Ex Parte Tokoshima et al

Patent Trial and Appeal Board

Jun 29, 2018

14182752 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/182,752 02/18/2014
32628 7590 07/03/2018
KANESAKA BERNER AND PARTNERS LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314-2848
FIRST NAMED INVENTOR
Hirota TOKOSHIMA
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.
SHI-082 4129
EXAMINER
BALLMAN, CHRISTOPHER D
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
office@uspatentagents.com
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROTO TOKOSHIMA and KAZUYA ISHIWATA
Appeal2017-004670
Application 14/182,752
Technology Center 3700
Before LINDA E. HORNER, BRETT C. MARTIN, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-004670
Application 14/182,752
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1---6 and 17. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants' claims are directed generally "to a supply method for
liquid and a supply apparatus." Spec. i-f 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A supply method for supplying a solution containing a
solute at a predetermined concentration from a preparation
portion of the solution to a use point through a supply pipe, the
method comprising:
supplying an inert gas to a liquid chemical stored in a
reservoir and producing the solute;
mixing water and the solute at a liquid-chemical injection
point, thereby producing the solution;
supplying the solution to a retention portion disposed in a
downstream of the liquid-chemical injection point; and
absorbing a change in concentration of the solute in the
solution by the retention portion when an amount of use of the
solution at the use point changes, thereby supplying the solution
containing the solute at the predetermined concentration to the
use point,
wherein the retention portion has no gas-liquid interface,
and
the solution is retained in the retention portion at an
intermediate portion of the supply pipe.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lee
Manako
us 5,067,508
us 5,979,474
2
Nov. 26, 1991
Nov. 9, 1999
Appeal2017-004670
Application 14/182,752
Shibayama us 7,237,562
REJECTIONS
The Examiner made the following rejections:
July 3, 2007
Claims 1, 2, 4, and 6 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Shibayama. Ans. 2.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shibayama and Manako. Ans. 4.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shibayama and Lee. Ans. 5.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shibayama. Ans. 6.
ANALYSIS
Appellants point out two distinct errors in the Examiner's rejection of
the claims. First, we agree with Appellants that "[t]he pure water heating
part 59 of Shibayama does not retain the solution (as claimed)." Reply Br.
3. The Examiner merely points to the heater and then uses an overly broad
definition of "retain" to assert that because water flows in and out of the
heater that it is thus retained. Ans. 7. The Examiner's definition is more
akin to containment than retention as claimed. The Specification explains
that "the retention portion has such a capacity that retention time for which
the solution is retained in the retention portion is 0.1 to 5 minutes when a
maximum amount of the solution is used at the use point." Spec. i-f 17.
While the claims do not specify a length of retention, the Specification
makes clear that mere containment of water is not the same as retention.
The water must remain in the retention portion for some period of time that
is effective to allow for "absorbing a change in concentration of the solute in
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Appeal2017-004670
Application 14/182,752
the solution." Claim 1. Furthermore the Specification describes multiple
embodiments, whether it be a retaining tank with a considerably larger
volume than the pipes flowing in and out or a serpentine length of pipe, that
each allows the concentration absorption to occur. Spec. i-fi-139-40. The
Examiner has provided no evidence that the heater in Shibayama retains the
solution for any period of time to allow this absorption to occur or even that
due to its capacity it inherently performs this function.
Second, the claims do not merely require absorption to randomly
occur, but it must occur "when an amount of use of the solution at the use
point changes." As Appellants state, "random shifts in concentration in the
entire system due to the continuous flow of the solution in the entire system
are distinct from the change" occurring when usage changes at the use point.
Reply Br. 4. Nowhere do the cited portions of Shibayama teach that the
concentration of solute at the use point is maintained due to its retention in
the retention portion thus allowing the concentration to even out before
getting to the use point. The Examiner has failed to show at least these
elements in the claims or that the secondary references cure this defect in the
application of Shibayama to the claims. Accordingly, we do not sustain the
rejections of claims 1-6 and 17, all of which rely upon this improper
application of Shibayama.
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 1---6 and 17.
REVERSED
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