Ex parte Pozniak et al.

Board of Patent Appeals and Interferences

Mar 11, 1998

08068575 (B.P.A.I. Mar. 11, 1998)

Application for patent filed May 26, 1993. According to appellant this1
application is a continuation of Application no. 07/837,234 filed February 14,
1992, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PETER M. POZNIAK, BENJAMIN R. ROBERTS,
and RONALD W. MICHELSON, CURTIS L. LINDSKOG and
A. LAIRD LOBBAN
__________
Appeal No. 95-0730
Application 08/068,5751
__________
ON BRIEF
__________
Before CALVERT, Administrative Patent Judge and
McCANDLISH, Senior Administrative Patent Judge and
COHEN, Administrative Patent Judge.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 7, 9 through 12, 16, 17, 19 through
Appeal No. 95-0730
Application 08/068,575
An amendment (paper No. 19) filed after the final rejection and2
involving claims 1, 2, 11, 16, 19, 22, 47 through 49, 51 and 53 has been
entered by the examiner.
2
24, 47 through 49, 51 and 53. No other claims are pending in the2
application.
Appellants’ invention relates to a hazardous material
treatment plant for processing hazardous material from a site.
According to claims 1 and 19, which are the only independent
claims on appeal, the treatment plant comprises a transportable
enclosure (150), a hazardous treatment facility (250) located in
the enclosure, a connection means (e.g., 252a) coupled to the
treatment facility and a connection port (100) located at the
site and coupled to the connection means. The connection port is
recited to comprise a means (e.g., 20, 21) for extracting the
hazardous material from ground soil and/or ground water at the
site for processing in the treatment facility, and the extracting
means, in turn, is recited to comprise one or more transport
lines extending into the ground at the site. Both of the
independent claims on appeal recite that the treatment facility
may be one of a plurality of different types of treatment
facilities and that one of the types of treatment facilities is
“optimized for treating a different concentration range of said
hazardous material than another of said types of hazardous
Appeal No. 95-0730
Application 08/068,575
3
material treatment facilities . . .”
A copy of the appealed claims is appended to appellants’
brief.
The following references are relied upon by the examiner as
evidence of obviousness in support of his rejections under 35
U.S.C. § 103:
Valiga et al. (Valiga) 4,352,601 Oct. 05, 1982
Muller et al. (Muller) 4,383,920 May 17, 1983
Katz 4,838,733 Jun. 13, 1989
Heintzelman et al. (Heintzelman) 5,030,033 Jul. 09, 1991
Silinski et al. (Silinski) 5,102,503 Apr. 07, 1992
(Filed Aug. 04, 1989)
Appealed claims 1 through 3, 9 through 12, 16, 17, 19
through 24, 47, 49, 51 and 53 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Silinski in view of Muller and
Katz, and appealed claims 4 through 7 and 48 stand rejected under
35 U.S.C. § 103 as being unpatentable over Silinski in view of
Muller, Katz, Valiga and Heintzelman. Appealed claims 1 through
7, 9 through 12, 16, 17, 19 through 24, 47 through 49, 51 and 53
additionally stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which appellants
regard as their invention.
With regard to the rejection of the appealed claims under
the second paragraph of § 112, the examiner’s difficulty with the
Appeal No. 95-0730
Application 08/068,575
4
claim language centers on the word “optimized” in the independent
claims. According to the examiner, “it is unclear structurally
how the hazardous treatment means [sic, facility?] is optimized
for treating a different concentration range” (answer, page 4).
With regard to the § 103 rejection of independent claims 1
and 19, the examiner has taken the following position:
Muller et al recognize the use of specifically designed
liquid conduits and valves (ie., a manifold type
system) which permit the treatment tanks to be operated
in series, in parallel, or in series/parallel (See col.
1, lines 54+). Also, the use of a connection port
comprising one or more transport/extraction lines
located at a site to transport/extract fluids was known
in the art, at the time the invention was made, as
evidenced by Katz (see Fig. 1).
It would have been obvious to one of ordinary
skill in the art to utilize the connection means or
manifold system as taught by Muller et al in the
Silinski et al hazardous material processing apparatus
in order to enable coupling of various types of
hazardous material treatment tanks in a series mode,
parallel mode, or in a series/parallel mode. Also, it
would have been obvious to one of ordinary skill in the
art to couple the connection port as taught by Katz to
the Silinski et al hazardous material processing
apparatus in order to cover and allow for the treatment
of a large surface area.
Reference is made to the examiner’s answer for further
details of his rejections.
We have carefully considered the issues raised in this
appeal together with the examiner’s remarks and appellants’
arguments. As a result, we conclude that the rejections of the
Appeal No. 95-0730
Application 08/068,575
5
appealed claims cannot be sustained.
Considering first the rejection under the second paragraph
of § 112, it is established patent law that the claims must
define the metes and bounds of the invention with a reasonable
degree of precision. In re Venezia, 530 F.2d 956, 958, 189 USPQ
149, 151 (CCPA 1976). In the final analysis, the question as to
whether or not language in a claim complies with § 112 ¶ 2
requires a determination of whether those skilled in the art
would understand what is claimed when the claim is read in light
of the specification. Seattle Box Co. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984).
When the recitation that at least one of the treatment
facilities is “optimized” for treating a different concentration
range is read in light of appellants’ specification in the
present case, we are satisfied that one of ordinary skill in the
art would have understood that claim language to mean that at
least one of the treatment facilities is more efficient for
processing a particular concentration of a hazardous material
than one of the other types of treatment facilities. Furthermore,
it is not necessary for the claims to recite the particular
structure which optimizes the treatment for a given concentration
Appeal No. 95-0730
Application 08/068,575
6
range of a hazardous material as the examiner seems to suggest in
his remarks quoted supra. Instead, there is nothing intrinsically
wrong with the use of functional language to define what the
treatment facility does. See In re Swinehart, 439 F.2d 210, 212,
169 USPQ 226, 228 (CCPA 1971). Accordingly, we must reverse the
rejection of the appealed claims under the second paragraph of
§ 112.
With regard to the § 103 rejections of the appealed claims,
the Silinski patent does disclose a transportable facility for
treating what may be regarded as a hazardous material. Silinski’s
treatment facility, however, is specifically designed to recover
cleaning solvents from the waste of a painting process where the
waste is stored in drums, tanks or other containers at the
processing site. As such, Silinski’s treatment facility is not
equipped or even intended to extract and process a hazardous
material which is present in the ground.
The Muller patent also does not disclose a treatment plant
which is equipped to extract and process hazardous material
present in the ground. Instead, this reference merely discloses a
transportable plant for purifying a liquid such as water.
Appeal No. 95-0730
Application 08/068,575
7
Unlike the treatment facilities disclosed in the Silinski
and Muller patents, the system disclosed in the Katz patent is
not a treatment facility for processing any type of material, let
alone a hazardous material. Instead, this reference discloses a
system having a vacuum pump connected to tubular conduits
inserted into a landfill to evacuate gas from the landfill to
make the landfill more compact. Thus, contrary to the examiner’s
position, we find no teaching in this patent or any of the other
cited references of connecting Katz’ ground-penetrating gas
extraction tubes to Silinski’s recovery facility.
In applying the references as he did, the examiner seems to
have lost sight of the fact that, as framed, his rejection
requires the modification of a particular treatment facility,
namely Silinski’s solvent recovery facility, not just any
treatment facility. Since the solvents to be recovered with
Silinski’s facility are not located in the ground, there is no
reason that would have motivated one of ordinary skill in the art
to connect Silinski’s facility to transport lines or tubes
extending into the ground. Furthermore, the Heintzelman and
Valiga patents do not rectify the deficiencies of the references
Appeal No. 95-0730
Application 08/068,575
8
applied in the rejection of claims 1 and 19.
Accordingly, we cannot agree that the combined teachings of
the applied references suggest the subject matter recited in
independent claims 1 and 19 and, hence, the subject matter
embraced by the appealed dependent claims, to warrant a
conclusion of obviousness under the test set forth in In re
Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). We therefore must
reverse the § 103 rejections of claims 1 through 7, 9 through 12,
16, 17, 19 through 24, 47 through 49, 51 and 53.
The examiner’s decision rejecting the appealed claims is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
HARRISON E. McCANDLISH ) APPEALS AND
Senior Administrative Patent Judge ) INTERFERENCES
)
)
)
Appeal No. 95-0730
Application 08/068,575
9
IRWIN CHARLES COHEN )
Administrative Patent Judge )
Blakely, Sokoloff, Taylor & Zafman
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