Ex Parte Bass et al

Patent Trial and Appeal BoardAug 21, 2017

13090221 (P.T.A.B. Aug. 21, 2017)

United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/090,221 04/19/2011 William Everett Bass III 33023-RA 2011 13543 7590 Next IP Law Group LLC 131 S. Cortez St. New Orleans, LA 70119 EXAMINER ADDIE, RAYMOND W ART UNIT PAPER NUMBER 3671 NOTIFICATION DATE DELIVERY MODE 08/23/2017 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): mnguyen @ nextiplaw. com bgunter @ nextiplaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM EVERETT BASS III and JERRY L. JOHNSON Appeal 2016-000963 Application 13/090,221 Technology Center 3600 Before JENNIFER D. BAHR, WILLIAM A. CAPP, and SEAN P. O’HANLON, Administrative Patent Judges. O’HANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-000963 Application 13/090,221 STATEMENT OF THE CASE William Everett Bass III and Jerry L. Johnson (Appellants)1 appeal under 35 U.S.C. § 134 from the Examiner’s August 4, 2014 final decision (“Final Act.”) rejecting claims 1—19.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. SUMMARY OF THE INVENTION Appellants’ disclosure is directed to “diversion of infiltration and subsurface water.” Spec. 11. Claim 1, reproduced below from page A-l of the Appeal Brief (Claims App.), is illustrative of the claimed subject matter: 1. A system of draining roadway materials and diverting subsurface water from a roadway comprising: interceptor trenches configured to divert the subsurface water from under the roadway to the side of the roadway; and aggregate filled in the interceptor trenches. REJECTIONS Claims 1,2, 6—11, and 13—15 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Robinson (US 1,740,119, issued Dec. 17, 1929). Claims 3—5, 12, and 16—19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Robinson.3 1 The Appeal Brief identifies BASS AMERICA SYSTEMS, LLC as the real party in interest. Appeal Br. 1. 2 Claim 20 is allowed. Final Act. 1. 3 Although claim 19 is not listed in the heading of this rejection, the claim is addressed in the body of the rejection. See Final Act. 4. 2 Appeal 2016-000963 Application 13/090,221 ANALYSIS Anticipation Rejection Claims 1, 2, 6—11, 13, and 14 The Examiner finds that Robinson discloses all of the elements of independent claim 1. Final Act. 2 (citing Robinson, col. 2,11. 50-85; col. 3, 11. 49—65; Fig. 8). More specifically, the Examiner finds that Robinson discloses a system of draining roadway materials and diverting subsurface water away from the roadway including interceptor trenches (auxiliary longitudinal trenches 25, cross trenches 26) filled with aggregate. Id. The Examiner explains: [T]he headers (28) of the concrete slab (17) are narrower in width than the trenches (25) so as to contact with the inner portion of the outer trenches and to leave the outside portions of the trenches free to form slip members (16), to reduce the effects of water and frost on the roadway. So clearly the trenches are wider than the headers such that the transverse trenches (26) are in fact configured to divert water from under the roadway to the side of the roadway. Id. at 5 (citing Robinson, p. 2,11. 69-75; Fig. 8). Appellants traverse, arguing that “Robinson fails to disclose interceptor trenches configured to divert the subsurface water out from under the roadway to the side of the roadway.” Appeal Br. 4. According to Appellants, “the trenches of Robinson are only positioned below the treads of the roadway,” therefore: The water that is drained from under the roadway is carried into the cross trenches, but there is no drainage out from under the roadway, as cited in the instant claim. The water in Robinson is drained into the trenches and is held there. No drainage occurs 3 Appeal 2016-000963 Application 13/090,221 to divert subsurface water out from under the roadway to the side of the roadway. Id. Continuing, Appellants assert that “due to the laws of physics, water will flow into the trenches under the roadway — and not to the side of the roadway — until the time at which the trenches overflow,” at which point “there is still no diversion of the subsurface water from under the roadway to the side of the roadway. Instead, there is an overflow of water into the portion of the trench outside of the roadway, but the water in the trench under the roadway will remain under the roadway.” Id. at 5 (emphasis omitted). Appellants also assert that “the section outside of the roadway may collect water and divert it under the roadway.” Id. We are not persuaded by Appellants’ arguments, which appear to be based on an improper interpretation of the claim language. During examination, claims are given their broadest reasonable interpretation consistent with the specification. See In re Am. Acad, of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Construing claims broadly during prosecution is not unfair to the applicant. . . because the applicant has the opportunity to amend the claims to obtain more precise claim coverage.” Id. Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “But that the ‘claims are interpreted in light of the specification does not mean that everything expressed in the specification must be read into all the claims.’” In re Gorelik, 652 F. App’x 954, 958 (Fed. Cir. 2016) (citing Raytheon Co. v. Roper Corp., 724 F.2d 951, 957 (Fed. Cir. 1983)). 4 Appeal 2016-000963 Application 13/090,221 Here, claim 1 requires the interceptor trenches be “configured to divert the subsurface water,” referring to “subsurface water” recited in the preamble. However, claim 1 does not further characterize the subsurface water, such as by requiring a specific quantity or percentage of all subsurface water that may be under the roadway. Nor does claim 1 limit the form of the interceptor trenches to have outside edges that open to ditches, such as seen in Figure 3, rather than being entirely under the roadway and being connected to a separate storm water drainage system, such as seen in Figure 19. Nor does claim 1 require subsurface water to be diverted outside of the roadway as intimated by Appellants’ arguments. Rather, claim 1 requires subsurface water to be diverted “to the side of the roadway,” the ordinary and customary meaning of which means peripheral regions of the roadway rather than a separate, unclaimed component adjacent to the roadway. We note that although Appellants discuss an embodiment in which water is exhausted “outside of the roadways” (see Spec. 1 59), this language is not included in claim 1. Thus, a proper construction of claim 1 requires that the interceptor trenches divert some amount of subsurface water to the side of the roadway. As Appellants acknowledge that, in Robinson’s system, “water that is drained from under the roadway is carried into the cross trenches” (Appeal Br. 4), Appellants concede that Robinson discloses all that is required by claim 1. Appellants’ arguments fail to apprise us of any error in the Examiner’s findings or reasoning. 5 Appeal 2016-000963 Application 13/090,221 Furthermore, we agree with the Examiner that Robinson discloses arched trenches that flow into auxiliary longitudinal trenches 25 at the sides of the roadway. See Ans. 3^4. These arched trenches are discussed at Robinson as follows: Drainage channels beneath the concrete tread member 17 may be provided by arching the bottom of the main or shallow longitudinal trench 12 in the road between the deeper longitudinal trenches 25 and covering the arch portion of the bottom 28 with a thin layer 29 of aggregate as represented in Fig. 8. Robinson p. 2,11. 77—84. A careful review of Figure 8 shows the referenced arched trench extending between longitudinal trenches 25 and having a layer 29 of aggregate therein appears to be identified with reference “128.” We further note that it appears that subsurface water in at least the outer halves of such arched trenches 128 would flow to the outer longitudinal trenches 25, which are illustrated as being on the sides of tread member 17. Accordingly, for the foregoing reasons, we sustain the rejection of claim 1 and its dependent claims 2, 6—11, 13, and 14, which are not argued separately, as being anticipated by Robinson. Claim 15 Independent claim 15 recites: 15. A method of diverting subsurface water from a roadway, comprising: providing subsurface interceptor trenches that divert water from under the roadway to the side of the roadway; and filling the subsurface interceptor trenches with aggregate. 6 Appeal 2016-000963 Application 13/090,221 Appeal Br. A-3 (Claims App.). The Examiner rejects claim 15 in a similar manner as claim 1 (Final Act. 3), and Appellants present similar arguments as with respect to the rejection of claim 1 (Appeal Br. 6—8). Accordingly, for reasons similar to those discussed above with respect to the rejection of claim 1, we sustain the rejection of claim 15 as being anticipated by Robinson. Obviousness Rejection With respect to the rejection of claims 3—5 and 12, Appellants rely on the arguments presented above in regard to the rejection of claim 1. Id. at 9. With respect to the rejection of claims 16—19, Appellants rely on the arguments presented above in regard to the rejection of claim 15. Id. Accordingly, for the same reasons as discussed above, we also sustain the rejection of claims 3—5, 12, and 16—19 as being unpatentable over Robinson. DECISION The Examiner’s decision to reject claims 1—19 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7