Ex Parte Kilawee et al

Patent Trial and Appeal Board

Feb 9, 2018

13303915 (P.T.A.B. Feb. 9, 2018)

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.
13/303,915 11/23/2011 Patrick H. Kilawee 1092-101US01/2905US01 3564
124175 7590 02/13/2018
Shumaker & Sieffert, P.A./Ecolab
1625 Radio Drive
Suite 100
Woodbury, MN 55125
EXAMINER
MCCULLOUGH, ERIC J.
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
02/13/2018 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):
pairdocketing @ ssiplaw.com
ecolab_PAIR @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK H. KILAWEE, LEONARD J. KADLEC,
JAMES R. MOCK, SR., and MARNIE J. LIETZ
Appeal 2016-008179
Application 13/303,915
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON REHEARING
Appellants1 request rehearing of a DECISION ON APPEAL dated
September 29, 2017,2 affirming the Examiner’s decision that claims 1—11
are unpatentable over the prior art of record.
A Request for Rehearing3 must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
Arguments not raised in the Briefs before the Board and evidence not
previously relied upon in the Briefs are not permitted in a Request for
1 According to Appellants, the real party in interest is Ecolab USA
Incorporated. Appeal Br. 2.
2 Hereinafter, “Decision.”
3 Hereinafter, “Request”.
Appeal 2016-008179
Application 13/303,915
Rehearing except as permitted by 37 C.F.R. §§ 41.52(a)(2) and (a)(3). See
37C.F.R. §41.52(a)(l)(2015).
We have reconsidered our Decision, in light of Appellants’ comments
in the Request, and we find no error in the disposition of the affirmed
rejections. We remain of the opinion that the subject matter of the claims is
unpatentable in view of the applied prior art.
I.
The Board’s Decision affirmed the Examiner’s rejections under 35
U.S.C. § 103(a) of
claims 1, 6—8, 10, and 11 as unpatentable over Kadlec (US
2006/0283808, published Dec. 21, 2006) in view of Allen (US 5,422,014,
issued June 6, 1995) as evidenced by Robinson (R. A. Robinson et al., The
‘Strong’ Acids, Electrolyte Solutions, 370-391 (2002) (Dover Publ.));
claims 2—A as unpatentable over the above combination further in
view of Chandler (WO 01/19957 A2, published Mar, 22, 2001);
claim 5 as unpatentable over the combination of Kadlec, Allen, and
Robinson, further in view of Forsberg (US 6,058,718, issued May 9, 2000);
and
claim 9 as unpatentable over the combination of Kadlec, Allen, and
Robinson, further in view of Biberger (US 2010/0188236 Al, published July
29, 2010).
In the Request, Appellants argue that the Decision misapprehends or
overlooks Appellants’ argument with respect to Allen and Kadlec (Req. 2).
In particular, Appellants urge that the argument is not that Allen’s manifold
must be bodily incorporated into Kadlec, but instead that neither Kadlec nor
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Application 13/303,915
Allen teaches or suggests that a manifold as recited in claim 1 should or
could be incorporated into Kadlec’s system (id. ). Further, Appellants argue
that, because the Decision admits Kadlec fails to disclose a manifold as
claimed, nor the specific arrangement of the manifold inlets, Kadlec contains
no teaching whatsoever concerning incorporation of a manifold of any kind
(id.). Therefore, according to Appellants, Kadlec “may not be properly relied
upon as teaching or suggesting anything with respect to incorporation of a
manifold into its system, much less why or how the further specific
modifications that would need to be made to the Allen manifold should or
even could be made” (id. at 2—3).
Appellants further argue that the Decision overlooked that neither
Kadlec nor Allen teaches or suggests a system in which a sanitizer sensor is
outside the manifold and in which the inlets are ordered as recited in claim 1
(id. at 3). Appellants contend that the Decision fails to provide any
evidentiary basis for such modifications and overlooks Appellants’ traversal
of an alleged taking of Official Notice by the Examiner in the Reply Brief on
the basis that, at the very least, Allen teaches away from the claimed order
(id. at 3 4).
Appellants further argue that the Decision is unsupported and
improper with regard to the alleged assertion that modification of Kadlec to
include a manifold only requires integrating the flows of sampled water,
acid, and sanitizer, while leaving Kadlec’s sample cell unmodified (id. at 5).
According to Appellants, the Decision overlooks that neither Kadlec nor
Allen provides any basis for this assertion (id. at 5—6).
In addition, Appellants argue that the Decision’s assertion that Allen
does not teach away because Allen does not criticize, discredit, or otherwise
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Application 13/303,915
discourage a different order when the sample cell is separated from the flows
of sample water, acid, and sanitizer as taught in Kadlec is also unsupported
and improper {id. at 6). According to Appellants, Allen does discourage not
having the acid upstream of the oxidation-reduction potential (ORP) sensor
{id. at 7), because Allen recognizes that the acid may assist in removing
scale deposits on the sensor {id.).
As such, Appellants reiterate their arguments that modifying Kadlec
to include a manifold and to further modify that manifold to include the
arrangement of inlets as recited in claim 1 would not have been obvious to
one of ordinary skill in the art absent impermissible hindsight {id. at 8).
II.
Appellants request our reconsideration of the affirmance of the
rejections of claims 1—11, but limit their arguments to claim 1. Accordingly,
we address Appellants’ Request focusing on claim 1 only.
Though Appellants argue that Kadlec’s lack of a manifold negates
reliance on Kadlec as teaching anything regarding incorporation of a
manifold into its system, we disagree. The Decision states that the Examiner
“finds Kadlec teaches water from the sample cell is input into the circulation
system prior to the sanitizer and acid inputs, and that the sanitizer is
purposefully added downstream of the sensor so that it does not affect the
reading” (Dec. 5). Contrary to Appellants’ arguments, these teachings are
relevant to how a manifold would have been incorporated into Kadlec’s
system. In particular, these teachings provide the logical basis for keeping
Kadlec’s sample cell outside the manifold to prevent sanitizer added
downstream thereof from affecting its readings.
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Appeal 2016-008179
Application 13/303,915
Moreover, there is no dispute that Allen discloses a manifold for use
in an automated system for maintaining a body of water. Appellants,
however, contend that Allen teaches away from the particular inlet order
recited in claim 1 because Allen teaches that placement of the acid input
upstream of the ORP sensor allows for removal of scale deposits therefrom.
However, as the Decision states, the Examiner merely relies on Allen for the
use of a manifold to handle the various inflows into the circulation system in
Kadlec, not on Allen’s inlet order (Dec. 8). In addition, the Decision states
that although Allen provides a specific reason for arranging the acid
upstream of the ORP and pH sensors, Allen does not discourage a different
order, particularly where the sample cell is separated from the flows of
sampled water, sanitizer, and acid as in Kadlec (Dec. 10).
Moreover, merely teaching an advantage of one arrangement alone
does not discourage other arrangements. “[M]ere disclosure of alternative
designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). “A reference does not teach away, however, if it merely expresses a
general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention claimed.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009). Rather, teaching away requires “clear discouragement”
from implementing a technical feature. In re Ethicon, Inc., 844 F.3d 1344,
1351 (Fed. Cir. 2017). “A reference teaches away when it suggests that the
line of development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.” Santarus, Inc. v. Par
Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012) (quoting Medichem, S.A.
v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quotations omitted)).
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Application 13/303,915
Accordingly, Appellants have not persuasively shown that the Board
misapprehended or overlooked any of the arguments raised in the Briefs, or
that the Decision should otherwise be modified or reversed.
III.
Appellants’ Request for Rehearing has been granted to the limited
extent that the Decision has been reconsidered in light of Appellants’
arguments. However, the Request is otherwise denied, and the Decision is
not modified in any respect.
This Decision on the Request for Rehearing incorporates our
Decision, mailed September 29, 2017, and is final for the purposes of
judicial review. See 37 C.F.R. § 41.52(a)(1).
IV.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED
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