10457198 (B.P.A.I. Feb. 23, 2006)

Ex Parte Theurer et al

Board of Patent Appeals and InterferencesFeb 23, 2006

10457198 (B.P.A.I. Feb. 23, 2006)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board. UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte JOSEF THEURER and MANFRED BRUNNINGER ______________ Appeal No. 2006-0461 Application 10/457,198 _______________ ON BRIEF _______________ Before PAK, WARREN and KRATZ, Administrative Patent Judges. WARREN, Administrative Patent Judge. Decision on Appeal and Opinion We have carefully considered the record in this appeal under 35 U.S.C. § 134, and based on our review, find that we cannot sustain the rejection of appealed claim 1, the sole claim in the application, under 35 U.S.C. § 103(a) as being unpatentable over Plasser in view of Bleeker (answer, pages 3-4). We refer to the answer and to the brief and reply brief for a complete exposition of the positions advanced by the examiner and appellants. It is well settled that in order to establish a prima facie case of obviousness under § 103(a), the examiner must show that some objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill in this art would have led that person to the claimed invention as a whole, including each and every limitation of the claims arranged as required by the claims, without recourse to the - 1 - Appeal No. 2006-0461 Application 10/457,198 teachings in appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In order to review the examiner’s application of prior art to claim 1, we must first interpret the language thereof by giving the claim terms the broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art in light of the written description in the specification, including the drawings, unless another meaning is intended by appellants as established in the written description of the specification, and without reading into the claims any limitation or particular embodiment disclosed in the specification. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). As illustrated by specification Figs. 1 and 2, the plain language of the claim specifies a method comprising at least the steps of a) screening in unit 8 any encrusted ballast 6 to separate any manner and amount of detritus 13 therefrom; b) washing in any manner in installation 11 the screened ballast with any amount of water 12 while at the same time removing the separated detritus 13 of step a) on a conveyor belt unit 14; c) clarifying the washing water 12 of step b) in any manner in installation 17 to produce a clarified water portion and any manner of washing water sludge 18; and d) disposing of the washing water sludge 18 of step c) by moving it to conveyor belt 14 which is removing the separated detritus 13 as specified in step b) for common removal of said separated detritus 13 and the washing water sludge 18 of step c) on the same conveyor belt 14. We find that the term “sludge” as used by appellants in the written description in the specification (e.g., page 2, first full paragraph) comports with the common dictionary meaning of the term in context, “[s]emisolid material . . . [m]ud, mire, or ooze . . . .”1 1 See generally, The American Heritage Dictionary Of The English Language 1639 (4th ed., Boston, Houghton Mifflin Company. 2000); see also reply brief, page 2. - 2 - Appeal No. 2006-0461 Application 10/457,198 We agree with the examiner that claimed method steps a) and b) are satisfied by the apparatus operated according to the method disclosed by Plasser since screened ballast 4 can be washed by water from nozzles 18 in the screening box 9 at the same time that the detritus separated from encrusted ballast 3 is removed by conveyor 12 (page 2, ll. 110-128, and page 3, ll. 1-11, 30-32, and 99-104; Figs. 1 and 2). This is because the water striking encrusted ballast 3 falling into the screening box 9 can further wash screened ballast 4 (page 2, ll. 110-123; Figs. 1). However, as appellants point out, while Plasser separates dirty wash water collected in collecting arrangements 21,22 into a clarified clean water portion and washing water “sand” sludge using a water-cleaning device (page 3, ll. 80-90; Figs. 1) as required by claimed step c), there is no teaching in Plasser which would have led one of ordinary skill in this art to dispose of the washing water “sand” sludge by moving it to conveyor 12 for common removal with the separated detritus already on that conveyor as required by claimed step d). We do not find any teaching in Bleeker which would have led one of ordinary skill in the art to modify the apparatus operated according to the method disclosed by Plasser to move the washing water “sand” sludge to conveyor 12 for common removal with the separated detritus as required by claimed step d). Bleeker would have disclosed to this person an apparatus operated according to a method which separates water containing suspended sludge into a clarified water portion and a water sludge portion, wherein the water sludge portion is moved by discharge conveyor 34 into container 35 (cols. 3-4; FIG. 2). Thus, as appellants contend, at best, one of ordinary skill in this art would have been led by the combined teachings of Plasser and Bleeker to use the apparatus and method illustrated by Bleeker FIG. 2 as a water cleaning device to separate the dirty wash water collected in collecting arrangements 21,22 into a clarified clean water portion and washing water “sand” sludge as disclosed by Plasser. Thus, the combined references taken as a whole would not have resulted in the claimed method encompassed by appealed claim 1 as we interpreted this claim above, see Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed. Cir. 1988), and accordingly, in the absence of an established prima facie case of obviousness, we reverse the ground of rejection. The examiner’s decision is reversed. Reversed - 3 - Appeal No. 2006-0461 Application 10/457,198 CHUNG K. PAK ) Administrative Patent Judge ) ) ) ) CHARLES F. WARREN ) BOARD OF PATENT Administrative Patent Judge ) APPEALS AND ) INTERFERENCES ) ) PETER F. KRATZ ) Administrative Patent Judge ) Collard & Roe, P.C. 1077 Northern Boulevard - 4 - Appeal No. 2006-0461 Application 10/457,198 Roslyn, NY 11576 - 5 -