Ex Parte Whitney

Patent Trial and Appeal Board

Mar 27, 2013

11245648 (P.T.A.B. Mar. 27, 2013)

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.
11/245,648 10/07/2005 John P. Whitney 2044920-5022US 6828
23345 7590 03/27/2013
MCGUIREWOODS, LLP
1750 TYSONS BLVD
SUITE 1800
MCLEAN, VA 22102
EXAMINER
KUMAR, KALYANAVENKA K
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
03/27/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN P. WHITNEY
____________

Appeal 2011-001340
Application 11/245,648
Technology Center 3600
____________

Before JOHN C. KERINS, NEIL T. POWELL, and BEVERLY M.
BUNTING, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001340
Application 11/245,648

2
STATEMENT OF THE CASE
John P. Whitney (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Examiner’s final rejection of claims 1-10 and 12, the only
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s invention is directed to a waste processing system and
method. Independent claims 1 and 10, reproduced below, are representative
of the claimed subject matter:
1. A waste processing system, comprising:

a chamber;

an inlet configured to selectively open and close,
the inlet further being configured to inject waste
material into the chamber when the inlet is open,
the waste material being suspended in a fluid
medium, the waste material comprising
ferromagnetic substances, the waste material
further comprising non-ferromagnetic substances;

a selectively activated magnet operatively coupled
to the chamber, the magnet being configured to
activate when the inlet is substantially open, the
magnet further being configured to deactivate
when the inlet is substantially closed, the magnet
being configured to substantially attract the
ferromagnetic substances from the waste material
when the magnet is activated, the magnet further
being configured to release any attracted
ferromagnetic substances when the magnet is
deactivated;
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a metal outlet configured to selectively open and
close, the metal outlet being configured to open
when the magnet is deactivated, the metal outlet
further being configured to expel the released
ferromagnetic substances from the chamber when
the magnet is deactivated; and

a fluid outlet configured to selectively open and
close, the fluid outlet being configured to open
when the magnet is activated, the fluid outlet
further being configured to close when the magnet
is deactivated, the fluid outlet configured to expel
waste material remaining after the magnet has
substantially attracted the ferromagnetic
substances.

10. A method comprising the steps of:

injecting waste material into a chamber through an
inlet at a predefined rate, the waste material being
suspended in a fluid medium, the waste material
comprising ferromagnetic substances, the waste
material further comprising non-ferromagnetic
substances;

activating a magnet when the waste material is
being injected into the chamber, the activated
magnet substantially attracting the ferromagnetic
substances that are suspended in the fluid medium,
the attraction of the ferromagnetic substances
resulting in a remaining waste material;

expelling the remaining waste material through a
first outlet;

closing the inlet, closing the first outlet, and
deactivating the magnet, the deactivating of
the magnet resulting in a release of the attracted
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ferromagnetic substances; and

expelling the released ferromagnetic substances
from the chamber through a second outlet.

THE REJECTIONS
Appellant appeals the following rejections:
(i) claims 1, 3, and 5-9 under 35 U.S.C. § 103(a) as being
unpatentable over Rogers (US 2,874,839, issued Feb. 24, 1959) in view of
Saho (US 6,093,318, issued Jul. 25, 2000);
(ii) claims 10 and 12 under 35 U.S.C. § 103(a) as being unpatentable
over Saho in view of Rogers; and
(iii) claims 2 and 4 under 35 U.S.C. § 103(a) as being unpatentable
over Rogers in view of Saho and Heck (US 5,340,472, issued Aug. 23,
1994).

ANALYSIS
Claims 1, 3, and 5-9--Obviousness--Rogers/Saho
Appellant argues claims 1, 3, and 5-9 as a group, stating that claims 3
and 5-9 are believed to be allowable for the same reasons as are advanced
for claim 1. Appeal Br. 5. Accordingly, we take claim 1 as representative,
and claims 3 and 5-9 stand or fall with claim 1.
The Examiner found that Rogers discloses the subject matter of claim
1, with the exception that the inlet, metal outlet and fluid outlet are not
configured to selectively open and close when the magnet in Rogers is either
activated or deactivated. Ans. 4. The Examiner points to Saho as teaching
the concept of using valves to selectively open and close inlets and outlets as
a function of a magnet being activated or deactivated, the magnet being used
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to separate ferromagnetic materials from non-ferromagnetic materials. Id.
The Examiner concluded that it would have been obvious to modify the inlet
and outlets of Rogers to provide valves as taught by Saho, for the purpose of
controlling the inlet and outlets of the Rogers chamber. Ans. 4-5.
Appellant’s first argument is that the Saho device would not function
properly unless valves 21 and 25 on the fluid outlet and metal outlet lines,
respectively, remain open so that a backwashing operation can be performed
to clean the magnet. Appeal Br. 5-6. Appellant argues that claim 1 “does
not include backwashing.” Appeal Br. 6. Notwithstanding that claim 1 does
not appear to exclude a backwashing system, these arguments miss the mark
in terms of addressing the rejection. The Examiner has not proposed
modifying the Rogers device to include a backwashing operation, i.e., a
bodily incorporation of the Saho magnet system into Rogers, but instead
draws on Saho only for the teaching of the use of valves to open and close
inlets and outlets in a magnetic separation apparatus. Ans. 9.
Appellant also similarly asserts that a person of ordinary skill in the
art, when combining the teachings of Rogers and Saho, would adopt the
backwashing and air-bubbling approach in Saho to remove the magnetic
particles from the magnet in cleaning the magnet. Appeal Br. 6-7. Again,
this is not a modification proposed by the Examiner.
Appellant’s remaining argument is that Rogers and Saho fail to teach
a fluid outlet valve that is configured to close when the magnet is
deactivated. Appeal Br. 7. Appellant maintains that fluid outlet valve 21 of
Saho remains open at all times, and that converting it to selectively open and
close would not have been obvious as such a modification would render the
Saho device inoperable. Id. Once more, this line of reasoning incorrectly
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presupposes that the proposed modification of Rogers involves importing the
backwashing operation from Saho into the Rogers device.
As Appellant acknowledges, Rogers employs different means for
cleaning the magnet, namely a rotating brush to remove ferromagnetic
particles from the magnet. Appeal Br. 6, citing Rogers, col. 5, ll. 4-32. In
the Examiner’s proposed modification, there is no bodily incorporation of
the Saho backwashing operation, and thus providing a fluid outlet valve
configured to selectively open and close would not appear to render the
modified Rogers device inoperable. On this point, we note that the claim
requires that the fluid outlet is “configured to” selectively open and close.
Appellant’s Specification informs that this is accomplished by the provision
of a “valve that can selectively open and close” the outlet. Spec., p. 21, para.
[0073]. As such, even accepting as true Appellant’s position that the fluid
outlet valve 21 in Saho remains open at all times,1 the valve is configured to
selectively open and close.
The rejection of claim 1, and that of claims 3 and 5-9 depending
therefrom, is sustained.
Claims 10 and 12--Obviousness--Saho/Rogers
Claim 10 is directed to a method for processing waste which includes
the step of “closing the inlet, closing the first outlet, and deactivating the
magnet” in order to remove attracted ferromagnetic substances from the
magnet. Appeal Br., Claims Appendix. The Examiner relies on Saho as
teaching these steps. Ans. 5-6.

1 One of ordinary skill in the art might wonder why a valve is provided if it
is to remain open at all times.
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In response to Appellant’s argument that the fluid (first) outlet is not
closed in the Saho process at the time the magnet is deactivated, the
Examiner takes the position that “valve 21 is open when the processed fluid
is passed through and the magnet is activated (col. 2, lines 15-18) and then
closed to outlet of fluid and the magnet is deactivated (col. 2, lines 25-29).”
Ans. 9 (emphasis added). In other words, the Examiner appears to be
maintaining that the reverse flow of fluid (water) through valve 21 in Saho
in the backwashing operation “closes” the valve with respect to fluid which
would ordinarily flow out of magnetic filter 20 during normal operation.
We agree with Appellant that this is an unreasonably broad
interpretation of the “closing” of an outlet, as claimed. Reply Br. 4. As
stated by Appellant, a person of ordinary skill in the art would regard a
closed fluid outlet to be one that is closed to the passage of fluid in either
direction. Id.
The rejection of claims 10 and 12 as being unpatentable over Saho
and Rogers is not sustained.
Claims 2 and 4--Obviousness--Rogers/Saho/Heck
Appellant maintains that claims 2 and 4 are patentable on the basis
that they depend from claim 1, which was argued as being allowable.
Appeal Br. 7. Because we above determined that we were not apprised of
Examiner error in the rejection of claim 1, this rejection of claims 2 and 4 as
unpatentable over Rogers, Saho and Heck is sustained.
DECISION
The decision of the Examiner to reject claims 1-9 is affirmed. The
decision of the Examiner to reject claims 10 and 12 is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
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