Ex Parte RAMMINGER et al

Patent Trial and Appeal Board

Oct 17, 2018

14104104 (P.T.A.B. Oct. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/104,104 12/12/2013
24131 7590 10/19/2018
LERNER GREENBERG STEMER LLP
PO BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
UTE RAMMINGER
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.
MOH-Pll0141-l 5193
EXAMINER
RIVERA-CORDERO, ARLYN I
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
10/19/2018 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):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UTE RAMMINGER, JOERG FANDRICH, and
FERNANDO-MARIO ROUMIGUIERE
Appeal2018-000057
Application 14/104, 104
Technology Center 1700
Before CATHERINE Q. TIMM, WESLEY B. DERRICK, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-000057
Application 14/104, 104
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, and 4--13. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
CLAIMED SUBJECT MATTER
The claims are directed to a method for conditioning a power-
generating circulatory system of a power plant. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A method of cleaning and conditioning a circulatory
system of a power plant, the method comprising:
adding an amine as a film-forming agent to a work
medium circulating in the circulatory system, for the film-
forming agent to form a hydrophobic film on surfaces of the
circulatory system;
monitoring a concentration of the film-forming agent by
conducting measurements at a measurement point during a
duration of the method;
terminating the step of adding the film-forming agent
when the concentration of the film-forming agent in the work
medium has reached a value between 1 ppm and 2 ppm at the
measurement point; and
aborting a metering-in of the film-forming agent if the
concentration of the film-forming agent at a constant metering
rate remains constant at a plurality of measurement points.
App. Br. 13 (Claims Appendix).
1 The real party in interest is identified as Areva GmbH of Erlangen,
Germany. Appeal Brief of October 20, 2016 ("App. Br."), 1. In this
opinion, we also refer to the Final Action of April 5, 2016 ("Final Act."), the
Advisory Action of July 14, 2016 ("Adv. Act."), the Examiner's Answer of
July 28, 2017 ("Ans."), and the Reply Brief of September 28, 2017 ("Reply
Br.").
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Appeal2018-000057
Application 14/104, 104
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Mori
Czempik
Pierce
JP 2011033301
DE 2450253
us 4,999,161
REJECTIONS
Feb.17,2011
May 22, 1975
Mar. 12, 1991
Claims 1, 2, 4---6, and 9-13 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Czempik in view of Mori and in further
view of Pierce. Final Act. 5.
Claims 7 and 8 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Czempik in view of Mori, in further view of Pierce
and an additional reference. Final Act. 11.
Claim 1 is provisionally rejected on the ground of nonstatutory double
patenting as being unpatentable over claim 9 of co-pending Application No.
14/104, 109 (' 109 Application). Final Act. 14.
Claims 1, 5, 6, 9, and 11-13 are provisionally rejected on the ground
of nonstatutory double patenting as being unpatentable over claims 3, 4, 11,
and 13-16 of the '109 Application. Final Act. 15.
OPINION
Obviousness Rejections
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
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Application 14/104, 104
ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
In this case, claim 1, the only independent claim, requires "aborting a
metering-in of the film-forming agent if the concentration of the film-
forming agent at a constant metering rate remains constant at a plurality of
measurement points." The Examiner acknowledges that neither Czempik
nor Mori discloses this limitation. Final Act. 7. Without citing to evidence
to the record, the Examiner determines:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the method disclosed by
[Czempik] with the step of aborting the metering-in of the film-
forming agent if the concentration of the film-forming agent at
a metering rate remains constant at a plurality of measurement
points in order to prevent waste of the film-forming agent.
Id. As Appellants point out, even if the obviousness rejection were
supported by articulated reasoning with some rational underpinning, there is
no showing that the prior art teaches or suggests at least "a plurality of
measurement points." App. Br. 8-10.
In the Examiner's Answer, the Examiner's reasoning similarly lacks
factual support for "a plurality of measurement points" and states that a
skilled artisan would have found this limitation obvious merely because "it
would be indicative that chemical equilibrium has been reached, the state in
which both reactants and products are present at concentrations that have no
further tendency to change with time and that the hydrophobic film is
completely formed." Ans. 19.
In the Advisory Action, the Examiner cites Mori ,r 27 as support for
the rejection and states: "Mori teaches that the time and the place where the
counteractive amine and the long-chain fatty amine are added may be
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Appeal2018-000057
Application 14/104, 104
different from each other." Adv. Act. 2. As Appellants point out, this prior
art teaching does not teach or suggest "a plurality of measurement points" as
required by claim 1. App. Br. 9. The Examiner does not address this
argument raised by Appellants. See generally, Ans. We therefore are
persuaded that Appellants have identified a reversible error in the rejection
of claim 1. 2 The additional prior art and reasoning the Examiner applies to
reject claims 7 and 8 does not cure the defect.
Provisional Double Patenting Rejections
For the provisional double patenting rejections, Appellants note that
"there is no actual double patenting issue for review at this time" because
both applications at issue are pending and state that they will "take
appropriate action when allowable subject matter is indicated." App. Br. 10,
1 1.
Since the time of the Appeal Brief and Reply Brief, the '109
Application has issued as U.S. Patent 9,943,890 on April 17, 2018, but with
claims different from those subject to the final rejection in the present case.
See Issue Notification in the electronic file of Application '109; Amendment
therein of September 5, 2017.
Because the claims in the issued patent are not the same as those
relied on by the Examiner in the provisional rejections, we decline to reach
the provisional double patenting rejections.
2 We decline to reach the remaining arguments raised by Appellants (see
App. Br. 3-7, Reply Br. 2--6) as unnecessary for the disposition of the
appeal.
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Application 14/104, 104
DECISION
The Examiner's rejection of claims 1, 2, 4--6, and 9--13 under
35 U.S.C. § 103(a) is reversed.
The Examiner's rejection of claims 7 and 8 under 35 U.S.C. § 103(a)
is reversed.
We do not reach the provisional obviousness-type nonstatutory double
patenting rejections.
REVERSED
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