Ex Parte Emborg

Patent Trial and Appeal Board

Aug 9, 2018

14356509 (P.T.A.B. Aug. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/356,509 07/08/2014 Michaeel Emborg
26294 7590 08/13/2018
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300EASTNINTH STREET, SUITE 1700
CLEVELAND, OH 44114
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GJE-023349 US PCT 2705
EXAMINER
TOLEDO-DURAN, EDWIN J
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
08/13/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
rkline@tarolli.com
docketing@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEEL EMBORG
Appeal2018-000915
Application 14/356,509
Technology Center 3600
Before MICHELLE R. OSINSKI, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Rockwool International A/S ("Appellant") is the Applicant as provided in
3 7 C.F .R. § 1.46 and is identified as the real party in interest. Br. 3.
2 Appeal is taken from the Final Office Action dated Sept. 20, 2016.
Appeal2018-000915
Application 14/356,509
STATEMENT OF THE CASE
Claims 1, 8, and 11 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A water drain reservoir comprising a substrate and a
conduit having two open ends, wherein a first open end of the
conduit is in fluid communication with the substrate,
characterized in that the substrate is a coherent man-made
vitreous fibre substrate (MMVF substrate), wherein the MMVF
substrate comprises man-made vitreous fibres bonded with a
cured binder composition.
THE REJECTIONS
I. Claims 1-24 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Boehm (DE 2155594; issued Nov. 9, 1971),3 Huhta (WO
01/23681 Al; published Apr. 5, 2001), and McDermott (US 2,383,066;
issued Aug. 21, 1945).
II. Claim 25 stands 35 U.S.C. § I03(a) as being unpatentable over
Boehm, Huhta, McDermott, and Johnson (US 2,880,593; issued Apr. 7,
1959).
ANALYSIS
Rejection I
Regarding independent claim 1, the Examiner finds that "Boehm
discloses a water drain reservoir comprising a coherent substrate ... and a
conduit having two open ends, wherein a first open end of the conduit is in
fluid communication with the substrate," as claimed. Final Act. 3 (citing
3 We rely on the English language translation of Boehm, as provided in the
record.
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Boehm Fig. 1); see also Ans. 8 (finding that Boehm "show[s] an
underground filter with a pipe wherein the filtered water is released to
surrounding water-permeable soil layers"). The Examiner determines that
Boehm is silent about the coherent substrate being a coherent man-made
vitreous fiber (MMVF) substrate, and more particularly, man-made vitreous
fibers bonded with a cured binder composition, as claimed. Id. The
Examiner relies on Huhta for disclosing "an underground reservoir with a
substrate" (i.e., filter element 11) made of MMVF ("also known as mineral
wool"). Ans. 8; Final Act. 3 ( citing Huhta, Abstract). The Examiner relies
on McDermott for disclosing an MMVF substrate comprised of man-made
vitreous fibers bonded with a cured binder composition. Final Act. 3 ( citing
McDermott p. 1, col. 1, 1. 7-8; p. 1, col. 2, 11. 33-36; p. 3, col. 1, 11. 35--44);
Ans. 8; see also id. at 8-9 (finding that McDermott "show[s] that filters
made of MMVF contain binders").
The Examiner reasons that it would have been obvious "to make the
substrate of a coherent man-made vitreous fibre substrate comprising man-
made vitreous fibres bonded with a cured binder composition ... to improve
the draining qualities thereby resulting in an improved water reservoir."
Final Act. 3. In the Examiner's Answer, the Examiner adds that
"[i]mproving the draining qualities of Boehm ... by providing several fiber
layers like mineral wool ... to produce substantially cleaner water is an
adequate motivation to make the material of the filter in [Boehm] of mineral
wool thereby producing a better system." Ans. 13; see also Ans. 9, 10. The
Examiner determines, therefore, that "Boehm as modified" teaches the
subject matter of claim 1. Final Act. 3--4.
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Application 14/356,509
Appellant submits that none of Boehm, Huhta, or McDermott, nor any
combination thereof, "teaches, shows, discloses, or suggests a water drain
reservoir," as recited in claim 1. Br. 11-12. However, such a general
argument by Appellant does not apprise us of error in the Examiner's
findings or reasoning, as set forth supra.
Appellant also argues that McDermott is non-analogous art and
therefore, improperly relied on by the Examiner. 4 Br. 14. Appellant
contends that McDermott "is non-analogous art to the claimed invention"
because McDermott "provides air filter units for removing suspended
particles from gases." Id. ( emphasis added). Appellant submits that
one of ordinary skill in the art would not have even reasonably
had the chance to use the filtering material of [McDermott] in the
Examiner's proposed combination of [Boehm] and [Huhta].
Instead, that person of ordinary skill in the art, seeking a solution
in the wastewater treatment arts, would have been unaware of the
filtering material of [McDermott] used in filtering particulate
matter from gases (e.g., in an air conditioning apparatus).
Id. at 16. Appellant concludes that McDermott, because of the matter with
which it deals, logically would not have commended itself to Appellant's
attention in considering the Appellant's problem. Id.
Indeed, "[t]wo separate tests define the scope of analogous prior art:
( 1) whether the art is from the same field of endeavor, regardless of the
4 The Examiner's determination that Boehm, Huhta, and McDermott are
analogous art presumably each to the others ("because they are from the
same problem solving area (i.e., filtering)") is not relevant to whether each
reference is properly relied on for determining whether claim 1 is obvious.
Final Act. 3. Rather, a reference qualifies as prior art for an obviousness
determination when it is analogous to the claimed invention. Innovention
Toys, LLC v. MGA Entm 't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).
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Application 14/356,509
problem addressed, and (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved." In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004). The "field of endeavor" test asks if the
structure and function of the prior art is such that it would be considered by a
person of ordinary skill in the art because of similarity to "the structure and
function of the claimed invention" as disclosed in the application. Id. at
1325-26 (emphasis added). "A reference is reasonably pertinent if ... it is
one which, because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his problem." In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
We determine that the field of endeavor of the claimed invention is a
water drain reservoir, whereas the field of endeavor of McDermott is a filter
unit. Thus, McDermott is not in the same field of endeavor as the claimed
invention. Notwithstanding, a problem addressed by McDermott is how to
allow fluid flow through the fibrous filter, while binding the fibers together.
For example, McDermott discloses that "the binder should not be present in
sufficient amount to increase the flow resistance of the filter to an
undesirable extent" and that "the binder in the stated proportion causes little
increase in the flow resistance of the filter, but adequately binds the fibers in
the felted mat." McDermott, p. 2, col. 2, 11. 25-31. A particular problem
considered by Appellant is how to retain water within a structure, for
example, an MMVF substrate normally used instead of soil to grow plants,
and the Specification discloses that "[t]he man-made vitreous fibres are
bonded with a cured binder composition and the water drain reservoir can
retain water within its open pore structure." Spec. ,r,r 10, 11. Thus, we find
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that McDermott's teaching regarding the use of a binder to control flow
resistance through an MMVF is reasonably pertinent to Appellant's
particular problem of retaining water in an MMVP, while allowing for some
fluid flow. Therefore, the Examiner's reliance on McDermott as analogous
art is proper.
To the extent Appellant submits that Boehm is non-analogous art,
Appellant does not dispute that Boehm discloses a water drain reservoir, as
determined by the Examiner, and therefore, Boehm is in the same field of
endeavor as Appellant's claimed invention. Further, although Huhta
discloses a sewage filter, Huhta is also in the field of endeavor of a water
drain reservoir, at least structurally and functionally, wherein "[t]he
invention further comprises a soakage tube to speed up the soakage of
filtered washing water into the soil," albeit while also employing "a
cartridge-type filter unit." Huhta 2:6-9.
Appellant also argues that
one of ordinary skill in the art would not be motivated to create
the combination as suggested by the Examiner at least because
[Boehm, Huhta, and McDermott] are directed to completely
different purposes; there are no commonalities in the technology.
In addition, modification as proposed would likely destroy the
function of at least one of the cited references.
Br. 17. For example, Appellant submits that Boehm's foam material is
designed to hold water, as compared to the filters of Huhta and McDermott,
which are designed to allow water to pass through them. Id. at 21.
Appellant also submits that
[i]n [Boehm], the purpose of the foam substrate is to disperse
water into soil. Conversely, in [Huhta], the purpose of the
mineral wool filter is to catch solid impurities from sewage.
Moreover, in [McDermott], only air and other gases are disclosed
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Application 14/356,509
as being filtered; one of ordinary skill in the art would recognize
that the wetting, hydraulic pressure, and other factors imposed
by filtering a liquid rather than a gas through the disclosed
material would likely require significant experimentation and
substantial redesign--well beyond a mere obvious design choice-
-of the devices of either [Boehm] or [Huhta] to use the air filter
of [McDermott]. (Alternatively, the air filter of [McDermott]
would likely need to be markedly changed to function as
suggested in filtering liquid in the device of either [Boehm] or
[Huhta]).
Id. at 17. Appellant further submits that simply substituting McDermott's
filter designed for gas for the foam in Boehm's liquid/water drain reservoir,
as modified by Huhta, is likely to "completely clog the filter" and that "due
to the very different physical and chemical reactions between a filter and
either gas or liquid, it is even reasonable to expect that the Examiner's
proposed combination ... would be unworkable--e.g., if the combination of
the fibers and binder taught by [McDermott] were somehow liquid soluble,
for example." Id. at 18. Appellant concludes that the Examiner's proposed
combination would require "significant and wide-ranging experimentation
and alteration, far beyond what would appear to support a finding of
obviousness." Id.
As set forth supra, Boehm, Huhta, and McDermott are properly relied
on as analogous art. Further, the rejection, as articulated by the Examiner, is
to modify the coherent foam substrate of Boehm' s water drain reservoir to
be an MMVF substrate comprised of man-made vitreous fibers bonded with
a cured binder composition, as taught in the fabrication of the filters
disclosed in Huhta and/or McDermott. Notably, Boehm teaches using the
foam as a filter for the wastewater, and further, as a replaceable filter, in
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addition to using the foam to absorb and release the wastewater, by
disclosing that
[ e ]ven a wastewater which has been purified by means known
per se and is to be seeped with the aid of the device according to
the invention occasionally still contains turbid substances. In
many devices for infiltration of purified wastewater, it is
therefore premature to disturbances, since the remaining turbid
matter in the wastewater run the water-permeable soil layers.
This can be prevented in the inventive device in that the foam
consists of at least two parts, wherein preferably an upper part
has a density of 50 to 100 kg/m3 and a lower part has a density
of 25 to 50 kg/m3• In the upper part of the foam, a pre-cleaning
of the wastewater is made, whereby a depletion of the water-
permeable soil layers is counteracted. The upper part can then
be replaced occasionally or when needed, or to be renewed.
Boehm (English translation), p. 3--4. Additionally, the Specification
discloses that a well-known use for MMVF substrates is as a water-
absorbent material used "instead of soil to grow plants." 5 Spec. ,r 10.
Regarding the binder, McDermott discloses that the filter unit may filter
liquid particulate, and therefore, the binder must not be liquid soluble. See,
e.g., McDermott, p. 1, col. 1, 11. 1-2 ("The present invention relates to filters
for the removal of solid or liquid particulate matter."). McDermott further
teaches designing the filter according to desired flow resistance. For
example, McDermott discloses that
5 See also Cuypers (US 9,056,789 B2; issued June 16, 2015) Abstract, 2:57-
3: 10, 7:28-39 (a prior art reference in the record that discloses recycling a
waste mineral wool product (i.e., a horticultural growth substrate) having a
coherent form with at least 10% by weight water content by binding or
sintering particulate from the product to result in a recycled waste stone
wool product with good porosity and absorbency for use as a drainage
layer).
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[ t ]he proportion of the binder may vary widely depending upon
the purpose for which the filter is to be used. In any event the
binder should not be present in sufficient amount to increase the
flow resistance of the filter to an undesirable extent. In the
example given above, the binder in the stated proportion causes
little increase in the flow resistance of the filter, but adequately
binds the fibers in the felted mat.
Id. at p. 2, col. 2, 11. 23-31. Thus, Appellant's argument does not apprise us
of error in the Examiner's reasoning, which is sufficiently supported by
rational underpinning.
Finally, Appellant argues that "there seems to be no reason why one
of ordinary skill in the art would replace the foam substrate of the water
drain reservoir in [Boehm] with [the] mineral wool of [Huhta] or
[McDermott] ... other than impermissible hindsight." Br. 20. However,
Appellant's argument does not address the reasons articulated by the
Examiner supra (i.e., cleaner water being drained).
Accordingly, we sustain the Examiner's rejection of independent
claim 1 and claims 2-7 and 24 depending therefrom. Appellant chose not to
present separate arguments for the patentability of independent claims 8 and
11, and therefore, for essentially the same reasons as set forth supra, we also
sustain the Examiner's rejection of independent claims 8 and 11, and claims
9, 10, and 12-23 depending therefrom. Br. 21-22.
Rejection II
Appellant chose not to present separate arguments for the patentability
of claim 25, which depends from independent claim 1. Br. 22. Accordingly,
we sustain the Examiner's rejection of claim 25 for essentially the same
reasons as set forth supra.
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DECISION
The Examiner's decision rejecting claims 1-25 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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