Ex Parte Dierkes et al

Board of Patent Appeals and Interferences

Jun 8, 2012

11043379 (B.P.A.I. Jun. 8, 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.
11/043,379 01/26/2005 Carsten Dierkes 20041115.ORI 7863
23595 7590 06/08/2012
NIKOLAI & MERSEREAU, P.A.
900 SECOND AVENUE SOUTH
SUITE 820
MINNEAPOLIS, MN 55402
EXAMINER
ANDERSON, DENISE R
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
06/08/2012 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 CARSTEN DIERKES and
THOMAS FLEISCHANDERL
____________

Appeal 2011-006363
Application 11/043,379
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
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This is an appeal under 35 U.S.C. § 134 (2002) involving claims 1, 3-
14, 26-27, 29-41, and 43-44 to a water filter and purification system. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. An apparatus for a purification system for water with solid
particles and dissolved substances, comprising:

a molded porous concrete filter body arranged in the
purification system through which a water stream flows; and

the porosity of the molded porous concrete filter body
becomes more finely porous where pores decrease in size in a
flow direction in a continuous manner.

THE REJECTIONS
The Examiner relies on the following as evidence of unpatentability:
Porter US 1,117,601 Nov. 1914
Allen US 1,236,645 Aug. 1917
Dundore US 1,910,758 May 1933
Bailly US 3,199,996 Aug. 1965
Finley US 3,898,160 Aug. 1975
Jordan US 3,950,252 Apr. 1976
Hulbert US 4,765,892 Aug. 1988
Brombach US 4,816,156 Mar. 1989

Carsten Dierkes et al., Sustainable Urban Drainage and Pollutant
Source Control by Infiltration, STORMWATER INDUSTRY ASS’N
REGIONAL CONF., Apr. 23-24, 2002.

K.A. Matis & N.K. Lazarides, Sorptive Filtration, in 2 WATER
ENCYCLOPEDIA 362-66 (Jay Lehr et al. eds., 2005).
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Raghuraman Venkatapathy et al., Disinfectants, 1 WATER
ENCYCLOPEDIA 192-96 (Jay Lehr et al. eds, 2005).

U.S. Standard Sieve Series, available at
http://www.wirecloth.comlhowto/convertlussieve.html (last visited
Apr. 25, 2008).

The Appellants rely on the following as evidence of patentability:
HISTORIC NAVAL SHIPS ASS’N, ELECTRONIC INSTALLATION
PRACTICES MANUAL 9-59 available at
http://www.hnsa.org/doc/cabling/part4.htm.

The Appellants seek review of the following rejections (App. Br 16-
17):1
1. Claim 1 stands rejected under 35 U.S.C. § 103(a) as obvious over
Dundore in view of Porter.
2. Claims 3-5 stand rejected under 35 U.S.C. § 103(a) as obvious over
Dundore in view of Porter and Bailly.
3. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as obvious
over Jordan in view of Dundore and Porter.
4. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as obvious
over Jordan in view of Dundore, Porter, and Brombach.
5. Claims 10-13 stand rejected under 35 U.S.C. § 103(a) as obvious over
Jordan in view of Dundore, Porter, and Dierkes.

1 Our decision will make reference to the Examiner’s Answer mailed July 2,
2010 (“Ans.”) as well as the Appeal Brief for the Appellants filed April 29,
2010 (“App. Br.”) and the Reply Brief for the Appellants filed August 20,
2010 (“Rep. Br.”).
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6. Claim 14 stands rejected under 35 U.S.C. § 103(a) as obvious over
Jordan in view of Dundore, Porter, and Allen.
7. Claims 26, 27 and 29-31 stand rejected under 35 U.S.C. § 103(a) as
obvious over Dundore in view of Porter.
8. Claim 32 stands rejected under 35 U.S.C. § 103(a) as obvious over
Dundore in view of Porter and Finley.
9. Claims 33-35 stand under 35 U.S.C. § 103(a) as obvious over
Dundore in view of Porter and Hulbert.
10. Claims 36-41, 43 and 44 stand rejected under 35 U.S.C. § 103(a) as
obvious over Jordan in view of Dundore, Porter, and Brombach.

ANALYSIS
The Appellants separately argue the patentability of claim 1. App. Br.
22-24. The Appellants group claims 3-5 under one subheading, but
separately argue the patentability of claims 3, 4, and 5. Id. at 24-26. The
Appellants provide further argument regarding three claim groups: (1)
claims 6-14 with separate argument regarding claim 6 only; (2) claims 26-27
and 29-35 with separate argument regarding claim 26 only; and (3) claims
36-41 and 43-44 with separate argument regarding claim 36 only. Id. at 26-
33. We select claims 1, 3, 4, 5, 6, 26, and 36 as representative of the subject
matter on appeal. The remaining claims stand or fall with claims 1, 3, 4, 5,
6, 26, and 36. 37 C.F.R. § 41.37(c)(1)(vii).

Dundore Discloses a Molded Porous “Concrete” Filter
Material as Required by Claims 1, 3, 4, 5, 6, 26, and 36.
Claims 1, 3, 4, 5, 6, 26, and 36 require a molded porous “concrete”
filter material. The Examiner finds that Dundore discloses “a mineral
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aggregate of inert material with a binder including a heat plastic rubber
isomer and a solvent therefor [sic], molding the treated aggregate to a
desired porosity and heating the molded aggregate to remove the solvent and
to harden the binding material.” Ans. 8 (citing Dundore 4 at claim 2). The
Examiner further finds that the mineral aggregate of Dundore includes
“sand, ‘crushed stone or other mineral matter of appropriate screen sizes,’
slate, lime, or gravel.” Id. (citing Dundore 1:46-47, 92-93; 3:22). Dundore
uses a binder of “diluted cement.” Id. (quoting Dundore 2:98-99, 113-114,
125; 3:5). Thus, the Examiner finds that “Dundore discloses a filter element
. . . made of porous concrete, as recited.” Id.; see id. at 20; see also id. at 33
(citing Spec. 2:7-9, 14-16; Dundore 1:46-47, 92-93; 3:22).
The Appellants disagree on the basis that Dundore’s binder is an
“artificial rubber isomer” known as Vulcalock, which “is not concrete at all
and has none of the properties of concrete.” App. Br. 23. Specifically, the
Appellants argue that Vulcalock is used in submarine applications “for
sealing the ends of portable cables and packing between the ends of cables.”
Reply Br. 12 (citing Electronic Installation Practices Manual Col. 2). The
Appellants thus contend that “Vulcalock cement is very simply not cement;
at all” because, for example, “[s]ubmarine hulls are constantly expanding
and contracting; concrete unlike rubber, could not take this expansion and
contraction.” Id. In the Appellants’ view, “just having aggregate in your
filter does not make it cement. It only creates a binder with aggregate
within.” Id. at 13.
The Specification, however, makes abundantly clear that the
“concrete” of the instant invention is a binder with aggregate within. Spec.
2:11-13 (“[t]he concrete consists . . . of natural or synthetic aggregates,
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preferably of quartz, and . . . binder”). The Specification further discloses
that “it is to be understood that a suitable organic resin may be used as the
binding agent.” Ans. 33 (quoting Spec. 2:14-16). The Examiner finds that
“the suitable organic resin” in Dundore is Vulcalock, which the Appellants
describe as “a ‘rubber cement polymer made by B.F. Goodrich in the early
part of the 20th century.’” Ans. 33 (quoting App. Br. 31).
The evidence brought forward by the Appellants describes Vulcalock
as a “cement” that “stays in liquid form during storage” and gets “tacky”
within 10 minutes of application. Electronic Installation Practices Manual
Col. 2. The Appellants identify no teaching in the Specification that
excludes this type of cement as a suitable binder. See Spec. 2:15-20 (placing
no restrictions on the “cement” suitable as a binder). On this record,
therefore, we agree with the Examiner that the filter plates of Dundore are
made of porous “concrete” within the meaning of the appealed claims, Ans.
33, notwithstanding the fact that Dundore’s binder may be suitable for other
applications unrelated to binding an aggregate, for example, “sealing the
ends of portable cables” on submarines. Reply Br. 12.
The Appellants further contend that Porter discloses a material that “is
not concrete.” App. Br. 32; see Porter 1:56-69. This argument is misplaced,
however, because the Examiner relies on Porter not for a “concrete” material
but for a different limitation that requires a porosity that decreases in a flow
direction “in a continuous manner,’’ which we address below. Ans. 34.

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Porter Suggests a Porosity that Decreases in the Flow Direction
“In a Continuous Manner” as Required by Claims 1, 3, 4, 5, 6, 26, and 36.
Claims 1, 3, 4, 5, 6, 26, and 36 require a porosity that decreases in the
flow direction “in a continuous manner.” The term “continuous” appears in
the Specification for the first time in claim 1. The Examiner finds that
Dundore suggests a stack of plates having different porosities that decrease
“in the flow direction stepwise, as opposed to continuously as recited.” Ans.
9; see Dundore 1:33-51 (describing prior art filter comprised of loose filter
media placed in successive layers of decreasing porosity in the flow
direction); 1:53-55 (explaining that general object of invention “is the
provision of filter plates adapted to be used in place of the loose filter
media”); 2:78-95 (disclosing a series of plates having different filtration
rates). The Examiner further finds that Porter discloses a filter body having,
for example, a “graded degree of porosity . . . with porosity decreasing
continuously as recited.” Ans. 9-10; see Porter 1:15-23; 1:50-2:56; Figure).
The Appellants admit that “Porter shows ‘a series of layers or strata of
different degrees of porosity, gradually increasing in density from bottom to
top.’” App. Br. 23 (quoting Porter 1:53-2:56). This fact is evident from the
figure in Porter, which depicts a filter body having a graded decrease in
porosity. Ans. 35 (reproducing Porter’s figure). On this record, we agree
with the Examiner that Porter’s layered or stratified filter body would have
suggested a porosity that decreases in the flow direction in a “continuous”
manner as specified in claims 1, 3, 4, 5, 6, 26, and 36. Id. at 19-22 (claims 1,
3-5), 15 (claim 6), 23 (claim 26), 8-10 (claim 36); see Porter at 1:22-23
(disclosing a mineral body having a “graded degree of porosity”).
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Regarding the motivation to combine the disclosures of Dundore and
Porter for a porous “concrete” filter having a porosity that decreases “in a
continuous manner,” see, e.g., claim 1, the Examiner determined that the
molded porous concrete filter would have been suggested because “such a
modification would ‘provide a filter media in which the particles are firmly
held in a fixed position causing the media to retain a fixed permeability and
whereby media of varying degrees of permeability may be produced.’” Ans.
10 (quoting Dundore 1:62-67). Providing a molded porous concrete filter in
which the porosity decreases continuously in the flow direction would have
been further suggested because “such a modification would make a ‘rapid
filtering medium’ that is a ‘coherent mineral body of any desired form, size
or density.’” Id. (quoting Porter 1:15, 20-23).
We thus conclude that the Examiner did not err in determining that the
disclosures of Dundore and Porter would have been sufficient to suggest to
an ordinary artisan a molded porous concrete filter body wherein the
porosity decreases in a flow direction in a continuous manner. See, e.g.,
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ”).

Dundore Suggests “Modular” Plates as Specified in Claim 26.
Claim 26 further requires, inter alia, first and second “modular”
porous concrete filter plates in which the second plate is “stacked upon the
first plate, the first and second modular plates being easily replaceable.”
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The Examiner finds that Dundore discloses plates that “are modular and
replaceable” as follows:
The molded media may be placed and removed in block or slab
form of convenient size for handling. Where successive layers
of slabs are employed the lower layers thereof need seldom be
removed. Most of the fine particles will be filtered from the
water by the upper layer and reconditioning of the bed need
only involve the removal of this upper clogged layer, which
may be expediently performed.
Ans. 25 (citing Dundore 3:106-115). On this record, we determine that the
Examiner has made a prima facie showing that Dundore would have
suggested “modular” and “replaceable” plates as specified in claim 26. The
Appellants advance no persuasive argument or evidence to rebut that prima
facie showing. App. Br. 30-32.

Jordan Suggests a Filter Body that Separates
An Upper and Lower Compartment in a Water
Purification System as Specified in Claims 6 and 36.
Claim 6 is further directed to a water purification system “wherein the
molded porous concrete filter partitions a lower compartment and an upper
compartment of a treatment chamber.” Similarly, Claim 36 is directed to a
water purification system comprising a molded porous concrete “filter
separating the upper and lower compartment” of the system.
Jordan discloses a purification system comprising an upper
compartment and a lower compartment separated by a filter. Ans. 6 (citing
Jordan Figs. 1-5). Jordan’s filter consists of loose filtering media supported
by a concrete grating. Id.; see, e.g., Jordan 2:52-58 (filtering media 77 is
positioned on concrete grating 69); Figs. 1, 8. We agree with the Appellants
that the function of the concrete grating in Jordan is to support the loose
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filtering media. App. Br. 27. We further agree with the Appellants that
“Jordan does not disclose a molded concrete filter.” Id. at 29 (referring to
claim 6); see id. at 33 (referring to claim 36, “Jordan does not disclose a
filter being a molded body of porous concrete”).
However, the Examiner does not rely on Jordan for a disclosure of a
molded porous concrete filter. Ans. 8 (Jordan does not disclose “the porous
concrete filter material . . . . Dundore and Porter disclose the recited filter
material.”). The Examiner finds that Dundore and Porter would have
suggested a molded porous concrete filter having a porosity that decreases in
the flow direction in a continuous manner. Id. at 8-10; see supra.
Furthermore, the Examiner finds that an ordinary artisan would have been
motivated to substitute the loose filtering media and concrete grating of
Jordan with the molded porous concrete filter suggested by Dundore and
Porter. Id. at 9-10. Specifically, the molded porous concrete filter would
have been suggested because “such a modification would ‘provide a filter
media in which the particles are firmly held in a fixed position causing the
media to retain a fixed permeability and whereby media of varying degrees
of permeability may be produced.’” Id. at 10 (quoting Dundore 1:62-67).
Providing a molded porous concrete filter in which the porosity decreases
continuously in the flow direction would have been further suggested
because “such a modification would make [a] ‘rapid filtering medium’ that
is a ‘coherent mineral body of any desired form, size or density.’” Id.
(quoting Porter 1:15, 20-23). We agree.
No persuasive argument or evidence having been brought forward by
the Appellants, and for the reasons set forth above, we affirm the rejections
of claim 1, 6, 26, and 36.
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Bailey Does Not Suggest a Concrete Filter Body that has a Pore
Ratio of About 25% or that Consists of 85% to 89% by Volume Aggregate
And 11% to 15% by Volume Cement as Required by Claims 3 and 4.
Claim 3 depends from claim 1 and further specifies a molded porous
concrete filter body that “has an average pore ratio of about 25% by
volume.” Claim 4 depends from claim 1 and further specifies that “the
concrete consists of 85% to 89% by volume aggregate and 11% to 15% by
volume cement.” The Examiner finds that Bailly suggests the pore ratio of
claim 3 as well as the aggregate and cement content of claim 4. Ans. 19-20,
22-23, 41.
“The aggregate” in Bailly “can be any material which is soluble in
water or some other suitable solvent.” App. Br. 25 (quoting Bailly 2:8-12).
The Appellants point out that, in order “[t]o achieve the final product of
Bailly’s porous material, the aggregate must be removed.” Id. (emphasis
omitted). As a result, “the final product of Bailly has no aggregate (or very
little) whatsoever.” Id. (emphasis omitted). Indeed, the Examiner agrees
that “[a]fter the cement is set, Bailly increases the pore space from 25.95%
porosity (the most stable packing of uniform spheres) to between 40% to
80% porosity by removing some of the aggregate via ‘solution, heating, or
both.’” Ans. 41(emphasis omitted) (quoting Bailly 1:54-61). The Examiner
thus relies on the composition of Bailly’s material “[b]efore the cement is
set.” Id. (emphasis omitted).
We have reviewed the Examiner’s ground of rejection and responses
to the Appellants’ arguments, and determine that the Examiner has failed to
set forth adequate articulated reasoning with a rational underpinning as to
why an ordinary artisan would have selected the pore ratio or aggregate and
cement content of Bailly’s material “[b]efore the cement is set.” Id.; see In
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re Kahn, 441 F.3d at 988 (cited approvingly in KSR Int’l Co., 550 U.S. at
418). On this record, we determine that Bailly would not have suggested to
an ordinary artisan a final product that, in usable form after the cement has
set, has “an average pore ratio of about 25% by volume” as specified in
claim 3, or a concrete material that “consists of 85% to 89% by volume
aggregate and 11% to 15% by volume cement” as specified in claim 4. The
rejections of claims 3 and 4, therefore, cannot be sustained.

Bailly Discloses A Grain Size of 0.25 to 4 mm as Specified in Claim 5
Claim 5 depends from claim 4 and further requires an “aggregate . . .
grain size of 0.25 to 4 mm with a cubic rounded to round grain shape.”
There is disagreement about whether Bailly suggests the grain size specified
in claim 5. Ans. 22-23; App. Br. 26; Reply Br. 17. We have reviewed the
U.S. Standard Sieve Series cited by the Appellants and determine that this
document only confirms the Examiner’s position. U.S. Standard Sieve
Series (Number 5 sieve has an opening of .157 inches, or 3.99 mm, and
Number 8 sieve has an opening of .0937 inches, or 2.39 mm); see Ans. 22
(5-mesh screen corresponds to 4 mm aggregates and 8-mesh screen
corresponds to 2.4 mm aggregates); see Bailly 2:43-50 (using particles that
pass through a 5-mesh or 8-mesh screen). Bailly’s disclosure of an
aggregate with a grain size of 0.25 to 4 mm is not undercut by the
Appellants’ observation that the sieve numbers reported in the U.S. Standard
Sieve Series “do not refer to the number of meshes per inch.” App. Br. 26
(emphasis omitted) (quoting U.S. Standard Sieve Series). On this record,
therefore, we affirm the rejection of claim 5.

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The Number of References Relied Upon by the Examiner
Does Not Weigh Against the Obviousness of the Claimed Invention.
The Appellants argue that “[a] clear sign of a defective obviousness
rejection is the inclusion of separate references to represent each of the
different features described in the claims of the application.” App. Br. 30.
We agree with the Examiner, however, that “reliance on a large number of
references in a rejection does not, without more, weigh against the
obviousness of the claimed invention.” Ans. 41-42 (citing In re Gorman,
933 F.2d 982 (Fed. Cir. 1991). Our review of the Examiner’s grounds of
rejection convinces us that the Examiner did not engage in hindsight
reconstruction, but rather, supported each rejection with adequate reasons
“that would have prompted a person of ordinary skill in the relevant field to
combine the elements” as specified in claims 1, 5, 6, 26, and 36. KSR Int’l
Co., 550 U.S. at 418.

CONCLUSION
We affirm the rejections of claims 1, 5-14, 26-27, 29-41, and 43-44.
We reverse the rejections of claims 3 and 4.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART
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