Ex Parte Uemura et al

Patent Trial and Appeal BoardSep 29, 2014

11570813 (P.T.A.B. Sep. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte IKUO UEMURA, HIROFUMI ISHIWADA, SHOUICHI BANBA, AYA UCHINO, TSUNEO OCHIAI, HIROSHI KOMATSU, SHIGEKI NISHIMURA, and SHIGERU TUKADA ____________________ Appeal 2012-007234 Application 11/570,813 Technology Center 3600 ____________________ Before: JOHN C. KERINS, JILL D. HILL, and MICHAEL L. WOODS Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ikuo Uemura et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–3, 6, and 7. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-007234 Application 11/570,813 2 Claimed Subject Matter Independent claim 1, reproduced below, represents the claimed subject matter. 1. A vortex flow type water surface control device for a draining device that includes an inflow pipe, an outflow pipe, an intercepting pipe, and a separating weir that is disposed to block said intercepting pipe and said inflow pipe from said outflow pipe, comprising a control plate that is disposed between an opening of said inflow pipe and an opening of said intercepting pipe, the height of the control plate being higher than at least the height of said separating weir, wherein said control plate is apart from said separating weir, and wherein the separating weir is not located behind said control plate, but is located at a side of said control plate, when said separating weir is viewed from the opening of said inflow pipe. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: O'Connor US 7,138,048 Bl Nov. 21, 2006 Blanchard 3,666,102 May 30, 1972 Appellants’ Admitted Prior Art (AAPA), Figures 5A and5B REJECTIONS Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over AAPA and O’Connor. Ans. 4. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as unpatentable over AAPA, O’Connor, and Blanchard. Id. at 5.1 1 The Examiner has withdrawn the rejection of claims 6 and 7. Ans. 3. Appeal 2012-007234 Application 11/570,813 3 OPINION Rejection of Claim 1 The Examiner finds that AAPA “discloses a draining device [with] an inflow pipe (2), an outflow pipe (4), an intercepting pipe (3), and a separating weir (1) that is disposed to block said intercepting pipe and said inflow pipe from said outflow pipe (fig. 5B).” Ans. 4. The Examiner finds that, although AAPA “is silent regarding” a control plate, O’Connor (Figure 3) teaches control plate 18 attached to an uppermost part of a draining device between an inflow pipe and an outflow pipe, the control plate being located higher than a wall 42. Id. at 5. The Examiner concludes that it would have been obvious to one having ordinary skill in the art, at the time of the invention, to modify AAPA to include O’Connor’s control plate at a location in front of the inflow pipe as taught by O’Connor, to “create vortex flow suspending particles in the wastewater (O'Connor, col. 4, line 55 to col. 5 line 3).” Id. Appellants argue that AAPA and O’Connor fail to teach or suggest “a control plate and a separating weir, wherein the control plate is apart from the separating weir, and wherein the separating weir is not located behind the control plate, but is located at a side of the control plate,” when viewed from the opening of the inflow pipe, “as generally recited in independent claim 1.” Appeal Br. 11. According to Appellants, if O’Connor’s partition was added to the draining device of AAPA (considering either Figure 5A or 5B), the weir 1 of AAPA “would necessarily be disposed behind the partition 18,” rather than at a side of the control plate as claimed. Id. at 12–15. In their Appeal Brief, Appellants provide illustrations showing where they believe placement of Appeal 2012-007234 Application 11/570,813 4 O’Connor’s partition 18 would occur in AAPA Figures 5A and 5B. Id. at 14, 15. In particular, Appellants allege that if Figure 5A of AAPA was modified to include O’Connor’s partition 18, “the separating weir 1 and the partition 18 would cross each other, and thus could not reasonably be considered to be ‘apart.’” Id. at 15. The Examiner responds that while O’Connor’s partition extends across its entire vessel 22/24, that is only because O’Connor’s inflow pipe extends across almost the entire vessel 22/24, and one skilled in the art would understand O’Connor to teach that its partition 18 should extend across the entire inflow pipe, rather than the entire vessel. Ans. 6. We agree with the Examiner that O’Connor teaches the partition 18 extending across a diameter or width of an inflow pipe, rather than necessarily across an entire vessel. Given this teaching, placement of O’Connor’s partition 18 in AAPA Figure 5A would be in front of the inflow pipe 2 and spanning the diameter of the inflow pipe 2. One skilled in the art certainly would not extend O’Connor’s partition 18 to and/or across the AAPA weir 1, as that may unnecessarily cause some incoming fluid that would not normally rise above the weir 1 to undesirably spill over the weir and to the outflow pipe 4 instead of flowing to the intercept pipe 3. Further, the partition would serve no foreseeable purpose on the outflow pipe side of the weir. We therefore agree with the Examiner that, considering the teachings of O’Connor, one skilled in the art would place O’Connor’s partition 18 in the AAPA draining device illustrated in Figure 5A so that it is apart from and beside the weir 1, and such that the weir 1 is not located (fully) behind the partition 18. Appeal 2012-007234 Application 11/570,813 5 Appellants also argue that one skilled in the art would not modify AAPA to include O’Connor’s partition 18 because the modification would render AAPA unsatisfactory for its intended purpose of allowing water and included debris to flow from inflow pipe 2 to outflow pipe 3, because O’Connor’s partition 18 would accumulate floatables/debris and prevent them from flowing out through the outflow pipe. Appeal Br. 11–12. The Examiner responds that “adding the partition of O’Connor to applicant’s admitted prior art will force the debris to the surface of the fluid, however the intercepting pipe 3 will still receive said fluid as well as the debris.” Ans. 6. Appellants counter that the AAPA intercepting pipe would not receive debris because O’Connor’s partition and grating are arranged “to purposefully create a vortex that maintains particulate matter in suspension and prevents blockage of the grating 42,” which has the effect of O’Connor’s outflow pipe not receiving any debris. Reply Br. 4. We are not persuaded by Appellants’ argument. AAPA’s intended purpose, as argued by Appellants, supra, is to allow water and included (e.g., suspended) debris to flow from inflow pipe 2 to outflow pipe 3. The Examiner is proposing to add only O’Connor’s partition 18 to AAPA. Even if the vortex created by O’Connor’s partition 18 tended to suspend debris in the water, addition of the partition 18 would still allow water and suspended debris to flow from AAPA’s inflow pipe 2 to its outflow pipe 3. We therefore sustain the rejection of claim 1. Rejection of Claims 2 and 3 Appellants argue that the Examiner’s conclusion that it would have been obvious “to include a raised wall 14 disclosed by BLANCHARD (that Appeal 2012-007234 Application 11/570,813 6 allegedly corresponds to the recited guide wall of claims 2 and 3) is clearly the result of impermissible hindsight reasoning by the Examiner based upon the disclosure of the present application . . . .” Appeal Br. 20. The Examiner finds that Blanchard teaches the claimed guide wall, concluding that it would have been obvious to one skilled in the art at the time of the invention “to modify applicant’s admitted prior art to have a guide wall since such a modification would prevent debris from flowing over the weir (Blanchard col. 2, lines 5-22).” Ans. 5–6. “Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). The Examiner reasons that modification of AAPA to include Blanchard’s guide wall is proper because “such a modification would prevent debris from flowing over the weir.” Ans. 6. The Examiner cites to column 2, lines 5–22 of Blanchard, which explains that Blanchard’s wall 14 cooperates with its weir 18 (and connected wall 16) to prevent oil (debris) from flowing over the weir 18. The Examiner’s reasoning was therefore taken from Blanchard, and not Appellants’ disclosure. The reasoning was proper and not based on hindsight, and we therefore sustain the rejection of claims 2 and 3. Appeal 2012-007234 Application 11/570,813 7 DECISION We AFFIRM the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over AAPA and O’Connor. We AFFIRM the rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over AAPA, O’Connor, and Blanchard. 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 Klh