Ex Parte Dedieu

Patent Trial and Appeal Board

Jun 30, 2016

12297903 (P.T.A.B. Jun. 30, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/297,903 01/13/2009 Bernard Dedieu 886-013640-US (PAR) 2566
2512 7590 06/30/2016
Perman & Green, LLP
99 Hawley Lane
Stratford, CT 06614
EXAMINER
MCCORMACK, JOHN PATRICK
ART UNIT PAPER NUMBER
3743
MAIL DATE DELIVERY MODE
06/30/2016 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 BERNARD DEDIEU
____________________

Appeal 2014-004408
Application 12/297,903
Technology Center 3700
____________________

Before NEAL E. ABRAMS, JILL D. HILL, and GORDON D. KINDER,
Administrative Patent Judges.

KINDER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1–22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a method of drying sludge and devices for
implementing the method. Claim 1, the only independent claim, reproduced
below, is illustrative of the claimed subject matter:
1. A method for the drying of sludges such as sewage sludges,
liquid manure, or the output from septic tanks, by irradiation with
microwaves, wherein the sludge drying method includes:
a stage for the raising of a sealed enclosure to a set
pressure, at least by the injection of saturating water vapour [sic],
and for holding this pressure for a given length of time;
a stage for loading the sludges into a tank that is distanced
from the walls of the enclosure, with loading means that
guarantee maintenance of the pressure;
a stage for the injection of superheated steam into the
sludge by means of a mixer in action close to the wall of the tank
that is most distant in relation to the source of the microwaves,
including injection means;
a stage for heating to the centre [sic] of the sludge by the
emission of microwaves at frequencies of between 400 and 2450
MHz in the direction of the tank, this stage being executed while
mixing the sludge;
a stage for removal of the water collected by condensation
and run-off on the walls of the enclosure toward the bottom of
the enclosure, by means of a valve leading to the outside.

.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Theliander
Tomizawa
Bielfeldt
Dedieu
US 4,760,650
US 5,335,425
US 5,887,514
US 6,675,495 B2
Aug. 2, 1988
Aug. 9, 1994
Mar. 30, 1999
Jan. 13, 2004
Gutwirth EP 0 606 810 A1 Jan. 14, 1993
Egner EP 1 477 461 A1 May 14, 2003

REJECTIONS
The Examiner made the following rejections:
Claims 10–22 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 10–22 stand rejected under 35 U.S.C. § 112 second paragraph
as being indefinite.
Claims 1–4 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Egner, Dedieu, Theliander, and Gutwirth.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Egner, Dedieu, Theliander, Gutwirth, and Bielfeldt.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Egner and Dedieu.
Claims 10–21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Egner, Dedieu, Theliander, Gutwirth, and Tomizawa.

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OPINION
Rejection under § 101.

The Examiner finds that claim 10 is a hybrid claim because it is
directed to an apparatus and also includes all of the limitations of a method
claim (claim 1). Because claim 10 includes limitations both to a process and
to a machine, it is directed to more than one statutory category of invention,
and therefore is forbidden by 35 U.S.C. § 101.
The Appellant does not present argument concerning this rejection,
and it is therefore summarily affirmed.
Rejection under 35 U.S.C. § 112.
The Examiner also rejects claims 10–22 under 35 U.S.C. § 112,
second paragraph, because they encompass two statutory categories of
invention, namely a process and a machine. Appellant does not present
argument concerning this rejection, and we therefore affirm it. In doing so,
we note that hybrid claims, i.e., claims drawn to both a device and a method
for using that device, are indefinite under 35 U.S.C. § 112, second
paragraph. IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384
(Fed. Cir. 2005) (a claim to “both a system and the method for using that
system ... does not apprise a person of ordinary skill in the art of its scope,
and it is invalid” under 35 U.S.C. § 112, second paragraph); In re Katz
Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318 (Fed. Cir.
2011) (Claims “directed both to systems and to actions performed” by users
of such systems “fall squarely within the rationale of IPXL and are
indefinite.”) Because each of claims 10–22 is a hybrid claim drawn to a
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machine, as well as a method of using such machine, these claims are
indefinite under 35 U.S.C. § 112, second paragraph.
Rejection under 35 U.S.C. § 103.
Appellant argues claims 1–22 as a group. Appeal Br. 6–9. We select
claim 1 as the representative claim, and claims 2–22 will stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
As an initial matter, we note that Appellant uses the term “saturating”
water vapor as well as the term “saturated” water vapor. Indeed, Appellant
appears to use the two terms, “saturating” and “saturated”, interchangeably.
See, Appeal Br., paragraph bridging pages 6 and 7. We use the term
“saturated.” In addition, it is our understanding that “saturated water vapor”
is the same as “saturated steam,” since this refers to the state where water
vapor and liquid water are at equilibrium.1
Appellant makes four arguments in connection with the rejections of
claim 1.
Argument 1
Appellant quotes the first step of the claimed method and argues that
Egner, Dedieu, Theliander, and Gutwirth do not suggest that step. Appellant
summarizes the method disclosed in Egner, noting that Egner dries using
super-heated steam at ambient pressure and then heats with microwaves in a
separate step, the heating occurring in an oxygen-free atmosphere. Appeal

1 Definition of saturated steam: 1: water vapor in equilibrium with liquid
water at or above the normal boiling point. Available at
http://www.merriam-webster.com/dictionary/saturated%20steam (last
viewed July 9, 2016).

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Br. 6. The zones where these steps occur are separated by a trap filled with
an inert gas. Id.
The Examiner’s rejection of claim 1 was based on a combination of
Egner and Dedieu, with Dedieu relied on for its teaching of using steam
under pressure, a valve for draining condensate, and microwaves between
400 and 2450 MHz for heating the treated sludge. Final Act. 8–10.
In addressing Dedieu, Appellant argues only that “Dedieu injects saturated
steam, and does not inject saturated water vapor.” Appeal Br. 7. In
particular, Dedieu discloses a wood drying process that includes “a
pressurizing step, to place at least one sealed chamber 1 under a determined
pressure by injecting or creating saturating steam, and maintaining this
pressure for a determined time interval while insuring forced circulation of
air and saturating steam within the chamber.” Dedieu 2:20–24.
The Examiner’s Answer notes that water vapor and steam are
chemically identical, and might differ only in temperature. Ans. 7–8. The
Examiner concludes that because claim 1 is silent concerning the
temperature of “saturating water vapor,” the disclosure in Dedieu fully meets
the claim limitation. Id. Because, to our understanding, “saturated steam”
and “saturated water vapor” are the same, Appellant’s argument does not
persuade us the Examiner has erred.

Argument 2
Appellant argues that Egner, Dedieu, Theliander and Gutwirth fail to
disclose the step of “loading the sludges into a tank that is distanced from
the walls of the enclosure, with loading means that guarantee maintenance of
the pressure.” Appeal Br. 7. The Final Action relied on Theliander, column
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3, lines 10–19, for this feature in combination with Egner and Dedieu. Final
Act. 8–9. Appellant argues that because Theliander discloses a range of
pressures from below to above atmospheric, it does not necessarily involve
an infeed that maintains pressure. App. Br. 7–8 (emphasis in original).
The Examiner responds that Theliander uses above atmospheric
pressure (1:31–35) and is a continuous process (2:11–13), and therefore
“must be continually [sic] maintained above atmospheric pressure at all
times of operation.” Ans. 8. From our perspective, it would be impossible
to operate Theliander across the range of pressures disclosed without a
pressure sealing infeed mechanism, such a mechanism is necessarily present
and inherent in the Theliander disclosure. While it is true that operating
Theliander exactly at atmospheric pressure would not require a pressure
sealing infeed mechanism, operating Theliander at any other pressure, either
above or below atmospheric, both of which are disclosed (Theliander 3:31–
34), on a continuous basis (id. 2:11–13), would require such an infeed.
Therefore the step of loading sludge into a tank that is distanced from the
walls of the enclosure, with the loading means guaranteeing maintenance of
pressure, is necessarily part of Theliander. For this reason, we agree with
the Examiner and are not persuaded of error.
Argument 3
Appellant argues that neither Egner nor any of the other references
discloses a step “for the injection of superheated steam into the sludge by
means of a mixer in action close to the wall of the tank that is most distant in
relation to the source of the microwaves, including injection means.”
Appeal Br. 8. Specifically, Appellant argues that a screw conveyor 61
(Egner Fig. 2) does not mix, but only transports, the sludge pellets. Id.
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Appellant argues that, for a screw conveyor to mix, it must be associated
with an enclosure or tank. According to Appellant, “[o]ne skilled in the art
would know that a conveying screw, or endless screw, may provide efficient
mixing of a material only if such a screw is associated with an enclosure or a
tank, in order to gather the material.” Id. Appellant argues that its mixer is
different from Egner’s screw conveyor, pointing to the Applicant’s
Specification, paragraphs 67 and 69. Id.
In Egner, in the thermolysis stage 21, screw conveyor 61 advances the
pellets past microwave source 19. Egner’s Figure 2 shows that the screw of
screw conveyor 61 fits closely within its cylinder in the upstream portion (to
the left in Figure 2), and then the space expands, opening upwardly, exactly
below the region of the microwave source 19.2 Thus, even under the
requirements for mixing proposed by Appellant (with which we need neither
agree nor disagree), the screw conveyor 61 is associated with an enclosure or
tank, and the added room under the microwave source 19 allows for mixing.
For the forgoing reasons, we agree with the Examiner that Egner mixes the
pellets, including while being conveyed by screw conveyer 61.
Moreover, Appellant’s argument concerning the design of its mixer is
not persuasive because it is not directed to language found in claim 1. As a
general rule, the Examiner applies to verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account

2 We assume that the dashed line intersecting the top edge of the screw
conveyor 61 represents the level of the pellets. We do not rely on this
unlabeled line, but if our assumption is correct, is supports our conclusion.
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whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in applicant’s specification.
In re Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997). Reading a claim in
light of the specification, to thereby interpret limitations explicitly recited in
the claim, is a quite different thing from reading limitations of the
specification into a claim, to thereby narrow the scope of the claim by
implicitly adding disclosed limitations which have no express basis in the
claim. In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969). Although the
claims are interpreted in light of the specification, limitations from the
specification are not read into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993). Here, the claim is limited simply to “a mixer,” rather
than to a mixer of any particular size, shape, or efficiency.
Argument 4
For a final argument, Appellant repeats the fourth step of the claimed
method and asserts that it is not disclosed by the combination of references
relied upon by the Examiner. Applicant argues that:
Egner fails to disclose or suggest heating the cent[e]r of
the sludge by the emission of microwaves while mixing the
sludge. Applicant [sic] notes that contrary to the Examiner’s
arguments, using four different screws and dropping through
two downcomers prior to passing the microwave source to
sufficiently mix the sludge is equivalent to mixing while the
sludge is heated by emission of microwaves.

Appeal Br. 8–9.
In response, the Examiner states that while Egner may not disclose the
use of steam under pressure or the particular frequencies of microwaves,
Dedieu was relied upon for those features. Ans. 8–9 (citing Dedieu col.
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2:20–28.) Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). By not addressing the cited combination, but rather addressing Egner
alone, Appellant’s argument fails to apprise us of error.

DECISION
For the above reasons, the Examiner’s rejection of claims 1–22 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)(1)(iv).

AFFIRMED