Ex Parte Theron et al

Patent Trial and Appeal Board

Jun 10, 2016

12991802 (P.T.A.B. Jun. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/991,802 11/09/2010 Douglas Arnoldus Theron
6123 7590 06/14/2016
JAMES EARL LOWE, JR
5465 S. Nicole Ct.
NEW BERLIN, WI 53151
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.
16414 1793
EXAMINER
ANDERSON, DENISE R
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
06/14/2016 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):
JELowe@me.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS ARNOLDUS THERON,
ANTHONY JOHN MCMONAGLE, MARK ALBERT MCNULTY, and
SCOTT ALEXANDER BARRIE
Appeal2014-007613
Application 12/991,802
Technology Center 1700
Before CHUNG K. PAK, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal the Examiner's final rejection of claims 23-29, 38,
39, 45, 55, 57, 61---65, and 68-70. 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b ).
For the reasons set forth below, we AFFIRM.
1 Appellants identify H20il & Gas Ltd as the Real Party in Interest.
App. Br. 1.
Appeal2014-007613
Application 12/991,802
The Claimed Invention
Appellants' disclosure relates to a filtration system having at least two
filtration vessels adapted to be coupled together for producing permeate and
concentrate which are routed between these at least two filtration vessels.
Spec. 4, 1. 32-5, 11. 1-17; App. Br. 2. Claim 23 is representative of the
claims on appeal and is reproduced below from the Claims Appendix to the
Appeal Brief (App. Br. 16):
23. A filtration system having at least two vessels adapted to
be coupled together, each vessel comprising:
a housing adapted to receive a filtration element for
filtering a fluid feed;
an outlet port for directing concentrate produced by the
filtration element from the vessel;
a permeate chamber adapted to receive permeate produced
by the filtration element of the vessel and the filtration element
of at least one other vessel; and
an outlet port for directing permeate received in the
chamber from the vessel.
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Sieg us 5,298,161 Mar. 29, 1994
Lawrence et al., US 5,958,243 Sept. 28, 1999
(hereinafter "Lawrence")
Arnold et al., US 2005/0029192 Al Feb. 10,2005
(hereinafter "Arnold")
Bonnelye et al., US 2007/0187326 Al Aug. 16, 2007
(hereinafter "Bonnelye")
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Application 12/991,802
Schott et al., US 7,338,601 B2
(hereinafter "Schott")
Van Oort et al., WO 97/47375
(hereinafter "Van Oort")
Eisberg et al., WO 2005/105274 Al
(hereinafter "Eisberg")
The Rejections
Mar. 4, 2008
Dec. 18, 1997
Nov. 10, 2005
On appeal, the Examiner maintains the following rejections:
1. Claims 23-28, 38, 39, 45, 55, 57, 61, 62, and 68-70 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Eisberg in
view of Schott.
2. Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eisberg in view of Schott, as applied to claim 23, in view
of Arnold.
3. Claim 57 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eisberg in view of Schott, as applied to claim 23, in view
of Van Oort.
4. Claims 63---65 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eisberg in view of Schott, as applied to claim 23, in view
of Van Oort, and in further view of Lawrence, Sieg, and Bonnel ye.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejections for the reasons set forth in the Answer, which we adopt as our
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own. Nevertheless, we highlight and address specific findings and
arguments for emphasis as follows.
Rejection 1
Claims 23, 24, 26, 28, 29, 38, 39, 45, 55, 57, 61-65, and 68-70
Initially, we note that Appellants argue claims 23, 24, 26, 28, 29, 38,
39, 45, 55, 57, 61---65, 68, and 69 as a group. We, therefore, select claim 23
as representative of this group, and the remaining claims stand or fall with
claim 23.2 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that the combination of Eisberg and Schott would
have suggested all of the limitations of claim 23. Ans. 2, 3 (citing Eis berg,
Figs. 1, 7, and 8; Schott, Fig. 7). The Examiner finds that Eis berg discloses
nearly all of claim 23 's limitations, except: (1) "a permeate chamber
adapted to receive permeate produced by the filtration element of the vessel
and the filtration element of at least one other vessel" and (2) "an outlet port
for directing permeate received in the [permeate] chamber from the vessel."
Ans. 4 (citing Eisberg, Abstract, p. 1, 11. 8-11, p. 7, 11. 8-10 and 21-25, p.
15, 11. 5-9, Figs. 1, 7, and 8).
The Examiner, however, relies on Schott for teaching these missing
limitations. Ans. 5. In particular, the Examiner finds that Schott discloses
"[a] filtration system having at least two vessels adapted to be coupled
2 In response to the Examiner's rejection of claim 70 (Ans. 10), Appellants
rely on the same arguments presented for the patentability of claim 23. See
App. Br. 15 ("For the reasons advanced in connection with Claim 23 ... the
reversal of the rejection of Claim 70 is respectfully requested.").
Accordingly, claim 70 also stands or falls with representative claim 23.
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Application 12/991,802
together," with each vessel comprising: (1) a "permeate chamber" adapted
to receive permeate produced by the filtration element of the vessel and the
filtration element of at least one other vessel, Ans. 5-6 (citing Schott, Fig. 7,
permeate collection annulus 780, 781); and (2) an "outlet port" for directing
permeate received in the chamber from the vessel, id. at 6 (citing Schott, Fig.
7, permeate stream outlet 730, 731). The Examiner finds further that Schott
teaches that the permeate chamber has "permeate outlet ports ... which can
be configured 'at various particular orientations such as may be desired for
particular applications."' Id. at 6 (citing Schott, Fig. 7, col. 15, 11. 49---61,
col. 16, 11. 11-24). The Examiner also finds that Schott further teaches that
the disclosed permeate chamber with permeate outlet ports "allows permeate
to be transmitted ... from an elongated assembly from the side rather than
from one of the oppositely disposed longitudinal ends." Id. at 6 (citing
Schott, col. 17, 11. 36-46).
Based on the above findings, the Examiner determines that one of
ordinary skill in the art at the time of the invention would have been
motivated to construct Eisberg's filtration system with a permeate chamber
and permeate outlet ports which are side exit ports, as taught by Schott,
because the "configuration (1) permits multiple flow configurations
including single and double permeate draw configurations as well as end or
center feed introduction without significant changes to system hardware, and
(2) avoids piping at or extending through a corresponding enclosure such
that the system can be manufactured and maintained at reduced cost." Ans.
6 (citing Schott, col. 17, 11. 3 6-46) (internal quotations omitted).
Appellants argue that the Examiner's rejection of claim 23 should be
reversed because both Eisberg and Schott "teach[] away from the routing of
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the permeate from one vessel to the permeate chamber of another vessel"
and Schott "fails to teach the routing of the permeate from one vessel into
the permeate chamber of another vessel." App. Br. 12. Appellants also
argue that the "Examiner has failed to articulate why the prior art
references ... [would have led one of ordinary skill in the art] to the claimed
invention." Id. at 11.
We are not persuaded by Appellants' arguments. Appellants'
teaching away argument is unpersuasive because Appellants do not identify
sufficient evidence to support it, and we will not read into the references a
teaching away where no such language exists. Cf DyStar Textilfarben
GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). In
particular, Appellants' conclusory assertions that Eis berg "teaches the
routing of the permeate out of each vessel ... presumably into a common
collection system" and that Figure 8 of Schott refers to "the routing of the
permeate to a common collection system" (App. Br. 11-12), without more,
are insufficient to establish that the references teach away from the claimed
invention or adequately rebut the Examiner's analysis and findings in this
regard. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). We find that
Appellants do not identify any teaching in Eisberg or Schott which
discourages one of ordinary skill in the art from including a permeate
chamber and permeate outlet ports in the filtration vessels of Eisberg's
filtration system. In re Fulton, 391 F.3d 1195, 1201 (finding that there is no
teaching away where the prior art's disclosure "does not criticize, discredit,
or otherwise discourage the solution claimed").
Moreover, considering the combined teachings of the prior art as a
whole, the Examiner's finding that the combination of Eis berg and Schott
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would have suggested all of claim 23 's limitations, including "a permeate
chamber adapted to receive permeate produced by the filtration element of
the vessel and the filtration element of at least one other vessel" (Ans. 4---6)
is well-supported by the record and based upon sound technical reasoning.
Indeed, as found by the Examiner (Ans. 5, 6) and contrary to Appellants'
argument, Schott does suggest using the permeate chamber adapted for the
routing of the permeate as claimed in the filtration vessels of Eisberg's
filtration system for various advantageous reasons. Schott, Fig. 7, permeate
collection annulus 780, 781, permeate stream outlet 730, 731; col. 15, 11. 49-
61, col. 16, 11. 11-24, col. 17, 11. 36-46; see also KSR Int'! Co. v. Teleflex,
Inc., 550 U.S. 398, 420 (2007) (explaining that any need or problem known
in the art can provide a reason for combining the elements in the manner
claimed). Appellants' argument is insufficient to establish reversible error in
the Examiner's findings in this regard.
The Examiner also provides a reasonable basis and identifies
sufficient evidence in the record (Ans. 6, 17-19) to evince why one of
ordinary skill would have combined the teachings of the references to arrive
at Appellants' claimed invention. Schott, col. 17, 11. 3 6-46 (explaining that
the "configuration (1) permits multiple flow configurations including single
and double permeate draw configurations as well as end or center feed
introduction without significant changes to system hardware, and (2) avoids
piping at or extending through a corresponding enclosure such that the
system can be manufactured and maintained at reduced cost"). Appellants
fail to direct us to adequate evidence or provide an adequate technical
explanation to show why the Examiner's articulated reasoning for
combining the teachings of the prior art to arrive at the claimed invention
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lacks a rational underpinning or is otherwise based on some other reversible
error.
Accordingly, we affirm the Examiner's rejection of claims 23, 24, 26,
28, 29, 38, 39, 45, 55, 57, 61---65, and 68-70 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Eis berg and Schott.
Claim 25
Claim 25 depends from claim 24, which depends from claim 23, and
adds the limitation "wherein the concentrate outlet port and the permeate
outlet port are each directly coupled to a comparable port of another vessel."
App. Br. 16 (Claims App'x).
Appellants argue that the Examiner's rejection of claim 25 should be
reversed because neither Eisberg nor Schott teach or suggest "direct
coupling of the ports" or "provide any motivation to so directly couple both
the permeate and concentrate ports." App. Br. 13.
We are not persuaded by Appellant; s argument because a naked
assertion that the prior art fails to teach or suggest a claim limitation is not
an argument in support of separate patentability. Cf In re Lovin, 652 F.3d
1349, 1356-57 (Fed. Cir. 2011); 37 C.F.R. § 41.37(c)(l)(iv).
Moreover, as found by the Examiner (Ans. 19, 20) and contrary to
Appellants' argument, the combination of Eis berg and Schott would have
suggested all of claim 24' s limitations, including a filtration vessel having
the concentrate outlet port, i.e., Eisberg, Fig. 8, side exit ports 23', and the
permeate outlet port, i.e., Schott, Fig. 7, permeate stream outlets 730, 731,
which are directly coupled to comparable ports of another filtration vessel,
i.e., Eis berg, Fig. 8, pressure vessel 11', as recited in the claim. Appellants'
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conclusory argument is insufficient to establish reversible error in the
Examiner's findings in this regard. In re De Blauwe, 736 F.2d at 705.
Accordingly, we affirm the Examiner's rejection of claim 25 under
35 U.S.C. § 103(a) as unpatentable over the combination of Eisberg and
Schott.
Claim 27
Claim 27 depends from claim 23 and adds the following limitation:
wherein each vessel includes coplanar parallel concentrate
and permeate ports on opposing sides of the vessel and
into and out of the vessel, the location of the concentrate
and permeate ports permitting the stacking close together
of vessels coupled together in parallel
App. Br. 17 (Claims App'x).
Appellants argue that the Examiner's rejection of claim 27 should be
reversed because: (1) Schott "does not teach or suggest the stacking of
vessels ... tm!ether with the nermeate of one vessel beirn.! routed to the .__, '" .__,
permeate chamber of another vessel"; (2) Eisberg "does not teach or suggest
anything regarding permeate routing"; and because (3) the references do not
teach or suggest the "structure," as defined by the claim. App. Br. 13, 14.
Appellants further argue that "[i]n view of these references, the only
conclusion that can be made by one of skill in the art is that a separate
collection system is needed in order to gather the permeate coming from all
of the vessels." Id. at 13.
We are not persuaded by these arguments for the reasons set forth by
the Examiner in the Answer. Appellants' arguments that Eis berg and Schott
individually lack all of the claimed structures does not identify reversible
error in the Examiner's determination that the collective teachings of
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Eis berg and Schott would have suggested the stacking of filtration vessels
together with the permeate of one vessel being routed to the permeate
chamber of another filtration vessel. "Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references." In re Merck & Co., 800
F.2d1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425). Moreover,
Appellants' conclusory assertion that the references do not teach or suggest
the claimed "structure" does not show any reversible error in the Examiner's
reasons for combining the structures shown Eisberg and Schott. On this
record, Appellants do not provide an adequate technical explanation or direct
us to sufficient evidence in the record to support their arguments.
Moreover, based on the record before us, the Examiner's
determination that the combination of Eisberg and Schott would have
suggested all the limitations of claim 27 (Ans. 8, 20) are well-supported by
the evidence and based on sound technical reasoning. Eisberg, Fig. 8,
pressure vessel 11', Figs. 1 and 7, p. 15, 11. 5-9; Schott, Fig. 7, permeate
stream outlet 730, 731; col. 15, 11. 49---61, col. 16, 11. 11-24, col. 17, 11. 36-
46. We discern no reversible error in the Examiner's analysis and findings
in this regard.
Accordingly, we affirm the Examiner's rejection of claim 27 under
35 U.S.C. § 103(a) as unpatentable over the combination of Eisberg and
Schott.
Rejections 2, 3, and 4
With respect to the Examiner's Rejections 2, 3, and 4 stated above,
the Appellants offer no substantive arguments on the merits. In fact,
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Appellants do not address or mention these rejections at all in the Appeal
Brief.
Accordingly, because the Examiner's Rejections 2, 3, and 4 have not
been withdrawn and the Appellants offer no substantive argument on the
merits, we summarily affirm the rejections. Cf Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008); Ex parte Frye, 2010 WL 889747, *4 (BPAI
2010) ("If an appellant fails to present arguments on a particular issue - or,
more broadly, on a particular rejection - the Board will not, as a general
matter, unilaterally review those uncontested aspects of the rejection.")
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)).
DECISION/ORDER
The Examiner's rejections of claims 23-29, 38, 39, 45, 55, 57, 61---65,
and 68-70 are affirmed.
It is ordered that the Examiner's decision 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).
AFFIRMED
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