Ex Parte Grant et al

Patent Trial and Appeal Board

Jul 5, 2018

13457047 (P.T.A.B. Jul. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/457,047 04/26/2012
2101 7590 07/09/2018
Sunstein Kann Murphy & Timbers LLP
125 SUMMER STREET
BOSTON, MA 02110-1618
FIRST NAMED INVENTOR
Gavin Grant
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.
3518/103 3759
EXAMINER
LAU, JASON
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
07 /09/2018 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):
usptomail@sunsteinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GA VIN GRANT, DAVID MAJOR, JASON GERHARD,
JOSE TORERO, GRANT SCHOLES, PAOLO PIRONI, and
CHRISTINE SWITZER
Appeal2016-005566
Application 13/457,047
Technology Center 3700
Before EDWARD A. BROWN, ARTHUR M. PESLAK, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gavin Grant et al. ("Appellants") 1 seek review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action
May 20, 2015 ("Final Act."), rejecting claims 1, 2, 4, 5, 8, 9, 12-39, and 42-
1 The Appeal Brief identifies Geosyntec Consultants, Inc. as the real party in
interest. Appeal Br. 3.
Appeal 2016-005566
Application 13/457,047
49. Appellants' representative presented oral argument on June 28, 2018.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
SUMMARY OF THE INVENTION
Appellants' disclosure is directed to "methods of reducing the volume
of organic liquids through smoldering combustion ... wherein an organic
liquid is aggregated in a porous matrix within an impoundment." Spec. i-f 1.
Claims 1 and 43 are independent. Claim 1, reproduced below from page 27
(Claims Appendix) of the Appeal Brief, is illustrative of the claimed subject
matter:
1. A method for volumetric reduction of an above-ground
waste organic liquid in a volume that is substantially a liquid
phase, the method comprising:
admixing the above ground waste organic liquid with a
porous matrix material to produce a mixture by either (a)
feeding a series of batches of the waste organic liquid and the
porous material into a vessel or (b) forming a confinement bed
comprising one of the porous matrix material or the waste
organic liquid and
continuously pouring into the confinement bed the other
of the porous matrix material or the waste organic liquid;
heating a portion of the mixture;
forcing oxidant through the mixture; and
terminating the source of heat applied to the mixture;
so as to initiate self-sustaining smoldering combustion of
the mixture to cause volumetric reduction of the organic liquid.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Klingle us 4,252,462 Feb.24, 1981
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Anderson us 5,027,721 July 2, 1991
Plunkett us 5,067 ,852 Nov. 26, 1991
Beaumont US 2002/0050236 Al May 2, 2002
Maleck US 6,464,430 B 1 Oct. 15, 2002
Vinegar '771 US 2004/0120771 Al June 24, 2004
Vinegar '772 US 2004/0120772 Al June 24, 2004
Gerhard US 2009/0180836 Al July 16, 2009
Paolo Pironi, Smouldering Combustion of Organic Liquids in Porous
Media/or Remediating NAPL-contaminated Soils (Aug. 2009) (Ph.D.
dissertation, The University of Edinburgh) ("Pironi")
REJECTIONS
I. Claims 1, 2, 13-15, 19, 30-32, 34, and 42 stand rejected under 35
U.S.C. § 103(a) as being unpatentable Pironi and Beaumont. 2 Final Act.
2, 4.
II. Claims 4, 12, 27, 29, and 35 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Pironi, Beaumont, and Klingle. Id. at 5.
III. Claims 5, 28, 33, and 43 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable Pironi and Gerhard. 3 Id. at 8, 17.
IV. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pironi and Maleck. Id. at 10.
V. Claims 16-18 and 21-25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pironi, Beaumont, and Vinegar '772. Id. at 11.
2 Although not listed in the heading of the rejection, claim 15 is addressed in
the body of the rejection. See Final Act. 4.
3 Although the heading of the rejection of claim 43 indicates that
Vinegar '772 is used, this reference is not relied on in the body of the
rejection. See id. at 17-19.
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VI. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable Pironi, Beaumont, and Plunkett. Id. at 14.
VII. Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pironi, Maleck, and Anderson. Id. at 15.
VIII. Claims 36-39 and 44--49 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pironi, Beaumont, and Vinegar '771. 4 Id. at 16.
IX. Claim 1 stands rejected under 35 U.S.C. § 102 as being anticipated by
Pironi. Ans. 19.
ANALYSIS
We concur with the conclusions reached by the Examiner, and, except
as noted below, adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken, and (2) the
reasons set forth by the Examiner in the Answer. We highlight and amplify
certain teachings and suggestions of the references, as well as certain ones of
Appellants' arguments, as follows.
Rejection I
Appellants present arguments for claims 1, 2, 13-15, 19, 30-32, 34,
and 42 collectively. Appeal Br. 11-25. We select claim 1 as representative,
treating claims 2, 13-15, 19, 30-32, 34, and 42 as standing or falling with
representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Pironi discloses the method of claim 1
substantially as claimed, including, inter alia, admixing an above-ground
4 Although not listed in the heading of the rejection, claims 44--49 are
addressed in the body of the rejection. See Appeal Br. 16-17.
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Application 13/457,047
waste organic liquid (a non-aqueous phase liquid ("NAPL")) with a porous
matrix (sand) to produce a mixture. Final Act. 2-3 (citing Pironi, iii:5---6,
iii:l 1-18, 23, 24:5-6, 26:6-7, 36:2-3, 72, Fig. 2.1; Spec. i-fi-151 (identifying
soil as a porous matrix), 71 (identifying coal tar as an organic liquid), 5 19-
20 (citing Pironi, 24, 46, 60). The Examiner finds that "the waste is located
above the ground in the experiments." Id. at 2. The Examiner finds that
Pironi does not disclose producing the mixture in the manner recited by
claim 1, but finds that "Beaumont teaches feeding a series of batches of
waste organic liquid and a reagent in a mixer." Id. at 3 (citing Beaumont
i1 41 ). The Examiner reasons that it would have been obvious to one of
ordinary skill in the art to modify Pironi' s method "to feed[] a series of
batches of the waste organic liquid and the porous material into a vessel ...
to provide the advantage of mixing batches of reduced size, so as not to
operate when enough material is not available for mixing, thereby
conserving energy compared to a continuous feed." Id. at 3--4.
In traversing the rejection of claim 1, the crux of Appellants'
arguments is that the Examiner's reliance on Pironi is improper because the
context of Pironi is the remediation of contaminated soil, not the treatment
of an above-ground waste. Appeal Br. 12-22; see also Reply Br. 3-10, 12-
16. For example, Appellants assert that "[a]bove-ground waste organic
liquid in a volume that is substantially a liquid phase presents a problem that
is different in nature from that of pre-contaminated soils, which are
5 Although the Final Action cites to paragraphs 52 and 72 of the
Specification, we understand these to be typographical errors with the
intended reference being to paragraphs 51 and 71, which contain the
information noted by the Examiner.
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substantially in the solid phase" (Appeal Br. 13) and "[t]he context [of
Pironi] is plainly remediation of contaminated soil" (id. at 14). Appellants
rely on two declarations of Paolo Pironi, a named inventor of the instant
application and author of the Pironi reference, to support their position. Id.
at 18-22. For example, Appellants argue that "[t]he laboratory simulations
function as a precursor to a demonstration in his thesis: that smoldering can
be a method ofremediating contaminate[d] soils." Id. at 20 (citing Pironi
Declaration i-fi-14, 6 (dated July 24, 2014), "Pironi Deel. 1").
We are not persuaded by Appellants' arguments, which improperly
focus on the purpose of Pironi' s thesis rather than all of what Pironi actually
discloses. Each of the several experiments described in Pironi and relied
upon by the Examiner discloses mixing an above-ground waste organic
liquid, such as coal tar, with a porous matrix material, such as sand, in a
laboratory setting. See, e.g., Pironi 23-24, 42, 67; Pironi Deel. 1 i15 ("I
purchased a porous matrix, such as sand, and a[ n] NAPL, such as coal tar,
from vendors, and mixed them together .... "). Appellants confirm this in
their briefs. See, e.g., Appeal Br. 13 (citing Pironi Deel. 1 i-f 15). Although
the experiments were conducted to simulate contaminated below-ground
soil, this does not deter from their disclosure of mixing an above ground
waste organic liquid with a porous matrix material. It is well settled that a
prior art reference need not serve the same purpose as that disclosed in
Appellants' Specification in order to support the conclusion that the claimed
subject matter would have been obvious. See In re Lintner, 458 F.2d 1013,
1016 (CCPA 1972). Furthermore, "[a] reference may be read for all that it
teaches, including uses beyond its primary purpose." In re Mouttet, 686
F.3d 1322, 1331 (Fed. Cir. 2012) (citingKSRint'l Co. v. Teleflex Inc., 550
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U.S. 398, 418-21 (2007)). Appellants do not persuasively explain why the
mixing of coal tar and sand in a laboratory setting, as set forth in Pironi, does
not meet the claim 1 requirement of admixing of an above ground waste
organic liquid with a porous matrix material.
To the extent that Appellants argue Pironi does not use the same
words as Appellants (see, e.g., Appeal Br. 13 ("the term 'organic liquid' is
not mentioned in the cited passage of Pironi") ), this argument is not
persuasive because "the reference need not satisfy an ipsissimis verbis test."
In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing In re Bond, 910
F.2d 831, 832-33 (Fed. Cir. 1990)).
Appellants also argue that the combination of Pironi and Beaumont is
improper because the "combination of an in situ smoldering process with a
batch furnace combustion process is impossible." Appeal Br. 25.
We are not persuaded by Appellants' argument, which inaccurately
characterizes the Examiner's rejection. First, as explained above, the
Examiner relies on Pironi' s laboratory experiments, not the in situ
smoldering process of contaminated soil. Second, the Examiner does not
suggest incorporating Beaumont's furnace combustion with Pironi's
experiments. Rather, "Beaumont is only used to show '(a) feeding a series
of batches of the waste organic liquid and the porous material into a
vessel'." Ans. 20.
Accordingly, for the foregoing reasons, we sustain the rejection of
claims 1, 2, 13-15, 19, 30-32, 34, and 42 as being unpatentable Pironi and
Beaumont.
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Rejections II and IV-VIII
Claims 4, 8, 9, 12, 16-27, 29, 35-39, and 44--49 depend, directly or
indirectly, from claim 1. Appeal Br. 27-33 (Claims App.). Appellants do
not present arguments regarding the rejection of these claims separate from
their dependence from claim 1. See Appeal Br. 12-25. Therefore, we
likewise sustain the rejection of claims:
4, 12, 27, 29, and 35 as being unpatentable over Pironi, Beaumont,
Klingle;
8 and 9 as being unpatentable over Pironi and Maleck;
16-18 and 21-25 as being unpatentable over Pironi, Beaumont, and
Vinegar '772;
19 and 20 as being unpatentable Pironi, Beaumont, and Plunkett;
26 as being unpatentable over Pironi, Maleck, and Anderson; and
36-39 and 44--49 as being unpatentable over Pironi, Beaumont and
Vinegar '771.
Rejection III
Claims 5, 28, and 33
Claims 5, 28, and 33 depend, directly or indirectly, from claim 1.
Appeal Br. 27, 30-31 (Claims App.). Appellants do not present arguments
regarding the rejection of these claims separate from their dependence from
claim 1. See id. at 12-25. Therefore, we likewise sustain the rejection of
claims 5, 28, and 33 as being unpatentable Pironi and Gerhard.
Claim 43
Appellants do not present arguments regarding the rejection of
independent claim 43. See id. Accordingly, Appellants have waived any
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argument of error, and we summarily sustain the rejection of claim 43 as
being unpatentable over Pironi and Gerhard. See Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance without
consideration of the substantive merits is appropriate where an appellant
fails to contest a ground of rejection).
Rejection IX
In the Answer, the Examiner provides an alternate interpretation of
Pironi, and finds that Pironi discloses all of the elements of claim 1. Ans.
19--20. Notably, the Examiner finds that Pironi discloses "(b) forming a
confinement bed comprising one of the porous matrix material (bottom layer
of 'Clean Sand', see fig. 3.1) and continuously pouring into the confinement
bed the other of the porous matrix material (top layer of 'Clean Sand', see
Fig. 3.1)." Id. at 19.
We do not sustain this rejection because, as correctly noted by
Appellants, the Examiner misquotes the claim. See Reply Br. 18. The
pertinent part of claim 1 recites "(b) forming a confinement bed comprising
one of the porous matrix material or the waste organic liquid and
continuously pouring into the confinement bed the other of the porous
matrix material or the waste organic liquid." Appeal Br. 27 (Claims App.)
(emphasis added). In other words, substep (b) of claim 1 requires mixing
two components by forming a confinement bed comprising the first
component (e.g., a porous matrix material) and continuously pouring the
second component (e.g., a waste organic liquid) into the confinement bed.
The Examiner identifies forming a confinement bed comprising a porous
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matrix material, but has not identified the second requirement of
continuously pouring a waste organic liquid into the confinement bed.
Because the Examiner has not identified how each element of claim 1
is disclosed in Pironi, we do not sustain the rejection of claim 1 as being
anticipated by Pironi.
DECISION
The Examiner's decision to reject claims 1, 2, 4, 5, 8, 9, 12-39, and
42--49 under 35 U.S.C. § 103(a) is affirmed.
The Examiner's decision to reject claim 1 under 35 U.S.C. § 102 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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