Ex Parte Page

Board of Patent Appeals and Interferences

Sep 28, 2006

10884619 (B.P.A.I. Sep. 28, 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for publication and is not binding precedent of the Board.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
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRUCE W. PAGE
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Appeal 2006-2404
Application 10/884,619
Technology Center 1700
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Decided: September 28, 2006
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Before GARRIS, WALTZ, and GAUDETTE, 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 7, which are the only claims pending in this
application. We have jurisdiction pursuant to 35 U.S.C. § 134.
According to Appellant, the invention is directed to a method of
removing methyl tertiary butyl ether (MTBE) from an aqueous solution by
passing the solution through a counter-current air stripper packed with open
Appeal 2006-2404
Application 10/884,619

spherical balls having internal ribs (Br. 2).1 Claims 1 and 7 are illustrative
of the invention and are reproduced below:
1. A method of removing MTBE from an aqueous solution
comprising providing a counter-current air stripper in the form of a
substantially cylindrical column, said substantially cylindrical column
having a top and a bottom, a substantially circular cross section, longitudinal
axis, inlet for said aqueous solution proximate said top and inlet for air
proximate said bottom such that said aqueous solution is caused to
gravitationally fall within said column and said air is caused to rise within
said column counter-current thereto, said column being at least partially
packed with open spherical balls having internal ribs.

7. A method of removing MTBE from an aqueous solution
comprising providing a counter-current air stripper in the form of a
substantially cylindrical packed column, said substantially cylindrical
column having a top and a bottom, a substantially circular cross section,
longitudinal axis, inlet for said aqueous solution containing MTBE
proximate said top and inlet for air proximate said bottom such that said
aqueous solution is caused to gravitationally fall within said column and said
air is caused to rise within said column counter-current thereto, said column
being operated at approximately 100-200 millibars of pressure resulting in
substantial removal of MTBE from said aqueous solution.

The Examiner, in addition to Appellant’s admitted prior art (AAPA),
has relied upon Wasinger, U.S. 6,197,206, issued Mar. 6, 2001, as evidence
of obviousness.
Claims 1-7 stand rejected under 35 U.S.C. § 112, second paragraph,
“as failing to set forth the subject matter which applicant(s) regard as their
invention” (Answer 2). Claims 1-7 also stand rejected under 35 U.S.C.

1 We refer to and cite from the amended Appeal Brief dated Mar. 3, 2006.
This Brief does not number the pages. Therefore, we refer to the pages as
numbered from the first page containing the “Real Party in Interest.”
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Application 10/884,619

§ 103(a) as unpatentable over the combined teachings of Wasinger and the
AAPA (id.).
We REVERSE the rejections of claims 1-6 under both § 112, second
paragraph, and § 103(a) essentially for the reasons stated in the Brief, as well
as those reasons set forth below. We AFFIRM the rejections of claim 7
under both § 112, second paragraph, and § 103(a) for the reasons stated
below. Accordingly, the decision of the Examiner is AFFIRMED-IN-
PART.
OPINION
A. The Rejection under § 112, second paragraph
The Examiner submits evidence that claims 1-7 fail to correspond in
scope with that which Appellant regards as the invention, referring to the
statement by Appellant in the Paper dated Oct. 17, 2003 (Answer 2).
Accordingly, the Examiner finds that Appellant “has not claimed all of the
specific limitations that would limit the invention to the use of only Jaeger
Tri-Packs” (id.).
Appellant argues “that the specification in referring to Jaeger Tri-
Packs is nothing more than an example of a commercially available material
providing ‘open spherical balls having internal ribs’ and that the citation to
these commercial products should not be considered limiting” (Br. 5).
Appellant notes that the Summary of the Invention and the claims, as
originally filed, are not so limited (id.).
If the scope of the subject matter embraced by a claim is clear, and if
the Appellant has not otherwise indicated that he intends the claims to be of
a different scope, then the claim does particularly point out and distinctly
claim the subject matter which the Appellant regards as his invention. See
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In re Cormany, 476 F.2d 998, 1000-02, 177 U.S.P.Q. 450, 451-53 (C.C.P.A.
1973); In re Borkowski, 422 F.2d 904, 909, 164 U.S.P.Q. 642, 645-46
(C.C.P.A. 1970); and In re Prater, 415 F.2d 1393, 1404, 162 U.S.P.Q. 541,
550 (C.C.P.A. 1969). On the facts in this record, we agree with Appellant
that the invention is using “open spherical balls having internal ribs” as the
packing material in a counter-current air stripper, with Jaeger Tri-Packs
exemplary of this type of packing. The statement quoted by the Examiner
(Answer 2) merely reiterates this same fact, namely that the stripper must
employ spherical balls as packing, as exemplified by packing known as
Jaeger Tri-Packs. As correctly argued by Appellant, support for this fact
resides throughout the original specification and claims. See the “Summary
of the Invention” (Specification 5, ll. 24-25) and original Claim 1. Although
Appellant teaches that the selection of the packing is “critical to the
performance of an air stripper,” the specification clearly is not limited to
Jaeger Tri-Packs (Specification 6, l. 16). Accordingly, we determine that the
Examiner has not met the burden of proof in establishing that Appellant
intends the claims to be of a different scope. Therefore, we cannot sustain
the rejection of claims 1-6 under the second paragraph of § 112.
The subject matter of claim 7 presents a different issue. As discussed
above, we agree with Appellant that the invention is regarded as the use of
“open spherical balls with internal ribs” as packing in a counter-current air
stripper to remove MTBE from an aqueous solution. However, claim 7
recites that the air stripper contains a “packed column” but never specifies
what packing is employed (see claim 7, l. 2). Appellant recognizes that
claim 7 does not restrict the packing material to the open spherical balls
having internal ribs (Br. 2-3). However, this summary of claim 7 is
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Application 10/884,619

contradicted by Appellant’s arguments concerning what the “invention” is in
this application (Br. 5-7), as well as Appellant’s previous remarks (see the
Paper dated Oct. 17, 2003) and the original specification and claims.
Furthermore, Appellant discloses that the “concept” recited by claim 7,
namely operating a packed tower counter-current stripper under a total
pressure of 100 to 200 millibars, was known (Specification 7, ll. 12-14).
Accordingly, the evidence on this record establishes that Appellant has
indicated that he intends claim 7 to be of a different scope. Therefore, the
rejection of claim 7 under § 112, second paragraph, is AFFIRMED.
B. The Rejection under § 103(a)
The Examiner finds that Wasinger teaches air stripping of MTBE
from groundwater but fails to disclose the use of “open spherical balls
having internal ribs” as packing (Answer 2). The Examiner relies on the
AAPA at pages 6-7 of the specification for the teaching of employing Jaeger
Tri-Packs as packing in the environmental field to achieve high removal
efficiencies (Answer 3). From these findings, the Examiner concludes that it
would have been obvious to one of ordinary skill in this art at the time of the
invention to employ column packing materials that were “the standard in the
U.S. environmental field” when stripping MTBE from contaminated
groundwater in the process of Wasinger in order to obtain very high removal
efficiencies and to avoid the known problem of “bridging” (id).
Appellant argues that Wasinger not only fails to disclose the claimed
open spherical balls having internal ribs but does not employ the claimed
method of counter-current air stripping and further requires the use of ozone
as a necessary constituent in removing MTBE from water (Br. 8). Appellant
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argues that there is not enough in Wasinger when viewed in light of the
AAPA to support the conclusions reached by the Examiner (id.).
We agree with the Examiner that Wasinger discloses air stripping of
MTBE from groundwater (see Fig. 1; col. 3, ll. 39-65). Since the inlet for
the air/ozone treated water of the Wasinger process is near the top of the
column and the remaining gas/air escapes from the top of this column, one
of ordinary skill in this art would have presumed that the air stripping is
counter-current, with air/ozone entering at the bottom of the column, and
that packing material at least partially filled the column (Wasinger, Fig. 1;
and col. 4, ll. 12-17). Appellant also admits that counter-current air
stripping of groundwater contaminated with MTBE was known in the art
(Specification 4-5). However, it is incumbent upon the Examiner, when
combining references, to establish some reasoning, suggestion or motivation
suggesting the desirability of the proposed combination. See In re Jones,
958 F.2d 347, 351, 21 U.S.P.Q.2d 1941, 1943 (Fed. Cir. 1992). “[T]here
must be some logical reason apparent from positive, concrete evidence of
record which justifies a combination of primary and secondary references.”
In re Regel, 526 F.2d 1399, 1403 n.6, 188 U.S.P.Q. 136, 139 n.6 (C.C.P.A.
1975). On this record, we determine that the Examiner has not established
convincing reasoning supporting the proposed combination of references.
The general statement in the AAPA that Jaeger Tri-Packs “became the
standard in the U.S. environmental field where very high removal
efficiencies were often necessary” does not provide the requisite motivation
to employ such packing in the specific process of Wasinger, especially since
Wasinger uses the pressurized tank 17 and air/ozone microbubbling to
remove MTBE from water while employing the air stripper to drive the
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residual ozone from the water (Fig. 1; col. 3, ll. 59-65; and col. 4, ll. 7-11).
Any showing of a suggestion or motivation must be clear and particular, not
general statements. See In re Dembiczak, 175 F.3d 994, 999, 50 U.S.P.Q.2d
1614, 1617 (Fed. Cir. 1999).
For the foregoing reasons, we determine that the Examiner has not
established a prima facie case of obviousness in view of the reference
evidence. Therefore, we REVERSE the rejection of claims 1-6 under
35 U.S.C. § 103(a) over the combined teachings of Wasinger and AAPA.
As noted above, the scope of claim 7 presents a different issue. As
discussed above, the process disclosed by Wasinger presumably employs
counter-current air stripping of an aqueous solution of MTBE with a packed
column. As correctly found by the Examiner (Answer 3), the pressure
taught by Wasinger for the pressurized contact tank is approximately the
same as the claimed pressure and would presumably have been employed by
the artisan in the subsequent air stripping. Additionally, we note that
Appellant admits that use of various pressures for the air stripper was known
in the art, as was the specifically claimed pressure range (Specification 4-5
and 7). Therefore, from the combined teachings of Wasinger and AAPA, we
determine that every limitation of claim 7 on appeal would have been
suggested to one of ordinary skill in this art. Accordingly, the rejection of
claim 7 under 35 U.S.C. § 103(a) over the combined teachings of Wasinger
and AAPA is AFFIRMED.
C. Summary
The rejection of claims 1-6 under 35 U.S.C. § 112, second paragraph,
is REVERSED. The rejection of claim 7 under 35 U.S.C. § 112, second
paragraph, is AFFIRMED.
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The rejection of claims 1-6 under 35 U.S.C. § 103(a) over Wasinger
and AAPA is REVERSED. The rejection of claim 7 under 35 U.S.C.
§ 103(a) over Wasinger and AAPA is AFFIRMED.
The decision of the Examiner is AFFIRMED-IN-PART.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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