Ex Parte Simon

Patent Trial and Appeal Board

Apr 20, 2017

12867236 (P.T.A.B. Apr. 20, 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.
12/867,236 01/19/2011 Thomas Simon 025438-330115 8560
24239 7590 04/24/2017
MOORE & VAN AT .TEN PLLC
P.O. BOX 13706
3015 Carrington Mill Boulevard, Suite 400
Research Triangle Park, NC 27709
EXAMINER
CHU, KATHERINE J
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
04/24/2017 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):
iplaw @ mvalaw. com
u sptomail @ m valaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS SIMON
Appeal 2015-001607
Application 12/867,2361
Technology Center 3600
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the rejection
of claims 1—3, 5, 7—21, and 23. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellant’s claimed “invention relates generally to drainage systems,
and more particularly, to a drainage channel or trench having an inner liner.”
(Spec. 1.)
1 According to Appellant, the real party in interest is ABT, Inc. (Appeal
Br. 1.)
Appeal 2015-001607
Application 12/867,236
Claims 1 and 14 are the independent claims on appeal. Claim 1 is
illustrative. It recites (emphasis added):
1. A drainage channel comprising:
a first barrier for containment; and
a second barrier for containment comprising:
a first spacer bar and a second spacer bar,
a support, said support defining first and second end
portions, said first and second end portions being biased
toward a corresponding side of saidfirst barrier, said first
end portion being secured to said first spacer bar and said
second end portion being secured to said second spacer
bar, wherein said support substantially secures at least a
portion of said second barrier in said first barrier, wherein
said support is formed from a rigid or semi-rigid material,
and
a liner, said liner defining first and second portions,
said first portion positioned around said first spacer bar
and secured to itself, said second portion positioned
around said second spacer bar and secured to itself,
wherein said liner is formed from a flexible material.
REJECTIONS
Claims 1, 2, 5, 7—18, 20, 21, and 23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Thorsby (US 1,180,621, iss. Apr. 25, 1916),
Beamer (US 5,735,638, iss. Apr. 7, 1998), and Rohe (US 5,160,221, iss.
Nov. 3, 1992).
Claims 3 and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Thorsby, Beamer, Rohe, and Suazo (US 7,165,914 B2, iss.
Jan. 23, 2007).
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Appeal 2015-001607
Application 12/867,236
ANALYSIS
Appellant argues that “[independent Claims 1 and 14 each recite that
the first and second end portions of the support 20 are biased toward a
corresponding side of the first barrier. The Office Action is entirely silent
regarding this claim limitation.” (Appeal Br. 8.)
The Examiner answers that
[w]hile the Office Action failed to explicitly state such, the intent
was that the resulting combination would yield this limitation
based on the metal ribs (Thorsby’s supports 8). Appellant further
argues on page 9 of Appeal Brief, “If Thorsby taught this feature
of independent Claims 1 and 14, then the outer clamping
members 8 of Thorsby would be biased away from the flume
section . . However, Examiner respectfully disagrees. Since
it is common that both metal sheets and metal ribs can lay straight
and also be flexible enough to be bent, the biasing would be
based on numerous factors, such as whether the material would
permanently deform, whether -in the case of Thorsby’s sheet
metal flume and ribs/supports- either of the elements has a
greater inclination to lay flat rather than being clamped into a
curve, etc. In the case of Thorsby’s flume, it would not be
difficult to imagine that the sheet metal flume would be likely to
lay flat without the clamps to help the flume hold shape;
therefore, the resulting combination would be biased toward the
first barrier (in the Examiner’s combination, the first barrier is
taught by Beamer’s trench (11)).
(Answer 3, emphasis added.)
As an initial matter, we note that in an obviousness analysis, “[w]hat a
reference teaches or suggests must be examined in the context of the
knowledge, skill, and reasoning ability of a skilled artisan.” Syntex (U.S.A.)
LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). Additionally,
findings of fact must have an adequate evidentiary basis. In re NuVasive,
Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016).
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Appeal 2015-001607
Application 12/867,236
With regard to the claim limitation “biased toward a corresponding
side of said first barrier,” the Examiner merely finds that “it would not be
difficult to imagine that the sheet metal flume [of Thorsby] would be likely
to lay flat without the clamps.” (See Answer 3, emphasis added.) The
Examiner also finds that whether the material in Thorsby would be biased
depends “on numerous factors.” (Id.) However, the Examiner does not
indicate where Thorsby addresses these factors. Thus, it is not clear what
Thorsby would have taught or suggested to a skilled artisan.
Additionally, Appellant argues that if the flume sections of Thorsby
were biased toward the first barrier, then Thorsby’s “‘clamping
members [8]’ ... as clearly shown in Figure 2 are necessarily ‘biased’ or
‘predisposed’ toward the flume sections 1 and 2 in order to clamp the
sections together to form the coupling or joint, not away from the flume
sections.” (Reply Br. 4.) However, it is unclear from Thorsby if the sheet
metal and members 8 are simply circumferentially formed and, therefore,
not biased either toward or away from a corresponding side of the first
barrier. (See id at 3.) Thus, it is not clear why “the resulting combination
would yield this limitation based on the metal ribs (Thorsby’s supports 8).”
(See id.)
In view of the above, we are persuaded that the Examiner has not
presented an adequate evidentiary basis for finding “that the resulting
combination would yield this limitation [“biased toward a corresponding
side of said first barrier”] based on the metal ribs (Thorsby’s supports 8).”
(See Answer 3.)
Further, to the extent the Examiner proposes modifying Thorsby by
removing the clamps (see Answer 3), the Examiner does not provide a
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Appeal 2015-001607
Application 12/867,236
rational underpinning for making such a modification. See KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007), citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
Independent claim 14 contains similar language and for similar
reasons, we are persuaded that the Examiner erred in rejecting claim 14 and
dependent claims 2, 3, 5, 7—13, 15—21, and 23.
DECISION
The Examiner’s rejections of claims 1—3, 5, 7—21, and 23 under
35 U.S.C. § 103(a) are reversed.
REVERSED
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