Ex Parte Walker

Board of Patent Appeals and Interferences

May 16, 2012

11060136 (B.P.A.I. May. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/060,136 02/17/2005 Paul N. Walker PST-12102/36 3352
25006 7590 05/16/2012
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
CHORBAJI, MONZER R
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
05/16/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL N. WALKER
____________

Appeal 2011-008649
Application 11/060,136
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-3, 5-9, 11-15, 17-22, and 27-30. An oral hearing was
conducted on May 8, 2012. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2011-008649
Application 11/060,136

2
Representative claim 1 reads as follows1:
1. An apparatus for treating objects with a treatment gas, the
apparatus comprising:
a treatment chamber, enclosing the treatment gas;
a chamber input through which the objects enter the treatment
chamber,
the chamber input including an input passage,
the input passage having an input medium disposed therein through
which the objects pass when the objects enter the treatment chamber,
the input medium substantially reducing ingress of external gases into
the treatment chamber as the objects enter the treatment chamber,
the input passage including a non-hydrostatic device, the objects being
submerged in the input medium as the objects pass through the non-
hydrostatic device; and
a chamber output through which the objects leave the treatment
chamber,
the chamber output including an output passage,
the output passage having an output medium disposed therein through
which the objects pass when the objects leave the treatment chamber,
the output medium substantially reducing ingress of external gases
into the treatment chamber as the objects leave the chamber,
wherein the input medium and the output medium are both liquids.

The Examiner maintains, and Appellant appeals, the following
rejections under 35 U.S.C. § 103(a):
Claims 1-3, 5-9, 11-5, 17, 19-22, 27, and 28 as being unpatentable
over the combined prior art of Allan2, and Goldhahn3;
Claim 18 as being unpatentable over the combined prior art of Allan,
Goldhahn, and Davidson4; and

1 Independent claim 20 is to a similar corresponding apparatus. Claims 1
and 20 have not been separately treated by the Examiner; the same rationale
has been applied to both claims (see generally Ans.).
2 US 2,556,385 issued June 12, 1951.
3 US 4,604,948 issued August 12, 1986.
Appeal 2011-008649
Application 11/060,136

3
Claims 29 and 30 as being unpatentable over the combined prior art of
Allan, Goldhahn, and Frenkel5.
OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 421(citing Graham v. John Deere
Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the
prior art the teachings of the invention in issue”)).
After review of the respective positions provided by Appellant and the
Examiner, we agree with Appellant that the Examiner has not met the
burden in this case for substantially the reasons set forth by Appellant in
their Briefs (e.g., App. Br. 5 (explaining that none of the applied art
discusses passing objects submerged in an input liquid medium as they pass
through a non-hydrostatic device (e.g., a valve) such that the rejection is
based on “using impermissible hindsight”); see also Reply Br. 2, 4). We add
the following for emphasis.

4 US 3,722,401 issued March 27, 1973.
5 US 6,311,611 B1 issued November 6, 2001.
Appeal 2011-008649
Application 11/060,136

4
The Examiner’s rejection in the Answer relies upon an assumption
that the “apparatus of Allan is capable of raising the water levels in both its
input and out columns so that water is present, for example in the hopper
50.” (Ans. 13). The Examiner then postulates that based on this capability,
the valve of Goldhahn could be placed in this location of Allan and be
submerged (Ans. 13, 14). Appellant contends however that there is no
teaching of how this modification might be achieved, and notably, overflow
outlets 21 and 22 of Allan would prevent the water level from rising as
postulated by the Examiner (Reply Br. 2). Appellant contends that without
the present invention as a guide, one of ordinary skill would not find any
reason to include the valve of Goldhahn into Allan and to then submerge the
valve in a liquid medium to prevent ingress of gases through the valve when
opened to allow objects to be introduced into the treatment chamber (e.g.,
Appeal Br. 5; Reply Br. 4).
A preponderance of the evidence supports Appellants’ assertions that
the Examiner’s rejection is based on improper hindsight. The Examiner’s
rejection and response to argument presented in the Answer does not
adequately address the concerns raised by the Appellant outlined above
(Ans. generally). For the foregoing reasons, and those presented by
Appellant in the Briefs, the Examiner has not satisfied the initial burden of
presenting a prima facie case of obviousness, and we conclude that the
Examiner’s rejection is improperly based upon improper hindsight
reasoning. KSR, 550 U.S. at 42.
None of the other references applied in the rejections have been relied
upon by the Examiner to cure the deficiencies noted above.
Appeal 2011-008649
Application 11/060,136

5
For these reasons and those set out in the Briefs, we reverse the
Examiner’s § 103 rejections on appeal.
CONCLUSION
In summary, the rejections before us on appeal are reversed.

REVERSED

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