Ex Parte Biltoft et al

Patent Trial and Appeal Board

Dec 29, 2016

12439209 (P.T.A.B. Dec. 29, 2016)

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.
12/439,209 02/27/2009 Bruce Gregory Biltoft 2006P18941WOUS 2185
56885 7590 01/03/2017
Evoqua Water Technologies LLC
U0105
Intellectual Property Department
10 Technology Drive
Lowell, MA 01851
EXAMINER
ORME, PATRICK JAMES
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
01/03/2017 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):
docketing @ L ALaw .com
CKent@LALaw.com
intellectualproperty @ e voqu a. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE GREGORY BILTOFT, ZHIYI CAO,
HUW ALEXANDER LAZAREDES, FUFANG ZHA, and LYVONNE LY
Appeal 2015-002838
Application 12/439,209
Technology Center 1700
Before JEFFREY T. SMITH, MONTE T. SQUIRE, and
AVELYN M. ROSS, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal the Examiner’s rejection of claims 7—10 and 26—
36. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to the Non-Final Office Action appealed from,
mailed July 16, 2014 (“Non-Final Act.”); the Appeal Brief dated September
25, 2014 (“App. Br.”); the Examiner’s Answer to the Appeal Brief dated
November 18, 2014 (“Ans.”); and the Appellants’ Reply Brief dated January
20, 2015 (“Reply Br.”).
2 Appellants identify Evoqua Water Technologies LLC as the Real Party in
Interest. App. Br. 3.
Appeal 2015-002838
Application 12/439,209
The Claimed Invention
Appellants’ disclosure relates to a method of backwashing a
membrane filtration system comprising at least one permeable hollow
membrane. Abstract; Spec. 1. Claim 26 is illustrative of the claims on
appeal and is reproduced below from the Claims Appendix to the Appeal
Brief (App. Br. 16, 17):
26. A method of backwashing a membrane filtration system
including at least one permeable hollow fiber membrane, a
liquid suspension feed inlet, and a permeate outlet comprising:
filtering a liquid suspension through walls of the at least
one permeable hollow fiber membrane to produce a permeate;
suspending the filtration process with permeate
remaining present on a permeate side of the at least one
permeable hollow fiber membrane; and
applying a plurality of gas pressure pulses of a low-
pressure gas at a pressure below the bubble point of the at least
one permeable hollow fiber membrane and in a range of from
about 30 kPa to about 150 kPa to the permeate remaining
present on the permeate side of the at least one permeable
hollow fiber membrane when the filtration process is suspended
and prior to the resumption of filtration, each of the plurality of
gas pressure pulses provided by:
isolating a liquid suspension side of the at least one
permeable hollow fiber membrane;
applying the low-pressure gas, through the liquid
suspension feed inlet, to the isolated liquid suspension
side of the at least one permeable hollow fiber
membrane;
applying the low-pressure gas to the permeate side
of the at least one permeable hollow fiber membrane
through the permeate outlet; and
opening the liquid suspension side of the at least
one permeable hollow fiber membrane to atmosphere
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Application 12/439,209
subsequent to applying the low-pressure gas to the
isolated liquid suspension side of the at least one
permeable hollow fiber membrane and to the permeate
side of the at least one permeable hollow fiber
membrane.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Jennings
Ford et al.,
(hereinafter “Ford”)
Herczeg
Murkute et al.,
(hereinafter “Murkute”)
Nakatsuka
US 3,912,624
US 4,931,186
US 2004/0050791 Al
US 2004/0139992 Al
JP 11076769 A
Oct. 14, 1975
June 5, 1990
Mar. 18, 2004
July 22, 2004
Mar. 23, 1999
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claim 26 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Murkute, in view of Nakatsuka,3 in view of Ford, and in
view of Jennings. Non-Final Act. 5.
2. Claims 7—10, 27, 28, and 29 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Murkute, in view of
Nakatsuka, and in view of Ford. Non-Final Act. 10.
3 The Examiner’s rejections refer and are mapped to the English translation
of the Nakatsuka reference that has been entered into the record.
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3. Claim 30 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Murkute, in view of Nakatsuka, and in view of Ford, as
evidenced by Herczeg . Non-Final Act. 17.
4. Claim 31 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Murkute, in view of Nakatsuka, and in view of Ford.
Non-Final Act. 20.
5. Claims 32—35 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Murkute, in view of Nakatsuka, and in view of Ford.
Non-Final Act. 24.
6. Claim 36 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Murkute, in view of Nakatsuka, and in view of Ford, as
evidenced by Herczeg. Non-Final Act. 30.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief and
Non-Final Office Action appealed from, which we adopt as our own. We
highlight and address specific findings and arguments for emphasis as
follows.
Rejection 1
The Examiner finds that the combination of Murkute, Nakatsuka,
Ford, and Jennings suggests a method of backwashing a membrane filtration
system satisfying all of the limitations of claim 26, and concludes that the
combination would have rendered claim 26 obvious. Non-Final Act. 5—9.
The Examiner finds that the combination of Murkute, Nakatsuka, and
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Jennings teaches the majority of claim 26’s limitations, but that it is “silent
on whether the backwash is effected by opening the liquid suspension side
of the membrane and releasing the pressure,” as required by the claim. Id.
at 8. The Examiner, however, relies on Ford for disclosing that effecting
backwash in the manner claimed was known in the art. Id. In particular, the
Examiner finds that Ford explicitly teaches that “The shell outlet 17 is then
opened which allows gas to penetrate the pores along the whole length
of each fibre.” Id. at 8 (citing Ford, Figs. 1—3; quoting Ford, col. 7,11. 23—
43).
The Examiner finds further that one of ordinary skill in the art at the
time the invention was made would have been motivated to effect Murkute’s
backwash step in the known manner as exhibited by Ford because such a
backwash step is “particularly suitable for long thin fibres” since it “allows
gas to penetrate the pores along the whole length of each fibre.” Non-Final
Act. 9 (quoting Ford, col. 7,11. 23—43).
Appellants argue that the Examiner’s rejection should be reversed
because: (1) Ford does not “teach or suggest opening the liquid suspension
side to atmosphere as a means to provide a plurality of low-pressure gas
pulses to permeate in a membrane filtration system” and (2) the “process of
Ford is incompatible with providing a plurality of gas pulses to the
remaining permeate . . . [and] incompatible with a low-pressure backwash.”
App. Br. 6, 7. Relying on the Declaration co-applicant, Dr. Zhiyi Cao,
Appellants also argue that (3) Ford’s process “would completely empty the
lumen of permeate on the first pulse, and therefore not allow for a plurality
of pulses to be applied to the permeate in the lumen.” Id. at 7.
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We are not persuaded by Appellants’ arguments. On the record
before us, we find that a preponderance of the evidence and sound technical
reasoning support the Examiner’s conclusion (Non-Final Act. 5—9) that the
combination of Murkute, Nakatsuka, Ford, and Jennings suggests all of
claim 26’s limitations, including opening the liquid suspension side of the at
least one permeable hollow fiber membrane to atmosphere as claimed.
Murkute, Abstract, H 21, 20, 26, 32; Nakatsuka, Title, Figs. 1 and 2, || 3, 6,
9, 23—25, Working Examples 1—3; Jennings, Fig. 1, col. 2,11. 21—24, 34—60,
col. 3,11. 51-53, col. 4,11. 1-6, 13-17; Ford, Figs. 1-3, col. 7,11. 23^13.
Appellants’ arguments regarding Ford’s teachings are unpersuasive
because they attack the references individually rather than the collective
teachings of the prior art as a whole. One cannot show non-obviousness by
attacking references individually where the rejection is based on a
combination of references. See In re Keller, 642 F.2d 413, 425 (CCPA
1981). Appellants’ arguments are premised on what Appellants contend
Ford teaches individually, and not the combined teachings of the cited
references as a whole and what the combined teachings would have
suggested to one of ordinary skill in the art. Contrary to what Appellants
argue, the Examiner relies on the combined teachings of the prior art
references—and not Ford alone—for suggesting claim 26’s opening the
liquid suspension side of the permeable hollow fiber membrane to
atmosphere step. See Ans. 9 (explaining that one of ordinary skill would
have been motivated to release the pressure in Murkute’s method by opening
the suspension side to one atmosphere to effect backwash because during
cleaning Murkute teaches that its method is run above atmospheric pressure
at about 10 to 90 psig); Murkute, Abstract, 121. See also Ans. 9 (explaining
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that one of ordinary skill would have been motivated to effect modified
Murkute’s backwash step as taught by Ford because such a backwash step is
“particularly suitable for long thin fibres” and “allows the gas to penetrate
the pores along the whole length of each fibre”); Ford, col. 7,11. 23—43.
Appellants’ argument reveals no reversible error in the Examiner’s analysis
and factual findings in this regard.
Appellants’ arguments that the “process of Ford is incompatible with
providing a plurality of gas pulses to the remaining permeate” and
“incompatible with a low-pressure backwash” and that Ford’s process
“would completely empty the lumen of permeate on the first pulse” (App.
Br. 7) are not persuasive because they are conclusory and contradicted by
evidence in the record. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984).
We agree with the Examiner (Ans. 3) that contrary to Appellants’
argument that Ford’s process would completely empty the lumen, Ford
actually discloses that: (1) liquid remains in some of the hollow interior
spaces of the membrane defined by the fibers (Ford, col. 6,11. 5—8); (2) when
all the pores are pressure cleaned by a volume of clarified liquid, not all of
the pores will be emptied of liquid (id. at col. 5,11. 52—57); and (3) that not
all liquid has been removed from the interior of the fibers because not all of
the pores completely open up to release liquid (id. at col. 7,11. 37^40).
Appellants’ arguments and the Cao Declaration are not persuasive of
patentability for the well-stated reasons provided by the Examiner at pages 4
and 5 of the Answer and because the declaration is largely conclusory. Cf.
In re Bulina, 362 F.2d 555, 559 (CCPA 1966) (“[A]n affidavit by an
applicant or co-applicant as to the advantages of his invention is less
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Application 12/439,209
persuasive than one made by a disinterested person.”). Further, considering
Ford’s teachings as a whole, we are not persuaded that Ford’s process
completely empties the hollow lumens inside the fibers comprising the
membrane as Appellants argue. Rather, as previously discussed above, we
find that a preponderance of the evidence supports the Examiner’s contrary
findings (Ans. 3, 4) in this regard. Ford, col. 4,11. 13—49, col. 5,11. 46, 52—
50, col. 7,11. 37-40.
Appellants argue that the Examiner’s reliance on Jennings is
erroneous because Jennings does not “teach or suggest providing gas
through the liquid suspension feed inlet, as a means to providing a plurality
of gas pressure pulses to the permeate.” App. Br. 8. In particular,
Appellants argue that Jennings states that “forward cleaning is performed
separately from a backwash cleaning” and “Jennings never teaches forward
flow cleaning as a sub-step in providing a backwash cleaning, let alone a
pulsed backwash cleaning.” Id.
These arguments are unpersuasive because Appellants, again, do not
provide an adequate technical explanation or direct us to sufficient evidence
to rebut the Examiner’s findings in this regard. De Blauwe, 736 F.2d at 705.
As the Examiner correctly points out (Ans. 5), Appellants do not provide a
citation or direct us to any specific teaching or disclosure—whether in
Jennings or elsewhere in the record—for the contention that forward
cleaning is performed separately from a backwash cleaning. In any event, as
the Examiner notes (Ans. 5, 6), claim 26 does not require and is not limited
to the steps being performed in a specific order, as Appellants’ argument
suggests. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369-70 (Fed. Cir.
2003).
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Appellants’ argument, without more, exposes no reversible error in
the Examiner’s determination (Ans. 6) that Jennings discloses the use of the
applying the gas through the liquid suspension feed inlet and the backwash
as part of the same pulsed gas process and conclusion that it would have
been obvious to combine Jennings teachings with modified Murkute’s
method, which we find are supported by a preponderance of the evidence
and based on sound technical reasoning. Jennings, col. 2,11. 7—20, 23, 24,
34—58, col. 4,11. 13—17; Murkute, Abstract, H 21, 20, 26, 32.
Appellants argue that “Nakatsuka fails to disclose or suggest
‘applying a plurality of gas pressure pulses of low-pressure gas ... to the
permeate remaining present on the permeate side, ’ as recited in independent
claim 26.” App. Br. 9.
Appellants’ argument is not persuasive. Contrary to what Appellants
argue, Nakatsuka does suggest applying a plurality of gas pressure pulses of
a low-pressure gas to the permeate remaining present on the permeate side,
as claimed. As the Examiner finds (Non-Final Act. 6), Nakatsuka teaches
applying a low-pressure gas on the permeate remaining in the lumens at a
pressure of about 30 kPa to about 150 kPa. Nakatsuka, Title, Figs. 1 and 2,
3, 6, 9, 13. Nakatsuka also discloses that gas need not enter the lumens of
the membrane at the time the gas is introduced and that because the lumens
of the membranes are already submerged within the solution being filtered,
the lumens will necessarily contain permeate. Nakatsuka, 113; see also
Ans. 7.
Appellants’ argument that paragraph 13 of Nakatsuka “suggests that
there is no permeate but only gas in the system at this point in the cleaning
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process” (App. Br. 10) is speculative and, without more, insufficient to
establish reversible error in the Examiner’s findings in this regard.
Appellants argue that the Examiner has failed to establish obviousness
because one of ordinary skill in the art would not have been motivated to
combine the teachings of the prior art in the manner as found by the
Examiner. App. Br. 11. In particular, Appellants argue that one of ordinary
skill in the art would not have been motivated to “integrate the teachings of
Ford into the teachings of Nakatsuka, which describes the application of gas
at a pressure below the bubble point during backwash” or “incorporate either
Ford or Nakatsuka into a pulsed backwashing method.” Id. at 11.
Appellants also argue that a person of ordinary skill would not have had a
“reasonable expectation of success” in combining Ford’s teachings with
Murkute’s teachings and that the Examiner’s analysis is based on improper
hindsight. Id. at 12.
These arguments are not persuasive. As previously discussed above,
we are persuaded that the Examiner provides a reasonable basis and
identifies sufficient evidence in the record to evince why one of ordinary
skill would have combined the teachings of the cited references to arrive at
Appellants’ claimed invention and would have had a reasonable expectation
of success in doing so. Ans. 9 (explaining that one of ordinary skill would
have had reason to combine modified Murkute’s teachings with Ford’s
teachings because such a backwash step is “particularly suitable for long thin
fibres” and “allows the gas to penetrate the pores along the whole length of
each fibre”); Ford, col. 7,11. 23—43.
Appellants have not persuasively established that the Examiner has
not resorted to improper hindsight. See In re Kahn, 441 F.3d 977, 988 (Fed.
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Cir. 2006) (requiring “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”).
Appellants fail to direct us to adequate evidence or provide a
persuasive technical explanation to show why the Examiner’s articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error. Moreover, Appellants’ disagreement with the Examiner’s
reasoning for combining the references, without more, is insufficient to
establish reversible error. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420
(2007) (explaining that any need or problem known in the art can provide a
reason for combining the elements in the manner claimed); cf. also
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir.
2006) (“[M]ere statements of disagreement... as to the existence of factual
disputes do not amount to a developed argument.”).
Accordingly, we affirm the Examiner’s rejection of claim 26 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Murkute,
Nakatsuka, Ford, and Jennings.
Rejections 2, 3, 4, 5, and 6
In response to the Examiner’s Rejections 2 through 6, stated above,
Appellants do not present any additional substantive arguments. Rather,
Appellants essentially argue that these rejections should be reversed for the
same reasons presented above in response to Rejection 1 and claim 26,
contending that:
Each of these independent claims, as well as the claims that
depend from them, are thus patentable over the asserted
combination of Murkute, Nakatsuka, and Ford for at least
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the same reasons as independent claim 26, absent the
additional arguments regarding Jennings.
App. Br. 9.
Appellants’ argument in this regard are not persuasive for the same
reasons discussed above in affirming the Examiner’s Rejection 1.
Appellants’ argument (App. Br. 14) that “there is noprima facie case
of obviousness of claims 30 or 36 . . . because the asserted combination of
references fails to disclose or suggest each element of either of these claims”
is equally unpersuasive because Appellants’ naked assertion that the prior art
fails to teach or suggest a claim’s limitations is not an argument in support
of separate patentability sufficient to weigh in favor of non-obviousness. Cf.
In reLovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011); 37 C.F.R.
§ 41.37(c)(l)(iv).
Accordingly, we affirm the Examiner’s Rejections 2, 3, 4, 5, and 6 for
the reasons stated above.
DECISION/ORDER
The Examiner’s rejections of claims 7—10 and 26—36 are affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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