Ex Parte Rice et alDownload PDFPatent Trial and Appeal BoardMar 29, 201711098064 (P.T.A.B. Mar. 29, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/098,064 04/04/2005 Robert M. Rice E273.0005US1 7129 27367 7590 03/29/2017 WESTMAN CHAMPLIN & KOEHLER, P.A. SUITE 1400 900 SECOND AVENUE SOUTH MINNEAPOLIS, MN 55402 EXAMINER LEE, DOUGLAS ART UNIT PAPER NUMBER 1714 MAIL DATE DELIVERY MODE 03/29/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT M. RICE and ROBERT J. TIERNEY Appeal 2015-000712 Application 11/098,0641 Technology Center 1700 Before CHUNG K. PAK, ROMULO H. DELMENDO, and AVELYN M. ROSS, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2 finally rejecting claims 1-5, 7, 12-17, 31, 32, and 37. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE The subject matter on appeal is directed to “a mobile on-wing engine washing system having a mobile unit for reclaiming water used to wash the 1 Appellants identify the real party in interest as EcoServices, LLC. Appeal Brief filed May 2, 2014 (“App. Br.”) at 2. 2 Final Action entered December 12, 2013 (“Final Act.”) at 2-12; and the Examiner’s Answer entered August 14, 2014 (“Ans.”) at 2-12. Appeal 2015-000712 Application 11/098,064 engine.” Spec. 11. Figure 1, which illustrates such mobile on-wing engine washing system, is reproduced below: FIG. 1 Figure 1 depicts a mobile on-engine water washing and water reclamation system 10 having a mobile unit 12, a source of cleaning liquid 14, a solution applicator 26 at the end of a shepherd’s tool 30 for spraying cleaning liquid to clean an on-wing engine 32 during its operation, a used cleaning solution collection trough 16, and a collection conduit 38 for collecting cleaning liquid from the exhaust nozzle 40 of the on-wing engine 32 and depositing such cleaning liquid into the used cleaning solution collection trough 16 via an outlet 42. Spec. Tflf 19-25. The mobile on-engine water washing and water reclamation system 10 also includes a second mobile unit 18 on which a water treatment unit 20 having a filter for receiving the used cleaning solution from the collection trough 16 via a pump 44, a collection tank 22 for receiving the treated water from the water treatment unit 20, and a generator 24 for mobile power production. Spec. H 19 and 29-31. The collection conduit 38 may include “inertial separation” systems or other known separation systems such filters, gutters, directional changes, etc. to 2 Appeal 2015-000712 Application 11/098,064 separate water droplets from the air stream. Spec. 25-28. Figures 3 through 5, which illustrate inertial separation systems, are reproduced below: 50 FTG. ,3 /'■/O'. Figures 3 through 5 depict inertial separations systems, such as a diversion ducting system 50 and a centrifugal separation system 33. Details of the appealed subject matter are recited in illustrative claims 1,31, and 37,3 which are reproduced below from the Claims Appendix of the Appeal Brief (with disputed limitations in italicized form): 1. A system for on-wing engine washing and water reclamation, said system comprising: means for introducing a cleaning liquid containing at least water into an engine while said engine is being operated and is uncovered; 3 For purposes of this appeal, we limit our discussion to claims 1,31, and 37, the broadest claims on appeal. 3 Appeal 2015-000712 Application 11/098,064 mobile means for collecting said cleaning liquid from an exit end of said engine and from underneath said engine; said mobile collecting means comprising a cart having an open effluent trough positioned directly beneath said engine to collect cleaning liquid from an exit end of said engine via a collection conduit connected to an exhaust nozzle of the engine and having an outlet that deposits the collected cleaning fluid into the effluent trough and to collect in a hoseless manner cleaning fluid coming off an underneath portion of the engine, wherein the collection conduit comprises an inertial separation system for separating the entrained cleaning liquid from said airstream and for depositing said separated entrained cleaning liquid into the effluent trough; and said means for introducing a cleaning liquid includes a cleaning liquid source mounted on said cart. 31. A system for on-wing engine washing and water reclamation, said system comprising: means for introducing a cleaning liquid containing at least water into an engine while said engine is being operated and is uncovered; mobile means for collecting said cleaning liquid from an exit end of said engine and from underneath said engine; said mobile collecting means comprising a cart having an open effluent trough positioned directly beneath said engine to collect cleaning liquid comprising an air/water effluent from an exit end of said engine and to collect in a hoseless manner cleaning fluid coming off an underneath portion of the engine; and wherein as said engine is operated, an airstream is created through said engine, thereby entraining cleaning into said airstream, and said collecting means comprising an inertial separation system for separating the entrained cleaning liquid from said airstream prior to delivering said entrained cleaning liquid to said trough. 4 Appeal 2015-000712 Application 11/098,064 37. A system for on-wing engine washing and water reclamation, said system comprising: means for introducing a cleaning liquid containing at least water into an engine while said engine being operated, wherein as said engine is operated, an airstream is created through said engine, thereby entraining cleaning liquid into said airstream; a collection conduit in contact with at least an exhaust nozzle of the engine for receiving the entrained cleaning liquid, said collection conduit receiving at least a portion of said exhaust nozzle, the collection conduit comprising an inertial separation system for separating the entrained cleaning liquid from said airstream and for depositing said separated entrained cleaning liquid into an open effluent trough positioned beneath said engine. App. Br. 16, 31, and 37, Claims Appendix. The Examiner maintains, and Appellants seek review of, the following grounds of rejection: 1. Claims 1—4, 7, and 12-17 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Thomas (US 6,565,758 B1 issued May 20, 2003) and Testman, Jr. (US 5,899,217 issued May 4, 1999); 2. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Thomas, Testman, Jr., and Asplund (US 5,868,860 issued February 9. 1999); 3. Claims 31 and 37 under 35 U.S.C. §103(a) as unpatentable over the combined disclosures of Testman, Jr., Thomas, and Asplund (US 5,868,860 issued February 9. 1999); and 5 Appeal 2015-000712 Application 11/098,064 4. Claim 32 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Thomas, Testman, Jr., and Hayward (US 6,073,637 issued June 13, 2000). Final Act. 2-12; Ans. 2-12; App. Br. 7-8. DISCUSSION Upon consideration of the evidence on this appeal record in light of the respective positions advanced by the Examiner and Appellants, we determine that a preponderance of the evidence does not support the Examiner’s determination that the applied prior art would have rendered the subject matter recited in claims 1-5,7, 12-17, 31, 32, and 37 obvious to one of ordinary skill in the art within the meaning of 35 U.S.C. § 103(a). Accordingly, we reverse the Examiner’s § 103(a) rejections of the above claims substantially for the reasons set forth in the Appeal Brief. We add the following primarily for emphasis and completeness. In making a patentability determination, analysis must begin with the question, “what is the invention claimed?” because “[cjlaim interpretation, . . . will normally control the remainder of the decisional process.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567—68 (Fed. Cir. 1987). During examination, claims terms are usually given their broadest reasonable construction consistent with the Specification. In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). However, when claims recite a means-plus-fimction limitation in accordance with 35 U.S.C. § 112 16, it is interpreted as the corresponding structure described in the Specification and equivalents thereof. In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). The manner in which a “means-plus- function” limitation is expressed, either by a function followed by the term 6 Appeal 2015-000712 Application 11/098,064 “means” or by the term “means for” followed by a function, is unimportant so long as the modifier of the term specifies a function to be performed. Ex parte Klumb, 159 USPQ 694, 695 (Bd. App. 1967). Using the term “means” in a claim limitation creates a presumption that the means-plus-fimction limitation is intended pursuant to 35 U.S.C. § 11216. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008) (use of “means” in a claim limitation creates a presumption that 35 U.S.C. § 11216 applies). The other terms “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for,” which are non-structural generic placeholders, may also be treated as means-plus-fimction limitations pursuant to 35 U.S.C. § 112 1 6. Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008); Mass. Inst, of Tech, and Elec, for Imaging Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006); Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696, 704 (Fed. Cir. 1998); Mas- Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1214—15 (Fed. Cir. 1998). Here, claims 1,31, and 37 recite the limitation “means for introducing a cleaning liquid containing at least water into an engine while said engine is being operated and is uncovered[.]” As acknowledged by Appellants, the limitation “means for introducing a cleaning liquid containing at least water into an engine ...” is a means-plus-fimction limitation that corresponds to at least spray applicator 26 and cleaning liquid source 14 (a tank containing a cleaning liquid) described in the Specification. App. Br. 5; see also Spec. 11 19-22, 35 and Figs. 1, 6, and 7. According to paragraph 21 of the Specification, a spray applicator, a tank containing cleaning liquid source, and possibly a suitable pump are necessary to perform the recited function of 7 Appeal 2015-000712 Application 11/098,064 introducing a cleaning liquid containing at least water into an engine. Claims 1 and 31 also recite the limitation “mobile means for collecting said cleaning liquid from an exit end of said engine and from underneath said engine[.]” As also acknowledged by Appellants, the limitation “mobile means for collecting said cleaning liquid...” is a means- plus-function limitation that corresponds to mobile unit 12 or 18, trough 16, collection conduit or duct 38, and inertial separation system 33 or 50 described in the Specification. App. Br. 6; see also Spec. 19, 25—28, 35 and Fig. 1. According to paragraphs 19, 25, 26, 28, and 35 of the Specification, a mobile unit (or cart), a trough, and a collection conduit or duct having either an inertial separation system or other known separation means are necessary to carry out the recited function of collecting the cleaning liquid from an exit end of an engine and from underneath the engine. However, claim 1 and 31 further limit its separation means as the inertial separation system. Further, claims 1,31, and 37 recite the limitation “an inertial separation system for separating the entrained cleaning liquid from said air stream and for depositing said separated entrained cleaning liquid into an open effluent trough positioned beneath said engine” or “an inertial separation system for separating the entrained cleaning liquid from said airstream prior to delivering said entrained cleaning liquid to said trough[.]” Although the term “system,” rather than “means,” is used, it is defined by the functional limitation only. See claims 1,31, and 37. The phrase “inertial separation” used in front of the term “system” only indicates how the entrained cleaning liquid is separated from an air stream. Thus, the limitation “an inertial separation system for separating the entrained cleaning 8 Appeal 2015-000712 Application 11/098,064 liquid from said air stream and for depositing said separated entrained cleaning liquid into an open effluent trough positioned beneath said engine” or “an inertial separation system for separating the entrained cleaning liquid from said airstream prior to delivering said entrained cleaning liquid to said trough” are treated as a means-plus-fimction limitation pursuant to 35 U.S.C. § 112 | 6. Welker Bearing Co., v. PHD, Inc., 550 F.3d at 1096; Mass. Inst, of Tech, and Elec, for Imaging Inc. v. Abacus Software, 462 F.3d at 1354; Personalized Media Commc’ns, LLC v. ITC, 161 F.3d at 704; Mas-Hamilton Group v. LaGard, Inc., 156 F.3d at 1214—15. Such inertial separation means, according to paragraphs 25, 26, and 28 of the Specification, corresponds to the structure illustrated in Figures 3 through 5 (e.g., a diversion ducting or centrifugal separation device) in the above-identified application. Moreover, by virtue of identifying filters, gutters, directional changes, etc. as other separations means, the Specification distinguishes the inertial separation means illustrated in Figures 3 through 5 from filters, gutters, directional changes, etc. Spec. 25, 26, and 28; In re Rambus Inc., 694 F.3d 42, 47 (Fed. Cir. 2012) (holding that a memory device is different from a memory stick because the Specification distinguishes the memory device from the memory stick by stating that “the disclosed invention can be practiced with either a memory device or with a memory stick[.]”); see also Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (“Even when guidance is not provided in explicit definitional format, the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents.”). 9 Appeal 2015-000712 Application 11/098,064 Having interpreted claims 1,31, and 37 in the manner indicated above, we concur with Appellants that the Examiner errs in finding that the filter taught by Testman Jr. constitutes the recited inertial separation system. Compare App. Br. 10-14, with Final Act. 2-12 and Ans. 2-12. The Examiner does not demonstrate that the filter taught by Testman Jr. corresponds to the structure illustrated in either Figure 3, 4, or 5 of the above-identified application or the equivalents thereof. Final Act. 2-12; Ans. 2-12. Hence, the Examiner does not carry the burden of establishing a prima facie case obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). ORDER In view of the foregoing, the decision of the Examiner to reject claims 1-5, 7, 12-17, 31, 32, and 37 under 35 U.S.C. §103(a) is REVERSED. REVERSED 10 Copy with citationCopy as parenthetical citation