11456463 (B.P.A.I. Jun. 30, 2011)

Ex Parte Bahler

Board of Patent Appeals and InterferencesJun 30, 2011

11456463 (B.P.A.I. Jun. 30, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte CARLENE T. BAHLER __________ Appeal 2010-006580 Application 11/456,463 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 the final rejection of claims 1-20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellant’s invention is directed to a portable water treatment model (Spec. 6). Appeal 2010-006580 Application 11/456,463 2 Claim 1 is illustrative: 1. A portable water treatment physical model, comprising: a physical simulation of a water source; a physical simulation of a drinking water treatment plant for simulating treatment of water from the simulation of the water source; and a physical simulation of a wastewater treatment plant coupled to the simulation of the drinking water treatment plant for simulating treatment of wastewater. Appellant appeals the following rejections: 1. Claims 11, 12, and 14 are rejected under 35 U.S.C. § 102(b) as being unpatentable over Reichling (GB 2,007,637 A, pub. May 23, 1979). 2. Claims 15-17, and 19 are rejected under 35 U.S.C. § 102(b) as being unpatentable over Paston (GB 2,392,909 A pub. March 17, 2004). 3. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Reichling in view of Ayukawa ‘542 (US Patent 4,066,542 issued Jan. 3, 1978) and Pincon (US Patent 4,214,962 issued Jul. 29, 1980). 4. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Paston. 5. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Paston in view Ayukawa ‘377 (US Patent 4,097,377 issued Jun. 27, 1978) and Pincon. 6. Claims 1-10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Reichling in view of Paston. DISPOSITVE ISSUE Did the Examiner reversibly err in construing “simulation” or “simulating” of claims 1, 15, and 18 as inclusive of the water treatment Appeal 2010-006580 Application 11/456,463 3 devices of Reichling and Paston that actually operate to treat water? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSES Finding that the Specification does not define “simulation” or “simulate”, the Examiner determines that the broadest reasonable construction of “simulation” is “‘the act of imitating the behavior of some situation or some process by means of something suitably analogous” and the broadest reasonable construction of “simulate” is “[to] create a representation or model of’” (Ans. 16). The Examiner reasons that different types of simulations imitate or represent a system or process to varying degrees of accuracy with better simulations more closely representing the actual functioning of the of the device or process being simulated (Ans. 16). The Examiner finds that the best simulation of a water treatment system or process is an actual system or process (Ans. 16). Based on this analysis, the Examiner interprets “model” as a scaled down transportable version of a municipal treatment facility and “simulation” as including actually recreating the functioning of municipal treatment facilities, only on a smaller scale (Ans. 16). Based on this claim construction, the Examiner contends that Reichling’s actual water treatment device or Paston’s actual treatment of wastewater and sewage is capable of simulating water treatment processes when operated (Ans. 16, 18). Appellant argues that the term “simulated” as used in the claims does not include actual water treatment plants or sewage treatment plants (App. Br. 9). Appellant contends that the “simulations” of the claims when Appeal 2010-006580 Application 11/456,463 4 properly construed to be consistent with the Specification are made to look genuine, but are fake (App. Br. 9). We agree. Though the Examiner is correct that the Specification does not formally define the term “simulations”, the construction applied for the disputed claim term must be consistent with the Specification. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). See also, Medrad Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005), omitting internal citations.(“We cannot look at the ordinary meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history.”). As argued by Appellant, the Specification describes a model for water treatment that depicts various features of a terrain such as roads, farmland, houses, pipes, and buildings (App. Br. 6-7; Spec. 10). The Specification further describes that model is used to demonstrate how pretend wastewater is treated by either municipal wastewater treatment devices or private septic systems (Spec. 12). The Specification states that “wastewater” made of a mixture of cocoa powder, water and rice grains is added to the piping of the model to simulate wastewater treatment (Spec. 12-13). Though the Specification does state that the embodiments contained therein are not limiting, this statement is further modified by the statement that “[v]arious substitutions, modifications, additions, and/or rearrangements within the spirit and/or scope of the underlying inventive concept will become apparent to those skilled in the art from this disclosure” (Spec. 6, emphasis added). We understand this broadening language to be in the context of variations to the “underlying concept” of Appellant’s invention, which is to use a pretend imitation to demonstrate water treatment. Appeal 2010-006580 Application 11/456,463 5 Accordingly, “simulations” or “simulating” when properly construed mean a genuine looking but pretend imitation of a water treatment process. The Examiner’s construction of “simulations” or “simulate” that includes an actual water treatment apparatus or process is not consistent with the Specification. Accordingly, the Examiner’s rejections based on the actual water treatment devices of Paston and/or Reichling as satisfying the claimed apparatus and methods must be reversed because all of the rejections are premised on this faulty claim construction. We reverse all of the rejections. DECISION The Examiner’s decision is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. ORDER REVERSED ssl