Adrian Peter. Revington et al.

Patent Trials and Appeals Board

Dec 11, 2019

13699131 - (D) (P.T.A.B. Dec. 11, 2019)

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.
13/699,131 03/29/2013 Adrian Peter Revington 87367.6300 5061
30734 7590 12/11/2019
BakerHostetler
Washington Square, Suite 1100
1050 Connecticut Ave. N.W.
Washington, DC 20036-5304
EXAMINER
SOOHOO, TONY GLEN
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
12/11/2019 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):
edervis@bakerlaw.com
eofficemonitor@bakerlaw.com
patents@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ADRIAN PETER REVINGTON,
WILLIAM MATTHEW MARTIN, JAMIE EASTWOOD,
and MARVIN HARVEY WEISS
____________

Appeal 2018-005157
Application 13/699,131
Technology Center 1700
____________

Before WESLEY B. DERRICK, MONTÉ T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final
Office Action rejecting claims 1–18, 26–33, and 43–55. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to a device for introducing a flocculent agent to
a flow of process water and entrained oil sand tailings prior to the oil sand
tailings reaching a holding pond. Appeal Br. 2. The invention aims

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as SUNCOR
ENERGY INC. Appeal Br. 3.
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improve dewatering of Mature Fine Tailings (MFT) generated from
hydrocarbon extraction process operations that separate the valuable
hydrocarbons from oil sand ore. Spec. 1–2. The Specification describes
MFT as the lower stratum that contains settled residual hydrocarbon and
minerals which are predominately fines and explains that MFT presents a
challenge in tailings management. Id. at 2. The invention provides a
technique that enables MFT drying for conversion into reclaimable
landscapes through the use of an injection device for inline-injection of a
flocculating agent into a pipeline fluid flow of MFT to promote MFT
flocculation. Id. at 7–8. Claim 1 is illustrative of the claimed subject matter:
1. An injection device for inline-injection of flocculating
agent into a fluid flow of a pipeline of mature fine tailings in
order to promote flocculation of said mature fine tailings, the
injection device comprising:

a main inlet for receiving the fluid flow;

a main channel along which the fluid flow entering the inlet is
allowed to travel;

a main outlet located at a downstream end of the main channel
for releasing the fluid flow into a mixing zone;

a complementary conduit, disposed co-annularly with respect to
the main channel, and configured for receiving flocculating
agent from a feed inlet different from the main inlet, the
complementary conduit having a plurality of injection outlets
disposed cross-sectionally adjacent to and co-annularly about
the main outlet for injecting flocculating agent into the fluid
flow exiting the main outlet into the mixing zone, the injection
outlets being shaped and sized, and each having an orifice
substantially smaller than that of the main outlet so as to
increase dispersion of the flocculating agent about the main
outlet in order to improve mixing of the fluid flow with said
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flocculating agent via an increased exposed surface area of the
flocculating agent; and

a backing ring defining a downstream end of the
complementary conduit and having the injection outlets
extending there-through, the backing ring comprising a
downstream-facing annular surface at which each of the
injection outlets terminates.

Independent claims 17, 44, and 55 are directed to an injection
device similar to claim 1 but that includes additional limitations.
Independent claims 26 and 43 are directed to a kit for assembling an
injection device for inline-injection of flocculating agent into a fluid
flow of a pipeline of mature fine tailings.
Appellant (see generally Appeal Br.) requests review of the following
rejections from the Examiner’s Final Office Action (“Final Act.”):
I. Claims 1–11, 17, and 55 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Murphy (EP 0 882 495 A1, published
December 9, 1998) and Nagata (US 4,487,553, issued December 11, 1984).
II. Claims 12–16, 18, 26–33, and 43–54 are rejected under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Murphy, Nagata, and Cincotta
(US 2006/0175721 A1, published August 10, 2006).
Appellant presents arguments only for independent claims 1, 17, 26,
43, 44, and 55 and does not present separate arguments for any of the
rejected dependent claims. See generally Appeal Br. Further, Appellant
relies on the same line of arguments to address each of the independent
claims. Id. Accordingly, we select claim 1 as representative of the subject
matter claimed and decide the appeal based on the arguments made by
Appellant in support of the patentability of claim 1.
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ANALYSIS
After review of the respective positions that Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
Answer, we affirm the prior art rejections of claims 1–18, 26–33, and 43–55
under 35 U.S.C. § 103(a) for the reasons the Examiner presents and add the
following.
We refer to the Examiner’s Final Action for a complete statement of
the rejection. Final Act. 2–6.
Appellant does not dispute the Examiner’s specific findings with
respect to Murphy’s injection device. See generally Appeal Br. In fact, both
the Examiner and Appellant agree that the principal difference between
Murphy’s device and the claimed device is that Murphy does not disclose
injection outlets having an orifice substantially smaller than that of the main
outlet. Final Act 4; Appeal Br. 22; Murphy Figure 3.
Instead, Appellant argues that the Examiner’s reliance on Nagata for
the missing feature is in error because Nagata is non-analogous art as it is
not (1) from the same field of endeavor as the claimed invention; nor (2)
reasonably pertinent to the particular problem faced by the inventor. Appeal
Br. 18.
With respect to prong (1), Appellant argues that Nagata’s jet pump,
Murphy’s water injector dilution device, and the claimed flocculant injector
do not have the same function. Id. at 21. Appellant further argues that
Nagata is from the field of jet pumps for the transportation of materials
while the claimed invention relates to the field of flocculant injectors for
rapidly mixing a flocculant with fine tailings to effect flocculation reactions
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prior to dewatering of the fine tailings. Id. at 18. Thus, Appellant contends
that the fields of endeavor and purposes of both references are
fundamentally different. Id.
With respect to prong (2), Appellant also argues that Nagata is not
reasonably pertinent to the particular problem faced by the inventor of the
pending claims. Id. Appellant contends that Nagata relates to dealing with
the transportation of materials at very high velocities while avoiding
cavitation while the claimed invention relates to the problem of effective and
rapid mixing of a flocculant into a flow of fine tailings. Id.
Appellant’s arguments do not identify reversible error in the
Examiner’s determination of obviousness for the reasons the Examiner
presents. Ans. 14. Moreover, Nagata’s disclosure is not as limited as
Appellant argues. In addition to preventing cavitations, Nagata also
discloses that the jets are arranged so that solids may not produce blockages
within the transport pipe. Nagata col. 1, ll. 24–28, 33–36, col. 2, ll. 19–24.
Nagata also suggests that the jet stream transports the fluid matter while
swirling to move the solids in the fluid matter to the central portion of the
transport pipe. Id. at col. 4, ll. 32–44. One skilled in the art would infer
from this disclosure that Nagata’s jet arrangement mixes the fluids to ensure
transportability of solids contained in the principal fluid. See In re Fritch,
972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (holding that a reference stands for
all of the specific teachings thereof as well as the inferences one of ordinary
skill in the art would have reasonably been expected to draw therefrom).
Therefore, there is a reasonable basis to ascertain that Nagata is directed to
the same field of endeavor as the claimed invention as well as pertinent to
Appellant’s problem of providing effective and rapid mixing of fluids.
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Appellant additionally argues that Nagata is directed to a jet pump to
inject fluid at a high velocity from jets positioned around the central outlet
so as to accelerate flow of the fluid exiting the central outlet. Appeal Br.
18–19. Appellant contends that the claimed invention generates a mixing
zone by rapidly decelerating the tailings flowing out the main outlet to
generate the turbulence needed to disperse the flocculant. Id. at 19.
Appellant asserts that modifying Nagata’s jet pump to slow down the flow
exiting the central outlet would render Nagata’s jet pump unsuitable for its
intended purpose. Id.
These arguments also do not persuade us of reversible error in the
Examiner’s determination because they do not address the rejection the
Examiner presents. Ans. 3–4. In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425–26 (CCPA 1981) (“The
test [for obviousness] is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”).
In the Final Action, the Examiner is modifying Murphy’s jet mixing
device by incorporating the smaller jet orifices of Nagata into the device.
Final Act. 6; Ans. 16. Appellant’s arguments do not address this
combination of the cited art.
Appellant argues that there is no teaching or suggestion in Murphy
that the co-annular injection outlets should be each substantially smaller than
the main outlet, as recited in the claims, nor should Nagata or any other
reference cited by the Examiner be used to modify Murphy in this manner.
Appeal Br. 22. Appellant contends that the co-annular injection outlets and
the main outlet of Murphy’s device are for different fluids compared to the
claimed outlets. Id. According to Appellant, the purpose of Murphy’s
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device is to mix water and polymer to form an aqueous polymer solution
while the purpose of the claimed device is to mix a flocculant solution into a
mixture of fine tailings to form flocs and eventually dewater the fine tailings.
Id. at 23.
These arguments also lack persuasive merit. “[A]pparatus claims
cover what a device is, not what a device does.” Hewlett-Packard Co. v.
Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Therefore, the
patentability of an apparatus claim depends on the claimed structure, not on
the use or purpose of that structure, Catalina Mktg. Int’l Inc. v.
Coolsavings.com Inc., 289 F.3d 801, 809 (Fed. Cir. 2002), or the function or
result of that structure. In re Danly, 263 F.2d 844, 848 (CCPA 1959); In re
Gardiner, 171 F.2d 313, 315–16 (CCPA 1948). If the prior art structure
possesses all the claimed characteristics including the capability of
performing the claimed function, then there is a prima facie case of
unpatentability. In re Ludtke, 441 F.2d 660, 663–64 (CCPA 1971).
As the Examiner and we note, Nagata, like Murphy, is directed to a
fluid mixing device that utilizes jets to accomplish the mixing of two fluids.
Final Act. 5; Ans. 6. The fact that Nagata does so in its pumping action, or
that Murphy is silent as to pumping action, does not negate this. Further, the
Examiner explains that the diameter of Nagata’s jet orifices is substantially
smaller than the diameter of the main flow conduit exit and produces a more
effective velocity as a jet flow injection to the main fluid flow at the end of
the center conduit. Final Act. 6. Thus, the Examiner finds that smaller
diameter jet orifices allow an increase of jet velocity that mixes the two fluid
flows more effectively. Id. That is, the Examiner finds the size jet orifice is
a result effective variable that can be modified by one skilled in the art to
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achieve a desired mixing level. Appellant has not disputed this finding. See
Appeal and Reply Br. Appellant has, thus, not provided an adequate
technical explanation as to why one skilled in the art would not have been
led to reduce the size of Murphy’s jet orifices, as taught by Nagata, to
provide an increase in jet velocity, through no more than routine
optimization to discover the optimum or workable ranges, and reasonably
expect that that the modified jet mixing device would be suitable to mix the
fluids transported by Murphy. In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir.
1988) (“For obviousness under § 103, all that is required is a reasonable
expectation of success.”); In re Aller, 220 F.2d 454, 456 (CCPA 1955)
(“[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.”).
Accordingly, we affirm the Examiner’s 35 U.S.C. § 103(a) rejections
of claims 1–18, 26–33, and 43–55 for the reasons the Examiner presents and
the reasons we provide.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–11, 17,
and 55
103(a) Murphy, Nagata, 1–11, 17, 55
12–16, 18,
26–33, and
43–54
103(a) Murphy, Nagata,
Cincotta
12–16, 18,
26–33,43–54

Overall
Outcome
1–18, 26–33,
43–55

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED