Ex Parte Pitts et al

Board of Patent Appeals and Interferences

May 11, 2007

10796814 (B.P.A.I. May. 11, 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for publication and is not binding precedent of the Board.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 M. MICHAEL PITTS, JR.
AND RODRIGO V. ROMO
____________

Appeal 2007-0417
Application 10/796,814
Technology Center 1700
____________

Decided: May 11, 2007
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and THOMAS A.
WALTZ, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's refusal to allow claims 1 through 3, all of the claims pending in
the above-identified application. We have jurisdiction pursuant to 35 U.S.C.
§ 6.

Appeal 2007-0417
Application 10/796,814

I. APPEALED SUBJECT MATTER
The subject matter on appeal is directed to a method for preventing
the formation of biofilm deposits in water treatment systems “by the
application of a capacitive electrostatic device (Specification 1, paragraphs
0002 and 0003).” Further details of the appealed subject matter are recited
in illustrative claim 1 reproduced below:
1. A method for reducing the formation of biofilm deposits on a wall
in a water system comprising the steps of:

providing a capacitive electrostatic generator adapted to create an
electrostatic field;

immersing said electrostatic generator in a body of water in the water
system, the water system being connected to an electrical ground relative to
an electromotive force available for energizing the electrostatic generator;
and

energizing said electrostatic generator with said electromotive force,
such that a corresponding electrostatic field is created between said
generator immersed in the water system and said electrical ground without
measurable current leakage in the body of water;

wherein said capacitive electrostatic generator comprises a vitrified
ceramic tube of unibody construction having an integrally-sealed end
defining an inner cavity with an inner wall; conductive material contained
within said inner activity and disposed in intimate contact with said inner
wall; electrically sealing means for providing hermetic closure to said inner
cavity; and electrical means for energizing said conductive material with a
static electromotive force.

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Application 10/796,814

II. EVIDENCE RELIED UPON BY THE EXAMINER
The Examiner has relied upon the following sole reference as
evidence of unpatentability:
Pitts, Jr. (Pitts) US 5,591,317 Jan. 7, 1997

III. REJECTION
The Examiner has rejected claims 1 through 3 under 35 U.S.C.
§ 102(b) as anticipated by the disclosure of Pitts.

IV. DISCUSSION
As evidence of anticipation of the subject matter defined by claims
1 through 3 under 35 U.S.C. § 102(b), the Examiner has relied on the
disclosure of Pitts (Answer 3). The Examiner has found that Pitts describes
the claimed method, except for the claimed result, i.e., biofilm deposit
reduction (Answer 3). According to the Examiner (id.), such result would
inherently or necessarily occur in Pitts’ method since Pitts employs the
claimed apparatus and the claimed conditions and parameters to reduce scale
or sludge in a water system as discussed and claimed by the Appellants.
The Appellants do not dispute that Pitts, like the Appellants, employs
the claimed apparatus and the claimed conditions and parameters to reduce
scale or sludge in a water system (Br. 4-6 and Reply Br. 2-3). Compare also
Pitts’ water system at columns 1-3 with the Appellants’ water systems at
pages 1-6 of the Specification. Thus, notwithstanding the Appellants’
arguments to the contrary in the Reply Brief1, we find that the claimed

1 In any event, this argument was not timely raised in the opening Brief and
is considered waived. See Cross Med. Prods., Inc. v. Medtronic Sofamore
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Appeal 2007-0417
Application 10/796,814

result, i.e., reducing the formation of biofilm deposits, would necessarily or
inherently occur in the method taught by Pitts.
The Appellants contend that the present application is entitled to the
benefit of the filing date of Pitts under 35 U.S.C. § 120, thus removing Pitts
as a reference against the claims on appeal (Br. 4-6). According to the
Appellants (Reply Br. 2-3), this entitlement is supported by the Examiner’s
admission that Pitts provides inherent written descriptive support for the
missing claimed preamble limitation, i.e., reducing the formation of biofilm
deposits.
The Examiner has recognized (Answer 3-4) that:
[I]nstant application SN 10/796,814 is a continuation of
[application] SN 10/047,493 (abandoned), which is a
continuation-in-part of [application] SN 09/416,255
(abandoned), which is a continuation-in-part of [application]
SN 09/167,115 (abandoned), which is a continuation-in-part or
[sic] [application] SN 08/779,819(issued as patent number
5,817,224); which is a continuation-in-part of [application] SN
08/197,154 (issued as patent number 5,591,317[Pitts]).

However, the Examiner has taken the position that the present application is
not entitled to the benefit of the filing date of Pitts since it and the other
applications in the priority chain do not expressly describe reducing the
formation of biofilm deposits within the meaning of 35 U.S.C. § 112, first
paragraph (Answer 4). In other words, the Examiner has determined that
Pitts is available as “prior art” within the meaning of 35 U.S.C. §102(b)
contrary to the Appellants’ contention (id.).
Danek, Inc., 424 F.3d 1293, 1320-21 n.3, 76 USPQ2d 1662, 1683 n.3 (Fed.
Cir. 2005). Thus, we need not consider this argument.
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Appeal 2007-0417
Application 10/796,814

The dispositive question is, therefore, whether Pitts is available as
“prior art” within the meaning of 35 U.S.C. 102(b). On this record, we
answer this question in the affirmative.
35 U.S.C. § 120 (Nov. 29, 1999) states in relevant part:
An application for patent for an invention disclosed in the
manner provided by the first paragraph of section 112 of this
title in an application previously filed in the United States, or as
provided by section 363 of this title, which is filed by an
inventor or inventors named in the previously filed application
shall have the same effect, as to such invention, as though filed
on the date of the prior application, if filed before the patenting
or abandonment of or termination of proceedings on the first
application or on an application similarly entitled to the benefit
of the filing date of the first application and if it contains or is
amended to contain a specific reference to the earlier filed
application.

To obtain the benefit of the filing date of an earlier application, this
statue requires that, inter alia, the subject matter claimed in the present
application must be supported by the written description provided in the
earlier application within the meaning of 35 U.S.C. § 112, first paragraph.
In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1994),
cert. denied, 469 U.S. 1209 (1985). The subject matter claimed in the
present application can find written descriptive support either explicitly or
inherently in the earlier application. Kennecott Corp. v. Kyocera Int’l Inc.,
835 F.2d1419, 1421-23, 5 USPQ2d 1194, 1196-98 (Fed. Cir. 1987).
However, in order for the present application to be entitled under 35 U.S.C.
§ 120 to the filing date of Pitts in the chain of applications of which it is a
part, “it must be shown that as to the inventions claimed there has been [a]
‘continuing disclosure through the chain of applications, without hiatus.’”
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Appeal 2007-0417
Application 10/796,814

Lemelson v. TRW, Inc., 760 F.2d 1254, 1266, 225 USPQ 697, 706 (Fed. Cir.
1985)(citation omitted). In other words, the Appellants have the burden of
establishing that each application in the chain either inherently, implicitly or
expressly provides written descriptive support for the claimed subject matter
of the present application within the meaning of 35 U.S.C. § 112, first
paragraph, in order to obtain the filing date of Pitts. See also In re Ziegler,
992 F.2d 1197, 1200, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993) (The burden
of establishing entitlement to the filing date of a previously filed foreign
application is on the applicant.); Langer v. Kaufman, 465 F.2d 915, 913,
175 USPQ 172, 174 (CCPA 1972) (“To prove inherency, the burden is on
appellants to show that the ‘necessary and only reasonable construction to be
given the disclosure by one skilled in the art is one which will lend clear
support to….[this] positive limitation…”).
Here, the Appellants may have established that Pitts inherently
describes the subject matter claimed in the present application within the
meaning of 35 U.S.C. § 112, first paragraph. But, the Appellants have not
demonstrated that each application in the chain inherently describes the
subject matter claimed in the present application or contains Pitts’ inherent
disclosure relied upon by the Examiner (Br. 4-6 and Reply Br. 2-3). The
Appellants simply have not identified any written description in each
intervening application in the chain that satisfies the written description
requirement of the first paragraph of § 112. As such, we determine, on this
record, the Appellants have not shown that “there has been [a] ‘continuing
disclosure [of the claimed invention] through the chain of applications,
without hiatus’” as required by Lemelson, supra. Accordingly, we concur
with the Examiner that the subject matter claimed in the present application
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Appeal 2007-0417
Application 10/796,814

is not entitled to the benefit of any filing dates of the intervening
applications in chain, much less the filing date of Pitts.
In addition to the written description requirement under § 112, the
statute also requires the present application to provide “a specific reference”
to an earlier application. In other words, the present application needs to
refer to all the applications in the chain, including Pitts, if it is to obtain the
filing date of Pitts. Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d
90, 92-93, 160 USPQ 177, 178-79 (7th Cir. 1968). However, the
Appellants’ present application states in the “CROSS-REFERENCE TO
RELATED APPLICATIONS” section (Specification 1) that:
This application is a continuation application of
copending U.S. Serial No. 10/047,493, filed January 14,
2002, which was a CIP application of U.S. Ser. No.
09/416,255, filed October 12, 1999, abandoned.

The present application does not refer to the other applications in the priority
chain, including Pitts. Thus, even if the subject matter claimed in the
present application is described by the chain of applications, we determine
that the present application is, at best, entitled to the filing date of
Application 09/416,255 (October 12, 1999). See Sticker Indus. Supply Corp.
v. Blaw-Knox Co., supra. As Pitts’ publication or issuance date is still more
than one year before the filing date of Application 09/416,255, the
Appellants cannot remove Pitts as a prior art reference against the claims on
appeal.
The Appellants contend that “[n]o case law or statutory authority
stand[s] for the proposition that an applicant’s parent application itself can
be used to anticipate a child application…." (Br. 5) This contention is
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Appeal 2007-0417
Application 10/796,814

devoid of any merit. As explained by our reviewing court in Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1562, 19 USPQ2d 1111, 1115 (Fed. Cir. 1991):
The CCPA also recognized a subtle distinction between a
written description adequate to support a claim under § 112 and
a written description sufficient to anticipate its subject matter
under § 102(b). The difference between “claim-supporting
disclosures” and “claim-anticipating disclosures” was
dispositive in In re Lukach, 442 F.2d 967, 169 USPQ 793
(CCPA 1971), where the court held that a U.S. “grandparent”
application did not sufficiently describe the later-claimed
invention, but that the appellant’s intervening British
application, a counterpart to the U.S. application, anticipated
the claimed subject matter. As the court pointed out, “the
description of a single embodiment of broadly claimed subject
matter constitutes a description of the invention for anticipation
purposes…, whereas the same information in a specification
might not alone be enough to provide a description of that
invention for purposes of adequate disclosures…. ”

Consistent with the holding of Lukach, our reviewing court in In re Chu,
66 F.3d 292, 297, 36 USPQ2d 1089, 1093 (Fed. Cir. 1995) held that an
applicant’s parent application was available as prior art against the claims of
its child application.
The Appellants contend that “the selective application by the
Examiner of ‘inherent disclosure’ to find anticipation yet deny priority has
no basis in patent law” (Br. 5). This contention, however, is incorrect in the
context of the present circumstance. As indicated supra, the Appellants
have not demonstrated that “there has been [a] ‘continuing disclosure [of the
claimed subject matter] through the chain of applications, without hiatus’” as
required by Lemelson, supra and “a specific reference” to all the
applications in the chain, including Pitts, in the present application as
required by Sticker Indus. Supply Corp. v. Blaw-Knox Co., supra.
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Appeal 2007-0417
Application 10/796,814

Having determined that the subject matter claimed in the present
application is not entitled to the filing date of Pitts or any other filing dates
of the intervening applications in the chain, we concur with the Examiner
that Pitts renders the claimed subject matter anticipated within the meaning
of 35 U.S.C. § 102(b).

V. ORDER
The Examiner’s decision rejecting the claims on appeal under
35 U.S.C. § 102(b) is affirmed.
AFFIRMED

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