Ex Parte Pascall et al

Patent Trials and Appeals Board

Jun 15, 2018

13744270 - (D) (P.T.A.B. Jun. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/744,270 01/17/2013 Andrew J. Pascall
24981 7590 06/19/2018
Lawrence Livermore National Security, LLC
LA WREN CE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
UNITED ST A TES OF AMERICA
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.
IL-12542 5080
EXAMINER
GRABER, KARAM
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
06/19/2018 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):
llnl-docket@llnl.gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte ANDREW J. PASCALL, GEORGE R. F ARQUAR,
CHRISTOPHER M. SPADACCINI, and SARAH C. CHINN 1
(Applicant: LAWRENCE LIVERMORE NATIONAL SECURITY, LLC)
Appeal2016--007113
Application 13/744,270
Technology Center 1700
Before BEYERL YA. FRANKLIN, MARK NAGUMO, and
SHELDON M. McGEE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real parties in interest as Lawrence Livermore
National Security, LLC and the United States of America as represented by
the United States Department of Energy.
Appeal 2016-007113
Application 13/744,270
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
STATEMENT OF THE CASE
Claim 10 is illustrative of Appellants' subject matter on appeal and is
set forth below (text in bold for emphasis):
Claim 10. An apparatus for separating components of a first fluid,
components of a second fluid, and components of a third fluid wherein the
first fluid, the second fluid, and the third fluid each contain at least a first
component and a second component, consisting of:
a first device;
a second device;
a third device, wherein said first device, said second device, and said
third device are parallel;
a first device inlet in said first device for flowing the first fluid
containing the first component and the second component into said first
device;
a second device inlet in said second device for flowing the second
fluid containing the first component and the second component into said
second device;
a third device inlet in said third device for flowing the third fluid
containing the first component and the second component into said third
device;
a first device first outlet in said first device;
a second device first outlet in said second device; a third device first
outlet in said third device;
a first component combining unit;
a first device second outlet in said first device;
a second device second outlet in said second device; a third device
second outlet in said third device;
a second component combining unit;
a first material that has a gradient in properties in said first device,
a second material that has a gradient in properties in said second
device, and
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Application 13/744,270
a third material that has a gradient in properties in said third device,
wherein said first fluid has a direction of flow between said first
device inlet and said first device first and second outlets with said gradient in
properties of said first material being perpendicular to said direction of flow,
said first material having a first portion with an affinity for the first
component of the first fluid and a second portion with an affinity for the
second component of the first fluid,
wherein said second fluid has a direction of flow between said second
device inlet and said second device first and second outlets with said
gradient in properties of said second material being perpendicular to said
direction of flow, said second material having a first portion with an affinity
for the first component of the second fluid and a second portion with an
affinity for the second component of the second fluid, and
wherein said third fluid has a direction of flow between said third
device inlet and said third device first and second outlets with said gradient
in properties of said third material being perpendicular to said direction of
flow, said third material having a first portion with an affinity for the first
component of the third fluid and a second portion with an affinity for the
second component of the third fluid;
wherein the first fluid containing the first component and the second
component flow through said first material,
wherein the second fluid containing the first component and the
second component flow through said second material,
wherein the third fluid containing the first component and the second
component flow through said third material,
wherein said first device first outlet, said second device first outlet,
and said third device first outlet are connected to said first component
combining unit; and
wherein said first device second outlet, said second device second
outlet, and said third device second outlet are connected to said second
component combining unit.
The Examiner relies on the following prior art references as evidence
of unpatentability:
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Appeal 2016-007113
Application 13/744,270
Kerhuel
Theoleyre
US 2005/0224402 Al
US 2009/0209736 Al
THE REJECTIONS
Oct. 13, 2005
Aug.20,2009
1. Claims 10 and 24 are rejected under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite.
2. Claims 10 and 24 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Theoleyre in view of Kerhuel.
ANALYSIS
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports Appellants' position in the record. Accordingly, we reverse each of
the Examiner's rejections on appeal essentially for the reasons set forth in
the record by Appellants, with the following emphasis.
Rejection 1
It is the Examiner's position that the limitation, "consisting of' recited
in claims 10 and 24 is indefinite. Final Act. 2. Ans. 3. The Examiner
determines that it is not clear how the claimed apparatus would be functional
without the presence of valves for the intended use of separating
components. The Examiner finds that the Specification discloses valves or
flow meters to achieve the desired flow. Spec. [0041]; [0052]. Id.
We agree with Appellants that, contrary to the Examiner's position,
paragraphs [0041] and [0052] of Appellants' Specification do not indicate
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Application 13/744,270
usage of valves or flow meters for the reasons stated by Appellants on pages
6-8 of the Appeal Brief and on pages 2--4 of the Reply Brief. We thus agree
that the Examiner's position is unsupported. Thus, the claimed apparatus is
functional according to the description provided in Appellants' Specification
without the use of valves or flow meters.
In view of the above, we reverse Rejection 1.
Rejection 2
Claim interpretation is dispositive regarding Rejection 2. As stated by
Appellants on page 9 of the Appeal Brief, the term "consisting of' as recited
in the preamble of the present claims is a "closed" term that excludes any
element, step, or ingredient not specified in the claim. Georgia-Pacific Corp.
v. United States Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999); In
re Gray, 53 F.2d 520 (CCPA 1931); Exparte Davis, 80 USPQ 448,450
(Bd. App. 1948).
With regard to the Examiner's position, we refer to pages 3-13 of the
Answer, which we do not repeat herein.
Appellants argue that the combination of Theoleyre and Kerhuel as
proposed by the Examiner require elements in addition to the specific
combination of elements of Appellants' claims 10 and 24. Appeal Br. 10-16.
For example, Appellants argue that Theoleyre requires "valves" which are
excluded by the present claims. Appeal Br. 10-11. Appellants also argue
that Theoleyre requires a "column" and "partially saturated column 2".
Appeal Br. 11-12. In response, the Examiner states that the Examiner relies
upon Figure 14 of Theoleyre when making his findings. Ans. 14.
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Application 13/744,270
In reply, Appellants state that the teachings regarding Theoleyre's
Figure 14 do not change the fact that Theoleyre' s system requires added
elements excluded by the present claims ( e.g., "valves" or "column"). Reply
Br. 6. Appellants explain that Figure 14 shows "different sequences of a
process according to the invention [ of Theoleyre] implemented with 5
fluids", but it is not relevant to the issue relating to extra elements in the
Theoleyre' s system excluded by the instant claims. Reply Br. 5-7. We
agree as these components of Theoleyre discussed by Appellants in the
record are necessary components of Theoleyre's system, to be contrasted
with the passive system claimed by Appellants. Theoleyre, ,r,r [00162],
[0163], [0198], [0200], and [0213]. Appeal Br. 10-12.
In view of the above, we reverse Rejection 2.
DECISION
Each rejection is reversed.
ORDER
REVERSED
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