SmithGroupJJR, Inc.

Patent Trials and Appeals Board

Apr 14, 2020

14029501 - (R) (P.T.A.B. Apr. 14, 2020)

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.
14/029,501 09/17/2013 Joe Wywrot SGCI 0116 PUS 8234
22045 7590 04/14/2020
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
CANFIELD, ROBERT
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
04/14/2020 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOE WYWROT and NEAL BILLETDEAUX

Appeal 2019-003677
Application 14/029,501
Technology Center 3600
____________

Before DANIEL S. SONG, MICHAEL J. FITZPATRICK, and
ANNETTE R. REIMERS, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant requests rehearing under 37 C.F.R. § 41.52 of our Decision
of February 3, 2020 (“Decision”), wherein we affirmed the Examiner’s
rejection of claims 1, 2, and 9. See Request for Rehearing filed April 3,
2020 (“Request”).
The Request is denied.

Appeal 2019-003677
Application 14/029,501

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DISCUSSION
A “request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.”
37 C.F.R. § 41.52(a)(1). Appellant’s Request wholly fails to meet this
obligation. See Request 2.
The Request includes a heading stating: “Day does not disclose each
and every limitation of the claims.” Id.1 However, the Request does not
identify which limitation(s) of which claim(s) Day allegedly fails to teach.
Id. Nor does the Request identify where any such argument was made
previously. Id.
After the heading, the Request proceeds: “With regard to claim 1, the
Board argues . . . Appellant has not identified any teaching by Day to post-
develop a site in a manner that would result in a net increase of peak flow or
runoff volume. Indeed, such post-development would be inconsistent with
the explicit goals of Day.” Id. (emphasis added). The Request then states
that “Applicant disagrees . . . . The Board’s decision, with clear error,
impermissibly relies on hindsight.” Id. However, the Examiner’s rejection
of claim 1, which our Decision affirmed, was for anticipation by Day
pursuant to 35 U.S.C. § 102(a)(1), not for obviousness to which hindsight
may be relevant. Final Act. 3; Decision 7.
The Examiner did reject one claim, namely dependent claim 2, for
obviousness pursuant to 35 U.S.C. § 103, which we affirmed. Final Act. 5;
Decision 7. As we stated in the Decision, however, Appellant did not

1 “Day” refers to Susan Downing Day et al., “Managing Stormwater for
Urban Sustainability Using Trees and Structural Soils,” VIRGINIA
POLYTECHNIC INSTITUTE AND STATE UNIVERSITY (2008).
Appeal 2019-003677
Application 14/029,501

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present separate arguments for claim 2. See Decision 7; see also Appeal
Br. 4 (“Claims 2 and 9 are patentable for the reasons claim 1 is patentable.”).
Accordingly, any hindsight arguments are irrelevant with respect to
the anticipation rejection of claim 1 (and claim 9) and were waived with
respect to the obviousness rejection of claim 2.
Under the same heading quoted above, the Request also argues:
Nothing in Day suggests that structural soils should be used to
such an extent they guarantee post-development peak flow and
runoff volume is necessarily less than that of existing conditions.
There is no discussion in Day, for example, regarding assessing
existing peak flow and runoff volume so that one can be certain
that post-development peak flow and runoff volume will
necessarily be less through sufficient use of structural soils. If
Day contemplated such, it would have been explicitly mentioned
as measurement and comparison of existing conditions versus
post-development conditions in this regard would be necessary.
Instead, Day merely suggests that under post-development
conditions using structural soils can reduce peak flow and runoff
volume relative to not using them. Day thus has not sufficiently
described and enabled at least one embodiment that necessarily
resulted in the subject matter embraced by the limitations.
Request 2 (emphasis added).
First, to the extent Appellant is arguing that Day’s disclosure is not
enabling, it is a new argument, which we will not consider on rehearing.
With few exceptions, none of which apply here, “[a]rguments not raised, and
evidence not previously relied upon . . . are not permitted in the request for
rehearing.” 37 C.F.R. § 41.52(a)(1).2 The Request does not identify where
a lack of enablement argument was previously raised. Request 2.

2 The exceptions relate to new case law and new grounds of rejection.
37 C.F.R. § 41.52(a)(2)–(4).
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Application 14/029,501

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Second, and as made clear in our Decision, Day need not guarantee
that every embodiment within the scope of its disclosure anticipates claim 1.
See Decision 6. There we explained:
Appellant’s argument is based on a misunderstanding of the
inherency doctrine. Under that doctrine, “[a] single prior art
reference may anticipate without disclosing a feature of the
claimed invention if such feature is necessarily present, or
inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754
F.3d 952, 958 (Fed. Cir. 2014). It is sufficient if the missing
feature is necessarily present in a single embodiment. See Toro
Co. v. Deere & Co., 355 F.3d 1313, 1321 (Fed. Cir. 2004) (“For
inherent anticipation, the [prior art reference] must have
sufficiently described and enabled at least one embodiment that
necessarily featured or resulted in the subject matter embraced
by limitation (c).” (emphasis added)). However, the missing
feature need not be necessarily present in all embodiments taught
by Day. As discussed above, we do not agree that Day teaches
any embodiments that would increase a site’s peak flow and/or
runoff volume. Regardless, it cannot be disputed reasonably that
Day teaches embodiments with the opposite result. Day 3. Such
embodiments would necessarily have a “water score [that] falls
between the minimum and maximum achievable water scores,”
as recited in claim 1. In this regard, “a reference can anticipate a
claim even if it ‘d[oes] not expressly spell out’ all the limitations
arranged or combined as in the claim, if a person of skill in the
art, reading the reference, would ‘at once envisage’ the claimed
arrangement or combination.” Kennametal, Inc. v. Ingersoll
Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing
In re Petering, 301 F.2d 676, 681 (CCPA 1962)).
Request 6–7.
The Request fails to show anything our Decision misapprehended or
overlooked. Accordingly, the Request is denied.
Appeal 2019-003677
Application 14/029,501

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SUMMARY
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. References Denied Granted
1, 9 102(a)(1) Day 1, 9
2 103 Day 2

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference/
Basis
Affirmed Reversed
1, 9 102(a)(1) Day 1, 9
2 103 Day 2
Overall
Outcome
1, 2, 9

DENIED