Ex Parte Rising

Board of Patent Appeals and Interferences

Sep 25, 2007

10613735 (B.P.A.I. Sep. 25, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LARRY RISING
____________

Appeal 2007-2201
Application 10/613,735
Technology Center 1700
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Decided: September 25, 2007
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Before CHARLES F. WARREN, THOMAS A. WALTZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 26 through 48. Claims 1-23
and 49-74 are the only other claims pending in this application and stand
withdrawn from consideration as directed to a non-elected invention (Br.
2).1 We have jurisdiction pursuant to 35 U.S.C. § 6(b).

1 We refer to and cite from the amended Appeal Brief dated Nov. 6, 2006.
Appeal 2007-2201
Application 10/613,735

According to Appellant, the invention is directed to an apparatus and
method for applying chemicals to substrates through a continuous process
using non-aqueous solvents as a carrier medium for chemicals, with the non-
aqueous solvents being evaporated away leaving the chemicals on the
substrates, and the non-aqueous solvents thereafter being condensed,
purified, and recycled (Br. 2). Independent claim 26 is illustrative of the
invention and a copy of this claim is reproduced below:
26. A method for applying a chemical solution to a substrate,
comprising acts of:

forming a chemical mixture comprising a non-aqueous solvent and a
chemical solute;

applying the chemical mixture to the substrate forming a wet
substrate;

removing the non-aqueous solvent from the wet substrate, leaving the
substrate with remaining chemical solute;

wherein the act of removing the non-aqueous solvent from the wet
substrate comprises acts of:

removing a portion of the chemical mixture from the wet
substrate, leaving a substrate with remaining chemical mixture;

lowering a boiling point of the non-aqueous solvent in the
substrate with remaining chemical mixture; and

evaporating the non-aqueous solvent into a solvent vapor by
passing the substrate with remaining chemical mixture by and against
an evaporator apparatus, such that the evaporator apparatus operates
as a heat plate to evaporate the non-aqueous solvent into a solvent
vapor.

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Application 10/613,735

The Examiner has relied on the following prior art references as
evidence of unpatentability:
Wedler US Re. 27,995 Apr. 30, 1974
Ellison US 4,136,636 Jan. 30, 1979
Kinsley, Jr. US 4,421,794 Dec. 30, 1983

ISSUES ON APPEAL
Claims 26-48 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement (Answer 3).
Claims 26-30 and 33 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Wedler (Answer 4).
Claim 31 stands rejected under 35 U.S.C. § 103(a) as obvious over
Wedler in view of Ellison (Answer 7).
Claims 32 and 34-42 stand rejected under 35 U.S.C. § 103(a) as
obvious over Wedler in view of Kinsley, Jr. (Answer 7).
Claims 43-48 stand rejected under 35 U.S.C. § 103(a) as obvious over
Wedler in view of Kinsley, Jr., and Ellison (Answer 10).
Appellant notes that the Amendment of Jun. 13, 2005, amended claim
26 to require “passing the substrate with remaining chemical mixture by and
against an evaporator apparatus, such that the evaporator apparatus operates
as a heat plate to evaporate the non-aqueous solvent into a solvent vapor”
(Br. 7). Appellant contends that the Specification, at page 11, ll. 10-22, Fig.
1, and the dictionary definition of “heat exchanger” would have allowed one
of ordinary skill in the art to understand that the evaporator apparatus
operates as a heated surface (i.e., a heat plate) when in contact with the
substrate (Br. 7-8).
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Application 10/613,735

Appellant contends that the cylinders described in Wedler are heat
exchanging rollers that allow the textile material to “pass with and against”
the rollers while the heat exchanger of claim 26 is a fixed device that
operates as a heat plate to allow the textile material to “pass by and against”
the heat exchanger (Br. 10). Accordingly, Appellants contend that the
substrate of Wedler does not “go across” the rollers but rolls with the rollers
(id.).2
The Examiner contends that while the Specification describes the use
of “any suitable apparatus for evaporating the non-aqueous solvent,” a “heat
plate” is not specifically described or suggested (Answer 12). The Examiner
further contends that the description of a heat exchanger does not provide
support for the broader genus of a “heat plate,” since a “heat plate” is not
necessarily a heat exchanger (Answer 13).
The Examiner contends that the heated cylinders of Wedler “operate
as a heat plate” (Answer 15-16). The Examiner further contends that, giving
the claim language its broadest reasonable interpretation, the term “by and
against” reads on the passing of the textile material through the rollers as
taught by Wedler (Answer 16-17).
We determine that the Examiner has established a prima facie lack of
written description, which prima facie case has not been adequately rebutted

2 Appellant only presents arguments for claim 26 on appeal in every ground
of rejection in this appeal (Br. 6 and 9). With regard to the rejections based
on § 103(a), Appellant merely repeats the argument that the claims are
patentable based on their dependency on claim 26 (e.g., Br. 17-18).
Therefore we limit our consideration in this appeal to claim 26, and adopt
the Examiner’s findings of fact and conclusions of law with regard to the
rejections based on § 103(a) (Answer 7-11).
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Application 10/613,735

by Appellant’s arguments. Accordingly, we AFFIRM the rejection of the
claims on appeal under § 112, first paragraph, essentially for the reasons
stated in the Answer and those reasons set forth below.
We also determine that the Examiner has established a prima facie
case of anticipation in view of Wedler, which prima facie case has not been
adequately rebutted by Appellant’s arguments. Accordingly, we AFFIRM
the rejection of claims 26-30 and 33 under § 102(b) over Wedler essentially
for the reasons stated in the Answer, as well as those reasons set forth below.
Therefore, we AFFIRM the decision of the Examiner.

OPINION
A. The Rejection under § 112, ¶ 1
The Examiner finds that the amended subject matter set forth in the
last paragraph of claim 26 on appeal is “new matter,” i.e., the language that
“the evaporator operates as a heat plate” has no basis or support in the
original disclosure (Answer 4; Br. 7). Both Appellant (Br. 7) and the
Examiner (Answer 4) point to the same portion of the Specification as most
relevant:
The evaporator apparatus 112 may be any suitable apparatus for
evaporating the non-aqueous solvent. For example, the
evaporator apparatus 112 may be a heat exchanger. Further, the
heat exchanger may be a steam-based heat exchanger, where
steam is passed through the heat exchanger, providing a
sufficient amount of heat to evaporate the non-aqueous solvent.
After having come in contact with the evaporator apparatus
112, the substrate 104 then leaves the vacuum chamber 110 and
subsequently leaves the machine 100 altogether, with the
chemical solution remaining and the non-aqueous solvent
removed. Specification 11:15-22.
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Application 10/613,735

The initial burden of establishing a prima facie case of lack of written
description rests with the Examiner. See In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). However, the initial burden is
discharged by the Examiner if the Examiner establishes the fact that
Appellant is claiming embodiments completely outside the scope of the
Specification. See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583
(Fed. Cir. 1996). We determine that the Examiner has established the fact
that the “evaporator operates as a heat plate” is an embodiment completely
outside the scope of the original Specification. We determine that Appellant
has not established, by argument or evidence, that a “heat plate” is any
heated surface, or that a “heat plate” is a particular subgenus of heat
exchanger. Therefore, we affirm the rejection based on § 112, first
paragraph.
B. The Rejection based on § 102(b)
We determine the following Factual Findings from the record in this
appeal:
(1) Wedler discloses a process and apparatus for removing
water and/or solvents from a textile material, including the
steps of forming a chemical mixture comprising a non-
aqueous solvent and a chemical solute, applying the mixture
to the textile substrate, and removing the non-aqueous
solvent from the wet substrate (Answer 5; see Wedler,
Abstract);
(2) Wedler discloses removing a portion of the chemical
mixture from the wet substrate, providing a vacuum to
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Application 10/613,735

remove non-aqueous solvent from the system, and
evaporating the non-aqueous solvent into solvent vapor by
passing the substrate with remaining chemical mixture by
and against an evaporator apparatus, where the evaporator
operates as a heat plate to evaporate non-aqueous solvent
(Answer 5-6; see Wedler, Abstract; col. 1, ll. 56-68; col. 2,
l. 69-col. 3, l. 15; col. 3, ll. 49-53; col. 4, ll. 12-20 and 32-
54; and col. 5, ll. 6-11 and 49-60).
Under 35 U.S.C. § 102, anticipation requires that the prior art
reference disclose, either expressly or under the principles of inherency,
every limitation of the claim. See In re King, 801 F.2d 1324, 1326,
231 USPQ 136, 138 (Fed. Cir. 1986). Implicit in our review of the
Examiner’s anticipation analysis is that the claim must first have been
correctly construed to define the scope and meaning of each contested
limitation. See Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d
1030, 1032 (Fed. Cir. 1997). During ex parte prosecution, the Patent Office
should apply to the verbiage of the claims the broadest reasonable meaning
of the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account any enlightenment by way of
definition or otherwise afforded by the original disclosure. See In re Morris,
127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997).
The only contested limitation from the claim language is in regard to
“passing” the substrate with remaining chemical mixture “by and against” an
evaporator apparatus (Br. 10; Answer 16-19). The Examiner and Appellant
agree that Wedler discloses that the substrate is “against” or in contact with
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Application 10/613,735

the rollers (Br. 10; Answer 17). Appellant also admits that the heat
exchanging rollers disclosed by Wedler allow the textile material to “pass”
the rollers (Br. 10; Answer 16). Therefore, we will limit our consideration
to the interpretation of “by.” We agree with the Examiner that Appellant’s
Specification contains no definition or enlightenment concerning the word
“by” (Answer 17). Giving the broadest and reasonable meaning to this word
in its ordinary and customary usage, we determine that “by” is construed as
“in the direction of” (id.).3 Accordingly, we determine that the contested
limitation should be construed as passing the textile substrate in the direction
of and in contact with the evaporator apparatus.
Applying the preceding legal principles to the Factual Findings in the
record of this appeal, and in view of our claim construction as discussed
above, we determine the Examiner has established a prima facie case of
anticipation in view of Wedler, which prima facie case has not been
adequately rebutted by Appellant’s arguments. As shown by Factual
Finding (1) and (2) listed above, we determine that Wedler discloses every
limitation as required by claim 26 on appeal, including passing the textile
substrate with remaining chemical mixture in the direction of and in contact
with the heated rollers (evaporators), even when the rollers rotate in
direction A (see Fig. 1; and col. 4, ll. 18-20). Accordingly, for the reasons
stated in the Answer and above, we affirm the rejection of claims 26-30 and
33 under § 102(b) over Wedler.

3 We also note that a synonym for “by” is “with,” contrary to Appellant’s
arguments (Br. 10). See the Evidence Appendix attached to the Brief, page
2 of the “Top Web Results for ‘with’”.
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Application 10/613,735

As also discussed above, Appellant fails to present any specific,
substantive arguments for the patentability of any claim other than claim 26.
Therefore, with regard to the rejections based on § 103(a), we adopt the
Examiner’s findings and conclusions of law (Answer 7-11). We affirm each
of the rejections based on § 103(a).
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

cam

CARY TOPE-MCKAY
TOPE-MCKAY & ASSOCIATES
23852 PACIFIC COAST HIGHWAY #311
MALIBU, CA 90265

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