Ex parte Rumph

Board of Patent Appeals and Interferences

Jul 31, 2000

08091039 (B.P.A.I. Jul. 31, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT M. RUMPH
____________
Appeal No. 1998-1215
Application No. 08/091,039
____________
ON BRIEF
____________
Before CALVERT, FRANKFORT, and JENNIFER D. BAHR,
Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
Appeal No. 1998-1215
Application No. 08/091,039
In reviewing the claims, it appears that "into a conduit 1
. . . to an incinerator" (claim 25, lines 16 and 17) and
"generally planar flat surface" (claim 38, line 19) have no
antecedent basis in the specification. 37 CFR § 1.75(d)(1).
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 25
to 31 and 33 to 43, all the claims remaining in the
application.
The appealed claims are drawn to a method of disposing of
hazardous waste (claims 25 to 31, 33 to 37 and 40) and a
method of transporting hazardous waste (claims 38, 39 and 41
to 43). They are reproduced in Appendix A of appellant’s
brief.1
Appeal No. 1998-1215
Application No. 08/091,039
These affidavits were filed with an Information2
Disclosure Statement on Aug. 9, 1994 (Paper No. 9).
This reference was cited in an Information Disclosure3
Statement filed on July 27, 1993 (Paper No. 4).
3
The prior art applied in the final rejection is:
McLennan 510,545 Dec. 12,
1893
Morrell 1,618,669 Feb. 22,
1927
Gillican 1,896,616 Feb. 7,
1933
Nakayama et al. 3,951,581 Apr. 20,
1976
(Nakayama)
Affidavits of Sid Morrison and Otto Ewers, dated July 6 and 7,
1994, respectively.2
Additional prior art applied herein in rejections pursuant to
37 CFR § 1.196(b) is:
Wallace 4,552,460 Nov. 12,
19853
The admitted prior art decribed on page 1, line 15, to page 4,
line 3 of appellant’s specification (APA).
The claims on appeal stand finally rejected on the
following grounds:
(1) Claims 34 to 37 and 40, unpatentable for failure to comply
with 35 U.S.C. § 112, second paragraph.
Appeal No. 1998-1215
Application No. 08/091,039
4
(2) Claims 25, 28, 29, 33, 34 and 40, unpatentable over
Nakayama in view of Gillican and Morrell, under 35 U.S.C. §
103(a).
(3) Claims 26, 27, 30, 31, 35 to 39 and 41 to 43, unpatentable
over Nakayama in view of Gillican, Morrell, McLennan, and
either of the Morrison or Ewers affidavits, under 35 U.S.C. §
103(a).
Appeal No. 1998-1215
Application No. 08/091,039
5
Rejection (1)
In this rejection, the examiner asserts that the term
"appreciable" in claim 34 (line 9) is indefinite. Appellant
does not contest this rejection, but states on page 28 of the
brief that the rejection is mooted because he is willing to
delete the term from the claims. However, the rejection is
not moot because, as the examiner notes on page 3 of the
answer, no amendment deleting "appreciable" has been filed.
Accordingly, rejection (1) will be summarily sustained.
Rejection (2)
Nakayama discloses a method of disposing of paint waste
in which the waste is mixed with waste oil and water in tank
1, forming a slurry which prevents sedimentation of the paint
waste particles (col. 1, lines 22 to 24; col. 2, lines 37 to
40). The slurry is fed to storage tank 2, and therefrom
continuously to incinerator 3, where it can be completely
burned without pollution (col. 1, lines 37 to 39). The
examiner recognizes that Nakayama does not disclose moving the
waste in a tank with an elongated bottom to the incinerator,
but takes the position that such a modification of the
Nakayama process would have been obvious in view of Gillican.
Appeal No. 1998-1215
Application No. 08/091,039
6
He further cites Morrell as teaching that the Nakayama waste
material should be agitated so that it becomes substantially
homogeneous.
After fully considering the record in light of the
arguments presented in appellant’s brief and the examiner’s
answer, we conclude that the involved claims are patentable
over the combination of references applied by the examiner.
In particular, we do not consider that it would have been
obvious, in view of Gillican, to move the waste material of
Nakayama to the incinerator in a tank and to agitate it in the
tank. The purpose of the tank car disclosed by Gillican is to
transport materials which "are very viscous, and may or do
solidify after they have been stored or placed in the cold for
some time" (page 1, lines 4 to 6), such as crude pine gum,
oils, fats, etc. In order to render the material being
transported more fluid when the car is to be unloaded,
Gillican provides heating pipes 21, etc., and an agitator 13
to stir and mix the material simultaneously with the heating
(page 1, lines 68 to 73; page 3, lines 36 to 55). While it
might have been obvious, as a general proposition, to
transport the paint waste of Nakayama from the waste source to
Appeal No. 1998-1215
Application No. 08/091,039
Although the examiner states that the Gillican apparatus4
is capable of agitating "a viscous material which contains
solids" (answer, page 5), the only solids disclosed by
Gillican are debris and solid material which will be melted
(page 1, lines 28 to 31).
7
the incinerator, it would seem that one of ordinary skill
would transport the paint waste after it had been formed into
a slurry from which there would be no sedimentation (i.e.,
would transport tank 2), rather than to agitate the mixture of
paint waste, oil and water to form the slurry in the tank used
for transportation. In any event, we do not consider that it
would have been obvious from Gillican to agitate the Nakayama
mixture and/or slurry in the transportation tank, because the
Gillican agitator is not used to form a suspension of solids
in a liquid or to prevent the separation of solids from the
material being transported, but rather is used simply to
agitate the material in the tank so that it will be more
evenly and completely heated to reduce its viscosity. Since4
there is no indication that the paint waste mixture or slurry
of Nakayama is subject to solidification when cold, Gillican’s
disclosure would not have taught or suggested to one of
ordinary skill agitation of the waste material of Nakayama in
Appeal No. 1998-1215
Application No. 08/091,039
8
a tank being used to move that material. The Morrell
reference not affect our conclusion because, as noted above,
it concerns the desirability of homogenization, but does not
concern the question of transportation in a tank.
Rejection (2) therefore will not be sustained.
Rejection (3)
The basis of this rejection is somewhat unclear. The
examiner states at page 9 of the answer that:
It would have been obvious to one of
ordinary skill in the art at the time the
invention was made to have hauled the hazardous
waste of Nakayama to its point of incineration,
in a tank car as described by either the Ewers
or Morrison affidavit[s], because Nakayama
require[s] the agitation of the waste in a tank
so as to disperse solids therein into a slurry
and because Gillican teaches a mobile tank car
capable of providing agitation of viscous
materials which contain solids, in order to
allow said material to be discharged as a
flowable fluid, and because Ewers and Morrison
both show tank cars specifically adapted for
hauling liquids having a high concentration of
solids.
The examiner seems to be taking the position that, in view of
Gillican, it would have been obvious to transport the waste of
Nakayama to the incinerator in a tank and to agitate it in
that tank. However, as discussed above in connection with
Appeal No. 1998-1215
Application No. 08/091,039
9
rejection (2), we do not agree with this position of the
examiner, since Gillican’s tank car is not disclosed as being
for transporting a slurry from which solids may settle, nor is
the agitator of Gillican provided for placing or maintaining
the solids in suspension.
The Morrison and Ewers affidavits each state that at
least as early as 1988 (Morrison) or in 1982 (Ewers) tank
trailers were sold which had an auger mounted within and
extending the length of the tank; the trailers were for
transporting high-solids content liquid materials. According
to Morrison, the auger was "to agitate the liquids and solids
carried in the tank and facilitate removal of materials during
draining of the tank"
(page 2). Ewers states that the auger was "to move the
liquids and solids carried in the tank to the outlet valve for
draining the tank," but "[a]fter operating the system, we
discovered that the auger also agitated or mixed the tank
contents" (page 2).
Since the apparatus disclosed by these references is
basically the same, insofar as relevant to this case, as that
of Gillican, it is not clear what the Morrison and Ewers
Appeal No. 1998-1215
Application No. 08/091,039
10
affidavits are intended to add to the combination of Nakayama
and Gillican. Insofar as the examiner is asserting that it
would have been obvious, in view of the affidavits, to
transport Nakayama’s paint waste to an incinerator in a tank
and agitate it in that tank, we do not agree. As previously
discussed, Nakayama agitates paint waste with waste oil and
water to form a slurry from which there is no sedimentation of
paint particles. We find nothing in the Morrison or Ewers
affidavits which would teach one of ordinary skill to agitate
the paint waste/waste oil/water mixture of Nakayama to form a
slurry during transportation in the tank trailer of the
affidavits, since the augers are provided to facilitate
unloading of the tank. Nor do we consider that it would have
been obvious to wait until unloading to agitate the paint
waste/waste oil/water mixture of Nakayama to form the slurry,
since most of the benefit of having a slurry would be lost; in
our view, one of ordinary skill would form the slurry of
Nakayama before transporting it to the incinerator, in which
case agitation would not be necessary. McLennan, which
discloses a paint mixer, does not affect this conclusion.
We will, therefore, not sustain rejection (3).
Appeal No. 1998-1215
Application No. 08/091,039
11
Rejections Pursuant to 37 CFR § 1.196(b)
(A) Claims 40 and 43 are rejected for failing to comply with
the second paragraph of 35 U.S.C. § 112. Each of these claims
recites "wherein the tank includes a floor, a lower-most
portion of the floor being the tank bottom." This language
implies that there is a floor structure which, other than at
its lower-most portion, is separate from the tank bottom, but
the scope of the claims is indefinite when one attempts to
read them on the disclosure (cf. In re Cohn, 438 F.2d 989,
993, 169 USPQ 95, 98 (CCPA 1971)) because there is no
disclosure of a floor separate from the bottom of the tank 10,
but rather, the bottom of the tank and the floor seem to be
used in the specification as interchangeable terms. See,
e.g., page 8, lines 28, 31, 32
and 34.
(B) Claims 25, 28, 29, 33, 34 and 40 are rejected under 35
U.S.C. § 103(a) as unpatentable over the APA in view of
Wallace.
The relevant portion of appellant’s disclosure of what
was known at the time of his invention may be summarized as
follows:
Appeal No. 1998-1215
Application No. 08/091,039
12
(i) Hazardous waste, such as paint waste, which contains
solids and liquids, is burned as fuel in industrial burners,
such as cement kilns (page 1, lines 15 to 26).
(ii) The waste is transported to the kiln in tank trucks (page
1, line 33, to page 2, line 1).
(iii) Discharge of the waste from the tank truck to the kiln
burner is a problem because the solids remain at the bottom of
the tank. This has several undesirable consequences (page 2,
line 10, to page 3, line 16).
(iv) "It is known that a previous attempt to agitate the
contents of a hazardous waste transport tank included the use
of vertically extending augers or the like, but it resulted in
a considerable residue of solids in the tank after it was
supposedly drained." (page 3, lines 25 to 29)
Wallace discloses apparatus for maintaining solid
particles in suspension in a liquid, particularly when
contained in a right circular cylindrical tank. The patent
discloses that an agitator which rotates about a vertical axis
is not satisfactory (col. 1, lines 23 to 49). Instead,
Wallace utilizes an agitator which rotates about a horizontal
shaft 24 extending along the tank 12, eliminating growth of a
Appeal No. 1998-1215
Application No. 08/091,039
13
bed of solid particles on the bottom of the tank and obtaining
uniform particle concentration and size (i.e., a substantially
homogeneous mixture) throughout the slurry (col. 1, lines 60
to 65). It is noted that such mixing, applied to paint waste,
would inherently increase the effective BTU rating of the
waste material, in accordance with appellant’s disclosure at
page 2, lines 28 to 32.
Appeal No. 1998-1215
Application No. 08/091,039
14
In view of appellant’s disclosure ((iv),supra) that
vertically extending augers have been used to agitate the
hazardous waste in a transport tank, but still left a
considerable residue of solids, and Wallace’s disclosure of
the superiority of his disclosed (horizontal axis) apparatus
in relation to agitators having vertical axes, it would have
been obvious to one of ordinary skill in the art to use an
agitator such as that disclosed by Wallace instead of the
vertically extending augers disclosed by appellant, the
motivation for such modification being the superior results
disclosed by Wallace.
As for claim 29, it would have been obvious to have
agitated the waste material in the tank while the tank was
being moved in view of Wallace’s teaching at col. 1, lines 13
to 15, that the particles should not be allowed to settle out.
The limitation in claim 34, lines 16 and 17, of "burning
the hazardous waste while the waste is in a [sic: the] form of
the substantially homogeneous mixture" would inherently result
from discharging the (agitated) hazardous waste "from the
tank to the kiln burner," as appellant discloses at page 2,
line 11.
Appeal No. 1998-1215
Application No. 08/091,039
15
Claim 40, rejected above under 35 U.S.C. § 112, second
paragraph, would be met by the APA-Wallace combination insofar
as the claim language is understood, since every tank has a
bottom, which may be designated the "floor."
Appeal No. 1998-1215
Application No. 08/091,039
16
Remand to the Examiner
This application is remanded to the examiner to determine
whether any of claims 26, 27, 30, 31, 35 to 39 and 41 to 43
should be rejected under 35 U.S.C. § 103(a) as unpatentable
over the APA in view of Wallace and/or other prior art.
Conclusion
The examiner’s decision to reject claims 34 to 37 and 40
under 35 U.S.C. § 112, second paragraph, is affirmed, and to
reject claims 25 to 31 and 33 to 43 under 35 U.S.C. § 103(a)
is reversed. Claims 25, 28, 29, 33, 34, 40 and 43 are
rejected pursuant to 37 CFR § 1.196(b), and the case is
remanded to the examiner.
In addition to affirming the examiner's rejection of one
or more claims, this decision contains new grounds of
rejection pursuant to 37 CFR § 1.196(b) (amended effective
Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131,
53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office
63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, "[a]
new ground of rejection shall not be considered final for
purposes of judicial review."
Appeal No. 1998-1215
Application No. 08/091,039
17
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings (37
CFR § 1.197(c) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner . . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record . . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
Appeal No. 1998-1215
Application No. 08/091,039
18
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of
Appeal No. 1998-1215
Application No. 08/091,039
19
Patent Appeals and Interferences for final action on the
affirmed rejection, including any timely request for
reconsideration thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b); REMANDED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
SLD
Appeal No. 1998-1215
Application No. 08/091,039
20
FINNEGAN, HENDERSON, FARABOW
GARRETT AND DUNNER
1300 I STREET, N.W.
WASHINGTON, D.C. 2005-3315
Shereece
Appeal No. 1998-1215
Application No. 08/091,039
APJ CALVERT
APJ
APJ KEYBOARD()
REVERSED
Prepared: February 4, 2002