Ex Parte Matsuoka et al

Patent Trial and Appeal Board

Feb 17, 2017

13862145 (P.T.A.B. Feb. 17, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/862,145 04/12/2013 Akira Matsuoka 007600-49 4323
78198 7590 02/22/2017
StiiHehaker & Rraokett PP EXAMINER
8255 Greensboro Drive PEO, JONATHAN M
Suite 300
Tysons, VA 22102 ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
02/22/2017 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):
info@ sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKIRA MATSUOKA and KOJINOISHIKI
Appeal 2015-008030
Application 13/862,145
Technology Center 1700
Before TERRY J. OWENS, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
November 6, 2014 decision finally rejecting claims 1—4 (“Final Act.”). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Kabushiki Kaisha Kobe
Seiko Sho (Kobe Steel, Ltd.) (Appeal Br. 2).
Appeal 2015-008030
Application 13/862,145
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a separation method for separating
a specific component from an object fluid and device for carrying out the
claimed method (Spec. 1). Details of the claimed method are set forth in
independent claim 1, which is reproduced below from the Claims Appendix
of the Appeal Brief (emphasis added):
1. A separation method for separating a specific component
from the object fluid by dissolving the specific component in
a solvent from the object fluid containing the specific
component, comprising the steps of:
dissolving the specific component in the solvent from the
object fluid within microchannels by feeding the object fluid
and the solvent in a state of a slag flow or a two-layer flow
to the microchannels;
introducing the fluid discharged from the microchannels
into settlers and separating the fluid into a fluid comprising
the solvent in which the specific component is dissolved and
a remaining fluid by a specific gravity difference within the
settlers;
leading a light fluid which is one fluid with a smaller
specific gravity among the fluid in which the specific
component is dissolved and the remaining fluid out of the
settlers through upper side leading paths connected to the
settlers and leading a heavy fluid which is one fluid with a
larger specific gravity among the fluid in which the specific
component is dissolved and the remaining fluid out of the
settlers through lower side leading paths connected to the
settlers at a position lower than connection parts of the upper
side leading paths to the settlers;
detecting a height position of an interface between the
light fluid and the heavy fluid within the settler; and
controlling at least one flow rate of a flow rate of the
light fluid led out of the settlers to the upper side leading
paths and a flow rate of the heavy fluid led out of the settlers
to the lower side leading paths, based on the detected height
position, such that the height position of the interface
2
Appeal 2015-008030
Application 13/862,145
between the light fluid and the heavy fluid within the settlers
is maintained between a height position of the connection
parts of the upper side leading paths to the settlers and a
height position of connection parts of the lower side leading
paths to the settlers.
DISCUSSION
Claims 1—4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhou2 in view of Guilmette.3 Appellants do not offer
separate arguments in support of any claim, and instead rely on their
arguments in support of claim 1 only (Appeal Br. 6). Accordingly, our
discussion will focus on the rejection of claim 1 over Zhou in view of
Guilmette.
The Examiner finds that Zhou and Guilmette collectively disclose
each of the claimed steps, and that a person of skill in the art would have
been motivated to combine the teachings to arrive at the claimed method
(Final Act. 3—7). Appellants do not dispute that it would have been obvious
to combine the references in the manner set forth in the rejection (see,
Appeal Br. 4—5).
Instead, Appellants argue that Zhou and Guilmette fail to disclose or
otherwise render obvious the claim recitation “such that the height position
of the interface between the light fluid and the heavy fluid within the settlers
is maintained ...” (Appeal Br. 4). Appellants contend that Guilmette
(which the Examiner relies on as disclosing this step (Final Act. 6))
explicitly teaches that the height position of the interface between the light
2 Zhou et al., US 2008/0226541 Al, published September 18, 2008.
3 Guilmette, US 6,368,498 Bl, issued April 9, 2002.
3
Appeal 2015-008030
Application 13/862,145
and heavy fluids is changeable and, therefore, does not meet the recitation in
the claim (Appeal Br. 4—5, citing Guilmette, FIGS. 1 and 3, 5:9—13, 34^40,
6:62—7:1)). Appellants argue that Guilmette’s disclosure that the float 26
may be raised or lowered to prevent either the water phase or oil phase from
exiting the separation chamber 14 means that the Guilmette cannot teach the
claimed recitation outlined above {id.).
Appellants’ argument is not persuasive. First, as noted by the
Examiner (Ans. 11—12), the claim language at issue does not require that the
interface height be maintained so that it does not change at all, but instead
recites that the interface height is maintained “between a height position of
the connection parts of the upper side leading paths to the settlers and a
height position of connection parts of the lower side leading paths to the
settlers.” Appellants’ proposed claim construction — requiring that the
interface height be maintained so that does not change at all — would be
narrower than the explicit claim language. Nor have Appellants pointed to
anything in the Specification which would mandate such a narrow
interpretation.
In view of the PTO’s practice that it “must give claims their broadest
reasonable construction consistent with the specification . . .” and the
requirement that “we look to the specification to see if it provides a
definition for claim terms, but otherwise apply a broad interpretation” In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(emphasis added), we conclude that the claim language at issue does not
require that the height interface be maintained so that it does not change at
all. Instead, that claim language requires that the interface height is
maintained “between a height position of the connection parts of the upper
4
Appeal 2015-008030
Application 13/862,145
side leading paths to the settlers and a height position of connection parts of
the lower side leading paths to the settlers.”
The Examiner has found that the embodiment of FIG. 1 of Guilmette
discloses this limitation (Final Act. 6, Ans. 11—12). Appellants do not
directly contest this finding (see, Appeal Br. 4—5, Reply Br. 2-4). Instead,
Appellants argue that a different embodiment, shown in Guilmette’s FIG. 3,
suggests that the embodiment of FIG. 1 does not meet this limitation (Reply
Br. 3—4). In particular, Appellants contend that because Guilmette’s float 26
can only float down to a certain level, it does not meet the limitation (id.).
However, Appellants have not explained how the Guilmette’s arrangement
does not meet the claimed requirement that the height of the interface be
maintained between the connection parts of the upper side and lower side
(e.g., Guilmette’s valves 46 and 56 in FIG. 1), which are located at the very
top and bottom of Guilmette’s settler 10.
Accordingly, we determine that, based on the preponderance of the
evidence, Appellants have not shown reversible error in the Examiner’s
findings, nor have Appellants demonstrated reversible error in the
obviousness rejection.
To the extent that Appellants argue that neither Guilmette nor Zhou
discloses “detecting a height position of an interface between the light fluid
and the heavy fluid within the settler” (Reply Br. 2—4), we are unable to
discern where that argument was raised in the Appeal Brief. Though
discussed in the Reply Brief, Appellants have not proffered any reason,
much less good cause, that this argument was not set forth in the Appeal
Brief. Accordingly, we have not considered that argument in this appeal,
5
Appeal 2015-008030
Application 13/862,145
though Appellants may raise it with the Examiner should prosecution
continue. 37 C.F.R. § 41.41(b)(2).
CONCLUSION
We AFFIRM the rejection of claims 1—4 under 35 U.S.C. § 103(a) as
being unpatentable over Zhou in view of Guilmette.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
6