Christy, Richard W. et al.

Patent Trials and Appeals Board

Jul 9, 2020

2019004685 (P.T.A.B. Jul. 9, 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.
14/830,798 08/20/2015 Richard W. Christy 2015-087 5184
27569 7590 07/09/2020
PAUL AND PAUL
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
EXAMINER
GURTOWSKI, RICHARD C
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
07/09/2020 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):
INFO@PAULANDPAUL.COM
claire@paulandpaul.com
fpanna@paulandpaul.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD W. CHRISTY,
MICHAEL QUICI, and LOUIS LITZ

Appeal 2019-004685
Application 14/830,798
Technology Center 1700
____________

Before JEFFREY T. SMITH, GEORGE C. BEST, and
JEFFREY R. SNAY, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 8–17, which constitute all the claims
pending in this application. An oral hearing was held on June 24, 2020.2
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 RDP
Technologies, Inc. Appeal Br. 1.
2 A written transcript of the Oral hearing will be entered into the record when
the transcript is made available.
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STATEMENT OF THE CASE
Appellant’s invention is generally directed to an apparatus for treating
water with hydrated lime. (Spec. 1.) Independent claim 8 is representative
of the appealed subject matter and is reproduced below:
8. Apparatus for treating water with hydrated lime
comprising:
(a) means for providing calcium hydroxide and grit
particles to a lime mixing vessel;
(b) means for providing water to the lime mixing vessel to
form a lime slurry therein;
(c) means for delivering the lime slurry from the lime
mixing vessel to a slurry holding tank;
(d) means for delivering the lime slurry from the slurry
holding tank to a separation device for separating grit particles
from the lime slurry; and
(e) means for delivering the lime slurry to at least one
dosing location wherein the separation device comprises a tank
and a sloped auger, and wherein the lime slurry is supplied from
the slurry holding tank to the tank of the separation device
without passing through any other separation device for
separating grit from the slurry.
Claims Appendix (emphasis added).3
The following rejections are presented for our review: 4
I. Claims 8 and 9 rejected under 35 U.S.C. § 103(a) as unpatentable
over Emmett (US 4,482,528, iss. Nov. 13, 1984) in view of Surakka et al.
(US 4,067,814, iss. Jan. 10, 1978 (“Surakka”)).

3 The claims on appeal appear in the corrected claims appendix submitted
January 30, 2019.
4 The complete statement of the rejections on appeal has been reproduced in
the Examiner’s Answer. (Ans. 3–14.)
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II. Claim 10 rejected under 35 U.S.C. § 103(a) as unpatentable over
Emmett, Surakka in view of Stephansen (US 5,746,983, iss. May 5, 1998).
III. Claim 11 rejected under 35 U.S.C. § 103(a) as unpatentable over
Emmett, Surakka in view of Golightley et al. (US 6,250,473 B1, iss. June
26, 2001 (“Golightley”)).
IV. Claim 12 rejected under 35 U.S.C. § 103(a) as unpatentable over
Emmett, Surakka, Golightley, and further in view of McIntyre (US
3,979,254, iss. Sept. 7, 1976).
V. Claim 13 rejected under 35 U.S.C. § 103(a) as unpatentable over
Emmett, Surakka in view of Eberhardt (US 4,747,958, iss. May 31, 1988).
VI. Claims 14 and 15 rejected under 35 U.S.C. § 103(a) as
unpatentable over Emmett, Surakka in view of Golightley and McIntyre.
VII. Claim 16 rejected under 35 U.S.C. § 103(a) as unpatentable over
Emmett, Surakka, Golightley, McIntyre, and further in view of Stephansen.
VIII. Claim 17 rejected under 35 U.S.C. § 103(a) as unpatentable over
Emmett, Surakka, Golightley, McIntyre, and further in view of Eberhardt.
OPINION
We consider the record to determine whether Appellant has identified
reversible error in the Examiner’s rejection. See In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections,” citing Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)).
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Appellant argues claim 8 requires that the lime slurry to be supplied
from the slurry holding tank to the tank of the separation device, which
requires a sloped auger, without passing through any other separation device
for separating grit from slurry. (Appeal Br. 8.) Appellant argues Emmett
discloses the cyclone 19 is located in between the dilution tank 14 and the
classifier [sic 24] and thus, the cyclone 19 and classifier [24] are separate
devices. (Appeal Br. 8.) Appellant further argues Surakka does not disclose
a holding tank but rather a hydrocyclone with tank-like section. (Appeal Br.
7–8.)
Claims 8–17 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Emmett and Surakka inter alia.
We limit our discussion to the Emmett and Surakka references as
argued by Appellant. The Examiner cited additional prior art to address
various other limitations of the appealed claims.

Claims 8–13
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has demonstrated reversible error in the
Examiner’s rejections of claims 8–13. We limit our discussion to
independent claim 8.
The dispositive issue on appeal is:
Did the Examiner err reversibly in determining that the combination
of Emmett and Surakka describes or suggests an apparatus for treating water
with hydrated lime comprising a means for delivering the lime slurry from a
slurry holding tank to a separation device for separating grit particles from
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the lime slurry wherein the lime slurry is supplied from the slurry holding
tank to the tank of the separation device without passing through any other
separation device for separating grit from the slurry as required by
independent claim 8?5
The Examiner finds Emmett discloses an apparatus for treating water
with hydrated lime wherein the lime slurry is supplied from the slurry
holding tank to the tank of the separation device as required by independent
claim 8 that differs from the claimed invention by including an intermediate
hydrocyclone, which is a device for separating grit from a slurry. (Emmett
col. 5 ll. 20–25.) The Examiner finds the hydrocyclone 19 and classifier 24
serve as separation devices, however, Emmett is silent on the hydrocyclone
separator device comprising a tank. (Final Act. 6.) The Examiner cites
Surakka as evidence that a modern hydrocyclone comprises a relatively long
conical tank. (Final Act. 7.) The Examiner concludes it would have been
obvious to one of ordinary skill in the art to modify the separation device of
Emmett to include a hydrocyclone that comprises a tank. (Final Act. 7.)
The Examiner in the Answer, clarifies the statement of the rejection to
indicate that the hydrocyclone 19 and classifier 24 serve as the separation
device that removes water from settled grit and is directly downstream of
dilution mix tank. (Ans. 4.)
We agree with Appellant that the Examiner erred reversibly in the
determination of obviousness for independent claim 8. The Examiner bears
the initial burden of presenting a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on

5 We limit our discussion to claim 8, the only independent claim in this
group.
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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)).
As Appellant argues, Emmett discloses that the cyclone, for
slurry/coarse particle separation, is located in between the dilution tank and
the classifier and therefore the cyclone and classifier are separate separation
devices. (Appeal Br. 8; Emmett col. 5, ll. 20–51, Fig. 1.) Given this
disclosure, the Examiner does not explain adequately why the cyclone and
the classifier are combined to form a single separation device. Thus, the
Examiner has not provided an adequate reasoning with the requisite rational
underpinning explaining why Emmett discloses an apparatus for treating
water with hydrated lime comprising a means for delivering the lime slurry
from a slurry holding tank to a separation device for separating grit particles
from the lime slurry wherein the lime slurry is supplied from the slurry
holding tank to the tank of the separation device without passing through
any other separation device for separating grit from the slurry as required
by independent claim 8.
Accordingly, we REVERSE the Examiner’s prior art rejections of
claims 8–13 under 35 U.S.C. § 103(a) for the reasons the Appellant presents
and we give above.
Claims 14–17
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
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determine that the Examiner has not properly considered the claimed subject
matter of claims 14–17. We limit our discussion to independent claim 14.
Claim 14 is reproduced below:
14. Apparatus for treating water with hydrated lime
comprising:
(a) means for providing calcium hydroxide and grit particles
to a lime mixing vessel;
(b) means for providing water to the lime mixing vessel to
form a lime slurry therein;
(c) means for delivering the lime slurry from the lime
mixing vessel to a slurry holding tank;
(d) means for delivering the lime slurry from the slurry
holding tank to a separation device for separating grit particles
from the lime slurry; and
(e) means for delivering the lime slurry to at least one
dosing location,
(f) one or more baffle plates; and
(g) means for removing particles of grit from the lime slurry
via hydraulic separation by flowing the lime slurry over the one
or more baffle plates, wherein the orientation of at least one of
the one or more baffle plates is adjustable.
Addressing independent claim 14, Appellant states:
The Examiner relies upon the same erroneous construction
of Emmett in making this rejection as was done in the rejection
of independent claim 8. Consequently, the Examiner arrives at
the same erroneous conclusion of law, and the rejection should
be reversed for this reason.
(Appeal Br. 13.)
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We find no indication on this record that the Examiner properly
considered this “means-plus-function” limitations in claim 14 in a manner
consistent with the requirements of 35 U.S.C. § 112(f). (See generally, Final
Act. 12–13.)6 See In re Donaldson, 16 F.3d at 1195 (“[T]he PTO was
required by statute to look to Schuler’s specification and construe the
‘means' language recited in the last segment of claim 1 as limited to the
corresponding structure disclosed in the specification and equivalents
thereof.”).7 Therefore, the Examiner did not properly determine how
Emmett’s structure corresponds to claim element (d) “means for delivering
the lime slurry from the from the slurry holding tank to a separation device.”
For example how does Emmett’s structure, which includes the cyclone, is
equivalent to the structure shown in Figure 1 (line 61, pump 62, and line 63).
Therefore, the Examiner did not consider all of claim 14’s limitations in
making out the ground of rejection under §103(a). See, e.g., In re Geerdes,
491 F.2d 1260, 1262-63 (CCPA 1974) (in considering grounds of rejection
“every limitation in the claim must be given effect rather than considering
one in isolation from the others”); cf. In re Donaldson, 16 F.3d at 1195-97;

6 Likewise, Appellants have not adequately identified the means-plus-
function limitations or the structure(s) described in the Specification
corresponding to each claimed function in summarizing the claimed
invention as required by 37 C.F.R. § 41.37(c)(1)(iii) (2019). 37 C.F.R. §
41.37(c)(1)(iii) requires the record for appeal must identify, for each
independent claim involved in the appeal, every means plus function and
step plus function as permitted by 35 U.S.C. § 112(f), and the structure,
material, or acts described in the specification as corresponding to each
claimed function must be set forth. This analysis is important to insure
proper analysis of the claimed subject matter has been considered and
presented for review.
7 See also, e.g., MPEP §§ 2181-2185 (Rev. 10)
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In re Steele, 305 F.2d 859, 862 (CCPA 1962) (a rejection based on prior art
cannot be based on speculations and assumptions).
For the foregoing reasons, we REVERSE the Examiner’s prior art
rejections of claims 14–17 under 35 U.S.C. § 103(a).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8, 9 103(a) Emmett, Surakka 8, 9
10 103(a) Emmett, Surakka,
Stephansen
10
11 103(a) Emmett, Surakka,
Golightley,
11
12 103(a) Emmett, Surakka,
Golightley,
McIntyre,
12
13 103(a) Emmett, Surakka,
Eberhardt
13
14, 15 103(a) Emmett, Surakka,
Golightley,
McIntyre,
14, 15
16 103(a) Emmett, Surakka,
Golightley,
McIntyre,
Stephansen
16
17 103(a) Emmett, Surakka,
Golightley,
McIntyre, Eberhardt
17
Overall
Outcome
8–17
REVERSED