Ex Parte Stauffer

Patent Trial and Appeal Board

Feb 27, 2019

14718022 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/718,022 05/20/2015
111654 7590 02/27/2019
David William Stauffer
David Stauffer
5334 N Amherst
Portland, OR 97203
FIRST NAMED INVENTOR
David William Stauffer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
6234
EXAMINER
MAESTRI, PATRICK J
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
02/27/2019 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 DAVID WILLIAM STAUFFER
Appeal2019-001664
Application 14/718,022
Technology Center 3600
Before JAMES P. CALVE, BENJAMIN D. M. WOOD, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
Final Decision rejecting claims 1--4. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION in
accordance with 37 C.F.R. § 41.50(b).
Appeal 2019-001664
Application 14/718,022
CLAIMED SUBJECT MATTER
Claim 1 is independent, with claims 2--4 depending therefrom. Claim
1 is reproduced below, reformatted for clarity with emphasis added:
1. A mass transportation system of moving people via water
slides or water troughs between two or more parking structures,
comprising [:]
a first structure and any number of additional parking structures,
including
one structure that is a high-rising parking structure of
many floors, with the preferred embodiment being thirty
floors, in a suburban area and
at least one other parking structure that is a high-rising
parking structure of many floors, with the preferred
embodiment being thirty floors, in a downtown area
a plurality of water slides or water troughs connecting the first
structure and the other structure;
each parking structure having:
a. A dock for arriving skiffs at a lower level, and
b. another dock, for departing skiffs, at a higher level, and
c. a conveyor belt that will take unoccupied skiffs from the
lower level to the higher level to enter the higher level
water troughs that commuters, will use to depart off the
higher level and travel down to lower levels in other
buildings and parking structures, and
d. elevators that stop on each floor and go all the way to the
top floor, and
e. various shops, restaurants, bathrooms around all the
elevator entrances on each floor, and
f. said dock for arriving skiffs being on the third story where
skiffs or small boats that float in from the top of another
parking structure will be placed on a conveyor belt
described in 3., above, and transported to the top floor of
the parking structure so that commuters can go to the top
2
Appeal 2019-001664
Application 14/718,022
floor and embark on them to ride down a water slide or
trough that falls off the top of the parking structure all the
way to a the third lower floor of the another parking
structure, and
g. a drain pipe to transport trough water, that has been
emptied of commuters and skiffs, down to a river for
disposal.
REJECTIONS 1
1. Claim 1 is rejected under 35 U.S.C. § 103 as being unpatentable
over Libbey (US 419,860, issued Jan. 21, 1890), Opatril (US 2009/0142146
Al, published June 4, 2009), and Bacon (US 3,404,635, issued Oct. 8,
1968).
2. Claims 2--4 are rejected under 35 U.S.C. § 103 as being
unpatentable over Libbey, Opatril, Bacon, and Symons (US 3,930,450,
issued Jan. 6, 1976).
OPINION
New Ground of Re} ection
Claim 1 recites "one structure that is a high-rising parking structure of
many floors, with the preferred embodiment being thirty floors" and "at least
one other parking structure that is a high-rising parking structure of many
floors, with the preferred embodiment being thirty floors." We reject claims
1--4 because the recitation of "the preferred embodiment being thirty floors"
makes the claims unclear.
A claim is properly rejected as indefinite if, after applying the
broadest reasonable interpretation in light of the specification, the metes and
1 The rejection under 35 U.S.C. § 112(b) has been withdrawn. Ans. 3.
3
Appeal 2019-001664
Application 14/718,022
bounds of a claim are not clear because the claim contains words or phrases
whose meaning is unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir.
2014) (per curiam); see also Ex parte McAward, Appeal No. 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential)
( adopting the approach for assessing indefiniteness approved by the Federal
Circuit in Packard). Based on the language in claim 1, we do not know
whether the claim is limited to structures having only thirty floors.
The claim additionally recites that commuters "ride down a water
slide or trough that falls off the top of the parking structure all the way to a
the third lower floor of the another parking structure." The reference to "a
the third lower level" makes the claim unclear because we do not know
whether the limitation is intended to refer back to the "lower level" or the
"third story" recited earlier in the claim, or some other level of the parking
structure.
For at least these reasons, we reject claim 1, and claims 2--4
depending therefrom, under 35 U.S.C. § 112(b) as indefinite.
Current Rejections
The Examiner finds that Libbey teaches a number of features recited
in claim 1, including the docks for arriving and departing skiffs and the
conveyor belt to transport the skiffs. Final Act. 4. The Examiner
acknowledges that "Libbey does not teach first and second high-rising
parking structures with elevators that stop on each floor and go all the way
to the top floor, and various shops, restaurants, bathrooms, etc. around all the
elevator entrances on each floor, and a drain pipe." Id. With respect to the
parking structures, for example, "the Examiner gives Official Notice that
multi-story parking structures including mixed use spaces and elevators [are]
4
Appeal 2019-001664
Application 14/718,022
well known in the art" and reasons that "[i]t would have been obvious to one
of ordinary skill in the art to place the transportation system of Libbey on a
multiplicity of parking structures, or any other type of building in order to
transport people from one point to another." Id. The Examiner further
reasons that because "[i]t is common knowledge that railways pass into
buildings that have platforms within the building to make access easier for
residents and patrons ... it would have been obvious to adapt the system of
Libbey to a high-rise building." Ans. 4. Appellant disputes the Examiner's
rationale. See, e.g., Appeal Br. 8.
Libbey describes "a water chute or flume and water-basin for pleasure
purposes, and is particularly adapted for halls, rinks, and summer resorts."
Libbey, 1: 10-13. Figure 1 of Libbey is reproduced below for reference .
.... JIL.
F5L ,JI lbs
Libbey's Figure 1 illustrates "a water chute or flume and water-basin." Id. at
1 :23-24. The Examiner fails to explain sufficiently why one skilled in the
5
Appeal 2019-001664
Application 14/718,022
art, looking at Libbey's "water chute ... for pleasure purposes" and with the
general knowledge of multi-story parking structures would have thought it
obvious "to place the transportation system of Libbey on a multiplicity of
parking structures, or any other type of building in order to transport people
from one point to another" as the Examiner asserts. Final Act. 4. The
Examiner fails to provide a persuasive reason why one skilled in the art
would have used Libbey's water chute in a manner connecting "a high-rising
parking structure of many floors ... in a suburban area" to another "high-
rising parking structure of many floors ... in a downtown area" as recited in
claim 1.
For this reason, we do not sustain the Examiner's decision to reject
claim 1, or claims 2--4 depending therefrom.
DECISION
We REVERSE the Examiner's decision to reject claims 1--4.
We enter a NEW GROUND OF REJECTION of claims 1--4
under 35 U.S.C. § 112(b) as indefinite.
This decision contains a new ground of rejection pursuant
to 37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.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,
6
Appeal 2019-001664
Application 14/718,022
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.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED; 37 C.F.R. § 4I.50(b)
7