Ex Parte Dontula et al

Patent Trial and Appeal Board

Jun 29, 2016

13316011 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/316,0ll 12/09/2011
13193 7590 07/01/2016
BLG(GE)
Borden Ladner Gervais LLP
1300-100 Queen Street
Ottawa, ON KIP 1J9
CANADA
FIRST NAMED INVENTOR
Prasanna Rao DONTULA
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.
242374-1(PAT92153-2) 1849
EXAMINER
BEHRENDT, BENJAMIN J
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
ipinfo@blg.com
gpo.mail@ge.com
lori.E.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRASANNA RAO DONTULA, YA TIN TAY ALIA, and
UPEN JAYANT BHARWADA1
Appeal2014-007943
Application 13/316,011
Technology Center 1700
Before ADRIENE LEPIANE HANLON, WESLEY B. DERRICK, and
BRIAND. RANGE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's decision finally rejecting claims 1, 3, and 4 under 35 U.S.C.
§ 102(b) as anticipated by Kusuda2 and claim 5 under 35 U.S.C. § 112,
second paragraph for indefiniteness. 3 We have jurisdiction pursuant to
35 U.S.C. § 6.
We REVERSE.
1 Appellants identify General Electric Company as the Real Party in Interest.
Appeal Brief filed February 18, 2014 ("App. Br."), 1.
2 Kusuda et al. (US 4,857,192, issued August 15, 1989).
3 Pending claim 9 stands withdrawn from examination. Final Office Action
issued September 19, 2013 ("Final Act."), 1.
Appeal2014-007943
Application 13/316,011
CLAIMED SUBJECT MATTER
Appellants' invention relates to a feed channel spacer providing a
series of generally parallel channels. Spec. Abstract.
Claim 1 reproduced from the Claim Appendix of the Appeal Brief
with added emphasis is illustrative:
1. A feed channel spacer for a spiral wound membrane
element comprising:
a sheet of material defining a plurality of side by side generally
undulating channels extending between two opposed edges of
the sheet of material wherein the undulating channels comprise
curved sections along their length, and wherein the curved
sections have a radius of curvature of between 1 mm and
JO mm.
Appeal Brief ("App. Br."), 6.
Dependent claim 5 further recites that "the undulating channels have
an equivalent diameter between about 0.2 and 1.2 mm."
DISCUSSION
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. 4 We find determinative issues raised
as to the interpretation of the claims, i.e., the proper meaning of "curved
sections along their length ... hav[ing] a radius of curvature" in claim 1 and
"equivalent diameter" in claim 5. As to both, we find the Examiner erred. It
follows, therefore, that we reverse the Examiner's anticipation rejection of
claims 1, 3, and 4 and indefiniteness rejection of claim 5 as all are grounded
on an erroneous construction of the claims.
4 We refer to the Final Office Action mailed September 19, 2013, the Appeal
Brief filed February 18, 2014, the Examiner's Answer mailed April 24, 2014
("Ans."), and the Reply Brief filed June 6, 2014 ("Reply Br.").
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Appeal2014-007943
Application 13/316,011
We begin our analysis by determining the scope and meaning of the
claims, giving claim terms the broadest reasonable interpretation consistent
with the Specification as they would be interpreted by one of ordinary skill
in the art. See, e.g., In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)
(citing In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010)). In
doing so, we tum first to the claims themselves. See, e.g., Rapoport v.
Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001).
As to the meaning of "curved sections along their length ... hav[ing]
a radius of curvature" (claim 1 ), we note that the phrase "radius of
curvature" is recited as a property of the "curved sections" along the length
of the channel rather than simply as a property of the channels. As
highlighted by Appellants (App. Br. 3), this is consistent with the
Specification (App. Br. 2--4, citing Spec. ,-i,-i 18, 20, 22; Spec. Figs. 1-2).
Further, as also highlighted by Appellants (App. Br. 3), claim 4 depending
from claim 1 recites that "the undulating channels have generally triangular
cross-sections" and this is inconsistent with channels having cross-sections
that define a curve having a radius of curvature (claims 1, 4). It follows that
we conclude the broadest reasonable interpretation of the phrase "curved
sections along their length ... hav[ing] a radius of curvature" requires
curves length-wise rather than in cross-section and that the radius of
curvature is that of the curves over the length of the undulating channels, not
those of the channels viewed in cross-section.
The Examiner contends that the Specification provides no explicit
definition to the phrase "radius of curvature." Ans. 2, 6. The Examiner then
adopts a broad construction both in terms of what geometric structure can be
said to have a radius of curvature and of how the structure can be oriented.
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Appeal2014-007943
Application 13/316,011
The Examiner turns to a definition of radius of curvature from the Oxford
Dictionary5-"[t]he radius of a circle that touches a curve at a given point
and has the same tangent and curvature at that point"-to support the
position that the substantially triangular waveform structure depicted in
Figure 4 ofKusuda anticipates claims 1, 3, and 4. Ans. 3-5, 9, 12-14. The
Examiner also turns to McCague, 6 particularly Figure 5 and paragraphs 31 to
33, to support the position that the radius of curvature can also be interpreted
as the radius of a curved trough when viewed in cross section rather than the
curves along the length of channels. Ans. 6.
The Examiner's reliance on the Oxford Dictionary definition of radius
of curvature is wholly misplaced as applied to any structure other than a
curve. Critically, the circle used to define the radius of curvature "has the
same . .. curvature at [the] point" the circle touches the curve. It follows,
necessarily, that the curved structure is in fact curved at the point used to
define the radius of curvature.
The Examiner's reliance on McCague to support the position that
radius of curvature in the feed spacer art is that of a channel in cross-section
is also misplaced. It is uncontroverted that a curve can be defined by its
radius of curvature as a matter of geometry. The fact that McCague then
describes the curve of its channel in cross-section as having a radius of
curvature is, therefore, no basis for interpreting the radius of curvature set
forth in claim 1 to be that of a channel in cross-section.
The Examiner's errors in interpreting the claims are dispositive.
5 http://www. oxforddictionaries. com/definition/ American_ english/radius-of-
curvature (cited Ans. 8)
6 McCague et al. (US 2006/0219635 Al, published October 5, 2006).
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Appeal2014-007943
Application 13/316,011
Anticipation Rejection
The Examiner finds claims 1, 3, and 4 are anticipated by Kusuda.
Ans. 2-5 (citing Kusuda Fig. 4). The Examiner relies on the undulating feed
spacer 11 to calculate the radius of curvature of the triangle area formed by
the feed spacer channel, but the calculation is grounded on the Examiner's
misapprehension of the definition of radius of curvature and its application
to the non-curved, planar surfaces of a triangle. Ans. 5.
On this record, therefore, we cannot sustain the Examiner's
anticipation rejection. A reference is only anticipatory when it discloses,
whether explicitly or inherently, each and every element of the claimed
invention arranged or combined in the same way as the claim. See, e.g., In
re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
Indefiniteness Rejection
As to the "equivalent diameter," the Examiner de facto interprets the
term in concluding that it renders claim 5 indefinite. Ans. 2, 10-11.
Reasoning that the "equivalent diameter" is simply double the radius of
curvature of a cylindrical pipe viewed in cross-section, the Examiner
contends this necessarily leads to the untenable result that claim 1, requiring
a radius of curvature of at least 1 mm, requires an equivalent diameter of 2
mm, which is greater than that allowed in claim 5, requiring an equivalent
diameter of between 0.2 mm and 1.2 mm. Ans. 10.
The Examiner erred. First, as explained above, the radius of curvature
set forth in claim 1 is that of curves over the length of the undulating
channels, not those of the channels viewed in cross-section, and, thus, there
is no conflict between the recited values in claims 1 and 5. Second, as also
highlighted by Appellants, the equivalent diameter is a measure of cross-
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Appeal2014-007943
Application 13/316,011
sectional area of a channel (App. Br. 4, citing Spec. 22) such that, even ifthe
radius of curvature in claim 1 did relate to the channel viewed in cross-
section, it would not follow that the radius of curvature would be half of the
equivalent diameter except where the channel is, in fact, a cylindrical pipe.
On this record, therefore, we cannot sustain the Examiner's
indefiniteness rejection.
CONCLUSION
The Examiner's rejections of claims 1, 3, 4, and 5 are REVERSED.
REVERSED
6