Ex Parte Jalalpoor

Patent Trial and Appeal Board

Jan 21, 2016

12310579 (P.T.A.B. Jan. 21, 2016)

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.
12/310,579 02/27/2009 Massoud Jalalpoor W9747-01 2430
7590 01/21/2016
WILLIAM D. BUNCH
W R GRACE & CO. CONN, PATENT DEPATMENT, LEGAL
SERVICES GROUP 7500 GRACE DRIVE
COLUMBIA, MD 21044
EXAMINER
LEFF, STEVEN N
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
01/21/2016 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 MASSOUD JALALPOOR
____________

Appeal 2014-004706
Application 12/310,579
Technology Center 1700
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s
November 14, 2012 decision finally rejecting claims 1–23, 32, and 33
(“Final Act.”).2 We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We reverse.

1 Appellant identifies the Real Party in Interest as W.R. Grace & Co.-Conn.
(Appeal Br. 3).
2 In the Appeal Brief, Appellant requested the opportunity to appear before
the Board to argue the issues (Appeal Br. 1). However, no separate paper
captioned REQUEST FOR ORAL HEARING or fee was timely filed, as
required by 37 C.F.R. § 41.47(b). Accordingly, we decide this appeal on the
briefs without an oral hearing. 37 C.F.R. § 41.47(c).
Appeal 2014-004706
Application 12/310,579

2
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a method of using a staggered
filtration system to process fluids, such as oils, edible oils, fats, and similar
materials (Abstract).
Independent claim 1 is representative, and is reproduced below from
the Claims Appendix of the Appeal Brief (key claim limitations shown in
italics):
1. A method of processing a fluid using a staggered
filtration system, said method comprising the steps of:
passing the fluid through two or more pre-bleaching
filters, wherein the two or more pre-bleaching filters are in
parallel with one another; and
filtering the fluid through one or more post-bleaching
filters, wherein the one or more post-bleaching filters are in
parallel with one another and in series with the two or more pre-
bleaching filters;
wherein the staggered filtration system has a ratio of pre-
bleaching filters to post-bleaching filters of greater than 1:1.

REJECTIONS
I. Claims 1–17, 32, and 33 are rejected under 35 U.S.C. § 102(b) as
anticipated by Girdler.3
II. Claims 1, 3, 4, 6–14, 17, 19–23, 32, and 33 are rejected under
35 U.S.C. § 102(b) as anticipated by McMichael.4
III. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Girdler.5

3 The Girdler Corporation, GB 700234, published Nov. 25, 1953.
4 McMichael et al., GB 737965, published Oct. 5, 1955.
Appeal 2014-004706
Application 12/310,579

3
With the exception of claim 18, Appellant does not make separate
substantive arguments in support of patentability of any of the claims (see
generally, Appeal Br. 6–15; Reply Br. 2–9). Accordingly, our discussion
will focus on the anticipation rejections of independent claim 1. Claim 18
will be addressed separately.

DISCUSSION
Figure 2C of Appellant’s Specification, which illustrates the invention
of claim 1, is reproduced below:

Figure 2C of the Specification illustrates details of a method for treating oil
using dryer 307, pre-bleaching filters 315 and 316 in fluid communication
with bleaching unit 315, and post-bleaching filter 317 in a staggered
filtration system (Spec. ¶¶ 27, 41–43, and 73).

It is well established that “[a] prior art reference anticipates a patent
claim under 35 U.S.C. § 102(b) if it discloses every claim limitation.” In re
Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs.
Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)).
In this instance, Appellant argues that Girdler fails to disclose a method in

5 The Examiner’s rejection of claims 18–23 under 35 U.S.C. §112, 4th
paragraph as being of improper dependent form is withdrawn (Ans. 6).
Appeal 2014-004706
Application 12/310,579

4
which a fluid is passed through two or more pre-bleaching filters in parallel
with one another in a single step (Appeal Br. 9).
We give the claim limitation “passing the fluid through two or more
pre-bleaching filters, wherein the two or more pre-bleaching filters are in
parallel with one another” its broadest reasonable construction consistent
with the Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007).
The claimed invention is directed to a method of using “a staggered
filtration system” for processing a fluid. (Claims 1, 13, 32.) The
Specification describes an exemplary method comprising successive Process
Flow Steps 1–6 “in which filters A, B and C are utilized (e.g., the filters are
in-line and in operation).” (Spec. ¶ 52.) Each of filters A, B, and C serves
as either a “pre-bleaching filter” or a “post-bleaching filter” during a given
one of Process Flow Steps 1–6. (See generally, ¶¶ 37–54.)
[T]he term “pre-bleaching filter or filters” is used to describe
one or more filters in-line with a bleaching unit such that fluid
(e.g., oil, fat, or similar fluid) passes through the one or more
filters prior to passing through the bleaching unit during a given
process flow step. . . . [T]he term “post-bleaching filter or
filters” is used to describe one or more filters in-line with a
bleaching unit such that fluid (e.g., oil, fat, or similar fluid)
passes through the one or more filters after passing through the
bleaching unit during a given process flow step.
In Process Flow Step 2, filter A serves as a pre-bleaching filter, filter B
serves as a post-bleaching filter, and filter C is on stand-by. (Id. at ¶¶ 52–
53, Table 1; Fig. 2B). In Process Flow Step 3, fluid is pre-bleached by
passing it through filters A and B, arranged in parallel, and filter C serves as
a post-bleaching filter. (Id.; Fig. 2C.) In Process Flow Step 4, fluid is pre-
bleached by passing it through filters B and C, arranged in parallel, and filter
Appeal 2014-004706
Application 12/310,579

5
A serves as a post-bleaching filter; and in Process Flow Step 5 fluid is pre-
bleached by passing it through filters A and C, arranged in parallel, and filter
B serves as a post-bleaching filter. (Id.; Figs. 2D, 2E.)
Based on our consideration of the claim 1 recitation “passing the fluid
through two or more pre-bleaching filters, wherein the two or more pre-
bleaching filters are in parallel with one another” in light of the
Specification, we interpret this step as requiring that fluid is passed
simultaneously through two or more filters, arranged in parallel and
performing a pre-bleaching function. In other words, the “passing” step, as
recited in claim 1, 6 requires that the fluid separate prior to entering the
filters such that the entirety of the fluid is not passed through any one of the
two or more pre-bleaching filters.
In contrast, Girdler’s pre-bleaching filters are not in-line with the
bleaching unit (see Girdler, 2:94–98 (when “connection[] 9b [from F2 is]
closed and connection 9a [from F1 is] open, the filtered and partially
bleached oil is delivered from press F1 through pipe 9 into the [bleaching]
clay and oil mixing vessel M” (emphasis added))). Furthermore, the record
evidence provides that fluid passage through each of Girdler’s “pre-
bleaching filters” F1 and F2 occurs in different steps (see Girdler, 2:75–89;
3:74-80; claim 2).

6 Independent claim 32 has an identically worded step which we construe the
same way. Independent claim 13 uses slightly different language for this
step (“passing the fluid…so that the fluid passes through (i) two or more pre-
bleaching filers A and B [that]…are in parallel with one another…”).
Despite the slight differences in specific language, claim 32 also requires
passing fluid through two or more bleaching filters which are “in parallel”
with each other. Accordingly, we conclude that this limitation of claim 13
should have the same construction as the “passing step” in claims 1 and 32.
Appeal 2014-004706
Application 12/310,579

6
In view of our construction of claim 1, Appellant’s argument that
Girdler does not disclose a step in which a fluid is passed through two or
more pre-bleaching filters in parallel with one another (Appeal Br. 6–8;
Reply Br. 2–4) is persuasive. Accordingly, we reverse the rejection of claim
1 as anticipated by Girdler. We likewise reverse the rejection of dependent
claims 2–12, 14–17, and 33 and independent claims 13 and 32, as
anticipated by Girdler.7
Regarding the rejection based on McMichael, we note that the
Examiner appears to rely on the same incorrect construction of claim 1 and
finds that McMichael has a very similar disclosure as Girdler (Final Act. 4).
Thus, for the same reasons that the anticipation rejection over Girdler is
reversibly erroneous, we reverse the rejection of claim 1 as anticipated by
McMichael. We likewise reverse the rejection of dependent claims 3, 4, 6–
12, 14, 17, 19–23, and 33 and independent claims 13 and 32 (see fn. 7), as
anticipated by McMichael.
Regarding dependent claim 18, Appellant’s arguments in support of
the non-obviousness of claim 18 (App. Br. 12–14; Reply Br. 7–9) are
persuasive in view of the claim construction set forth above.

Accordingly, we reverse the Examiner’s § 103(a) rejection of claim
18.

7 As noted above in Footnote 6, our construction of the key limitation of
claim 1 (“passing the fluid through . . . two or more pre-bleaching filters . . .
in parallel with one another”) also applies to the similar recitations in
independent claims 13 and 32. With this construction, the anticipation
rejections of claims 13 and 32 are reversed for the same reason as claim 1.
Appeal 2014-004706
Application 12/310,579

7
CONCLUSION
We REVERSE the rejection of claims 1–17, 32, and 33 under
35 U.S.C. § 102(b) as anticipated by Girdler.
We REVERSE the rejection of claims 1, 3, 4, 6–14, 17, 19–23, 32,
and 33 under 35 U.S.C. § 102(b) as anticipated by McMichael.
We REVERSE the rejection of claim 18 under 35 U.S.C. § 103(a) as
obvious over Girdler.

REVERSED

sl