Ex Parte 7390340 et al

Patent Trials and Appeals Board

Jun 27, 2019

90013835 - (R) (P.T.A.B. Jun. 27, 2019)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/013,835 10/17/2016 7390340 076777-000003 6618
91887 7590 06/28/2019
Capitol Patent & Trademark Law Firm, PLLC
P.O. BOX 1995
Vienna, VA 22183
EXAMINER
JASTRZAB, KRISANNE MARIE
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
06/28/2019 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 ENHANCED SYSTEMS & PRODUCTS, INC.,
Patent Owner and Appellant
____________

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Reexamination Control 90/013,835
Patent 7,390,340 B1
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
WESLEY B. DERRICK, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON REHEARING

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Enhanced Systems & Products, Inc. (“Appellant”), the owner of the
patent under reexamination (hereinafter “the ’340 Patent”), requests
rehearing of our Decision on Appeal mailed March 28, 2019 (hereinafter
“Decision”), in which we affirmed the Examiner’s final rejection of claims
1–7 (Request for Reconsideration/Rehearing filed May 28, 2019, hereinafter
“Request” 1–2).
In particular, Appellant contends that the Board has misapprehended
and/or overlooked:
1. The Board has not provided factual findings and legal
conclusions regarding its interpretation of the claim terms “soil
vent stack” in claims 1 to 7 and “differential pressure gauge
associated with differential pressure gauge associated with the
conduits of each housing” in claims 2 and 7;
2. The Board has not set forth a preponderance of evidence
establishing the level of skill in the art;
3. The Board has not set forth a preponderance of evidence
establishing that the Pittman1 and Mason2 references are
analogous art;
4. The Board has not set forth a preponderance of evidence to
sustain the rejection of claims 1–7 based on the combined
teachings of a statement from the ’340 application, Mason and
Pittman;

1 U.S. Patent No. 5,064,454, issued November 12, 1991.
2 U.S. Patent No. 5,424,042, issued June 13, 1995.
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5. The Board has not provided factual findings and legal
conclusions regarding whether or not the valves in the Pittman
reference are “equivalent” to structure that corresponds to the
claimed “valve means”;
6. The Board has not provided factual findings and legal
conclusions regarding whether the combination of a soil vent
stack, Mason and Pittman is permissible given the intended
purpose of a soil vent stack, Mason and Pittman;
7. The Board has not set forth a preponderance of evidence to
sustain the rejection of claims 2 and 7 based on the combined
teachings of Mason and Pittman; and
8. The Board has not provided factual findings and legal
conclusions regarding whether the present re-examination
proceeding was properly instituted.
Further, Appellant argues:
9. The Board has set forth a new ground of rejection in sustaining
the Specialist’s findings of the level of skill in the art; and
10. The Board has set forth a new ground of rejection in sustaining
the Specialist’s findings that sustain the rejection of claims 1–7
based on the combined teachings of a statement from the ’340
application, Mason and Pittman.
(Request 1–2.)

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REHEARING STANDARD
At the outset, we emphasize that according to 37 C.F.R. § 41.52(a)(1):
The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked by
the Board. Arguments not raised, and Evidence not previously
relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not
permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section.

37 C.F.R. § 41.52(a)(2) permits new argument based on a recent
relevant decision of the Board or Federal Court. 37 C.F.R. § 41.52(a)(3)
permits new argument responding to a new ground of rejection under
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.52(a)(4) permits new argument that
the Board’s decision contains an undesignated new ground of rejection.
It is against this backdrop, that we evaluate Appellant’s request for
rehearing.

DISCUSSION
Point 1
Appellant argues that the Decision did not interpret “soil vent stack”
or “differential pressure gauge associated with the conduits of each housing”
and as a result, requests reconsideration of the Decision. (Request 2–4.) We
are not persuaded that we misapprehended or overlooked any aspects with
respect to these limitations. Appellant does not identify what portion of the
construction of these terms that the Decision misapprehended or overlooked
that would require further interpretation.

Points 2 and 9
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Patent Owner contends that the Decision does not establish the
appropriate level of one of ordinary skill in the art and at the same time, that
the Decision sets forth new facts and rationales to sustain the Examiner’s
position on the level of skill in the art. (Request 8–10, 13–15.) We are not
persuaded that we misapprehended or overlooked any aspects with respect to
the level of skill in the art. The Decision discusses the appropriate level of
skill in the art. (Decision 4–6.) Appellant does not identify a particular
feature of a “soil vent stack” that would result in a level of skill in the art
different from that identified in the Decision. The ’340 Patent itself does not
provide any particular details of a “soil vent stack.” Thus, although
Appellant contends that the Examiner and the Board only focus on the
filtration aspects of the claims, and not the soil vent stack features, we do not
see any grounds in that focus for determining that we misapprehended or
overlooked the level of skill in the art, because that is the focus of the ’340
Patent itself, as well as the entered declaration evidence in the form of the
Monetti Declaration.3
With respect to Point 9, we do not agree that a new ground of
rejection was introduced in the Decision by merely pointing out the
consistency of the statements in the Monetti Declaration regarding the level
of skill in the art with the Examiner’s position that the prior art cited
provided sufficient evidence of the level of skill in the art. (Request 13–14.)
The Decision still relies on the Examiner’s position that the prior art cited
provided sufficient evidence of the level of skill in the art, and cited the

3 Declaration of Robert Monetti dated April 16, 2017, and attachments
thereto (Ex. i).
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Monetti Declaration only as ancillary evidence that the Examiner’s
determination was correct. See In re Leithem, 661 F.3d 1316, 1320 (Fed.
Cir. 2011) (“[t]he thrust of the Board's rejection changes when, as here, it
finds facts not found by the examiner regarding the differences between the
prior art and the claimed invention, and these facts are the principal evidence
upon which the Board's rejection was based.”)

Point 3
Appellant requests that the Board reconsider the determination that
Mason and Pittman are analogous art. (Request 4–8.) Although Appellant
argues that it was erroneous for the Decision to take into consideration the
disclosure of the ’340 Patent in determining whether Mason or Pittman are
reasonably pertinent to the claimed invention, we are not persuaded that we
misapprehended or overlooked that one of ordinary skill in the art would
have found Mason and Pittman, both of which disclose filtration apparatus,
to be reasonably pertinent to the cleaning and maintenance of filtration
apparatus in soil vent stacks. (Decision 16–17.) We also have already
considered Appellant’s arguments with respect to Pittman and the
removability of the filter units, as well as Appellant’s arguments regarding
operation of Mason and Pittman at negative pressure. (Id.; Request 7–8.)
Thus, Appellant’s arguments are not persuasive.

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Points 4 and 10
Appellant contends that the combination of the AAPA4 from the ’340
Patent, Mason, and Pittman is not sufficient to present a prima facie case of
obviousness. (Request 18.) In addition, Appellant contends that it has not
been explained how one of ordinary skill in the art would have modified
Mason and Pittman to be compatible with a soil vent stack. (Request 19–
20.) Appellant argues that it is pure speculation that Mason’s control system
would be compatible with a soil vent stack. (Request 20–23.)
Appellant also argues that the Board has relied on different rationales
from the Examiner regarding Mason’s disclosure of negative pressure, such
that Board has raised a new ground of rejection. (Request 22–25.) In
particular, Appellant quotes our discussion of Mason in the Decision as
being a different rationale that should be designated as a new ground.
(Request 23–24, quoting Decision 17–18.)
We are not persuaded that we misapprehended or overlooked any
points in concluding that the Examiner established a prima facie case of
obviousness. As the Decision explains, the Examiner found that Mason and
Pittman discloses the filter apparatus recited in the claims, and that in view
of the AAPA in the ’340 Patent that filtration devices in a plumbing systems
are used in soil vent stacks, one of ordinary skill in the art would have

4 To the extent Appellant’s position in FN3 (Request 18) is that the AAPA in
the ’340 Patent is not work of another and therefore not prior art, this is not a
point that was misapprehended or overlooked, because it was not previously
argued. In addition, Appellant does not directly state that the application of
filtration apparatus to soil vent stacks was not known in the art, but rather
emphasizes that the filtration apparatus in the ’340 Patent is an improvement
over what was known in the art.
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applied the filtration apparatus of Mason and Pittman in a soil vent stack.
(Decision 7–9.) The Decision discussed why it was not an error to rely on
the AAPA in the ’340 Patent, and that the cited portion was sufficient to
support the Examiner’s position in combination with Mason and Pittman.
(Decision 11–12.)
The Decision is not based on “speculation” and there is no “gap” as
argued by Appellant, but rather, the Decision relies on the express disclosure
in the AAPA that filtration systems in plumbing are used in soil vent stacks.
Regarding the use of negative pressure, the Decision discusses the disclosure
of negative pressure in Mason with reference to the capability of operation
in a soil vent stack system. (Decision 17–18.) Thus, we did not
misapprehend or overlook and points in considering the obviousness of the
combined disclosure and capability of the resulting apparatus to function in
conjunction with a soil vent stack.
Moreover, with respect to Point 10, we do not view the discussion of
Mason on pages 17–18 of the Decision as raising a new ground of rejection,
but rather a response to Appellant’s argument that the disclosure of negative
pressure via the fan in Mason does not mean that the off-gas cleaning system
is incapable of operating at pressures with a soil vent stack. (Appeal Br. 34.)

Point 5
Appellant argues that the Decision does not set forth adequate factual
findings to support the position that Pittman’s valves are equivalent to the
claimed valve means. (Request 26–28.) Appellant repeatedly emphasizes
Pittman’s silence on whether the valves allow provide the function of
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controlling or precluding the flow of gas or liquid to the housing “so that at
least one filter means can be removed or replaced.” (Request 28–35.)
Appellant argues that the Decision engages in complete “speculation” that
the valves in Pittman would allow for the replacement of filters. (Request
35.)
We are not persuaded that we misapprehended or overlooked points
with respect to the ability of the valves and Pittman to close off the filter
units to allow for replacement. The Decision discusses in detail how the
pneumatic valves disclosed in Pittman read on the “valve means” recited in
the claims. (Decision 6–7, 12–15.) The Decision discusses that the
pneumatic valves disclosed in Pittman are used to “isolate” the filters. (Id.,
citing Pittman, col. 2, ll. 23–24; col. 4, ll. 41–43.) We are not persuaded that
the mere silence in Pittman as to whether the filters can be removed or
replaced means that the disclosed pneumatic valves may not be capable of
performing this function. In this regard, we considered Appellant’s
declaration testimony regarding the disclosure of back-up filter units in
Pittman, as well as the position that the pneumatic valves in Pittman are
knife edge gate valves and found it to be unpersuasive.5 Thus, we have not
been apprised of what was misapprehended or overlooked from Pittman’s
disclosure.

5 Appellant concurrently filed an “Offer of Proof” to preserve the right to
rely on un-entered evidence on appeal. (Request 30.) We do not
substantively comment on this evidence as it was twice denied entry in
Petition Decisions dated January 8, 2019, and July 5, 2018, and is thus not
before us on appeal. See also 37 C.F.R. § 41.33 for guidance on admission
of affidavits and other Evidence after appeal.
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Point 6
Appellant argues that the Board’s statements in the Decision
regarding the combination of the soil vent stack, Mason, and Pittman would
render the references unsatisfactory for their intended purposes is inaccurate.
(Request 42–45, quoting Decision 14–15.) Appellant contends that the
Decision misapprehended or overlooked that a soil vent stack structure with
a filtration apparatus operates at a pressure that does not exceed plus or
minus one inch of water column, aided by gravity, in a bi-directional
manner, and would not function or operate as intended in the presence of
negative pressures that are in excess of such a neutral or ambient pressure
required by Mason and Pittman, and using the unidirectional valves of
Pittman. (Request 42–43, citing entered evidence Monetti Decl. ¶¶ 10–13
and National Standard Plumbing Code Illustrated,6 p. 269.) Appellant
contends that there is no evidence that the modifications in the rejections
would have been known or adopted by one skilled in the art, such that the
obviousness conclusion is pure speculation, an issue that is separate from the
Pittman’s valves. (Request 43–44.) Appellant argues that Pittman is
completely silent with respect to the functioning of the valves during
removal of the filters, which is insufficient for one of ordinary skill in the art
to conclude that the function of the valves is identical to completely closing
off the inlet and outlets of a housing in order to control or preclude the flow
of gas or liquid to a housing so that one or more HEPA filters can be
removed or replaced. (Request 44.) Appellant argues that the evidence

6 2003 National Standard Plumbing Code Illustrated (Ex. ii).
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shows that one of ordinary skill would recognize would be prone to leaking.
(Request 45.)
We are not persuaded that we misapprehended or overlooked any
aspect of Appellant’s arguments in the Decision. Despite Appellant’s
arguments to the contrary, it is clear that the evidence of record focuses on
the inability of Pittman’s valves to be closed to the flow of vapor or gas.
(Monetti Decl. ¶¶ 18–22, 28.) We observe that Appellant’s citations to
evidence in the Request do not discuss with sufficient particularity and
provide support for Appellant’s argument regarding Mason and Pittman as
disclosing “unidirectional” valves and the inability Pittman’s valves to
handle “bi-directional” flow. For example, the Monetti Declaration, in the
paragraphs referenced by Appellant, discusses Pittman’s valves and whether
they are able to close off the inlets or outlets to preclude air flow. (Monetti
Decl. ¶¶ 10–11.) Paragraphs 12 and 13 of the Monetti Declaration are
simply a description of Mason’s disclosure. Page 269 of the National
Standard Plumbing Code simply discusses the pneumatic pressure
differential in trap seals. We also addressed Appellant’s arguments
regarding Pittman’s valves being knife edge gate valves and not performing
the function of precluding the flow of gas or vapor as being unsupported by
objective evidence. (Decision 14.)
In the Decision, we addressed Appellant’s arguments pertaining to the
operation of Mason and Pittman at negative pressure relative to the operation
of a soil vent stack. (Decision 17–19.) As expressed in the Decision, we are
not persuaded by the evidence of record that the valves in Pittman would be
incapable of providing the required function recited in the claims as
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discussed in the Decision. Contrary to Appellant’s contentions, our
conclusions are not based on “speculation,” but rather on the express
disclosure in Pittman that the valves isolate the filter units.

Point 7
Appellant contends that the Board has not set forth a preponderance of
evidence in order to sustain the rejection of claims 2 and 7 over the
combined teachings of Mason and Pittman, particularly the rejection of
claim 2. (Request 46–48.)
As to claim 2, Appellant relied on the same arguments as presented
for claim 7 in the Appeal Brief. (Appeal Br. 46.) As we stated in the
Decision, we selected claims 1 and 7 to be representative of the arguments
made by Appellant. (Decision 11.) Thus, we did not misapprehend or
overlook arguments for claim 2, but rather, just as Appellant, selected claim
7 to be representative of the arguments made for claim 2.
Regarding claim 7, we did not misapprehend or overlook any aspects
related to claim 7. In particular, although Appellant argues that the Decision
does not address whether a pressure differential gauge is associated with at
least one housing (Request 47–48), as the portion of the Decision quoted by
Appellant states, “it would have been obvious to have applied pressure
gauges as disclosed in Pittman to the filters of the off-gas cleaning and
control system disclosed in Mason.” (Request 46, quoting Decision 19–20.)
Appellant acknowledges that Mason discloses that the filters are located
within a housing. (Request 47, quoting Mason col. 16, ll. 33–38.)
Accordingly, we did not misunderstand or overlook aspects with respect to
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pressure gauges being associated with at least one housing as that is where
the filters in Mason are located.

Point 8
Appellant argues that “the Board did not address the statutory
requirement that re-examination be based on the identification and
correction of an error by the initial Examiner.” (Request 48–52, quoting
Decision 15 and citing In re Swanson, 540 F.3d 1368, 1375 (Fed. Cir.
2008).) We did not misapprehend or overlook any aspects with respect to
the reexamination standard in the Decision.
As the Federal Circuit stated in Swanson, reexamination is granted if
the PTO “determines that ‘a substantial new question of patentability
affecting any claim of the patent concerned is raised by the request.’
35 U.S.C. § 303(a).” Swanson, 540 F.3d at 1375. The court in Swanson
went on to discuss the “substantial new question of patentability” analysis,
and in the course of that discussion, the Federal Circuit explained that the
analysis focuses on whether the same “question of patentability” had been
considered by the Office. Swanson, 540 F.3d at 1375–81.
In the Decision, we stated “we agree with the Examiner that the new
art presented, which is substantively different than the prior art previously of
record, provides a proper basis in rejecting the claims. (Ans. 8.)” (Decision
15.) The existence of the statement in the ’340 Patent throughout
prosecution is not by itself inconsistent with a substantial new questions of
patentability, when the additional prior art cited, Mason and Pittman, are
different than the prior art previously applied and are directed to the cleaning
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and maintenance of filtration systems, which in combination raise a different
question of patentability then considered previously. (Decision 16 citing
(Mason, col. 1, ll. 6–14, col. 12, ll. 62–68; Pittman, col. 1, ll. 8–15, col. 4, l.
32–col. 5, l. 9).)
Thus, we did not misapprehend or overlook any aspects with respect
to Point 8 raised in the Request.

Thus, while we clarify certain points expressed in the Decision as
discussed above, we decline to make any changes to the outcome of the
Decision mailed March 28, 2019.

DENIED

FOR PATENT OWNER:
Capitol Patent & Trademark Law Firm, PLLC
P.O. Box 1995
Vienna, VA 22183

FOR THIRD-PARTY REQUESTER:
Nixon Peabody LLP
c/o Daniel J. Burnham
70 West Madison Street, Ste. 3500
Chicago, IL 60602