Ex Parte Theron et al

Patent Trial and Appeal Board

Aug 31, 2016

12991802 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/991,802 11/09/2010 Douglas Arnoldus Theron
6123 7590 09/02/2016
JAMES EARL LOWE, JR
5465 S. Nicole Ct.
NEW BERLIN, WI 53151
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.
16414 1793
EXAMINER
ANDERSON, DENISE R
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
JELowe@me.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS ARNOLDUS THERON,
ANTHONY JOHN MCMONAGLE, MARK ALBERT MCNULTY, and
SCOTT ALEXANDER BARRIE
Appeal2014-007613
Application 12/991,802
Technology Center 1700
Before CHUNG K. PAK, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON REHEARING
Appellants request rehearing under 37 C.F.R. § 41.52 of a DECISION
ON APPEAL mailed June 14, 2016 ("Decision"), wherein we affirmed the
Examiner's § 103 rejections of all appealed claims. Request for Rehearing
dated July 5, 2016 ("Request").
We have thoroughly reviewed the arguments set forth by Appellants
in the Request, and we have reconsidered our Decision, in light of those
comments. We, however, are not persuaded of reversible error in the
disposition of the rejections and decline to modify the Decision.
Appeal2014-007613
Application 12/991,802
Appellants argue that regarding claim 23 the combination of "Eis berg
in view of Schott does not create a prima facie case of obviousness" because
Schott does not teach or suggest a vessel having a "permeate inlet from
another vessel into a permeate chamber in this vessel, and an outlet port
from the permeate chamber." Request 1.
This argument is not well-taken because it is essentially the same
argument Appellants made previously in the Appeal Brief (see App. Br. 3, 7,
9, 11, 12), which was considered in the course of rendering the Decision.
Appellants' reiteration/recasting of the argument is improper in a request for
rehearing, for it does not indicate what we misapprehended or overlooked in
rendering the Decision. 37 C.F.R. § 41.52(a)(l).
Moreover, for the reasons previously discussed in our Decision (Dec.
4--7), we continue to agree with the Examiner that the combination of
Eis berg and Schott would have suggested all of the limitations of claim 23.
In particular, we note that Schott discloses the (1) "a permeate chamber
adapted to receive permeate produced by the filtration element of the vessel
and the filtration element of at least one other vessel" and (2) "an outlet port
for directing permeate received in the chamber from the vessel" limitations
of the claim. See Schott, Fig. 7, permeate collection annulus 780, 781,
permeate stream outlet 730, 731; col. 15, 11. 49-61, col. 16, 11. 11-24, col.
17, 11. 36-46. Appellants' Request fails to reveal any factual findings
regarding the prior art's teachings and the claimed invention which we have
misconstrued or overlooked in this regard.
Appellants' argument that we erred in our Decision by "disregarding
evidence of teaching away" (Request 3) is unpersuasive because it, too, is
based essentially on the same argument Appellants made previously at pages
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Appeal2014-007613
Application 12/991,802
11 and 12 of the Appeal Brief. 37 C.F.R. § 41.52(a)(l). Contrary to what
Appellants argue, in the course of rendering our Decision, we did carefully
consider Appellants' teaching away argument and all of the evidence
Appellants identified and directed us to as support for this argument in the
Appeal Brief.
For the reasons previously discussed in our Decision (Dec. 6, 7),
however, we maintain the determination that Appellants have failed to
identify sufficient evidence to establish that the cited prior art teaches away
from Appellants' claimed invention. In particular, we note that Appellants
have failed to identify or direct us to any teaching in Eisberg or Schott which
discourages one of ordinary skill in the art from including a permeate
chamber and permeate outlet ports in the filtration vessels of Eisberg's
filtration system. In re Fulton, 391 F.3d 1195, 1201 (finding that there is no
teaching away where the prior art's disclosure "does not criticize, discredit,
or otherwise discourage the solution claimed"). Moreover, Appellants'
Request fails to reveal any findings, evidence, or arguments in the Appeal
brief which we have misapprehended or overlooked in this regard.
Accordingly, we have considered the request, but decline to modify
our Decision affirming the Examiner's§ 103 rejections of the appealed
claims. Hence, we deny Appellants' Request for Rehearing.
DENIED
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