Keith Underwood

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.

16/047,551 07/27/2018 Keith Underwood 208469-9003-US02 5783 23409 7590 09/03/2025

MICHAEL BEST & FRIEDRICH LLP (Mke)

N19 W24133 Riverwood Drive

Suite 200

Waukesha, WI 53188

EXAMINER

MAYO, TARA LEIGH

ART UNIT PAPER NUMBER

3671

NOTIFICATION DATE DELIVERY MODE

09/03/2025 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):

mkeipdocket@michaelbest.com

PTOL-90A (Rev. 04/07)

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UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte KEITH UNDERWOOD

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Appeal 2025-000438

Application 16/047,551

Technology Center 3600

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Before MARC S. HOFF, BETH Z. SHAW, and JOYCE CRAIG, Administrative Patent Judges.

SHAW, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant¹appeals from the Examiner's decision to reject claims 1-5 and 7-26². See Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

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CLAIMED SUBJECT MATTER

The claims are directed to an irrigation curtain and erosion control method for regenerative stormwater conveyance. Claim 1, reproduced below, illustrates the claimed subject matter:

1. A system comprising:

a channel located in or on the ground at a geographic location and defining a path through which water flows from a first end of said channel to a second end of said channel; a perforated pipe positioned at least partially along said channel, said perforated pipe providing a subsurface flow channel for water to flow through;

at least one riffle weir positioned along said channel and arranged to transition water from a first level to a second level that is lower than the first level, each of said riffle weirs including,

a weir pool having first and second ends formed along said channel and being operable to hold water; one or more first rocks positioned at the first end of said weir pool, each of said first rocks having top and bottom surfaces and front and back sides, wherein the front sides of said first rocks face the first end of said weir pool and the top surface of at least one of said first rocks is higher than the water level in said weir pool; and

a plurality of second rocks located adjacent to the back sides of said first rocks, wherein the back sides of said first rocks face said second rocks and wherein each of said second rocks is smaller than each of said first rocks; and an irrigation curtain disposed along the path of said channel that includes a hyporheic zone of said channel, said irrigation curtain further including a vertical mass of material disposed beneath a surface of said channel, wherein said irrigation curtain is configured to direct ground water from porous soil into the weir pool of said at least one riffle weir.

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Appeal Br. 3 (Claims App.).

REFERENCES

The Examiner relies on the following references to reject the claims:

Name Reference Date

Rohde US 2008/0124178 A1 May 29, 2008 McCray US 2015/0337511 A1 Nov. 26, 2015 Beaver Stream Habitat Restoration Guidelines: Beaver Re-Introduction, Washington State Aquatic Habitat Guidelines Program, 1-12

2004

Drop Stream Habitat Restoration Guidelines: Drop Structures

2004

REJECTIONS

The Examiner maintains the following rejections:

Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis

23, 24, 26 112 Written Description 1-5, 7-22 103 Drop, McCray, Beaver 23, 24, 26 103 Drop, McCray, Rohde

OPINION

Declaration Evidence As an initial matter, Appellant introduces and relies on (1) a declaration by Keith Daniel Binsted and (2) a declaration by Elizabeth Zinecker, to support Appellant's contention that the Examiner erred in the written description rejection and in combining the teachings of certain references. See Declaration Under 37 C.F.R. § 1.132 by Keith Daniel Binsted, filed May 12, 2023 ("Binsted Declaration"); Declaration Under 37

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C.F.R. § 1.132 by Elizabeth Zinecker, filed May 12, 2023 ("Zinecker Declaration"). The Board has broad discretion as to the weight given to declarations offered in the course of prosecution, and it may properly decline to accord weight to declaration statements unsupported by corroborating documentation. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); see also In re Curtis, 354 F.3d 1347, 1354 (Fed. Cir. 2004). As the Examiner points out, it seems that both declarants may be a person with an interest in the outcome of this appeal as employees of Appellant, and, therefore, subject to bias. Moreover, the Declarations are not supported by factual evidence and amount to mere conclusory opinion. Accordingly, we give little weight to the Binsted Declaration and the Zinecker Declaration.

Written Description

A written "description must 'clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.'" Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas-Cath, 935 F.2d 1555, 1563) (Fed. Cir. 1991). "In other words, the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Id. (citing Vas-Cath, 935 F.2d at 1563).

Regarding claim 23, the Examiner finds the Specification as originally filed fails to support the step of "creating a subsurface flow channel at least partially along said channel to create dry conditions within said channel."

Although the Examiner finds "creating a subsurface flow channel" is

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supported by paragraph 16 of the Specification, the Examiner finds that the limitation "to create dry conditions" is not supported, because "[the] word dry correlates with drainage of all water from the channel." Ans. 4. "None of the words dry, drain, dewater, or variations thereof, appears in the specification as originally filed." Id.

"[T]he test for sufficiency of support . . . is whether the disclosure of the application relied upon 'reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.'"

Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985) (quoting In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983)). On this record, we are not persuaded by Appellant's arguments, which do not point us to where in the original Specification claims 23-26 are supported, i.e., where the Specification reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter. See Appeal Br. 7, 27, 28. The Examiner rejects the claims as lacking support for "to create dry conditions," as recited in claim 23. The support Appellant points to for this limitation comes from the Binsted Declaration and paragraphs 4 and 16 of the Specification. Id. As the Examiner points out, however, the limitation of creating "dry conditions," as recited in claim 23, is not supported by paragraphs 4 and 16. Thus, we agree with and adopt the Examiner's findings and explanations in the Non-Final Rejection and Answer regarding the written description rejection. Accordingly, on this record, we sustain the Examiner's rejection of claims 23, 24, and 26 as lacking written description.

Appellant also requests that we reverse objections to the Drawings related to the lack of written description rejection. See Appeal Br. 27.

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Given that we are sustaining the rejection based on lack of written description support, we will not address the objections presented by the Office Action, which generally are petitionable matters not within our jurisdiction.

Obviousness

As a preliminary matter, we note that the Supreme Court has instructed that "a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions"

(KSR, 550 U.S. at 417), and apply "an expansive and flexible approach" to obviousness (id. at 415).

Appellant argues that it would not have been obvious or even possible to include the low conductivity zone of McCray in the restoration system disclosed in Drop Structures, primarily due to the difficulties of executing the installation of the low conductivity zone and the detrimental effects it may have on the hydrological system. Appeal Br. 8. In particular, in order to install an irrigation curtain without causing detrimental effects that could ultimately render the system unstable, the irrigation curtain would have to be installed though an approach referred to as "working in the dry." Id. According to Appellant, working in the dry removes the presence of water within the channel. Id. Without working in the dry, Appellant argues, the entire system is likely to fail. Id.

On this record, we are not persuaded by Appellant's arguments that there is insufficient reason to combine the Drop reference with McCray and Beaver. Not only are Appellant's contentions unsubstantiated by persuasive evidence on this record, it is well settled that "a determination of

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obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness whether a secondary reference's features can be bodily incorporated into the structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. Here, we determine that the Examiner's proposed combination is not based on impermissible hindsight reconstruction as Appellants contend (Appeal Br. 19), but rather, uses prior art elements predictably according to their established functions to yield a predictable result. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-16 (2007).

Thus, we are not persuaded by Appellant's arguments that there is insufficient reason to combine the Drop reference with McCray and Rohde. Instead, we agree with and adopt the Examiner's findings and conclusions in the Non-Final Office Action and Answer. See Ans. 5-14, 24-26. Accordingly, on this record, we sustain the Examiner's rejections of claims 1-5, and 7-24, and 26 under 35 U.S.C § 103.

CONCLUSION

The Examiner's rejections are AFFIRMED.

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DECISION SUMMARY

The following table summarizes our decision:

Claim(s) Rejected

35 U.S.C.

§

Reference(s)/Basis Affirmed Reversed

23, 24, 26 112 Written Description 23, 24, 26 1-5, 7-22 103 Drop, McCray,

Beaver

1-5, 7-22

23, 24, 26 103 Drop, McCray, Rohde 23, 24, 26

Overall Outcome

1-5, 7-24,

26

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

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