Ex Parte O et al

Board of Patent Appeals and Interferences

Apr 27, 2006

10137130 (B.P.A.I. Apr. 27, 2006)

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today was not written for publication and is not binding precedent of the Board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 KELLY O’CONNOR,
LAURENS VAN DER TAK and
ALBERT M. WOLLMANN
______________

Appeal No. 2006-0858
Application 10/137,130

______________

ON BRIEF

_______________

Before GARRIS, WARREN, and, WALTZ, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s final rejection of
claims 1 through 14, which are all of the claims pending in this application. We have
jurisdiction pursuant to 35 U.S.C. § 134.
According to appellants, the invention is directed to an apparatus for removing
particulates from a wastewater stream, where the apparatus includes a chamber having
a wastewater inlet and a wastewater outlet, a vertically inclined grating, and a baffle
Appeal No. 2006-0858
Application No. 10/137,130

2

which is configured to cooperate with the grating to generate a vortex in the wastewater
stream having a velocity component parallel to the face of the grating which urges
particles trapped by the grating along the grating surface toward a surface of the
wastewater to suspend the particulates (Brief, pages 2-3).1 Claim 1 is illustrative of the
invention:
1. An apparatus for removing particulates from a
wastewater stream, the apparatus comprising:

a chamber having a wastewater inlet and a wastewater outlet promoting a
generally horizontal wastewater flow;

a grating in the chamber between the wastewater inlet and the wastewater
outlet having a screen size for preventing the passage of particulates having
greater than a select effective diameter from the wastewater inlet into the
wastewater outlet, the grating being vertically inclined relative to the direction of
wastewater flow; and

a baffle in the chamber, the baffle being configured to cooperate with the
grating to generate a vortex in the wastewater having a velocity component
parallel to the face of the grating which urges particles trapped by the grating
along the grating surface toward a surface of the wastewater to suspend
particulates as the wastewater flows between the wastewater inlet and the
wastewater outlet.

The examiner has relied upon the following references as evidence of
unpatentability:
Pettepher 1,999,637 Apr. 30, 1935

1We refer to and cite from the “Amended Appeal Brief” dated May 4, 2005.
Appeal No. 2006-0858
Application No. 10/137,130

3

Hirshstein 2,284,737 Jun. 02, 1942
Walker 3,285,415 Nov. 15, 1966
Teller et al. (Teller) 4,021,347 May 03, 1977
The following rejections are before us for review in this appeal:2
(1) claims 1, 7 and 11 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Teller (Answer, page 5);
(2) claims 4-6 and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Teller (Answer, page 6);
(3) claims 8 and 12-14 stand rejected under section 103(a) as unpatentable over
Teller in view of Hirshstein (id.);
(4) claims 2-3 stand rejected under section 103(a) as unpatentable over Teller in
view of Pettepher (id.); and
(5) claim 10 is the subject of a new ground of rejection under section 103(a) as
unpatentable over Teller in view of Walker (Answer, page 3).
Based on the totality of the record, we reverse all rejections on appeal essentially
for the reasons stated in the Brief and Reply Brief, as well as those reasons set forth
below.
OPINION

2We note that the rejection of claim 10 under 35 U.S.C. § 112, second
paragraph, is not before us for review in this appeal (Answer, page 2, ¶(6)).
Appeal No. 2006-0858
Application No. 10/137,130

4
A. The Rejection under § 102(b)
The examiner finds that Figure 4 of Teller discloses all of the claimed elements,
specifically the screen 70 which the examiner finds to constitute a “grating” (Answer,
page 5).
To anticipate a claim, a prior art reference must disclose every limitation of the
claimed invention, either explicitly or inherently. See Glaxo Inc. v. Novopharm Ltd., 52
F.3d 1043, 1047, 34 USPQ2d 1565, 1567 (Fed. Cir. 1995). Anticipation is an issue of
fact. See In re Graves, 69 F.3d 1147, 1151, 36 USPQ2d 1697, 1700 (Fed. Cir. 1995).
The question of whether a claim limitation is inherent in a prior art reference is a factual
issue on which evidence may be introduced. See Continental Can Co. USA, Inc. v.
Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
The initial burden of establishing unpatentability, on any ground, rests with the
examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). As correctly argued by appellants (Brief, pages 5-6; Reply Brief, pages 4-5), the
examiner accurately states the law but presents no convincing argument or evidence
that the baffle and screen as configured by Teller are capable of meeting the claimed
functional limitation, namely that the baffle and screen/grating must be configured to
cooperate “to generate a vortex in the wastewater having a velocity component parallel
to the face of the grating which urges particles trapped by the grating along the grating
surface toward a surface of the wastewater to suspend particulates” (see claim 1 on
Appeal No. 2006-0858
Application No. 10/137,130

5
appeal). The examiner’s only argument regarding this functional limitation is that this
limitation is “flow dependent” (Answer, page 8) but we find no evidence or support in the
record regarding the type of flow through the apparatus of Teller or whether such flow
would have created the claimed vortex and its effect. Conversely, the record includes
evidence from Teller that the baffle and screen in Figure 4 of Teller are configured a
short distance apart “to prevent spray from the backwash nozzles in line 64 from
creating undue turbulence which could interfere with the settling of solids in
compartment 22" (col. 4, ll. 37-42; see also col. 3, ll. 47-54 and 62-67). Accordingly,
the closeness of the screen and baffle, as well as the function of the settling
compartment 22, taught by Teller would have inferred to the artisan that the
configuration would not have been capable of creating a vortex to urge particles away
from the grate/screen and suspend these particles in the wastewater stream. Thus
there is insufficient convincing evidence on this record that the baffle and screen
disclosed by Teller would have been capable of meeting the claimed functional
limitation. Therefore, since the examiner has not established prima facie anticipation,
the burden of proof has not shifted to appellants. Compare In re Schreiber, 128 F.3d
1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
For the foregoing reasons and those stated in the Brief and Reply Brief, we
cannot sustain the examiner’s rejection under section 102(b) over Teller.
B. The Rejections under § 103(a)
All of the rejections under section 103(a) are based on Teller alone or in view of
Appeal No. 2006-0858
Application No. 10/137,130

6
various secondary references (Answer, pages 3 and 6). However, the modifications
proposed by the examiner, either over Teller alone or in view of the secondary
references to Walker, Hirshstein, or Pettepher, do not remedy the deficiency discussed
above with respect to the functional limitation of claim 1 on appeal. Accordingly, we
also reverse all rejections based on section 103(a) for the reasons stated above as well
as those found in the Brief and Reply Brief.
C. Summary
The decision of the examiner is reversed.
Appeal No. 2006-0858
Application No. 10/137,130

7
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a)(1)(iv)(2004).

REVERSED

BRADLEY R. GARRIS ) Administrative
Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
) )
THOMAS A. WALTZ )
Administrative Patent Judge )

TAW/TF
Appeal No. 2006-0858
Application No. 10/137,130

8
SWANSON & BRATSCHUN L.L.C.
1745 SHEA CENTER DRIVE
SUITE 330
HIGHLANDS RANCH, CO 80129