Ex Parte Janning

Patent Trial and Appeal Board

Feb 25, 2013

11704446 (P.T.A.B. Feb. 25, 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.
11/704,446 02/09/2007 Robert Janning JM-020807 2407
7590 02/25/2013
John E. Menear
1200 Capitola Road, #4
Santa Cruz, CA 95062
EXAMINER
KO, JASON Y
ART UNIT PAPER NUMBER
1711
MAIL DATE DELIVERY MODE
02/25/2013 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 ROBERT JANNING
____________

Appeal 2011-013395
Application 11/704,446
Technology Center 1700
____________

Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
GRACE KARAFFA OBERMANN, 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 10-15, 17-19, and 24-29, which are the only claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Representative claim 10, the sole independent claim on appeal, reads
as follows:

Appeal 2011-013395
Application 11/704,446

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10. An abrasive wire cleaning apparatus for cleaning a wire
comprising:
a cleaning chamber;
one or more stirring nozzles serially disposed within said
cleaning chamber;
a wire feeder;
a wire collector;
a cleaning compound which moves through said one or more
stirring nozzles,
is abrasive,
enters each said one or more stirring nozzles through an entry
end,
exits each said one or more stirring nozzles through an exit end,
and
fills said one or more stirring nozzle during operation; and
a pump capable of producing 5000 PSI to move said cleaning
compound through said one or more stirring nozzles.

The Examiner maintains, and Appellant appeals, the following
rejections:
Claim 10 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement;
Claims 10, 11, 19, 24-26, 28, and 29 under 35 U.S.C. § 102(b) as
anticipated by Hürzeler1; and
Claims 10-14, 17-19, and 24- 29 under 35 U.S.C. § 103(a) as being
unpatentable over Hürzeler2.

1 US 3,978,695, patented Sep. 7, 1976.
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Application 11/704,446

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OPINION
The § 112 Rejection
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s Specification must “‘convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.’” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991)).
After review of the respective positions provided by Appellant and the
Examiner, we find that a preponderance of the evidence supports
Appellant’s position that the original disclosure provides support for the
phrase “pump capable of producing 5000 PSI to move said cleaning
compound through” as recited in independent claim 10 (App. Br. 9, 10;
Reply Br. 3; Spec. paras. [0018], [0030], [0047]). As Appellant explains,
the Specification explicitly describes that the chamber must be capable of
operating pressures that may exceed 5000 psi, and that the pump which
supplies the cleaning compound to the chamber may be replaced by a piston
drive that can achieve operating pressure (id.). Accordingly, one of ordinary
skill would have immediately appreciated that Appellant was in possession
of an embodiment wherein the pump was capable of achieving the operating
pressure of 5000 psi.
Accordingly, we reverse the Examiner’s § 112 rejection on appeal.

2 The § 103 rejection of dependent claim 15 has been withdrawn by the
Examiner (Ans. 4). Accordingly, the appeal is dismissed as to claim 15.
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Application 11/704,446

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The § 102 and § 103 Rejections
The Examiner bears the initial burden of presenting a prima facie case
of anticipation and/or obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992).
After review of the respective positions provided by Appellant and the
Examiner, we determine that a preponderance of the evidence supports
Appellant’s position that the Examiner has not established that Hürzeler
anticipates or renders obvious the subject matter recited in claim 10. The
Examiner has not met the initial burden of presenting a prima facie case of
anticipation or obviousness in this case for at least the reason that Hürzeler
does not inherently describe, or render obvious, a pump capable of operating
at 5000 psi as recited in the wire cleaning apparatus of claim 10 (see, e.g.,
App. Br. 10). The Examiner relies upon pump 31 of Hürzeler (Ans. 6).
Hürzeler states there is a “return-flow pump 31 through which the excess
dye is returned to the tank 21” (col. 3; ll. 47-51). Significantly, the pump 31
does not move the treatment medium to the treatment station in the housing
3; rather, pump 31 returns excess dye to tank 21 which holds the treatment
medium. The treatment medium is then conveyed to the housing 3 via
compressed air at 16 (see, e.g., Hürzeler Fig. 2; col. 3, ll. 32-50). The
Examiner does not direct us to any evidence that Hürzeler describes any
specific pressures for use in the dye treatment described therein.
Accordingly, we agree with Appellant that the Examiner fails to articulate
any persuasive reason or evidence that Hürzeler describes a pump that would
have been capable of achieving an operating pressure of 5000 psi. The
Examiner’s reasoning that Appellant has “presented no evidence or
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Application 11/704,446

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declaration sufficient to show that Hurzeler’s system would not be able to
withstand 5000 psi” (Ans. 9, 10) improperly shifts the burden to Appellant.
For the foregoing reasons, and those presented by Appellant in the
Brief, the Examiner has not satisfied the initial burden of presenting a prima
facie case of anticipation or obviousness.
For these reasons and those set out in the Brief, we reverse the
Examiner’s § 102 and § 103 rejections on appeal.

CONCLUSION
In summary, the rejections before us on appeal are reversed.

REVERSED
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