Ex Parte Smith

Patent Trial and Appeal Board

Aug 29, 2013

11999773 (P.T.A.B. Aug. 29, 2013)

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.
11/999,773 12/07/2007 Troy A. Smith GREC,002 2189
7590 08/30/2013
Mark R. Wisner
c/o Wisner & Associates
Suite 400
1177 West Loop South
Houston, TX 77027
EXAMINER
FIORELLO, BENJAMIN F
ART UNIT PAPER NUMBER
3672
MAIL DATE DELIVERY MODE
08/30/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TROY A. SMITH
____________________

Appeal 2011-007219
Application 11/999,773
Technology Center 3600
____________________

Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

WEATHERLY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134 from the decision of the
Examiner rejecting claims 1-28. Claim 29 is withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal 2011-007219
Application 11/999,773

2
The claims are directed to methods for reclaiming hydraulically
dredged material. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of reclaiming hydraulically dredged
virgin cut earthen material including clays and silts for
use as structural fill comprising the steps of:
constructing a dredge reclamation area (DRA)
including a material holding area into which dredged
virgin cut earthen material including clays and silts is
deposited by hydraulic dredging operations;
dewatering material deposited into the material
holding area;
drying clays deposited in the material holding area
by a combination of exposure to ambient conditions and
mechanical manipulation; and
drying the dewatered silts by a combination of
exposure to ambient conditions and mechanical
manipulation, and/or by mixing with the dried clays, until
the resulting material meets industry standards for use as
structural fill.
REFERENCES
The Examiner relies upon the following evidence:
Fahey
Wilson
US 5,356,452
US 6,119,375
Oct. 18, 1994
Sep. 19, 2000

Appellant’s admitted prior art described in Appellant’s Specification
as set forth in the “Background of the Invention” section and Figure 1 along
with the accompanying text (“APA”).
REJECTIONS
Appellant seeks our review of the following rejections:
Appeal 2011-007219
Application 11/999,773

3
1. Claims 2-4, 17, and 22 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Ans. 3-4.
2. Claims 1, 5-16, 18, 20, 21, 24, 25, and 28 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Wilson and APA.
Ans. 4-7.
3. Claims 2-4, 17, 19, 22, 23, 26, and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wilson, APA, and Fahey.
Ans. 7-8.
4. Claims 16, 21, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over APA. Ans. 8-9.1
OPINION
Indefiniteness of claims 2-4, 17, and 22
The Examiner rejects dependent claims 2-4, 17, and 22 as indefinite
under § 112, second paragraph, based on apparent conflicts between the
requirements of these claims and claim 1.2 Ans. 4. Regarding claims 2 and

1 The Examiner withdrew the rejection under 35 U.S.C. § 102(b) of claims
16, 21, and 25 as anticipated by APA and entered this new ground of
rejection under 35 U.S.C. § 103. We discern no evidence that Appellant
responded to this new ground of rejection as required under 37 C.F.R.
§ 41.39(b). Therefore, we sua sponte dismiss this appeal with respect to
claims 16, 21, and 25.
2 We reverse the Examiner based on an improper interpretation of claim 1.
However, we note that true inconsistencies in dependent claims of the type
identified by the Examiner typically do not result in indefiniteness under
§ 112, second paragraph. Rather such inconsistencies could render the
dependent claim unpatentable under § 112, fourth paragraph, for failing to
recite additional limitations on the claim(s) upon which they depend. E.g.,
Pfizer, Inc. v. Ranbaxy Laboratories Ltd., 457 F.3d 1284, 1292 (Fed. Cir.
2006).
Appeal 2011-007219
Application 11/999,773

4
4, the Examiner determines that “clays are dried separate from the DRA, yet
claim 1 requires the clays be dried in the material holding area (defined as
within the DRA) contradicting claim 1.” Id. Similarly, regarding claims 3,
17, and 22, the Examiner determines “silts are dried separate from the DRA
or HDDA, yet their respective independent claim requires the silts be dried
in the material holding area (defined as within the ORA) contradicting said
independent claim.” Id.
Appellant contends that the Examiner erred by construing claim 1 to
require that clays or silts must be dried in the DRA. Br. 4-5. Appellant
states:
Although the third element of claim 1 recites that clays
deposited into the material holding area are dried, it does not
recite that drying is accomplished in the material holding area.
To the contrary, . . . claim 1 does not say anything about where
the clays are dried, and it is therefore inappropriate to read
claim 1 to require that clays must be dried in the material
holding area.
Id. at 4.
We agree with Appellant. The third element of claim 1 recites,
“drying clays deposited in the material holding area by combination of
exposure to ambient conditions and mechanical manipulation.” Because of
the open-ended nature of claims, any number of additional steps may
precede the recited drying step, including a step of moving the clays to a
“material processing area separate from the DRA” so that the clays can be
dried in that separate area. The same logic applies to the Examiner’s
analysis of silts being dried in a separate area as recited in claims 3, 17, and
22. See Br. 5. Therefore, we reverse the rejection under § 112, second
paragraph, of claims 2-4, 17, and 22.
Appeal 2011-007219
Application 11/999,773

5
Obviousness of claims
1, 5-16, 18, 20, 21, 24, 25, and 28 over Wilson and APA
Appellant argues for reversing the rejection of independent claim 1
over Wilson and APA without proffering any argument for reversing the
rejection of independent claims 16, 21, and 25. Appellant asserts that
“rejections of claims 1, 5-16, 18, 20-21, 24-25, and 28 under § 103 are
addressed separately under the corresponding subheadings in the following
sub-paragraphs.” Br. 10. We do not address claims 16, 21, and 25 because
they are dismissed from the appeal. To the extent that Appellant presents
separate arguments for reversing individual claims, we address each
argument below.
1. Claims 1 and 11-13
The Examiner finds that Wilson describes all limitations of
independent claim 1 except for a “hydraulic dredging operation reclaiming
virgin cut material containing silts and clays.” Ans. 12. The Examiner
finds, however, that APA “discloses it is known to use hydraulic dredging”
to reclaim silts and clays. Id. Based on the combined teachings of Wilson
and APA, the Examiner reasons:
The process of hydraulically dredging material to a
holding area for drying is well known, as taught by Wilson. If
an artisan of ordinary skill was presented with the problem as to
how to dry virgin cut material, the artisan would readily turn to
Wilson as Wilson utilizes a similar technique. One of ordinary
skill in the art would have been capable of applying this known
method to Wilson and the results would have been predictable
to one of ordinary skill in the art.
Id. at 5.
The Examiner later summarizes the rationale underlying the conclusion of
obviousness as follows:
Appeal 2011-007219
Application 11/999,773

6
The examiner contends Wilson discloses the appellant’s
claimed invention substantially as claimed. Wilson discloses
hydraulic dredge operations reclaiming spoil. The only
limitation Wilson fails to explicitly state is hydraulic dredging
operation reclaiming virgin cut material containing silts and
clays. As noted in the final action, applicant’s admitted art
discloses it is known to use hydraulic dredging operation
reclaiming silts and clays. The examiner contends that a person
of ordinary skill in the art would have a reasonable expectation
of success if employing the method to Wilson to reclaim silt
and clays.
Id. at 12.
Thus, we understand the Examiner to have reasoned that using Wilson’s
techniques to dry clays and silts constitutes nothing more than using well
known methods to yield predictable results.
First, Appellant argues that a skilled artisan would not look to Wilson
to learn how to manipulate virgin cut material that is deposited into a pit by
hydraulic dredging in order to dry that material. Br. 11. Appellant contends
that Wilson describes depositing “spoil” by hydraulic dredging that is so
different from clays and silts that special amphibious excavating equipment
is required. Id. Next, Appellant argues that because Wilson “lacks any
mention of clays and/or silts . . . it is clear that Wilson does not suggest that
[Wilson] can, could, or should be combined with the [APA]” in the manner
recited in claim 1. Id. at 12.
Appellant’s arguments are unpersuasive because Appellant fails to
address the rejection as articulated by the Examiner. The Examiner relies
upon APA, not Wilson, to establish that it was well known at the time of the
alleged invention that dredged material containing clay and silt would
separate into clay and silt when deposited in a disposal area. Ans. 5 (citing
Spec., 4:25-30); see also Ans. 11 (citing Spec., 5:30–6:3). Wilson is relied
Appeal 2011-007219
Application 11/999,773

7
upon as describing methods for dewatering and drying dredged material
deposited in such a disposal area. Ans. 4-5; see also Ans. 12-13. Wilson not
only describes specialized equipment with flotation tires for excavating
Wilson’s containment area 10 (Ans. 12 (citing Wilson, 4:65–5:23), but also
using excavating equipment without flotation tires after enough water has
been removed (Ans. 12 (citing Wilson, 5:17-23)).
For these reasons, we affirm the rejection of claim 1. Appellant
proffers no separate argument for reversing the rejection of dependent
claims 11-13, which are subject to the same rejection as claim 1. Br. 10.
Therefore, we also affirm the rejection of claims 11-13.
2. Claim 5
Claim 5 depends upon claim 1 and further recites that “the clays are
dried within the DRA.” Appellant argues for reversing the rejection because
Wilson’s spoil contains no clays to dry. Br. 13. Appellant’s argument is
unpersuasive because it does not address the rejection as articulated by the
Examiner. The Examiner relies upon APA as describing depositing material
including clays into a holding area. Ans. 13. Therefore, we affirm the
rejection of claim 5.
3. Claims 6 and 8
Claims 6 and 8 depend indirectly upon claim 1 and recite the
additional step of “excavating to subgrade within the DRA and placing the
dried clay on the subgrade in lifts to fill the excavated area.” Appellant
argues that the combination of Wilson and APA fails to describe this
additional step. Br. 13-14. In rejecting claims 6 and 8, the Examiner takes
official notice in finding that “it is well known in the art to fill an excavated
Appeal 2011-007219
Application 11/999,773

8
area with the original fill excavated from the area.” Ans. 5. Appellant
contends that even if this were true, the Examiner has failed to identify any
teaching in Wilson or APA of using the dried material that was originally
deposited by hydraulic dredging. We agree with Appellant and reverse the
rejection of claims 6 and 8.
4. Claims 7, 9, and 18
Claims 7 and 9 depend upon claims 6 and 8 respectively and further
recite “the silts are dried on the dried clay.” Claim 18 recites the same
limitation, but depends indirectly upon independent claim 16. Appellant
argues that Wilson and APA fail to describe drying silts on dried clays.
Br. 14. The Examiner states without support or rationale that “it would be
obvious to one of ordinary skill in the art that one may dry the silts on top of
the dried clay.” Ans. 6.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citing In re
Lee, 277 F.3d 1338, 1343-46 (Fed. Cir. 2002); In re Rouffet, 149 F.3d 1350,
1355-59 (Fed. Cir. 1998)). “To facilitate review, this analysis should be
made explicit.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing
Kahn, 441 F.3d at 988). The Examiner has not provided sufficient reasoning
with rationale underpinning to support a conclusion of obviousness.
Therefore, we reverse the rejection of claims 7, 9, and 18 for this reason.
Appeal 2011-007219
Application 11/999,773

9
5. Claim 10
Claim 10 depends directly or indirectly upon claims 8 and 9. We have
reversed the rejection of claims 8 and 9 for the reasons expressed above. For
the same reasons, we reverse the rejection of claim 10.
6. Claim 14 and 15
Claim 14 depends upon claim 1 and recites “[t]he structural fill
processed in accordance with the method of claim 1.” Appellant notes that
claim 14 is a product-by-process claim. Appellant argues that claim 14 is
patentable because the material dried using Wilson’s methods, even when
those methods are used on material containing clay and silt, does not
constitute “structural fill.” Br. 15-16. The Examiner finds that Wilson
describes using dried material recovered from its dredging operation to
“build up” the berm surrounding Wilson’s containment area, which
constitutes using that material as structural fill. Ans. 14. We agree .
Appellant’s contention that the material deposited on Wilson’s berm is not
“structural fill” is unsupported by evidence and therefore unpersuasive.
Accordingly, we affirm the rejection of claim 14.
7. Claim 15
Claim 15 depends upon claim 14. Appellant argues for reversing the
rejection of claim 15 on the same grounds proffered for reversing the
rejection of claim 14. Br. 16. We affirm the rejection of claim 14 for the
reasons expressed above. For the same reasons, we also affirm the rejection
of claim 15.
Appeal 2011-007219
Application 11/999,773

10
8. Claims 20, 24, and 28
Claims 20, 24, and 28 depend upon independent claims 16, 21, and 25
respectively and further recite that “the mixed clays and silts are dried to
95% standard proctor with moisture content to 2% +/- of optimum moisture
or better.” The Examiner finds that a skilled artisan would have found it
obvious to optimize the moisture content of the dried materials because
“discovering the optimum or workable ranges involves only routine skill in
the art.” Ans. 7 (citing In re Aller, 220 F.2d 554 (CCPA 1955)). Appellant
concedes that “if there was prior art that disclosed materials that are capable
of being dried [as claimed], this rejection could then be based on the holding
of the Aller decision.” Br. 16. Appellant contends that “the ‘spoil’
described in Wilson contains no clays that would make it suitable for drying
and/or processing to the physical properties recited in . . . claims 20, 24, and
28.” Id. at 16-17. However, we agree with the Examiner’s finding that the
combination of Wilson and APA describes drying clays and silts as recited
in these claims. Therefore, we affirm the rejection of claims 20, 24, and 28.
Obviousness of claims
2-4, 17, 19, 22, 23, 26, and 27 over Wilson, APA, and Fahey
1. Claims 2, 3, 17, and 22
The Examiner finds that Wilson and APA describe the methods
recited in claims 2, 3, 17, and 22 substantially as claimed except for drying
the clays and silts in an area separate from the DRA. Ans. 7. The Examiner
finds that Fahey describes “that the material is in a separate area” and that
drying will occur inherently. Id. (citing Fahey, Fig. 6). The Examiner
reasons that it would have been obvious to a skilled artisan to dry material in
a separate area if the DRA were full. Id. at 8.
Appeal 2011-007219
Application 11/999,773

11
Appellant argues that Fahey fails to describe the claimed method of
using a separate area to dry any materials much less clays or silts. Br. 17.
Appellant also argues that a skilled artisan would not be motivated to
combine teachings from Fahey with Wilson because Fahey relates to
handling “garbage and waste material” in landfills and thus provides no
useful information to an artisan in hydraulic dredging operations. Id. We
agree with Appellant on both points.
Fahey never describes any method for dewatering or drying materials
in areas separated from the original processing area. Instead, Fahey
describes methods for handling and reclaiming garbage in substantially
identical processing cells 12-30. Fahey, 2:61-3:8, Figure 1. Garbage is fully
processed in a single cell and not moved between cells. Fahey, 3:54-5:24.
During processing in a cell, Fahey contemplates adding water to aid
decomposition. Fahey, 4:62-65. Fahey’s Figure 6, upon which the
Examiner solely relies, illustrates the separation of non-biodegradable
material (e.g., metals, glass, rubber, and plastic) from lumus or dirt after the
combined material has been processed in one of the processing cells 12-30.
Fahey, 5:25-44. We conclude that Fahey fails to describe moving any
materials from one area to another for drying. Accordingly, we reverse the
Examiner’s rejection of claims 2, 3, 17, and 22.
2. Claims 4, 19, 23, 26, and 27
Claims 4, 19, 23, 26, and 27 recite various methods of drying clays
and/or silts in areas separate from the DRA. For the same reasons expressed
above, we conclude that Fahey fails to provide any teaching regarding the
use of separate areas to dry any materials. Therefore, we also reverse the
rejection of claims 4, 19, 23, 26, and 27.
Appeal 2011-007219
Application 11/999,773

12
Obviousness of claims 16, 21, and 25 over APA
The rejection under § 103 of claims 16, 21, and 25 over APA is a new
ground of rejection. Ans. 8-9. In order to avoid sua sponte dismissal of the
appeal regarding claims 16, 21, and 25, Appellant must exercise one of two
options within two months from the date of the Examiner’s Answer. 37
C.F.R. § 41.39(b). Appellant must either (1) reopen prosecution by filing a
reply under 37 C.F.R. § 1.111 or (2) maintain the appeal by filing a reply
brief. 37 C.F.R. § 41.39(b)(1)–(2). Finding no evidence that Appellant
timely exercised either option, we dismiss the appeal of claims 16, 21, and
25.
DECISION
For the reasons stated above, we:
1. DISMISS the appeal of claims 16, 21, and 25;
2. REVERSE the Examiner’s rejection of claims 2-4, 17, and 22 under
35 U.S.C. § 112 second paragraph as being indefinite;
3. AFFIRM the Examiner’s rejection of claims 1, 5, 11-15, 20, 24, and
28 under 35 U.S.C. § 103(a) as being unpatentable over Wilson and
APA;
4. REVERSE the Examiner’s rejection of claims 6-10 and 18 under 35
U.S.C. § 103(a) as being unpatentable over Wilson and APA; and
5. REVERSE the Examiner’s rejection of claims 2-4, 17, 19, 22, 23, 26,
and 27 under 35 U.S.C. § 103(a) as being unpatentable over Wilson,
APA, and Fahey.

Appeal 2011-007219
Application 11/999,773

13
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)(iv).

AFFIRMED-IN-PART

Klh