Ex Parte Sims et al

Patent Trial and Appeal Board

Aug 24, 2017

12247709 (P.T.A.B. Aug. 24, 2017)

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.
12/247,709 10/08/2008 Kenneth Mark Sims 87204.1520 8508
7590
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT AVE. N.W.
WASHINGTON, DC 20036-5304
EXAMINER
CONLEY, SEAN EVERETT
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH MARK SIMS, BRIAN BOKOWY, and
DAVID JACK THOMAS
Appeal 2016-006614
Application 12/247,7091
Technology Center 1700
Before ROMULO H. DELMENDO, WESLEY B. DERRICK, and
MICHAEL G. McMANUS, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter “Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1—37
and 39.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as “ALLCHEM PERFORMANCE
PRODUCTS, INCORPORATED” (Appeal Brief filed August 8, 2014,
hereinafter “Br.,” 3).
2 Br. 10—19; Final Office Action entered November 13, 2013, hereinafter
“Final Act.,” 3—47; Examiner’s Answer entered October 7, 2014, hereinafter
“Ans.,” 2-7.
Appeal 2016-006614
Application 12/247,709
I. BACKGROUND
The subject matter on appeal relates to a feeder for dissolving solid
chemical material (e.g., trichloroisocyanurate or calcium hypochlorite
tablets), in a liquid to form a solution, which is then fed to systems such as
drinking water systems (Specification, hereinafter “Spec.,” 1, 24; Fig. 1).
Representative claim 1 is reproduced from page 20 of the Appeal Brief
(Claims Appendix), with key limitations highlighted in bold italics, as
follows:
1. A feeder for dissolving a chemical and mixing it with a
liquid, comprising:
a cylinder hopper with a bottom and an interior dimension,
adapted to hold the chemical; a nozzle located in the hopper;
a supply of the liquid to the nozzle to dissolve the chemical
on contact with the liquid from the nozzle to form a solution;
a diversion plate spaced above the bottom of the cylinder
hopper, having a width less than the internal dimension of the
cylinder hopper to form a gap between the diversion plate and
the cylinder hopper;
a solution basin having a bottom;
a rinse nozzle disposed at the bottom to direct a portion of
the supply of the liquid horizontally across the bottom;
a drain from the hopper into the solution basin; and
an outlet from the solution basin disposed relatively above
a solution level in the solution basin and the outlet having an
outlet valve which opens when the solution level in the solution
basin rises and moves toward a closed position when the solution
level in the solution basin lowers, wherein the valve does not
fully close and a suction continually draws the solution up from
the outlet valve and out the outlet and wherein an outflow
volume varies in response to the position of the outlet valve.
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Application 12/247,709
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections under pre-AIA
35 U.S.C. § 103(a), as follows:
A. Claims 1, 3—13, 15—25, 27—37, and 39 as unpatentable over
Tepas, Jr.3 (hereinafter “Tepas”) in view of Nickerson et al.4
(hereinafter “Nickerson”), Moffat et al.5 (hereinafter “Moffat”),
and Barani;6
B. Claims 1—7, 12—19, 24—31, 36, 37, and 39 as unpatentable over
Hammonds7 in view Nickerson, Moffat, and Barani;
C. Claims 2, 14, and 26 as unpatentable over Tepas, Nickerson,
Moffat, Barani, and Hammonds; and
D. Claims 8—11, 20-23, and 32—35 as unpatentable over
Hammonds, Nickerson, Moffat, Barani, and Tepas.
(Final Act. 3—47; Ans. 2—7.)
III. DISCUSSION
Although the Appellants address the rejections under two separate
subheadings, the Appellants do not provide any argument in support of the
separate patentability of any particular claim (Br. 11—19). Therefore, our
ruling on claim 1 controls the outcome for all claims on appeal. See 37
C.F.R. § 41.37(c)(l)(iv).
3 US 2,738,323, issued March 13, 1956.
4 US 3,574,561, issued April 13, 1971.
5 US 4,020,865, issued May 3, 1977.
6 US 2005/0129596 Al, published June 16, 2005.
7 US 6,531,056 B2, issued March 11, 2003.
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Application 12/247,709
In the Final Action, the Examiner finds that Tepas teaches a feeder
including most of the limitations recited in claim 1, including an outlet valve
in the form of a stopcock 29, but not, e.g., the limitation “the valve does not
fully close” (Final Act. 3^4) (referring to Tepas Fig. 1). Similarly, the
Examiner finds that Hammonds teaches a feeder including most of the
limitations recited in claim 1, including an outlet valve in the form of a
controlled motor 304 to regulate outlet flow, but not, e.g., the limitation “the
valve does not fully close” {id. at 23—25). To account for the limitation at
issue, the Examiner relies on Moffat {id. at 5—6, 26—27). Specifically, the
Examiner finds that Moffat teaches a valve that can be programmed to open
at a predetermined lower threshold, which would mean that the valve could
be programmed to stay open at all times by setting the lower threshold to
zero, thus satisfying the disputed claim limitation {id. at 6, 26—27). Based
primarily on these findings, the Examiner concludes that a person having
ordinary skill in the art would have combined either Tepas or Hammonds
with Moffat to optimize a result-effective variable (i.e., the lower threshold
at which a solenoid is activated to open the water path) in order to control
the liquid level in the reservoir or basin {id. at 6—7, 26—27).
The Appellants’ principal argument is that the prior art references,
including Moffat, all rely on valves that fully close (Br. 13, 16—17).
According to the Appellants, the Examiner’s proposed modification of the
references would render the prior art devices unsatisfactory for their
intended purposes {id. at 13, 17).
The Examiner responds that the Appellants’ argument is unpersuasive
“because the valves of the prior art references are capable of operating in an
open state, including partially open (stopcock 29 of Tepas), which is not
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Application 12/247,709
fully closed” (Ans. 3) (emphasis added). In particular, the Examiner
disagrees with the Appellants that Tepas requires the stopcock 29 to be
closed in order for the solution to accumulate, pointing out that Tepas’s
apparatus could be operated with a partially closed stopcock and “still
provide enough flow restriction to enable accumulation within the chamber
when the flow rate of the fluid into the chamber is at a certain rate” (id.).
The Examiner explains that, with respect to Moffat, “substituting an
electronic actuated valve, capable of not fully closing, with the manual valve
of Tepas to improve control by automating the system would have been
obvious to one of ordinary skill in the art. . . (id. at 2—3). Thus, “Moffat
was only relied upon for the teaching of a programmable valve that is used
to modify the primary reference . . . .” (id. at 4).
The Appellants’ arguments fail to identify a reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
It is well-settled that “[a] patent applicant is free to recite features of
an apparatus either structurally or functionally.” In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997). “Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk.” Id. If the PTO has
reason to believe that the prior art apparatus is inherently capable of
performing the recited function or is capable of being operated in the same
manner as specified in a claim, it has the authority to require the applicant to
prove that the prior art apparatus does not possess the specified functional
characteristic or cannot be operated in the same manner as specified in the
claim. Id.
Applying these principles, we agree with the Examiner’s
determination that the limitation “the valve does not fully close” fails to
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Application 12/247,709
confer patentability to claim 1. Consistent with the Examiner’s position
(Ans. 3), Tepas’s stopcock 29, which acts as an outlet valve, is necessarily
operated in an open state—i.e., it is not fully closed (col. 3,11. 66—68; Fig.
1). Indeed, Tepas teaches that “[o]nce charged and set[, the prior art
apparatus] can be depended upon to operate reliably without further
attention until the charge of solid chemical is spent” (col. 4,11. 31—33).
Similarly, Hammonds’s pump 304 or Moffat’s programmable valve 77 may
be operated in the open position, if desired (Hammonds col. 9,1. 66—col. 10,
1. 5 and Fig. 7A; Moffat col. 19,11. 16—20).
Thus, Tepas’s disclosure of stopcock 29 and its manner of
operation—either alone or in combination with Moffat’s disclosure—
constitutes a description of, or would have rendered obvious, a valve that
“does not fully close.” The same is true for Hammonds, either alone or in
combination with Moffat. Here, the disputed limitations highlighted above
in reproduced claim 1 do not require a valve that is configured or
programmed to be incapable of closing fully. Rather, it merely requires a
valve that “does not fully close” and such a valve is disclosed or suggested
in the prior art. Our finding is further supported by the Appellants’ own
Specification, which describes outlet control valve 41 as being capable of
being “in a fully or nearly closed position’’ (emphases added) but that, in
some embodiments (as in claim 1), it is merely operated in such a way that it
is “nearly, but not fully, closed” (Spec. 138; Figs. 1, 3).
As for the limitations “a suction continually draws the solution up
from the outlet valve and out the outlet and wherein an outflow volume
varies in response to the position of the outlet valve” recited in claim 1, we
again agree with the Examiner. Both Tepas and Hammonds, either with or
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Application 12/247,709
without Moffat, would meet these limitations when the outlet valves are
operated in the open position.
For these reasons and those given by the Examiner, we sustain the
rejection of claim 1.
IV. SUMMARY
Rejections A through D are sustained. Therefore, the Examiner’s
final decision to reject claims 1—37 and 39 is affirmed.
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).
AFFIRMED
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