Ex Parte Geranio

Board of Patent Appeals and Interferences

May 3, 2011

10998074 (B.P.A.I. May. 3, 2011)

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.
10/505,565 08/24/2004 Ralf Wiedemann 102792-333 3643
27389 7590 05/02/2011
PARFOMAK, ANDREW N.
NORRIS MCLAUGHLIN & MARCUS PA
875 THIRD AVE, 8TH FLOOR
NEW YORK, NY 10022
EXAMINER
DOUYON, LORNA M
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
05/02/2011 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 NICHOLAS LOUIS GERANIO
____________

Appeal 2010-004948
Application 10/998,074
Technology Center 1700
____________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 8 and 15-19. We have jurisdiction
pursuant to 35 U.S.C. § 6.

Appeal 2010-004948
Application 10/998,074
2

Appellant’s claimed invention is directed to a composing apparatus
including a reactor vessel with an inlet/outlet end and a closed end, and a
sensor wand. The sensor wand has an upper end curved toward the closed
end of the reactor vessel and a lower end curved away from the closed end.
According to Appellant, this curvature allows the wand to stay within the
material undergoing composting in the reactor (Fig. 1; Spec. 5, l. 19 – 6, l.
1). The sensor wand includes a plurality of sample gas inlets and
temperature sensors positioned along the wand body wherein distances
between the gas sampling inlets and temperature sensors is less in a central
portion of the body of the sensor than at an intermediate portion of the
sensor body. This latter feature together with the curvature allows for
improved control of the composting operation according to Appellant (Spec.
6, l. 1-6; 8, l. 20 - 9, l.2).
Claim 8, the sole independent claim on appeal, is illustrative and
reproduced below:
8. Composting apparatus, comprising:

a reactor vessel having a closed end and a load/unload end opposite the
closed end, wherein the load/unload end has an opening for loading material
into, and unloading material from, the reactor vessel, and wherein the reactor
vessel is tilted such that material within the reactor vessel does not exit the
opening in the load/unload end of the reactor vessel;

a sensor wand positioned within the reactor vessel adjacent the closed
end, the sensor wand comprising:

an elongated body having an upper end positioned above an opposed
lower end and a central axis, wherein the upper end is positioned on one
side of the central axis and the lower end is positioned on an
opposite side of the central axis;

Appeal 2010-004948
Application 10/998,074
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a plurality of gas inlets positioned along the body for collecting gas
samples; and

a plurality of temperature sensors positioned along the body for
measuring temperatures; and

wherein the upper end of the sensor wand curves toward the closed end
of the reactor vessel, and wherein the lower end of the reactor vessel curves
away from the closed end of the reactor vessel;
wherein the body of the sensor wand comprises a central portion, two end
portions, and two intermediate portions between the central portion and the end
portions, and wherein distances between gas inlets and temperature sensors in
the central portion and the end portions are less than distances between gas
inlets and temperature sensors in the intermediate portions.
The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Von Fahnestock 5,451,523 Sep. 19, 1995

Claims 8 and 15-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Von Fahnestock.
We reverse the stated rejection.
The dispositive issue in this appeal is:
Has the Examiner established that there are a finite number of known
discrete ways for one of ordinary skill in the art to optimize the sensing
capabilities of the sensor wand and the compositing operation of Von
Fahnestock, including using a sensor wand that is curved like Appellant’s
wand, and spacing/positioning gas inlets and temperature sensors like
Appellant’s claim to suggest and/or render obvious to try, to such an artisan,
a wand with a shape and gas inlet and temperature sensor spacing as
required by Appellant’s claim 8?
Appeal 2010-004948
Application 10/998,074
4

We answer this question in the negative.
The Examiner acknowledges that the sensor wand disclosed by Von
Fahnestock is not curved like the senor wand required by Appellant’s claim
8, and the remaining appealed claims depending thereon (Ans. 4). Likewise,
the Examiner acknowledges that Von Fahnestock does not disclose
positioning the temperature sensors and gas inlets along the body of a sensor
wand with the varied spacing/clustering required by claim 8 (Ans. 4).
In this regard, Von Fahnestock depicts a seemingly straight sensor
wand body 8 that has seemingly uniformly spaced gas sampling inlets 9 and
temperature sensors 10 (Figs. 1 and 4; col. 17, l. 61 – col. 18, l. 9, col. 18, ll.
48-63). Von Fahnestock teaches that the sensor wand location and size can
be varied and that more than one sensor wand can be employed depending
on the reactor size (col. 19, ll. 38-42; Fig. 6).
The Examiner does not point to any disclosure of Von Fahnestock
and/or provide any other evidence to establish that providing a sensor wand
curvature and gas inlet and temperature sensor spacing as claimed were
known and among the available discrete limited options that the ordinary
artisan may have selected from in optimizing the composting
apparatus/operations of Von Fahnestock, as argued by Appellant (see
generally Ans.; Br. 5-7).1
Consequently, we need go no further in assessing the Examiner’s
other obviousness assertions with respect to certain dependent claim features

1 Our references to the Appeal Brief (Br.) are to the Amended Appeal Brief
filed October 08, 2009). As no page numbers are provided therein, we
report the page numbers, consecutively, starting with the first page being
assigned page number one.
Appeal 2010-004948
Application 10/998,074
5
as the rejection is not sustainable for any of the appealed claims based on a
lack of evidence coupled with a persuasive rationale that would have
prompted one of ordinary skill in the art to make the necessary modifications
to Von Fahnestock to arrive at a composting apparatus that corresponds with
all of the independent claim 8 limitations on this record.
However, we add that the Examiner’s obviousness position is not
helped by the Examiner’s unsupported rebuttal contentions arguing that
Applicant’s sensor wand curvature and unique spacing of the gas inlets and
temperature sensors represent “ornamentation only” (Ans. 6 and 7). This is
particularly so given that the Examiner has not proven that the subject
Specification disclosure concerning the improved operation and control of
the compositing process attributed to these features by Appellant is not
credible (Spec., para. bridging pp. 5 and 6).
In this regard, “rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness” being asserted. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007)). After all, rejections based on § 103(a) must rest on a factual
basis with these facts being interpreted without hindsight reconstruction of
the invention from the prior art. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967).
ORDER
The Examiner’s decision to reject claims8 and 15-19 under 35 U.S.C.
§ 103(a) as being unpatentable over Von Fahnestock is reversed.
REVERSED

Appeal 2010-004948
Application 10/998,074
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