90006844 (B.P.A.I. Aug. 5, 2010)

Ex Parte 5314630 et al

Board of Patent Appeals and InterferencesAug 5, 2010

90006844 (B.P.A.I. Aug. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RF DELAWARE, INC., Appellant ____________ Appeal 2009-015244 Reexamination Control 90/006,844 Patent 5,314,630 Technology Center 3900 ____________ Before KIMBERLY R. JORDAN, Division 1 Support Administrator. ORDER RE-MAILING BOARD DECISION ON REHEARING1 The Decision on Rehearing in this appeal was originally mailed on July 20, 2010. There is no indication, however, in the record that the PTOL-90A indicating the mail date was attached to the decision. Accordingly, the Decision on Rehearing is being re-mailed and is attached to this order. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the “MAIL DATE” shown on the PTOL-90A cover letter attached to this order. Appeal 2009-015244 Reexamination Control 90/006,844 Patent 5,314,630 2 If there any questions pertaining to this Order, please contact the Board of Patent Appeals and Interferences at 571-272-9797. KRJ/smd FOR PATENT OWNER: MEREK, BLACKMON & VOORHEES, LLC 673 S. WASHINGTON STREET ALEXANDRIA, VA 22314 FOR THIRD PARTY REQUESTER: HUGHES LAW FIRM, PLLC 5160 INDUSTRIAL PLACE #107 FERNDALE, WA 98248-7819 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RF DELAWARE, INC., Appellant ____________ Appeal 2009-015244 Reexamination Control 90/006,844 Patent 5,314,630 Technology Center 3900 ____________ Before MICHAEL P. COLAIANNI, CAROL A. SPIEGEL, and ROMULO H. DELMENDO, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the “MAIL DATE” shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-015244 Reexamination Control 90/006,844 Patent 5,314,630 2 The Appellant requests rehearing of our January 22, 2010 Decision (hereinafter “original Decision”), in which we affirmed the Examiner’s final rejection of claims 1-21 in the above-identified reexamination of United States Patent 5,314,630 (Request for Rehearing filed on March 22, 2010, hereinafter “Req. Reh’g”). We DENY the Appellant’s request to modify our original Decision. I. “Special Dispatch” The Appellant contends that we “misapprehended the Patentee’s [sic, Patent Owner’s] position and/or misapprehended or overlooked the law regarding the Board’s jurisdiction on the issue” of whether the current reexamination has been conducted with “special dispatch,” as required under 35 U.S.C. § 305 (Req. Reh’g 2-6). We did not misapprehend or overlook any points raised in the Appeal Brief. As we indicated in our original Decision (p. 6 n. 5), the Appellant’s argument relates to the manner in which reexamination has been conducted and was therefore reviewable only by a timely-filed petition. Contrary to the Appellant’s belief, the Board is not charged with reviewing the timeliness of an examiner’s action. Such a matter should have been proactively addressed at an early stage by way of a timely-filed petition. The Appellant failed to do so. Neither the statutes nor the legal precedents on which the Appellant relies (Req. Reh’g 3) confer any jurisdiction on the Board for reviewing the timeliness of examiners’ actions in reexaminations, much less the authority Appeal 2009-015244 Reexamination Control 90/006,844 Patent 5,314,630 3 to terminate reexaminations based on such reviews. Cf. Clarification on the Procedure for Seeking Review of a Finding of a Substantial New Question of Patentability in Ex Parte Reexamination Proceedings, 75 Fed. Reg. 36357 (June 25, 2010) (delegating Director’s authority to review issues related to an examiner’s determination that a reference raises a substantial new question of patentability to the Chief Administrative Patent Judge, who may further delegate such authority to a panel of administrative patent judges, and explaining that petitions to vacate an ex parte reexamination order as ultra vires are not decided by the Board). Contrary to the Appellant’s belief, the procedures in place for seeking redress on this matter are not inconsistent with the statutes. For these reasons, we decline to address the merits of the Appellant’s arguments based on the “special dispatch” provision of 35 U.S.C. § 305. II. Jepson Preamble of Claim 1 The Appellant concedes that “the preamble of claim 1 is not limited to the Microfloc Trident” (Req. Reh’g 7). The Appellant argues, however, that if the scope of the preamble includes Thompson, “such is no avail as Thompson [col. 7, ll. 33-54; col. 12, ll. 35-48] expressly teaches to fluidize both non-buoyant and buoyant media beds during washing” (Req. Reh’g 8). The Appellant’s argument is unavailing. The cited portions of Thompson’s disclosure, while exemplary, are not limiting. Furthermore, a person of ordinary skill in the art would have at least drawn a reasonable inference that the additional filtration stage in Thompson would reasonably be expected to enhance effluent quality. When combined with other relevant Appeal 2009-015244 Reexamination Control 90/006,844 Patent 5,314,630 4 teachings of the prior art, we conclude that a person of ordinary skill in the art would have been led to supplement an existing filtration device operating at sub-fluidization conditions with an additional filter, as shown in Thompson, to further enhance filtration. In re Keller, 642 F.2d 413, 425 (CCPA 1981). III. EPA The Appellant contends that EPA teaches away from the claimed invention because “EPA expressly teaches that combined liquid and air is to be avoided where you have graded gravel due to the danger of moving gravel and thereby upsetting the desired size stratification” (Req. Reh’g 8). The teachings of EPA, which constitute part of the basis of our obviousness conclusion, have already been addressed extensively in both the Examiner’s Answer as well as our original Decision and need not be repeated. IV. Claims 11 and 19 The Appellant contends that we “misapprehended the prior art as none of the information relied upon by the Examiner teaches, suggests or provided any common sense reason for modifying any prior art device to achieve the claimed invention . . .” (Req. Reh’g 11). The Appellant is incorrect. See, e.g., FF 1-20 as well as the discussion at page 23 of the original Decision. Appeal 2009-015244 Reexamination Control 90/006,844 Patent 5,314,630 5 DECISION While we have reconsidered certain aspects of our original Decision in light of Appellant’s arguments, we decline to modify our original Decision in any respect. DENIED bim FOR PATENT OWNER: MEREK, BLACKMON & VOORHEES, LLC 673 S. WASHINGTON ST. ALEXANDRIA, VA 22314 FOR THIRD-PARTY REQUESTER: HUGHES LAW FIRM, PLLC 5160 INDUSTRIAL PLACE #107 FERNDALE, WA 98248-7819