shaul Shalev 4280/11 5922
44696 7590 05/04/2017
DR MARKM FRIEDMAN
EXAMINER
Moshe Aviv Tower, 54th Floor, 7 Jabotinsky St. MATTEI, BRIAN DAVID
Ramat Gan, 5252007
ISRAEL ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
05/04/2017 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):
patents @ friedpat. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAUL SHALEV and YORAM SOFRIN
Appeal 2015-003370
Application 13/807,012
Technology Center 3600
Before STEFAN STAICOVICI, AMANDA F. WIEKER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Shaul Shalev and Yoram Sofrin (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 28^48.1 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
i Claims 1—27 have been canceled. Appeal Br. 4.
Appeal 2015-003370
Application 13/807,012
INVENTION
Appellants’ invention relates to “an underground structure configured
for serving as a shelter.” Spec. 1,11. 27—28.
Claims 28, 38, and 43 are independent. Illustrative claim 28 reads as
follows:
28. An underground structure configured for serving at least
as a shelter, the structure having at least one substantially
cylindrical portion, the substantially cylindrical portion
comprising:
(a) weight to area ratio of casing of the cylindrical
portion being in the range of 8 to 30 kg /m2;
(b) the cylindrical casing having a strength level and an
impermeability level for serving as part of an envelope of a
sealable underground liquid storage tank;
(c) said cylindrical portion being configured to be placed
underground in a substantially horizontal position; and
(d) the cylindrical casing includes at least one opening
which enables sealable connection to at least one space external
to the casing and accessing of human beings and property into
and out of the cylindrical portion.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 28—30, 34, 36, and 38 42 under
35 U.S.C. § 103(a) as unpatentable over Bauman
(US 5,749,181, iss. May 12, 1998) and Warren
(US 2006/0010830 Al, pub. Jan. 19, 2006).
II. The Examiner rejected claims 43^48 under 35 U.S.C. § 103(a)
as unpatentable over Wade (US 4,128,204, iss. Dec. 5, 1978)
and Bauman.
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Application 13/807,012
III. The Examiner rejected claims 31,35, and 37 under 35 U.S.C.
§ 103(a) as unpatentable over Bauman, Warren, and Wade.
IV. The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as
unpatentable over Bauman, Warren, and Chandler
(US 6,385,920 Bl, iss. May 14, 2002).
V. The Examiner rejected claim 33 under 35 U.S.C. § 103(a) as
unpatentable over Bauman, Warren, and Danna (US 5,479,738,
iss. Jan. 2, 1996).
ANALYSIS
Rejection I
Appellants argue for patentability of claims 28—30, 34, 36, and 38 42
together as a group. Appeal Br. 7—10.2 3We select claim 28 as
representative, and claims 29, 30, 34, 36, and 38-42 stand or fall with claim
28. See 37 C.F.R. § 41.37(c)(l)(iv) (2016).
For claim 28, the Examiner finds Bauman discloses the recited
structures, but “does not specifically disclose the weight to area ratio of [the]
casing of the cylindrical portion being in the range of 8 to 30 kg/m2.” Final
Act. 2—3. Appellants do not challenge these findings. Appeal Br. 7—10.
In addition, the Examiner finds “Warren teaches that when building
panels for forming structures in geological unstable surfaces or in wet areas
to make the panels such that they have a weight of 193 kg for a panel of
2 Although Appellants argue that dependent claims 30 and 41 are separately
patentable in their Appeal Brief, at pages 10-11, Appellants withdraw this
argument in the Reply Brief, at page 3. As a result, we will not address
separately the arguments made for claims 30 and 41.
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Application 13/807,012
9.9 m which is a ratio of 19.475 kg/m2.” Final Act. 3 (citing Warren || 2,
11, 60). In view of Warren’s disclosure, the Examiner determines,
[i]t would have been obvious to one of ordinary skill in the art at
the time the invention was made to make the panels as disclosed
by Bauman out of the panels and material as taught by Warren in
order to provide good strength while not being too heavy to
easily transport, which are consistent with the goals of Bauman
as stated in column 4, lines 22-26.
Id. This determination, Appellants argue, is flawed because it is “not even
possible[] to make the casing of the cylindrical body of Bauman from the
panels of Warren” and, as such, “the suggested combination of Bauman and
Warren is inoperative.” Appeal Br. 7.
In response, the Examiner explains persuasively that the rejection and
its rationale
is not substituting the panels of Bauman with the panels of
Warren as suggested by the [A]ppellant[s], but stating that
Warren teaches a panel having the weight to area ratio within the
range and that forming the panels of Bauman within the specified
ratio would have been obvious to one of ordinary skill in the art.
... Bauman states in column 4, lines 22-26 that being lightweight
is a desirable characteristic in order to prefabricate the structure
off-site and deliver it to the desired location. The Warren
reference teaches forming a panel with a weight to area ratio
within the range as required in the claim, therefore disclosing that
said range of weight to area ratio of panels is known to one of
ordinary skill in the art. Thus, specifying the weight to area ratio
of the panels of Bauman to be within 8 to 30 kg/m2 would have
been obvious to one of ordinary skill in the art. Moreover, it has
been held where the general conditions of a claim are disclosed
in the prior art (the general conditions in this case being the same
material), discovering the optimum or workable ranges involves
only routine skill in the art.
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Application 13/807,012
Ans. 2—3. We note further, at paragraph 60, Warren evidences that skilled
artisans at the time of the invention recognized a structure with a weight to
area ratio of 19.475 kg/m2 provides “a reasonable weight and consequently,
reasonable handling capability.”
Appellants argue the Examiner’s rationale improperly relies on “one
of ordinary skill in the art to pick up the weight of the panels of Warren and
install it in Bauman,” which “may be done only if one separates the weight
from the structure.” Reply Br. 3. We do not agree. The Examiner properly
relies on Warren’s disclosure to evidence what a skilled artisan knew to be a
reasonable weight to area ratio and cogently explains why the same skilled
artisan would have known to select a similar weight to area ratio for the
cylindrical casing of Bauman. Appellants’ focus on the particular material
Warren discloses, and its specific manufacture, is unpersuasive because the
Examiner’s rejection does not rely on such features. Instead, the Examiner
correctly relies on the more general teaching Warren provides, which is that
a skilled artisan would have recognized the claimed weight to area ratio
provides good strength while not being too heavy to easily transport.
Warren | 60.
Appellants also assert a cylindrical casing portion within the claimed
range “is a surprising feature which necessitates a sophisticated and novel
construction method.” Appeal Br. 10. The claims, however, are not directed
to this alleged novel method of construction and Appellants do not direct us
to any teachings in the Specification to support this assertion. Moreover,
after reviewing the Specification, we are unable to find any teaching of a
“novel construction method” that enables the cylindrical casing portion to
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Application 13/807,012
have a weight to area ratio within the claimed range. Contrarily, Appellants’
Specification simply states the cylindrical portion has the claimed range of
weight to area ratio, which “allows the casing total weight to range between
few hundred kilograms to very few tons depending on the shelter’s exact
specs and dimension.” Spec. 3,11. 27—29, 9,11. 12—18. Appellant’s
Specification, therefore, suggests that such a method was already known.
Thus, Appellants’ arguments are not persuasive because they are
unsupported and not commensurate with the scope of the claims.
For the above reasons, we are not persuaded of error with the
Examiner’s determination claim 28 would have been obvious because it is
supported by articulated reasoning with rational underpinning, which
Appellants have not persuasively rebutted. Therefore, we sustain the
Examiner’s rejection of claim 28, as well as, the rejection of claims 30, 34,
36, and 38—42, which fall with claim 28.
Rejections II
Regarding claims 43—48, the Examiner finds the combination of Wade
and Bauman discloses the limitation of independent claim 43 of “a container
[10] configured for underground burial at certain depth while being human
accessible through passageways, said certain depth being in accordance with
a required temperature of a geo-thermal reservoir based on surrounding
ground.” Final Act. 5—6. The Examiner further explains that the combined
teachings of Wade and Bauman satisfy this limitation because they disclose
an apparatus that is capable o/being placed underground at any acceptable
depth. Ans. 4.
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Application 13/807,012
Appellants point out that neither Wade nor Bauman disclose burying
the apparatus to a depth in accordance with a required temperature of a geo­
thermal reservoir based on surrounding ground, as claim 43 requires.
Appeal Br. 11—12. Appellants’ argument is persuasive.
The Federal Circuit has held that, when “configured to” is used to
describe the construction of an apparatus, rather than simply a functional
characteristic, it requires more than simply point to a structure that is
capable o/being used in the claimed manner. In re Giannelli, 739 F.3d
1375, 1380—81 (Fed. Cir. 2014). Claim 43 recites, “a container configured
for underground burial. . . while being human accessible through
passageways” and further defines the depth as, “in accordance with a geo­
thermal reservoir based on surrounding ground.” Appeal Br. 19—20 (Claims
App., filed Oct. 1, 2014). The Specification states,
[t]he casing has a strength level and an impermeability level for
serving as part of an envelope of a sealable underground liquid
storage tank. Cylindrical portion 400 is configured to be placed
underground in a horizontal position.
Spec. p. 9,11. 21—23. In the context of claim 43, and the Specification, the
term “configured for” is used to describe the construction of the container.
The relevant question, therefore, is whether the container described in
Wade, in view of Bauman, is constructed (designed) for underground burial
at the claimed depth. Id. at 1381. The Examiner has not established that it
is, by a preponderance of the evidence, to support an affirmative answer to
this question for the Wade/Bauman container. While Wade teaches the use
of a geo-thermal reservoir, it does so in the context of a foundational
supportive structure located beneath the shelter (i.e., container). Wade, col.
4,11. 18—32. The shelter of Wade is not manufactured for underground
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Application 13/807,012
burial at any level as it includes door 17 for providing entrance and exit to
the interior of container 10. See id. col. 5,11. 34—57. As such, the
Examiner’s reliance on Wade as proof that the Wade/Bauman container is
manufactured (designed) to be underground at a depth in accordance with a
required temperature of a geo-thermal reservoir based on surrounding
ground is misplaced and unsupported by a preponderance of the evidence.
Therefore, we do not sustain the Examiner’s rejection of claims 43 48.
Rejections III V
Appellants do not present any substantive arguments with respect to
Rejections III—V. See Appeal Br. 7—12. Therefore, we summarily sustain
Rejections III—V.
DECISION
We affirm the Examiner’s decision to reject claims 28-42 and reverse
the Examiner’s decision to reject claim 43 48.
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).
AFFIRMED-IN-PART
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