DENDEL, Joseph W. et al.

Patent Trials and Appeals Board

Dec 27, 2019

14604184 - (D) (P.T.A.B. Dec. 27, 2019)

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.
14/604,184 01/23/2015 Joseph W. DENDEL 5395.P0017US 1150
23474 7590 12/27/2019
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
BASS, DIRK R
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
12/27/2019 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):
DOCKET@FLYNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH W. DENDEL, ROGER TYRIA, DERIC HAUSMANN,
and JOHANNES GERARDUS MARIA VERWATER
Appeal 2019-003370
Application 14/604,184
Technology Center 1700
Before KAREN M. HASTINGS, JEFFREY W. ABRAHAM, and
LILAN REN, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–26. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Prime Solution,
Inc. Appeal Br. 1.
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Application 14/604,184
2
CLAIMED SUBJECT MATTER
The claims relate to an apparatus and method for feeding,
compressing, liquid extracting, washing, and chemical treating of sludge,
slurries, or other wet materials. Spec. ¶ 4. Claims 1 and 11, reproduced
below from the Claims Appendix, are illustrative of the claimed subject
matter:
1. An inline thickener comprising:
a cylinder;
a wiper inside the cylinder and rotating relative thereto for
cleaning an interior surface of the cylinder;
an outer housing;
a sludge inlet for inserting sludge under pressure into a first
end of the cylinder;
a sludge outlet at a second end of the cylinder; and a filtrate
outlet for allowing a portion of liquid removed from the sludge
to exit the inline thickener;
the pressure of the sludge inlet, the sludge outlet and the
filtrate outlet being measured and controlled to remove a selected
percentage of the liquid in the sludge entering the inline thickener
from the sludge;
wherein the sludge is not mechanically compacted within the
inline thickener.

11. A method of removing a selected percentage of liquid from
sludge while maintaining a path for the selected percentage of
the liquid removed therefrom free of blockage, the method
comprising:
providing an outer housing;
providing a cylinder within the outer housing;
positioning a wiper inside the cylinder;
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rotating the wiper relative to the cylinder thereby cleaning
an interior surface of the cylinder;
inserting the sludge under pressure into a first end of the
cylinder through a sludge inlet;
forcing the sludge through an interior of the cylinder;
removing the selected percentage of the liquid from the
sludge passing through the cylinder;
outletting the sludge with the selected percentage of the
liquid removed therefrom at a second end of the cylinder through
a sludge outlet;
outletting the selected percentage of the liquid removed
from the sludge through a filtrate outlet; and
measuring and controlling the pressure of the sludge inlet,
the sludge outlet and the filtrate outlet to control the selected
percentage of the liquid in the sludge removed from the sludge;
wherein the sludge is not mechanically compacted within
the cylinder.
REJECTIONS ON APPEAL
On appeal, the Examiner maintains the following rejections
A. Claims 1–10 and 20–26 under 35 U.S.C. § 112(b);2
B. Claims 1, 2, 8–12, and 18–26 under 35 U.S.C. § 103 as
unpatentable over Geisbauer3 in view of Fongen;4
C. Claims 3 and 13 under 35 U.S.C. § 103 as unpatentable over
Geisbauer in view of Fongen, and further in view of Sasaki;5 and

2 The Examiner withdrew the separate rejection of claims 3–7 under 35
U.S.C. § 112(b). Ans. 3.
3 Geisbauer, US 2010/0084324 A1, published Apr. 8, 2010.
4 Fongen, CA 2,031,947, published June 12, 1992.
5 Sasaki, US 5,380,436, issued Jan. 10, 1995.
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D. Claims 4–7 and 14–17 under 35 U.S.C. § 103 as unpatentable over
Geisbauer in view of Fongen and Sasaki, and further in view of
Jonsson.6
Ans. 3; Non-Final Act. 4–9.
OPINION
Rejections under 35 U.S.C. § 112(b)
The Examiner rejects claims 1–10 and 20–26 under 35 U.S.C.
§ 112(b) as being indefinite for failing to particularly point out or distinctly
claim the subject matter which the inventor regards as the invention. Non-
Final Act. 2.
Independent claim 1 recites “the pressure of the sludge inlet, the
sludge outlet and the filtrate outlet being measured and controlled to remove
a selected percentage of the liquid in the sludge entering the inline thickener
from the sludge.” The Examiner takes the position that this limitation is
unclear because it states a function “without providing any indication about
how the function is performed.” Non-Final Act. 2. The Examiner finds
“[t]he recited function does not follow from the structure recited in the claim
. . . so it is unclear whether the function requires some other structure or is
simply a result of operating the inline thickener in a certain manner.” Id.;
see also Ans. 4 (the Examiner stating that “[d]ue to the lack of
corresponding structure provided in the claims drawn to performing the
‘measuring and controlling’ function, it is unclear whether such structure is
necessary, optional, or part of the inline thickener”).
Appellant asserts that the Examiner is confusing indefiniteness with
claim breadth. Appeal Br. 4–5. According to Appellant, although the

6 Jonsson et al., US 2013/0008848 A1, published Jan. 10, 2013.
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claims use broad language, the meaning of the language is easily understood.
Id. at 5. Specifically, Appellant contends “[i]t is clear that the pressure is
measured and controlled at the claimed locations. How the pressure is
measured and controlled is not specified by Claim 1 as such language is
broad to cover many manners of measuring and controlling.” Id.
Despite its breadth, Appellant argues that the scope of the claim is
clearly defined such that a person of ordinary skill in the art could interpret
the metes and bounds of the claim so as to understand how to avoid
infringement. Id. For example, Appellant argues that a person of ordinary
skill in the art would undoubtedly know whether or not the pressure of the
sludge inlet, sludge outlet, and filtrate outlet is being measured and
controlled. Reply 1–2.
We are not persuaded by Appellant’s arguments. Claim 1 is directed
to an inline thickener comprising certain structural features, including a
sludge inlet, a sludge outlet, and a filtrate outlet. The claim also requires the
pressure of these three components “being measured and controlled.” This
particular limitation does not impose any structural limitations on the
claimed inline thickener, since, as admitted by Appellant, the claim is
intended to include “many manners of measuring and controlling.” Appeal
Br. 5. As such, it is unclear whether an inline thickener having all of the
recited structural features of the claim falls within the scope of the claim.
Instead, the scope of the apparatus claim is delineated by whether or not a
certain action is taken, regardless of who or what carries out that action, or
how or when it is carried out. Our reviewing court has determined that these
type of hybrid claims, directed to both systems and actions, are indefinite.
See IPXL Holdings LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed.
Cir. 2005); In re Katz Interactive Call Processing Patent, 639 F.3d 1303,
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1318 (Fed. Cir. 2011); see also M.P.E.P. § 2173.05(p)(II) (9th ed. rev.
07.2015 Nov. 2015) (“A single claim which claims both an apparatus and
the method steps of using the apparatus is indefinite under 35 U.S.C.
112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”) (citing Katz, 639
F.3d. at 1318).
Furthermore, we disagree with Appellant’s argument that the scope of
the claim is clearly defined such that “a person of ordinary skill in the art
could interpret the metes and bounds of the claim so as to understand how to
avoid infringement.” Appeal Br. 5–6. For example, a person of ordinary
skill in the art assessing an inline thickener having the structural features
recited in claim 1 would not know whether infringement of the apparatus
claim occurs when one creates an apparatus that allows a user to measure
and control the pressure of the apparatus at the claimed locations, or whether
infringement occurs only when the user actually measures and controls the
apparatus at the claimed locations. See Katz, 639 F.3d. at 1318.
For all of the foregoing reasons, we affirm the Examiner’s rejection of
independent claim 1, and claims 2–10 and 20–23, which depend therefrom,
under 35 U.S.C. § 112(b).
The Examiner also separately rejects claim 23 as being indefinite
because it recites “the pressure of the sludge inlet, the sludge outlet and the
filtrate outlet are selectively adjustable.” Non-Final Act. 3. Thus, in view of
its dependency from claim 1, claim 23 requires that the pressure at certain
locations in the claimed inlet thickener is not only measured and controlled,
but also is “selectively adjustable.” As with claim 1, the Examiner states
“[t]his limitation is unclear because it merely states a function (adjustable
pressure) without providing any indication about how the function is
performed.” Id. Appellant argues that the language in claim 23, like the
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language in claim 1, is broad, but definite. Appeal Br. 7. Appellant’s
argument, however, is no more persuasive here than it was when considered
in response to the rejection of claim 1. For the reasons discussed above in
connection with claim 1, we sustain the Examiner’s rejection of claim 23.
Claims 24–26 are method claims that depend from claim 11, not claim
1. As such, these claims are not apparatus claims that include the language
“the pressure of the sludge inlet, the sludge outlet and the filtrate outlet
being measured and controlled to remove a selected percentage of the liquid
in the sludge entering the inline thickener from the sludge,” which forms the
basis for the Examiner’s rejections under 35 U.S.C. § 112(b). Claim 11 is
directed to a method of removing liquid from sludge, and includes the step
of measuring and controlling the pressure of the sludge inlet, sludge outlet,
and filtrate outlet. Notably, the Examiner does not reject claim 11 under 35
U.S.C. § 112(b) as indefinite, and does not articulate any separate reason for
rejecting claims 24–26. Accordingly, we reverse the Examiner’s rejection of
claims 24–26 under 35 U.S.C. § 112(b) as indefinite.
Rejections under 35 U.S.C. § 103
1. Claims 1–10 and 20–23
The Examiner rejects independent claim 1, and claims 2–10 and 20–
23, which depend from claim 1, under 35 U.S.C. § 103 as obvious in view of
the combined teachings of Geisbauer and one or more of Fongen, Sasaki,
and Jonsson. Non-Final Act. 4–9. In view of our determination above that
these claims are indefinite, we decline to address the Examiner’s rejections
of these claims under 35 U.S.C. § 103.
2. Claims 11–19 and 24–26
The Examiner finds that Geisbauer discloses all of the limitations of
claim 11 except for measuring and controlling the pressure of the sludge
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inlet, sludge outlet, and filtrate outlet to control separation. Non-Final Act.
4–6 (referring to the analysis of claim 1 when discussing claim 11). The
Examiner finds that Fongen discloses a separation method using a
cylindrical dewatering apparatus “where the pressure is measured and
controlled throughout the system to effect a desired separation efficiency.”
Id. at 5–6 (citing Fongen, 15:14–15, 18:14–23). The Examiner further finds
that a person of ordinary skill in the art would have modified the method of
Geisbauer to include the monitoring and control features of Fongen “in order
to control back pressure within the separation device, minimize pressure
drop across the filtration member, and modulate the degree of dewatering
during use.” Id. (citing Fongen, 18:14–23).
Appellant argues that the combined teachings of Geisbauer and
Fongen fail to teach or suggest all of the limitations of the claims. Appeal
Br. 11–13. In particular, Appellant argues that the references fail to disclose
“rotating the wiper relative to the cylinder thereby cleaning an interior
surface of the cylinder,” as claim 11 requires. Id. According to Appellant,
the Examiner relies on Figure 8 of Geisbauer as disclosing this feature, but
Geisbauer expressly states that for the embodiment shown in Geisbauer
Figure 8 there is no relative movement between the features corresponding
to the wiper and cylinder in claim 11. Id. at 9 (arguing that paragraph 46 of
Geisbauer clearly states “there is no relative movement between the screw
47 and the inside shaft 48” for the embodiment of Figure 8), 13.
We are not persuaded by Appellant’s arguments. In determining that
the dewatering apparatus of Geisbauer discloses a wiper inside a cylinder
capable of rotating and cleaning the cylinder, the Examiner cited paragraphs
46 and 52 of Geisbauer. Non-Final Act. 4, 6 (referring back to the analysis
of claim 1 when addressing claim 11). Although paragraph 46 of Geisbauer
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refers to the embodiment shown in Figure 8, and indeed includes the quote
referenced by Appellant regarding relative movement, paragraph 52 of
Geisbauer refers to the alternative embodiment shown in Figure 11, and
expressly discloses that the embodiment allows for relative movement
between the screw (i.e., the wiper) and the inside wall 48 (i.e., the cylinder).
Geisbauer ¶ 52.
Appellant does not specifically address the fact that the Examiner
relies on paragraph 52 of Geisbauer in rejecting the claims in its Appeal
Brief or Reply Brief. In its Reply Brief, Appellant contends that even if
alternative embodiments in Geisbauer do disclose the relative movement
between the screw and filter body, the alternative embodiments shown in
Figures 10–14 “clearly do not include the other elements of the claims.”
Appellant, however, fails to specify which elements are allegedly missing
from these embodiments and fails to explain sufficiently the basis for its
conclusion that any elements are missing. These types of conclusory
statements, lacking evidence or explanation, are unpersuasive. See Ex parte
Belinne, No. 2009-004693, 2009 WL 2477843 at *3–4 (BPAI Aug. 10,
2009) (informative) (finding Appellant did not show error in the Examiner’s
rejection where the Examiner made extensive specific fact finding with
respect to each of the argued claims and, in response, Appellants restated
elements of the claim language and simply argued that the elements are
missing from the reference); In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (holding that Appellants have the burden on appeal to the Board to
demonstrate error in the Examiner's position); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984) (“[M]ere argument and conclusory statements . . .
cannot establish patentability.”) (citing In re Lindner, 457 F.2d 506, 508
(CCPA 1972); In re Wood, 582 F.2d 638, 642 (CCPA 1978)).
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Appellant likewise argues that the combined teachings of Geisbauer
and Fongen would not include the “measuring and controlling” step of claim
11. Id. at 12–13. It is undisputed that Geisbauer does not teach both
measuring and controlling. See, e.g., Ans. 6. The Examiner, however,
directs us to portions of Fongen that, at the very least, suggest measuring and
controlling the pressure throughout the entire dewatering system to control
separation efficiency. Id.; Non-Final Act. 5. Appellant’s only response to
the Examiner’s determination regarding Fongen is that “Fongen does not
disclose both measuring and controlling pressure at the three noted areas (the
sludge inlet, the sludge outlet, and the filtrate outlet).” Appeal Br. 12. As
discussed above, Appellant’s conclusory statements are not persuasive. See
Ex parte Belinne, 2009 WL 2477843 at *3–4.
Appellant also disputes the Examiner’s reasons for combining the
teachings of Geisbauer and Fongen. Appeal Br. 11–12. Appellant first
argues that controlling backpressure, minimizing pressure drop, and
modulating the degree of dewatering are not reasons for making a
combination, but would be the result of making the combination. Id. This
argument is unavailing, as the beneficial properties that result from the
combination are in fact the reasons why a person of ordinary skill in the art
would make the combination. And here, Appellant does not dispute that
combining the teachings of Geisbauer and Fongen would result in a system
that allows for controlling backpressure, minimizing pressure drop, and
modulating the degree of dewatering.
Appellant next argues that Geisbauer’s system is directed to removing
all contaminants from a liquid cooling fluid, and that modifying Geisbauer
in view of Fongen would make Geisbauer’s system less efficient because
Fongen teaches “modulating the degree” of dewatering in its system, which
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would result in removing less than all solids from the liquid in Geisbauer’s
system. Appeal Br. 11–12. Fongen, however, suggests measuring and
controlling pressure throughout its system to “provide for control . . . of the
amount of liquid pressed out of the pulp slurry.” Fongen, 18:20–22.
Appellant fails to direct us to any evidence suggesting that this, or any other
language in Fongen, limits Fongen to removing less than the all solids from
the liquid. Absent any such limitation, the teaching in Fongen of controlling
the amount of liquid pressed out of the pulp slurry reasonably includes
pressing all of the liquid out of the slurry. Fongen’s own disclosure thus
undermines Appellant’s inefficiency argument.
Additionally, Appellant argues that it would not have been obvious to
use Fongen’s devices in Geisbauer’s system because the devices in Fongen
are made for a system with multiple steps, whereas Geisbauer’s system does
not have multiple steps. Appeal Br. 12. Appellant’s arguments here,
however, are directed towards incorporating Fongen’s devices into
Geisbauer’s system. But “[t]he test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA
1981).
For all of the foregoing reasons, we are not persuaded of any
reversible error in the Examiner’s rejection of claim 11 under 35 U.S.C.
§ 103. Appellant does not separately argue claims 12, 13, 14, 16, 18, 19,
and 24–26, which depend from claim 11. We therefore affirm the
Examiner’s rejection of these claims for the same reason.
Claims 15 and 17 ultimately depend from claim 11, and require
wiggle plates comprising a disc having radially extending slots that “taper
and have a smaller cross-sectional area at an inner entrance and a larger
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cross-sectional area at an outer exit.” The Examiner finds that Jonsson
discloses a disc filtration apparatus, wherein the individual disc filters have
slots with a smaller cross-sectional area at an entrance of the disc and a
larger cross sectional area at an exit end of the disc. Non-Final Act. 8–9
(citing Jonsson, Abstract, Figs. 5–6). The Examiner determines it would
have been obvious to modify Geisbauer in view of Sasaki to include filter
discs, and include tapered slots in the discs as described in Jonsson to
“minimize pressure drop over the filter and minimize filtration area over said
filter.” Id. (citing Jonsson ¶ 17).
Appellant argues that Jonsson “does not disclose slots that taper as
claimed. Any slots noted by the Examiner (e.g., slots 30A and 30B) do not
taper.” Ans. 17. Once again, Appellant offers little more than a conclusory
statement that the prior art does not disclose a recited claim element. As
noted above, such statements, absent evidence or explanation, are not
persuasive. See Ex parte Belinne, 2009 WL 2477843 at *3–4. Nevertheless,
we agree with the Examiner’s determination that the figures in Jonsson show
slots that taper, having a larger cross-section at the outer rim of the disk, and
a smaller cross-section at the inner end of the disk. See, e.g., Jonsson,
Abstract, Figs. 2 and 5. Accordingly, we affirm the Examiner’s rejection of
claims 15 and 17.
CONCLUSION
The Examiner’s rejection of claims 1–10 and 20–23 under 35 U.S.C.
§ 112(b) is affirmed, the rejection of claims 24–26 under 35 U.S.C. § 112(b)
is reversed, and the rejection of claims 11–19 and 24–26 under 35 U.S.C.
§ 103 is affirmed. We decline to address the Examiner’s rejection of claims
1–10 and 20–23 under 35 U.S.C. § 103.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–10, 20–26 112(b) Indefiniteness 1–10, 20–
23
24–26
1, 2, 8–12,
18–26
103 Geisbauer, Fongen 11, 12, 18,
19, 24–26

3, 13 103 Geisbauer, Fongen,
Sasaki
13
4–7, 14–17 103 Jonsson 14–17
Overall
Outcome
1–26

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