Ex Parte McCarty et al

Patent Trial and Appeal BoardMay 12, 2014

11681933 (P.T.A.B. May. 12, 2014)

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. 11/681,933 03/05/2007 Joe P. McCarty 14059-004 8166 80711 7590 05/13/2014 BGL/Ann Arbor 524 South Main Street Suite 200 Ann Arbor, MI 48104 EXAMINER PO, MING CHEUNG ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 05/13/2014 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 JOE P. MCCARTY and DANIEL M. ST. LOUIS ____________ Appeal 2012-010657 Application 11/681,933 Technology Center 1700 ____________ Before GEORGE C. BEST, DONNA M. PRAISS, and KRISTINA M. KALAN, Administrative Patent Judges. KALAN, Administrative Patent Judge DECISION ON APPEAL Appeal 2012-010657 Application 11/681,933 2 Appellants seek our review under 35 U.S.C. § 134(a) of a final rejection of claims 1-20. Appeal Brief filed December 20, 2011 (“App. Br.”). We have jurisdiction under 35 U.S.C. § 6(b). We affirm for the reasons given by the Examiner. STATEMENT OF THE CASE The invention relates to processing paint sludge, namely, to a “method for producing a combustion product that involves dewatering raw paint sludge from spray paint booth operations and adding a de-sulfuring agent thereto.” Spec., Abst. Representative claim 1 is reproduced below: Claim 1: A process of producing a combustible fuel from paint sludge which comprises performing the following steps in the recited order: a) obtaining raw paint sludge from a painting facility; b) subjecting the raw paint sludge to a dewatering process to obtain a dewatered paint sludge; c) adding calcium oxide to the dewatered paint sludge to obtain a combustion fuel component; and d) mixing the combustion fuel component from step c) with carbonaceous material to produce a combustible fuel. App. Br. 13 (Claims App’x). The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Erdman1 and Gerace.2 Examiner’s Answer mailed May 9, 2012 (“Ans.”) at 4-9. 1 US Patent 4,750,274, issued June 14, 1988. 2 US Patent 5,160,628, issued November 3, 1992. Appeal 2012-010657 Application 11/681,933 3 ANALYSIS Appellants argue for reversal of the rejection based on claim 1’s limitations and do not argue any of the other claims separately. App. Br. 4- 12. Therefore, we confine our discussion to claim 1, which we select as representative. Claims 2-20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). The Examiner finds that Erdman teaches a process for the continuous drying of sludges, particularly paint sludge. Ans. 5 (citing Erdman col. 5, ll. 35-38). The Examiner further finds that Erdman discloses that “frangible particles such as coal may be mixed with a waste sludge to produce a product useful as a fuel . . . .” Id. (citing Erdman col. 3, ll. 14-23) (emphasis omitted). The Examiner finds that Gerace teaches a method for converting paint sludge into a dehydrated putty-like material, involving removing a first portion of water by mechanically drying the sludge and removing a second portion of water by treating the sludge with a chemical drying agent, i.e., calcium oxide. Id. at 6 (citing Gerace col. 2, ll. 36-61). The Examiner determines that it would have been obvious to apply the Gerace process before introducing the treated sludge to the Erdman process, or, in the alternative, subjecting a putty that has been mixed with a small amount of calcium oxide to the Erdman process, because, as taught by Gerace, turning waste paint into a useful product would eliminate or reduce a major source of chemical waste. Id. at 6-7 (citing Gerace col. 1, ll. 30-33). Appellants contend that the Examiner’s rejection is flawed because Erdman “does not teach adding coal to paint sludge.” App. Br. 7. The Examiner responds that Erdman teaches drying of sludges, including paint sludge. Ans. 10 (citing Erdman col. 1, ll. 9-13) (“Drying of sludges is a Appeal 2012-010657 Application 11/681,933 4 common process in numerous applications. Examples range[] from the treatment of wastes such as paint sludge . . . .”). The Examiner also notes that Erdman specifically references paint sludge in col. 5, ll. 35-37. Id. Moreover, Erdman teaches that “coal mixed with a waste sludge can produce a product useful as a fuel.” Id. at 5 (quoting Erdman col. 3, ll. 22- 23). The Examiner maintains that Erdman’s lack of a specific example of paint sludge combined with coal does not suggest that paint sludge and coal cannot be combined. Id. at 10. We agree with the Examiner. Appellants further contend that “[o]nce a dry powder is provided or produced (by adding calcium oxide per Gerace et al.) there is no longer a need to add scouring particles to the dried paint sludge powder . . . .” App. Br. 8. In an analogous argument, Appellants contend that “[o]nce the putty [of Gerace] is formed and all the water is removed or reacted with calcium oxide there is no longer a need or reason to treat the putty according to the process of Erdman . . . .” Id. at 9. The Examiner responds that it would be obvious to one of ordinary skill in the art to dewater a sludge with calcium oxide as shown by Gerace, followed by further dewatering the sludge with a mechanical process comprising scouring particles as shown by Erdman to remove as much water as possible, to optimize the fuel by minimizing the fuel’s water content. Ans. 10, 11. The Examiner adds: “Adding a small amount of calcium oxide to react with the remaining water does not ensure that all the water is removed.” Id. at 11. We do not find Appellants’ arguments persuasive. Appellants’ argument that Erdman does not provide a specific example of coal and paint sludge mixed together overlooks Erdman’s clear teaching that a waste sludge, including a paint sludge, may be mixed with coal to form fuel. Appeal 2012-010657 Application 11/681,933 5 Appellants’ arguments that the steps of Erdman and Gerace may not be combined also are not persuasive. The Examiner has provided motivation to do so, namely, to turn waste paint into a useful product to reduce a major source of chemical waste as taught by Gerace (Ans. 7) and to “remove as much water as possible in order to optimize the fuel by minimizing the water content of the fuel” (id. at 10), which Appellants do not dispute.3 Appellants have not adequately explained why one of ordinary skill in the art would not modify the mixing process of Erdman by dewatering the sludge with calcium oxide as taught by Gerace, alternatively adding a small amount of calcium oxide as proposed by the Examiner. See id. at 6. Therefore, we find no error in the Examiner’s conclusion that a person of ordinary skill in the art would have found it obvious to apply the Gerace process before introducing the dewatered sludge, in powder form, to the Erdman mixing process to add coal to the powder form (id.), or to apply the Gerace process before introducing the dewatered sludge, in putty form, to the Erdman process (id.), for the reasons provided by the Examiner and supported by the cited art. None of the remaining arguments made by Appellants are persuasive, for the reasons provided by the Examiner. For these reasons as well as the ones provided hereinabove, we uphold the Examiner’s rejection. 3 In the Reply Brief filed July 10, 2012 (“Reply Br.”), Appellants respond to the Examiner’s rationale for modifying the process of Erdman with the process of Gerace by noting that Gerace teaches “adding sufficient calcium oxide to produce a dry powder.” Reply Br. 5. However, Appellants’ observation does not address why a person of ordinary skill in the art would not be motivated to use Gerace’s dry powder in Erdman’s mixing process to form a useful product. Appeal 2012-010657 Application 11/681,933 6 SUMMARY The Examiner’s rejection of claims 1-20 under 35 U.S.C. § 103(a) 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). AFFIRMED tc