2021000287 (P.T.A.B. Mar. 1, 2021)

Keith Underwood

Patent Trials and Appeals BoardMar 1, 2021

2021000287 (P.T.A.B. Mar. 1, 2021)

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. 11/482,891 07/10/2006 Keith R. Underwood 208469-9002-US00 6797 23409 7590 03/01/2021 MICHAEL BEST & FRIEDRICH LLP (Mke) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER MAYO-PINNOCK, TARA LEIGH ART UNIT PAPER NUMBER 3671 NOTIFICATION DATE DELIVERY MODE 03/01/2021 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): mkeipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KEITH R. UNDERWOOD Appeal 2021-000287 Application 11/482,8911 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and MATTHEW S. MEYERS, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. 1 This is the second appeal in this application before the Patent Trial and Appeal Board. Appeal 2021-000287 Application 11/482,891 2 DECISION ON APPEAL2 Pursuant to 35 U.S.C. § 134(a), the Appellant3 appeals from the Examiner’s decision to reject claims 1, 3–5, 7–20, and 22–28.4 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE Illustrative Claim Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A seepage wetland system comprising: an entry point from which water enters the system; an entry pool operable to collect water entering the system from said entry point; 2 Throughout this opinion, we refer to the Appeal Brief (“Appeal Br.,” filed March 24, 2020), Reply Brief (“Reply Br.,” filed Oct. 7, 2020), the Examiner’s Answer (“Ans.,” mailed Aug. 7, 2020), and Final Office Action (“Final Act.,” mailed April 24, 2019). 3 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as the inventor, Keith R. Underwood. Appeal Br. 1. 4 We do not understand claim 21 to be rejected. We acknowledge that the Office Action Summary (PTOL-326) includes claim 21 as a rejected claim (Final Act. 1, 13), however the statements of the rejections in the Final Office Action do not include a rejection of claim 21 (see, e.g., id. at 11 (“Claims 1, 3–5, 7–10, 16–20[,] and 27 are rejected”)). We also acknowledge that the Final Office Action addresses an earlier version of claim 21 (id. at 13), however the substance of the rejection does not overlap with the subject matter of appealed claim 21 (Appeal Br., Claims Appendix). See Second Response Under 37 C.F.R. § 1.116 5, 7 (new claim 21) (filed Nov. 23, 2010); Response Pursuant to 37 C.F.R. § 41.50(b) 5, 8 (amended claim 21) (filed Sept. 29, 2017). Appeal 2021-000287 Application 11/482,891 3 a first aquatic bed operable to retain water and permit the retained water to seep into the ground; and a first weir operable to transition water from said entry pool to said first aquatic bed, wherein a water level within said first aquatic bed is lower than a water level within said entry pool and said first weir includes; at least one boulder portion adjacent said first aquatic bed; and a plurality of cobbles adjacent said at least one boulder portion, wherein said cobbles are formed in a parabolic shape and rise, in cross-section, from a low point in its center to a high point at an outermost edge and the water from said entry pool runs over said cobbles and an upper portion of said boulder portion as it transitions from said entry pool to said first aquatic bed and at least half of said at least one boulder portion is submerged in said first aquatic bed. Rejections We have set forth the rejections in a different order than the order presented in the Final Office Action. Claims 1, 3, 5, 7, 8, 10, 16, 17, 19, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over R. Newbury & M. Gaboury, The Use of Natural Stream Characteristics for Stream Rehabilitation Works Below the Manitoba Escarpment, 13 J. Canadian Water Resources 35–51 (1988) (“Newbury”) in view of San Luis Obispo Creek, Waterway Management Plan, 3 Drainage Design Manual (2003) (“SLO”). Claims 22, 23, 25, 26, and 28 are rejected under 35 U.S.C. § 102(b) as anticipated by the prior public use project described in Keith R. Underwood et al., Atlantic White Cedar Species Recovery And Wetland Enhancement Project At Howard’s Branch, Anne Arundel County, Maryland, Atlantic Appeal 2021-000287 Application 11/482,891 4 White Cedar: Ecology, Restoration, and Management, Proc. Arlington Echo Symposium 54–61 (2003) (“AWC”). Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over the prior public use project described in AWC. Claims 1, 3–5, 7–20, and 27 are rejected under 35 U.S.C. § 103(a) as unpatentable over the prior public use project described in AWC in view of SLO.5 Claims 1, 5, 9, and 16 are provisionally rejected on the ground of non- statutory obviousness-type double patenting as unpatentable over claims 3, 7, and 9 of co-pending US Application No. 12/292,6426 in view of SLO. ANALYSIS Rejection based on Newbury in view of SLO The Appellant argues the combined teachings of Newbury in view of SLO, as proffered by the Examiner, fail to correspond to “wherein said [plurality of] cobbles are formed in a parabolic shape and rise, in cross- section, from a low point in its center to a high point at an outermost edge,” as recited in claim 1. Appeal Br. 8 (emphasis omitted). The Appellant’s argument is persuasive. The Examiner finds Newbury “shows the plurality of cobbles being formed in a generally trapezoidal shape (Fig. 8A, sec. B-B).” Final Act. 6. The Examiner’s characterization of the cross-sectional shape of Newbury’s 5 Although the Examiner sets forth separate statements for the rejection of claims 1, 3–5, 7–10, 16–20, and 27 (Final Act. 11) and claims 11–15 (id. at 16), we consolidate the statements into a single ground of rejection because they are each based upon the same combination of references. 6 Co-pending US Application No. 12/292,642 is on appeal (Appeal 2020- 000338) and is being decided concurrently with this appeal. Appeal 2021-000287 Application 11/482,891 5 channel of Figure 8A, section B-B, as “generally trapezoidal” is fair because the upper boundary of the cross-section of B-B is a v-shaped crest. See Newbury 41. The Examiner relies on SLO to teach parabolic or trapezoidal channel cross sectional shapes are art recognized equivalents, and uses this teaching to modify the cross-sectional shape of Newbury’s channel. Final Act. 6 (citing SLO 46). The Specification discloses that Figure 4 is a cross-sectional representation that shows the cobble portion of the weir formed in a parabolic shape. Spec. ¶ 46. As shown in Figure 4, both the upper and lower boundaries of the shape are parabolic. Therefore, the term “parabolic shape,” particularly in a cross-sectional view, is a logical expression of how the shape is described, labelled, and would be understood by one of ordinary skill in the art. The Examiner’s rejection suggests a different understating of the term “parabolic shape.” The Examiner finds that as a result of the modification Newbury’s channel would have a lower boundary with a parabolic shape and an upper boundary with a v-shape. See Ans. 4. Using the Examiner’s characterization of the cross-sectional shape of Newbury’s channel before being modified as “generally trapezoidal,” we characterize the cross- sectional shape of Newbury’s channel after being modified as “generally parabolic.” It is apparent from the Answer, that the Examiner views a generally parabolic shape as a parabolic shape. See id. Based on the record before us, we determine that the Examiner fails to establish –– using adequate evidence or technical reasoning –– how the modified cross-sectional shape of Newbury’s channel as generally parabolic corresponds to a plurality of cobbles that are formed in a parabolic shape, as Appeal 2021-000287 Application 11/482,891 6 required by claim 1. See Appeal Br. 9–10. Further, we determine that the Examiner fails to adequately explain on the record –– using evidence or technical reasoning –– how the teachings of Newbury, SLO, or a combination thereof, suggest that a generally trapezoidal shape of a cross- section of a channel is an art recognized equivalent of either a generally parabolic shape or a parabolic shape of a cross-section of a channel. See also id.; Reply Br. 2. Thus, we do not sustain the Examiner’s rejection of independent claim 1 and claims 3, 5, 7, 8, and 10 which depend therefrom, as unpatentable over Newbury in view of SLO. Similarly, the Examiner’s rejection of independent claim 16, which calls for “a plurality of cobbles formed in a parabolic shape,” is deficient in a manner similar to that of claim 1. Thus, we do not sustain the Examiner’s rejection of claim 16 and claims 17, 19, and 20, which dependent therefrom, as unpatentable over Newbury in view of SLO. Rejections based on prior public use project described in AWC At the outset, we note that this is the second appeal in this application before the Patent Trial and Appeal Board. Infra, n.1. For the previous appeal we issued a decision, Appeal 2014-004008, which was mailed May 25, 2017 (“Decision”). In the Decision, we determined that “the totality of the circumstances supports the Examiner’s determination that the AWC project was a ‘public use[]’” and that “the Appellant fail[ed] to provide adequate evidence that the alleged ‘experimental use’ continued through a time period ending after July 7, 2004, which is more than one year prior to the filing date of the Provisional Application 60/697,390 (i.e., July 8, 2005).” Decision 11. Appeal 2021-000287 Application 11/482,891 7 As mentioned in the Decision, there are thirteen factors indicative of experimental use: (1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, . . . (9) the degree of commercial exploitation during testing[,] . . . (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1353 (Fed. Cir. 2002) (citation omitted); see Decision 11–12. In the Decision, we determined “that the record is either silent or there is insufficient evidence for many of the factors [that are indicative of an experimental use].” Decision 11–12. We also referenced “a copy of a letter from the U.S. Army Corps of Engineers to the Anne Arundel County Department of Public Works confirming the experimental nature of The Howard’s Branch Project . . . and outlining various conditions that had to be followed for the project to be approved by the DA [(Department of the Army)],” and explained that “although the Appellant was required to monitor the project for a period of at least five years, there is inadequate evidence of record that the required monitoring at Howard’s Branch Project was actually performed throughout the relevant time period.”7 Id. at 12–13. 7 “The Howard’s Branch Project” is synonymous with the project described in AWC. See AWC, Title. Appeal 2021-000287 Application 11/482,891 8 Since the time of the Decision, the Appellant and the Examiner introduced additional evidence. Most notably, the Appellant presented evidence in the form of a Declaration by Keith R. Underwood under 37 C.F.R. § 1.131 and/or § 1.132, filed September 29, 2017 (“Underwood Decl. Sept. 2017”), which addresses the thirteen factors indicative of experimental use and attached numerous documents, including annual post-construction monitoring reports on the results of the monitoring efforts to determine the success of the project. Underwood Decl. Sept. 2017, Attachment 4. The Appellant argues “that the AWC project was, and was always intended to be, an experimental project and, thus, subject to the experimental use exception of 35 U.S.C. § 102.” Appeal Br. 11 (emphasis omitted). The Appellant adds that “when the thirteen (13) factors for an experimental use determination are analyzed in view of the current records, it is clear that the totality of the circumstances leads to the conclusion that the AWC project was, indeed, an ‘experimental use’ and, subject to the exception.” Id.; see id. at 10–19; Reply Br. 3–6. The Examiner responds to the merits of the Appellant’s argument in the Answer. Ans. 4–10; see Final Act. 20–29. We appreciate the Examiner’s position that there is “significant evidence contradicting Appellant’s assertion of the ‘experimental use’ exception.” Ans. 5. However, after considering the evidence provided by the Appellant supporting its position, we find the proffered evidence outweighs the concerns raised by the Examiner. Additionally, the Appellant, in both the Appeal Brief and the Reply Brief, more than adequately addresses the points raised by the Examiner. Therefore, we agree with the Appellant that the prior public use project described in AWC was an experimental use. Appeal 2021-000287 Application 11/482,891 9 Further, we note that during the prosecution of the present application, the Applicant presented evidence in the form of a Declaration by Keith R. Underwood under 37 C.F.R. § 1.131 and/or § 1.132, filed June 13, 2011 (“Underwood Decl. June 2011”). This Declaration establishes that the inventor “completed [AWC] sometime in early 2005 and subsequently filed it with the USPTO . . . on July 8, 2005, as a provisional patent application, serial no. 60/697,390.” Underwood Decl. June 2011 ¶ 7; see id. ¶¶ 2–6. This statement establishes that the experimental use ended and the Appellant’s invention was reduced to practice in early 2005. In view of the foregoing, we determine there is adequate evidence that the experimental use continued through a time period ending after July 7, 2004. In other words, the invention was not actually reduced to practice, i.e., a complete invention, prior to the 35 U.S.C. § 102(b) date. Thus, we do not sustain the Examiner’s rejections based on the prior public use project described in AWC of claims 22, 23, 25, 26, and 28 under 35 U.S.C. § 102(b) and claims 1, 3–5, 7–20, 24, and 27 under 35 U.S.C. § 103(a). Double patenting We do not reach the merits of the Examiner’s provisional rejection on the ground of non-statutory obviousness-type double patenting. In this case, it is premature to address the Examiner’s provisional double patenting rejection because it is the only remaining rejection on appeal. See Ex Parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). The Examiner’s attention is directed to the guidance found in Manual of Patent Examining Procedure (MPEP) § 804(I)(B)(1)(b) (9th ed., rev. 10, June 2020) Appeal 2021-000287 Application 11/482,891 10 specifying situations when a provisional non-statutory double patenting rejection should be withdrawn. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1, 3, 5, 7, 8, 10, 16, 17, 19, 20 103(a) Newbury, SLO 1, 3, 5, 7, 8, 10, 16, 17, 19, 20 22, 23, 25, 26, 28 102(b) AWC 22, 23, 25, 26, 28 24 103(a) AWC 24 1, 3–5, 7–20, 27 103(a) AWC, SLO 1, 3–5, 7–20, 27 1, 5, 9, 16 Provisional Obviousness- type Double Patenting8 Overall Outcome 1, 3–5, 7–20, 22–28 REVERSED 8 As explained above, we do not reach this rejection per Ex parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (holding that it is premature to address a provisional rejection) (precedential).