Ex Parte Dierkes et alDownload PDFBoard of Patent Appeals and InterferencesJun 8, 201211043379 (B.P.A.I. Jun. 8, 2012) Copy Citation 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 Appeal 2011-006363 Application 11/043,379 2 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). Appeal 2011-006363 Application 11/043,379 3 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.”). Appeal 2011-006363 Application 11/043,379 4 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 Appeal 2011-006363 Application 11/043,379 5 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, Appeal 2011-006363 Application 11/043,379 6 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. Appeal 2011-006363 Application 11/043,379 7 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”). Appeal 2011-006363 Application 11/043,379 8 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.” Appeal 2011-006363 Application 11/043,379 9 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 Appeal 2011-006363 Application 11/043,379 10 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. Appeal 2011-006363 Application 11/043,379 11 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 Appeal 2011-006363 Application 11/043,379 12 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. Appeal 2011-006363 Application 11/043,379 13 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 bar Copy with citationCopy as parenthetical citation