Petition for Writ of Certiorari — David Walter, Petitioner v. Andrei Iancu, Director, United States Patent and Trademark Office

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

IN RE: DAVID WALTER,

Appellant

2016-2256

Appeal from the United States Patent and

Trademark Office, Patent Trial and Appeal Board in

No. 90/013,165.

Decided: August 21, 2017

STEVEN J. MILLER, The Miller Law Offices

PLC, Miami, FL, and MARK TERRY, Office of Mark

Terry, Miami, FL, argued for appellant.

PHILIP J. WARRICK, Office of the Solicitor,

United States Patent and Trademark Office,

Alexandria, VA, argued for appellee Joseph Matal.

Also represented by NATHAN K. KELLEY, THOMAS

W. KRAUSE, JOSEPH GERARD PICCOLO, COKE

MORGAN STEWART.

Before MOORE, SCHALL, and O’MALLEY, Circuit

Judges. SCHALL, Circuit Judge.

A-1

DECISION

David Walter appeals the decision of the Patent

Trial and Appeal Board (“Board”) in an ex parte

reexamination proceeding involving U.S. Patent No.

7,513,711 (“the ’711 patent”). See Ex parte David

Walter, No. 2015-006121, 2015 WL 5144184 (P.T.A.B.

Aug. 31, 2015). In its decision, the Board ruled that

all twelve claims of the ’711 patent lack adequate

written description and are indefinite under 35 U.S.C.

§ 112. Id. at *2–3. We affirm.

DISCUSSION

I. Background

Mr. Walter is the sole inventor of the invention

claimed in the ’711 patent. See ’711 patent at [76]. The

invention relates to artificial reefs for cultivating

marine life. Id., col. 1 ll. 8–16. The reefs 10 generally

comprise concrete walls 16 joined together to form a

hollow interior. Id., Abstract. The walls 16 contain

stones 14 for supporting aquatic lifeforms:

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Id., Figs. 3, 4. The concrete walls 16 attach to an

underlying “support structure” 12 having a base 22

and upwardly-extending “frame members.” Id., col. 1

ll. 36–39, Fig. 2. According to the patent, the reef can

take any shape, including pyramidal, prismatic, and

cylindrical arrangements. Id., col. 1 ll. 49–51, col. 3 ll.

52–54, Figs. 2, 5, 7. The ’711 patent originally issued

with twelve claims one independent claim and eleven

dependent claims. Id., col. 4 ll. 26–64. The claims

largely embody the foregoing features.

The Patent and Trademark Office began

reexamining the ’711 patent in 2014 at Mr. Walter’s

request. In those proceedings, the examiner initially

rejected the issued claims as obvious over various

prior art references. See J.A. 124–27. Mr. Walter

responded by amending independent claim 1 to recite,

inter alia, that the reef’s claimed “support structure”

was “block-like.” See J.A. 154–55. Relying on an

expert declaration from Steven J. Miller, see J.A. 178,

Mr. Walter argued that the plain and ordinary

meaning of “block-like” is a “solid support structure

made up of discreet [sic] pieces or ‘blocks’ which[,]

when joined together in some manner, assemble into

a complete structure or apparatus.” J.A. 164. Armed

with this construction, Mr. Walter urged that the

examiner’s prior art references did not teach a “blocklike support structure,” as so construed. See J.A. 164–

65. The text of amended claim 1 reads in full:

1. An artificial reef comprising:

a) a block-like support structure made of a

plurality of frame members forming a

base and frame members extending up

from said base;

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b) attachable slab walls fabricated of a

concrete material secured to said support

structure forming a hollow interior, said

walls having recesses to provide access

into the hollow interior of said reef; and

c) a plurality of soft stones embedded into

said concrete walls, said soft stones are

elevated beyond the face of said concrete

walls to provide a greater surface area for

marine life to bore and anchor into.

J.A. 24 (emphasis added).

Mr. Walter’s amendment did not persuade the

examiner. In his ensuing office action, the examiner

maintained his obviousness rejections. J.A. 213–16.

He also rejected the newly-amended claims as lacking

adequate written description support and as

indefinite. Id. As for the written description rejection,

the examiner reasoned that the specification did not

disclose a support structure that was “block-like.” Id.

Turning to indefiniteness, the examiner determined

that the term “block-like” lacked reasonable certainty

because Mr. Walter’s proposed construction conflicted

with the dictionary meaning of the term “block.” Id.

Citing to an internet dictionary, the examiner

construed “block” to mean “a solid piece of material . .

. that has flat sides and is usually square or

rectangular in shape.” Id. (emphasis added). Because

the claimed “support structure” did not contain flat

sides, the examiner reasoned, it could not be fairly

described as “block-like.” Mr. Walter disagreed with

the examiner’s findings and appealed the rejections to

the Board. J.A. 397.

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II. Proceedings Before the Board

Mr. Walter’s opening brief to the Board

challenged the examiner’s rejections. On the issue of

indefiniteness, Mr. Walter pointed to places in the

specification where he believed one of ordinary skill

could have ascertained the meaning of “block-like.”

J.A. 401–02. Mr. Walter also urged that his amended

claims were consistent with the examiner’s dictionary

definition of “block.” In Mr. Walter’s view, the claimed

“support structure” was “block-like” because the

individual frame elements comprising the support

structure—not the support structure itself—were “3dimensional cuboid[s]” with “flat sides.” J.A. 402. Mr.

Walter did not rely on the construction of “block-like”

that he had presented with his initial amendment

based on the Miller declaration. Turning to the other

rejections, Mr. Walter asserted that the examin-er

erred in his findings on obviousness and written description.

The examiner responded by reaffirming his

construction of “block” and maintaining that a block

must contain “flat sides.” J.A. 452. Because the

claimed support structure comprised wholly open

faces without a flat side, the examiner concluded, the

“block-like” term was indefinite because the amended

claims used the term in a way contrary to its plain

meaning. Id. The examiner was not persuaded by Mr.

Walter’s “3-dimensional cuboid” argument because, in

the examiner’s view, the ’711 patent disclosed

embodiments with noncuboid frame members. J.A.

458. Finally, the examiner observed that “block-like”

is a term of degree, without objective criteria in the

patent’s intrinsic record for establishing the scope of

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the limitation. J.A. 458–59. The examiner also

defended his remaining rejections.

In his reply, Mr. Walter continued to allege that

the individual “frame elements” of the support

structure satisfied the examiner’s construction of

“block.” J.A. 482– 83. According to Mr. Walter, the

examiner’s construction encompassed noncuboid

frame elements because blocks “usually” take cuboid

form but need not do so in every case. Id. In Mr.

Walter’s view, this understanding comported with the

specification of the ’711 patent, which depicted reefs

taking a variety of shapes. Id. Once again, Mr. Walter

did not refer to his initial construction of “block-like”

submitted with Mr. Miller’s declaration. Id.

The Board heard arguments on these issues on

August 20, 2015. During the hearing, the Board

inquired into the meaning of “block-like.” Mr. Walter

responded in a variety of ways. At first, Mr. Walter

urged a construction of “block-like” similar to the one

he proposed in his initial amendment—namely, that

“block-like” meant “discrete pieces that have been put

together for the purposes of providing support.” J.A.

509 ll. 18–20. When pressed on this construction,

however, Mr. Walter altered his position and

advanced the “cuboid” construction he had raised in

his briefing. In particular, Mr. Walter urged a

construction that “each one of [the individual] frame

members is a block-like structure” because they are

“cuboid-shaped.” J.A. 511 ll. 12–17. When the Board

asked Mr. Walter to clarify this position, he returned

to his original stance that “block-like” is synonymous

with “discrete.” See J.A. 512–13.

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Confronted with these arguments, the Board

ruled that the term “block-like” is indefinite. Ex parte

Walter, 2015 WL 5144184, at *2–3. According to the

Board, “block-like” lacks reasonable clarity because

the specification of the ’711 patent uses the term in a

manner “inconsistent with a proper understanding” of

the word “block.” Id. at *2. The Board also rejected

Mr. Walter’s argument that “block-like” referred to

the individual “frame members,” rather than the

“support structure” as a whole. Id. at *3. As the Board

reasoned, the claims recited a “block-like support

structure made of a plurality of frame members,” not

a “support structure made of a plurality of block-like

frame members.” Id. (emphases added). The Board

also affirmed the examiner’s written description

rejection and pro forma reversed the obviousness

rejection on the grounds that it could not ascertain the

meaning of the amended claims. Id. at *2–3.

Mr. Walter asked the Board to reconsider its

decision, but the Board denied the request. See J.A. 4.

In addition to reaffirming its prior findings on

indefiniteness, the Board held that “block-like” is

indefinite for the additional reason that it is a term of

degree without sufficient guidance delimiting its

scope. J.A. 3–4.

Mr. Walter timely appealed the Board’s decision.

We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

III. Standard of Review

The Board construes claims of an unexpired

patent during reexamination proceedings under the

“broadest reasonable construction.” In re CSB-Sys.

Int’l, Inc., 832 F.3d 1335, 1340 (Fed. Cir. 2016) (citing

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In re NTP, Inc., 654 F.3d 1268, 1274 (Fed. Cir. 2011)).

We review the Board’s ultimate claim construction de

novo. Id. (citing Teva Pharm. USA, Inc. v. Sandoz,

Inc., 135 S. Ct. 831, 840–41 (2015)). When the

intrinsic record dictates the proper construction of a

term, we review the Board’s construction without

deference. Wasica Fin. GmbH v. Cont’l Auto. Sys.,

Inc., 853 F.3d 1272, 1278 (Fed. Cir. 2017) (citing

Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,

1297 (Fed. Cir. 2015)).

Indefiniteness is a question of law this court

reviews de novo. Biosig Instruments, Inc. v. Nautilus,

Inc., 783 F.3d 1374, 1377 (Fed. Cir. 2015) (citing

Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,

1370 (Fed. Cir. 2014)).

Compliance with the written description

requirement is a question of fact we review for

substantial evidence. ULF Bamberg v. Dalvey, 815

F.3d 793, 797 (Fed. Cir. 2016) (citing Harari v. Lee,

656 F.3d 1331, 1341 (Fed. Cir. 2011)). Substantial

evidence justifies a finding if a reasonable mind might

accept the evidence to support it. Consol. Edison Co.

v. NLRB, 305 U.S. 197, 229 (1938).

IV. Analysis

A.

Mr. Walter has advanced several arguments on

appeal. In his opening brief, he asserted that he acted

as his own lexicographer and defined the term “blocklike” during reexamination. See Appellant’s Br. 15,

21, 23. Mr. Walter did not raise this argument before

the Board, however, and expressly abandoned and

disavowed it during oral argument before us. See Oral

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Argument at 3:24–4:18, 10:03–10:26 (No. 16-2256),

http://oralarguments.cafc.uscourts.gov/default.aspx?f

l=2016- 2256.mp3. We therefore deem this argument

waived.

Although Mr. Walter no longer relies on the

Miller declaration as supporting his lexicography

argument, he does contend that the declaration

establishes how one of ordinary skill in the art would

understand the term “block-like.” Appellant’s Br. 17–

18, 23. In Mr. Walter’s view, “block-like” is a term of

art in the relevant field, and the Board erred by

failing to credit Mr. Miller’s testimony on this point.

Id.

B.

On the record before us, we agree with the Board

that the term “block-like” is indefinite. We therefore

affirm the decision of the Board.

At the outset, we decline to adopt the Board’s

implicit determination that a patent claim is

indefinite because the specification uses a term

differently from its dictionary definition. See Ex parte

Walter, 2015 WL 5144184, at *2. The specification is

“always highly relevant to the claim construction

analysis. Usually, it is dispositive.” Phillips v. AWH

Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc)

(internal quotation marks omitted) (quoting Vitronics

Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.

Cir. 1996)). If there is a conflict between the

specification and a general purpose dictionary as to a

claim’s proper meaning, the specification controls. Id.

at 1318–24.

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Nevertheless, we agree that the term “block-like”

renders Mr. Walter’s claims indefinite in this case. A

claim is indefinite under 35 U.S.C. § 112 when the

intrinsic record of the patent “fail[s] to inform, with

reasonable certainty, those skilled in the art about the

scope of the invention.” Nautilus, Inc. v. Biosig

Instruments, Inc., 134 S. Ct. 2120, 2124 (2014)

(“Nautilus I”). If a claim employs a term of degree, the

intrinsic record must provide those skilled in the art

with “objective boundaries” with which to assess the

term’s scope. Interval Licensing, 766 F.3d at 1371. If

it does not, the claim is indefinite. Id.

Here, “block-like” is a term of degree without any

accompanying guidance in the intrinsic record for

determining its scope. The term ostensibly covers a

range of shapes that are sufficiently “like” a “block”

and excludes those that are not. But nothing in the

intrinsic record offers “objective boundaries” for

ascertaining whether a given shape falls into either

category. See Interval Licensing, 766 F.3d at 1371.

And because the “present invention 10 can be

fabricated in any shape without deviating from the

objectives thereof,” see ’711 patent, col. 3 ll. 52– 54

(emphasis added), determining whether a particular

shape is “block-like” thus strikes us as devolving into

a highly subjective inquiry depending “on the

unpredictable vagaries of any one person’s opinion.”

Interval Licensing, 766 F.3d at 1371 (quoting

Datamize, LLC v. Plumtree Software, Inc., 417 F.3d

1342, 1350 (Fed. Cir. 2005)). When, as here, “nothing

in the specification, prosecution history, or proper art

provides any indication as to what range of

[structures] is covered by the term,” the claim is

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indefinite. Amgen, Inc. v. Chugai Pharm. Co., Ltd.

927 F.3d 1200, 1218 (Fed. Cir. 1991).

The prosecution history compounds this

uncertainty, describing “block-like” in different and

often inconsistent ways. During reexamination, for

example, Mr. Walter asserted that the term meant

having “discreet [sic] pieces conjoined . . . in some

manner,” J.A. 164, having “3- dimensional cuboid

elements,” J.A. 402, having “solid pieces of material

with flat sides,” J.A. 244, and encompassing “curved

blocks,” J.A. 482, among other formulations. Mr.

Walter also vacillated between applying the “blocklike” adjectival phrase to the individual “frame

members,” see J.A. 511 ll. 12–17, and other times to

the “support structure” as a whole, see J.A. 164. These

shifting positions make pinning down a construction

of “block-like” all the more elusive. And even if it were

possible to harmonize all of Mr. Walter’s statements,

it is not enough “that a court can ascribe some

meaning to a patent’s claims; the definiteness inquiry

trains on the understanding of a skilled artisan at the

time of the patent application, not that of a court

viewing matters post hoc.” Nautilus I, 134 S. Ct. at

2130. Here, the term’s ill-defined boundaries coupled

with the patentee’s erratic use of the term fails to

inform skilled artisans about the scope of the

invention with reasonable certainty. Id. at 2124. The

term is indefinite.

Citing to Mr. Miller’s expert declaration, Mr.

Walter urges that “block-like” is a term of art in the

structural engineering field. Appellant’s Br. 12, 17–

18, 23. We are not persuaded by this argument. First,

Mr. Miller does not support his opinion with evidence

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or analysis, and his testimony is wholly conclusory.

See J.A. 178 ¶ 6. “[C]onclusory, unsupported

assertions by experts as to the definition of a claim

term are not useful to a court,” Phillips, 415 F.3d at

1318, and thus we give Mr. Miller’s testimony no

weight. See SkinMedica, Inc. v. Histogen Inc., 727

F.3d 1187, 1210 (Fed. Cir. 2013) (giving “no weight”

to expert testimony in similar circumstances).

Second, it is difficult to fault the Board for

purportedly overlooking Mr. Miller’s declaration

when Mr. Walter never relied on it. In both his

opening and reply briefs to the Board, Mr. Walter

argued that the claims were consistent with the

examiner’s construction of “block” and did not urge

that the phrase implicated a term of art. See J.A. 401–

02, 482–83. Nor did Mr. Walter rely on Mr. Miller’s

declaration during the oral hearing before the Board.

See J.A. 509–13. We therefore see no error in the

Board’s decision to disregard Mr. Miller’s testimony.

For the foregoing reasons, we hold that amended

independent claim 1 of the ’711 patent is indefinite.

Mr. Walter does not separately argue the definiteness

of dependent claims 2–12, and thus we hold those

claims to be indefinite as well. See Soverain Software

LLC v. Newegg Inc., 728 F.3d 1332, 1335–36 (Fed.

Cir. 2013) (“[P]recedent guides that absent some

effort at distinction, the claims rise or fall together.”);

SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp.,

225 F.3d 1349, 1359 (Fed. Cir. 2000). Having

determined that claims 1–12 of the ’711 patent, as

amended, are indefinite, we do not reach the issue of

whether they are also unpatentable for failing to

comply with the written description requirement

under 35 U.S.C. § 112, first paragraph.

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CONCLUSION

For the foregoing reasons, we hold that claims 1–

12 of the ’711 patent, as amended during

reexamination, are indefinite. We therefore affirm the

Board’s decision finding the claims unpatentable on

that ground. In light of this holding, we do not reach

the Board’s decision on written description.

AFFIRMED

COSTS

Each party shall bear its own costs.

A-13

UNITED STATES PATENT AND TRADEMARK

OFFICE

BEFORE THE PATENT TRIAL AND APPEAL

BOARD

Ex parte DAVID WALTER

Appeal 2015-006121

Reexamination Control 90/013,165

Patent US 7,513,711 B1 1

Technology Center 3900

Before: STEVEN D.A. McCARTHY, DANIEL S.

SONG, and BRETT C. MARTIN, Administrative

Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1

Issued to David Walter on April 7, 2009 (the '711 patent).

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STATEMENT OF THE CASE

The Patent Owner appeals under 35 U.S.C. §§

134(b) and 306 from a Final Rejection of claims 1-12.

We have jurisdiction under 35 U.S.C.§§ 134(b) and

306. Oral arguments were heard on August 20, 2015,

a transcript of which will be entered into the record

in due course.

We are informed that the '711 patent is

involved in a litigation styled Walter v. Panhandle

Underwater Maintenance & Salvage, LLC in the U.S.

District Court for the Northern District of Florida,

Case No. 3:13-cv-00378- MCR-CJK. App. Br. 23.

We AFFIRM.

THE INVENTION

The Patent Owner's invention is directed

"generally to oceanic reefs and, more specifically, to

the creation, enhancing or expansion of oceanic reefs

by the formation and placement of a plurality of

differently shaped structures." Spec., col. 1, 11. 8-11.

Claim 1, reproduced below, is the only independent

claim on appeal:

1.

An artificial reef comprising:

a)

a

block-like

support

structure made of a plurality of frame

members forming a base and frame

members extending up from said base;

b)

attachable

slab

walls

fabricated of a concrete material secured

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to said support structure forming a

hollow interior, said walls having

recesses to provide access into the hollow

interior of said reef; and

c)

a plurality of soft stones

embedded into said concrete walls, said

soft stones are elevated beyond the face

of said concrete walls to provide a

greater surface area for marine life to

bore and anchor into.

Claim

1

was

amended

during

the

reexamination proceeding to add the words "blocklike" to limitation "a)".

REFERENCES

The prior art relied upon by the Examiner in

rejecting the claims on appeal is:

Hudson

Bartkowski

Huggins

US 5,215,406

US 6,186,702 B1

US 7,024,735 Bl

Jun. 1, 1993

Feb. 13, 2001

Apr. 11, 2006

Suzanne Wentley, Martin Reef Under Watchful Eyes,

The Stuart News (2004).

THE REJECTIONS ON APPEAL

The Examiner made the following rejections:

1.

Claim 1-12 stand rejected under 35

U.S.C. § 112 first paragraph as failing to comply

with written description. Ans. 2.

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2.

Claim 1-12 stand rejected under

35 U.S.C. § 112 second paragraph as being

indefinite. Ans. 3.

3.

Claim 1-3 stand rejected under 35

U.S.C. § 103(a) as being unpatentable over

Bartkowski and Hudson. Ans. 4.

4.

Claim 4-6 stand rejected under 35

U.S.C. § 103(a) as being unpatentable over

Bartkowski, Hudson, and Wentley. Ans. 5.

5.

Claim 3-12 stand rejected under 35

U.S.C. § 103(a) as being unpatentable over

Bartkowski, Hudson, Wentley, and Huggins. Ans.

6.

ANALYSIS

Rejections under 35 U.S.C. § 112

The Examiner rejects claims 1-12 under 35

U.S.C. § 112, first and second paragraphs, as failing

to comply with the written description and for

indefiniteness, respectively. There are two bases for

the rejections that relate to two different claim

elements. The first of the rejections relates to the

claim element "a block-like support structure" recited

in claim 1. According to the Examiner this claim

element lacks written description support and is

therefore new matter. Ans. 2. The Examiner also

asserts that this claim term is indefinite because "the

structure of a 'block' is inconsistent with the claimed

structure of 'a plurality of frame members', because

the frame members would define an open structure

without any flat sides." Ans. 3. As the Examiner

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points out, this is inconsistent with the dictionary

definition of block (no definition is specifically

provided in the Specification for "block"), which can

be defined as "a solid piece of material (such as rock

or wood) that has flat sides and is usually square or

rectangular in shape." Id.

The Patent Owner argues that, because the

Specification recites the term "block-like" several

times, there is written description support and this

should not be considered new matter. App. Br. 4.

Although we agree that the Specification recites the

term "block-like" several times, it is not in reference

to the support structure alone, as claimed, but is used

to describe the overall structure of the artificial reef

itself, and not a particular element thereof We agree

that the finished artificial reef, as seen for example in

Figure 3, may be properly described as "block-like,"

but do not agree that the support structure alone, as

seen in Figure 2, may likewise be described as such.

We further agree with the Examiner that the support

structure disclosed in the Specification is an open

frame that is inconsistent with a proper

understanding of the term "block-like," thus

rendering the term indefinite.

The Patent Owner also argues that the term

"block-like" does not apply to the support structure as

a whole, but that the individual frame members are

block-like "3-dimensional cuboid elements" and so the

claim language is proper. App. Br. 8. Claim 1,

however, recites "a block-like support structure made

of a plurality of frame members." It is clear from the

claim language at issue that "block-like" modifies the

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overall support structure and not the individual

frame members. In order to give the claim the

meaning set forth by the Patent Owner, the claim

language would need to recite "a support structure

made of a plurality of block-like frame members," or

the like. We conclude that it is clear that the term

"block-like" modifies the support structure as a whole

and that the Specification fails to supports such a

claim term. Accordingly, we sustain the Examiner's

rejection of claims 1-12 as lacking written description

and for indefiniteness with respect to the claim term

"block-like support structure."

We decline to reach the second basis for the

rejections as they relate to the term "attachable"

because the indefiniteness and written description

issues relating to "block-like" dispose of all pending

claims. Further, because the prior art rejections

cannot be sustained if the hypothetical person of

ordinary skill in the art would have to make

speculative assumptions concerning the meaning of

the claim language, a material issue of claim

interpretation is present that must be resolved before

the merits of the Examiner's and Appellant's

positions can be properly considered. See In re Steele,

305 F.2d 859, 862-863 (CCPA 1962). Accordingly, we

pro forma reverse the Examiner's rejection of claims

1-12 that stand rejected under 35 U.S.C. § 103(a).

DECISION

For the above reasons, we AFFIRM the

Examiner's decision to reject claims 1-12.

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No time period for taking any subsequent

action in connection with this appeal may be extended

under 37 C.F.R. § 1.136(a)(1)(iv). In the event neither

party files a request for rehearing within the time

provided in 37 C.F.R. § 41.79, and this decision

becomes final and appealable under 37 C.F.R. § 41.81,

a party seeking judicial review must timely serve

notice on the Director of the United States Patent and

Trademark Office. See

37 C.F.R. §§ 90.1 and 1.983

Mark Terry, Esq.

AFFIRMED

801 Brickell Ave,

Suite 900

Miami, FL, 33131

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UNITED STATES PATENT AND TRADEMARK

OFFICE

BEFORE THE PATENT TRIAL AND APPEAL

BOARD

Ex parte DAVID WALTER

Appeal 2015-006121

Reexamination Control 90/013,165

Patent US 7,513,711 B1 1

Technology Center 3900

Before: STEVEN D.A. McCARTHY, DANIEL S.

SONG, and BRETT C. MARTIN, Administrative

Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1

Issued to David Walter on April 7, 2009 (the '711 patent).

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The Patent Owner filed its REQUEST FOR

REHEARING on September 30, 2015 (hereinafter

"Rehearing Request" or "Rhrg. Req.") under 37 C.F.R.

§ 41.52, 2 seeking rehearing of our Decision mailed

August 31, 2015 (hereinafter "Decision" or "Dec."),

which affirmed various final rejections of the claims

made by the Examiner. We grant the Rehearing

Request to the extent that we consider the

Requester's arguments, but DENY the request to

modify the Decision.

A Rehearing Request under 37 C.F.R. § 41.52

has the very specific requirements that the appellant

seeking rehearing allege that the Board

misapprehended or overlooked something in

rendering the original decision. Here, the Patent

Owner has done neither, but mostly rehashes

arguments already made and rejected. See Rhrg.

Req. 1-5. We note that a majority of the Rehearing

Request merely copies and pastes arguments already

made before the Examiner or in the Appeal and

which have already been addressed in the Decision.

The Patent Owner states in its main

argument, "[t]he Board has misinterpreted the

definition of 'block-like' as described in the patent

and previously argued by the Appellant." Rhrg. Req.

2. Independent claim 1, however, recites a "support

The Patent Owner mistakenly references 37 C.F.R. §41.79,

which deals with a rehearing in an inter partes reexamination,

whereas this appeal is of an ex parte reexamination.

2

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structure." Claim 1 does not call the support

structure a "block;" instead, the claim recites that the

support structure is "block-like." Ordinarily, the

Board does not interpret claims so as to render words

within the claim superfluous. This implies that some

meaning must be attributed to the word "-like." The

implication of the word "-like" is that the support

structure shares some feature or features with a

block. Neither the claim language, nor the written

description of the '117 patent, nor the Patent Owner's

arguments, reasonably clarifies what such a feature

or features might be.

As such, the Board has not misinterpreted the

phrase "block-like support structure" as the Patent

Owner contends. (See Rhrg. Req. 2). We conclude that

the phrase is not definite enough to reasonably

interpret, as previously explained in the Decision.

(See Decision 4-5). Likewise, the Board has not

misapprehended any evidence provided by the Patent

Owner (see Rhrg. Req. 5), which appears to consist

primarily of intrinsic evidence in the written

description, drawings, and claims of the '711 patent

itself (see App. Br. 7-9; Rhrg. Req. 2-4); but has

considered such evidence and argument related

thereto, found it unpersuasive, and provided an

interpretation that is fully explained and supported

in the original Decision. See Dec. 4-5. The Patent

Owner simply cannot overcome the fact that the

Specification describes a "block-like structure,"

referring to the overall reef structure, and not a

"block-like support structure" or frame as repeatedly

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argued and rejected. (See, e.g., '117 patent, col. 1, 11.

37-40 and 49-54).

Pages 4-5 of the Decision address the Patent

Owner's arguments invoking the written description

of the '117 patent, and, in particular, those

arguments invoking either Figure 2 or the object

stated generally at lines 4446 of column 1 (see App.

Br. 7-8). Even to the extent that the '117 patent,

speaks of the base 22 and frame members 24 depicted

in Figure 2, the patent describes these structures in

terms of their capacity to act as support structure

rather than in terms of any "block-like" features.

(See, e.g., '117 patent, col. 3, 11. 20-22). As page 5 of

the Decision points out, the Patent Owner's

argument that the components of the base 22 and the

frame members 24 depicted in Figure 2 of the '117

patent themselves comprise "block-like" elements

(see App. Br. 8; Reply Br. 6-7) merely obscures an

already unpersuasive argument. Even were we to

agree with the Patent Owner's assertion that the

dictionary definition quoted by the Examiner on page

4 of the Final Office Action is not "all-inclusive" (see

Reply Br. 5-6), the scope and meaning of the phrase

"block-like support structure" is not clear enough to

satisfy the second paragraph of 35 U.S.C. § 112.

The Patent Owner's arguments amount to

nothing more than a disagreement over the

interpretation applied by the Board. A Rehearing

Request is not an opportunity for the requesting

party to reargue its case or to express disagreement

with the Decision. Accordingly, we are not persuaded

of any basis for granting the Rehearing Request.

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DECISION

While we have considered the Decision in

light of the Rehearing Request, we decline to modify

it in any respect.

Pursuant to 35 U.S.C. §§ 141(b) and 306, this

decision is final for the purpose of judicial review. A

party seeking judicial review must timely serve

notice on the Director of the United States Patent

and Trademark Office. See 37 C.F.R. §§ 90.1 et seq.

DENIED

Mark Terry, Esq.

801 Brickell Ave.

Suite 900

Miami, FL, 33131

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NOTE: This order is nonprecedential.

United States Court of Appeals

for the Federal Circuit

IN RE: DAVID WALTER,

Appellant

2016-2256

Appeal from the United States Patent and

Trademark Office, Patent Trial and Appeal Board in

No. 90/013,165.

ON PETITION FOR PANEL REHEARING AND

REHEARING EN BANC

Before PROST, Chief Judge, NEWMAN, LOURIE,

SCHALL, ∗

DYK, MOORE, O’MALLEY, REYNA, WALLACH,

TARANTO,

CHEN, HUGHES, and STOLL, Circuit Judges.

PER CURIAM.

ORDER

Appellant David Walter filed a combined petition

for panel rehearing and rehearing en banc. A

response to the petition was invited by the court and

filed by appellee Joseph Matal. The petition was

referred to the panel that heard the appeal, and

thereafter the petition for rehearing en banc was

∗

Circuit Judge Schall participated only in the decision on the

petition for panel rehearing.

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referred to the circuit judges who are in regular active

service.

Upon consideration thereof,

IT IS ORDERED THAT:

The petition for panel rehearing is

denied. The petition for rehearing en

banc is denied.

The mandate of the court will issue on December

5, 2017.

FOR THE COURT

November 28, 2017

Date

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

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STATUTES AND REGULATIONS

THE ADMINISTRATIVE PROCEDURE ACT

5 U.S.C. § 701 – 708

§ Section 701. - Application; definitions

This chapter applies, according to the provisions

thereof, except to the extent that (1) statutes preclude judicial review; or

(2) agency action is committed to agency discretion by

law

(b) For the purpose of this chapter (1) "agency" means each authority of the Government

of the United States, whether or not it is within or

subject to review by another agency, but does not

include (A) the Congress;

(B) the courts of the United States;

(C) the governments of the territories or possessions

of the United States;

(D) the government of the District of Columbia;

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(E) agencies composed of representatives of the

parties or of representatives of organizations of the

parties to the disputes determined by them;

(F) courts martial and military commissions;

(G) military authority exercised in the field in time of

war or in occupied territory; or

(H) functions conferred by sections 1738, 1739, 1743,

and 1744 of title 12; chapter 2 of title 41; subchapter

II of chapter 471 of title 49; or sections 1884, 18911902, and former section 1641(b)(2), of title 50,

appendix; and

(2) "person", "rule", "order", "license", "sanction",

"relief", and "agency action" have the meanings given

them by section 551 of this title

§ Section 702. - Right of review

A person suffering legal wrong because of agency

action, or adversely affected or aggrieved by agency

action within the meaning of a relevant statute, is

entitled to judicial review thereof. An action in a court

of the United States seeking relief other than money

damages and stating a claim that an agency or an

officer or employee thereof acted or failed to act in an

official capacity or under color of legal authority shall

not be dismissed nor relief therein be denied on the

ground that it is against the United States or that the

United States is an indispensable party. The United

States may be named as a defendant in any such

action, and a judgment or decree may be entered

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against the United States: Provided, That any

mandatory or injunctive decree shall specify the

Federal officer or officers (by name or by title), and

their successors in office, personally responsible for

compliance. Nothing herein

(1) affects other limitations on judicial review or the

power or duty of the court to dismiss any action or

deny relief on any other appropriate legal or equitable

ground; or

(2) confers authority to grant relief if any other

statute that grants consent to suit expressly or

impliedly forbids the relief which is sought

§ Section 703. - Form and venue of proceeding

The form of proceeding for judicial review is the

special statutory review proceeding relevant to the

subject matter in a court specified by statute or, in the

absence or inadequacy thereof, any applicable form of

legal action, including actions for declaratory

judgments or writs of prohibitory or mandatory

injunction or habeas corpus, in a court of competent

jurisdiction. If no special statutory review proceeding

is applicable, the action for judicial review may be

brought against the United States, the agency by its

official title, or the appropriate officer. Except to the

extent that prior, adequate, and exclusive

opportunity for judicial review is provided by law,

agency action is subject to judicial review in civil or

criminal proceedings for judicial enforcement

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§ Section 704. - Actions reviewable

Agency action made reviewable by statute and final

agency action for which there is no other adequate

remedy in a court are subject to judicial review. A

preliminary, procedural, or intermediate agency

action or ruling not directly reviewable is subject to

review on the review of the final agency action. Except

as otherwise expressly required by statute, agency

action otherwise final is final for the purposes of this

section whether or not there has been presented or

determined an application for a declaratory order, for

any form of reconsideration, or, unless the agency

otherwise requires by rule and provides that the

action meanwhile is inoperative, for an appeal to

superior agency authority

§ Section 705. - Relief pending review

When an agency finds that justice so requires, it may

postpone the effective date of action taken by it,

pending judicial review. On such conditions as may be

required and to the extent necessary to prevent

irreparable injury, the reviewing court, including the

court to which a case may be taken on appeal from or

on application for certiorari or other writ to a

reviewing court, may issue all necessary and

appropriate process to postpone the effective date of

an agency action or to preserve status or rights

pending conclusion of the review proceedings

§ Section 706. - Scope of review

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To the extent necessary to decision and when

presented, the reviewing court shall decide all

relevant questions of law, interpret constitutional and

statutory provisions, and determine the meaning or

applicability of the terms of an agency action. The

reviewing court shall (1) compel agency action unlawfully withheld or

unreasonably delayed; and

(2) hold unlawful and set aside agency action,

findings, and conclusions found to be (A) arbitrary, capricious, an abuse of discretion, or

otherwise not in accordance with law;

(B) contrary to constitutional right, power, privilege,

or immunity;

(C) in excess of statutory jurisdiction, authority, or

limitations, or short of statutory right;

(D) without observance of procedure required by law;

(E) unsupported by substantial evidence in a case

subject to sections 556 and 557 of this title or

otherwise reviewed on the record of an agency hearing

provided by statute; or

(F) unwarranted by the facts to the extent that the

facts are subject to trial de novo by the reviewing

court.

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In making the foregoing determinations, the court

shall review the whole record or those parts of it cited

by a party, and due account shall be taken of the rule

of prejudicial error.

35 USC 112

The specification shall contain a written description

of the invention, and of the manner and process of

making and using it, in such full, clear, concise, and

exact terms as to enable any person skilled in the art

to which it pertains, or with which it is most nearly

connected, to make and use the same, and shall set

forth the best mode contemplated by the inventor of

carrying out his invention.

The specification shall conclude with one or more

claims particularly pointing out and distinctly

claiming the subject matter which the applicant

regards as his invention.

A claim may be written in independent or, if the

nature of the case admits, in dependent or multiple

dependent form.

Subject to the following paragraph, a claim in

dependent form shall contain a reference to a claim

previously set forth and then specify a further

limitation of the subject matter claimed. A claim in

dependent form shall be construed to incorporate by

reference all the limitations of the claim to which it

refers.

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A claim in multiple dependent form shall contain a

reference, in the alternative only, to more than one

claim previously set forth and then specify a further

limitation of the subject matter claimed. A multiple

dependent claim shall not serve as a basis for any

other multiple dependent claim. A multiple

dependent claim shall be construed to incorporate by

reference all the limitations of the particular claim in

relation to which it is being considered.

An element in a claim for a combination may be

expressed as a means or step for performing a

specified function without the recital of structure,

material, or acts in support thereof, and such claim

shall be construed to cover the corresponding

structure, material, or acts described in the

specification and equivalents thereof.

CODE OF FEDERAL REGULATIONS

§1.132

AFFIDAVITS OR DECLARATIONS

TRAVERSING REJECTIONS OR OBJECTIONS.

When any claim of an application or a patent under

reexamination is rejected or objected to, any evidence

submitted to traverse the rejection or objection on a

basis not otherwise provided for must be by way of an

oath or declaration under this section.

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MANUAL OF PATENT EXAMINATION

PROCEDURE

§716

Affidavits

or

Declarations

Rejections, 37 CFR §1.132

Traversing

37 CFR §1.132 Affidavits or declarations traversing

rejections or objections.

When any claim of an application or a patent under

reexamination is rejected or objected to, any evidence

submitted to traverse the rejection or objection on a

basis not otherwise provided for must be by way of an

oath or declaration under this section.

It is the responsibility of the primary examiner to

personally review and decide whether affidavits or

declarations submitted under 37 CFR 1.132 for the

purpose of traversing grounds of rejection are

responsive to the rejection and present sufficient facts

to overcome the rejection.

This rule sets forth the general policy of the Office

consistently followed for a long period of time of

receiving affidavit evidence traversing rejections or

objections. All affidavits or declarations presented

which do not fall within or under other specific rules

are to be treated or considered as falling under this

rule.

Form paragraph 7.65 or 7.66 and any of form

paragraphs 7.66.01 through 7.66.05, as appropriate,

should be used to comment on a 37 CFR

1.132 affidavit or declaration.

7.66 Affidavit or Declaration Under 37 CFR §1.132:

Insufficient

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he [1] under 37 CFR 1.132 filed [2] is insufficient to

overcome the rejection of claim [3] based upon [4] as

set forth in the last Office action because:

Examiner Note:

1. In bracket 1, insert either --affidavit-- or -declaration--.

•

2. In bracket 2, insert the filing date of the

affidavit or declaration.

•

3. In bracket 3, insert the claim or claims

affected.

•

4. In bracket 4, indicate the rejection that has

not been overcome, including the statutory grounds,

i.e.: insufficiency of disclosure under 35 U.S.C.

112(a) or pre-AIA 35 U.S.C. 112, first paragraph; lack

of utility and/or inoperativeness under 35 U.S.C. 101;

a specific reference applied under 35 U.S.C. 103; etc.

See MPEP § 716.

•

5. Following this form paragraph, set forth the

reasons for the insufficiency; e.g., categories include:

--untimely--; --fails to set forth facts--; --facts

presented are not germane to the rejection at issue--;-showing is not commensurate in scope with the

claims--; etc. See MPEP § 716. Also include a detailed

explanation of the reasons why the affidavit or

declaration

is

insufficient.

Any

of

form

paragraphs 7.66.01 - 7.66.05 may

be

used,

as

appropriate.

•

Excerpt MPEP 2145

Office personnel should consider all rebuttal

arguments and evidence presented by applicants.

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See, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687

(error not to consider evidence presented in the

specification). C.f., In re Alton, 76 F.3d 1168, 37

USPQ2d 1578 (Fed. Cir. 1996) (error not to consider

factual evidence submitted to counter a 35 U.S.C.

112 rejection); In re Beattie, 974 F.2d 1309, 1313, 24

USPQ2d 1040, 1042-43 (Fed. Cir. 1992) (Office

personnel should consider declarations from those

skilled in the art praising the claimed invention and

opining that the art teaches away from the

invention.);Piasecki, 745 F.2d at 1472, 223 USPQ at

788 (“[Rebuttal evidence] may relate to any of

the Graham factors including the so-called secondary

considerations.”).

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