Ex Parte Bohling et al

Board of Patent Appeals and Interferences

Jul 30, 2003

09873806 (B.P.A.I. Jul. 30, 2003)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

Paper No. 16

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAMES CHARLES BOHLING
and
ERIC GUSTAVE LUNDQUIST
__________

Appeal No. 2003-0715
Application No. 09/873,806
___________

ON BRIEF
___________

Before WARREN, DELMENDO, and POTEATE, Administrative Patent
Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2002) from the examiner’s final rejection of claims 1 through
10 (final Office action mailed Mar. 19, 2002, paper 9) in the
above-identified application. Claim 11, which is the only other

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pending claim, remains withdrawn from further consideration
pursuant to 37 CFR § 1.142(b) (1959).1
The subject matter on appeal relates to a process for
cleaning weak acid cation exchange resins. Regarding their
invention, the appellants allege (specification, page 4, lines
9-12): “We have found that selected steam treatment at a
specified point in the processing of the weak acid cation
exchange resin is critical to providing a final weak acid cation
exchange resin useful as a component in potable water treatment
systems...” Further details of this appealed subject matter are
recited in representative claims 1 and 7 reproduced below:
1. A process for cleaning weak acid cation
exchange resins comprising:

(a) converting a weak acid cation exchange
resin, substantially in neutralized salt
form, to a hydrogen-form weak acid cation
exchange resin by regenerating with an acid
regenerant; and

(b) contacting the hydrogen-form weak acid
cation exchange resin with 1 to 15 kilograms
of steam per kilogram of hydrogen-form weak
acid cation exchange resin at a resin bed
temperature of 100 to 180°C for a period of
at least one hour.

7. The process of claim 1 further comprising
contacting the hydrogen-form weak acid cation exchange

1 The appellants’ statement in the appeal brief (filed Aug.
5, 2002, paper 13, p. 1) regarding the status of claims is
erroneous.

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resin from step (b) with 0.4 to 5 grams, per kilogram
of hydrogen-form weak acid cation exchange resin, of
an antimicrobial agent selected from one or more of
peroxides, (C2-C3)alcohols and inorganic chloride
salts.

The examiner relies on the following prior art references
as evidence of unpatentability:
Nagai et al. 4,245,053 Jan. 13, 1981
(Nagai)

Ballard et al. 5,900,146 May 04, 1999
(Ballard)

Kubota et al. 5,954,965 Sep. 21, 1999
(Kubota)

Claims 1 through 6, 9, and 10 on appeal stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Ballard and Nagai.
(Examiner’s answer mailed Sep. 4, 2002, paper 14, pages 5-7.)
Correspondingly, claims 7 and 8 on appeal stand rejected under
35 U.S.C. § 103(a) as unpatentable over Ballard, Nagai, and
Kubota. (Id. at page 7.)
We affirm these rejections.2

2 The appellants submit that “[c]laims 1-10 stand or fall
together.” (Appeal brief, p. 3.) We interpret this statement
to mean that the claims in each of the two grounds of rejection
stand or fall together; that is, claims 1-6, 9, and 10 stand or
fall together and claims 7 and 8 stand or fall together.

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Claims 1-6, 9, and 10: Ballard & Nagai
Ballard describes a process for activating and cleaning a
weak acid cation exchange resin beads comprising:
(a) hydrolyzing the resin beads; and
(b) cleaning the beads by: (i) washing including treatment
with an alcohol; (ii) steam stripping; or (iii) steam
stripping porogens from the beads and then washing
them to remove any free solid particulate material.
(Column 1, lines 7-18; column 6, lines 12-39.) In Example 2,
Ballard teaches converting a neutralized salt form of the resin
(beads containing sodium acrylate functional groups) to the
hydrogen-form with hydrochloric acid, which is described in the
present specification as an “acid regenerant.” (Specification,
page 5, line 27 to page 7, line 16.)
Similarly, Nagai describes a process for cleaning and
treating weak acid cation exchange resins comprising:
(a) cleaning the beads with hot water to remove suspension
stabilizer, unreacted monomer, and pore forming agent;
and

Accordingly, for the first ground of rejection, we confine our
discussion to claim 1; for the second ground of rejection, we
confine our discussion to claim 7. 37 CFR § 1.192(c)(7)(1995).
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(b) hydrolyzing the beads by treating the beads with a
hydrolysis agent such as hydrochloric acid.
(Column 5, lines 7-32.) Nagai also teaches that the “loaded”
beads (i.e., the spent or “exhausted” beads), which the examiner
found to be the same as the appellants’ starting resin
“substantially in neutralized salt form” recited in step (a) of
appealed claim 1, may be regenerated for re-use by treatment
with a regenerating agent such as hydrochloric acid. (Column 6,
lines 62-66.) Nagai further teaches that “[t]he resin can be
used repeatedly after being given an ordinary pre-treatment such
as washing with alkali, water, acid and water.” (Column 6,
lines 66-68.)
Given these teachings in the prior art, we share the
examiner’s view (answer, page 6) that the subject matter of
appealed claim 1 would have been obvious to one of ordinary
skill in the art within the meaning of 35 U.S.C. § 103.
Specifically, we agree with the examiner that one of ordinary
skill in the art would have been led, prima facie, to determine
(by mere routine experimentation) the optimum relative amounts,
conditions, and purification times for the steam treatment in
either Ballard or Nagai, thus arriving at a process encompassed
by appealed claim 1. In re Peterson, 315 F.3d 1325, 1330, 65
USPQ2d 1379, 1382 (Fed. Cir. 2003)(“The normal desire of
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scientists or artisans to improve upon what is generally known
provides the motivation to determine where in a disclosed set of
percentage ranges is the optimum combination of percentages.”);
In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA
1980)(“[D]iscovery of an optimum value of a result effective
variable in a known process is ordinarily within the skill of
the art.”); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235
(CCPA 1955)(“[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.”).
The appellants argue that “[n]o hot water treatment of the
hydrolyzed weak acid resin is taught or suggested” in Nagai.
(Appeal brief, page 4.) We disagree. As pointed out by the
examiner, it is the regenerated resin (Nagai’s column 6, lines
62-66) which is considered to be the hydrogen-form weak acid
cation exchange resin. Once regenerated, one of ordinary skill
in the art would have found it prima facie obvious to pre-treat
the resin (i.e., clean the resin prior to actual use in a water
purification process) with water (e.g., steam) as suggested in
the references.
Relying on the specification description at page 8, lines
1-7, the appellants argue: (appeal brief, page 5)
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[I]f the treatment is conducted below about 100°C or
the contact time is less than 1 hour, the quality of
the final resin as measured by the efficiency of
trihalomethane removal by mixed-bed systems containing
the weak acid cation exchange resin is unsatisfactory,
e.g., the resin contains undesirable residual
extractable materials that contribute odor.

This argument is unpersuasive. The appellants have failed
to identify the factual basis (i.e., objective evidence) to
support this allegation. In this regard, it is well settled
that mere lawyer’s arguments and conclusory statements, which
are unsupported by factual evidence, are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d
1362, 1365 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705,
222 USPQ 191, 196 (Fed. Cir. 1984); In re Wood, 582 F.2d 638,
642, 199 USPQ 137, 140 (CCPA 1978); In re Lindner, 457 F.2d 506,
508-09, 173 USPQ 356, 358 (CCPA 1972).
Referring to the data summarized in Table 1 and the
description at page 9, line 26 to page 11, line 7 of the
specification, the appellants allege an “unexpected improvement
(3-8% absolute difference in ‘chloroform removal efficiency’)
for resin treated by the method of the present invention...”
(Appeal brief, page 5.) We do not find the proffered evidence
to be sufficient for the following reasons.
First, the appellants have not compared the claimed
invention against the closest prior art, which is either Ballard
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or Nagai. That is, none of the comparative resins (Resins 1-3)
are representative of the relied upon prior art in which the
neutralized salt form of the resin is hydrolyzed with
hydrochloric acid and subjected to steam or hot water treatment.
In re Baxter Travenol Labs, 952 F.2d 388, 392, 21 USPQ 1281,
1285 (Fed. Cir. 1991)(“[R]esults must be shown to be unexpected
compared with the closest prior art.”).
Second, the appellants have failed to identify the factual
basis for asserting that a 3-8% absolute difference in
chloroform removal efficiency would have been considered
statistically significant and unexpected by one of ordinary
skill in the art. In re D’Ancicco, 439 F.2d 1244, 1248, 169
USPQ 303, 306 (CCPA 1971)(holding that the appellants failed to
rebut a prima facie case of obviousness where the asserted
differences between the claimed foams and prior art foams were
not shown to be significant); In re Freeman, 474 F.2d 1318,
1324, 177 USPQ 139, 143 (CCPA 1973)(explaining that in order for
a showing of unexpected results to be probative evidence of
nonobviousness, an applicant must establish (1) that there
actually is a difference between the results obtained through
the claimed invention and those of the prior art and (2) that
the difference actually obtained would not have been expected by
one skilled in the art at the time of invention).
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Third, the relied upon evidence is not commensurate in
scope with the claims. For example, the relied upon example
(Resin 4) is limited to a specific crosslinked polyacrylonitrile
in sodium form that is later converted to an acid form with
sulfuric acid and then treated with steam under specific
conditions. By contrast, appealed claim 1 is significantly
broader in scope. In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d
1056, 1058 (Fed. Cir. 1990)(“‘[O]bjective evidence of
nonobviousness must be commensurate in scope with the
claims.’”)(quoting In re Lindner, 457 F.2d 506, 508, 173 USPQ
356, 358 (CCPA 1972)); In re Dill, 604 F.2d 1356, 1361, 202 USPQ
805, 808 (CCPA 1979) (“The evidence presented to rebut a prima
facie case of obviousness must be commensurate in scope with the
claims to which it pertains.”).
The appellants also refer (appeal brief, page 6) to Tables
1-2 of the specification, but we find this evidence equally
unavailing for the same reasons.
For these reasons, we uphold the examiner’s rejection on
this ground.
Claims 7 & 8: Ballard, Nagai, & Kubota
As we discussed above, Ballard teaches that the beads may
be cleaned by steam stripping porogens from the beads followed
by washing, which includes treatment with an alcohol. (Column
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6, lines 29-42.) We therefore determine that one of ordinary
skill in the art would have been led, prima facie, to further
treat the optimally steam-stripped beads of Ballard with a
washing sequence that includes an optimum alcohol treatment,
thus arriving at a process encompassed by appealed claim 7.
Regarding the examiner’s reasoning, the appellants’
principal argument is that Kubota is “directed to strong base
anion exchange resins (not weak acid cation exchange resins) and
disclose ‘steam sterilization’ (not antimicrobial agents) for
the anion resin” and that therefore “there is no incentive for
one of ordinary skill in the art to further treat a different
type of resin (i.e., the weak acid cation exchange resins that
are the subject of [the] [a]ppellants’ invention) with
antimicrobial agents, such as peroxides and inorganic chloride
salts...” (Appeal brief, page 8.) We disagree.
The examiner has relied on Kubota for its teaching that
alcohol may be used to sterilize ion exchange resins. Although
Kubota’s invention focuses on strong basic anion exchange
resins, it does not change the fact that alcohol is a
sterilizing agent. When applied to weak acid cation exchange
resins, one of ordinary skill in the art would have reasonably
expected that an alcohol would retain its sterilizing
properties. Moreover, it is the collective teachings of the
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prior art that support the examiner’s determination of
obviousness. In re Keller, 642 F.2d 413, 426, 208 USPQ 871, 882
(CCPA 1981)(“[O]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based
on combinations of references.”).
For these reasons, we uphold this ground of rejection as
well.
Summary
In summary, we affirm the examiner’s 35 U.S.C. § 103(a)
rejections of (i) appealed claims 1 through 6, 9, and 10 as
unpatentable over Ballard and Nagai; and (ii) appealed claims 7
and 8 as unpatentable over Ballard, Nagai, and Kubota.
The decision of the examiner is affirmed.

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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

Charles F. Warren )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Romulo H. Delmendo )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Linda R. Poteate )
Administrative Patent Judge )

RHD/kis
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