Ex Parte Adami et al

Patent Trial and Appeal Board

Aug 29, 2018

13981814 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/981,814 08/25/2013
66991 7590 08/30/2018
LAW OFFICE OF MICHAEL A. SANZO, LLC
15400 CALHOUN DR.
SUITE 125
ROCKVILLE, MD 20855
FIRST NAMED INVENTOR
Walter Adami
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
7601/13070 8966
EXAMINER
OLIVERA, ANGEL J
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
08/30/2018 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 WALTER ADAMI, HUBERT ANGERT, BERNHARD KONIG,
STEFFEN KRUCK, FRANK DIETER KUHN,
MARTIN LIETZENMA YER, EGON WALZER,
CORINNA SCHMIDT, and NOBUHIRO MURAOKA 1
Appeal2017---006168
Application 13/981,814
Technology Center 1700
Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and
MONTE T. SQUIRE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 11-16 and 20-31 (claim 28 is objected
to). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
1 Appellants identify the real party in interest as Evonik Degussa GmbH and
Katayama Chemical, Inc. Appeal Brief 2.
Appeal2017---006168
Application 13/981,814
STATEMENT OF THE CASE
Claim 11 is illustrative of Appellants' subject matter on appeal and is
set forth below (with text in bold for emphasis):
11. A device for reducing the content of hydrogen peroxide
and peracetic acid in a water stream, comprising:
a) a first measuring device for determining the flow
rate of said water stream;
b) a second measuring device for determining the
concentration of hydrogen peroxide in said water stream;
c) a third measuring device for determining the
concentration of peracetic acid in said water stream;
d) an additional measuring device for determining the
salinity in said water stream;
e) a metering device for metering a reducing agent
into said water stream downstream of the second and third
measuring devices; and
f) a control device which, from the flow rate of said
water stream, the concentration of hydrogen peroxide in said
water stream, the concentration of peracetic acid in said water
stream and the salinity, calculates an amount of reducing agent
for reducing the content of hydrogen peroxide and peracetic
acid to a desired value and actuates the metering device for
metering the reducing agent.
The Examiner relies on the following references as evidence of
unpatentability:
McVey
Pace
Fernandez
Kim
Kim
US 2003/0209450 Al
US 7,189,314 Bl
US 7,244,348 B2
US 2011/0114569 Al
WO 2010/011040
Nov. 13, 2003
Mar. 13, 2007
July 17, 2007
May 19, 2011
Jan.28,2010
International Maritime Organization (hereafter, "IMO"), Harniful
Aquatic Organisms in Ballast Water, November 18, 2010.
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Appeal2017---006168
Application 13/981,814
THE REJECTION
Claims 11-15, 20-24, 26, 27, and 29-31 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over IMO, in view of Mc Vey,
Pace, and Kim.
ANALYSIS
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports Appellants' position for the reasons provided by Appellants in the
record, and we thus reverse the Examiner's rejection. We add the following
for emphasis.
Claim interpretation is in dispute in this case. Appellants explain that
claim 11 (as well as each of claims 20, 29, and 30) recites that the device for
metering the reducing agent is downstream from the measuring devices for
determining the concentrations of hydrogen peroxide and peracetic acid.
Appeal Br. 18-19. Thus, Appellants submit that the claims implicitly
require a feed forward control for actuating the metering device because of
this configuration for the reasons expressed in the record by Appellants,
highlighted below.
Appellants explain that in feed forward control ( as in the present
claims), the actuating device is controlled based on a measurement made
upstream of the actuating device or made before the actuating device acts.
As a result, Appellants state that the measured value cannot be affected by
the operation of the actuating device. Appeal Br. 18. Thus, Appellants
submit that the applied art does not teach or suggest this aspect of the claims.
Appeal Br. 19.
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Appeal2017---006168
Application 13/981,814
The Examiner does not adequately address this specific explanation
made by Appellants regarding claim interpretation. See Answer generally.
For the reasons expressed by Appellant in the record, we agree with
Appellants that the configuration recited in the claims requires feedforward
control.
Additionally, the Examiner believes that the system of the IMO
reference operates on feedforward control for the reasons stated on page 18
of the Final Office Action, first paragraph, which we do not repeat herein.
Appellants disagree that the system of the IMO reference operates on
feedforward control. Appeal Br. 18-20. Appellants point out that the IMO
reference only teaches determining the volume of neutralizer injection for
de-ballasting by the remaining concentrations of active substances, without
considering the ballast water flow rate. Appeal Br. 20.
Appellants explain that controlling addition of a material to a flow
system based only on concentration measurements, but not flow rate, is only
possible with a feedback control system, and thus a person skilled in the art
would construe the expression "remaining concentrations of active
substances" in the IMO reference as referring to concentrations remaining in
the ballast water after addition of the neutralizer, measured downstream of
the neutralizer injector by PAA concentration meter 13. Appeal Br. 20.
Notably, in response, the Examiner does not resolve these points
raised by Appellants regarding the absence of any teaching in the IMO
reference of means for measuring the flow rate. Ans. 13-14. In the Reply
Brief, Appellants note that the Examiner has not considered the Appeal Brief
argument that an essential element needed for feed forward control in a
system of flowing water is a knowledge of flow rate. Reply Br. 4. Appellants
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Appeal2017---006168
Application 13/981,814
explain that the reason for this is that the concentration of neutralizer in
water discharged will be determined by the amount of neutralizer added per
unit time and the volume of water that this neutralizer is in will be the
volume of water that passed by the site of addition per unit time, i.e., the
flow rate. Id. Appellants reiterate that the IMO reference does not disclose
means for measuring flow rate during deballasting and, in the absence of
such knowledge, it is impossible to determine the rate at which neutralizer
should be injected. Id. We are persuaded by such argument, and REVERSE
the rejection.
DECISION
The rejection is REVERSED.
REVERSED
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