Angelo J. Pino et al.Download PDFPatent Trials and Appeals BoardAug 3, 202015785967 - (D) (P.T.A.B. Aug. 3, 2020) Copy Citation 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. 15/785,967 10/17/2017 Angelo J. Pino JR. 16960-REG 4293 90042 7590 08/03/2020 Melcher Patent Law PLLC 1101 Connecticut Ave. N.W. Suite 450 Washington, DC 20036 EXAMINER ANDRISH, SEAN D ART UNIT PAPER NUMBER 3678 NOTIFICATION DATE DELIVERY MODE 08/03/2020 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): melcher@melcherpatentlaw.com melcherlaw@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANGELO J. PINO, JR.1 and DANIEL URBAN Appeal 2018-008483 Application 15/785,967 Technology Center 3600 ____________ Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision rejecting claims 1–7, 9–28, 30, and 31. We have jurisdiction under 35 U.S.C. § 6(b). 1 The inventor names reflect the corrected Filing Receipt (April 5, 2019). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant states “[t]his application is owned by the inventor,” without identifying any other real party in interest. Appeal Br. 1. Appeal 2018-008483 Application 15/785,967 2 We AFFIRM-IN-PART, designating the affirmance of identified claims as a new ground of rejection, pursuant to our authority under 37 C.F.R. § 40.51(b). ILLUSTRATIVE CLAIM 1. A multifunctional reel carrier, spoil material handling container device configured for continuously forming a micro- trench, laying a cable or innerduct/microduct in the micro- trench, and filling the micro-trench comprising: a first trailer or first truck; a first container configured to contain spoil on the first trailer or first truck; at least one spoil transport device configured to continuously transport at least a portion of the spoil from a micro trencher configured to continuously create the microtrench and deposit the spoil in the first container; at least one reel holder configured to hold a reel of the cable or innerduct/microduct on the first trailer or first truck, or on a second trailer or second truck and configured to continuously lay the cable or innerduct/microduct in the microtrench; and a fill device configured to continuously fill the micro- trench with a fill after the cable or innerduct/microduct has been laid in the micro-trench, wherein the multifunctional reel carrier, spoil material handling container device is configured for continuously forming a micro-trench, continuously transporting spoil from the microtrencher to the first container, continuously laying a cable or innerduct/microduct in the micro-trench from the at least one reel holder, and continuously filling the micro-trench with the fill from the fill device. Appeal 2018-008483 Application 15/785,967 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Lansdale US 5,913,638 June 22, 1999 Vogel et al. (hereinafter “Vogel”) US 2005/0036749 A1 Feb. 17, 2005 Purcell US 2005/0191133 A1 Sept. 1, 2005 Pichler et al. (hereinafter “Pichler”) US 2013/0011198 A1 Jan. 10, 2013 Gustavsson et al. (hereinafter “Gustavsson”) US 2015/0125218 A1 May 7, 2015 Miller US 2016/0376767 A1 Dec. 29, 2016 Caron CA 2348062 A1 Nov. 18, 2001 REJECTIONS I. Claims 13 and 14 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter that the inventors regard as the invention.3 II. Claims 1–7, 9–20, and 31 are rejected under 35 U.S.C. § 103 as unpatentable over Miller and Lansdale. III. Claim 21 are rejected under 35 U.S.C. § 103 as unpatentable over Miller, Lansdale, and Gustavsson. IV. Claims 22 and 24 are rejected under 35 U.S.C. § 103 as unpatentable over Miller, Lansdale, and Purcell. V. Claim 23 is rejected under 35 U.S.C. § 103 as unpatentable over Miller, Lansdale, Gustavsson, and Purcell. 3 The Final Office Action (page 3) states that this rejection is “under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph.” On account of the filing date of the present application, the AIA version of § 112 applies. Appeal 2018-008483 Application 15/785,967 4 VI. Claims 25–27 are rejected under 35 U.S.C. § 103 as unpatentable over Caron, Pichler, Miller, and Lansdale. VII. Claim 28 is rejected under 35 U.S.C. § 103 as unpatentable over Caron, Pichler, Miller, Lansdale, and Vogel. VIII. Claim 30 are rejected under 35 U.S.C. § 103 as unpatentable over Miller, Lansdale, Purcell, and Gustavsson. FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS Indefiniteness Dependent claims 13 and 14 stand rejected as being indefinite under 35 U.S.C. § 112(b). Final Action 2–3. The rejection is based upon the insufficient antecedent basis for the limitation “the first spoil transporting device” in claim 13. Id. at 3. Claim 14 depends from claim 13, rendering claim 14 indefinite for the same reason. The Appellant does not address this rejection in the Appeal briefing. However, before filing the Appeal Brief (June 5, 2018), the Appellant submitted an Amendment (April 17, 2018) purporting to overcome the indefiniteness rejection, by amending claim 13, so that it would recite “the at least one spoil transporting device” (instead of “the first spoil transporting device”). Amendment 4, 8. Thereafter, in an Advisory Action (May 15, 2018), also predating the Appeal Brief, the Examiner indicated that the changes to the claim language, presented in the Amendment, would be entered. Appeal 2018-008483 Application 15/785,967 5 The Examiner’s Answer includes the indefiniteness rejection as being among the “ground(s) of rejection . . . applicable to the appealed claims.” Answer 3. Yet, the Examiner’s Answer does not further address this rejection and does address the amended claim language. In view of the amendment to claim 13, the prima facie basis for the indefiniteness rejection no longer exists. Therefore, we do not sustain the rejection of claims 13 and 14 under 35 U.S.C. § 112(b). Obviousness Independent claims 1, 9, and 25, and dependent claims 2–7, 10–24, 26–28, 30, and 31 stand rejected as obvious over various combinations of references. For the reasons provided below, we sustain the rejections of claims 1–4, 9–16, 19, and 22–28, but we do not sustain the rejections of claims 5–7, 17, 18, 20, 21, 30, and 31, under 35 U.S.C. § 103. Further, as explained below, we designate the affirmance of claim 9 as a new ground of rejection, under 37 C.F.R. § 40.51(b). To the extent that the Appellant’s arguments, for a dependent claim, reprise an argument presented for a base claim, which is separately analyzed herein, it should be understood that our analysis of the base claim applies equally to such dependent claim. I. Independent Claim 1 and Dependent Claim 3 Independent claim 1 stands rejected as obvious over the combination of Miller and Lansdale. Final Action 3–5. The Appellant presents various arguments, asserting error in the rejection. See Appeal Br. 6–17. The Appellant contends that Miller lacks claim 1’s “first container configured to contain spoil on the first trailer or first truck” and, consequently, the “spoil transport device configured to continuously Appeal 2018-008483 Application 15/785,967 6 transport at least a portion of the spoil from a micro trencher . . . and deposit the spoil in the first container.” See Appeal Br. 8. Yet, as the Examiner finds (Final Action 4), Miller discloses a “vacuum system” with “vacuum hose 130” for “conducting a stream of debris created by the cutting blade to a vacuum collection chamber.” Miller ¶¶ 76–77. These disclosed techniques of Miller teach the claimed “first container configured to contain spoil” and the associated “spoil transport device.” The Examiner points out that Miller does not disclose the location of the “first container” as being “on the first trailer or first truck,” per claim 1. Final Action 4. However, the Examiner further finds (id.) that Lansdale teaches a container (“hopper 52”) that satisfies the claim limitation of being “on the first trailer” (Lansdale’s “subframe 42”). See Lansdale col. 4, ll. 33– 34, Figs. 1, 2. The Appellant argues that the combination of Miller and Lansdale is deficient, because the “first container” of claim 1 is recited as being “configured to contain spoil” — the material removed from the ground, so as to form a trench — whereas Lansdale’s “sand hopper 52” contains “fill” — the material to be deposited into a trench. Appeal Br. 8–14. According to the Appellant: The spoil (removed earth) in Lansdale is clearly left on both sides of the trench (channel). Lansdale specifically teaches that “the digging wheel, driven by a motor, digs a trench while discharging the earth on either side thereof.” See column 1, lines 25-32. Fig. 4 of Lansdale shows the discharged earth (spoil) on either side of the trench. The sand hopper 52 of Lansdale is not a spoil container. Id. at 9. Appeal 2018-008483 Application 15/785,967 7 As an initial matter, the Appellant does not adequately explain why Lansdale’s “hopper 52” — although disclosed as containing only fill — is not sufficiently “configured to contain spoil,” so as to satisfy claim 1. That is, a device that contains fill can “contain spoil,” as well — the Appellant identifying no significant structural difference between these two materials. Moreover, the Appellant does not dispute the Examiner’s finding (Final Action 4) that Miller teaches a “first container” and that the claim 1 limitation, under consideration, is met by the combined teachings of Miller and Lansdale. The Appellant also argues that the combination of Miller and Lansdale would yield a system that differs from a preferred embodiment of the Specification — “bypassing the claimed device 100.” Appeal Br. 12, 13 (referring to annotated versions of the Specification’s Figures 4 and 5). But, the Appellant, here, is not addressing what is claimed; the identified features of the Specification are not recited in — and may not be incorporated into — claim 1. As noted above, the Examiner (Final Action 4) relies upon Lansdale to teach the location of the claimed “first container” — i.e., the location of a vessel (“hopper 52”) disclosed in Lansdale. Thus, the ultimate gravamen of the Appellant’s argument is that the Examiner’s reliance upon Lansdale is somehow improper. In one aspect, the Appellant disputes the propriety of relying upon Lansdale: “One of ordinary skill in the art would not be motivated to even look to Lansdale in trying to solve problems associated with laying optical fiber cable/microduct under roadways.” Appeal Br. 14. According to the Appellant, Appeal 2018-008483 Application 15/785,967 8 Lansdale discloses a sand channel trenching and pipe laying apparatus useful for laying pipe, trenching, and sand or gravel laying in sports fields, golf courses, parks, and the like. Lansdale includes a turf pre-cutter means, channel excavating wheels, a pipe feeding and dispensing device, a “sand or gravel hopper” (fill container) and funnel, and water plumbing means for creating a wet sand or gravel flow. Id. (citing Lansdale col. 1, ll. 58–67). The Appellant contends: [C]utting horizontally to remove turf (grass), then cutting a trench to lay a pipe, laying the pipe, and covering the pipe on a golf course according to Lansdale is very different from cutting a micro-trench in a roadway and then installing optical fiber cable/microduct in the micro-trench. Id. The Appellant’s position amounts to an assertion that Lansdale may not be relied upon, because Lansdale constitutes non-analogous art. “Prior art is analogous if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015). A reference is analogous if either of these two tests is met. Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014). Yet, the Appellant does not explain the basis for the allegation that the techniques disclosed in Lansdale are “very different from cutting a micro-trench in a roadway and then installing optical fiber cable/microduct in the micro-trench.” Appeal Br. 14. Notably, none of the independent claims at issue recites trenching and installation in a “roadway.” Id. In any event, Lansdale states that “[t]his invention relates to excavating and trenching apparatuses” and characterizes the “Related Art” as including “[v]arious mechanized excavating apparatuses . . . proposed and implemented for digging, trenching, and Appeal 2018-008483 Application 15/785,967 9 laying cables, flexible pipe, ducts, or other elongated objects in the ground.” Lansdale col. 1, ll. 6–7, 11–16 (emphasis added). Therefore, Lansdale is in the same field of endeavor as the claimed subject matter — the first analogous-art inquiry. Moreover, Lansdale teaches cutting a trench, laying a conduit in a trench, and covering it (see Answer 4; Lansdale Abstract, col. 5, ll. 40–44) — features of claim 1. Thus, Lansdale is also reasonably pertinent to the particular problem attempting to be solved, in claim 1 — the second analogous-art inquiry. Accordingly, the Appellant does not persuasively argue that Lansdale is not analogous art to the claimed subject matter. The Appellant further argues that “[t]here is no disclosure in Lansdale that would motivate one of ordinary skill in the art to combine the structures of Lansdale with the micro-trencher of Miller.” Appeal Br. 14. To the contrary, the Examiner identifies sufficient reasons to combine the teachings of Miller and Lansdale. According to the Examiner, a person of ordinary skill in the art at the relevant time would have had a reason to modify Miller, by employing the Lansdale technique of forming a trench, laying a conduit, and filling the trench with a single apparatus, in order to “allow[ ] the trenching, laying, and filling steps to be performed in a single pass.” Final Action 5; Answer 5. Indeed, Lansdale states that the disclosed embodiments provide techniques for digging trenches, laying conduit, and filling trenches “quickly, efficiently, and economically.” Lansdale col. 5, ll. 40–44. Further, the Examiner explains that a person of ordinary skill in the art at the relevant time would have had a reason to modify Lansdale, by employing the vacuum spoil-collection technique of Miller, so as to “reduce the amount of debris to be disposed of offsite resulting from the digging of the trench” Appeal 2018-008483 Application 15/785,967 10 (Answer 5), and to reduce the costs of disposing of spoil and obtaining fill (Advisory Action 2, 3). In addition, Miller’s vacuum system, for collecting spoil, brings the additional advantage of cooling the trench-cutting blade (Miller ¶ 77), providing yet another reason for the combination with Lansdale. Therefore, we are not persuaded by the Appellant’s position that a reason to combine Miller and Lansdale might be lacking. The Appellant also argues that “Lansdale teaches in a direction away from the claimed invention,” because Lansdale discloses digging a trench, while discharging the removed earth on either side thereof. Appeal Br. 14 (citing Lansdale col. 1, ll. 25–32, Fig. 4). According to the Appellant, “based on the teaching of Lansdale there would be no need for the vacuum device to remove earth (spoil).” Id. The Appellant has not identified evidence sufficient to support a determination that Lansdale teaches away from the claimed subject matter. According to our reviewing court: A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citations and quotation marks omitted). Here, there is no identified disclosure of Lansdale that could be understood to criticize, discredit, or otherwise discourage Miller’s technique of collecting spoil. The Appellant also argues that the claimed subject matter yields unexpected advantages, requiring a determination of nonobviousness. Appeal 2018-008483 Application 15/785,967 11 Appeal Br. 15–17. In support, the Appellant provides a declaration of Angelo J. Pino, dated February 23, 2018 (“Pino Declaration”). The Appellant states: Appellant’s crews used the claimed device 100 shown in Figs. 3–5 of the present application to install optical fiber cable below streets and walkways for Google, Verizon, and Crown Castle during 2017. It was surprising and unexpected to Appellant and Appellant’s crews that using the present invention they were able to continuously cut the micro-trench, lay the optical fiber cable/microduct in the micro-trench, fill the microtrench, and then seal and color the top to match the surrounding surface (asphalt or cement) at a rate of up to 25 feet per minute at 4–6 inches deep and up 18 feet per minute at 12– 16 inches deep. Previous to the present invention, Appellant was only able to cut the mirco-trench [sic], lay the optical fiber cable/microduct in the micro-trench and then cover the optical fiber cable/microduct at a rate of about 3–4 feet per minute. Other competing crews working for Google during this same time period were only able to obtain about 3–4 feet per minute. Google was so impressed with the present invention's greatly increased efficiency that it sent other crews to study Appellant’s novel device 100 and method of installing optical fiber cable. The present invention provides an unexpected increase in speed of installing optical fiber cable of up to 2–5 times faster, depending upon the prior art method used, the surface being cut, and the requirements for the job. Appellant has seen actual cost savings of 25–60% over the prior art methods, depending upon the surface being cut and specific requirements for [sic] job. Using the claimed invention, one crew can now install the same amount of optical fiber cable below the streets and walkways as 2 to 5 work crews using the prior art methods, depending upon the prior art method used, the surface being cut, and the specific job requirements. Appeal 2018-008483 Application 15/785,967 12 Appeal Br. 16. See also Pino Decl. 2–3. Consequently, the Appellant contends: The present invention also is far less disruptive to traffic since the entire operation of laying and covering optical fiber can now be conducted up to 2 to 5 times faster, with a smaller footprint (less [sic] vehicles), and the functions can be conducted simultaneously. The previous methods required additional vehicles, and that the roadway remain closed until a later time when the conventional open micro-trench was filled and/or sealed. Appeal Br. 17. The Appellant’s reliance upon “surprising and unexpected” results (id. at 16) invokes one of the objective considerations (sometimes called “secondary considerations”) in an obviousness analysis. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1372 (Fed. Cir. 2019). In order for such considerations to bear any significance to the analysis, the evidence relied upon must have a legally and factually sufficient connection — often called a “nexus” — to the claimed subject matter. Id. at 1373. Such a nexus is lacking, here, because the Appellant does not adequately show that the Pino Declaration describes equipment that is commensurate with claim 1. See In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980) (“In order to establish unexpected results for a claimed invention, objective evidence of non- obviousness must be commensurate in scope with the claims which the evidence is offered to support.”) (citations omitted). Notably, the equipment characterized as “the present invention” — and to which the Pino Declaration ascribes “surprising and unexpected” results —not only created a trench, laid a conduit, and filled the trench, but also “seal[ed] and color[ed] the top to match the surrounding surface (asphalt or cement).” Pino Decl. 2. Appeal 2018-008483 Application 15/785,967 13 Yet, none of the independent claims in this Appeal contain such sealing and coloring recitations. Therefore, it is unclear whether the asserted speed advantage, over the prior art, stems from claimed subject matter — or from the techniques for sealing and/or coloring used in what is called “the present invention” (id.). Moreover, the Pino Declaration draws a comparison to “previous methods” that “required additional vehicles” and “installed optical fiber cable below the streets piecemeal, i.e. they cut a portion of micro-trench, stopped, lay the optical fiber cable in the micro-trench, stopped, filled or temporary cover in the micro-trench, stopped, and then later, often days later, applied the final seal.” Pino Decl. 3. The Pino Declaration further states that “[p]rior to the present invention, one would use the Miller micro- trencher in the far slower prior art methods of installing optical fiber cable.” Id. at 4. Yet, neither the Pino Declaration nor the Appeal Brief offers a comparison to Lansdale, in regard to the speed of creating a trench, laying a conduit, and filling the trench — even though Lansdale (but not Miller) discloses a technique for continuously digging a trench, laying the conduit, and filling the trench. Instead, the Appellant contends that “Lansdale is so far removed from the present invention, that there is no way to conduct a meaningful comparison.” Appeal Br. 17. The Appellant’s evaluation of Lansdale lacks adequate support, as explained above (regarding Lansdale’s status as analogous art). Nor does the Appellant make a comparison to embodiments disclosed in Gustavsson (another reference employed in various rejections in the Appeal), wherein a trench-forming device is combined with a filling device. See Gustavsson ¶ 38 (“[A]ccording to yet another embodiment of the invention, the sawing machine comprises at least Appeal 2018-008483 Application 15/785,967 14 one filling channel arranged immediately behind the stabilising device or being integrated in the stabilising device.”) According to Gustavsson, “[t]he advantage of this embodiment is to make it possible to saw the trench and lay down ducts/cables and restore the trench in one single operation and thereby save time and money.” Id. ¶ 39 (emphasis added). Furthermore, as the Examiner points out, the speed improvement gained by combining multiple steps into one operation is not unexpected: [U]sing a single apparatus to install optical fiber would obviously be faster and less disruptive than using multiple vehicles because when using multiple vehicles, the trailing vehicle(s) must wait until the leading vehicle(s) complete their respective tasks before the trailing vehicle(s) can perform their respective tasks. Therefore, the results associated with the use of the claimed invention are not unexpected. Advisory Action 2. Therefore, the evidence of record does not establish that the claimed subject matter achieves unexpected results. The Appellant further contends that the Pino Declaration provides evidence that “Google attempted and continues to attempt to copy the claimed invention.” Reply Br. 3 (citing Pino Decl. 6–7). Like unexpected results, “evidence that a competitor has copied a product embodying a patented invention can be an indication of nonobviousness.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012) (citation omitted). According to Mr. Pino, Google “sent crews and employees to study and film my crews installing optical fiber using the present invention to learn how we are able to consistently and continuously install the optical fiber at far greater speeds, far less expense, with excellent precision, far reduced disruption to traffic, and with excellent sealing of the microtrench.” Pino Decl. 6–7. However, the Pino Declaration presents no Appeal 2018-008483 Application 15/785,967 15 evidence of any device or method created by any copyist and the Appellant does not identify any equipment created by the allegedly copying, so as to show that such equipment is commensurate with claim 1. Thus, there is no record evidence that the claimed subject matter was copied. In view of the foregoing, the Appellant does not persuade us of error in the rejection of independent claim 1 and of dependent claim 3 (for which no separate argument is presented) under 35 U.S.C. § 103. II. Dependent Claim 2 Claim 2 depends from independent claim 1 and further recites: wherein the least one spoil transport device is configured to transfer at least a portion of the spoil from the first container to the fill device so that the at least a portion of the spoil can be used as at least a portion of the fill. The Appellant’s argument disputes the Examiner’s finding that Lansdale’s “funnel 41” teaches the claimed “fill device” (Appeal Br. 18–20) — a finding that was part of the Examiner’s rejection of base claim 1 (Final Action 4). Although the Appellant states that, in Lansdale, “[t]he fill is contained in the hopper 52 (fill container) not in the funnel 41,” the Appellant also acknowledges that Lansdale’s “fill material flows from the sand hopper 52 to the funnel 41 where the fill fills the channel (trench).” Id. Therefore, the Appellant does not persuasively argue that Lansdale’s “funnel 41” cannot teach the claimed “fill device.” The Appellant also re-argues an issue raised in regard to claim 1: “The combination of Miller and Lansdale simply does not teach or even suggest the claimed first container”; therefore, the combination of “Lansdale and Miller cannot possibly teach transferring spoil from [Lansdale’s] hopper 52 because the hopper 52 does not contain spoil.” Id. The Appeal 2018-008483 Application 15/785,967 16 Appellant, however, is regarding Miller and Lansdale, individually, as opposed to considering the combination of both references’ teachings. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non- obviousness by attacking references individually where, as here, the rejections are based on combinations of references.”) (citation omitted). For the same reasons already explained above, the Examiner properly combines the teachings of Miller and Lansdale. The Appellant also argues that, as disclosed in the Specification, “[t]he fill 212 contains other ingredients, such as sand, concreted [sic], bonding agents, colorants, and/or sealants, to which the spoil 12 can be added.” Id. at 20 (citing Spec. ¶¶ 54, 57). However, this argument is not persuasive, at least because these other ingredients are not recited in claim 2. Therefore, we sustain the rejection of claim 2 under 35 U.S.C. § 103. III. Dependent Claim 4 Claim 4 depends from claim 3 (depending, in turn, from claim 1), adding the following limitations: wherein the at least one vacuum device comprises a first vacuum device constructed to vacuum the spoil from the micro trencher and a second vacuum device constructed to transfer at least a portion of the spoil from the first container to the fill device. The Examiner identifies distinct vacuum system component of Miller, associated with elements numbered 130 and 160, as corresponding to the claimed “first vacuum device” and “second vacuum device.” Final Action 5 (citing Miller ¶¶ 77, 98, Figs. 5, 12). The Appellant does not dispute the Examiner’s mapping of claim 4’s added limitations to Miller. Instead, the Appellant re-asserts a position Appeal 2018-008483 Application 15/785,967 17 presented in regard to claim 1 — i.e., the combination of Miller and Lansdale does not teach or suggest the claimed “first container” (the element that holds collected spoil), such that the combination of Miller with Lansdale cannot teach transferring “spoil” from the “first container” to the “fill device.” Appeal Br. 20–21. For the reasons already explained, the Appellant’s position is not persuasive of error, such that we sustain the rejection of claim 4 under 35 U.S.C. § 103. IV. Dependent Claim 5 Claim 5 depends from claim 1 and adds the further limitations: “wherein the at least one reel holder constructed to hold the reel of cable or innerduct/microduct is present on the second trailer or second truck following the first trailer or first truck.” The Examiner relies upon Lansdale (specifically, Lansdale’s “support 61”) as teaching the claimed “reel holder” that is “present on the second trailer” (Lansdale’s “subframe 42”) “following the first trailer” (Lansdale’s “subframe 34”). Final Action 5–6; Lansdale col. 3, l. 46, col. 4, ll. 31–34, Fig. 2. Yet, in regard to base claim 1, the Examiner identifies Lansdale’s “subframe 42” as the claimed “first trailer.” Final Action 4. The Examiner does not address the inconsistency of mapping the claimed “first trailer” to Lansdale’s “subframe 42,” in rejecting claim 1, but to “subframe 34,” in rejecting claim 5 (which depends from claim 1). The Appellant points out this inconsistency in the rejection, arguing that the Examiner provides no reason to “put the reel on a separate device,” in the rejection of claim 5. Appeal Br. 22. Appeal 2018-008483 Application 15/785,967 18 We agree with the Appellant. Accordingly, we do not sustain the rejection of claim 5 under 35 U.S.C. § 103. V. Dependent Claim 6 Claim 6 depends from claim 1 and adds the further limitation: “wherein the at least one spoil transport device comprises a conveyor.” According to the Examiner, Miller’s “vacuum hose 130” discloses the claimed “conveyor.” Final Action 6 (citing Miller ¶¶ 77, 98, Figs. 1, 5, 12). The Appellant states: “A vacuum hose 130 is not a conveyor.” Appeal Br. 23 (citing Spec. Fig. 9A). The Appellant argues that paragraph 56 of the Specification supports this position. Reply Br. 6. The disputed issue, regarding the rejection of claim 6, is one of claim interpretation — the term “conveyor,” in particular. The Appellant draws attention to the Specification — and properly so, as the Federal Circuit has emphasized the importance of the Specification, in matters of claim interpretation: The specification contains a written description of the invention which must be clear and complete enough to enable those of ordinary skill in the art to make and use it. Thus, the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Paragraph 56 of the Appellant’s Specification clearly distinguishes a “conveyor” from a “vacuum device” (both of which are identified as “spoil transport devices”): One or more spoil transport devices are utilized in the present invention to transfer spoil from the micro trencher 2, and optionally also the trench 11, and move the spoil 12 to first container 104, fill device 200, trucks, and/or any other devices Appeal 2018-008483 Application 15/785,967 19 utilized in the present invention. Figs. 1–8 illustrate embodiments of the spoil transport devices comprising vacuum devices, as discussed above. Instead of vacuum devices, the spoil transport devices can be a conveyor 300, a screw 302, or any other spoil moving device as shown in Figs. 9A and 9B. Preferably, the spoil transport device for removing spoil from the micro trencher 2 and trench 11 comprises a vacuum device. Spec. ¶ 56. The referenced Figure 9A, reproduced below, depicts “conveyor 300” as a moving belt (or similar structure) that would carry the spoil on its upper moving surface: Figure 9A is an elevation view showing “conveyor 300” arranged to transport “spoil 12” from “first container 104” to “fill device 200.” Id. ¶ 56. The depiction of “conveyor 300,” in Figure 9A, informs an understanding that distinguishes the term “conveyor” from a vacuum device, which would carry spoil mixed into a moving stream of fluid (such as air). See id. ¶¶ 50– 51, 53–55. In view of this distinction between the term “conveyor” and vacuum devices, we agree with the Appellant’s position that the claimed “conveyor” — when understood, in view of the Specification — cannot be interpreted as encompassing a vacuum device, such as Miller’s “vacuum hose 130.” Appeal 2018-008483 Application 15/785,967 20 Therefore, based upon the foregoing analysis, we do not sustain the rejection of clam 6 under 35 U.S.C. § 103. VI. Dependent Claim 7 Claim 7 depends from claim 1 and adds the limitation: “wherein the at least one spoil transport device comprises a screw.” The Examiner finds that Lansdale teaches the claimed “screw” in its disclosure of a “screw clamp” used to secure “connector 51” to “hopper 52.” Final Action 6 (citing Lansdale col. 4, ll. 64–65, Fig. 2). The Appellant disputes the Examiner’s mapping of the claimed “screw” to Lansdale’s “screw clamp,” as the claim term should be understood, in view of the Specification — especially paragraph 56 and Figure 9B. Appeal Br. 23–24; Reply Br. 6–7. We agree with the Appellant. The Specification’s description of a “screw” as a “spoil moving device” (Spec. ¶ 56) and the representation thereof (in Figure 9B) provide the understanding that the term “screw” refers to a type of Archimedean screw — a familiar (indeed, ancient) mechanism for transporting material. See Witold Rybczynski, One Good Turn: A Natural History of the Screwdriver and the Screw 139–143 (2000). Figure 9B of the Specification, showing “screw 302,” is reproduced below: Appeal 2018-008483 Application 15/785,967 21 Figure 9B is an elevation view showing “screw 302” arranged to transport “spoil 12” from “first container 104” to “fill device 200.” Id. ¶ 56. The depiction of “screw 302,” in Figure 9B, supports an understanding of a helical structure employed to transport material, in the manner of an Archimedean screw. By contrast, Lansdale’s “screw clamp,” fastens one component to another, but does not transport any material, in the manner of claim 7. See Lansdale col. 4, ll. 64–65 (“Connector 51 is secured to sand hopper 52 by either a screw clamp or other fastening means well known in the art.”) Accordingly, we do not sustain the rejection of clam 7 under 35 U.S.C. § 103. VII. Independent Claim 9 and Dependent Claims 10, 13, 14, 19, 22, and 23 (New Ground of Rejection) Independent claim 9 stands rejected as obvious over the combination of Miller and Lansdale. Claim 9 recites: 9. A method of continuously laying cable or innerduct/microduct comprising: continuously using a micro-trencher to cut a micro-trench in ground and create spoil; continuously transporting at least a portion of the spoil from the micro-trencher to a first container constructed to contain spoil using at least one spoil transporting device; continuously laying the cable and/or innerduct/microduct in the micro-trench from a reel device; and continuously filling the micro-trench with a fill from a fill device. Claim 9 is similar to claim 1, in many respects (albeit with claim 9 drawn to a method, whereas claim 1 is drawn to a device), and the Appeal 2018-008483 Application 15/785,967 22 Examiner’s analysis of claim 9 is, likewise, similar to that of claim 1. See Final Action 4–7. However, unlike the rejection of claim 1 (see id. at 4), the Examiner does not map claim 9’s “first container” (that is “constructed to contain spoil”) to Miller (which refers to a “vacuum collection chamber” at ¶ 77). Instead, the Examiner states that Miller “fails to disclose” claim 9’s “first container” and relies on Lansdale’s “hopper 52” for such teaching. Final Action 6. The Examiner’s rejection of claim 9 is, in the respect noted, inconsistent with the rejection of claim 1. This inconsistency leads to some uncertainty, for example, with regard to the rejection of claims 10, 11, and 13, because these claims are analyzed together with claim 1 (see id. at 4) — even though claims 10, 11, and 13 depend from claim 9 (not from claim 1). In order to resolve the inconsistency, we exercise our authority under 37 C.F.R. § 40.51(b), by entering a new ground of rejection for claim 9 — altering the Examiner’s analysis to the extent of mapping of the “first container” to the “vacuum collection chamber” disclosed in Miller’s paragraph 77, in consonance with the Examiner’s rejection of claim 1 (Final Action 4). This new ground of rejection also applies to claims depending from independent claim 9, as well as independent claim 25 (which incorporates the method of claim 9) and its dependent claims 26–28 depending therefrom; however, the rejections of such claims might not be sustained, based upon other reasons addressed in this Decision. Beyond this alteration to the Examiner’s analysis, the basis for the new ground of rejection, the Appellant’s arguments for claim 9 (Appeal Br. 26–32) re-plow ground already covered above, in regard to claim 1. In Appeal 2018-008483 Application 15/785,967 23 addition, the Appellant also re-argues the position that the Examiner erroneously maps the “fill device” to Lansdale’s “funnel 41” (id. at 25–26) — an argument that the Appellant presented, with respect to claim 2 (id. at 18–19) and that is addressed above, in the corresponding section. Accordingly, for the identified reasons addressed herein, we sustain the rejection of independent claim 9, designating the affirmance as a new ground of rejection, and dependent claims 10, 13, 14, 19, 22, and 23 (which are not separately argued), under 35 U.S.C. § 103. VIII. Dependent Claim 11 Claim 11 depends from claim 9 and adds the limitation: “further comprising using at least one spoil transporting device to transport at least a portion of the spoil from the first container to the fill device, wherein the fill comprises at least a portion of the spoil.” The Appellant’s arguments for claim 11 duplicate those presented for claim 2. See Appeal Br. 19–20 (claim 2), 33–34 (claim 11). Accordingly, for the reasons already addressed, we sustain the rejection of claim 11 under 35 U.S.C. § 103. IX. Dependent Claim 12 Claim 12 depends from claim 9, adding the limitation: “further comprising using an outlet constructed to allow air to flow into and/or out of the first container.” The Appellant’s argument for claim 12 is based entirely upon the asserted failure of the combination of Miller and Lansdale to teach or suggest the “first container”: The combination of Miller and Lansdale simply does not teach or even suggest the claimed first container 104 on the device Appeal 2018-008483 Application 15/785,967 24 100. Therefore, the combination of references cannot teach or suggest “using an outlet constructed to allow air to flow into and/or out of the first container” 104. Appeal Br. 34–35. We have already addressed this argument, with regard to the Appellant’s positions concerning independent claims 1 and 9. Accordingly, for the reasons already addressed, we sustain the rejection of claim 12 under 35 U.S.C. § 103. X. Dependent Claim 15 Claim 15 depends from claim 9, adding the further limitation: wherein the at least one spoil transporting device comprises a second spoil transporting device comprising at least one second vacuum device, and using the at least one second vacuum device to transfer the spoil from the first container to the fill device. Yet, in the manner of the position offered for claim 12, the Appellant’s argument for claim 15 is based entirely upon the asserted failure of the combination of Miller and Lansdale to teach or suggest the “first container” — although the Appellant refers to the term “spoil container,” which is used in the Specification, but does not appear in claim 15: The combination of Lansdale and Miller does not teach or even suggest the claimed spoil container 104 and thus, cannot possibly teach transferring spoil from the spoil container 104 to the fill device 200 using a second vacuum device 114, 116. Appeal Br. 36. We have already addressed this argument, with regard to the Appellant’s positions concerning independent claims 1 and 9. Accordingly, Appeal 2018-008483 Application 15/785,967 25 for the reasons already addressed, we sustain the rejection of claim 15 under 35 U.S.C. § 103. XI. Dependent Claim 16 Claim 16 depends from claim 9, adding the further limitation: “wherein the reel device comprises at least one reel holder constructed to hold a reel of the cable or innerduct/microduct.” The Appellant argues that the Examiner provides no evidence or argument for putting Lansdale’s “reel on a separate device,” so as to meet the “reel holder” limitation. Appeal Br. 38. The Examiner maps Lansdale’s element 36 to the claimed “reel” and Lansdale’s element 61 to the claimed “reel holder.” Final Action 5–6. Lansdale discloses “pipe 39 . . . provided by pipe reel 36 with bearings 38 secured to hopper 52 by support 61.” Lansdale col. 4, ll. 31–32, Fig. 2. Although the Appellant argues that there is no evidence for putting Lansdale’s “reel on a separate device” (Appeal Br. 38), this is precisely what Lansdale’s “support 61” accomplishes, without any modification. Accordingly, the Appellant does not persuade us of error. Therefore, we sustain the rejection of claim 16 under 35 U.S.C. § 103. XII. Dependent Claim 17 Claim 17 depends from claim 9, adding the limitation: “wherein the at least one spoil transporting device comprises a second spoil transporting device comprising a conveyor.” The Appellant disputes the Examiner’s reliance on Miller’s “vacuum hose 130,” to meet the “conveyor” limitation. Appeal Br. 38. The issue, here, and the Appellant’s argument are identical to those addressed above, with regard to claim 6. Accordingly, for the reasons Appeal 2018-008483 Application 15/785,967 26 already addressed above, we do not sustain the rejection of claim 17 under 35 U.S.C. § 103. XIII. Dependent Claim 18 Claim 18 depends from claim 9, adding the limitation: “wherein the at least one spoil transporting device comprises a second spoil transporting device comprising a screw.” The Appellant disputes the Examiner’s reliance on Lansdale’s “screw clamp” to satisfy the claimed “second spoil transporting comprising a screw.” Appeal Br. 39. The issue, here, and the Appellant’s argument are identical to those addressed above, with regard to claim 7. Accordingly, for the reasons already addressed above, we do not sustain the rejection of claim 18 under 35 U.S.C. § 103. XIV. Dependent Claim 20 Claim 20 depends from claim 18 (which depends, in turn from claim 9), adding the limitation: “wherein the fill comprises a bonding agent.” As explained in the prior section, we do not sustain the obviousness rejection of base claim 18. Because the rejection of claim 20 (see Final Action 8) does not negate the reason for our determination that claim 18 was addressed in error (i.e., the failure to teach or suggest the “screw” of claim 18), we likewise do not sustain the rejection of claim 20. Accordingly, for the reasons already addressed above (with regard to claim 18), we do not sustain the rejection of claim 20 under 35 U.S.C. § 103. Appeal 2018-008483 Application 15/785,967 27 XV. Dependent Claim 21 Claim 21 depends from claim 19 (which depends, in turn from claim 9), adding the limitation: “wherein the fill comprises a coloring agent so that a color of the fill substantially matches a color of the surface the micro- trench is formed in.” The Examiner finds that paragraph 42 of Gustavsson teaches the claimed “coloring agent.” Final Action 8. The cited portion of the references states: “The filling material may be colored in a signal (clearly visible) color in order to warn during future excavations that fiber cables are placed below.” Gustavsson ¶ 42. The Examiner maintains that it would have been obvious, to a person of ordinary skill in the art at the relevant time, to apply the Gustavsson warning-color technique to make a fill that “provide[s] a desired amount of differentiation between the filling material and the surface of the trench” (Final Action 8) — including a fill that matches the surface adjacent the trench (Answer 5). Asserting error, the Appellant argues: Adding a color to the fill to provide a warning according to Gustavsson is the opposite of the claimed method of using a coloring agent so that a color of the fill substantially matches a color of the surface the micro-trench is formed in. To provide a warning, the color must be different from the surrounding surface color, otherwise no warning would be provided. In contrast, in the claimed invention, the color is used to hide the trench by providing a color that substantially matches a color of the surface the micro-trench is formed in. Appeal Br. 45. The Appellant’s argument is persuasive. Although Gustavsson teaches the addition of color to fill material, the reference does not teach the Appeal 2018-008483 Application 15/785,967 28 particular technique of altering the color of fill, in order to match a different color. Accordingly, we do not sustain the rejection of claim 21 under 35 U.S.C. § 103. XVI. Dependent Claim 24 Claim 24 depends from claim 22 (which depends, in turn, from claim 9), adding the further limitation: “wherein the filling of the micro- trench is conducted in one step.” The Examiner rejects both claim 24 and claim 22 (from which claim 24 depends) as obvious over the combination of Miller, Lansdale, and Purcell. Final Action 8–9. Purcell is relied upon for teaching the use of a “line marker” to define the path of a microtrench — a feature relating to claim 22 (which the Appellant does not argue separately in this Appeal). Id. As to claim 24, the rejection states: “Regarding claim 24, given the apparatus as disclosed above the method of claim 24 would have been considered obvious to one of ordinary skill in the art.” Id. at 9. Indeed, Lansdale combines forming a trench, laying a conduit, and filling the trench — all in a single, continuous process — such that the combination of Lansdale with Miller “allow[s] the digging a microtrench, laying a cable in the microtrench, and then covering the cable with spoil supplied by the apparatus as disclosed by Miller, thereby allowing the trenching, laying, and filling steps to be performed in a single pass.” Final Action 7 (regarding claim 9). See also id. at 4–5 (regarding claim 1); Advisory Action 2. The Appellant argues that the combination of Miller, Lansdale, and Purcell “does not teach or even suggest the claimed step of filling the micro- trench in one step.” Appeal Br. 46. Yet, as just noted, the Examiner Appeal 2018-008483 Application 15/785,967 29 adequately shows that combination of Miller and Lansdale achieves the claimed “one step” feature. The Appellant’s references to Purcell’s “use of a micro-duct and sealer in [a] micro-trench” (id. at 47) and the Specification’s disclosure of “[f]illing a microtrench in one step using a color matched bonding agent/concrete mixture” (id. at 46 (quoting Spec. ¶ 59, emphasis omitted)) do not bear on the rejection of claim 24, because neither claim 24, nor any claim from which it depends, recites these features. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). Accordingly, we sustain the rejection of claim 24 under 35 U.S.C. § 103. XVII. Independent Claim 25 and Dependent Claim 28 Independent claim 25 is a method claim that incorporates the method of claim 9: 25. A method of providing a temporary and permanent optical fiber network comprising: dispensing an optical fiber from a support, the optical fiber having a first end and a second end; laying the dispensed optical fiber on a surface; covering the dispensed optical fiber with a protection device that protects the optical fiber from footwear or vehicle traffic; connecting the first end to a feed; connecting the second end to a desired user; and using the method of claim 9 to bury the optical fiber to form a permanent optical fiber network. Appeal 2018-008483 Application 15/785,967 30 The Appellant’s arguments relate to the recited “temporary” network and “covering” optical fiber “with a protection device that protects the optical fiber from footwear or vehicle traffic.” Appeal Br. 48–50. In rejecting claim 25, the Examiner relies upon Caron for teaching the formation of the claimed “temporary” network, and upon Pichler for teaching the claimed “protection device” and its use. Final Action 9–10. The Appellant argues: “None of the cited references teaches or even disclose [sic] forming the claimed temporary optical fiber network.” Appeal Br. 50. The Appellant further argues “[t]here can be no possible claimed ‘footwear or vehicle traffic’ at the bottom of the” trench formed by Caron’s method. Id. at 49. Additionally, “there is no need for the alleged protection cover of Pichler at the bottom of [a] trench.” Id. The meaning of the claim language at issue is illuminated by the Specification, which states: a temporary fiber optic cable network can be laid out on the surface and utilized as a temporary optical fiber network. The temporary optical fiber network can be protected with any desired protection device, such as conduit, tarps, tape or other type of cover, that can be skid proof, and constructed for outdoor use which can withstand foot and vehicle traffic. For example, the tape can be heated to activate an adhesive, or peelstick, silicone, epoxy glue or any desired type of adhesive. The surface can be a street, sidewalk, driveway, asphalt, concrete, dirt, interior floor, or any other desired surface. Spec. ¶ 63. Further, in an example, the optical fiber network can be made permanent by removing the protection device 512, creating slack in the optical fiber 502 by uncoiling the optical fiber from the extenders in the box 520, creating a microtrench as described herein, burying the optical fiber and covering the optical fiber with a fill, and permanently mounting or burying the box[ ] 520. Appeal 2018-008483 Application 15/785,967 31 Id. ¶ 67. Thus, the Specification shows that a “temporary” network involves a cable, at some point, “laid out on [a] surface” and “protected with any desired protection, such as conduit, tarps, tape or other type of cover”; such a “temporary” network can subsequently be made “permanent,” by “burying the optical fiber and covering the optical fiber with a fill.” Id. ¶¶ 63, 67. Considering the claim language, in view of the Specification, and under the applicable claim-construction principles, the Appellant’s arguments do not persuade us of error in the rejection of claim 25. Caron teaches laying “[f]iber optic cable 24” “on a level and uniform surface” of “common trench 12.” Caron 5, ll. 1–9, Fig. 2. Notably, the Specification states that a “temporary fiber optic cable network” may be “laid out on [a] surface,” and clarifies that “[t]he surface can be . . . any . . . desired surface.” Spec. ¶ 63. Pichler teaches “cover strip 8” being “laid over the pipe 2 or the optical cable,” wherein “cover strip 8” provides “mechanical protection of the pipe 2,” before a “hardenable filler material 5” is added. Pichler ¶ 63. Therefore, combining the features of Caron and Pichler, in the Examiner’s rejection (Final Action 9–10; Answer 5–6), satisfies the claim 25 limitations of a “temporary . . . fiber network comprising” “laying the . . . optical fiber on a surface” and “covering the dispensed optical fiber with a protection device that protects the optical fiber from footwear or vehicle traffic.” The Appellant argues that Caron discloses a “permanent” network, but not a “temporary” one. Appeal Br. 49. However, as discussed above, the claim term “temporary” refers to a point in the temporal sequence of positioning of optical fiber “on a surface,” and then covering it with a Appeal 2018-008483 Application 15/785,967 32 “protection device,” before “bury[ing] the optical fiber.” The Examiner’s combination of Caron and Pichler meets these features. The Appellant also argues: “There can be no possible claimed ‘footwear or vehicle traffic’ at the bottom of the formed trench,” in Caron. Id. Therefore, “there is no need for the alleged protection cover of Pichler at the bottom of [the] trench.” Id. However, although the recited “protection device,” once positioned to “cover” the optical fiber, “protects the optical fiber from footwear or vehicle traffic,” the claim does not require the “protection device” to be trod upon or driven over. Rather, the claim merely requires a “protection device” that “protects” the optical fiber from such impacts. The Specification supports this understanding, stating that the “protection device, such as conduit, tarps, tape or other type of cover,” be “constructed for outdoor use which can withstand foot and vehicle traffic.” Spec. ¶ 63. In view of the foregoing, we sustain the rejection of independent claim 25 and dependent claim 28 (for which the Appellant presents no additional argument) under 35 U.S.C. § 103. XVIII. Dependent Claim 26 Claim 26 depends from claim 25, adding the further limitation of “permanently mounting or burying the support.” The Appellant argues that the Examiner erroneously maps the claimed “support” to Caron’s “utility distribution source 16”: The alleged support 16 cited by the Examiner is a “utility distribution source 16.” The claimed support is not a utility distribution source. The claimed support supports the optical fiber cable. Claim 26, and base claim 25, recite “dispensing an optical fiber from a support.” Example[s] of the support are a reel 504 or a box 520 containing a loose coil 506, as shown in Appeal 2018-008483 Application 15/785,967 33 Figs. 11A–11G. The theoretical combination of references does not teach or even suggest the claimed support. Appeal Br. 51. Yet, the Appellant does not identify any deficiency in Caron. The Specification does not use the word “support” in association with the examples that the Appellant identifies — “a reel 504 or a box 520 containing a loose coil 506, as shown in Figs. 11A–11G.” Id. Nevertheless, these examples, along with base claim 25 (which recites “dispensing an optical fiber from a support”), reflect an understanding of the “support” as a structural holder and source of the “optical fiber.” In this regard, Caron discloses “rout[ing] utility lines 14 from several distribution sources 16 to end users 18.” Caron 4, ll. 20–21. Further, Caron’s “distribution sources” are structures from which cables or electric lines may be “extend[ed].” Id. at Abstract, ll. 3–4. Therefore, the Appellant does not persuade us of error in the Examiner’s mapping of the recited “support” to Caron’s “distribution source[ ].” In view of the foregoing, we sustain the rejection of claim 26 under 35 U.S.C. § 103. XIX. Dependent Claim 27 Claim 27 depends from claim 25, adding the further limitation: “wherein the support comprises a reel.” The Examiner relies upon the combination of Caron’s “distribution source 16” and Lansdale’s “reel 36” to meet the limitation added in claim 27. Final Action 10–11. In addition to relying on the argument presented for claim 26, the Appellant asserts error, because “Lansdale does not teach or even suggest Appeal 2018-008483 Application 15/785,967 34 using a reel in a temporary optical fiber network, and then burying or mounting the reel when the temporary optical fiber network is made permanent using the novel method of claim 9.” Appeal Br. 52. This argument is unpersuasive, because claim 27 does not recite burying or mounting the claimed “reel.” Therefore, we sustain the rejection of claim 27 under 35 U.S.C. § 103. XX. Dependent Claim 30 Claim 30 depends from claim 24 (which depends, sequentially, from claims 22 and 9), adding the further limitation: “wherein the fill comprises a bonding agent and a coloring agent so that a color of the fill substantially matches a color of the surface the trench is formed in.” With regard to the feature of using a “coloring agent so that a color of the fill substantially matches a color of the surface the trench is formed in,” claim 30 presents an issue similar to the one addressed above, in regard to claim 21. The Appellant’s argument (Appeal Br. 53–54) reflects the position that persuaded us of error in the rejection of claim 21. The same analysis applies to claim 30. Therefore, for the reasons already addressed, in regard to claim 21, we do not sustain the rejection of claim 30 under 35 U.S.C. § 103. XXI. Dependent Claim 31 Claim 31 depends from claim 2 (which depends, in turn, from claim 1), adding the further limitation: “wherein the fill device is configured to mix the at least a portion of the spoil with cement and a bonding agent.” The Examiner relies upon Lansdale’s “funnel 41” as teaching claim 31’s additional features of the claimed “fill device.” Final Action 8. Appeal 2018-008483 Application 15/785,967 35 The Appellant disputes this mapping of the claimed “fill device . . . configured to mix the at least a portion of the spoil with cement and a bonding agent” to Lansdale’s “funnel 41.” Appeal Br. 41. The phrase “configured to” is regarded as invoking structural specificity for a particular role — akin to the phrases “made to” and “designed to” — as opposed to broader meaning of the phrases “suitable for” and “capable of.” In re Man Machine Interface Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016) (citations omitted). Lansdale consistently characterizes the operation of the “funnel” as “funneling and directing sand or gravel into the channel.” Lansdale col. 2, ll. 8–9. See also id. at col. 2, ll. 26–27, col. 3, ll. 9–10, 25–26, col. 4, ll. 54– 55. Yet, Lansdale does not teach or suggest that the “funnel” would be capable of “mix[ing]” its contents — let alone that the disclosed “funnel” might be “configured” to do so, as claimed. Accordingly, we do not sustain the rejection of claim 31 under 35 U.S.C. § 103. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 13, 14 112(b) Indefiniteness 13, 14 1–7, 9– 20, 31 103 Miller, Lansdale 1–4, 9– 16, 19 5–7, 17, 18, 20, 31 9–16, 19 21 103 Miller, Lansdale, Gustavsson 21 22, 24 103 Miller, Lansdale, Purcell 22, 24 22, 24 Appeal 2018-008483 Application 15/785,967 36 Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 23 103 Miller, Lansdale, Gustavsson, Purcell 23 23 25–27 103 Caron, Pichler, Miller, Lansdale 25–27 25–27 28 103 Pichler, Miller, Lansdale, Vogel 28 28 30 103 Miller, Lansdale, Purcell, Gustavsson 30 Overall Outcome 1–4, 9– 16, 19, 22–28 5–7, 17, 18, 20, 21, 30, 31 9–16, 19, 22– 28 This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground 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, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection Appeal 2018-008483 Application 15/785,967 37 is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the MPEP § 1214.01. 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-IN-PART; 37 C.F.R. § 40.51(b) Copy with citationCopy as parenthetical citation