Ex Parte Poindexter et al

Patent Trial and Appeal Board

Sep 25, 2018

14320905 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/320,905 07/01/2014 Michael Poindexter
26874 7590 09/27/2018
FROST BROWN TODD LLC
3300 Great American Tower
301 East Fourth Street
CINCINNATI, OH 45202
UNITED ST A TES OF AMERICA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
OOOOMRM/0607603 2885
EXAMINER
HICKS, ANGELISA
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
09/27/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@fbtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL POINDEXTER, DA VE COOLEY, and
RAYMOND AUBREY
Appeal2018-001739
Application 14/320,905
Technology Center 3700
Before BRETT C. MARTIN, BRANDON J. WARNER, and
NATHAN A. ENGELS, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-001739
Application 14/320,905
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants' claims are directed generally to a "crude oil cargo
recirculation system." Title. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A recirculation system for a crude oil cargo tank barge
having at least one tank, wherein the recirculation system
comprises:
a pump in fluid communication with the at least one tank;
and
recirculation piping in fluid communication with the pump
and the at least one tank;
wherein the pump is actuatable to pump fluid from the at
least one tank to the recirculation piping, wherein the
recirculation piping is operable to return the pumped fluid to the
at least one tank without further processing the fluid, wherein the
pumped fluid returned to the at least one tank is operable to
remove deposits built-up on a surface of the at least one tank by
diffusing the fluid in the at least one tank, wherein the pumped
fluid is crude oil.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Preuss
Morrell
Hurst et al.
Dietzen
Road
us 2,314,555
us 3,362,370
us 3,897,807
US 6,345,672 B 1
US 6,712,895 Bl
2
Mar. 23, 1943
Jan.9, 1968
Aug. 5, 1975
Feb. 12,2002
Mar. 30, 2004
Appeal2018-001739
Application 14/320,905
REJECTIONS
The Examiner made the following rejections:
Claims 1-4, 6-8, and 15-19 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Dietzen and Morrell. Ans. 2.
Claims 5, 13, 14, and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Dietzen, Morrell, and Preuss. Ans. 7.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Dietzen, Morrell, and Hurst. Ans. 10.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Dietzen, Morrell, and Road. Ans. 11.
ANALYSIS
The main thrust of Appellants' arguments is that the Examiner has
construed the claims too broadly and does not recognize the amount of
deposit removal required by the claims. See, e.g., Reply Br. 6. The
Examiner notes that the claims only require diffusion, and that the diffusion
"can range from small or great in terms of the fluid's introduction into the
tank." Ans. 13. We agree with the Examiner that Appellants arguments are
not commensurate with the scope of the claims and that no structure or
specific limitation sets for the level of diffusion necessary to exclude the
prior art at issue.
The Examiner is correct that Dietzen discloses a recirculation system
and specifically that Dietzen' s system results in "movement of fluid entering
into the tank [ and] unsettles the settled particles and thus displaces or
diffuses the sludge located on the bottom of the tank." Ans. 12 ( citing
Dietzen, col. 11, 11. 33-53). Although we agree with Appellants that Dietzen
may be insufficient to remove deposits to the level disclosed in Appellants'
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Application 14/320,905
Specification, we must look at the claims, not the Specification's disclosure.
In fact, Appellants acknowledge that Dietzen teaches some diffusion, but
Appellants assert that it is not to the level that can be accomplished by their
invention. Reply Br. 9 ("the level of diffusion [as] taught by Dietzen").
Appellants' claims, however, do not specifgy a degree or level of diffusion.
As to claim 16, Appellants assert that Dietzen fails to teach returning
the fluid "adjacent towards a surface." Reply Br. 9. We first note that the
phrase "adjacent towards" could be considered indefinite because it is
unclear from this phrasing what the fluid must actually be adjacent to. To
ascribe the meaning intended by Appellants, as best we understand it, the
claim should state that the fluid is returned "adjacent and towards" a surface.
See Appeal Br. 12-13; Reply Br. 9-11 (arguing that Appellants' Figure 2
depicts diffusor 118 "adjacent, or near, an interior surface"). Even under
Appellants' interpretation, however, the Examiner is correct that the
introduction of fluid in Dietzen is both adjacent and towards the interior
surface, as opposed to the exterior surface.
Further, like Appellants' arguments regarding claim 1, Appellants'
arguments regarding claim 16 are not commensurate with the scope of the
claim language at issue. It appears that Appellants intended to disclose that
the introduction of fluid is adjacent the build-up/deposit, or that the pipes
extend to a bottom area of the tank, as shown in Figure 2. Again, though,
this is not what is actually claimed, and while we agree that Dietzen does not
meet what is shown in Figure 2, we agree with the Examiner that such detail
is not actually required by the claims.
Regarding claim 20, Appellants argue that the phrase, "wherein each
exit of the at least two recirculation pipes are longitudinally aligned along a
central portion of each tank of the plurality of tanks" is not found in Dietzen.
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Application 14/320,905
Appeal Br. 14; Reply Br. 12-13. According to Appellants, this language
requires each tank to include two recirculation pipes with each pipe having
its own exit. Appeal Br. 14, Reply Br. 12-13. Specifically, Appellants
argue "the [S]pecification and drawings ... establish that the language of
claim 20 requires more than each tank having an exit, but that each tank has
at least two exits." Reply Br. 12 ( citing Spec. ,r,r 20, 22, Figs. 1, 4 ).
We disagree with Appellants and agree with the Examiner that
Appellants' arguments are not commensurate with the broadest reasonable
interpretation of claim 20 read in light of the Specification. See Ans. 15.
Claim 20 is a system claim, and it is the system that is required to have at
least two recirculation pipes and a plurality of tanks. Contrary to
Appellants' arguments, the express language at issue is not written to
specifically require that each tank includes two recirculation pipes, each
having an exit. In contrast, Appellants' Specification discloses examples of
"[a]t least one recirculation header" for each lateral row of tanks (Spec. ,r 20)
and, as depicted in Appellants' Figure 2, a single "diffuser (118) is
positioned about 4 inches above a central portion of floor ( 16) of each tank
(12)" (Spec. ,r 22). Cf Spec. ,r 20 (disclosing an embodiment in which each
tank includes three recirculation headers; stating also that "other suitable
configurations, amount, and/ or dimensions for recirculation headers ( 104)
will be apparent to one with ordinary skill in the art"). Accordingly, we
agree with the Examiner that the broadest reasonable interpretation of claim
20, read in light of the Specification, requires only that one of the two
required pipes is on a single tank and that each tank then has an exit, which
is taught by Dietzen.
As to Appellants' secondary consideration evidence, we agree that the
Examiner was in error by failing to address such evidence. We do not agree,
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Application 14/320,905
however, that this rises to a level necessary to overturn the rejection. See
ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214 (Fed. Cir. 2016) (finding error in
the failure to consider secondary evidence of nonobviousness but
nonetheless affirming the ultimate conclusion of obviousness); In re Haui-
Hung Kao, 639 F.3d 1057, 1071-72 (Fed. Cir. 2011) (same). For similar
reasons as stated above with regard to claim interpretation, Appellants'
evidence is not commensurate with the scope of the claims and therefore the
necessary nexus of the secondary consideration evidence is not present.
For example, Appellants' statement of the long-felt need is that of
reducing the expense, downtime, and manual labor required for cleaning of
tanks by, in part, suspending crude oil deposits through recirculation to
prevent settlement. Appellants acknowledge, however, that Dietzen teaches
at least some level of diffusion (Reply Br. 9), and neither Appellants' claims
nor the Declaration of Michael Poindexter establishes the level of diffusion
required to satisfy the purportedly long-felt need in a way that would
distinguish Dietzen. See ClassCo, 838 F.3d at 1220 (explaining that an
applicant must establish a nexus between evidence of nonobviousness and
the merits of the claimed invention that is commensurate with the scope of
the claims, and that a nexus does not exist where the merits of the claimed
invention were known in the prior art).
Similarly, with regard to the premium charged for tanks having the
system disclosed in Appellants' Specification, this premium may be for a
system that is more effective than what is disclosed in Dietzen, but it is also
for a system that is more effective than what is actually claimed. Nothing in
Appellants' Declaration evidence is commensurate in scope with the actual
language of the claims. Appellants could have included claim language that
specifically sets forth the amount of diffusion or deposit removal so as to
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Application 14/320,905
exclude Dietzen as prior art. Likewise, Appellants could have specifically
claimed a configuration where the recirculation outlet was positioned close
to the bottom of the tanks and/or the area where deposits/build-up would
occur. Rather than tailoring the claims to more closely mirror the disclosed
invention, Appellants chose broad claim language that does not distinguish
prior art such as Dietzen.
In general, we find that Appellants' arguments and evidence are not
commensurate in scope with the broad language found in the claims.
Accordingly, we agree with the Examiner's broad, but reasonable,
interpretations and application of the prior art at issue. As such, we are not
apprised of error in the Examiner's rejections of at least claims 1, 16, and 20,
which are the only claims specifically argued by Appellants. We likewise
sustain the Examiner's rejection of the remaining unargued dependent
claims for the same reasons as stated above.
DECISION
For the above reasons, we AFFIRM the Examiner's decision to reject
claims 1-2 0.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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