Ex Parte Swantner et al

Patent Trial and Appeal BoardApr 11, 2016

12828602 (P.T.A.B. Apr. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/828,602 07/01/2010 26353 7590 04/13/2016 WESTINGHOUSE ELECTRIC COMPANY, LLC 1000 Westinghouse Drive Suite 141 Cranberry Township, PA 16066 Stephen Swantner 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. NSD2009-03 l 7120 EXAMINER HICKS, ANGELISA ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 04/13/2016 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): guerral@westinghouse.com spadacjc@westinghouse.com coldrerj@westinghouse.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN SWANTNER and MATTHEW SWARTZ Appeal2014--004197 Application 12/828,602 1 Technology Center 3700 Before MICHAEL C. HOELTER, THOMAS F. SMEGAL, and ERIC. C. JESCHKE, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Stephen Swantner and Matthew Swartz (Appellants) seek our review under 35 U.S.C. Â§ 134 of the Examiner's Final Rejection of claims 1-8, 10-17, 19, and 20 under 35 U.S.C. Â§ 102(b) as anticipated by MacDuff (US 6,893,485 B2, iss. May 17, 2005); and of claims 9 and 18 under 35 U.S.C. Â§ 103(a) as unpatentable over MacDuff. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Westinghouse Electric Company LLC. Appeal Br. 1. Appeal2014--004197 Application 12/828,602 CLAIMED SUBJECT MATTER Claims 1, 10, and 19 are independent. Claim 1 is reproduced below and illustrates the claimed subject matter, with disputed limitations emphasized. 1. A gas separator for a bifurcated liquid transport pipe structured to transport a liquid, said pipe having a generally cylindrical inner cross-sectional area with a diameter, an upstream outlet and a downstream inlet, said liquid having gas entrained therein, said gas separator comprising: a first body defining an enclosed passage, a liquid inlet, a liquid outlet, and an ascendant gas outlet, said enclosed passage having an inner cross-sectional area greater than said liquid transport pipe; a second body defining an enclosed pocket, said second body coupled to said first body, said pocket in fluid communication with said ascendant gas outlet; said liquid inlet coupled to, and in fluid communication with, said transport pipe upstream outlet; said liquid outlet coupled to, and in fluid communication with, said transport pipe downstream inlet; wherein the speed of the liquid flow through said first body is slower than the flow through said liquid transport pipe; and wherein a substantial portion of gas entrained in the liquid stratifies under the effects of buoyancy while said liquid is in said first body, and wherein said substantial portion of gas ascends upwardly in said first body, through said ascendant gas outlet, and into said pocket. ANALYSIS Anticipation of Claims 1-8, 10--17, 19, and 20 by MacDuff Appellants argue claims 1-8, 10-17, 19, and 20 as a group. See Appeal Br. 8-9; Reply Br. 1-7. We select independent claim 1 as the 2 Appeal2014--004197 Application 12/828,602 representative claim for this group such that the remaining claims stand or fall with claim 1. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2012). We have considered Appellants' arguments raised in the Appeal and Reply Briefs, but do not find them persuasive to demonstrate error in the Examiner's rejection of claim 1 as being anticipated by MacDuff. The Examiner finds that MacDuff anticipates claim 1 by disclosing a gas separator with all the elements recited by independent claim 1. Final Act. 4--7 (citing to Fig. 3 and various portions ofMacDuft).2 See also Final Act. 3. According to Appellants, MacDuff discloses a gas concentrator which "traps bubbles via surface tension," whereas the claims "specify that a substantial portion of gas entrained in the liquid stratifies 'under the effects of buoyancy."' Appeal Br. 8. Appellants continue this argument in the Reply Brief, asserting that "MacDuff does not disclose a device that is identical to the gas separator recited in the present claims due in part to the presence of the gas concentrator." Reply Br. 5. However, Appellants misread the Examiner's rejection. As the Examiner explains, "Appellant continues to base arguments on a portion of MacDuff that has not been utilized in the rejection, e.g. the concentrator, 17, related to separating residual entrained gas in the system," repeating that "this additional inventive concept [of Mac Duff] was not used for the purpose of rejecting Appellant's claim." Ans. 11. Furthermore, the "gas entrained" limitation is a functional limitation that does not impose any structural limitation on the claimed apparatus that 2 The Examiner included an annotated version of Fig. 3 of MacDuff with the Non-Final Rejection dated November 7, 2012. 3 Appeal2014--004197 Application 12/828,602 differentiates the claim apparatus from a prior art apparatus that otherwise discloses all the recited limitations and is capable of performing the recited function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (Appellants' contention that the claimed structure will be used to perform a function not taught by the prior art reference does not have patentable weight ifthe structure is already known). We also note that Appellants do not argue that MacDuff lacks any structure recited by the claims, and we find none. "A reference anticipates a claim if it discloses the claimed invention 'such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention."' In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In re LeGrice, 301 F.2d 929, 936, In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985)) (parallel citations omitted). Furthermore, the presence of additional structures in the prior art does not undermine a rejection where the claim uses "comprising." See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1319 (Fed. Cir. 2009) ("The claim uses the term 'comprising,' which is well understood in patent law to mean 'including but not limited to."'). For the reasons set forth above, we discern no error in the Examiner's findings and agree that the gas separator disclosed by MacDuff anticipates claim 1. Thus, we sustain the Examiner's rejection of claim 1 and claims 2-8, 10-17, 19, and 20 falling therewith, under 35 U.S.C. Â§102(b) as anticipated by MacDuff. 4 Appeal2014--004197 Application 12/828,602 Obviousness of claims 9 and 18 over MacDujf Appellants do not separately argue dependent claims 9 and 18, stating that " [ c] laims 9 and 18 rely upon their dependency for patentability." See Appeal Br. 10. Therefore, we sustain the rejection of claims 9 and 18 as unpatentable over MacDuff for the same reasons stated above with respect to anticipation of claim 1 by MacDuff. DECISION We AFFIRM the Examiner's rejections. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 5