Ex Parte Swantner et al

Patent Trial and Appeal Board

Apr 11, 2016

12828602 (P.T.A.B. Apr. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/828,602 07/01/2010
26353 7590 04/13/2016
WESTINGHOUSE ELECTRIC COMPANY, LLC
1000 Westinghouse Drive
Suite 141
Cranberry Township, PA 16066
Stephen Swantner
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.
NSD2009-03 l 7120
EXAMINER
HICKS, ANGELISA
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
04/13/2016 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):
guerral@westinghouse.com
spadacjc@westinghouse.com
coldrerj@westinghouse.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN SWANTNER and MATTHEW SWARTZ
Appeal2014--004197
Application 12/828,602 1
Technology Center 3700
Before MICHAEL C. HOELTER, THOMAS F. SMEGAL, and
ERIC. C. JESCHKE, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stephen Swantner and Matthew Swartz (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner's Final Rejection of claims 1-8,
10-17, 19, and 20 under 35 U.S.C. § 102(b) as anticipated by MacDuff (US
6,893,485 B2, iss. May 17, 2005); and of claims 9 and 18 under 35 U.S.C.
§ 103(a) as unpatentable over MacDuff. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Westinghouse Electric
Company LLC. Appeal Br. 1.
Appeal2014--004197
Application 12/828,602
CLAIMED SUBJECT MATTER
Claims 1, 10, and 19 are independent. Claim 1 is reproduced below
and illustrates the claimed subject matter, with disputed limitations
emphasized.
1. A gas separator for a bifurcated liquid transport pipe
structured to transport a liquid, said pipe having a generally
cylindrical inner cross-sectional area with a diameter, an
upstream outlet and a downstream inlet, said liquid having gas
entrained therein, said gas separator comprising:
a first body defining an enclosed passage, a liquid inlet, a
liquid outlet, and an ascendant gas outlet, said enclosed passage
having an inner cross-sectional area greater than said liquid
transport pipe;
a second body defining an enclosed pocket, said second
body coupled to said first body,
said pocket in fluid communication with said ascendant
gas outlet;
said liquid inlet coupled to, and in fluid communication
with, said transport pipe upstream outlet;
said liquid outlet coupled to, and in fluid communication
with, said transport pipe downstream inlet;
wherein the speed of the liquid flow through said first
body is slower than the flow through said liquid transport pipe;
and
wherein a substantial portion of gas entrained in the
liquid stratifies under the effects of buoyancy while said liquid
is in said first body, and wherein said substantial portion of gas
ascends upwardly in said first body, through said ascendant gas
outlet, and into said pocket.
ANALYSIS
Anticipation of Claims 1-8, 10--17, 19, and 20 by MacDuff
Appellants argue claims 1-8, 10-17, 19, and 20 as a group. See
Appeal Br. 8-9; Reply Br. 1-7. We select independent claim 1 as the
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Appeal2014--004197
Application 12/828,602
representative claim for this group such that the remaining claims stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). We have
considered Appellants' arguments raised in the Appeal and Reply Briefs, but
do not find them persuasive to demonstrate error in the Examiner's rejection
of claim 1 as being anticipated by MacDuff.
The Examiner finds that MacDuff anticipates claim 1 by disclosing a
gas separator with all the elements recited by independent claim 1. Final
Act. 4--7 (citing to Fig. 3 and various portions ofMacDuft).2 See also Final
Act. 3.
According to Appellants, MacDuff discloses a gas concentrator which
"traps bubbles via surface tension," whereas the claims "specify that a
substantial portion of gas entrained in the liquid stratifies 'under the effects
of buoyancy."' Appeal Br. 8. Appellants continue this argument in the
Reply Brief, asserting that "MacDuff does not disclose a device that is
identical to the gas separator recited in the present claims due in part to the
presence of the gas concentrator." Reply Br. 5.
However, Appellants misread the Examiner's rejection. As the
Examiner explains, "Appellant continues to base arguments on a portion of
MacDuff that has not been utilized in the rejection, e.g. the concentrator, 17,
related to separating residual entrained gas in the system," repeating that
"this additional inventive concept [of Mac Duff] was not used for the
purpose of rejecting Appellant's claim." Ans. 11.
Furthermore, the "gas entrained" limitation is a functional limitation
that does not impose any structural limitation on the claimed apparatus that
2 The Examiner included an annotated version of Fig. 3 of MacDuff with the
Non-Final Rejection dated November 7, 2012.
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Appeal2014--004197
Application 12/828,602
differentiates the claim apparatus from a prior art apparatus that otherwise
discloses all the recited limitations and is capable of performing the recited
function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
(Appellants' contention that the claimed structure will be used to perform a
function not taught by the prior art reference does not have patentable
weight ifthe structure is already known). We also note that Appellants do
not argue that MacDuff lacks any structure recited by the claims, and we
find none.
"A reference anticipates a claim if it discloses the claimed invention
'such that a skilled artisan could take its teachings in combination with his
own knowledge of the particular art and be in possession of the invention."'
In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In re LeGrice,
301 F.2d 929, 936, In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985))
(parallel citations omitted). Furthermore, the presence of additional
structures in the prior art does not undermine a rejection where the claim
uses "comprising." See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d
1312, 1319 (Fed. Cir. 2009) ("The claim uses the term 'comprising,' which
is well understood in patent law to mean 'including but not limited to."').
For the reasons set forth above, we discern no error in the Examiner's
findings and agree that the gas separator disclosed by MacDuff anticipates
claim 1. Thus, we sustain the Examiner's rejection of claim 1 and claims
2-8, 10-17, 19, and 20 falling therewith, under 35 U.S.C. §102(b) as
anticipated by MacDuff.
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Appeal2014--004197
Application 12/828,602
Obviousness of claims 9 and 18 over MacDujf
Appellants do not separately argue dependent claims 9 and 18, stating
that " [ c] laims 9 and 18 rely upon their dependency for patentability." See
Appeal Br. 10. Therefore, we sustain the rejection of claims 9 and 18 as
unpatentable over MacDuff for the same reasons stated above with respect to
anticipation of claim 1 by MacDuff.
DECISION
We AFFIRM the Examiner's rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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