Ex Parte Gaignet et al

Patent Trial and Appeal Board

Nov 29, 2012

10666017 (P.T.A.B. Nov. 29, 2012)

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.
10/666,017 09/18/2003 Yves Gaignet MCA-579 7951
7590 11/29/2012
Kevin S. Lemack
Nields & Lemack
Suite 7
176 E. Main Street
Westboro, MA 01581
EXAMINER
KURTZ, BENJAMIN M
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
11/29/2012 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 YVES GAIGNET,
DENIS DAULASIM and JACQUES MOULIN
______________

Appeal 2011-003531
Application 10/666,017
Technology Center 1700
_______________

Before CHARLES F. WARREN, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

PER CURIAM.
DECISION ON APPEAL
Applicants appeal to the Board from the final rejection of claims 1, 2,
4-12 and 14-23 under 35 U.S.C. § 103(a): claims 1, 2, 4-6, 14-16, 18-21 and
23 over Bray (US 3,542,199), Brown (US 4,990,248) and Burrows (US
5,221,473); claims 7, 8, 10-12 and 22 over Bray, Brown, Burrows and
Regunathan (US 4,645,601); claim 9 over Bray, Brown, Burrows,
Regunathan and Petrucci (US 4,948,505); and claim 17 over Bray, Brown,
Burrows, Regunathan and Gundrum (US 5,891,334). Br. 7-8; Ans. 4, 8, 10.
We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. §
41.31(a) (2010).
Appeal 2011-003531
Application 10/666,017
2
We reverse the decision of the Primary Examiner.
OPINION
The plain language of representative claim 1, with reference to
Specification Figures 2, 3, 5, specifies a module 10 for purifying a fluid
comprising, among other things, a cylindrical container 31 having at a first
axial end head 20 which has feed fluid inlet first orifice 321, 331, permeate
fluid outlet second orifice 322, 332 and retentate fluid outlet third orifice
323, 333, and bottom 23 comprising, among other things, crenellated ring 40,
such that “external cylindrical space [36] and . . . internal cylindrical space
[35] communicating with each other via one or more passages [37] defined
by the crenellations in said crenellated ring [40].” Claim 1; see Spec.
9:2-23, 10:2-17, 11:3-19, 14:20-27.
We agree with Appellants that the Examiner erred in determining that
one of ordinary skill in the art would have combined Bray, Brown and
Burrows, common to all grounds of rejection, and thence would have been
led to modify Bray’s reverse osmosis water purification cylindrical module
10 in two respects, thus arriving at a module for purifying a fluid
encompassed by claim 1. First, by using Brown’s head (valve plate 45, 51)
which has a feed fluid inlet first orifice (feed-water port 48, 54), a permeate
fluid outlet second orifice (permeate- or water-product port 91, 58) and a
retentate fluid outlet third orifice (waste-water port 43, 56) of Brown’s
reverse osmosis cylindrical cartridge 10 in place of Bray’s first axial end
head (lower end plug 20) which has a feed fluid inlet first orifice (impure
water inlet tube 30) and a retentate fluid outlet second orifice (brine outlet
88), even though Bray has second axial end “bottom” (upper end plug 14)
which has a permeate fluid outlet first orifice (product water outlet 108) and
Appeal 2011-003531
Application 10/666,017
3
a fluid outlet second orifice (central outlet 110) in communication with the
central chamber inside shroud 102 that receives product water which flows
through channel 92. Bray col.1 ll.69-74, col.2 ll.5-25 and 50-75, col.3
ll.6-17 and 53-70, Figs. 1, 5, 6; Brown col.3 ll.50-58, col.5 ll.10-14 and
38-41, col.6 ll.2-4 and 52-62, Figs. 1, 2, 5. And second, by inserting
Burrows’ crenellated ring (ring with “upstanding ribs 160 at the bottom of
closed end of the [cylindrical] housing 116”) within small chamber 161
which engages and supports lower adapter fitting 159 through which no fluid
passes and on which is mounted central support tube 142 for the reverse
osmosis filter cartridge 114, into Bray’s purification unit at the point at
which “[t]he fit of the upper end of shroud 36[, separating filter 32 and
granules 34,] against septum 44[, dividing upper product water and lower
membrane cartridge compartments,] and its shoulder 42 is sloppy or loose to
permit liquid passage therebetween” to improve liquid flow. Bray col.2
ll.18-32, Figs. 1; Burrows col.7 l.59 to col.8 l.31, Figs. 4, 5. Ans. 4-7, 11-13;
Br. 10-15.
Appellants submit that the Examiner has supplied no reasons why and
how one of ordinary skill in the art would have modified Bray’s module 10
having two orifice head 20 and two orifice “bottom” 14 with Brown’s three
orifice head 45, 51; and to insert Burrows’ crenellated ring with ribs 160,
which does not permit fluid flow through the crenellations when combined
with adapter fitting 159, into the space between shroud 36, septum 44 and
shoulder 42 of Bray’s module 10 in order to improved fluid flow. Br. 10-15.
The Examiner submits that Bray, Brown and Burrows show that all of the
claimed elements were known in the art and one of ordinary skill in the art
could have combine the elements as claimed by known methods with no
Appeal 2011-003531
Application 10/666,017
4
change in function, the combination yielding predictable results. Ans. 6-7,
11-13.
On this record, we are of the opinion that, as Appellants point out, the
Examiner’s failure to supply reasons establishing how one of ordinary skill
in the art would have been led by Brown to modify Bray’s two orifice head
to a three orifice head, and by Burrows to use a crenellated ring which does
not permit fluid flow in an area of Bray’s unit designed for fluid flow,
constitute error. We note that the Examiner has also not supplied and
developed a sustainable rationale establishing how and in what particular
ways one of ordinary skill in the art would have been prompted to modify
the filter cartridge of Brown based on the teachings of Bray and Burrows so
as to arrive at the claimed subject matter, as seemingly suggested in the
rebuttal argument presented. See Ans. 11. See, e.g., KSR Int'l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”);
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[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.”); In re
Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred when
the specific understanding or principal within the knowledge of one of
ordinary skill in the art leading to the modification of the prior art in order to
arrive at appellant’s claimed invention has not been explained); In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900,
902 (Fed. Cir. 1984) (“The mere fact that the prior art may be modified in
Appeal 2011-003531
Application 10/666,017
5
the manner suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the modification.”
(citation omitted)); cf. Ex parte Levengood, 28 USPQ2d 1300, 1301-02
(BPAI 1993) (“At best, the examiner’s comments regarding obviousness
amount to an assertion that one of ordinary skill in the relevant art would
have been able to arrive at appellant’s invention because he had the
necessary skills to carry out the requisite process steps. This is an
inappropriate standard for obviousness. . . . That which is within the
capabilities of one skilled in the art is not synonymous with obviousness.”
(citation omitted)).
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the grounds of rejection of claims 1, 2, 4-12 and 14-23 under 35
U.S.C. § 103(a).
The Primary Examiner’s decision is reversed.
REVERSED
tc