Ex Parte Flor et al

Patent Trial and Appeal BoardNov 21, 2013

11883190 (P.T.A.B. Nov. 21, 2013)

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. 11/883,190 07/27/2007 Nicolo Flor BAZOOKA-US-753 9947 7590 11/21/2013 Christopher John Rudy 209 Huron Ave., Ste. 8 Port Huron, MI 48060 EXAMINER SINGH, SUNIL ART UNIT PAPER NUMBER 3672 MAIL DATE DELIVERY MODE 11/21/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NICOLO FLOR, JOHN CHRISTOPHER POLIS, JOHN S. BRINKMAN, and RICHARD H. HALL ____________ Appeal 2012-000026 Application 11/883,190 Technology Center 3600 ____________ Before STEFAN STAICOVICI, NEIL T. POWELL, and BEVERLY M. BUNTING, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000026 Application 11/883,190 2 STATEMENT OF THE CASE Nicolo Flor et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 1-20 as unpatentable over Saito (US 5,512,175, issued Apr. 30, 1996) and Hall (US 3,750,688, issued Aug. 7, 1973) or Larson (US 4,302,337, issued Nov. 24, 1981) and claims 1-16 as unpatentable over Miller ′465 (US 4,609,465, issued Sep. 2, 1986) and Hall or Larson.1 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). INVENTION Appellants’ invention relates to a method and a system for filtering and/or absorbing organic substances. Spec. 1, ll. 11-13. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A system for absorption and containment of, and/or shutting down flow of a fluid stream including, a target organic substance, which comprises: a first, fluid-permeable, hollow housing member; a second, fluid-permeable, hollow housing member disposed inside said first member; and an absorbing material disposed between said first and second members, which includes water insoluble, particulate polymer particles that can imbibe the target organic substance and substantially swell with the same; such that a fluid having the target organic substance can pass through said first and second members and said absorbing material, and have the target organic substance be absorbed by 1 The Examiner refers throughout the rejections to the teachings of Miller ′479 (US 5,536,479, issued Jul. 16, 1996), Dietzler (US 4,596,491, issued Jun. 24, 1986), and Voll (US 5,624,560, issued Apr. 29, 1997) as evidence. See e.g, Ans. 10-11 and 14-15. Appeal 2012-000026 Application 11/883,190 3 said absorbing material with imbibing and swelling by said particles so that the absorption and containment of, and/or shutting down flow of the fluid stream including, the target organic substance can occur. SUMMARY OF DECISION We AFFIRM. ANALYSIS The Examiner found that both Saito and Miller ′465 disclose all the limitations of independent claims 1, 9, and 17 with the exception of an “absorbing material[,] which include[s] insoluble, particulate polymer particles that can imbibe a target organic substance and substantially swell with the same.” Ans. 3-4 and 6. However, the Examiner found that both Hall and Larson disclose such an absorbing material and proposed to substitute the absorbing material of either Hall or Larson for the absorbing material of either Saito or Miller ′465, because “such a modification would filter/absorb out desired contaminants such as oil, diesel fuel, etc.” Ans. 4-7. The obviousness rejection based upon Saito and Larson or Hall Claims 1-4, 8-16, 19, and 20 Appellants have not presented arguments for the patentability of claims 2-4, 8-16, 19, and 20 apart from claim 1. App. Br. 2-3. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 2-4, 8-16, 19, and 20 standing or falling with claim 1. Appellants argue that: (1) Saito does not constitute relevant art because it is not in the field of organic chemical absorption, it is not related to the art of either Larson or Hall, nor addresses the same problems as the Appeal 2012-000026 Application 11/883,190 4 inventors (see App. Br. 3 and Reply Br. 2-3); (2) Saito teaches away from the Examiner’s proposed combination because the device of Saito absorbs or filters a material that is not an organic (see id.); (3) the Examiner has not provided an adequate reasoning with rational underpinning to modify the method and system of Saito with the teachings of either Larson or Hall (see id.); and (4) Larson fails to disclose a particulate absorbing material because the “polymer latex absorbent of Larson et al. is not particulate” (see id.). We find Appellants’ first argument unconvincing for the following reasons. To determine what is analogous prior art for the purpose of analyzing the obviousness of the subject matter at issue, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent or application at issue can provide a reason for combining the elements in the manner claimed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Thus, a reference in a field different from that of applicant's endeavor may be reasonably pertinent if it is one that, because of the matter with which it deals, would have logically commended itself to an inventor's attention in considering his or her invention as a whole. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007). In this case, a skilled artisan looking for a method and apparatus for absorption and containment of organic substances from a fluid stream would consider teachings relating to a method and apparatus for removing contaminants from a liquid stream to be of particular interest. Appellants describe the problem they confront as filtering/absorbing organic chemical/mixture from a water stream. Spec. 1, ll. 21-28. Saito discloses a method and apparatus for removing contaminants/particulates from a liquid stream. See Saito, Abstract. Both Larson and Hall specifically disclose Appeal 2012-000026 Application 11/883,190 5 removing organic contaminants from a water stream. See Larson, Abstract and Hall, Abstract. An inventor seeking absorption and containment of organic substances from a liquid stream would look for a method and system that removes contaminants from a liquid stream (as per Saito) and would further look for a suitable absorption/filtering material (as per Larson or Hall). Consequently, we agree with the Examiner that all references, namely, Saito, Larson, and Hall would have commended themselves to an inventor considering the problem of removing organic chemical/mixture from a water stream. See Ans. 8-9 and 12-13. We are not persuaded by Appellants’ second argument because differences between references is insufficient to establish that such references "teach away" from any combination thereof. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). Appellants do not point to any passage in Saito that "criticize[s], discredit[s] or otherwise discourage[s]" using “a permeable bed of particulate swellable polymer particles” (see Hall, Abstract) or a latex coated particulate substrate (see Larson, fig. 2) as a filter/absorption material which, as noted by the Examiner, “would filter/absorb out desired contaminants such as oil, diesel fuel, etc.” Ans. 5, 7. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). As to Appellants’ third argument, we are not persuaded because the Examiner has provided a reason (using a permeable bed of particulate swellable polymer particles or a latex coated particulate substrate) with rational underpinning (“to filter/absorb out desired contaminants such as oil, diesel fuel, etc.”). See Ans. 5, 7; In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of Appeal 2012-000026 Application 11/883,190 6 obviousness”) (cited with approval in KSR, 550 U.S. at 418). In other words, since the Examiner has articulated that either Larson’s or Hall’s absorption material is being substituted for the absorption/filter material of Saito, and Appellants have neither alleged, nor provided persuasive evidence showing that the Examiner’s proposed modification of Saito with the absorption/filter material of either Larson or Hall would have been either beyond the level of ordinary skill in the art or unpredictable to a person of ordinary skill in the art, we are not persuaded of either hindsight or improper reconstruction in the Examiner’s rejection based on Saito and either Larson or Hall. Moreover, we note that “[t]he person of ordinary skill is a hypothetical person who is presumed to be aware of all the pertinent prior art.” See Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Lastly, with respect to Appellants’ fourth argument, we agree at the outset with the Examiner that the Larson substrate 29 is a particulate. Ans. 10 and 14 (citing to Larson, col. 3). Furthermore, what a reference teaches a person of ordinary skill is not limited to what a reference specifically “talks about” or what is specifically “mentioned” or “written” in the reference. Syntex (U.S.A.) LLC v. Apotex, Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005). In this case, although substrate 29 is part of foraminous filter element 25 (see Reply Br. 3), nonetheless, Larson specifically discloses particulate materials that can be used as a substrate for coating with latex, such as sand, straw, sawdust, granular petroleum and wood charcoals, and glass beads. Larson, col. 3, ll. 45-50. As such, because substrate 29 is a particulate substrate and a coating 31 is applied thereon to form a filter/absorption material, Larson discloses a particulate filter/absorption material, namely, a Appeal 2012-000026 Application 11/883,190 7 latex coated particulate substrate. Moreover, we note that Figure 2 of Larson shows particles of substrate 29 having a coating 31 thereon. We thus are not persuaded that Larson fails to disclose a particulate absorbing material. In conclusion, for the foregoing reasons, we sustain the rejection of independent claim 1, and claims 2-4, 8-16, 19, and 20, standing with claim 1, under 35 U.S.C. § 103(a) as unpatentable over Saito and Larson or Hall. Claims 5-7 Dependent claims 5-7 add the limitations of “pores about from 90 microns to 130 microns” (as per claim 5); “porous plastic [that] is HDPE2” (as per claim 6); and tubes that “have about 0.125-inch thicknesses to their walls, and an outer protective mesh.”(as per claim 7). App. Br., Clms. App’x. The Examiner took official notice that the above mentioned limitations “are old and well known in the art.” Ans. 5, 7. The Examiner concluded that it would have been obvious for a person of ordinary skill in the art to modify the method and system of Saito and Larson or Hall “to have the tubes made from HDPE plastic, have pores of about 90 to 130 microns, be about .125 inches thick and include a protective mesh about the first tube since such modifications are mere design choices.” Id. According to the Examiner: The tubes being made from HDPE (high density polyethylene) plastic and being .125 inches thick allow the structure to withstand desired loading as 2 As we understand, HDPE is an acronym for high density polyethylene. Appeal 2012-000026 Application 11/883,190 8 well as resist chemical attack. The tubes having pores of about 90 to 130 microns allows one to get a desired flowrate. The protective mesh prevents unwanted debris to flow into the system. Id. Appellants argue that neither Saito, Larson, nor Hall discloses the limitations of dependent claims 5-7. App. Br. 3-4 and 5. According to Appellants, although the limitations of claims 5-7 may have been known in the art, as the Examiner proposes, that does not mean that such limitations are known “in conjunction with the other claimed subject matter.” Reply Br. 3, 4. At the outset, we agree with the Examiner that if an applicant does not seasonably traverse the taking of official notice during examination, then the object of the official notice is taken to be admitted prior art. In re Chevenard, 139 F.2d 711, 713 (CCPA 1943); see also Ans. 10-11 and 14- 15. In this case, as noted by the Examiner, Appellants did not challenge the Examiner’s taking of official notice until the filing of the Appeal Brief on February 7, 2011. See Ans. 10; Compare Examiner’s Office Actions mailed August 19, 2009, March 22, 2010, and September 1, 2010 with Appellants’ Amendments filed November 19, 2009 and June 21, 2010. As such, we agree with the Examiner’s finding that the limitations of claims 5-7 “are old and well known in the art.” See Ans. 5, 7. Furthermore, the Examiner has provided adequate reasoning with rational underpinning to modify the method and system of Saito and Larson or Hall “to have the tubes made from HDPE plastic, have pores of about 90 to 130 microns, be about .125 inches thick and include a protective mesh about the first tube.” See Ans. 5, 7. Appellants have not come forth with Appeal 2012-000026 Application 11/883,190 9 any persuasive evidence or technical reasoning to show error in the Examiner’s conclusion of obviousness. Lastly, we note that the Examiner did not apply “new art,” namely, Miller ′479, Dietzler, and Voll, in the rejection based on Saito and Larson or Hall, as Appellants argue. Reply Br. 1. The Examiner turned to the teachings of Miller ′479, Dietzler, and Voll merely as evidence to support the finding that the limitations of claims 5-7 “are old and well known in the art.” See Ans. 10-11. Therefore, Appellants’ arguments regarding the applicability of the teachings of Miller ′479, Dietzler, and Voll in a rejection under Section 103(a) are not commensurate in scope with the Examiner’s proposed rejection. See Reply Br. 3-5. As such, for the foregoing reasons, we likewise sustain the rejection of claims 5-7 over the combined teachings of Saito and Larson or Hall. Claims 17 and 18 The Examiner found that Saito discloses “a containment basin [51] . . . with sides and a trough with the assembly residing therein.” Ans. 11. However, the Examiner notes that although the containment basin (casing 51) of Saito is not oriented horizontally, it would have been obvious for a person of ordinary skill in the art “to orient the basin horizontally in the ground in order to filter water to an underground aquifer.” Id. Appellants argue that “feature 51 of Saito et al. is a casing, not a containment basin as claimed” and that “[e]ven if somehow a vertically oriented containment basin were taught by Saito et al., it would teach away from the subject matter of claim 18.” Reply Br. 5. Appeal 2012-000026 Application 11/883,190 10 We are not persuaded by Appellant’s argument because Appellants have failed to provide any persuasive evidence or technical reasoning why the Examiner’s interpretation of casing 51 of Saito as a “containment basin” is in error. Moreover, Appellants have not come forth with any persuasive evidence or technical reasoning to show error in the Examiner’s conclusion of obviousness. In conclusion, for the foregoing reasons, we also sustain the rejection under 35 U.S.C. § 103(a) of claims 17 and 18 as unpatentable over Saito and Larson or Hall. The obviousness rejection based upon Miller ′465 and Larson or Hall Appellants make the same arguments as presented supra with respect to the rejection of claims 1-20 as unpatentable over Saito and Larson or Hall. See App. Br. 4-5 and Reply Br. 5-6. Accordingly, for the same reasons set forth above, we likewise sustain the rejection under 35 U.S.C. § 103(a) of claims 1-16 as unpatentable over Miller ′465 and Larson or Hall. SUMMARY The Examiner’s decision to reject claims 1-20 as unpatentable over Saito and Larson or Hall is affirmed. The Examiner’s decision to reject claims 1-16 as unpatentable over Miller ′465 and Larson or Hall is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Klh