HAN, Byungsook

Patent Trials and Appeals Board

Oct 1, 2020

2020001135 (P.T.A.B. Oct. 1, 2020)

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.
14/888,573 11/02/2015 Byungsook HAN 16681-000009-US-NP 7732
28997 7590 10/01/2020
Harness Dickey (St. Louis)
7700 Bonhomme, Suite 400
St. Louis, MO 63105
EXAMINER
JELLETT, MATTHEW WILLIAM
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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):
bkamer@hdp.com
stldocket@hdp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BYUNGSOOK HAN

Appeal 2020-001135
Application 14/888,573
Technology Center 3700
____________

Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, Byungsook Han1, appeals under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting claims 1–6, 8, 9, and 11–14.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies applicant/Appellant as the sole real party in interest.
Appeal Br. 3.
2 Page 1 of the Final Action erroneously omits claim 6 as a pending or
rejected claim. Final Act. 1. In fact, claim 6 is pending and rejected. See
Appeal Br. 17 (listing claim 6 as pending and appealed); Final Act. 12–13
(rejecting claim 6).
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STATEMENT OF THE CASE
The Specification
The Specification “relates to an overflow chamber for emission of
rainwater and soil [to] reduce sewage treatment cost by preventing rainwater
and soil from flowing into a sewage treatment plant.” Spec. ¶1. Figure 3 is
reproduced below.

Figure 3, reproduced above, “schematically illustrat[es] an overflow
chamber that can discharge rainwater and soil according to an embodiment
of the present invention.” Id. ¶31. The chamber includes receiving unit 100
for receiving sewage, rainwater, and/or soil, discharge port 110 for
discharging to a river during peak flow periods, and interceptor port 150 for
discharging to a sewerage treatment plan during normal flow periods. Id.
¶¶40, 45, 49, and 54.
A normal flow period is depicted in Figure 3. Thus, the illustrated
level of sewage, rainwater, and/or soil is insufficient to cause discharging
through first discharge pipe 200, which bends convexly upward and then
convexly downward as it extends from receiving unit 100. Id. ¶¶ 13, 50–53.
The level is also insufficient to cause floater 430 to rise and,
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correspondingly, cover plate 410 to lower and close the interceptor port 150.
Id. ¶¶ 55, 58–68.
Figure 4 is reproduced below.

Figure 4, reproduced above, shows “operation of the overflow chamber”
(i.e., during a peak flow event). Id. ¶57. Here, the illustrated level of
sewage, rainwater, and/or soil is high enough to have lifted floater 430 and,
correspondingly, lowered cover plate 410 to close interceptor port 150. Id.
¶67. It is also high enough to cause discharge through the first discharge
pipe 200. Id. ¶53.
The Claims
Claims 1–6, 8, 9, and 11–14 are rejected. See supra n.2. Claims 7
and 10 are cancelled. Appeal Br. 17–18; Final Act. 2. No other claims are
pending. Appeal Br. 16–19; Final Act. 2. Claims 1 and 13 are independent.
Appeal Br. 16, 18–19. Claim 1 is illustrative and reproduced below.
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1. An overflow chamber that can discharge rainwater
and soil, comprising:
a receiving unit having a receiving space;
an interceptor port formed at a side of the receiving unit
and selectively opening/closing in accordance with the amount
of the rainwater or soil received in the receiving unit;
a discharge port formed at another side of the receiving
unit;
a first discharge pipe communicating with the discharge
port, wherein said discharge pipe first convexly bends upward
relative to the level of and proximal to the discharge port at
least one time and then convexly bends downwards relative to
an apex of the upwards bend; and
an opening/closing unit comprising:
a cover plate covering and selectively opening or closing
the interceptor port; and
a floater being floated on the rainwater or soil by
buoyancy, vertically moving, and connected with the cover
plate such that the cover plate moves vertically along a plane
parallel with a plane of the side containing the interceptor port,
wherein when the floater is moved up in the receiving
unit by buoyancy, the cover plate moves vertically to close the
interceptor port, and when the floater is moved down in the
receiving unit, the cover plate moves vertically to open the
interceptor port.
Appeal Br. 16.
The Examiner’s Rejection
The Examiner rejected all pending claims, namely claims 1–6, 8, 9,
and 11–14, under 35 U.S.C. § 103, as unpatentable over Brown,3 Ward,4
Dempsey.5

3 US 2,150,359, issued Mar. 14, 1939 (“Brown”).
4 US 4,318,421, issued Mar. 9, 1982 (“Ward”).
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DISCUSSION
Brown discloses an “AUTOMATIC SEWER REGULATOR.”
Brown, Title. The Examiner found that Brown teaches much of the subject
matter of claim 1. Final Act. 4–6 (citing Brown Figs. 1–2, 2:1–10).
However, the Examiner concedes that it does not teach “wherein said
discharge pipe first convexly bends upward relative to the level of and
proximal to the discharge port at least one time and then convexly bends
downwards relative to an apex of the upwards bend,” as recited in claim 1.
Id. at 6–7.6
For that limitation, the Examiner turns to Ward, which discloses
“FLOAT CONTROLLED SYPHON VALVE FOR SWIMMING POOL
COVER.” Ward, title. The Examiner finds that Ward teaches a discharge
pump meeting the bending requirements of claim 1. Final Act. 7 (citing
Ward Fig.1 (ref. 14)). The Examiner determines:
It would have been obvious to one of ordinary skill in the art at
the time of filing of the invention to utilize in lieu of merely a
weir as taught in Brown to maintain the fluid level for entering
the float chamber, to extend the downstream horizontal outlet
emergency pipe of Brown up and over the weir by connecting
the inlet pipe as taught in the Ward siphon to the outlet line of
Brown, with the Ward siphon having an upwards concave bend
and downwards concave bend at the apex thereof for the line of
Brown so that after the storm water has filled the intermediate
reserve space of Brown (as taught in Col 2 lns 35-50 of Brown)
and closed the sewage treatment line, automatic evacuation of

5 US 3,956,137, issued May 11, 1976 (“Dempsey”).
6 The Examiner concedes that Brown also does not teach “the cover plate
moves vertically along a plane parallel with a plane of the side containing
the interceptor port,” as recited in claim 1. Final Act. 6–7. However, our
Decision does not turn on the Examiner’s findings with respect to that
limitation.
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the storm water in the chamber may be accomplished by
initiating a siphon over the embankment/wier [sic] of Brown as
taught in Ward, where the fluid may be drawn/siphoned quickly
downstream via the lower elevation at the downstream location
of Brown as taught in Ward, thus taking advantage of increased
head pressure between the top of the weir of Brown and the base
of the weir and the downstream outlet of the pipe of C, as is
common in the art and as taught in Ward, all for the purpose of
lowering a body of water level as taught in Ward
Id. at 7–8.
Appellant argues, among other things, that “Ward is directed to a float
controlled system to remove standing water weighing down a pool cover”
and that merely because “the pipe of Ward is bent in a manner similar to that
recited in Claims 1 or 13 does not necessarily mean it would be obvious to
incorporate this feature into the sewer regulator of Brown.” Appeal Br. 12.
Appellant elaborates as follows:
The issue is not whether the siphon principle was known but
whether it would have been obvious to incorporate a discharge
pipe shaped to utilize the siphon principle. Ward only indicates
that pipes utilizing the siphon principle were known but provides
no teaching to use said pipe shape in sewer regulators.
Moreover, the sewer regulator of Brown is incorporated within a
sewer systems (Brown, c. 1, 1. 1-3) and neither the art nor the
Examiner provide any guidance regarding how the convexly bent
pipe of Ward can be incorporated into the sewer regulator of
Brown. In the absence of any such teaching, the Examiner's
justifications are the very conclusory statements specifically
warned against in Kahn.
Id. at 13–14.
Appellant’s arguments are persuasive of Examiner error. Indeed, we
cannot discern how and where precisely the Examiner is proposing to
incorporate Ward’s bent discharge pipe into Brown’s sewer regulator.
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The Examiner proposes “to extend the downstream horizontal outlet
emergency pipe of Brown up and over the weir by connecting the inlet pipe
as taught in the Ward siphon to the outlet line of Brown.” Final Act. 7. In
making this proposal, the Examiner does not identify the purported parts of
Ward (i.e., “downstream horizontal outlet emergency pipe,” “weir,” and
“outlet line”) that he references. Id. Nor does the Examiner identify such
parts in his findings regarding what Ward teaches. Id. at 4–6. Similarly,
there is no antecedent basis in the Final Action for the Examiner’s reference
to “the pipe of C.” See Final Act. 8 (“thus taking advantage of increased
head pressure between the top of the weir of Brown and the base of the weir
and the downstream outlet of the pipe of C”).
Despite our review of Brown, we cannot discern how and where
precisely the Examiner is proposing to incorporate Ward’s bent discharge
pipe into Brown’s sewer regulator. For example, Brown does not refer to
any “downstream horizontal outlet emergency pipe.” It does illustrate a
horizontal outlet pipe (20) but describes it as being used for normal use.
Brown, Fig. 1 (ref. 20), 2:10–12 (“A pipe 20 is connected to the chamber 11
and forms an outlet for conducting sanitary or dry weather flow to another
part of the sewer.”), 2:17–19 (“During normal or dry weather flow there is a
substantially continuous flow into the pipe 20.”). As another example,
Brown refers to two weirs and labels them with reference numerals. The
Examiner has not adequately identified the parts of Brown to which he refers
in his proposed modification, for example, by employing Brown’s reference
numerals.
For the foregoing reasons, we reverse the rejection of claim 1, as well
as that of claims 2–6, 8, 9, 11, and 12, which ultimately depend therefrom.
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Similar to claim 1, independent claim 13 recites “a first discharge pipe
communicating with the discharge port, wherein said discharge pipe first
convexly bends upward relative to the level of and proximal to the first
discharge pipe at least one time and then convexly bends downwards relative
to an apex of the upwards bend.” Appeal Br. 18. The Examiner rejected
claim 13 based on essentially the same findings and rationale as claim 1.
See Final Act. 8–11. Thus, we likewise reverse the rejection of claim 13, as
well as that of claim 14, which depends therefrom.

SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8, 9,
11–14
103 Brown, Ward,
Dempsey
1–6, 8, 9,
11–14

REVERSED