Ex Parte Barani

Board of Patent Appeals and Interferences

Aug 24, 2011

10503623 (B.P.A.I. Aug. 24, 2011)

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.
10/503,623 02/11/2005 Corrado Barani 4235.412 1368
7590 08/25/2011
Liniak Berenato & White
6550 Rock Spring Drive
Suite 240
Bethesda, MD 20817
EXAMINER
CHORBAJI, MONZER R
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
08/25/2011 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 CORRADO BARANI
____________________

Appeal 2011-001164
Application 10/503,623
Technology Center 1700
____________________

Before ROMULO H. DELMENDO, SALLY G. LANE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001164
Application 10/503,623

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
10-21. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellant’s invention is directed to a water-chlorinating device.
(Spec. 1, ll. 10-11.)
Claim 10, reproduced below, is illustrative of the claimed subject
matter:
10. A method of chlorinating water comprising:
positioning a solid chemical chlorinating substance on
supporting means of a water chlorinating device, the water
chlorinating device comprising a vessel having a hold portion
for chlorinated water, the supporting means located on the hold
portion, water dispersion means located over the hold portion,
and mixing means comprising spraying means located at the
hold portion;
directing a first jet of water, which is emitted by the
water dispersion means, on to the supporting means and the
solid chemical chlorinating substance;
emitting a second jet of water from the spraying means to
agitate the chlorinated water in the hold portion;
drawing the chlorinated water from the vessel; and
maintaining the level of the chlorinated water in the hold
portion substantially between a maximum level and a minimum
level, which is lower than the maximum level.
(Appeal Brief 14, Claims Appendix1.)

1 Appeal Brief filed February 3, 2010, hereinafter “App. Br.” and Claims
App’x, respectively.
Appeal 2011-001164
Application 10/503,623

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THE REJECTIONS
I. The Examiner rejected claims 10-19 under 35 U.S.C. § 103(a) as
unpatentable over Levesque et al (US 5,928,608, issued July 27,
1999) in view of Evans (US 2,378,134, issued June 12, 1945).
(Examiner’s Answer, dated August 20, 2010, hereinafter “Ans.” 4-
10.)

II. The Examiner rejected claims 20 and 21 under 35 U.S.C. § 103(a)
as unpatentable over Levesque in view of Evans as applied to
claims 13 and 18 and further in view of Behrendt et al (US
4,009,104, issued February 22, 1977). (Ans. 11-12.)

ISSUE
Appellant argues that the Examiner erred in determining it would have
been obvious to one of ordinary skill in the art at the time of the invention to
combine the method in Levesque with the feed pipe e and perforated coil e1
of Evans in order to facilitate the concentration of the solution to be
regulated at will by varying the proportions of the additions of the solvent.
(App. Br. 9; see Ans. 5.)
Appellant argues that the concentration of the brine solution in Evans
is regulated in the second container b, and not in the container a via the feed
pipe e and perforated coil e1, as alleged by the Examiner. (Reply Brief, filed
August 11, 2010, hereinafter “Reply Br.” 3; see Ans. 4-5.) Appellant
argues, therefore, that because “Evans does not teach the function of
regulating the concentration of a solution via” the feed pipe e and perforated
coil e1, such teaching cannot be relied upon by the Examiner to support an
obviousness determination. (Reply Br. 3.)
Thus, the dispositive issue on appeal is:
Appeal 2011-001164
Application 10/503,623

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Whether the Examiner erred in determining that it would have been
obvious to use Evans’ feed pipe and perforated coil in the method of
Levesque to facilitate the concentration of the solution to be regulated at
will?
PRINCIPLES OF LAW
The examiner bears the initial burden of factually supporting any
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). The key to supporting any prima facie case of obviousness under
35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed
invention would have been obvious. The Supreme Court in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) noted that the analysis supporting a
rejection under 35 U.S.C. § 103 should be made explicit. “‘[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’” KSR, 550
U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
Upon evaluating the evidence of record, we cannot agree with the
Examiner’s determination that it would have been obvious to use Evans’
feed pipe e and perforated coil e1 in the method of Levesque to facilitate the
concentration of the solution to be regulated at will. Evans discloses that the
combined function of the feed pipe e and the perforated coil e1 is to produce
saturated brine in a first container a, which contains submerged salt. (Pg. 1,
Left Col., ll. 41-55; Fig. 1.) Evans discloses that the regulation over solution
concentration occurs in Evans’ second container b. (Pg. 1, Right Col., ll. 3-
Appeal 2011-001164
Application 10/503,623

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19; Fig. 1.) Because the regulation over solution concentration is not
accomplished by the feed pipe e and the perforated coil e1, we agree with
Appellant (App. Br. 9, 12) that the Examiner’s rationale is not supported by
Evans and is therefore insufficient to establish a prima facie case of
obviousness as to appealed claims 10-19. Thus, we reverse the Examiner’s
rejection of claims 10-19 and for similar reasons, we reverse the Examiner’s
rejection of claims 20 and 21. With respect to claims 20 and 21, the
Examiner does not provide any additional rationale as to how Behrendt
would remedy the deficiencies in the proposed combination of Levesque and
Evans.
CONCLUSION
Appellant has demonstrated that the Examiner reversibly erred in
determining that it would have been obvious to use Evans’ feed pipe and
perforated coil in the method of Levesque to facilitate the concentration of
the solution to be regulated at will.

DECISION
We reverse the Examiner’s rejection of claims 10-19 under 35 U.S.C.
§ 103(a) as unpatentable over Levesque in view of Evans.
We reverse the Examiner’s rejection of claims 20-21 under 35 U.S.C.
§ 103(a) as unpatentable over Levesque in view of Evans as applied to
claims 13 and 18 and further in view of Behrendt.

REVERSED

rvb