Ex Parte Frisky

Patent Trial and Appeal Board

Sep 5, 2018

13078572 (P.T.A.B. Sep. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/078,572 04/01/2011
27805 7590
THOMPSON HINE L.L.P.
10050 Innovation Drive
Suite 400
DAYTON, OH 45342-4934
09/07/2018
FIRST NAMED INVENTOR
Sean Frisky
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.
078524-00002 7799
EXAMINER
PEO, JONATHAN M
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
09/07/2018 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):
ipdocket@thompsonhine.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN FRISKY
Appeal2017-011669
Application 13/078,572
Technology Center 1700
Before KAREN M. HASTINGS, JEFFREY R. SNAY, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1, 5, 6, 8, 9, 13-17, and 19-31.2
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellant and sole inventor Sean Frisky is identified as the real party in
interest. Appeal Brief filed March 23, 2017 ("App. Br."), 3.
2 Final Office Action entered August 25, 2016 ("Final Act.").
Appeal 2017-011669
Application 13/078,572
STATEMENT OF THE CASE
Appellant claims an electrocoagulation apparatus for removing
contaminants from water. Independent claims 1 and 17 illustrate the subject
matter on appeal and are reproduced below with contested language
italicized:
1. An electrocoagulation apparatus for removing
contaminants from water, the apparatus comprising:
a tank having a first end, a second end and side walls
extending between the first end and the second end;
a first plurality of electrolytic cells provided in the tank,
the first plurality of electrolytic cells forming a first stage;
a second plurality of electrolytic cells provided in the
tank, the second plurality of electrolytic cells forming a second
stage;
a first baffle provided between the first end of the tank
and the first plurality of electrolytic cells in the first stage, the
first baffle positioned in the tank to direct water introduced into
the tank at the first end through the electrolytic cells in the first
stage;
a second baffle provided between the first plurality of
electrolytic cells in the first stage and the second plurality of
electrolytic cells in the second stage, the second baffle
positioned to prevent water in the first stage that has not passed
through at least one of the first plurality of electrolytic cells in
the first stage from entering the second plurality of electrolytic
cells in the second stage; and
a voltage supply connected to each electrolytic cell,
wherein each electrolytic cell comprises:
an enclosure; and
a plurality of substantially parallel spaced-apart
electrode plates provided in the enclosure, each electrode plate
oriented substantially parallel to the side walls, wherein the
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Application 13/078,572
enclosure surrounds the plurality of substantially parallel
spaced-apart electrode plates, and
wherein an opening is provided in a bottom of each
enclosure, the opening positioned above a bottom of the tank,
and wherein a top of each enclosure is open,
wherein the voltage supply is connected across adjacent
electrode plates to form anode/cathode electrode pairs,
wherein each electrode plate has a main body and a tab
extending above a portion of the main body, and
wherein water entering the electrocoagulation apparatus
at the first end will pass through the first baffle before passing
through the first stage, then through the second baffle and then
through the second stage before exiting the electrocoagulation
apparatus at the second end.
17. An electrocoagulation apparatus for removing
contaminants from water, the apparatus comprising:
a tank having a first end and a second end;
a plurality of electrolytic cells provided in the tank, each
electrolytic cell having at least one anode electrode and at least
one cathode electrode defining an anode/ cathode electrode pair;
and a voltage supply connected to each electrolytic cell to
supply a voltage across each anode/cathode pair,
wherein at least one of the electrolytic cells comprises:
an outer cylinder having an inlet aperture provided
proximate a first end and an outlet aperture provided proximate
a second end of the outer cylinder, the first end and the second
end being on opposite ends of the outer cylinder;
an inner cylinder provided inside the outer cylinder; and
an annulus formed between the outer cylinder and the
inner cylinder;
wherein the voltage supply is provided across the outer
cylinder and the inner cylinder to create a voltage across the
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Application 13/078,572
annulus and form a anode/ cathode electrode pair with the inner
cylinder and the outer cylinder, and
wherein the outer cylinder is positioned substantially
vertically in the tank so that water that enters the annulus
through the inlet aperture must travel upwards through the
annulus formed between the outer cylinder and the inner
cylinder and along a length of the outer cylinder and a length of
the inner cylinder before the water can exit the annulus through
the outlet aperture.
App. Br. 22-23, 25-26 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action, and maintains the rejections in the Examiner's Answer entered July
20, 2017 ("Ans."):
I. Claims 1, 5, 6, 8, 9, 13-16, 20, 22, and 23 under 35
U.S.C. § 103(a) as unpatentable over Berrak (US 2005/0230321 Al,
published October 20, 2005) in view of Morkovsky (US
2004/0079650 Al, published April 29, 2004) and Powell (US
6,488,835 Bl, issued December 3, 2002);
II. Claim 19 under 35 U.S.C. § 103(a) as unpatentable over Berrak
in view ofMorkovsky, Powell, and Reipa (US 6,306,280 Bl, issued October
23, 2001);
III. Claim 24 under 35 U.S.C. § 103(a) as unpatentable over Berrak
in view of Morkovsky, Powell, and Morkovsky 2 (US 2002/0040855 Al,
published April 11, 2002);
IV. Claims 25, 27, and 28 under 35 U.S.C. § 103(a) as unpatentable
over Berrak in view of Morkovsky, Powell, and Bradley (US 2006/0021942
Al, published February 2, 2006);
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V. Claim 26 under 35 U.S.C. § 103(a) as unpatentable over Berrak
in view ofMorkovsky, Powell, Bradley, and Kozlov (WO 2010/107503 Al,
published September 23, 2010)
VI. Claims 21 and 29--31 under 35 U.S.C. § 103(a) as unpatentable
over Berrak in view of Morkovsky, Powell, and Wiemers (US
2009/0032446 Al, published February 5, 2009); and
VII. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Berrak
in view of Herbst (US 4,872,959, issued Oct. 10, 1989), Orolin (US
6,391,184 Bl, issued May 21, 2002), and Bakhir (US 5,635,040, issued June
3, 1997)
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's timely contentions, 3 we affirm the Examiner's rejections
of claims 1, 5, 6, 8, 9, 13-16, and20-31under35 U.S.C. § 103(a) for the
reasons set forth in the Final Action, the Answer, and below, and reverse the
Examiner's rejections of claims 17 and 19 under 35 U.S.C. § 103(a) for the
reasons set forth below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellant provides for each issue Appellant
identifies. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637
3 We do not consider any new argument Appellant raises in the Reply Brief
that Appellant could have raised in the Appeal Brief. 37 C.F.R.
§ 4I.37(c)(l)(iv); 37 C.F.R. § 4I.41(b)(2) (arguments raised for the first
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown).
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Application 13/078,572
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner had
failed to make a prima facie case, "it has long been the Board's practice to
require an applicant to identify the alleged error in the examiner's
rejections").
Rejection I
Appellant presents arguments for claim 1, and asserts that because
claims 5, 6, 8, 9, 13-16, 20, 22 and 23 depend from claim 1, they are
patentable for the same reasons as claim 1. App. Br. 13-15. We
accordingly limit our discussion to claim 1, consistent with 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
The Examiner finds that Berrak discloses an electrocoagulation
apparatus for removing contaminants from water that has many of the
features recited in claim 1, including first and second pluralities of
electrolytic cells provided in a tank. Final Act. 9-11. The Examiner finds,
however, that Berrak does not disclose that each electrolytic cell comprises
an enclosure and a plurality of parallel spaced-apart electrode plates
provided in the enclosure, and the Examiner relies on Morkovsky for
suggesting these features. Final Act. 11-12. Morkovsky discloses an
electrocoagulation reactor comprising two electrocoagulation cells that each
include an open-topped tank containing a cartridge (enclosure) having a
frame "with a multiplicity of aligned plates therein." ,r,r 5, 6, 32, 47; Figs. 1
and 4. Morkovsky discloses that "[o]ne could lift out [the] cartridge, which
consists of a frame around the plates, and then, with the cartridge removed
from the tank, change out the plates." ,r 45. Morkovsky discloses that this
allows the plates to be removed "in mass" and "replaced in mass" without
having to shut down the electrocoagulation reactor. Id. Morkovsky further
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Application 13/078,572
discloses that the size of the cartridge can be increased "to handle many
more plates," and an intermediate wall can be provided in the cartridge for
structural support. ,r 4 7.
In view of these disclosures, the Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of
Appellant's invention to modify Berrak's electrocoagulation apparatus by
incorporating a cartridge (enclosure) that include a plurality of substantially
parallel spaced-apart electrode plates as disclosed in Morkovsky, to allow
the plates to be changed "in mass" by lifting the cartridge out of the tank,
without having to shut down the electrocoagulation apparatus, and to allow
more plates to be included in the electrocoagulation apparatus by increasing
the size of the cartridge. Final Act. 12-13.
The Examiner finds that "Berrak in view of Morkovsky does not
disclose each electrode plate being oriented substantially parallel to the side
walls, and wherein each electrode plate has a main body and a tab extending
above a portion of the main body," and the Examiner relies on Powell for
suggesting these features. Final Act. 13. Powell discloses
electrocoagulation device 10 including reaction chamber 12 defined by side
walls 14. Col. 7, 11. 11-15; Fig. 1. Powell discloses disposing a plurality of
vertically-extending reaction plates or blades 26 side-by-side within reaction
chamber 12 (oriented substantially parallel to the side walls), with upper 47
and lower 48 spacers guiding reaction plates 26 into the proper position.
Col. 7, 11. 25-29; col. 8, 11. 1-3; Figs. 1-3. Powell discloses that reaction
plates or blades 26 may have integral plate tables 27. Col. 7, 11. 29-31; Fig.
1. Powell discloses that "the orientation of the reaction plates can be
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configured such that plate tabs 27 are positioned to allow easy connection to
the electrical leads." Col. 10, 11. 56-58.
In view of these disclosures, the Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of
Appellant's invention to modify Berrak's electrocoagulation apparatus as
modified by Morkovsky "by incorporating each electrode plate being
oriented substantially parallel to the side walls and wherein each electrode
plate has a main body and a tab extending above a portion of the main body
as in Powell," and utilizing spacers 47, 48 so as to properly position reaction
plates 26 such that plate tabs 27 are oriented to allow easy connection to the
electrical leads, as also disclosed in Powell. Final Act. 13 ( citing Powell col.
1, 11. 56-59).
Appellant does not dispute the Examiner's factual findings. App. Br.
13-15. Instead, Appellant argues-relying on the Patent Trial and Appeal
Board's Decision in LG Electronics v. Whirlpool (2013-009719)4-that the
Examiner fails to provide reasons why a person skilled in the art would have
found it obvious to combine the relied-upon features of Berrak, Morkovsky,
and Powell "in the first place." App. Br. 13; Reply Br. 3-6, 12. Appellant
contends that "the reasons supplied in the rejection merely state benefits that
[the Examiner] suggests are achieved of the different combinations after the
combinations have already been made." Id. Appellant asserts that the
4 LG Electronics v. Whirlpool (2013-009719) is not a precedential decision
of the Patent Trial and Appeal Board, or of our reviewing court, the Court of
Appeals of the Federal Circuit, and has not been designated as an
informative decision by the Patent Trial and Appeal Board. Appellant does
not demonstrate that the facts involved in the appeal in LG Electronics are
relevant to the present appeal. App. Br. 8-20. Accordingly, the Decision in
LG Electronics v. Whirlpool is not binding on the present panel.
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Examiner's reasons for combining the relied-upon features of Berrak and
Morkovsky "merely describe advantages achieved by adding the elements to
the Berrak reference," and "[t]here is no explanation as to why a person
skilled in the art would have found it problematic not to be able to remove
all of the electrode plates in Berrak [] in mass or that the size of the cartridge
in Berrak [] should be increased to handle more plates." App. Br. 13-14.
Appellant contends that the Examiner's reasons for combining the relied-
upon features of Berrak and Powell are insufficient to establish prima facie
obviousness because "[t]here is nothing in the reasons to suggest there are
problems with the orientation of the tabs in Berrak [] or Morkovsky [] and
there is no suggestion that proper spacing is an issue in these references."
Id. at 15.
However, although Appellant characterizes the reasons the Examiner
provides for modifying Berrak' s electrocoagulation apparatus to incorporate
the relied-upon features of Morkovsky and Powell as benefits achieved after
the proposed modifications ( or combinations) have already been made,
rather than reasons that would have prompted one of ordinary skill in the art
to make the modifications ( or combinations) in the first place, this
distinction has no meaningful difference. As discussed above, the Examiner
provides reasons grounded in undisputed factual findings-reasons thus
having rational underpinning-as to why one of ordinary skill in the art
would have found the proposed modifications to Berrak's electrocoagulation
apparatus (to incorporate the relied-upon features of Morkovsky and Powell)
useful and advantageous. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
( requiring "some articulated reasoning with some rational underpinning to
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support the legal conclusion of obviousness") ( cited with approval in KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)).
Because the reasons provided by the Examiner for the proposed
modifications are based on improvements to Berrak's electrocoagulation
apparatus imparted by the modifications, one of ordinary skill in the art
would have been led to make the modifications "in the first place" to realize
benefits imparted by the improvements. Dystar Textilfarben GmbH & Co.
Deutsch/and KG v. CH Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006)
("Indeed, we have repeatedly held that an implicit motivation to combine
exists not only when a suggestion may be gleaned from the prior art as a
whole, but when the 'improvement' is technology independent and the
combination of references results in a product or process that is more
desirable, for example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the desire to enhance
commercial opportunities by improving a product or process is universal-
and even common-sensical-we have held that there exists in these
situations a motivation to combine prior art references even absent any hint
of suggestion in the references themselves.").
Although Appellant asserts that the Examiner does not explain why
one of ordinary skill in the art would have found the orientation of the tabs,
and spacing between the plates, in the apparatuses disclosed in Berrak and
Morkovsky problematic, and does not explain why one of ordinary skill in
the art would have found it problematic not to be able to remove all of the
electrode plates in Berrak in mass, or would have sought to increase the size
of the cartridge in Berrak to handle more plates, the prior art need not
explicitly disclose problems with, or drawbacks of, an apparatus in order for
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one of ordinary skill in the art to have recognized that incorporation of
features used to improve similar apparatuses would be useful and
advantageous. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.").
Appellant's arguments are therefore unpersuasive of reversible error
in the Examiner's rejection of claims 1, 5, 6, 8, 9, 13-16, 20, 22, and 23
under 35 U.S.C. § 103(a), which we accordingly sustain.
Rejections III-VI
To address these rejections, Appellant relies on the arguments made
for Rejection I ( discussed above), and argue that the additional references
applied in these rejections fail to cure the deficiencies of Berrak,
Morkovsky, and Powell. App. Br. 18-20. Because we are unpersuaded of
reversible error in the Examiner's rejection of claim 1 for the reasons
discussed above, Appellant's position as to these rejections is also without
merit. We accordingly sustain the Examiner's rejections of claims 21 and
24--31 under 35 U.S.C. § 103(a).
Rejection II
Claim 19 depends from claim 1 and recites that the apparatus further
comprises a blanketing system operative to monitor the amount of oxygen in
the tank and inject an inert gas into the tank when the oxygen reaches a
predetermined level.
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The Examiner finds that Reipa discloses a combination
oxygen/temperature electrode for monitoring the concentration of dissolved
oxygen in an electrolysis solution, and discloses purging the electrolysis
solution with argon, which the Examiner finds corresponds to a blanketing
system as recited in claim 19. Final Act. 18 ( citing Reipa col. 11, 11. 65----67;
col. 12, 11. 1-2, 24--27).
The Examiner determines that it would have been obvious to one of
ordinary skill in the art at the time of Appellant's invention to modify
Berrak' s electrocoagulation apparatus ( as modified by Morkovsky and
Powell) to incorporate the blanketing system disclosed in Reipa to prevent
deterioration of the electrodes in Berrak' s apparatus caused by oxidation of
components present in wastewater by high levels of dissolved oxygen, by
"taking up electrons from the working electrode or reduced reactants" as
disclosed in Reipa. Final Act 18-19 (citing Reipa col. 3, 11. 20-30; col. 8, 11.
3 7--41 ). The Examiner determines that "by the purging of the system with
argon gas as disclosed in Reipa, the oxygen levels in the solution to be
treated is reduced, also reducing oxidation and hence, creating the beneficial
effect of preventing deterioration of the electrodes in the disclosed system
[ofBerrak]." Ans. 28.
However, as Appellant correctly points out (Reply Br. 7-11), the
Examiner does not provide any persuasive technical reasoning or objective
evidence to support the Examiner's implicit assertion-which forms the
basis of the Examiner's rationale for combining Reipa with Berrak,
Morkovsky, and Powell-that high levels of dissolved oxygen in wastewater
exist and would lead to deterioration of the electrodes in Berrak's
electrocoagulation apparatus due to oxidation of components present in the
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wastewater. It follows that the Examiner's asserted rationale for combining
the relied-upon features of Reipa with Berrak, Morkovsky, and Powell-that
purging Berrak's system with argon gas as disclosed in Reipa would prevent
deterioration of the electrodes in Berrak' s system "resulting in more
effective treatment"-lacks rational underpinning. Ans. 28-29; KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) ("[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.")
Accordingly, the Examiner fails to establish that the combined
disclosures of Berrak, Morkovsky, Powell, and Reipa would have suggested
an electrocoagulation apparatus comprising a blanketing system operative to
monitor the amount of oxygen in the tank and inject an inert gas into the
tank when the oxygen reaches a predetermined level, as recited in claim 19.
We accordingly do not sustain the Examiner's rejection of claim 19
under 35 U.S.C. § 103(a).
Rejection VII
As set forth above, claim 17 recites an electrocoagulation apparatus
comprising, inter alia, a tank and a plurality of electrolytic cells provided in
the tank, and claim 1 7 requires at least one of the electrolytic cells to
comprise an outer cylinder positioned substantially vertically in the tank.
The Examiner finds that Orolin discloses casing 320 that "takes the
structural arrangement of a container that holds liquid such as groundwater,"
thus corresponding to a tank, in which vertically-oriented electrolytic cell
334, which "takes the shape of an outer cylinder," is disposed. Ans. 35-36
( citing Orolin col. 5, 11. 54---63; Fig. 3); see also Final Act. 28 ( citing Orolin
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col. 4, 11. 45---67; col. 5, 11. 55---60; Figs. 3 and 5). The Examiner determines
that would have been obvious to one of ordinary skill in the art at the time of
Appellant's invention to modify the electrocoagulation apparatus of Berrak
( as modified by Herbst) to vertically orient at least one electrolytic cell in
Berrak's apparatus in view of Orolin's teaching that "the vertical length of
the chamber is selected to provide a resident time for the fluid" that allows
"the majority of the gaseous oxygen to transition to dissolved oxygen."
Final Act. 29 (citing Orolin col. 2, 11. 15-18).
However, the "chamber" whose vertical length is referred to by Orolin
is actually a gas distribution chamber, rather than an electrolytic cell. Col. 2,
11. 14--18; col. 3, 11. 54--64; Fig. 3. Because the disclosures in Orolin relied-
upon by the Examiner to provide reasons for modifying Berrak's
electrocoagulation apparatus (as modified by Herbst) to vertically orient at
least one electrolytic cell in Berrak' s apparatus relate to a vertically-oriented
gas distribution chamber-rather than a vertically-oriented electrolytic
cell-the Examiner does not provide a sufficient factual basis to establish
that one of ordinary would have been led to modify the electrocoagulation
apparatus of Berrak ( as modified by Herbst) to vertically orient at least one
electrolytic cell in Berrak's apparatus, as required by claim 17.
Accordingly, consistent with Appellant's arguments, we do not
sustain the Examiner's rejection of claim 17 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejections of claims 1, 5, 6, 8, 9, 13-16, and
20-31 under 35 U.S.C. § 103(a), and reverse the Examiner's rejections of
claims 17 and 19 under 35 U.S.C. § 103(a).
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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).
AFFIRMED-IN-PART
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