Storm, Brian F.

Patent Trials and Appeals Board

Mar 9, 2020

13853459 - (D) (P.T.A.B. Mar. 9, 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.
13/853,459 03/29/2013 Brian F. Storm 101397.000006 7224
23377 7590 03/09/2020
BakerHostetler
Cira Centre 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
LEO, LEONARD R
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
03/09/2020 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN F. STORM
____________

Appeal 2019-005518
Application 13/853,459
Technology Center 3700
____________

Before MICHELLE R. OSINSKI, FRANCES L. IPPOLITO, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 26–37. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). The Real Party in Interest is the named inventor, Brian F. Storm.
Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s application is titled “Sport Field Cooling System and
Method” and the specification describes “control of air temperature above
sports fields or other playing surfaces.” Spec. 1; Title, Technical Field.
Claim 26 is the sole independent claim. Appeal Br. 10–11 (Claims App.).
We reproduce claim 26, below, with emphasis added to a particular
limitation discussed in this Decision.
1. A method for cooling a sports field, and/or associated,
ancillary, or auxiliary areas, the method comprising the steps
of:
drawing air from an ambient environment and into one or
more subsurface intake pipes installed through a surface of a
ground of the sports field and to a subsurface depth in the
ground consistent with subsurface temperatures creating a
cooling effect;
cooling the air by drawing the air through at least a
portion of the one or more subsurface intake pipes traversing
the ground at the subsurface depth, wherein a temperature of
air at the subsurface depth is lower than a temperature of air
above the surface of the ground, wherein a difference between
the temperature of the air at the subsurface depth and the
temperature of the air above the surface of the ground causes
cooling of the air as it is drawn through the at least a portion of
the one or more subsurface intake pipes; and
directing the air from the one or more subsurface intake
pipes through a flexible nozzle that penetrates the surface of the
ground.
Id. at 10 (emphasis added).

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Whitehead US 2,752,195 June 26, 1956
Oliveto US 5,507,536 Apr. 16, 1996
Schumacher US 6,421,953 B1 July 23, 2002
Walford US 2010/0025008 A1 Feb. 4, 2010
REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
26–37 112(a) Written Description
26–37 112(b) Indefiniteness
26–31, 33–37 103(a) Schumacher, Walford, Whitehead
32 103(a) Schumacher, Walford, Whitehead,
Oliveto
OPINION
I. Rejection Under 35 U.S.C. § 112(a)
The Examiner rejects claims 26–37 under 35 U.S.C. § 112(a) for
failing to comply with the written description requirement. Final Act. 2. In
particular, the Examiner finds that limitations in sole independent claim 26
and a limitation recited in dependent claim 35 lack written description
support. See id. at 2–3; see also Ans. 10.
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that applicant was in possession
of the claimed invention when the application was filed. See Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). “[T]he written
description requirement is satisfied by the patentee’s disclosure of ‘such
descriptive means as words, structures, figures, diagrams, formulas, etc., that
fully set forth the claimed invention.”’ Enzo Biochem, Inc. v. Gen-Probe
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Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
We address claims 26 and 35 separately, below.

Independent Claim 26
The Examiner finds that there is no basis for the claimed limitations,
“drawing air from an ambient environment and into one or more subsurface
intake pipes installed through a surface of a ground of the sports field”
(Final Act. 2 (emphasis altered)) and “wherein a difference between the
temperature of the air at the subsurface depth and the temperature of the air
above the surface of the ground causes cooling of the air” (Ans. 10
(emphases altered)).
As to the “pipes installed through a surface of a ground of the sports
field,” Appellant cites to its Figure 6B, which we reproduce below, for
providing the subject matter support (Appeal Br. 3):

Figure 6B depicts system 600 with “earth tube field” 620 having subsurface
intake pipes 630, where source air is cooled as it traverses through intake
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pipes 630 to air handling unit 610, where it is later distributed through
supply air piping 640 to nozzles 650 penetrating sports field F. Spec. ¶ 47.
Appellant contends that “earth tube field 620” is the subsurface of
sports field F. See Appeal Br. 3.
We disagree with Appellant’s assertion that earth tube field 620 is
below, or subsurface to, sports field F. Rather, we find that earth tube field
620 is removed from sports field F. See Spec., Fig. 6B (depicting supply air
piping 640 under sports field F, but not intake pipes 630 or earth tube field
620); see also id. at Fig. 5 (depicting supply air piping 300 under sports field
F, but not intake pipes 150). This is consistent with the Examiner’s finding,
as well. The Examiner correctly notes that the Specification describes
Appellant’s intake unit—from where the intake pipes originate—as being
positioned “at a location somewhat removed from the sports field F.” Final
Act. 2–3 (citing Spec. ¶ 39) (emphasis added); see also Spec. Fig. 5. We
agree with the Examiner’s findings that air intake pipes are located away
from the sports field. Final Act. 3. Although the Specification describes
supply air piping 300 located under sports field F (see, e.g., Spec. Fig. 5), we
find nothing in the Specification that supports the claimed intake pipes as
being “installed through a surface of a ground of the sports field,” as
claimed.
As to the claimed “wherein a difference between the temperature of
the air at the subsurface depth and the temperature of the air above the
surface of the ground causes cooling of the air,” Appellant cites to the
Specification’s description, “As source air fan 280 continues to draw intake
air A through subsurface intake pipes 150, the air is cooled relative to its
former temperature by its interaction with the cooler ground temperatures
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associated with subsurface intake pipes 150.” Reply Br. 2 (quoting Spec.
¶ 41).
We disagree with Appellant’s assertion that the cited description
supports the claimed limitation. Importantly, the claim recites a difference
“between the temperatures of the air at the subsurface depth and the
temperature of the air above the surface of the ground [to cause] cooling of
the air.” Appeal Br. 10 (Claims App.) (emphasis added). Paragraph 41 of
the Specification—which Appellant cites to (Reply Br. 2)—describes that it
is the “cooler ground” that causes cooling of the air. This is also consistent
with other descriptions within the Specification. See, e.g., Spec. ¶ 39
(“intake pipes are inset below the surface of ground G in order to take
advantage of relatively cooler subsurface ground temperatures to cool intake
air”). Although the Specification describes a difference in temperature
between the subsurface ground and the temperature of air above the surface
to “cause[] cooling of the air” as claimed (see, e.g., Spec. ¶¶ 39, 41), nothing
in the Specification describes cooler air below the surface of the ground that
causes “cooling of the air,” as recited in claim 26.
For the foregoing reasons, we affirm the rejection of independent
claim 26, and its dependent claims 27–37, for failing to comply with the
written description requirement.

Dependent Claim 35
Claim 35 depends from claim 26 and further recites, “wherein the one
or more subsurface pipes are not surrounded by a liquid.” Appeal Br. 11
(Claims App.). The Examiner finds that the claim is not supported, since
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“[t]he disclosure does not preclude water seeping into the soil around the
intake pipes.” Final Act. 3.
Appellant contests the rejection, citing the Specification’s description
of intake pipes passing through the ground. Appeal Br. 4 (citing Spec.
¶¶ 48, 49).
We agree with Appellant. Indeed, at least paragraph 48 of the
Specification describes intake pipes traversing through the ground.
Furthermore, Figure 5B of the Specification also depicts intake pipes 630
passing through the ground, and not surrounded by liquid. “The content of
the drawings may also be considered in determining compliance with the
written description requirement.” In re Kaslow, 707 F.2d 1366, 1375 (Fed.
Cir. 1983) (citation omitted).
For the foregoing reasons, we do not sustain the Examiner’s rejection
on the basis that this particular limitation of claim 35 fails to comply with
the written description requirement.2

II. Rejection Under 35 U.S.C. § 112(b)
The Examiner rejects claims 26–37 under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 3–4.
During prosecution, “‘[a] claim is indefinite when it contains words or
phrases whose meaning is unclear.”’ Ex parte McAward, Appeal 2015-

2 Because claim 35 depends from claim 26, however, and claim 26 lacks
written description support, claim 35 lacks written description support due to
its dependency on claim 26.
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006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential)
(quoting In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curium)).

Independent Claim 26 (and Dependent Claims 27–32, 34, and 37)
The preamble of claim 26 recites, “A method for cooling a sports
field, and/or associated, ancillary, or auxiliary areas, the method
comprising the steps of. . . .” Appeal Br. 10 (Claims App.) (emphasis
added). Claim 26 further recites, “drawing air from an ambient environment
and into one or more subsurface intake pipes installed through a surface of a
ground of the sports field.” Id. (emphasis added).
In rejecting the claim, the Examiner finds that the recitation of a broad
range in the preamble (i.e., “sports field, and/or associated, ancillary, or
auxiliary areas”), followed by a narrower range (i.e., “sports field”) in the
claim, renders the claim indefinite. See Final Act. 3–4 (citing Ex parte Wu,
10 USPQ2d 2031, 2033 (BPAI 1989)).
We disagree with the Examiner.
In general, the preamble limits a claim if it recites essential structure,
essential steps, or is otherwise “necessary to give life, meaning, and vitality”
to the claim. Pitney Bowes, Inc. v. Hewlett Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999) (quoting Kropa v. Robie, 187 F.2d 150, 152 (CCPA
1951)). The preamble is not limiting when the claim body defines a
structurally complete invention and the preamble states only a purpose or
intended use. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). The
default presumption is that a claim’s preamble is not limiting. Am. Med.
Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010)
(“‘Generally,’ we have said, ‘the preamble does not limit the claims.”’
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(quoting Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346
(Fed. Cir. 2002))).
In the present case, the Examiner’s rejection is premised on the
assumption that the preamble is limiting, yet the Examiner fails to establish
that it recites essential structure, essential steps, or is otherwise “necessary to
give life, meaning, and vitality” to the claim. See Final Act. 3–4; Pitney
Bowes, 182 F.3d at 1305. Moreover, the default presumption is that a
claim’s preamble is not limiting (Am. Med. Sys., 618 F.3d at 1358), and
absent any analysis, we are skeptical that the preamble’s “sports field, and/or
associated, ancillary, or auxiliary areas” is “necessary to give life, meaning,
and vitality” to the claim. As such, the record does not support a finding that
the preamble is limiting. Accordingly, even if two inconsistent claimed
ranges may render a claim indefinite (Ex parte Wu, 10 USPQ2d at 2033), the
Examiner fails to establish that the claim recites two inconsistent ranges.
For the foregoing reasons, we do not sustain the rejection of claims
26–32, 34, and 37 as indefinite.
Dependent claims 33, 35, and 36 are discussed further, below.

Dependent Claim 33
Claim 33 depends from claim 26 and further recites, “wherein the
flexible nozzle is configured to be fallen upon by a player on the sports field
without causing injury to the player.” Appeal Br. 11 (Claims App.).
The Examiner finds that the limitation is indefinite, as the
“specification does not provide a standard for ascertaining the requisite
degree, and one of ordinary skill in the art would not be reasonably apprised
of the scope of the invention.” Final Act. 4. The Examiner explains,
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“Players have varying degrees of ‘injury’ due to strength, stamina, tolerance,
safety equipment, age, etc.” Id.
In response, Appellant contends that “the boundaries of claim 33 are
clear, both on-face and in light of the specification.” Appeal Br. 5.
Appellant cites to the following passage in the Specification: “persons on
field F will not be injured if (or when) they fall upon supply air nozzle 920
during activities on the field; nor will they be impeded when running,
jumping, or otherwise participating in activities on the field.” Id. (quoting in
part Spec. ¶ 66).
Appellant’s argument is not persuasive. We disagree with Appellant’s
assertion that paragraph 66 of the Specification defines a degree upon which
to measure the claimed limitation. The claim attempts to define
characteristics of the “flexible nozzle” based on whether a player is injured
upon falling on the nozzle. Whether a player is injured while falling on the
nozzle, however, is dependent upon a multitude of factors (e.g., the health of
the player, the type of contact that the player has with the nozzle) that are
completely independent of the nozzle itself. As such, the meaning of the
claim is unclear, and the claim is indefinite. In re Packard, 751 F.3d at
1310.
For the foregoing reasons, we affirm the rejection of dependent claim
33 for being indefinite.

Dependent Claims 35, 36
Claims 35 and 36 each depend from claim 26 and further recite,
“wherein the one or more subsurface pipes” are “not surrounded by a liquid”
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(claim 35) or “surrounded by a solid substance” (claim 36). Appeal Br. 11
(Claims App.) (emphasis added).
The Examiner determines that the recitation of “subsurface pipes”
lacks antecedent basis, and the claims should have recited “subsurface intake
pipes,” which is consistent with independent claim 26. See Final Act. 4; see
also Ans. 14.
Although we agree with the Examiner that independent claim 26
recites “subsurface intake pipes,” whereas dependent claims 35 and 36
simply recite “subsurface pipes,” we do not sustain the rejection. A skilled
artisan, upon reading the limitation of claims 35 and 36, would understand
that the “subsurface pipes” recited in claims 35 and 36 refer to the
“subsurface intake pipes” of claim 26. Indeed, claim 26 only recites one
type of “subsurface pipes,” and the meaning of claims 35 and 36 is
sufficiently clear. In re Packard, 751 F.3d at 1310.
For the foregoing reasons, we do not sustain the rejection of claims 35
and 36 as indefinite.

III. Claims 26–31, 33–37: Rejected as Unpatentable Over Schumacher,
Walford, Whitehead

The Examiner finds that Schumacher discloses the majority of the
limitations of independent claim 26, citing Schumacher’s Figure 1. Final
Act. 5–6. We reproduce Schumacher’s Figure 1, below:
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Figure 1 depicts Schumacher’s system 10 for cooling the golf greens surface
of a golf course, which includes a lake. See Schumacher 1:9–15, 2:52–54.
System 10 includes radiator 3, which is immersed in the lake, for cooling the
air within the radiator. See id. at 2:60–66. Atmospheric air is drawn into
inlet 1 and line 2 and passes through radiator 3 by operation of air pump 8.
Id. at 3:3–4. Pump 8 carries the cooled air for distribution to the golf greens
by line 11 and to nozzles 20. See id. at 3:8–10; see also id. at 3:59–62
(“nozzle 20 shown in FIG. 2 in the activated position . . . has open louvers
23 directing the temperature modified air parallel to the ground just above
the grass”).
The Examiner finds that Schumacher’s golf course green is the
claimed “sports field” and its radiator 3 is the claimed “one or more
subsurface intake pipes” (Final Act. 5), but acknowledges that Schumacher
does not disclose “that one or more subsurface intake pipes of radiator 3
installed through a surface of a ground of the sports field” (id. at 6).
To address the missing limitation, the Examiner cites to Walford’s
Figure 8, which we reproduce, below:
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Figure 8 depicts a “schematic side elevation view of a system for
conditioning air in a conditioned zone of a structure.” Walford ¶ 18.
Notably, Figure 8 depicts underground conduit system 204 directly beneath
air conditioning zone 202 of a structure. See, e.g., id. ¶ 75. The Examiner
finds that this figure discloses drawing air from ambient environment 220
and into one or more subsurface intake pipes 204 “installed to a subsurface
depth in the ground consistent with subsurface temperatures creating a
cooling effect.” Final Act. 6.
The Examiner reasons that a skilled artisan would have modified
Schumacher to use “one or more subsurface intake pipes installed through a
surface of a ground of the affected area (i.e., sports field) for the purpose of
constraining the system footprint within the affected area as recognized by
Walford.” Final Act. 7 (emphasis added). The Examiner further finds that
Walford discloses that locating its conduit system underground and
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underwater are obvious variants of one another. Id. at 6 (citing Walford
¶ 56).
In contesting the rejection, Appellant argues that Walford states only
that the equipment “footprint” is minimal, resulting in the advantage that
available living space is maximized, but “maximizing available living space,
as described by Walford, does not provide motivation for incorporating the
system of Walford in a sports field, where living space is not of concern.”
Appeal Br. 7 (citing Walford ¶ 96).
Appellant’s argument is persuasive. Schumacher teaches a radiator
immersed in a golf course lake. See Schumacher 2:52–39. The radiator uses
the water from the lake to cool the air in the radiator. See id. We are not
persuaded that a skilled artisan, upon reviewing Walford’s teaching of
locating pipes under a building, would have been motivated to relocate
Schumacher’s radiator under the golf course green, for the purpose of
“constraining the system footprint,” where there is no indication that
Schumacher’s golf course lacks available space for equipment and where
there is a significant heat-transfer benefit to locating the radiator in a lake.
Final Act. 7; see Schumacher 2:55–58 (“The deeper water in the lake has a
naturally occurring, nearly constant, temperature which is below the ambient
air temperature during the growing season.”). Although Schumacher also
discloses that the radiator may “be placed in a cavern or ice house” (id. at
2:63–64), Schumacher provides no indication that such cavern or ice house
would be located directly beneath the golf course green and this disclosure
of a cavern or ice house in Schumacher does not change the fact that the
Examiner has not adequately explained why one of ordinary skill in the art
would have been led to place Schumacher’s radiator directly beneath the
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golf course green based solely on Walford’s desire to reduce an equipment
footprint and maximize available space.
For the foregoing reasons, we do not sustain the rejection of claims
26–31 and 33–37 as unpatentable over Schumacher, Walford, and
Whitehead.

IV. Claim 32 Rejected as Unpatentable Over Schumacher, Walford,
Whitehead, and Oliveto

In rejecting dependent claim 32 as unpatentable over Schumacher,
Walford, Whitehead, and Oliveto, the Examiner relies on the same
unsupportable reasoning discussed above. See Final Act. 8–9.
Because we do not sustain the rejection of claims 26–31 and 33–37 as
unpatentable over Schumacher, Walford, and Whitehead, we do not sustain
the rejection of dependent claim 32 as unpatentable over Schumacher,
Walford, Whitehead, and Oliveto.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
26–37 112(a) Written Description 26–37
26–37 112(b) Indefiniteness 33 26–32,
34–37
26–31,
33–37
103(a) Schumacher,
Walford, Whitehead
26–31,
33–37
32 103(a) Schumacher,
Walford, Whitehead,
Oliveto
32
Overall
Outcome
26–37
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED