Ex Parte Tardif et al

Board of Patent Appeals and Interferences

Apr 16, 2009

10430744 (B.P.A.I. Apr. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARC-ANDRE TARDIF,
RUSS K. MAJORS, and
RUSSELL L. HILL
____________

Appeal 2009-1773
Application 10/430,744
Technology Center 1700
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Decided:1 April 16, 2009
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Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-1773
Application 10/430,744

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-7, 9-11, 14-16, 27, 28, 30-32, 35-38, and 41-44.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to treating fly ash with a treatment fluid. The
treatment fluid serves to improve the properties of the fly ash so the fly ash
is useful as an additive in concrete, plastic, or other material (Spec. 2:5-6).
Appellants seek to evenly disperse the treating fluid into the fly ash so the
fluid is available to react with or coat the fly ash particles (Spec. 2:21-23).
Claim 1 is illustrative of the subject matter on appeal in its broadest form:
1. A method of mixing fly ash with a treating fluid, comprising the
steps of
flowing a stream of fly ash;
determining the flow rate of the fly ash during said flowing step; and
dispersing at least one treating fluid into the fly ash at a flow rate
corresponding to the determined flow rate of the fly ash, wherein the treating
fluid comprises an agent selected from the group consisting of sacrificial
agents, surfactants, coating compositions, and combinations thereof.

The Examiner maintains, and Appellants appeal, two rejections: (1) a
rejection of claims 1-7, 9-11, 15, 16, 27, 28, 30-32, 36-38, and 41-44 under
35 U.S.C. § 103(a) as unpatentable over Young (US 6,7006,111 B1, issued
Mar. 16, 2004); and (2) a rejection of claims 14 and 35 under 35 U.S.C.
§ 103(a) over Young and additionally Creamer (US 6,773,500 B1, issued
Aug. 10, 2004 to Creamer et al.).
With respect to the first rejection, Appellants argue claims 1-7, 9-11,
15, 16, 27, 28, 30-32, 36, 42, and 44 as a group; claim 37 separately; claim
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38 separately, and claims 41 and 43 as a separate group. We select claims 1,
37, 38, and 41 as representative for deciding the issues arising for the first
rejection. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple claims subject
to the same ground of rejection are argued as a group by appellant, the Board
may select a single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the ground of
rejection on the basis of the selected claim alone.”).
For the second rejection, Appellants argue claims 14 and 35 as a
group. We select claim 14 as representative for the second rejection.

II. DISPOSITIVE ISSUES
The main issues on appeal arising from the contentions of Appellants
and the Examiner are: Have Appellants shown that the Examiner reversibly
erred in finding that Young, taking into account the skill of the ordinary
engineer, would have suggested to one of ordinary skill in the art the steps of
determining flow rates and dispersing the treatment chemical as required by
claim 1, and have Appellants shown that the Examiner reversibly erred in
finding that measuring, controlling and monitoring of those flow rates as
required by claims 37, 38, and 41 was also suggested and within the
capabilities of one of ordinary skill in the art?

III. FINDINGS OF FACT
The following enumerated findings of fact (“FF”) are of particular
relevance:
1. Young is directed to a process of adding a correct amount of chemical
treating fluid to fly ash to mitigate the absorption potential of the ash
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(Young, col. 3, ll. 54-57). Young seeks to transform the chemical
adsorption characteristic of the ash to a low constant value to make
the ash more marketable, for instance, as a substitute for Portland
cement in concrete (Young, col. 1, ll. 14-23; col. 1, l. 66 to col. 2, l. 7;
col. 6, ll. 33-46).
2. Young is particularly concerned with correctly determining the
adsorption potential of a sample of the fly ash and using this
adsorption potential measurement to determine the correct amount of
treatment chemical to add to the fly ash (col. 6, ll. 56-66; col. 7, ll. 6-
9; col. 7, l. 58 to col. 8, l. 4).
3. Young discloses that there are two fundamental ways of dispersing the
treatment chemical into the fly ash component: (1) mixing and (2)
combined flows (col. 8, ll. 15-18).
4. The combined flows process is preferred and this method combines
ash flows with treatment chemical flows using either naturally or
artificially induced turbulence to disperse the treatment chemical into
the ash (col. 8, ll. 38-42). The combined flow process has high utility
because flows of ash already exist to move ash around the ash
generation plant, ash terminal facility, and end user facility (col. 8, ll.
42-45). For instance, the combined flows process is useful for
dispersing treatment chemical between a silo and some form of
transportation container (col. 8, ll. 45-49).
5. In the combined flow process, Young prefers adding liquid treatment
chemicals as an atomized liquid or aerosol (col. 8, ll. 9-10 and 52-54).
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6. Young does not specifically disclose how the combined flow system
is configured or operated such that the necessary amount of treatment
chemical is, in fact, added (Young, col. 8, ll. 34-54).

IV. PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
In considering the question of the obviousness, the question under
35 U.S.C. § 103 is not merely what the prior art references expressly teach
but what they would have suggested to one of ordinary skill in the art at the
time the invention was made. See Merck & Co. v. Biocraft Labs., Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989) and In re Keller, 642 F.2d 413, 425
(CCPA 1981). A reference need not explain every detail since it is speaking
to those skilled in the art and, therefore, a prior art reference must be
considered together with the knowledge of the ordinary artisan. In re
Samour, 571 F.2d 559, 562 (CCPA 1978); DeGeorge v. Bernier, 768 F.2d
1318, 1323 (Fed. Cir. 1985); see also In re Sovish, 769 F.2d 738, 743 (Fed.
Cir. 1985) (In an obviousness assessment, skill is presumed on the part of
the artisan, rather than the lack thereof.).
Moreover, the obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court [or this Board] can take account of the inferences and creative steps
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that a person of ordinary skill in the art would employ.” KSR, 127 S. Ct. at
1741. “If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” Id. at 1740.
Every case raising the issue of obviousness must be decided upon its
own facts. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1366 (Fed. Cir. 2007).

V. ANALYSIS
Appellants’ contend that the reference relied upon by the Examiner
does not teach or suggest each and every claimed element (Br. 11).
Specifically, Appellants contend that Young teaches determining the amount
of treatment chemical to be added prior to mixing the treatment chemical
with the ash, but does not teach determining the flow rate of ash during
flowing or dispersing treatment chemical at a corresponding rate (Br. 11-12).
This is not disputed by the Examiner. Rather, it is the Examiner’s position
that Young is particularly concerned with adding the correct amount of
treatment chemical into the fly ash and discloses a combined flow process,
which in its implementation, would require determining the flow rates and
dispersing the treatment chemical into the ash at a corresponding rate in
order to add the correct amount of treatment chemical. In support, the
Examiner makes a finding that determining flow rates and setting the flow
rates to particular levels would have been within the level of ordinary
engineering skill (Ans. 5). Appellants present no evidence to the contrary.
Claim 1 allows for any type of flow rate determination as long as it
occurs during the flowing of the ash and any method of setting the flow rate
of the treating fluid as long as it corresponds to the ash flow rate.
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Appellants have not pointed out an error in either the Examiner’s fact
finding or application of the law. Young is particularly concerned with
delivering the correct amount of treatment chemical to the fly ash (FF 1-2).
Furthermore, Young describes a continuous (combined flow) process of
flowing fly ash and dispersing treatment chemical into the flowing ash (FF
3-4). In the preferred combined flow process, the treatment chemical is
added in atomized or aerosol form (FF 5). Both the fly ash and the treatment
chemical are flowing in accordance with a flow rate in the combined flow
process. In such a process, it is necessary to add the treatment chemical at a
rate proportional to the flow rate of the fly ash to obtain the correct amount
of treatment chemical in the fly ash, and Young is particularly interested in
adding the correct amount (FF 1-2).
Given that Young is concerned about the amount of treatment agent
added to the fly ash, we agree with the Examiner that it would have been
obvious for one of ordinary skill to have used ordinary engineering skill to
insure that the correct amount of treatment chemical is dispersed into the
ash. See KSR, 127 S. Ct. at 1742 (it is likely the product not innovation but
of ordinary skill and common sense for one of ordinary skill to solve
particular design needs by “pursu[ing] known options within his or her
technical grasp.”).
Appellants have not established that using determining flow rates
during the flowing process and dispersing the chemical treatment flow to
correspond to the ash flow rate in order to obtain the desired concentration
of treatment chemical in the ash would have been uniquely challenging or
otherwise beyond the technical grasp of the ordinary artisan implementing
the process of Young. Nor do Appellants argue, much less provide any
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evidence, that the claimed methods represent techniques implemented in
ways unexpected or unobvious to those of ordinary skill in the art. See
Leapfrog Ent., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (concluding that a toy updated with modern electronics was obvious
because “[a]pplying modern electronics to older mechanical devices has
been commonplace in recent years,” and Leapfrog did not present evidence
that the modifications were uniquely challenging or difficult for one of
ordinary skill in the art or that inclusion represented an unobvious step over
the prior art).
Appellants attempt to distinguish the present case from those of In re
Dilnot, 319 F.2d 188, 194 (CCPA 1963), In re Lincoln, 126 F.2d 477, 479
(1942 CCPA), and In re Korpi, 160 F.2d 564, 566 (CCPA 1947) (Br. 12-14).
The Examiner relies upon these cases for the proposition that “[i]t is well
settled that it is within the level of ordinary skill to operate a process
continuously.” (Ans. 5.) We cannot agree that the Examiner’s citation of
these cases or the distinguishing facts of these cases show that the Examiner
erred in the conclusion of obviousness in the present case. Obviousness
must be determined based upon the facts of record in the instant case.
Pfizer, Inc. v. Apotex, Inc. 480 F.3d at 1366. Young describes a continuous
flow process and, while Young does not describe all the particular
operational parameters for implementing that continuous process,
presumably, those details were within the capabilities of one of ordinary
skill in the art. Appellants have not directed our attention to evidence to the
contrary. The weight of the facts of record supports the Examiner’s
conclusion of obviousness.
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Application 10/430,744

Appellants have not shown that the Examiner reversibly erred in
concluding, based on the teachings of Young, that the subject matter as a
whole, including steps of determining the ash flow rate while flowing a
stream of fly ash and dispersing a treating fluid into the ash at a flow rate
corresponding to the ash flow rate as required by claim 1 would have been
obvious to one of ordinary skill in the art.
Turning to claims 37, 38, and 41, we also conclude that Appellants
have not shown that the Examiner reversibly erred in relying upon the
suggestions of Young and the skill of the ordinary artisan in finding that the
generic control, monitoring, and adjusting required by these claims was
within the capabilities of one of ordinary skill in the art.
As stated above, Young describes a continuous flow process
(combined flow process). Implementing that continuous process with known
monitoring and control techniques would have been obvious because
normally, it is within the ordinary skill in the art to automate a known
manual process with known automating elements to accomplish the
objectives of the process. See In re Venner, 262 F.2d 91, 95 (CCPA 1958).
One of the objectives of Young is to effectively disperse the correct amount
of treatment chemical into the flowing fly ash. Adding known process
control and monitoring equipment to accomplish that goal more accurately
would have been obvious to one of ordinary skill in the art in the absence of
any credible evidence that the addition of such process control and
monitoring techniques were beyond the technical grasp of the ordinary
artisan or brought about an unexpected result. No such evidence is relied
upon by Appellants in this appeal.
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Appellants have not shown that the Examiner reversibly erred in
concluding, based on the teachings of Young, that the subject matter as a
whole, including steps of using automated control, monitoring, and adjusting
as required by claims 37, 38, and 41 would have been obvious to one of
ordinary skill in the art.
With regard to the second rejection, i.e., the Examiner’s rejection of
claims 14 and 35 over Young and further in view of Creamer, Appellants’
sole argument is that “Creamer does not overcome the deficiencies of the
teachings of Young discussed above.” (Br. 16.) Given that Appellants do
not advance any additional arguments, we cannot say that Appellants have
shown that the Examiner reversibly erred in rejecting claims 14 and 35.

VI. CONCLUSION
Appellants have limited the scope of their arguments to the above
issues and do not further contest the Examiner’s rejection of the claims.
Therefore, we sustain the Examiner’s rejection of claims 1-7, 9-11, 15, 16,
27, 28, 30-32, 36-38, and 41-44 under 35 U.S.C. § 103(a) as unpatentable
over Young; and the Examiner’s rejection of claims 14 and 35 under 35
U.S.C. § 103(a) over Young and additionally Creamer.

VII. DECISION
The decision of the Examiner is affirmed.
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VIII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

cam

FISH & RICHARDSON, PC
P O BOX 1022
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