Ex Parte Dorsch et al

Patent Trial and Appeal BoardApr 19, 2016

12694396 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/694,396 01127/2010 77093 7590 04/21/2016 Bishop Diehl & Lee, Ltd. 1475 East Woodfield Road, Suite 800 Schaumburg, IL 60173 FIRST NAMED INVENTOR Glenn R. Dorsch 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 003006 P0005 5947 EXAMINER SORKIN, DAVID L ART UNIT PAPER NUMBER 1774 NOTIFICATION DATE DELIVERY MODE 04/21/2016 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): cmarcello@bishoppatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GLENN R. DORSCH and KENT H. KEERAN Appeal2014-008923 Application 12/694,396 Technology Center 1700 Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal 1 under 35 U.S.C. Â§ 134(a) from a rejection of claims 1-8, 10-22, and 25-28. Appeal Br. 1. We have jurisdiction. 35 U.S.C. Â§ 6(b). We REVERSE but enter a new ground of rejection under 37 C.F.R. Â§ 41.50(b). 1 According to the Appellants, the real party in interest is Vaughan Company, Inc. of Montesano, WA. Appeal Br. 1. Appeal2014-008923 Application 12/694,396 STATEMENT OF CASE Appellants describe the present invention as directed to a combination liquid holding tank and surface foam diffuser system that could be used in waste-water processing tanks to provide foam suppression. Appeal Br. 2. Claims 1 and 14 are the only independent claims at issue. Claim 1, reproduced below with additional bracket material added and emphasis added to one argued recitation, is illustrative of the claimed subject matter: 1. A combination tank and surface foam diffuser system for suppressing the formation of foam within the tank, the system comprising: a tank [11] having a floor [base 14] and sidewalls [13]; a foaming substance comprised of at least partially liquid contents prone to the formation of foam as a result of at least one of aerobic digestion, anaerobic digestion, mixing, agitation and stirring, and filled to a first level within the tank, the at least partially liquid contents having a top surface where the formation of foam is prevalent; a source of pressurized liquid [pump 16], including piping [22 and 28] to deliver the pressurized liquid to the tank; a first nozzle [24] positioned above the top surface of the at least partially liquid contents of the tank, the nozzle having an inlet coupled to the source of pressurized liquid for receiving pressurized liquid from the source and an outlet for ejecting a liquid stream onto the top surface of the at least partially liquid contents; a splash plate [38] positioned adjacent to the outlet of the first nozzle such that the liquid stream ejected from the outlet contacts the plate at an angle to thereby disperse the liquid stream in a fan-like manner to create a defoaming area on the top surface; a second nozzle [26] positioned within the tank below both the top surface of the at least partially liquid contents and the first nozzle, the second nozzle having an inlet for receiving pressurized liquid from the source and an outlet for ejecting a liquid stream into the tank, the depth of the second nozzle and the direction of the liquid stream being such that rotation of just the top surface of the at least partially liquid contents is 2 Appeal2014-008923 Application 12/694,396 created to move foam formed on the top surface into the defoaming area of the top surface, and a plurality of mixing nozzles [ 18] positioned proximate the floor of the tank below the second nozzle, the plurality of mixing nozzles having an outlet directed to provide rotation of the tank substance below the top surface. Appeal Br. 14--15 (Claims Appendix). Appellants explain that recitations of claim 1 correspond to numbered features illustrated in Figure 2 of Appellants' specification. Appeal Br. 3--4. Figure 2 is reproduced below. fIG.2 Figure 2 depicts a side view of an embodiment of the specification's system. Spec. 4:4. Claim 14, provided below with emphasis added to one argued recitation, includes certain recitations similar to claim 1: 3 Appeal2014-008923 Application 12/694,396 14. A combination liquid holding tank and surface foam diffuser system comprising: a tank defined by sidewalls and a bottom; a foaming substance comprised of at least a partially liquid composition having a tendency to foam during at least one of aerobic digestion, anaerobic digestion, mixing, stirring, and agitation and stored within the tank; a discharge line connected to the bottom of the tank; a pump having an inlet connected to the discharge line; a feed line connected to an outlet of the pump; a first nozzle positioned above a top surface of the substance, the first nozzle having an inlet for receiving pressurized liquid from the feed line and an outlet for ejecting a liquid stream in a direction toward one of either a center or a side of the tank; a splash plate attached to the first nozzle to contact the liquid stream at an angle of inclination relative to the stream direction to thereby disperse the liquid stream in a fan-like manner over a larger area of the top surface of the substance to create a defoaming area; a second nozzle positioned within the tank below both the first nozzle and the top surface of the substance, the nozzle having an inlet for receiving pressurized liquid from the feed line and an outlet for ejecting a liquid stream directly into the substance, the depth of the second nozzle, relative to the first nozzle, and the direction of the liquid stream being such that rotation of just the top surface of the at least partially liquid contents is created to move foam formed on the top swface into the defoaming area of the top surface; and a plurality of mixing nozzles positioned proximate the bottom of the tank below the second nozzle, the plurality of mixing nozzles having an outlet directed to provide rotation of the tank material below the top surface. Appeal Br. 16 (Claim Appendix). 4 Appeal2014-008923 Application 12/694,396 REFERENCE The Examiner relied upon the prior art below when rejecting the claims on appeal: Dorsch US 2007 /0068597 Al Mar. 29, 2007 REJECTION Claims 9, 23, and 24 were previously cancelled. Appeal Br. 1. The Examiner rejected claims 1-8, 10-22, and 25-28 under 35 U.S.C. Â§ 102 as anticipated by Dorsch. ANALYSIS At issue on appeal is whether or not Dorsch teaches the "second nozzle" as recited by claims 1 and 17. In assessing the claims at issue, the Examiner errs in two respects. First, the Examiner emphasizes that the contents in the tank "should not be considered a required element." Ans. 3. Claims 1 and 17, however, expressly recite "a foaming substance comprised of at least partially liquid contents" (claim 1) and "a foaming substance comprised of at least a partially liquid composition" (claim 17) in the body of the claims as an independent required element. Thus, the present situation is distinguishable from past decisions assessing claims which recited, for example, only an intended use or functional limitation for an otherwise old apparatus or apparatus acting on a fluid that is not recited as part of the apparatus. Second, the Examiner appears to consider the claims' recited language regarding the function of the second nozzle as wholly non-limiting. Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, 5 Appeal2014-008923 Application 12/694,396 see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), to satisfy the functional limitations in an apparatus claim, the prior art apparatus must be capable of performing the claimed function. Id. at 1478. Here, claims 1 and 1 7 each require that the second nozzle has a depth (a structural limitation) and require that the depth be "such that rotation of just the top surface of the at least partially liquid contents is created" (a functional limitation). App. Br. 14, 16 (Claims Appendix). Thus, to meet claims 1 or 17, the depth of the second nozzle must be capable of performing the recited creating "rotation of just the top surface." We consider Dorsch with this context in mind. Figure 1 of Dorsch is reproduced below: L,"H l ,I ''l._f!â€¢' .â€¢ Figure 1 depicts a side elevation diagram of a surface foam diffuser system as taught by Dorsch. Dorsch if 7. Dorsch teaches that item 18 of Figure 1 6 Appeal2014-008923 Application 12/694,396 are nozzle assemblies that "can include an inner ring of nozzles and an outer ring of nozzles orientated in the same rotational direction to induce rotation of the contents of the tank about the vertical axis 20." Id. The Examiner maps the rightmost nozzle 18 of Dorsch to the second nozzle of claims 1 and 17. Final Act. 2. As depicted in Figure 1, however, this nozzle is not capable of creating "rotation of just the top surface." Rather, as depicted in Figure 1, the rightmost nozzle 18 is far below the depicted top surface and would create rotation of fluid well below the top surface of the liquid. See also Dorsch i-f 14 (providing dimensions for tank 10). The Examiner does not cite any express teaching of Dorsch or provide any basis for any inherent disclosure that the volume of liquid in tank 10 may be lower such that the rightmost nozzle creates rotation of just the top surface. Accordingly, we reverse the Examiner's rejection of claims 1 and 17. We also reverse the Examiner's rejection of dependent claims 2-6, 10- 22, and 25-28 because those claims depend upon and include the limitations of claims 1 and 1 7. NEW GROUND OF REJECTION Under 37 C.F.R. Â§ 41.50(b), we enter the following new rejection: claims 1---6, 10-22, and 25-28 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Dorsch. For this ground of rejection, we adopt the Examiner's findings of fact regarding the teachings of Dorsch. Final Act. 2-3; Ans. 2--4. We add that tank 10 depicted in Figure 1 has a conical base (14) such that rightmost nozzle 18 is situated above leftmost nozzle 18. When tank 10 is holding fluid (for example, as depicted in Figure 1 ), rightmost nozzle 18 is above 7 Appeal2014-008923 Application 12/694,396 some of the fluid. Thus, when in operation, rightmost nozzle 18 will not cause rotation of fluid below it. It would have been obvious to one of ordinary skill in the art that tank 10 of Dorsch could be filled to a height just above the height of rightmost nozzle 18. For example, a person of skill would have recognized that when tank 10 is being filled from empty to the capacity depicted in Dorsch at Figure 1, tank lO's fill level necessarily must reach an intermediate point where it is just above the height of rightmost nozzle 18. At this fill level, rightmost nozzle 18 has a depth such that the nozzle is capable of creating rotation of just the top surface. See also Dorsch i-f 14 ("nozzle assemblies 18 can include an inner ring of nozzles and an outer ring of nozzles orientated in the same rotational direction to induce rotation of the contents of the tank about the vertical access 20"). Moreover, as Dorsch places no limitation on the volume or flow rate of the fluid being processed, a person of ordinary skill in the art would have found it obvious to operate Dorsch's apparatus as shown in Figure 1 for a volume that is just above rightmost nozzle 18 and would have carried out such an operation with a reasonable expectation of success. Because the sole deficiency in the Examiner's anticipation analysis is cured in this situation, we reject claims 1---6, 10-22, and 25-28 under 35 U.S.C. Â§ 103 as obvious under Dorsch. DECISION For the above reasons, we do not sustain the Examiner's rejection of claims 1-8, 10-22, and 25-28. It is ordered that the Examiner's decision reversed. In addition to reversing the Examiner's rejection, this decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b). 37 8 Appeal2014-008923 Application 12/694,396 C.F.R. Â§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same record .... REVERSED; 37 C.F.R. Â§ 41.50(b) 9