Ex Parte Miecznik

Board of Patent Appeals and Interferences

Apr 20, 2007

10257952 (B.P.A.I. Apr. 20, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BERT MIECZNIK
____________

Appeal 2006-2667
Application 10/257,952
Technology Center 1700
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Decided: April 20, 2007
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Before BRADLEY R. GARRIS, CHARLES F. WARREN, and PETER F.
KRATZ, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
We REVERSE.
Statement of the case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-6 and 11-13. We have jurisdiction under 35 U.S.C. § 6.
Appellant invented a method for inhibiting scale formation and/or
corrosion in systems conveying or in contact with liquids wherein the liquid
Appeal 2006-2667
Application 10/257,952

is treated such that the molar distribution of the hardening constituents in the
liquid is influenced such that a proportion of magnesium and/or magnesium
compounds is increased at the expense of the proportion of the other
hardening constituents. Further details of this method are set forth in
representative claims 1 and 11 which read as follows:
1. A method for inhibiting scale formation and/or corrosion in
systems conveying or in contact with liquids, whereby the liquid has a
hardness and is treated such that the molar distribution of the hardening
constituents in the liquid to be treated is influenced such that a proportion of
magnesium and/or magnesium compounds is increased at the expense of the
proportion of the other hardening constituents, wherein only a partial flow of
the liquid is treated and then the treated partial flow is mixed with an
untreated main flow.

11. The method as claimed in Claim 1, wherein the hardness of the
liquid is not changed.

The references set forth below are relied upon by the Examiner has
evidence of obviousness:
Hann US 5,277,823 Jan. 11, 1994
Mackintosh US 5,993,737 Nov. 30, 1999
Claim 11 stands rejected under the first paragraph of 35 U.S.C. § 112
as failing to comply with the written description requirement. According to
the Examiner, the claim 11 limitation "the hardness of the liquid is not
changed" lacks clear antecedent basis in the Specification as originally filed
and is drawn to new matter (Answer 3).
Claims 1-4, 6, and 11-13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mackintosh. In the paragraph bridging pages 3-4 of
the Answer, the Examiner describes his position as follows:
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Application 10/257,952

Mackintosh et al. disclose (see col. 2 line 5 through col. 4
line 52, and col. 6 line 29 through col. 8 line 14) a method of
stabilizing water or inhibiting corrosion in water systems
substantially as claimed. The claims differ from Mackintosh et
al. by reciting that a proportion of the magnesium compounds is
increased at the expense of the other hardening constituents. It
is submitted that the bed utilized in Mackintosh et al. can
include magnesium carbonate or dolomite, which would appear
to increase the magnesium compound proportion of the raw
water passing through the bed, and substitute or replace
hardening constituents with the proportion of magnesium. It
would have been obvious to one skilled in the art to modify the
method of Mackintosh et al. by increasing the recited
proportion of magnesium compounds in the liquid, to aid in
stabilizing the liquid. The specific partial flow and proportion
utilized, would have been an obvious matter of process
optimization to one skilled in the art, depending on the specific
liquid treated and results desired, absent a sufficient showing of
unexpected results.

Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mackintosh as applied above and further in view of Hann.
The Examiner concludes that "[i]t would have been obvious to one skilled in
the art to modify the method of Mackintosh … by addition of the recited
magnesium salt in view of the teachings of Hann … to aid in inhibiting scale
deposition in the liquid" (Answer 4).
Concerning the § 112 rejection, the Appellant argues that the claim 11
feature under consideration "is clearly set forth in the specification" at a
number of places (Br. 3).
The Appellant argues that each of the § 103 rejections is improper be
cause Mackintosh contains no teaching or suggestion of increasing a
proportion of magnesium and/or magnesium compounds at the expense of
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Application 10/257,952

the proportion of the other hardening constituents as required by
independent claim 1 as well as by each of the other claims on appeal which
ultimately depend from claim 1 (Br. 4-5).

The § 112 Issue
Has the Examiner presented evidence or reasons why persons skilled
in the art would not recognize in the Specification disclosure a description of
the invention defined by claim 1?

Principal of Law for the § 112 Issue
It is the Examiner's burden to establish a prima facie case of
unpatentability based on the written description requirement, and that burden
is discharged by presenting evidence or reasons why persons skilled in the
art would not recognize in the disclosure a description of the invention
defined by the claims. In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578,
1583 (Fed. Cir. 1996).

Analysis of the § 112 Issue
On the record of this appeal, the Examiner has not presented any such
evidence or reasons. On the other hand, the Appellant has correctly argued
that the claim 11 feature is clearly described in the Specification at a number
of places. For example, see the Specification at the Abstract ("without
reducing the quantity of hardness constituents contained in the liquid
overall"), ¶ 0013 ("without unavoidably increasing the hardness of the
liquid"), ¶ 0022 ("the hardness of the liquid does not increase"), ¶ 0024 ("the
overall hardness in the liquid is left unchanged by the device").
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Application 10/257,952

Conclusion of Law for the § 112 Issue
The Examiner has not presented evidence or reasons why persons
skilled in the art would not recognize in the disclosure a description of the
invention defined by claim 11, and the aforementioned Specification
disclosures evince that such persons would recognize a description of the
claim 11 invention. Therefore, we cannot sustain the Examiner's § 112, first
paragraph, rejection of claim 11.

The § 103 Issue
Has the Examiner established a prima facie case of obviousness by
pointing to disclosure in Mackintosh which teaches or would have suggested
increasing a proportion of magnesium and/or magnesium compounds at the
expense of the proportion of the other hardening constituents as required by
each of the appealed claims?

Principal of Law for the § 103 Issue
The Examiner bears the initial burden, on review of prior art or on any
other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).

Analysis of the § 103 Issue
As previously indicated, the Examiner has acknowledged that "[t]he
claims differ from Mackintosh … by reciting that a proportion of the
magnesium compounds is increased at the expense of the other hardening
constituents" (Answer 3) but states that "the bed utilized in Mackintosh …
can include magnesium carbonate or dolomite, which would appear to
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Application 10/257,952

increase the magnesium compound proportion of the raw water passing
through the bed, and substitute or replace hardening constituents with the
proportion of magnesium" (id.). There is reasonableness in the Examiner's
position that the magnesium compound proportion would increase in water
passing through Mackintosh's bed of calcium carbonate or dolomite. Indeed,
this result would appear to be a necessary consequence, and the Appellant
does not argue otherwise. On the other hand, there is no apparent support
whatsoever, and the Examiner proffers none, for the Examiner's position that
other hardening constituents in the water would be replaced by the increased
portion of magnesium. To the contrary, Mackintosh expressly teaches as his
desired goal increasing a non-magnesium hardening constituent, namely, the
calcium content in the water passing through his treatment bed (col. 2, ll. 11-
32).

Conclusion of Law for the § 103 Issue
The Examiner has failed to carry his initial burden of establishing a
prima facie case of obviousness by pointing to some teaching or suggestion
in Mackintosh for the appealed claim limitation that a proportion of
magnesium and/or magnesium compounds is increased at the expense of the
proportion of the other hardening constituents. We cannot sustain, therefore,
the § 103 rejections of claims 1-4, 6, and 11-13 as being unpatentable over
Mackintosh or of claim 5 as being unpatentable over Mackintosh in view of
Hann.

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Application 10/257,952

Order
The decision of the Examiner is REVERSED.

BRG/cam

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