Aqua Bank CO., LTD.

Patent Trials and Appeals Board

May 22, 2020

2019004446 (P.T.A.B. May. 22, 2020)

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.
14/760,448 09/16/2015 Takashi TAKEHARA PK4421048 1918
105857 7590 05/22/2020
NOVICK, KIM & LEE, PLLC
3251 OLD LEE HIGHWAY
SUITE 404
FAIRFAX, VA 22030
EXAMINER
KOLB, NATHANIEL J
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
05/22/2020 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):
docket@nkllaw.com
skim@nkllaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAKASHI TAKEHARA
____________

Appeal 2019-004446
Application 14/760,448
Technology Center 2800
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
JANE E. INGLESE, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge INGLESE.

Opinion Dissenting filed by Administrative Patent Judge SMITH.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1 and 2.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Aqua Bank CO., LTD. as the real party
in interest. Appeal Brief filed June 21, 2018 (“Appeal Br.”) at 3.
2 Final Office Action entered July 20, 2017 (“Final Act.”) at 1. Appellant
cancelled claims 3 and 4 in an amendment filed May 31, 2018.
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CLAIMED SUBJECT MATTER
Appellant claims a method of measuring a concentration of hydrogen
only dissolved in an aqueous solution for drinking using gas
chromatography. Appeal Br. 5–6. Claim 1, the sole pending independent
claim, illustrates the subject matter on appeal, and reads as follows:
1. A method of measuring a concentration of hydrogen only
dissolved in an aqueous solution for drinking using gas
chromatography, the method comprising:
a gas control process for selecting a carrier gas having a
predetermined difference in thermal conductivity from
hydrogen and controlling a flow rate of the carrier gas;
a sample introduction process for preparing an aqueous
solution sample and introducing the prepared aqueous solution
sample into the carrier gas, which functions as a mobile phase,
wherein the preparation of the aqueous solution sample
comprises injecting a desired amount of the aqueous solution
into a vessel, an inside of which is maintained in a vacuum
state, to thereby perform gas and liquid separation and
collecting a gas-phase portion as the aqueous solution sample to
be introduced;
a separation process for separating hydrogen only from
the aqueous solution sample on a basis of equilibrium in
adsorption and distribution between the aqueous solution
sample introduced in the mobile phase and a stationary phase
of a column;
a detection process for detecting the separated hydrogen
only using a thermal conductivity detector; and
a data processing process for processing the detected
data.

Appeal Br. 13 (Claims Appendix) (emphasis added).
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REJECTION
The Examiner maintains the rejection of claims 1 and 2 under 35
U.S.C. § 103(a) as unpatentable over Taylor3 in view of Williams,4 Kang,5
and Mancini6 in the Examiner’s Answer entered July 26, 2018 (“Ans.”).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 1 and 2 under 35 U.S.C. § 103(a), for reasons set forth in the Appeal
Brief and below.
Claim 1 requires the recited method of measuring a concentration of
hydrogen only dissolved in an aqueous solution for drinking using gas
chromatography to comprise, in part, a separation process for separating
hydrogen only from an aqueous solution sample on a basis of equilibrium in
adsorption and distribution between the aqueous solution sample introduced
in a mobile phase and a stationary phase of a column, and a detection
process for detecting the separated hydrogen only using a thermal
conductivity detector.
The Examiner finds that Taylor discloses an apparatus and method for
measuring the concentration of a gas using gas chromatography that includes
preparing a sample and introducing the prepared sample into a carrier gas,
separating a sensed gas from the sample on the basis of equilibrium in
adsorption and distribution between the sample introduced in a mobile phase

3 Taylor et al., US 3,097,518, issued July 16, 1963.
4 Williams et al., US 3,922,904, issued December 2, 1975.
5 Kang et al., 1:11 Medical Gas Research (2011).
6 Mancini et al., US 5,979,554, issued November 9, 1999.
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and a stationary phase of a column, and detecting the separated gas using a
thermal conductivity conductor. Final Act. 3 (citing Taylor col. 1, ll. 9–13;
col. 3, ll. 5–40; col. 4, ll. 40–58; col. 5, ll. 1–27). The Examiner finds that
Taylor “does not teach that the sample is hydrogen dissolved in an aqueous
solution.” Final Act. 4.
The Examiner finds, however, that Williams discloses measuring
hydrogen dissolved in water using nitrogen as a carrier gas. Final Act. 4
(citing Williams col. 2, ll. 20–29). The Examiner concludes that one of
ordinary skill in the art would have been motivated at the time of
Appellant’s invention to use Taylor’s gas chromatography apparatus to
measure hydrogen separated from water because Kang discloses that
hydrogen dissolved in water is used medicinally, and, therefore, “the precise
amount of hydrogen dissolved in consumed water needs to be known for
such medical research to be meaningful.” Final Act. 4 (citing Kang Abst.;
p. 2).
On the record before us, however, the Examiner does not articulate
reasoning having rational underpinning that explains why one of ordinary
skill in the art would have combined the relied-upon disclosures of Taylor
and Williams in the manner required by claim 1, for reasons expressed by
Appellant and discussed below.
Williams discloses an apparatus and method for stripping dissolved
gasses from water, and detecting the presence and amount of a particular
gas, such as hydrogen, in the stripped gas using a thermal conductivity cell.
Williams col. 1, ll. 29–39, 63–66. Williams discloses that the stripping
process involves continuously bringing thin films of water containing
dissolved gasses into contact with a moving gas, such as nitrogen. Williams
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col. 2, ll. 11–19. Williams explains that during this process the moving gas
displaces the dissolved gases in the liquid, thus separating the dissolved
gasses from the liquid. Williams col. 2, ll. 11–19, 26–29. Williams
discloses that the moving gas then serves as a carrier that conveys the
stripped gases to a thermal conductivity cell for detection of a particular gas
in the stripped gases. Williams col. 2, ll. 20–24.
Taylor discloses an apparatus and method for qualitatively and
quantitatively analyzing a large number of individual components in a gas
mixture using “an arrangement of chromatographic columns and
conductivity cells.” Taylor col. 1, ll. 9–13, 38–52. Taylor discloses that the
method involves injecting a sample gas mixture to be analyzed into carrier
gas 16 at sample inlet 12. Taylor col. 2, ll. 36–44; Fig. 1. Taylor discloses
that the carrier/sample gas mixture passes through drying tube 13, and then
passes into silica gel column 14. Taylor col. 2, ll. 44–46; Fig. 1. Taylor
discloses that certain component gases in the sample pass quickly through
silica gel column 14 at substantially the same rate, such as oxygen, nitrogen,
carbon monoxide, and methane, while other gases, such as carbon dioxide,
ethylene, and acetylene, flow through silica gel column 14 at differing,
slower rates, resulting in separation of each of such gases. Taylor col. 2, ll.
44–50; col. 3, ll. 5–9; Fig. 1. Taylor discloses that the gases that flow
quickly through silica gel column 14 (oxygen, nitrogen, carbon monoxide,
and methane) pass to molecular sieve column 15, which separates each of
such gases due to their differing flow rates through the column. Taylor col.
2, ll. 68–72; Fig. 1. Taylor discloses that each gas separated by molecular
sieve column 15 flows past sample thermistor 20, which sends a signal to a
recording device proportional to the quantity of each gas, while each gas
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separated by silica gel column 14 flows past sample thermistor 19, which
also sends a signal to a recording device proportional to the quantity of each
gas. Taylor col. 2, l. 72–col. 3, l. 3; col. 3, ll. 13–18; Fig. 1.
As discussed above, the Examiner asserts that one of ordinary skill in
the art would have been motivated at the time of Appellant’s invention to
use Taylor’s system to measure hydrogen separated from water because
Kang discloses that hydrogen dissolved in water is used medicinally. Final
Act. 4. As Appellant points out (Appeal Br. 9), however, the Examiner does
not identify any disclosure in Taylor of using the system described in the
reference to separate only hydrogen from water, and to quantitate only the
separated hydrogen, as recited in claim 1. Williams—rather than Taylor—
discloses an apparatus and method for stripping gasses, including hydrogen,
from water, and quantitating stripped hydrogen using a thermal conductivity
cell. The Examiner does not provide any explanation whatsoever in the
Final Action for why one of ordinary skill in the art would have used
Taylor’s system, rather than Williams’ system, to separate only hydrogen
from water, and to quantitate only the stripped hydrogen, as required by
claim 1. Nor does the Examiner identify any disclosure in Taylor indicating
that Taylor’s system could actually be used to separate only hydrogen from
an aqueous solution, as Appellant also points out. Appeal Br. 9.
In response to Appellant’s argument that “one of ordinary skill in the
art would not have been motivated to combine Taylor with Williams”
(Appeal Br. 8), the Examiner asserts in the Answer that because Taylor and
Williams both teach analyzing a mixture of gases using a thermal
conductivity detector “their teachings can be combined.” Ans. 3.
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The Examiner, however, does not explain why—and how—one of
ordinary skill in the art would have combined the relied-upon disclosures of
Taylor and Williams to arrive at a separation and detection process as recited
in claim 1 that involves separating only hydrogen from an aqueous solution
and detecting only the separated hydrogen. Simply because the ordinarily
skilled artisan could have combined Taylor and Williams, absent a reason to
have actually made the combination, any result of such combination would
not have been legally obvious, because “obviousness concerns whether a
skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of the prior art to arrive at the
claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073
(Fed. Cir. 2015); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (It
is well settled that “a patent composed of several elements is not proved
obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.”).
Although the Dissent submits that “[a] person of ordinary skill in the
art would have reasonably expected that the hydrogen/nitrogen gas
combination [of Williams] would have been suitable for analysis utilizing
gas chromatography such as disclosed by Taylor,” the record before us is
bereft of any such combination proposed by the Examiner. As discussed
above, the Examiner does not propose combining Williams and Taylor as
indicated by the Dissent. In fact, the Examiner does not provide any actual
explanation in the Final Action (or the Answer) of how the Examiner
proposes combining Williams and Taylor. Final Act. 4; Ans. 3–4 (indicating
that Taylor and Williams’ teachings “can be combined” while
acknowledging that “what WILLIAMS ends up analyzing is a mixture of
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gases.”) The Examiner does not indicate which disclosures of Taylor and
Williams would be included in a proposed combination of the references,
and how such disclosures could be combined so as to render obvious a
process as recited in claim 1.
Furthermore, Williams does not disclose a “hydrogen/nitrogen gas
combination” as proffered by the Dissent. Rather, as discussed above,
Williams discloses displacing “gases” that are dissolved in a liquid, such as
water, from the liquid using a carrier gas, such as nitrogen, and conveying
the stripped “gases” via the carrier gas to a thermal conductivity cell for
detection of a particular gas in the stripped gases, such as hydrogen.
Williams col. 2, ll. 11–29 (“[d]issolved gases in the film are displaced by the
moving gas . . . the moving gas phase serves as the carrier gas for conveying
the stripped gases to the detector unit. The mixture of carrier gas and
stripped gases are passed continuously into the detector.”) (emphasis
added); see also col. 1, ll. 30–39 (“continuous monitoring of separated gases
to detect the presence of a determined gas . . . stripping dissolved gases
rapidly in a single pass); col. 1, l. 32–36, 66–col. 2, l. 2 ([a]nother object of
this invention is to provide an efficient apparatus which is capable of rapidly
stripping the gases from a liquid sample and analyzing the discharged gas
content for a particular gas”).
Neither the Examiner nor the Dissent identifies any disclosure in
Williams of stripping hydrogen only from water. As indicated above, the
Examiner acknowledges in the Answer that “what WILLIAMS ends up
analyzing is a mixture of gases.” Ans. 3. And Taylor also does not disclose
separating hydrogen only from an aqueous solution sample, but discloses
separating a gas mixture into individual components, as discussed above.
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Thus, even if the Examiner had proposed combining Williams and
Taylor as the Dissent asserts, such a combination would not result in a
process that involves separating hydrogen only from an aqueous solution
sample, as required by claim 1.
On this appeal record, the Examiner does not provide sufficient
reasoning having rational underpinning to support a conclusion that one of
ordinary skill in the art would have combined the relied-upon disclosures of
Taylor and Williams so as to arrive at a separation and detection process as
required by claim 1.7
We, therefore, do not sustain the Examiner’s rejection of claims 1 and
2 under 35 U.S.C. § 103(a).
CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2 103(a) Taylor, Williams,
Kang, Mancini
1, 2

REVERSED

7 We need not address the Examiner’s reliance on Kang and Mancini for
disposition of this appeal.
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SMITH, Administrative Patent Judge, dissenting.
I respectfully dissent from the reversal of the rejections of claims 1
and 2 under 35 U.S.C. § 103(a) as specified in the appealed rejection. Upon
consideration of the evidence of record, and for essentially the reasons set
out by the Examiner in the Answer and Final Rejection, I believe the
Examiner’s §103(a) rejection is well founded. I add the following:
The present record discusses conventional methods for measuring the
concentration of dissolved hydrogen is based on oxidation reduction
potential wherein all the materials of the solution have an influence on the
oxidation reduction that is measured and as a result it is not clear that the
concentration of only hydrogen dissolved an aqueous solution is
appropriately determined because the sum of the oxidation power in the
reduction power of all materials contained in the aqueous solution is
measured. Spec. ¶¶ 4–5. To address this problem, the Specification
discloses the object of the present invention is to provide a method of
separating hydrogen from an aqueous solution using gas chromatography
and measuring the concentration of the separated hydrogen. Spec. ¶ 7. With
the object of avoiding utilizing oxidation reduction potential to determine
the hydrogen content and water, claim 1 recites a method of measuring a
concentration of hydrogen dissolved in an aqueous solution for drinking
using gas chromatography to comprise, in part, a separation process for
separating hydrogen from an aqueous solution sample on a basis of
equilibrium in adsorption and distribution between the aqueous solution
sample introduced in a mobile phase and a stationary phase of a column, and
a detection process for detecting the separated hydrogen using a thermal
conductivity detector. As set forth by the Examiner, the cited prior art does
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not suggest determining the concentration of hydrogen dissolved in an
aqueous solution that requires utilizing the oxidation reduction potential.
The Examiner finds Kang discloses hydrogen dissolved in water was
used medicinally. Final Act. 4 (Kang Abst.; p. 2). This is similar to the
discussion appearing in the background of the present Specification. Spec.
¶2. Kang examined whether the use of hydrogen-supplemented water,
improved quality of life in cancer patients receiving radiotherapy. Kang
Abst. The Examiner finds Kang establishes the importance/need of
determining the amount of hydrogen dissolved in consumed water. Final
Act. 4.
The Examiner finds Taylor discloses an apparatus and method for
measuring the concentration of a gas using gas chromatography that includes
preparing a sample and introducing the prepared sample into a carrier gas
having a predetermined difference in thermal conductivity from the sensed
gas. Final Act. 3 (Taylor col. 5, ll. 7–26, 57–65). The Examiner finds
Taylor discloses separating the sensed gas from the sample on the basis of
equilibrium in adsorption and distribution between the sample introduced in
a mobile phase and a stationary phase of a column, and detecting the
separated gas using a thermal conductivity conductor. Final Act. 3 (Taylor
col. 1, ll. 9–13; col. 3, ll. 5–40; col. 4, ll. 40–58). The Examiner finds that
Taylor “does not teach that the sample is hydrogen dissolved in an aqueous
solution.” Final Act. 4. The Examiner finds, Williams discloses measuring
hydrogen dissolved in water using nitrogen as a carrier gas that has a
predetermined difference in thermal conductivity from the hydrogen gas to
be sensed. Final Act. 4 (Williams col. 2, ll. 20–29; col. 4, ll. 16–28).
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The Examiner concludes that it would have been obvious to use
Taylor’s gas chromatography apparatus to measure hydrogen separated from
consumable water because that Kang establishes the importance/need of
determining the hydrogen dissolved in water that is used medicinally. Final
Act. 4 (Kang Abst.; p. 2).
The Examiner cites Mancini for describing a process and apparatus
for gas and liquid separation and collecting a gas phase
treatment/processing. Final Act. 4 (Mancini paragraph bridging cols. 6
and 7).
Appellant argues initially Kang is non-analogous art. Appeal Br. 7.
Whether a prior art reference is analogous is a question of fact. See In re
Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). The determination that a
reference is from non-analogous art is two-fold. First it must be determined
if the reference is within the field of the inventor’s endeavor. If the
reference is not within the field of the inventor’s endeavor, it must be
determined whether the reference is reasonably pertinent to the particular
problems with which the inventor was involved. See In re GPAC Inc., 57
F.3d 1573, 1577 (Fed. Cir. 1995). In the present case, I agree with Appellant
that Kang is not directed to methods for measuring the content of hydrogen
in drinking water. Appeal Br. 7. However, Kane establishes the need for
determining the content of hydrogen in drinking water administered to
cancer patients. Kang Abst.; p. 2. Consequently, Kane is reasonably
pertinent to the problem addressed by the present invention which is the
need for determining the content of hydrogen in drinking water.
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Appellant’s argument that one of ordinary skill in the art would not
have been motivated to combine the teachings of Taylor with the Williams is
without persuasive merit.
As set forth above, Taylor discloses an apparatus and method for
measuring the concentration of a gas using gas chromatography wherein the
gas to be analyzed is placed in a carrier gas having a predetermined
difference in thermal conductivity. Williams describes measuring hydrogen
dissolved in water using nitrogen as a carrier gas that has a predetermined
difference in thermal conductivity from the hydrogen gas to be sensed.
Williams col. 2, ll. 20–29. A person of ordinary skill in the art would have
reasonably expected that the hydrogen/nitrogen gas combination would have
been suitable for analysis utilizing gas chromatography such as disclosed by
Taylor. See, e.g., KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007)
(“when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result”); In re
Siebentritt, 372 F.2d 566, 567–68 (CCPA 1967) (express suggestion to
interchange methods which achieve the same or similar results is not
necessary to establish obviousness); see also In re Kahn, 441 F.3d 977, 985-
88 (Fed. Cir. 2006); In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988)
(“For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted)); In re Keller, 642 F.2d 413, 425
(CCPA 1981) (“ [T]he test [for obviousness] is what the combined teachings
of the references would have suggested to those of ordinary skill in the art.”)
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Appellant’s argument (Appeal Br. 9–10) that Mancini is non-
analogous art is not persuasive as for the reasons presented by the Examiner
in the Answer. Ans. 4.
In conclusion, for the reasons stated above and those presented by the
Examiner, I would sustain the obviousness rejection of claims 1 and 2.
I therefore dissent.