Ex Parte Davis

Patent Trial and Appeal Board

May 18, 2016

12617250 (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/617,250 11112/2009
32425 7590 05/20/2016
NORTON ROSE FULBRIGHT US LLP
98 SAN JACINTO BOULEVARD
SUITE 1100
AUSTIN, TX 78701-4255
FIRST NAMED INVENTOR
Thomas A. Davis
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
UTSE:l34US/10911612 4221
EXAMINER
FRIDAY, STEVEN A
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
05/20/2016 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):
aoipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS A. DA VIS 1
Appeal2014-009203
Application 12/617,250
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's maintained final rejection of claims 1, 2, and 4--18. We have
jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Solid ion-removal materials such as ion exchange resin are commonly
used for removal of dissolved ions from water. Spec. i-f 3. Salt solutions are
1 According to Appellant, the Real Party in Interest is The Board of Regents
of the University of Texas System. Br. 2.
Appeal2014-009203
Application 12/617,250
often used to regenerate ion exchange resins that have become saturated with
valuable or objectionable ions. Spec. i-f 4. After being used to regenerate the
ion exchange resins, the spent regenerant salt solution also contains the
valuable or objectionable ions. Spec. ,-r 4.
Appellant's claimed invention relates to a method for recovering ions
from a spent regenerant solution using electrodialysis. Spec., Abstract.
Claim I-the sole independent claim-is illustrative:
1. A process for recovery and reuse of ions from a spent
regenerant, comprising the steps of:
a) providing a solution of spent regenerant from
regeneration of a first solid ion removal material
with a monovalent salt, wherein the spent
regenerant comprises a mixture of monovalent ions
and multivalent ions; and
b) treating the spent regenerant with an electrodialysis
system having a selective membrane, wherein the
selective membrane has higher permeability for the
monovalent ions than for the multivalent ions;
thereby separating the spent regenerant into at least
a first stream and a second stream, the first stream
enriched in the monovalent ions and the second
stream enriched in the multivalent ions;
wherein the electrodialysis system has a plurality of
repeating cells, each cell comprising a single type
of selective membrane and further comprising a
non-selective membrane.
Appeal Brief filed February 10, 2014 ("Br."), 17.
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Application 12/617,250
REJECTIONS
The Examiner maintains the following grounds of rejection under
35 U.S.C. § 103(a):
Claims 1, 2, 4-7, and 9-14 stand rejected over Rawson et al. (US
7,132,052 B2, issued November 7, 2006) ("Rawson") and Davis (US
7,083,730 B2, issued August 1, 2006).2
Claims 6, 8, 15, and 16 stand rejected over Rawson, Davis, Tonelli et
al. (US 6,258,278 B 1, issued July 10, 2001) ("Tonelli"), and Bourke et al.
(US 2006/0011550 Al, published January 19, 2006) ("Bourke").
Claims 17 and 18 stand rejected over Rawson, Davis, Tonelli, Bourke,
and Davis (US 2006/0060532 Al, published March 23, 2006) ("Davis II").
DISCUSSION
Having reviewed the Examiner's decision in light of the arguments
advanced by ii ..ppellant in the ii ..ppeal Brief, \Ve are of the opinion that
Appellant has not identified reversible error in the Examiner's conclusion
that claims 1, 2, and 4-18 are rendered obvious by the applied prior art. We
add the following for emphasis. 3
2 While claim 3 is listed in the ground of rejection in both the body of the
Final Office Action entered June 12, 2013 ("Final Act.") and the Examiner's
Answer entered June 19, 2014 ("Ans."), the claim had been canceled earlier
(See Amendment filed May 5, 2013).
3 We refer to the Final Office Action (entered June 12, 2013), the Appeal
Brief (filed February 10, 2014), and the Answer (entered June 19, 2014).
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Application 12/617,250
Rejection of Claims l, 2, 4--7, and 9-14 as obvious over Rawson and Davis
Appellant argues claims 1, 2, 4--7, and 9-14 as a group on the basis of
claim 1, to which we limit our discussion. Br. 9-15.
Claim 1 is directed to a process for recovery of ions from a spent
regenerant for their reuse that includes treating the spent regenerant with an
electrodialysis system having a plurality of repeating cells, with each cell
comprising a single type of selective membrane and a non-selective
membrane. The Specification defines a "selective membrane" as "any
membrane that has a restriction of permeation of macromolecules or ions
across the membrane on the basis of molecular size, number of charges, or
physical configuration, but excludes the selectivity that permeates all anions
and no cations or the selectivity that permeates all cations and no anions."
Spec. i-f 11. The Specification defines a "non-selective membrane" as a
membrane that has essentially no selectivity of permeation on
the basis of molecular size; number of charges; or physical
configuration, and may include the selectivity that permeates all
anions and no cations or the selectivity that permeates all
cations and no anions, such as ordinary cation-exchange
membranes or anion-exchange membranes.
Spec. i-f 11. In other words, a selective membrane provides some restriction
to permeation through the membrane on the basis of molecular size, number
of charges, or physical configuration, but a membrane is not a selective
membrane simply because it provides some restriction to permeation on the
basis that species are positively charged (cations) or negatively charged
(anions).
The Examiner finds that Rawson discloses regeneration of a resin
material that had been used to remove divalent cations (Ca2+ and Mg2+) from
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Application 12/617,250
water, by washing the resin with a solution of concentrated NaCl, referred to
as brine. Final Act. 2; Rawson col. 2, 11. 28-51. The Examiner finds that
Rawson discloses that after this regeneration process, the solution that was
used to wash the resin-the spent brine (spent regenerant}--contains
monovalent ions (Na+ and Ci-) and divalent cations (Ca2+ and Mg2+)
recovered from the resin. Final Act. 2; Rawson col. 2, 11. 44--51. The
Examiner finds that Rawson discloses separating the monovalent ions from
the divalent ions in the spent brine using a nanofiltration membrane, and
further discloses that other devices can be used to perform this separation,
including an electrodialysis device, which the Examiner finds to be "a well-
known equivalent for performing the separation function." Final Act. 3;
Rawson col. 2, 1. 57---col. 3, 1. 4.
The Examiner acknowledges that Rawson does not disclose an
electrodialysis system that includes a selective membrane having a higher
permeability for monovalent ions than multivalent ions, and to remedy this
deficiency in Rawson, the Examiner relies on Davis' disclosure of an
electrodialysis system that includes repeating units or cells of ion exchange
membranes. Final Act. 3; Davis col. 13, 11. 7-21; col. 14, 11. 62---63. Davis
discloses that a preferred repeating cell arrangement includes an anion-
exchange membrane, a cation-exchange membrane, a univalent anion-
selective membrane, and a univalent cation-selective membrane. Davis col.
11, 11. 53-56; col. 13, 11. 7-16. Davis further discloses that electrodialysis
systems having repeating units of an anion-exchange membrane and a
univalent cation-selective membrane, or repeating units of a cation-exchange
membrane and a univalent anion-selective membrane, were known in the art.
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Application 12/617,250
Davis col. 14, 1. 63---col. 15, 1. 4, describing U.S. patents 3,933,610 and
5,376,250.
The Examiner concludes in essence that it would have been obvious
to one of ordinary skill in the art at the time of the invention to modify the
process disclosed in Rawson to use an electrodialysis system as disclosed in
Davis to separate monovalent ions from divalent ions in spent brine, and
further determines that it would have been within the ambit of one of
ordinary skill in the art to choose and arrange particular membranes in
repeating cells of the electrodialysis system so as to separate monovalent
ions from divalent ions in the spent brine (regenerant). Final Act. 4.
Appellant argues that every embodiment of the electrodialysis system
disclosed in Davis includes a repeating electrodialysis unit-which
Appellant indicates is comparable to a cell as recited in claim I-that
comprises two types of selective membranes, and contends that Davis does
not teach or suggest elimination of one type of selective membrane from the
electrodialysis unit (cell), as required by claim 1. Br. 11-13.
The entirety of Davis' disclosures, however, must be evaluated for
what they would have fairly suggested to one of ordinary skill in the art at
the time of the invention. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
197 6)("[T]he fact that a specific [embodiment] is taught to be preferred is
not controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered."); In re Fracalossi, 681 F .2d 792, 794
n.1 (CCPA 1982) (A prior art reference's disclosure is not limited to its
examples.); In re Boe, 355 F.2d 961, 965 (CCPA 1966) (All of the
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Application 12/617,250
disclosures in a prior art reference "must be evaluated for what they fairly
teach one of ordinary skill in the art.").
As discussed above, Davis discloses that a preferred electrodialysis
unit includes both a univalent anion-selective membrane and a univalent
cation-selective membrane, as well as an anion-exchange membrane and a
cation-exchange membrane. Davis col. 11, 11. 53-56; col. 13, 11. 7-16. In
view of Davis' disclosure that this arrangement is preferred, and not
required, one of ordinary skill in the art reasonably would have inferred that
an electrodialysis unit could contain either type of univalent selective
membrane, as recited in claim 1, and need not necessarily contain both
types. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (an
obviousness analysis "need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for [an examiner] can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.''); In re Preda, 401F.2d825, 826 (CCPA 1968) ("[I]t
is proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.")
Moreover, as also discussed above, Davis discloses that
electrodialysis systems were known in the art that included repeating units of
either an anion-exchange membrane and a univalent cation-selective
membrane, or a cation-exchange membrane and a univalent anion-selective
membrane, corresponding to a plurality of repeating cells comprising a
single type of selective membrane-the univalent anion- or cation-selective
membranes-and a non-selective membrane-the anion- or cation-exchange
membranes-as recited in claim 1. Davis col. 14, 1. 63---col. 15, 1. 4.
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Application 12/617,250
Accordingly, we agree with the Examiner that the combined disclosures of
Rawson and Davis reasonably would have led one of ordinary skill in the art
at the time of the invention, through no more than ordinary skill and
creativity, to modify the process disclosed in Rawson for separating
monovalent ions from divalent ions in spent brine by using an electrodialysis
system as disclosed in Davis having a plurality of repeating cells, with each
cell comprising a single type of selective membrane and a non-selective
membrane, as recited in claim 1. Appellant's argument is therefore
unpersuasive of reversible error.
Appellant argues that Davis specifically, repeatedly, and exclusively
discloses the use of pairs of selective membranes together, which "would
tend to steer one of ordinary skill in the art away from using only one type of
selective membrane." Br. 15. However, as discussed above, Davis discloses
that a preferred repeating cell arrangement includes both a univalent anion-
selective membrane and a univalent cation-selective membrane, and Davis
thus does not disclose that this arrangement is a necessary feature of the
invention. Davis col. 11, 11. 53-56; col. 13, 11. 7-16. Moreover, Davis does
not criticize, discredit, or otherwise discourage utilizing only a single type of
selective membrane in a repeating cell, and actually discloses that such an
arrangement is conventional. Davis col. 14, 1. 63---col. 15, 1. 4. Therefore,
we find that Davis does not teach away from a single type of selective
membrane as recited in claim 1. In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004); In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994).
Appellant further argues that electrodialysis is not a well-known
equivalent of nanofiltration as the Examiner contends because the two
separation techniques operate using different principles. Br. 9-10.
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Application 12/617,250
However, Appellant does not provide any explanation or evidence
establishing that both techniques could not be used to separate monovalent
ions from divalent ions in a spent brine regenerant, regardless of their
principles of operation, and this argument is therefore lacking in persuasive
merit. Br. 9-15.
Appellant further argues that Rawson's process includes steps that
would be extraneous if electrodialysis were incorporated into the process.
Br. 10. However, Appellant does not demonstrate that modification of
Rawson's process as proposed by the Examiner to incorporate
electrodialysis as disclosed in Davis would not result in a process that could
separate monovalent ions from divalent ions in a spent brine regenerant,
even if the supposedly extraneous steps were included in the modified
process. Br. 9-15. Appellant's argument is therefore unpersuasive of
reversible error.
Appellant also argues that Rawson does not provide an enabling
disclosure of an electrodialysis system. Br. 9. However, this argument is
not persuasive because "a non-enabling reference may qualify as prior art for
the purpose of determining obviousness under§ 103." Symbol Techs., Inc.
v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991). Moreover,
Appellant's argument is unsupported by any evidence establishing that one
of ordinary skill in the art would not have arrived at the subject matter
recited in claim 1 without undue experimentation based on the disclosures of
Rawson and Davis coupled with information known in the art. Br. 9-15; In
re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) (A prior art
printed publication, like a prior art patent, "is presumptively enabling
barring any showing to the contrary by a patent applicant or patentee."); In
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re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013) ("[A]n applicant must
generally do more than state an unsupported belief that a reference is not
enabling."); In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (explaining
that undue experimentation is determined based on both the nature of the
invention and the state of the art.)
Appellant also argues that even if Rawson did teach electrodialysis,
"the Office does not explain why one of ordinary skill in the art would have
recognized the source of the problem, i.e., recycling spent regenerant from
salt-regeneration of solid ion removal material such as ion exchange resins."
Br. 15. However, as the Examiner points out (Ans. 5), Rawson explicitly
recognizes the problem of recycling spent regenerant after regeneration of a
resin material used for removal of divalent cations, and discloses that
electrodialysis can be used as part of the solution to this problem (Rawson
col. 1, 11. 28-51; col. 1, 1. 57---col. 2, 1. 4). Accordingly, we agree with the
Examiner that "the present case is not one where a patentable invention lies
in the discovery of the problem because, here, it clearly had been recognized
by the prior art at the time the instant invention was made." Ans. 5.
Appellant's argument therefore lacks persuasive merit.
Under these circumstances, it cannot be said that Appellant has
identified reversible error in the Examiner's determination that the
preponderance of the evidence weighs in favor of obviousness of the subject
matter of claims 1-7 and 9-14 within the meaning of 35 U.S.C. § 103(a). In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Therefore, we sustain the
rejection of these claims under§ 103(a).
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Application 12/617,250
Rejections of Claims 6, 8, 15, 16, 17, and 18
In addressing the separate rejections of claims 6, 8, 15, and 16 and of
claims 17 and 18, Appellant relies on the arguments presented for claim 1.
Br. 16. Because we are not persuaded of reversible error in the Examiner's
obviousness rejection of claim 1, we are likewise not persuaded of reversible
error in the Examiner's decision rejecting claims 6, 8, 15, 16, 17, and 18,
and we therefore sustain these rejections.
DECISION
The Examiner's rejections of claims 1, 2, and 4--18 under 35 U.S.C.
§ 103(a) are 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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