Ex Parte Storrer et al

Patent Trial and Appeal Board

Nov 9, 2017

10785383 (P.T.A.B. Nov. 9, 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.
10/785,383 02/24/2004 Ernest J. Storrer 206306-1003-101 6508
16579 7590
Foster Pepper PLLC
1111 3rd Avenue Suite 3000
Seattle, WA 98101-3296
EXAMINER
YUEN, JESSICA JIPING
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
11/14/2017 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 @ foster.com
kristine. springer @ foster.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERNEST J. STORRER and ERIC SEAN STORRER
Appeal 2017-002063
Application 10/785,3831
Technology Center 3700
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 43—54. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellants, the “invention relates generally to systems
and devices for removing unwanted and harmful moisture from wet and/or
water damaged structures using positive and negative pressure sources.”
1 According to Appellants, “[t]he real party in interest... is INJECTIDRY
SYSTEMS, INC.” Appeal Br. iii.
Appeal 2017-002063
Application 10/785,383
Spec. 1,11. 20—22. Claims 43, 48, and 51 are the independent claims on
appeal. Below, we reproduce claim 43 as illustrative of the appealed claims.
43. An apparatus attachable to a vacuum source for
removing moisture from a building structure, the apparatus
comprising:
a grid having a first plurality of members arranged in a first
direction and a second plurality of members arranged in a second
direction, the second plurality of members supported on the first
plurality of members to form a three-dimensional structure that
permits efficient air and moisture flow through the structure and
laterally over a surface of the building structure, the first
direction different from the second direction, the grid
configurable to be placed on at least a portion of the building
structure;
a tunnel-shaped plate supportable on a portion of the grid,
the plate having at least one vacuum attachment port to permit
fluid communication between the building structure and a
vacuum source; and
an impermeable membrane placed over the grid and plate,
the membrane extending past a periphery of the grid and sealed
relative to the building structure and the at least one vacuum
attachment port.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. claims 48—54 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement;
II. claim 48 under 35 U.S.C. § 102(b) as anticipated by Jamagin
(US 4,798,034, iss. Jan. 17, 1989);
III. claims 48—50 under 35 U.S.C. § 102(b) as anticipated by Smith
(US 5,155,924, iss. Oct. 20, 1992);
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IV. claims 51, 52, and 54 under 35 U.S.C. § 102(b) as anticipated
by Wenander (US 4,203,714, iss. May 20, 1980);
V. claims 51—54 under 35 U.S.C. § 102(b) as anticipated by
Komata (JP 08042148 A, pub. Feb. 13, 1996);
VI. claims 51— 54 under 35 U.S.C. § 102(b) as anticipated by
Creskoff (US 3,506,747, iss. Apr. 14, 1970);
VII. claims 49 and 50 under 35 U.S.C. § 103(a) as unpatentable over
Jamagin and Romer (US 4,660,333, iss. Apr. 28, 1987);
VIII. claims 43 and 45—47 under 35 U.S.C. § 103(a) as unpatentable
over Wenander, and either Ferrand (US 3,150,029, iss. Sept. 22,
1964) or De Winter (US 3,811,287, iss. May 21, 1974), and
Creskoff; and
IX. claim 44 under 35 U.S.C. § 103(a) as unpatentable over
Wenander, and either Ferrand or De Winter, Creskoff, and
Rountree (US 1,713,398, iss. May 1, 1929).
ANALYSIS
Rejection I
Based on our review, Appellants persuade us that the Examiner errs in
rejecting claims 48—54 as failing to comply with the written description
requirement. Thus, for the reasons discussed in detail below, we do not
sustain the rejection.
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact, and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
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Application 10/785,383
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But, the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellants were in
possession of the claimed invention. See id.
With respect to independent claim 48, from which each of claims 49
and 50 depend, the Examiner determines that Appellants’ Specification
does not disclose anything about the claim limitations regarding
“the first and second surface being configured to form a sealed
chamber bounded [by] the wall and the floor portions in response
to the application of negative pressure to the hose port by the
vacuum source[.]” . . . Page 27, lines 9-17 [and] page 28,
lines 10—17 [of Appellants’ Specification], and [Appellants’]
Fig[ure] 7[,] do not disclose a sealed chamber.
Answer 10. Claim 48 recites, in relevant part, an apparatus attachable to a
vacuum source for removing moisture from a building structure, which
includes first and second surface configured to form a sealed chamber
bounded by the wall and floor portions in response to application of negative
pressure to a hose port by a vacuum source. Appellants state that page 14,
lines 7—20, of the original Specification provides support for claim 48’s
recitation directed to sealing. See Appeal Br. viii. Based on our review, it
appears that this portion of Appellants’ Specification does provide support
for the claimed sealing. See, e.g., Specification 14,11. 18—20 (“Atop the grid
is situated a special vacuum plate. On the top of the plate will be barbs that
will penetrate the plastic sheeting or other membrane. The perimeter is then
sealed with convenient sealing means, such as with 2” wide painter’s tape or
plastic shrink-wrap tape.”). The Examiner does not explain why page 14 of
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Appellants’ Specification fails to provide support for the claimed sealing.
Thus, we do not sustain the rejection on this basis.
With respect to independent claim 51, from which claims 52—54
depend, the Examiner determines that
[Appellants’ original] specification of [February 24, 2004] only
discloses a grid having two planes to allow air and moisture to
travel. The [Specification does not describe anything about a
planar grid to provide a space between the membrane and the
hard floor surface to be dried through which air and moisture
may pass vertically and laterally[, as claimed].
Answer 10-11. Independent claim 51 recites, in relevant part, a hard floor
drying system including a grid associated with a lower side of a water-
impermeable membrane, the grid configured to provide a space between the
membrane and the hard floor surface to be dried through which air and
moisture may pass vertically and laterally. Appellants identity pages 14 and
24 of their Specification (i.e., paragraphs 44, 90, and 93 of their published
patent application) as providing support for the claim recitation directed to
moving air and moisture vertically and laterally. See Appeal Br. 8. Based
on our review, it appears that these portions of Appellants’ Specification do
provide support for the claimed air and moisture movement. See, e.g.,
Specification 24,11. 18—19 (“Irregular extruded grid to allow air and
moisture to move vertically and laterally between two surfaces, one flat and
firm and the other conforming to grid surface.”). The Examiner does not
explain why the cited portions of Appellants’ Specification fail to provide
support for the claimed air and moisture movement. Instead, the Examiner
indicates that Appellants “fail[ ] to explain and clarify . . . what the structure
of this newly claimed grid configuration is.” Answer 11. Regardless,
inasmuch as Appellants appear to describe in their original Specification
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structure that is configured to move air and moisture vertically and laterally,
and the Examiner does not explain why the portions of the Specification on
which Appellants rely fail to provide support for the claimed air and
moisture movement, we do not sustain the rejection on this basis.
Also with respect to independent claim 51 and its dependent
claims 52—54, the Examiner determines that
[t]he claimed limitation regarding “a hard floor” ... constitute^]
new matter[,] which ... is not supported by the originally[—Jfiled
[Specification of [February 24, 2004], The original
[Specification does not describe anything about [a] “hard floor.”
The claimed “hard floor” is a broader term [than what is
described in the Specification], The claimed “hard floor” does
not limit the claim to the disclosed tile, marble, [and] slate
floor[s] [discussed in Appellants’ Specification], It includes
other hard floor[s] not disclosed[,] such as a bamboo floor.
Answer 10. Based on our review, however, we agree with Appellants that
their original Specification’s disclosure of “quarry tile, marble, and other
surfaces that include grout,” as well as “hardwoods, [and] other floors such
as tile, slate floors, concrete and other semi-permeable hard surfaces,”
reasonably conveys to one of ordinary skill that the inventors had possession
of a “hard floor” drying system, as claimed in claim 51, at the time the
application was filed. Appeal Br. 3^4 (citation omitted). Thus, we do not
sustain the rejection on this basis.
Rejection II
Independent claim 48 recites, in relevant part, an apparatus attachable
to a vacuum source for removing moisture from a building structure, the
apparatus including first and second surfaces configured to form a sealed
chamber bounded by wall and floor portions in response to application of
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negative pressure to a hose port by the vacuum source, the sealed chamber
configured to extract moisture from the wall and floor portions upon
application of the negative pressure. Appellants argues that the rejection is
in error because
[i]n Jamagin, it is gravity (not vacuum or negative pressure) that
drains the fluids from the upper structure, thence [into] the well.
Only after the fluids have collected into the well, does any
vacuum or negative pressure play any role in the movement of
the water out of the well, and plays no role whatsoever in moving
the water out of the structure above.
Appeal Br. 5—6 (citation omitted). Based on our review, we agree with
Appellants’ understanding of Jamagin. See, e.g., Jamagin col. 5,11. 2—8.
Conversely, although we have reviewed the Examiner’s findings and
determinations (see, e.g., Answer 11—12), the Examiner does not
demonstrate that Jamagin discloses a sealed chamber that is configured to
extract moisture from wall and floor portions upon application of the
negative pressure. Thus, we do not sustain this rejection.
Rejection 111
As set forth above, independent claim 48 recites, in relevant part, an
apparatus attachable to a vacuum source for removing moisture from a
building stmcture, the apparatus including first and second surfaces
configured to form a sealed chamber bounded by wall and floor portions in
response to application of negative pressure to a hose port by the vacuum
source, the sealed chamber configured to extract moisture from the wall and
floor portions upon application of the negative pressure. Appellants argue
that the rejection is in error because
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Smith discloses only [a] positive pressure blower system. . . .
Smith . . . fails in any manner to so much as even include the
terms ‘vacuum,’ ‘negative pressure,’ ‘suction,’ or the like. As
such, it is respectfully submitted that the Examiner’s insistence
that Smith teaches a vacuum system is completely contradicted
by the facts.
Appeal Br. 7. We have reviewed the Examiner’s findings and
determinations (see, e.g., Answer 12—13), including Smith’s column 3. Yet,
the Examiner does not demonstrate that Smith discloses extracting moisture
from wall and floor portions upon application of a negative pressure.
Instead, it seems clear that Smith does, indeed, rely on “blower 20 [to]
force[] dry air through ... air duct 30 and air diverter 40 into and through
the water-damaged floor through the existing floor flutes 17” (Smith col. 3,
11. 1—3). Even though Smith discloses that “[a]ir with moisture from the
wall, floor[,] or ceiling may be captured by another air diverter 40 at the
point the forced air escapes the floor or wall and routed back to . . .
blower 20” (id. at col. 3,11. 8—11), such disclosure does not establish
adequately that in Smith moisture is extracted upon application of negative
pressure. Thus, we do not sustain this rejection of independent claim 48, or
of its dependent claims 49 and 50.
Rejection IV
Independent claim 51 recites, in relevant part, a hard floor surface
drying system having a vacuum source, the system including a water-
impermeable membrane having an upper side, a lower side, and a perimeter,
the lower side being configured to be positioned proximate to a hard floor
surface to be dried. Based on our review, we agree with Appellants that the
rejection is in error because “Wenander discloses a system for curing as-yet
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uncured concrete. Concrete as yet uncured is not hard. It is soft. It is not a
‘hard floor surface to be dried[,]’ as claimed.” Appeal Br. 11. The
Examiner does not support adequately the finding that “[t]he uncured
concrete may contain certain (or low) percentage water and is considered a
hard surface.” Answer 14. Thus, we do not sustain this rejection of
independent claim 51, or of its dependent claims 52 and 54.
Rejection V
As set forth above, independent claim 51 recites, in relevant part, a
hard floor surface drying system having a vacuum source, the system
including a water-impermeable membrane having an upper side, a lower
side, and a perimeter, the lower side being configured to be positioned
proximate to a hard floor surface to be dried. Based on our review, we agree
with Appellants that the rejection is in error because “like Wenander,
Komata appears to be for curing as-yet uncured concrete. Komata, Abstract
(‘The concrete surface has a cement paste’). Concrete as-yet uncured is not
hard. It is soft. A ‘cement paste’ is not a ‘hard floor surface to be dried[,]’
as claimed.” Appeal Br. 13. In this case, the Examiner does not support
adequately the finding that “[t]he hardness of uncured concrete in the
Komata patent depends upon its water or moisture contents. The cement
paste may contain low percentage water content and is considered a hard
surface.” Answer 15. Thus, we do not sustain this rejection of independent
claim 51, or of its dependent claims 52—54.
Rejection VI
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As set forth above, independent claim 51 recites, in relevant part, a
hard floor surface drying system having a vacuum source, the system
including a water-impermeable membrane having an upper side, a lower
side, and a perimeter, the lower side being configured to be positioned
proximate to a hard floor surface to be dried. Based on our review, we agree
with Appellants that the rejection is in error because “like Wenander and . . .
Komata, Creskoff discloses a structure for curing as-yet uncured or soft
concrete. Concrete as-yet uncured is not hard, ft is soft.” Appeal Br. 14
(citation omitted). Conversely, the Examiner does not adequate support the
finding that “[bjased on the broadest reasonable interpretation of the claims
at issue,. . . the concrete to be dried in . . . Creskoff. . . meets the claimed
‘hard’ floor surface.” Answer 16. The Examiner does not establish that,
consistent with Appellants’ Specification, one of ordinary skill would
consider uncured concrete, which is fluid slurry that generally includes
water, cement, and aggregate, to be a hard floor surface. See, e.g.,
https://en.wikipedia.org/wiki/Concrete. Thus, we do not sustain this
rejection of independent claim 51, or of its dependent claims 52—54.
Rejection Vll
The Examiner rejects claims 49 and 50, which depend on independent
claim 48, based on a combination of Jamagin and Romer. As set forth
above, we do not sustain the anticipation rejection of claim 48 based on
Jamagin. Inasmuch as the Examiner does not demonstrate how Jamagin and
Romer would be combined to remedy the deficiency in claim 48’s rejection,
we do not sustain this rejection.
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Rejection VIII
The Examiner rejects independent claim 43, and its dependent
claims 45—47, based on a combination of Wenander and Creskoff, and either
Ferrand or De Winter. While Wenander and Creskoff are directed to
vacuum processing of wet concrete (see, e.g., Wenander, Abstract; see also,
e.g., Creskoff col. 1,11. 32—40), Ferrand is directed to “a grid for use in” a
“receptacle[] for plants” (Ferrand, col. 1,11. 12—13) and De Winter is
directed to a “bottom and bank facing for preventing erosion of subaqueous
soil structures” (De Winter, Abstract). The Examiner’s stated rationale for
modifying “Wenander to include a three-dimensional lattice structure grid as
taught by Ferrand or De Winter” is “to pursue an intended use.” Answer 20;
see also id. at 8; Final Action 9. We determine that the Examiner does not
provide an adequate reason with the required rational underpinning to
modify Wenander based on either Ferrand or De Winter, and, thus, we do
not sustain this rejection of claims 43 and 45—47. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness 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.”).
Rejection IX
The Examiner rejects claim 44, which depends from independent
claim 43, based on a combination of Wenander, Creskoff, and Rountree, and
either Ferrand or De Winter. As set forth above, we do not sustain the
obviousness rejection of claim 43. Inasmuch as the Examiner does not
demonstrate how the addition of Rountree would provide an adequate reason
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with the required rational underpinning to modify Wenander based on either
Ferrand or De Winter, we do not sustain this rejection of claim 44.
DECISION
We REVERSE the Examiner’s anticipation and obviousness
rejections of claims 43—54.
REVERSED
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