Paul Steven. Wallace

Patent Trials and Appeals Board

Aug 16, 2019

13118326 - (D) (P.T.A.B. Aug. 16, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
13/118,326 05/27/2011 Paul Steven Wallace 1 Katana 326 9350
114200 7590 08/16/2019
Fletcher Yoder c/o HL Seawater Holdings, LLC
P.O. Box 692289
Houston, TX 77269-2289
EXAMINER
ANDERSON, DENISE R
ART UNIT PAPER NUMBER
1779
MAIL DATE DELIVERY MODE
08/16/2019 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 PAUL STEVEN WALLACE1
____________

Appeal 2017-010027
Application 13/118,326
Technology Center 1700
____________
Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–12, 14–24, 26–29, and 31. We have jurisdiction
under 35 U.S.C. § 6.

We REVERSE.

1 HL Seawater Holdings, LLC is identified as the real party in interest (App.
Br. 2).
Appeal 2017-010027
Application 13/118,326
2
Appellant claims an environment supportive seawater intake system
comprising a grating system (10) to receive seawater and generate a first
stream (18) comprising fish and larvae, a raceway (14) to receive the first
stream, and a filtering system comprising a wedgewire screen (30)
positioned within the raceway such that the wedgewire screen circumscribes
the flow path of the first stream and removes at least a portion of the fish and
larvae from the first stream to generate a filtered stream (32), an input device
(54, 60) to receive the filtered stream, and a recovery system (70, 72, 74)
coupled to the raceway outlet and configured to receive a residual stream
(34) having the fish and larvae from the first stream and to direct the residual
stream to a sea environment (independent claim 1, Figs. 1, 3; see also
remaining independent claims 6, 10, and 24).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. An environment supportive seawater intake system
comprising:
a grating system configured to receive seawater, to
generate a first stream comprising fish and larvae, and to direct
the first stream in a first direction;
a raceway disposed downstream from the grating system
and comprising a walled container having a base, a first
sidewall, and a second sidewall, wherein the raceway comprises
a raceway inlet disposed at a first end of the raceway and a
raceway outlet disposed at a second end of the raceway,
substantially opposite the first end, and the raceway is
configured to receive the first stream from the grating system
via a conduit extending between the grating system and the
raceway inlet and to flow the first stream through the raceway
along a flow path extending between the raceway inlet and the
raceway outlet;
a filtering system disposed within the raceway and
comprising a wedgewire screen positioned above the base and
Appeal 2017-010027
Application 13/118,326
3
extending along a length of the first and second sidewalls
between the raceway inlet and the raceway outlet such that the
wedgewire screen circumscribes the flow path of the first
stream along a length of the raceway, wherein the wedgewire
screen is configured to remove at least a portion of the
fish and larvae from the first stream to generate a filtered
stream and to direct a flow of the filtered stream in a second
direction;
an input device configured to receive the filtered stream
from the filtering system;
and
a recovery system fluidly coupled to the raceway outlet
and configured to receive a residual stream having the fish and
larvae from the first stream and to direct the residual stream to a
sea environment.

The Examiner rejects claims 5, 9, 15, 24, 26–29, and 31 under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement (Final Action 18). The
Examiner determines that Appellant’s original disclosure does not support
the claim 5 limitation “the recovery system comprises a reef pond” or
corresponding limitations of the other listed claims (id.).
Relying on paragraph 27 and other paragraphs as well as Figure 1 of
the original disclosure, Appellant argues that a person having ordinary skill
in the art would understand that Appellant had possession of the subject
matter in question at the time the application was filed (App. Br. 14).
In response, the Examiner urges that paragraph 27 of the original
disclosure “clearly discloses that the recovery system does not include a reef
pond” because this paragraph describes the recovery system as delivering
residual seawater “to a reef pond” and as pumping residual seawater “into
the reef pond” (Ans. 55 (quoting original paragraph 27 with emphasis
added)).
Appeal 2017-010027
Application 13/118,326
4
“[T]he test for [written description] sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc).
In applying this test, we determine, like Appellant, that the original
disclosure of the subject application reasonably conveys to those skilled in
the art that Appellant had possession on the application filing date of the
claimed subject matter wherein the recovery system comprises a reef pond.
This determination is reinforced by the fact that the reef pond participates in
the function performed by the recovery system, namely, the function of
directing the residual stream to a sea environment. Contrary to the
Examiner’s belief, original paragraph 27 does not disclose explicitly or even
implicitly that the reef pond is located outside the recovery system. Rather,
one with ordinary skill in the art would interpret this paragraph to describe
the recovery system as delivering or pumping residual seawater to or into a
reef pond that is located in a downstream portion of the recovery system.
For the reasons discussed above and given by Appellant, we do not
sustain the Examiner’s § 112, written description, rejection of claims 5, 9,
15, 24, 26–29, and 31.
The Examiner also rejects claims 6–9 under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement (Final Action 18–19). The Examiner’s
position is that the original disclosure does not support the claim 6 limitation
“an input device . . . configured to direct the filtered stream to an intake of a
desalination plant” (id. at 18). The Examiner states “[t]he Original
Appeal 2017-010027
Application 13/118,326
5
Disclosure does not support the input device directing any stream . . . [but
rather] only supports the input device receiving a stream” (id. at 19).
The Examiner’s position is erroneous. For the reasons given by
Appellant, paragraph 40 of the original disclosure reasonably conveys to
those with ordinary skill in the art that Appellant had possession of the
above quoted limitation on the application filing date (App. Br. 15). As
Appellant correctly argues, those skilled in the art would understand this
paragraph to disclose sump 54 with its sump pump 56 constitutes an input
device for receiving filtered seawater (i.e., the filtered stream of claim 6) and
directing the filtered seawater to desalination plant 60 (id.) as required by the
claim 6 limitation under review. We perceive no convincing merit in the
Examiner’s response to this argument (Ans. 56).
Therefore, we also do not sustain the Examiner’s § 112, written
description, rejection of claims 6–9.2
The Examiner rejects all of the claims before us in this appeal under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Bryan (US 6,964,541 B2,
issued Nov. 15, 2005) in combination with Toland et al., (US 6,682,651 B1,
issued Jan. 27, 2004) (hereinafter “Toland”) alone or in further combination
with additional prior art (Final Action 23–69).
In each of these rejections, the Examiner finds that Bryan discloses an
environment supportive seawater intake system comprising a raceway
containing a filtering system including a wedgewire screen 22 (see, e.g., id.
at 23–24) but does not disclose the claim feature wherein the wedgewire
screen circumscribes the flow path of the first stream (independent claims 1

2 The remaining § 112 rejections listed in the Final Office Action are
withdrawn by the Examiner (Ans. 53–54).
Appeal 2017-010027
Application 13/118,326
6
and 6) or the screened intake seawater (remaining independent claims 10 and
24) (see, e.g., id. at 26). Concerning this deficiency, the Examiner finds that
Toland discloses a water intake system with a filtering system comprising a
barrel type wedgewire screen (i.e., wherein the barrel type screen
circumscribes a water flow path) (see, e.g., id. at 27–28). The Examiner
concludes that it would have been obvious to dispose Toland’s barrel type
wedgewire screen below screen 22 of Bryan, thereby resulting in Toland’s
wedgewire screen circumscribing the flow path of the first stream (or the
screened intake seawater) as claimed, motivated by the mutual desire of both
Bryan and Toland for evenly distributed flow and a fish friendly filtering
system (see, e.g., id. at 28–30).
Appellant argues that Bryan and Toland contain no teaching or
suggestion of the claim feature wherein the screen circumscribes the flow
path of a stream containing fish and larvae (see, e.g., App. Br. 19–22; Reply
Br. 3–5). Appellant correctly explains that fish in the stream entering
Bryan’s raceway flows over screen 22 whereby water flowing through the
screen does not contain fish and therefore does not correspond to the
Appellant’s claimed fish and larvae containing first stream (or screened
intake seawater) (id.). For this reason, Appellant further argues, Toland’s
barrel type wedgewire screen located below screen 22 of Bryan’s modified
system would not circumscribe the first stream (or screened intake seawater)
comprising fish and larvae as claimed (id.). Appellant emphasizes this
argument is reinforced by Toland’s express teaching that the screen mesh
must be sufficiently small so that juvenile fish cannot pass through the
screen (see, e.g., App. Br. 20–21; Reply Br. 4).

Appeal 2017-010027
Application 13/118,326
7
In response, the Examiner considers Appellant’s arguments
unpersuasive based on Bryan’s teaching of screened water diversions that
“efficaciously pass fish” (Ans. 60 (citing and quoting from Bryan col. 1, ll.
16–23)).
Contrary to the Examiner’s apparent belief (but consistent with
Appellant’s arguments), Bryan’s “screened diversion is designed to pass fish
11 of different sizes over the screen and to allow diverted water to be
withdrawn from under the screen, all in a manner that does not trap or
damage fish passing over the screen” (Bryan col. 3, ll. 47–50 (underlining
added)). Therefore, in the modified system proposed by the Examiner,
Toland’s barrel type screen, being located under Bryan’s screen 22, would
not circumscribe the flow path of a fish-containing stream of any kind
including the claimed fish and larvae containing first stream (or screened
intake seawater).
Even if small fish and larvae were to pass through Bryan’s screen 22,
they would be prevented from passing through the mesh of Toland’s barrel
type screen as taught by Toland (Toland col. 5, ll. 12–15 (“The mesh of the
screen utilized must be of a sufficiently small dimension so that the juvenile
fish cannot pass through the screen”)) and as argued by Appellant (App. Br.
20–21; Reply Br. 4).3 Consequently, there would be no fish in the stream
circumscribed by Toland’s barrel type screen, contrary to the recitations of
the independent claims. On the other hand, if small fish and larvae were to

3 We emphasize that small fish and larvae being trapped between Bryan’s
screen 22 and Toland’s barrel type screen would be contrary to the
previously mentioned fish friendly filtering system desired by both Bryan
and Toland, thus militating against the Examiner’s proposed combination of
these references.
Appeal 2017-010027
Application 13/118,326
8
pass through both Bryan’s screen 22 and Toland’s barrel type screen, the
latter would perform no filtering function, which is a circumstance that
undermines the Examiner’s proposed combination of these references.
In summary, the Examiner fails to establish a prima facie case of
obviousness for combining Bryan and Toland in the manner proposed to
result in a wedgewire screen that circumscribes the flow path of the fish and
larvae containing first stream or screened intake seawater as claimed.
Moreover, to the extent the Examiner believes the proposed combination
would result in a screen capable of circumscribing a fish and larvae
containing stream (see Ans. 60), we agree with Appellant that such a
capability would not exist because Toland’s screen mesh prevents fish from
passing therethrough (Reply Br. 5).
For the reasons given by Appellant and expressed above, we do not
sustain the Examiner’s § 103 rejections of claims 1–12, 14–24, 26–29, and
31.
We reverse the Examiner’s decision to reject the claims before us.

REVERSED