Ex Parte Babaev

Board of Patent Appeals and Interferences

May 16, 2012

11562343 (B.P.A.I. May. 16, 2012)

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.
11/562,343 11/21/2006 Eilaz Babaev 9055
61008 7590 05/16/2012
Bacoustics, LLC
5929 BAKER ROAD
SUITE 470
MINNETONKA, MN 55345
EXAMINER
CONLEY, SEAN EVERETT
ART UNIT PAPER NUMBER
1775
MAIL DATE DELIVERY MODE
05/16/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EILAZ BABAEV
____________

Appeal 2011-002737
Application 11/562,343
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
HUBERT C. LORIN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 126-148 and objecting to the Specification. We
have jurisdiction under 35 U.S.C. § 6.

Appeal 2011-002737
Application 11/562,343

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We AFFIRM.
Appellant claims a fluid treatment device comprising a tank having at
least one ultrasound transducer within a sidewall thereof; "a plurality of
laminas located at least partially in a laminar flow region of the tank; and the
ultrasound transducer also located so that the ultrasonic waves are emitted
into the laminar flow region" (independent claim 126; see also independent
claim 148).

Representative claim 126 reads as follows:
126. A fluid treatment device comprising:
a tank having a sidewall;
an inlet pipe for supplying a fluid into the tank;
an outlet pipe for removing the fluid;
at least one ultrasound transducer within the sidewall
emitting ultrasonic waves at a frequency and an amplitude to
produce cavitation within the fluid in the tank;
a plurality of laminas located at least partially in a
laminar flow region of the tank; and
the ultrasound transducer also located so that the
ultrasonic waves are emitted into the laminar flow region of the
tank.

The Examiner objects to the Specification as containing new matter
and rejects claims 126-148 under 35 U.S.C. § 112, 1st paragraph, as failing
to comply with the written description requirement (Ans. 3-4). The
objection and rejection are both premised on the Examiner's position that
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Application 11/562,343

3
new matter has been introduced by the newly added recitation which states
laminas are located "at least partially" in a laminar flow region of the tank
(id.).1 According to the Examiner, Appellant's original Specification
disclosure teaches laminas located in a laminar flow region of the tank but
fails to teach an embodiment wherein some of the laminas are not located in
a laminar flow region in the tank (id. at 7-11).
We cannot sustain the Examiner's objection to the Specification and
§ 112, 1st paragraph, rejection of the appealed claims. As correctly argued
by Appellant, Specification paragraph [0055] discloses that laminas within
tank 101 flow into outlet pipes 401, 402, and 403 as depicted in Figure 4
(App. Br. 9-12; Reply Br. 4-5). This disclosure would convey to an artisan
that some laminas are located in a laminar flow region of the tank while
others are not (i.e., the other laminas are located in outlet pipes 401, 402, and
403). Accordingly, the above disclosure provides written description
support for the newly added recitation that laminas are located "at least
partially" in a laminar flow region of the tank.

The Examiner also rejects claims 126-146 and 148 under 35 U.S.C. §
102(b) as anticipated by Babaev (US 5,611,993, issued Mar. 18, 1997) and
rejects claim 147 under 35 U.S.C. § 103(a) as unpatentable over Babaev.
Both of these rejections are based on the Examiner's finding that Babaev's
fluid treatment device is capable of forming in the tank a laminar flow

1 Because the alleged new matter affects both the Specification and
the claims, the Examiner's objection to the Specification is an appealable
issue. See Manual of Patent Examining Procedure § 608.04(c) (Rev., July
2008).
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Application 11/562,343

4
region with laminas and emitting ultrasonic waves into this laminar flow
region as recited in independent claims 126 and 148 (Ans. para. bridging 4-
5, 11-14). Similarly, these rejections are based on the Examiner's
interpretation that the independent claims define a device and that the
aforenoted claim recitation concerning a laminar flow region is functional
recitation of intended use rather than a structural component of the device
(id.).
Appellant does not contest with any reasonable specificity the
Examiner's capability finding. However, Appellant affirmatively disagrees
with the Examiner's claim interpretation. Specifically, Appellant argues that
the recitation "a plurality of laminas located at least partially in a laminar
flow region of the tank" (independent claims 126 and 148) "is clearly a
structural limitation" (App. Br. 14). According to Appellants, "the laminas
are physical structures within a fluid, [and] the fluid is a claimed component
of the invention" (Reply Br. 7).2
The pivotal issue raised by the above contentions is whether the
appealed claims should be interpreted as defining a fluid treatment device by
itself as urged by the Examiner or a fluid treatment device in combination
with fluid having a laminar flow region with laminas as urged by Appellant.
In resolving this issue, we observe that Appellant fails to show or even
allege that the Examiner's broader claim interpretation is unreasonable and
inconsistent with their Specification. Under these circumstances, we adopt

2 Appellant does not present separate arguments regarding the
dependent claims including separately rejected dependent claim 147. As a
consequence, the dependent claims on appeal will stand or fall with their
parent independent claims.
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Application 11/562,343

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the Examiner's claim interpretation as our own. See In re Morris, 127 F.3d
1048, 1055-56 (Fed. Cir. 1997) (stating that the PTO gives claims their
broadest reasonable interpretation and that the PTO's interpretation is not
made unreasonable simply because appellants can point to definitions or
usages that conform to their interpretation).
When given the broadest reasonable interpretation consistent with the
Specification, representative independent claim 126 defines a device which
is structurally indistinguishable from the device disclosed by Babaev for the
reasons expressed above and in the Answer. We sustain, therefore, the
Examiner's § 102 and § 103 rejections of the appealed claims.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a).

AFFIRMED

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