Ex Parte Rodger et al

Patent Trial and Appeal Board

Dec 29, 2014

12369043 (P.T.A.B. Dec. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GEORGE JOEL RODGER and DENMAN L. CLOUDT JR.
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Appeal 2012-012181
Application 12/369,043
Technology Center 3600
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Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
NEIL T. POWELL, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-012181
Application 12/369,043

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STATEMENT OF THE CASE1,2
George Joel Rodger and Denman L. Cloudt Jr. (Appellants) seeks our
review under 35 U.S.C. § 134 of the Examiner’s decision to reject under
35 U.S.C. § 102(b) claims 1, 2, and 18 as anticipated by Weingarten (US
5,570,744; iss. Nov. 5, 1996); and to reject under 35 U.S.C. § 103(a): (1)
claims 10–14 and 19 as unpatentable over Weingarten; (2) claims 3–8, 15,
16, and 20–32 as unpatentable over Weingarten and Karigan (US 6,328,118
B1; iss. Dec. 11, 2001); and (3) claim 17 as unpatentable over Weingarten,
Karigan, and McCaslin (US 6,296,060 B1; iss. Oct. 2, 2001). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 The Examiner rejects claim 6 under 35 U.S.C. § 112, second paragraph, for
indefiniteness. See Final Act. 2 (mailed December 6, 2011). Specifically,
claim 6 is rejected for lack of antecedent basis for the limitation “the second
diameter.” See id. In the Response to Final Action, Appellants submit an
amendment to claim 6 amending claim 6 to depend from claim 5 rather than
claim 3, which renders the indefiniteness rejection moot. See Response to
Final Act. 3, 7 (filed February 3, 2012). In the Advisory Action, the
Examiner does not indicate whether the proposed amendment has been
entered. See Advisory Act. 1 (mailed February 28, 2012). The Examiner
does not repeat or comment on the indefiniteness rejection in the Answer.
See Ans., generally. In the Claims Appendix section submitted in the
Appeal Brief, claim 6 depends from claim 5. See Appeal Br. 12, Claims
App. Accordingly, based on the foregoing reasons, we consider the
indefiniteness rejection withdrawn by the Examiner.
2 The Examiner objects to claim 9 as being dependent upon a rejected base
claim and otherwise indicated as being allowable if rewritten in independent
form including all the limitations of the base claim and any intervening
claim. See Final Act. 8.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to “methods and apparatus for
centrifugal separation.” Spec. para. 1; Fig. 1. Claims 1, 20, 24, and 32 are
independent.
Claim 1 is representative of the claimed subject matter and recites:
1. A separator, comprising:
an outer tubular having ends sealed from the
environment;
an inner tubular:
disposed within the outer tubular, having
ends in fluid communication with a bore of the
outer tubular, and attached to the outer tubular;
an inlet:
disposed through a wall of the outer tubular,
in fluid communication with a bore of the inner
tubular, and tangentially attached to the inner
tubular so that fluid flow from the inlet to the inner
tubular is centrifugally accelerated within the inner
tubular;
a gas outlet in fluid communication with the
outer tubular bore; and
a liquid outlet in fluid communication with
the outer tubular bore.

ANALYSIS
Anticipation by Weingarten
Claims 1, 2, and 18
Independent claim 1 calls for a separator including an outer tubular,
an inner tubular, and an inlet, the inlet being “disposed through a wall of the
outer tubular” and “attached to the inner tubular.” Appeal Br. 11, Claims
App. The Examiner finds that Weingarten discloses an outer tubular 40, 42,
an inner tubular 72, and an inlet 46, the inlet being disposed through a wall
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of the outer tubular and attached to the inner tubular. See Final Act. 2–3;
Ans. 4–5. The Examiner further finds that in the Examiner’s annotated
version of Figure 3 of Weingarten (see Ans. 4): (1) “element 42 and element
40 assemble to form a single tubular having outer wall (42 and 40). The
inlet (area enclosed by the circle) is clearly disposed through the sidewall of
the assembled tubular”; and (2) “the inlet (area enclosed by the circle and
including the seal at 74) is [‘attached’] to the inner tubular [72].” See Ans.
4–5.
Appellants contend that
[i]nlet port 46 [of Weingarten] is disposed in
conduit tee fitting 42  not through a wall of the
outer tubular. Even if the Examiner considered
conduit tee fitting 42 as the inlet, tee fitting 42 is
connected to the top end of the outer casing part;
tee fitting 42 is not “disposed through a wall of the
outer tubular” as required by claim 1.

Appeal Br. 4–5. Appellants further contend that

if the Examiner considers the outer tubular 40
together with the vertical portion of tee fitting 42
as forming the “wall of the outer tubular” and the
area enclosed by the circle as the inlet, then the
inlet is not also “attached to the inner tubular” as
required by claim 1, tangentially or otherwise.
. . . The Examiner errs because if he
considers the area in the circle as the inlet [i.e.,
“the area enclosed by the circle and including the
seal at 74”], that area is not attached to the inner
tubular (inner casing 72 of Weingarten). Nor
could any seal between the bottom of the tee fitting
42 attaching tee fitting 42 to outer tubular 40 be
considered part of the inlet, because the Examiner
has already defined that portion of the tee fitting
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42 and the outer tubular 40 as the “outer tubular.”
Moreover, the seal at 74 is not an attachment
between the tee fitting 42 and the inner casing 72,
but a spacer between inner casing 72 and outer
casing 40.

Reply Br. 2–3.

Appellants’ arguments are persuasive. Weingarten discloses that
[t]he separator 16 is preferably characterized by an
elongated outer, generally cylindrical casing part
40 having conventional conduit tee fittings 42 and
44 connected thereto at opposite ends. The
conduit fitting 42 provides a fluid inlet port 46 and
the fitting 44 has a fluid discharge port 48 for the
separator 16. The ports 46 and 48 are disposed,
respectively, at 90 degrees or right angles to the
longitudinal central axis 49 of the casing part 40.

Weingarten, col. 4, ll. 47–55; Fig. 3. Weingarten merely discloses that
conduit fitting 42 includes a fluid inlet port 46 and that inlet port 46 is
disposed at a right angle to longitudinal central axis 49 of casing part 40.
The Examiner’s interpretation of inlet port 46 of Weingarten being disposed
through a wall of the outer tubular 40, 42 effectively renders meaningless, or
superfluous, the term “through”3 or reads the limitation out of the claim. At
best, inlet port 46 of Weingarten is disposed on (attached to) the outer wall
side of outer tubular 42. See Weingarten, Fig. 3. The Examiner’s
interpretation is further inconsistent with the manner in which the

3 An ordinary and customary meaning of the term “through” is “1 a (1) –
used as a function word to indicate movement into at one side or point and
out at another and especially the opposite side of.” MERRIAM WEBSTER’S
COLLEGIATE DICTIONARY (11th ed. 2005).
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Specification describes that aspect of the invention.4 See Stumbo v. Eastman
Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim
constructions that render phrases in claims superfluous); In re Prater, 415
F.2d 1393, 1404 (CCPA 1969) (“claims yet unpatented are to be given the
broadest reasonable interpretation consistent with the specification”).
Weingarten further discloses that “[t]he inner casing 72 is coaxially
spaced from the casing 40 and is supported in the casing 40 by opposed
spaced apart cylindrical collars 74 at each end thereof to define a closed
annular space 76 between the collars and between the casings 40 and 72.”
Weingarten, col. 5, ll. 33–37 (emphasis added); Fig. 3; see also Reply Br. 3.
We agree with Appellants that “seal 74 [of Weingarten] is merely a spacer
between the inner [72] and outer [40] casings (tubulars)” and that “seal 74
[would not] be considered as an attachment . . . between the inner tubular
[72] and inlet [46] (area enclosed by the circle),” as proposed by the
Examiner. See Reply Br. 3; see also Ans. 5. Moreover, the Examiner fails
to establish, by evidence or technical reasoning, a sufficient factual basis to
support a determination that seal 74 of Weingarten necessarily attaches inlet
port 46 to inner tubular 72. See Ans. 4–5. Consequently, in view of the
foregoing, the Examiner fails to establish by a preponderance of the
evidence that Weingarten anticipates the separator of claim 1.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of independent claim 1 and its respective dependent

4 The Specification describes that (1) “[t]he inlet is disposed through a wall
of the outer tubular” (Spec. para. 3); and (2) “[t]he first inlet portion 5a may
extend through an opening formed through a wall of the outer tubular”
(Spec. para. 13; Fig. 1).
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claims 2 and 18 as anticipated by Weingarten.
Obviousness over Weingarten, Weingarten and Karigan, or Weingarten,
Karigan, and McCaslin
Claims 3–8, 10–17, and 19–32
Claims 3–8, 10–17, and 19 depend either directly or indirectly from
independent claim 1. See Appeal Br. 11–13, Claims App. Each of
independent claims 20, 24, and 32 calls for a method including “the
separator of claim 1.” See id. at 13–15. Claims 21–23 depend directly from
independent claim 20. See id. at 13–14. Claims 25–31 depend either
directly or indirectly from independent claim 24. See id. at 14–15. The
Examiner’s rejections of (1) claims 10–14 and 19 as unpatentable over
Weingarten; (2) claims 3–8, 15, 16, and 20–32 as unpatentable over
Weingarten and Karigan; and (3) claim 17 as unpatentable over Weingarten,
Karigan, and McCaslin (see Final Act. 3–8) are based on the same deficient
findings discussed above with respect to independent claim 1. The
Examiner’s proposed modifications to Weingarten do not remedy the
deficiencies of Weingarten discussed above. Further, Karigan and McCaslin
are not relied upon to remedy the deficiencies of Weingarten discussed
above. Accordingly, for similar reasons, we do not sustain the Examiner’s
rejections of (1) claims 10–14 and 19 as unpatentable over Weingarten; (2)
claims 3–8, 15, 16, and 20–32 as unpatentable over Weingarten and
Karigan; and (3) claim 17 as unpatentable over Weingarten, Karigan, and
McCaslin.

DECISION
We REVERSE the decision of the Examiner to reject claims 1–8 and
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10–32.

REVERSED
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