Ex Parte HOLOPAINEN et al

Patent Trials and Appeals Board

Jan 11, 2019

13422314 - (D) (P.T.A.B. Jan. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/422,314 03/16/2012
23117 7590 01/15/2019
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Ilkka HOLOPAINEN
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.
JHN-30-621 8841
EXAMINER
POPOVICS, ROBERT J
ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
01/15/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ILKKA HO LOP AINEN and JARI PA YKKONEN
Appeal2019-001469
Application 13/422,314
Technology Center 1700
Before GEORGE C. BEST, BRIAND. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In our Opinion, we refer to the Specification filed March 16, 2012
("Spec."); the Final Office Action dated November 14, 2016 ("Final Act.");
the Advisory Action dated March 21, 2017 ("Ad vis. Act."); the Appeal Brief
filed July 5, 2017 ("App. Br."); the Examiner's Answer dated September 25,
2017 ("Ans."); and the Reply Brief filed November 21, 2017 ("Reply Br.").
Appeal2019-001469
Application 13/422,314
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from rejections of claims
15, 18, 19,and21-23 3 ofApplication 13/422,314under35U.S.C. § 112.
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we reverse the rejections that formed
the basis for this appeal. We reject claim 19 and its dependent claims 21-
23, however, by relying upon findings of fact and conclusions of law that
differ from those that form the basis of the Examiner's rejections of these
claims. Accordingly, we designate this opinion as containing a new ground
of rejection with regard to claims 19 and 21-23.
BACKGROUND
The '314 Application describes a pressure filter with a flow distributor
for treating liquor suspensions of a chemical pulp mill. Spec. ,r 2. Pressure
filters are said to have long been used at causticizing plants for washing lime
mud and filtration of white liquor and green liquor. Id. ,r 5. Filtering
elements typically include a sock filter. Id.
2 Appellants identify Andritz Oy as the real party in interest. App. Br. 3.
3 The Final Office Action included rejections of claims 1 and 4. Final Act.
3-5. Appellants cancelled claims 1 and 4 in an Amendment After Final
Rejection filed November 17, 2017, after the date of the Examiner's
Answer. The appeal was remanded to the Examiner, and cancellation of
claims 1 and 4 was entered on December 13, 2018.
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Application 13/422,314
Figure 1 of the '314 Application is reproduced below:
9
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) 8
::--~'-~ .•... ,·
FIG. 1
Figure 1 illustrates a prior art pressure filter provided with tubular
filtering elements. Spec. ,r 34. Filter container 24 has a horizontal plate 3
from which hangs tubular filtering elements 4. Id. ,r 38. A large number of
filter elements 4 may hang from the horizontal plate. Id. The fluid
suspension to be filtered, such as lime milk, flows into filter container 2
from a container along inlet pipes 11, 13. Id. ,r 39. Feed pump 15 applies
pressure in inlet pipe 11 to move the suspension to the filter container. Id.
The lime milk enters an interior chamber of the filter container and flows
4 Labels to elements are presented in bold font, regardless of their
presentation in the original document.
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Application 13/422,314
over the outer surface of each of the filtering elements 4. Id. ,r 40. The outer
surface is of a sock 5, e.g., a porous tube having an open end and a closed
end, fitted over metallic tube 7 included in filtering element 4. Id. Sock 5
may be formed of a filtering cloth and tube 7, which may be perforated,
mesh or otherwise porous, provides a structural support for sock 5 and
prevents the sock from collapsing. Id.
White liquor from the lime milk passes through the porous surfaces of
sock 5 and metal tubes 7, and enters an interior region of each of the
elements, filtering liquor from the lime milk. Id. ,r 41. Solids such as lime
mud from the lime milk, are deposited as a layer 6 on the outer surface of
filtering sock 5. Id. The filtrate (white liquor) flows up through the interior
of each of filtering elements 4, an open outlet of each element adjacent
flange 8 and into filtrate chamber 12 above horizontal plate 3. Id.
Precipitate 6 on the outer surface of filter sock 5 is removed
periodically by opening valve 19 to divert flow from pipe 11 and reduce
pressure in filter container 2. Id. ,r 42. Hydrostatic pressure of liquid in
filtrate chamber 12 forces the filtrate, e.g., white liquor, to flow down into
the interior of the filter elements and create a back pressure against
precipitate layer 6 on socks 5. Id. During this cake-removal stage, back
pressure releases the precipitate from sock 5. Id. A settling stage follows
during which precipitate released from socks 5 settles at the bottom of
container 2, and is removed via outlet conduit 20 and rotating blade 21. Id.
In practice, Appellants indicate that solid substances accumulate on
the filtering surface of the filtering element, and are not released during back
flushing, thus impairing the flow of filtrate through the filtering surface of
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Application 13/422,314
the element, causing a pressure increase in the lower part of the filter. Id.
,r 7. To prevent clogging, the filtering elements conventionally can be
washed by means of water and acid mixture circulating through the filter
from up to downwards through the filtering elements. Id. ,r,r 7-8. After
being washed with the acid mixture, the filter is flushed with water. Id. ,r 8.
Precipitates may flow with circulation of the acid mixture and enter
the interior of the filtering element, which is undesirable. Id. ,r 9. In
addition, the washing liquid or filtrate flowing downward into the interior of
the filtering element is not distributed evenly, with greater pressure directed
to the lower part of the element. Id. Thus, precipitate cake remains on the
outer surface of the upper part of the filtering element. Id.
The Specification describes elimination of the above-mentioned
problems with a filter and method to intensify the flow of liquid (washing
liquid or filtrate) inside the filtering element, thereby improving the release
of the filtrate cake from the filtering element and the cleaning of the filtering
surface. Id. ,r 10.
The Specification describes a filter wherein the interior of the tubular
filtering elements is provided with a flow distributor arranged above the
middle part of the filtering element, which distributes the flow led from the
filtrate chamber onto the filtering surface of the filtering element. Id. ,r 11.
The flow distributor equalizes the flow through the filtering surface of the
filtering element, efficiently cleaning the entire filtering surface. Id. ,r 12.
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Appeal2019-001469
Application 13/422,314
The claims of the '314 Application are directed to pressure filters with
a flow distributor. Claims 15 and 19, reproduced below from the Claims
Appendix of the Appeal Brief with key limitations italicized, illustrate the
claimed subject matter:
15. A pressure filter comprising:
a container connected to an inlet conduit including an
inlet configured to be coupled to a source of pressurized feeding
liquor in a chemical pulp mill, and connected to an outlet
configured to discharge a thickened suspension of the
container;
an impervious plate separating an upper chamber of the
container and a lower chamber of the container, wherein the
inlet and the outlet are aligned with the lower chamber;
an opening in the impervious plate;
a filter tube extending through and filling the opening,
the filter tube including a sidewall, bottom and an upper region,
wherein the opening is aligned with the upper chamber and at
least a portion of the sidewall and bottom extending into the
lower chamber is porous so as to be impervious to at least some
solids in the feeding liquor and allow liquids in the lower
chamber to flow into the upper chamber, and
a flow distributor within an interior filter chamber
defined by the sidewall of the filter tube, wherein the flow
distributor has a cross-sectional area configured to create a
backpressure in the interior filter chamber,
wherein the flow distributor includes a circular plate
having a diameter smaller than an inner diameter of the interior
filter chamber such that an opening is formed between a
perimeter of the circular plate and the interior filter chamber,
and the circular plate abuts an inner wall of the interior filter
chamber, and
the flow distributor includes an elongated leg located in
the interior filter chamber, the elongated leg includes an upper
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Application 13/422,314
end section supporting the circular plate and a lower end section
seated at the bottom of the filter tube such that the elongated leg
stands on the bottom to support the circular plate,
wherein the circular plate and the upper end section of
the elongated leg are below an upper region of the filter tube
and at an elevation above a middle elevation of the filter tube,
and the upper end section of the elongated leg is below and not
directly connected to the impervious plate.
19. A pressure filter for treating liquor suspensions at a chemical
pulp mill, said filter comprising:
a container connected to an inlet conduit configured to be
coupled to a source of pressurized feeding liquor, and connected to an
outlet conduit configured to discharge a thickened suspension from
the container;
a plate that divides an upper portion of the container from a
lower portion of the container;
filtering elements suspended down from the plate, wherein the
filtering elements each include a bottom, an open top, a porous tubular
section situated between the open top and the bottom, and an interior
region in the porous tubular section configured to receive filtrate from
the container;
a filtrate chamber in the upper portion of the container, above
the plate and impervious to fluid flowing directly from the container
into the filtrate chamber, wherein the open top of each of the filtering
elements is in fluid communication with the filtrate chamber and the
filtrate chamber includes a filtrate outlet conduit, and
a flow distributor housed in the porous tubular section of each
of the filtering elements, each flow distributor includes a distributor
plate and an elongated leg, the distributor plate is suspended in the
porous tubular section and is supported by the elongated leg, the
elongated leg extends from the distributor plate to the bottom of the
corresponding filtering element, wherein the elongated leg has an
upper region that is supporting the distributor plate in the porous
tubular section and a lower region that is sitting on the bottom of the
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Appeal2019-001469
Application 13/422,314
corresponding filtering element, and the flow distributor is located
entirely below and not directly connected to the plate;
wherein the distributor plate is positioned at an elevation above
a middle elevation of the porous tubular section, the distributor plate
includes a perimeter separated from the porous tubular section by a
gap which extends at least partially around the distributor plate, and
the perimeter of the distributor plate abuts the porous tubular section.
To aid in understanding the claims, an annotated version of part of
Figure 3 of the '314 Application is reproduced below, depicting an
exemplary flow distributor to be located in a filtering element (id. ,r,r 36, 46):
/_ ..... ,·· protn.ssis:>n 2 7
r:!::s;·~""circuhr pfar~ 23
·'rt----,,,.<·,·\q,h_,~s;~o~1s; -;,4 I }-·>- ~-, - .... ~ -- -
~ ~
~ ,::
~ t
In Figure 3, flow distributor 22 comprises circular plate 23, the outer
circumference of which is provided with protrusions 24 (tabs) that may be
symmetrically arranged around the perimeter of circular plate 23. Id. ,r 47.
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REJECTIONS 5, 6
On appeal, the Examiner maintains the following rejections:
1. Claims 15 and 19 are rejected under 35 U.S.C. § 112, 1st
paragraph as lacking written description in the original disclosure for the
claim terms "the circular plate abuts an inner wall of the interior filter
chamber" ( claim 15) ( emphasis omitted) and "the perimeter of the
distributor plate abuts the porous tubular section" ( claim 19) ( emphasis
omitted). Final Act. 3--4; Ans. 5---6.
2. Claims 15, 18, 19, and 21-23 are rejected under 35 U.S.C.
§ 112, 2nd paragraph as indefinite for use of the term "configured to." Final
Act. 4; Ans. 7-11.
3. Claim 15 is rejected under 35 U.S.C. § 112, 2nd paragraph as
indefinite for use of the term "wherein at least a partially annular opening is
between the perimeter of the circular plate and the interior chamber." Final
Act. 4.
4. Claims 15, 18, 19, and 21-23 are rejected under 35 U.S.C.
§ 112, 2nd paragraph as being incomplete for omitting essential elements.
Final Act. 5---6; Ans. 12-19.
5 Because this application was filed before the March 16, 2013 effective date
of the America Invents Act, we refer to the pre-AIA versions of the statute.
6 Several rejections in the Final Office Action were withdrawn by the
Examiner in the Answer (Ans. 2) and, consequently, are not discussed here.
In addition, rejections to claims 1 and 4, cancelled after the Examiner's
Answer was mailed, are no longer at issue.
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Appeal2019-001469
Application 13/422,314
OPINION
Rejection 1
The Examiner finds that the claim terms "the circular plate abuts an
inner wall of the interior filter chamber" ( claim 15) and "the perimeter of the
distributor plate abuts the porous tubular section" ( claim 19) lack written
description in the original disclosure. Final Act. 3--4; Ans. 5---6.
Appellants argue that paragraphs 16 and 47--49 of the Specification
support the claim terms. App. Br. 13-14; Reply Br. 2-5.
We give claims their broadest reasonable scope consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004 ). The words used in a claim must be read in light of the
specification, as it would have been interpreted by one of ordinary skill in
the art at the time of the invention. Id. "Abut" is not found in the
Specification. "Abut," without any special meaning conferred on the term
by the Specification, means "to touch along a border or with a projecting
part"7 and "touch or lean on. "8
Claim 15 requires the circular plate to abut an inner wall of the
interior filter chamber. App. Br. 20 (Claims App.). The Specification
describes circular plate 23 as having protrusions 24 (tabs) that may be
symmetrically arranged around the perimeter of circular plate 23. Spec.
,r 47; see also Fig. 3, supra. Protrusions 24 seat on an inner wall of the
interior filter chamber. Id. ,r 49. Protrusions 24 thus are projecting parts that
touch the inner wall of the interior filter chamber, meaning protrusions 24
abut the inner wall. The Specification provides written description for the
7 https://www.merriam-webster.com/dictionary/abut?utm_campaign=
sd&utm_medium=serp&utm_source=jsonld (last visited January 8, 2019).
8 Oxford Dictionary of English, Oxford University Press (2010).
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Appeal2019-001469
Application 13/422,314
claim term "the circular plate abuts an inner wall of the interior filter
chamber."
Claim 19 requires "the perimeter of the distributor plate abuts the
porous tubular section." App. Br. 21 (Claims App'x). The Specification
describes the flow distributor plate as having an outer circumference
"provided with protrusions at a distance from one another, by means of
which the flow distributor is supported onto the inner wall of the filtering
element." Spec. ,r 16. The distributor plate thus has protrusions, just as does
the circular plate 23. The flow distributor is supported "in a lateral direction
via the protrusions 24 that seat on an inner wall of the filter element." Id.
The "porous tubular section" is described as part of the filtering
element (Spec. ,r 20) and depicted in Figure 1 as sock 5 and its supporting
tube 7. Id. ,r 40, Fig. 1. One of ordinary skill in the art at the time of the
invention would have understood that protrusions of the distributor plate seat
onto the inner portion of the filtering element, including the porous tubular
section, thus abut the section.
We do not sustain the Examiner's rejection of claims 15 and 19 as
lacking written description in the original application.
Rejection 2
The Examiner rejects the pending claims as indefinite because it is
unclear what specific structure is intended by Appellants' use of "configured
to" in the claims. Final Act. 4; Ans. 7-11.
Appellants contend that "configured to" is a proper claim term used to
define structure. App. Br. 16. Appellants argue that the structure is the
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Application 13/422,314
element in the claims immediately preceding the word "configured." Reply
Br. 5.
A claim is not indefinite merely because more suitable language or
modes of expression are available. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009). "Configured to" is commonly used claim terminology.
Review of the claims at issue convinces us that one of ordinary skill in the
art at the time of the invention would have experienced no confusion by use
of "configured to" in the claims. We do not sustain the Examiner's rejection
of the claims as indefinite for use of "configured to."
Rejection 3
The Examiner rejects claim 15 9 as indefinite for reciting "wherein at
least a partially annular opening is between the perimeter of the circular
plate and the interior chamber." Final Act. 4. The rejection is not further
explicated, nor is it repeated in the Answer. We do not find the rejected
claim language in claim 15, therefore do not sustain the rejection of claim 15
on this basis.
Rejection 4
The Examiner rejects all pending claims under 35 U.S.C. § 112, 2nd
paragraph as being incomplete for omitting essential elements. Final Act. 5.
The Examiner finds that the omissions amount to gaps between the
elements. Id. Regarding claim 15, the Examiner finds that the claim omits
structure to facilitate "the circular plate abuts an inner wall of the interior
filter chamber." Id. (emphasis omitted). Similarly, the Examiner finds that
9 The Examiner rejected claims 1 and 15 as indefinite, but claim 1 was
subsequently cancelled. See Amendment After Final Rejection filed
November 17, 2017.
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Application 13/422,314
claim 19 omits structure to facilitate "the perimeter of the distributor plate
abuts the porous tubular section." Id. ( emphasis omitted). The Examiner
finds that protrusions on the circular plate ( claim 15) or distributor plate
( claim 19) are required to support the plates. Id.
Appellants argue that the rejection is erroneous because it fails to
show how the omitted elements are described in the Specification as being
essential, and non-essential elements need not be in the claims. App. Br. 17.
Appellants contend that "[t]he rejection wrongly attempts to limit the
invention to a specific embodiment ... by requiring protrusions to be on the
perimeter of the distributor (circular) plate." Id. Appellants argue:
Id.
The invention broadly covers a flow distributor that includes a
circular plate and an elongated rod seated in the interior region
of the filtering element. . . . It would have been clear to one of
ordinary skill that a circular plate may have various designs on
its perimeter when designing a flow distributor, and being
located in the interior region of the filtering element, the
perimeter in various designs can abut the inner surface of the
interior region.
As discussed in relation to the lack of written description rejection,
supra, protrusions are part of both the circular plate of independent claim 15
and the distributor plate of independent claim 19, and are the part of these
elements that provide abutment to the interior filter chamber ( claim 15) or
porous tubular section ( claim 19). Whether there is written description or
enablement in the Specification of a circular plate or distributor plate that
does not include protrusions is not an issue before us, and we decline to
address it gratuitously.
We do not sustain the rejection of the pending claims under§ 112, 2nd
paragraph.
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Application 13/422,314
NEW GROUND OF REJECTION
We reject claim 19 and its dependent claims 21-23 under 35 U.S.C.
§ 112, 2nd paragraph as indefinite for failing to particularly point out and
distinctly claim the subject matter which the Appellants regard as the
invention.
"[W]e apply the approach for assessing indefiniteness approved by the
Federal Circuit in Packard, i.e., '[a] claim is indefinite when it contains
words or phrases whose meaning is unclear."' Ex parte lvicA1-1,1ard, 2017 WL
3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (quoting In re
Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014)). "Put differently, 'claims
are required to be cast in clear-as opposed to ambiguous, vague,
indefinite-terms."' Id.
The last limitation of claim 19 recites in part:
the distributor plate includes a perimeter separated from the
porous tubular section by a gap which extends at least partially
around the distributor plate, and the perimeter of the distributor
plate abuts the porous tubular section.
App. Br. 21 (Claims App'x). Thus, the perimeter of the distributor plate is
described as having two physical states: ( 1) separated from the porous
tubular section by a gap which extends at least partially around the
distributor plate; and (2) abutting the porous tubular section. Given their
broadest reasonable interpretation, as is required in construing claim terms,
these two physical states are in conflict with each other. The first state
requires the perimeter to be separated from the porous tubular section by a
gap, while the second state requires the perimeter to abut (touch) the porous
tubular section. The meaning of terms is unclear because they require
conflicting physical states for the perimeter (having a gap from the porous
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Application 13/422,314
tubular section versus abutting or touching the porous tubular section). One
of ordinary skill in the art would not be able to determine definitely which
state is required by the terms.
Moreover, the claim language does not exclude a distributor plate that
is separated from a porous tubular section by a gap that extends completely
around the perimeter plate while simultaneously requiring the perimeter of
the distributor plate to abut the porous tubular section. Thus, in its broadest
reasonable interpretation, the claim is internally inconsistent.
DECISION
We reverse the rejections of claims 15, 18, 19, and 21-23 as set for in
the Final Office Action. We set forth a new ground of rejection of claims 19
and 21-23 under 35 U.S.C. § 112, 1st paragraph for indefiniteness.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b), which provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 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 ground 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. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
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Application 13/422,314
claims, Appellants may again appeal to the Board pursuant to
this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 4I.50(b)
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