Ex Parte Sullivan

Patent Trial and Appeal Board

Oct 4, 2017

13074091 (P.T.A.B. Oct. 4, 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.
13/074,091 03/29/2011 James P. Sullivan CSC-0001 9087
88993 7590 10/05/2017
Milstein Zhang & Wu LLC
2000 Commonwealth Avenue, Suite 400
Newton, MA 02466-2004
EXAMINER
LAMBE, PATRICK F
ART UNIT PAPER NUMBER
3678
MAIL DATE DELIVERY MODE
10/05/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES P. SULLIVAN
Appeal 2015-005121
Application 13/074,091
Technology Center 3600
Before LINDA E. HORNER, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James P. Sullivan (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision rejecting claims 1-18 under 35 U.S.C.
§ 103(a) as unpatentable over Murray (US 2007/0264083 Al, published
November 15, 2007), Smith (US 5,489,165, issued February 6, 1996), and
Beatty (US 3,974,605, issued August 17, 1976). Final Office Action (July
14, 2014) (hereinafter “Final Act.”). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2015-005121
Application 13/074,091
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “systems and methods
for constructing ponds.” Spec. 12. Claims 1 and 14 are independent.
Claim 1 is illustrative of the subject matter on appeal and is reproduced
below.
1. A method of fabricating a pond, comprising the
steps of:
installing on the ground a first Geo-technical fabric having
an area, a periphery and a surface at a location where a pond is
being constructed;
installing a plurality of segments of expanded foam core
in respective positions with regard to one another, said plurality
of segments of expanded foam core forming a wall that defines
a periphery of said pond, a size of said pond and a shape of said
pond, a bottom surface of each of said plurality of segments of
expanded foam core resting on said surface of said first Geo­
technical fabric, said expanded foam core absent from a bottom
of said pond interior to said wall;
wrapping said periphery of said first Geo-technical fabric
over and around an exterior surface of said plurality of segments
of expanded foam core and down an inside surface of said
periphery of said pond defined by said plurality of segments of
expanded foam core;
providing a restraint that is configured to maintain each of
said plurality of segments of expanded foam core in said
respective positions; and
installing a leakproof liner inside said pond to provide a
volume that holds a liquid.
Appeal Brief 32 (December 15, 2014) (hereinafter “Appeal Br.”) (Claims
Appendix).
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Application 13/074,091
ANALYSIS
Appellant argues claims 1-18 as a group. Appeal Br. 14. We select
claim 1 as representative of the group, and claims 2-18 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Appellant presents four assertions of
error in the Examiner’s rejection of claim 1. We address each argument
infra.
First Argument
First, Appellant contends that the cited references fail to “teach or
suggest all of the claim limitations.” Appeal Br. 14 (emphasis omitted); id.
at 14-24. In particular, Appellant argues that “Murray does not teach or
suggest the use of ‘foam’ or ‘expanded foam core’ at all.” Id. at 15
(emphasis omitted). This argument does not demonstrate error in the
rejection because the Examiner does not rely on Murray for this teaching.
Instead, the Examiner relies on the teaching in Beatty for the modification of
Murray’s metal sections to make them from foam. Final Act. 2-3.
Appellant further argues that Murray does not teach a first Geo­
technical fabric and “a bottom surface of each of said plurality of segments
of expanded foam core resting on said surface of said first Geo-technical
fabric.” Appeal Br. 15-16. This argument does not demonstrate error in the
rejection because the Examiner does not rely on Murray for these teachings.
The Examiner states these claim limitations are missing from Murray and
relies on further modification of Murray with the teachings of Smith to add
the Geo-technical fabric beneath the segments of expanded foam core of the
modified modular segments of Murray. Final Act. 2.
Appellant further argues that the sequence of steps recited in Smith
differs from the sequence recited in claim 1 because “Smith first places the
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Application 13/074,091
wall components in step 1 and later installs the protective blanket.” Appeal
Br. 19; see also Reply Brief 8 (April 8, 2015) (hereinafter “Reply Br.”)
(Appellant contending that “the description of Smith does not teach or
suggest the limitation of Claim 1, step 2 that recites ‘a bottom surface of
each of said plurality of segments of expanded foam core resting on said
surface of said first Geo-technical fabric.’”). Appellant asserts that claim 1
requires a particular sequence to the recited steps based on the position of
the various installed pond components. We do not read the claim as
narrowly as Appellant seeks.
Claim 1 requires that the Geo-technical fabric is installed on the
ground and the foam core segments are installed so that a bottom surface of
each segment rests on the Geo-technical fabric. One way to meet this claim
language is to install the Geo-technical fabric on the ground prior to
installing the foam core segments. The claim language does not preclude,
however, pre-attaching the Geo-technical fabric to the bottom surface of the
foam core segment and, thereafter, installing both the fabric and the foam
core at the same time. In Smith, the geotextile retainer fabric is attached to
the bottom of the retaining modules prior to placing the retaining modules
on the ground. Smith, col. 5,11. 52-54, col. 6,11. 45^47. Thus, the modules
and the fabric are pre-fabricated and then installed on the ground at the same
time, resulting in a bottom surface of each retaining module resting on the
surface of the retainer fabric. Id. at col. 6,11. 50-52, Figs. 5, 6. The
installation of the retainer fabric is then completed by rolling the fabric
down an inside surface of the periphery of the pond defined by the retaining
modules. Id. at col. 7,11. 41^43, Fig. 7. Thus, we disagree with Appellant’s
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assertion that the sequence of steps recited in Smith differs from the
sequence recited in claim 1.
Appellant further argues that Beatty does not cure the asserted
deficiencies of Murray and Smith because “Beatty does not describe the wall
elements nor does Beatty describe a Geo-technical fabric” and “Beatty does
not teach or suggest a method of construction as claimed in Claim 1.”
Appeal Br. 21; see also Reply Br. 7. These arguments do not demonstrate
error in the rejection because the Examiner does not rely on Beatty for any
of these teachings in the rejection. Final Act. 2-3. Rather, the Examiner
cites Beatty as evidence that foam core was a known structural material to
make pool walls. Id. at 3 (Examiner proposing “to modify the walls of the
Murray-Smith combination to be made of the foam core of Beatty”). As
such, Appellant’s arguments do not demonstrate that the combination of
prior art teachings proposed by the Examiner is missing any element of
claim 1.
Appellant argues, for the first time in the Reply Brief, that “Beatty
fails to teach or suggest that expanded foam can be used in any means
except by being surrounded by a higher density material of the same type.”
Reply Br. 8. Appellant also contends for the first time in the Reply Brief
that:
Smith does not teach or suggest the limitation recited in the third
step of Claim 1 that requires “wrapping said periphery of said
first Geo-technical fabric over and around an exterior surface
of said plurality of segments of expanded foam core and down
an inside surface of said periphery of said pond defined by
said plurality of segments of expanded foam core.”
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Id. The Board rules provide that “[a]ny argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner’s answer,. . . will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.” 37 C.F.R.
§ 41.41 (b). Appellant does not proffer any explanation for why these
asserted deficiencies in the prior art combination were not raised in the
appeal brief. Further, the arguments do not appear to be responsive to
arguments raised in the Examiner’s Answer. As such, per our rules, we
decline to consider these newly raised arguments.
Second Argument
Second, Appellant contends that “the Examiner has failed to identify a
motivation to combine cited references.” Appeal Br. 24 (emphasis omitted);
id. at 24-25. In particular, Appellant questions, “Why does there need to be
any retainer blanket added to the description of Murray, when Murray
provides a complete above ground water retaining structure?” Id. at 24.
Appellant’s contention is based on an unduly narrow reading of
Murray’s disclosure. Appellant attempts to confine Murray’s disclosure to
above-ground pools. In fact, Murray teaches that its structure for
constructing retention ponds could also be used for in-ground ponds,
disclosing that “[i]t will also be appreciated however, that the present
invention could be combined with an excavated hole in order to increase the
storage capacity of the retention pond.” Murray 147 (describing erecting a
pond by placing modular walls 20 in an excavated hole and disposing the
liner over the wall and into the hole). Further, even if Murray’s teaching
were confined to above-ground structures, the teaching in Smith still is
applicable to such structures. Murray discloses that “modular walls 20 and
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Application 13/074,091
liner 140 can all rest on and extend upward from a naturally occurring
ground surface.” Id. 146 (emphasis added).
The suggestion to modify Murray to add the geotextile fabric of Smith
can be found within the teachings of Smith. In particular, Smith teaches that
“[t]he retainer blanket provides extra protection to the liner 25 from sharp
objects or other in-ground physical damage” and that the geotextile material
will “deter and repel rodents,” which are “[o]ne of the biggest problems
encountered with using liners.” Smith, col. 5,11. 35^40, col. 7,11. 47-55.
Because Murray suggests that its liner can rest on the ground, Murray’s
structure can benefit from the additional protection from sharp objects and
rodents provided by Smith’s geotextile fabric. Thus, as noted by the
Examiner, the addition of the geotextile fabric of Smith to the retaining pond
of Murray is nothing more than the application of a known technique used in
the construction of water retaining structures applied to a known device
ready for improvement and that would yield predictable results. Final Act.
2.
Appellant further queries, “Why does there need to be foam core walls
added to the description of Murray, when Murray provides walls made of ‘a
sheet of corrugated metal, such as steel, aluminum, or the like?”’ Appeal
Br. 25. The suggestion to modify Murray to use expanded foam core
segments can be found in Beatty. Beatty teaches that “[t]he foam core
extruded monolithic wall panels provide structural elements which have
unique properties of strength, durable exposed surfaces, a high strength to
weight ratio, and reduced cost.” Beatty, col. 3,11. 19-23. Beatty further
teaches that foam core extruded wall panels “are characterized by resistance
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to corrosion and deterioration as compared to units constructed of steel.” Id.
at col. 8,11. 32-35. Further, as the Examiner finds, Murray teaches that the
structure can be made of wood or metal or “[ojther structural material, as
known in the art.” Final Act. 2 (citing Murray 136). Thus, Beatty discloses
that it was known in the art to make pool walls out of foam core and, the
proposed modification is nothing more than the substitution of one known
building material for another to yield a predictable result. KSR Int 7 Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007).
Third Argument
Third, Appellant contends that “the Examiner has relied upon
impermissible hindsight.” Appeal Br. 26 (emphasis omitted); id. at 26-21.
In particular, Appellant asserts that “no reference gives any reason to make
such a combination.” Id. at 27. For the reasons discussed supra in our
analysis of Appellant’s second argument, we find ample evidence of explicit
suggestions in Smith and Beatty that would have led one having ordinary
skill in the art to modify Murray in the manner claimed. Contrary to
Appellant’s assertion, the suggestion for the modification does not need to
reside in the teachings of Murray. KSR, 550 U.S. at 419 (holding that the
Court of Appeals erred in applying a rigid teaching-suggestion-motivation
rule as a limit on the obviousness inquiry).
Fourth Argument
Fourth, Appellant contends that the combination of Murray, Smith,
and Beatty “is improper.” Appeal Br. 28 (citing Manual of Patent
Examining Procedure (“MPEP”) §§ 2143.01(V) and 2143.01(VI)); id. at 28-
30. In particular, Appellant argues that “combining Murray and Smith
would require that at least one of them would be rendered unsuitable for the
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intended purpose” because Murray’s above-ground structure and Smith’s in-
ground structure “are fundamentally incompatible and have different
purposes.” Appeal Br. 29. This argument is based on the inaccurate
characterization of Murray’s teachings as being limited to above-ground
structures. As we noted supra, Murray further teaches that its structure also
can be used for in-ground water containment structures. Murray 147.
Appellant further argues that Murray and Smith cannot be combined
because Murray teaches an inclined wall advantageous in an above-ground
structure and Smith teaches that the wall should be vertical for an in-ground
structure. Appeal Br. 29. As noted by the Examiner (Ans. 5), the
Examiner’s proposed modification of Murray is to add the geotextile fabric
of Smith to the wall structure of Murray. The Examiner does not propose to
modify the wall geometry of Murray with the walls of Smith. Final Act. 2.
For the reasons discussed above, we do not discern error in the
Examiner’s rejection of claim 1 as unpatentable over Murray, Smith, and
Beatty. Claims 2-18 fall with claim 1.
DECISION
The decision of the Examiner rejecting claims 1-18 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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