Angelo J. Pino et al.

Patent Trials and Appeals Board

Aug 3, 2020

15785967 - (D) (P.T.A.B. Aug. 3, 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.
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.
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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.
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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.
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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.
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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
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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.
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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,
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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
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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”
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(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.
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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.
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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.
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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
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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
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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
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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
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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.
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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
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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.”
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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:

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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
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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
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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
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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,
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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
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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.
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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
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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
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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.
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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.
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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
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“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
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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
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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.
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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
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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)