Ex Parte Flor et al

Patent Trial and Appeal Board

Nov 21, 2013

11883190 (P.T.A.B. Nov. 21, 2013)

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.
11/883,190 07/27/2007 Nicolo Flor BAZOOKA-US-753 9947
7590 11/21/2013
Christopher John Rudy
209 Huron Ave., Ste. 8
Port Huron, MI 48060
EXAMINER
SINGH, SUNIL
ART UNIT PAPER NUMBER
3672
MAIL DATE DELIVERY MODE
11/21/2013 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 NICOLO FLOR, JOHN CHRISTOPHER POLIS,
JOHN S. BRINKMAN, and RICHARD H. HALL
____________

Appeal 2012-000026
Application 11/883,190
Technology Center 3600
____________

Before STEFAN STAICOVICI, NEIL T. POWELL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Nicolo Flor et al. (Appellants) appeal under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 1-20 as
unpatentable over Saito (US 5,512,175, issued Apr. 30, 1996) and Hall (US
3,750,688, issued Aug. 7, 1973) or Larson (US 4,302,337, issued Nov. 24,
1981) and claims 1-16 as unpatentable over Miller ′465 (US 4,609,465,
issued Sep. 2, 1986) and Hall or Larson.1 We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).

INVENTION
Appellants’ invention relates to a method and a system for filtering
and/or absorbing organic substances. Spec. 1, ll. 11-13.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A system for absorption and containment of, and/or
shutting down flow of a fluid stream including, a target organic
substance, which comprises:
a first, fluid-permeable, hollow housing member;
a second, fluid-permeable, hollow housing member
disposed inside said first member; and
an absorbing material disposed between said first and
second members, which includes water insoluble, particulate
polymer particles that can imbibe the target organic substance
and substantially swell with the same;
such that a fluid having the target organic substance can
pass through said first and second members and said absorbing
material, and have the target organic substance be absorbed by

1 The Examiner refers throughout the rejections to the teachings of
Miller ′479 (US 5,536,479, issued Jul. 16, 1996), Dietzler (US 4,596,491,
issued Jun. 24, 1986), and Voll (US 5,624,560, issued Apr. 29, 1997) as
evidence. See e.g, Ans. 10-11 and 14-15.
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said absorbing material with imbibing and swelling by said
particles so that the absorption and containment of, and/or
shutting down flow of the fluid stream including, the target
organic substance can occur.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
The Examiner found that both Saito and Miller ′465 disclose all the
limitations of independent claims 1, 9, and 17 with the exception of an
“absorbing material[,] which include[s] insoluble, particulate polymer
particles that can imbibe a target organic substance and substantially swell
with the same.” Ans. 3-4 and 6. However, the Examiner found that both
Hall and Larson disclose such an absorbing material and proposed to
substitute the absorbing material of either Hall or Larson for the absorbing
material of either Saito or Miller ′465, because “such a modification would
filter/absorb out desired contaminants such as oil, diesel fuel, etc.” Ans. 4-7.

The obviousness rejection based upon Saito and Larson or Hall
Claims 1-4, 8-16, 19, and 20
Appellants have not presented arguments for the patentability of
claims 2-4, 8-16, 19, and 20 apart from claim 1. App. Br. 2-3. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2-4, 8-16, 19, and 20 standing or falling with claim 1.
Appellants argue that: (1) Saito does not constitute relevant art
because it is not in the field of organic chemical absorption, it is not related
to the art of either Larson or Hall, nor addresses the same problems as the
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inventors (see App. Br. 3 and Reply Br. 2-3); (2) Saito teaches away from
the Examiner’s proposed combination because the device of Saito absorbs or
filters a material that is not an organic (see id.); (3) the Examiner has not
provided an adequate reasoning with rational underpinning to modify the
method and system of Saito with the teachings of either Larson or Hall (see
id.); and (4) Larson fails to disclose a particulate absorbing material because
the “polymer latex absorbent of Larson et al. is not particulate” (see id.).
We find Appellants’ first argument unconvincing for the following
reasons. To determine what is analogous prior art for the purpose of
analyzing the obviousness of the subject matter at issue, any need or
problem known in the field of endeavor at the time of the invention and
addressed by the patent or application at issue can provide a reason for
combining the elements in the manner claimed. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007). Thus, a reference in a field different from
that of applicant's endeavor may be reasonably pertinent if it is one that,
because of the matter with which it deals, would have logically commended
itself to an inventor's attention in considering his or her invention as a whole.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir.
2007). In this case, a skilled artisan looking for a method and apparatus for
absorption and containment of organic substances from a fluid stream would
consider teachings relating to a method and apparatus for removing
contaminants from a liquid stream to be of particular interest. Appellants
describe the problem they confront as filtering/absorbing organic
chemical/mixture from a water stream. Spec. 1, ll. 21-28. Saito discloses a
method and apparatus for removing contaminants/particulates from a liquid
stream. See Saito, Abstract. Both Larson and Hall specifically disclose
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removing organic contaminants from a water stream. See Larson, Abstract
and Hall, Abstract. An inventor seeking absorption and containment of
organic substances from a liquid stream would look for a method and system
that removes contaminants from a liquid stream (as per Saito) and would
further look for a suitable absorption/filtering material (as per Larson or
Hall). Consequently, we agree with the Examiner that all references,
namely, Saito, Larson, and Hall would have commended themselves to an
inventor considering the problem of removing organic chemical/mixture
from a water stream. See Ans. 8-9 and 12-13.
We are not persuaded by Appellants’ second argument because
differences between references is insufficient to establish that such
references "teach away" from any combination thereof. See In re Beattie,
974 F.2d 1309, 1312-13 (Fed. Cir. 1992). Appellants do not point to any
passage in Saito that "criticize[s], discredit[s] or otherwise discourage[s]"
using “a permeable bed of particulate swellable polymer particles” (see Hall,
Abstract) or a latex coated particulate substrate (see Larson, fig. 2) as a
filter/absorption material which, as noted by the Examiner, “would
filter/absorb out desired contaminants such as oil, diesel fuel, etc.” Ans. 5,
7. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
As to Appellants’ third argument, we are not persuaded because the
Examiner has provided a reason (using a permeable bed of particulate
swellable polymer particles or a latex coated particulate substrate) with
rational underpinning (“to filter/absorb out desired contaminants such as oil,
diesel fuel, etc.”). See Ans. 5, 7; In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds [require] some articulated
reasoning with some rational underpinning to support the legal conclusion of
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obviousness”) (cited with approval in KSR, 550 U.S. at 418). In other
words, since the Examiner has articulated that either Larson’s or Hall’s
absorption material is being substituted for the absorption/filter material of
Saito, and Appellants have neither alleged, nor provided persuasive evidence
showing that the Examiner’s proposed modification of Saito with the
absorption/filter material of either Larson or Hall would have been either
beyond the level of ordinary skill in the art or unpredictable to a person of
ordinary skill in the art, we are not persuaded of either hindsight or improper
reconstruction in the Examiner’s rejection based on Saito and either Larson
or Hall. Moreover, we note that “[t]he person of ordinary skill is a
hypothetical person who is presumed to be aware of all the pertinent prior
art.” See Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d
955, 962 (Fed. Cir. 1986).
Lastly, with respect to Appellants’ fourth argument, we agree at the
outset with the Examiner that the Larson substrate 29 is a particulate. Ans.
10 and 14 (citing to Larson, col. 3). Furthermore, what a reference teaches a
person of ordinary skill is not limited to what a reference specifically “talks
about” or what is specifically “mentioned” or “written” in the reference.
Syntex (U.S.A.) LLC v. Apotex, Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005).
In this case, although substrate 29 is part of foraminous filter element 25
(see Reply Br. 3), nonetheless, Larson specifically discloses particulate
materials that can be used as a substrate for coating with latex, such as sand,
straw, sawdust, granular petroleum and wood charcoals, and glass beads.
Larson, col. 3, ll. 45-50. As such, because substrate 29 is a particulate
substrate and a coating 31 is applied thereon to form a filter/absorption
material, Larson discloses a particulate filter/absorption material, namely, a
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latex coated particulate substrate. Moreover, we note that Figure 2 of
Larson shows particles of substrate 29 having a coating 31 thereon. We thus
are not persuaded that Larson fails to disclose a particulate absorbing
material.
In conclusion, for the foregoing reasons, we sustain the rejection of
independent claim 1, and claims 2-4, 8-16, 19, and 20, standing with claim
1, under 35 U.S.C. § 103(a) as unpatentable over Saito and Larson or Hall.

Claims 5-7
Dependent claims 5-7 add the limitations of “pores about from 90
microns to 130 microns” (as per claim 5); “porous plastic [that] is HDPE2”
(as per claim 6); and tubes that “have about 0.125-inch thicknesses to their
walls, and an outer protective mesh.”(as per claim 7). App. Br., Clms.
App’x.
The Examiner took official notice that the above mentioned
limitations “are old and well known in the art.” Ans. 5, 7. The Examiner
concluded that it would have been obvious for a person of ordinary skill in
the art to modify the method and system of Saito and Larson or Hall “to
have the tubes made from HDPE plastic, have pores of about 90 to 130
microns, be about .125 inches thick and include a protective mesh about the
first tube since such modifications are mere design choices.” Id. According
to the Examiner:
The tubes being made from HDPE (high density
polyethylene) plastic and being .125 inches thick
allow the structure to withstand desired loading as

2 As we understand, HDPE is an acronym for high density
polyethylene.
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well as resist chemical attack. The tubes having
pores of about 90 to 130 microns allows one to get
a desired flowrate. The protective mesh prevents
unwanted debris to flow into the system.
Id.
Appellants argue that neither Saito, Larson, nor Hall discloses the
limitations of dependent claims 5-7. App. Br. 3-4 and 5. According to
Appellants, although the limitations of claims 5-7 may have been known in
the art, as the Examiner proposes, that does not mean that such limitations
are known “in conjunction with the other claimed subject matter.” Reply Br.
3, 4.
At the outset, we agree with the Examiner that if an applicant does not
seasonably traverse the taking of official notice during examination, then the
object of the official notice is taken to be admitted prior art. In re
Chevenard, 139 F.2d 711, 713 (CCPA 1943); see also Ans. 10-11 and 14-
15. In this case, as noted by the Examiner, Appellants did not challenge the
Examiner’s taking of official notice until the filing of the Appeal Brief on
February 7, 2011. See Ans. 10; Compare Examiner’s Office Actions mailed
August 19, 2009, March 22, 2010, and September 1, 2010 with Appellants’
Amendments filed November 19, 2009 and June 21, 2010. As such, we
agree with the Examiner’s finding that the limitations of claims 5-7 “are old
and well known in the art.” See Ans. 5, 7.
Furthermore, the Examiner has provided adequate reasoning with
rational underpinning to modify the method and system of Saito and Larson
or Hall “to have the tubes made from HDPE plastic, have pores of about 90
to 130 microns, be about .125 inches thick and include a protective mesh
about the first tube.” See Ans. 5, 7. Appellants have not come forth with
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any persuasive evidence or technical reasoning to show error in the
Examiner’s conclusion of obviousness.
Lastly, we note that the Examiner did not apply “new art,” namely,
Miller ′479, Dietzler, and Voll, in the rejection based on Saito and Larson or
Hall, as Appellants argue. Reply Br. 1. The Examiner turned to the
teachings of Miller ′479, Dietzler, and Voll merely as evidence to support
the finding that the limitations of claims 5-7 “are old and well known in the
art.” See Ans. 10-11. Therefore, Appellants’ arguments regarding the
applicability of the teachings of Miller ′479, Dietzler, and Voll in a rejection
under Section 103(a) are not commensurate in scope with the Examiner’s
proposed rejection. See Reply Br. 3-5.
As such, for the foregoing reasons, we likewise sustain the rejection
of claims 5-7 over the combined teachings of Saito and Larson or Hall.

Claims 17 and 18
The Examiner found that Saito discloses “a containment basin [51] . .
. with sides and a trough with the assembly residing therein.” Ans. 11.
However, the Examiner notes that although the containment basin (casing
51) of Saito is not oriented horizontally, it would have been obvious for a
person of ordinary skill in the art “to orient the basin horizontally in the
ground in order to filter water to an underground aquifer.” Id.
Appellants argue that “feature 51 of Saito et al. is a casing, not a
containment basin as claimed” and that “[e]ven if somehow a vertically
oriented containment basin were taught by Saito et al., it would teach away
from the subject matter of claim 18.” Reply Br. 5.
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We are not persuaded by Appellant’s argument because Appellants
have failed to provide any persuasive evidence or technical reasoning why
the Examiner’s interpretation of casing 51 of Saito as a “containment basin”
is in error. Moreover, Appellants have not come forth with any persuasive
evidence or technical reasoning to show error in the Examiner’s conclusion
of obviousness.
In conclusion, for the foregoing reasons, we also sustain the rejection
under 35 U.S.C. § 103(a) of claims 17 and 18 as unpatentable over Saito and
Larson or Hall.

The obviousness rejection based upon Miller ′465 and Larson or Hall
Appellants make the same arguments as presented supra with respect
to the rejection of claims 1-20 as unpatentable over Saito and Larson or Hall.
See App. Br. 4-5 and Reply Br. 5-6. Accordingly, for the same reasons set
forth above, we likewise sustain the rejection under 35 U.S.C. § 103(a) of
claims 1-16 as unpatentable over Miller ′465 and Larson or Hall.

SUMMARY
The Examiner’s decision to reject claims 1-20 as unpatentable over
Saito and Larson or Hall is affirmed.
The Examiner’s decision to reject claims 1-16 as unpatentable over
Miller ′465 and Larson or Hall 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
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