Ex Parte WARD et al

Patent Trial and Appeal BoardOct 8, 2015

12260445 (P.T.A.B. Oct. 8, 2015)

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. 12/260,445 10/29/2008 Owen Patrick WARD 437-14US 2744 23716 7590 10/09/2015 ANTHONY ASQUITH 28-461 COLUMBIA STREET WEST WATERLOO, ON N2T 2P5 CANADA EXAMINER SASAKI, SHOGO ART UNIT PAPER NUMBER 1798 MAIL DATE DELIVERY MODE 10/09/2015 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 OWEN PATRICK WARD, AJAY SINGH, and FREDERICK ALAN MOSHER1 ____________ Appeal 2013-010148 Application 12/260,445 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, MARK NAGUMO, and N. WHITNEY WILSON, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claim 1–7, 9–11, 13, 14, and 17–20. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. 1 Lystek International Inc. is identified as the real party in interest. App. Br. 2. Appeal 2013-010148 Application 12/260,445 2 Appellants claim a procedure for liquefying dewatered sewage sludge, also known as reactor-sludge, to a target viscosity comprising: providing event-records of at least 3 separate sludge-liquefaction events involving the event-parameters of quantity or flow rate, solids percentage, temperature, shearer power or energy, and final-viscosity; making a compilation of the event-records and identifying therein a target-record having a final-viscosity matching the target-viscosity; determining the levels of the event-parameters in the target-record; and using the so-determined levels for temperature and shearer power or energy to liquefy the reactor-sludge to the target viscosity (sole independent claim 1). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. Claim 1. Procedure for liquefying dewatered sewage sludge, here termed reactor-sludge, to a target-viscosity, including: [2] providing respective event-records of a number N of separate sludge- liquefaction-events, where N is three or more; [3] the event-records comprise respective aggregations of records of the following event-parameters, namely: [4] (i) the quantity or flowrate of dewatered event-sludge in the sludge- liquefaction event; [5] (ii) the solids percentage of the event-sludge; [6] (iii) the temperature of the event-sludge during liquefaction; [7] (iv) the shearing power or energy applied to the event-sludge to procure liquefaction; [8] (v) the final-viscosity of the liquefied event-sludge, as procured by that shearing power or energy at that temperature; [9] making a compilation of the N event-records; [10] identifying, in the compilation, a target-record, being one of the N event-records in which the final-viscosity matches the target-viscosity; [11] determining the levels of the event-parameters in the target-record, these levels being termed the target-procurement-levels; [12] passing dewatered reactor-sludge through a reactor, for liquefaction to the target-viscosity; [13] the reactor contains a heater and a shearer; Appeal 2013-010148 Application 12/260,445 3 [14] liquefying the reactor-sludge to the target viscosity, in the reactor, by: [15] (a) so operating the heater that the temperature of the reactor-sludge in the reactor matches the target-procurement-level of temperature; and [16] (b) so operating the shearer that the power or energy applied to the reactor-sludge in the reactor matches the target-procurement-level of power or energy; and [17] after liquefaction of the dewatered reactor-sludge, discharging the liquid reactor-sludge from the reactor. The Examiner rejects all appealed claims under the 2nd paragraph of 35 U.S.C. § 112 as indefinite (Final Action 3–7; Ans. 10–13).2 The 2nd paragraph of § 112 requires that claims, viewed in light of the specification, inform those skilled in the art about the scope of the invention with reasonable certainty while recognizing absolute precision is unattainable. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). The Examiner states that the claims are rendered indefinite by a large number of claim recitations but fails to establish that any of these recitations prevent the claims, viewed in light of the Specification, from informing those skilled in the art of claim scope with reasonable certainty. For example, regarding claim 1, the Examiner states “it is unclear what sludge is being referenced by the limitation ‘dewatered event-sludge’ in [4]” (Ans. 10) and questions whether it is the same as “the dewatered sewage sludge (the re[a]ctor-sludge) recited in the preamble of the claim, or some other sludge” (id.). However, clause [4] of claim 1 expressly identifies 2 The indefiniteness determinations regarding several claim recitations, which were made in the Final Action, have been withdrawn by the Examiner (Ans. 2–5). Appeal 2013-010148 Application 12/260,445 4 the recited “dewatered event-sludge” as being “in the sludge-liquefaction event” (i.e., one of the sludge-liquefaction-events initially recited in clause [2]). Therefore, we fully agree with Appellants that “[i]n clause [4] of claim 1, we refer to the event-sludge that was the subject of a respective one of the sludge-liquefaction-events we referred to in clause [2]” (Reply Br. (i.e., the Amended Appeal Brief filed 19 July 2013) (vii) (b) 2). We discern no support at all for the Examiner’s position that claim 1 lacks clarity as to whether the event-sludge of clause [4] is the same as the reactor-sludge referred to in the preamble. A similar analysis reveals that none of the Examiner’s many criticisms of claim language establishes a prima facie case for the proposition that those skilled in the art, when reading the appealed claims in light of the Specification, would be unable to assess with reasonable certainty the scope of Appellants’ claimed procedure. The record before us supports Appellants’ position that the appealed claims satisfy the 2nd paragraph requirement of § 112 (App. Br. (vii) (b) 1–18, Reply Br. (vii) (b) 1–18). For these reasons, we reverse the Examiner’s § 112, 2nd paragraph, rejection of the appealed claims. The Examiner additionally rejects all appealed claims under 35 U.S.C. § 103(a) as unpatentable over Ward et al. (U.S. 6,808,636 B2, issued Oct. 26, 2004) (hereinafter “Ward”) (Final Action 8–10, Ans. 7–9).3 3 In making the § 103 rejection, the Examiner fails to offer any interpretation of the claim recitations which are considered by the Examiner to be indefinite under the 2nd paragraph of § 112. Because we have reversed the indefiniteness rejection, the Examiner’s failure does not forestall our assessment of the § 103 rejection. Appeal 2013-010148 Application 12/260,445 5 Regarding all claims generally, the Examiner finds that Ward discloses a method for reducing the viscosity of dewatered sewage sludge comprising heating and shearing the sludge (Final Action 8–9) but “may not explicitly state that the liquefaction procedure is based on data obtained from at least 3 prior liquefaction procedure[s]” (id. at 9). The Examiner further finds that “[i]n the example sections, Ward discloses various results generated from multiple sludge-liquefaction experiments using various experimental parameters . . . and summarizes the results in the tables” (id.). Based on these findings, the Examiner expresses the following obviousness conclusion. The examiner asserts that conducting a new liquefaction based on the data gathered previously from other liquefaction is obvious because application of knowledge gained from prior experimentations to future experiments is routine skill in the art. The examiner also asserts that performing the process so that the archived results falls within a predetermined margin (10% or 20%) is also obvious. This is also a common practice in science. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. (Id. at 10.) “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We agree with Appellants that the Examiner has failed to establish a prima facie case of obviousness (App. Br. (vii) (a) 1–12, Reply Br. (vii) (a) Appeal 2013-010148 Application 12/260,445 6 1–16). The Examiner does not identify individual claim limitations or make respective findings for the individual limitations or provide specific prior art citations for each such finding. Moreover, the Examiner does not articulate any reasoning for combining such specifically cited prior art teachings so as to result in the limitations required by independent claim 1 and the dependent claims under rejection. These circumstances reflect that the Examiner’s above obviousness conclusion is based on conclusory statements that are broad and generalized rather than articulated reasoning with rational underpinning that supports the legal conclusion of obviousness. We also reverse, therefore, the Examiner’s § 103 rejection of the appealed claims. The decision of the Examiner is reversed. REVERSED cdc