Ex Parte Gull¿ et al

Patent Trial and Appeal Board

Sep 6, 2016

13005651 (P.T.A.B. Sep. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/005,651 01/13/2011 Andrea F. Gulll
20311 7590 09/08/2016
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
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.
267-127 2981
EXAMINER
FRIDAY, STEVEN A
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
09/08/2016 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):
info@lmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREA F. GULLA and MARIACHIARA BENEDETTO
Appeal2015-004429
Application 13/005,651
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 14--19 and 21-25. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2015-004429
Application 13/005,651
Independent claims 14 and 21 read (emphasis added to highlight
disputed limitations):
14. Process of abatement of the Total Organic Content
in an aqueous solution containing one or more organic species,
said one or more organic species having at least one carbon
atom involved in a conjugated unsaturated bond, optionally
aromatic, said carbon atom having an electron-attracting
substituent, the process comprising the steps of:
subjecting the aqueous solution to a reduction treatment
at the cathode of a first electrochemical cell; and thereafter
subjecting the treated aqueous solution to an
electrochemical oxidation treatment, wherein said reduction
step is carried out at a current density lower than 1 kA/m2 and
said oxidation step is carried out at current density comprised
between 1 and 3 kA/m2.
21. Process of abatement of the Total Organic Content
in an aqueous solution containing one or more organic species,
said one or more organic species having at least one carbon
atom involved in a conjugated unsaturated bond, optionally
aromatic, said carbon atom having an electron-attracting
substituent, the process comprising the steps of subjecting the
aqueous solution to:
a reduction treatment at the cathode of an undivided cell
to obtain a pre-reduced organic species; and
a simultaneous oxidation treatment of said pre-reduced
organic species at the anode of said undivided cell,
wherein said reduction step and simultaneous oxidation step is
carried out at a current density lower than 1 kA/m2.
The Examiner maintains the following rejections:
(a) claims 14, 16 and 18 rejected under 35 U.S.C. § 103(a) as
unpatentable over Cong (Cong, Y., Wu, Z., Tan, T. "Dechlorination by
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combined electrochemical reduction and oxidation." May 2005. Journal of
Zhejiang University SCIENCE B. Vol. 6, Issue 6. pp. 563-568) and
Comninellis (Comninellis, Ch. and Nerini, A. "Anodic oxidation of phenol
in the presence of NaCl for wastewater treatment" Journal of Applied
Electrochemistry. Jan. 1995. Volume 25, Issue 1. pp. 23-28),
(b) claims 21, 22, and 24 rejected under 35 U.S.C. § 103(a) as
unpatentable over Cong and Van Duin (US 4,443,309, issued April 17,
1984),
(c) claims 15 and 17 rejected under 35 U.S.C. § 103(a) as
unpatentable over Cong, Comninellis and Moeglich (US 4, 131,526, issued
December 26, 1978),
(d) claim 19 rejected under 35 U.S.C. § 103(a) as unpatentable over
Cong, Comninellis and Rajeshwar (Rajeshwar, K., Ibanez, J. Environmental
Electrochemistry: Fundamentals and Applications in Pollution Abatement.
1997 (no month). Academic Press, Inc. pp. 363-378),
(e) claim 23 rejected under 35 U.S.C. § 103(a) as unpatentable over
Cong, Van Duin and Rideout (US 4,260,463, issued April 7, 1981), and
(f) claim 25 rejected under 35 U.S.C. § 103(a) as unpatentable over
Cong, Van Duin and Rajeshwar.
For Rejection (a), Appellants do not argue any claim separate from the
other. See Appeal Brief, generally. For Rejection (b ), Appellants present
arguments for independent claim 21 but do not present separate arguments
for dependent claims 22 and 24. Id. In addressing Rejections (c}-(t),
Appellants rely on the arguments presented when discussing the independent
claims 14 and 21, and do not address or further distinguish the additionally
cited secondary references based on the additional limitations of the
respectively rejected claims. Accordingly, we select independent claims 14
and 21 as representative of the claimed subject matter before us on appeal
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Application 13/005,651
for the respective Rejections (a) and (b). Claims 15-19 and 22-25 stand or
fall with their respective independent claim.
ANALYSIS
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we determine that a preponderance of the evidence
supports the Examiner's § 103 rejections of representative independent
claims 14 and 21. Accordingly, we will sustain all of the Examiner's
rejections for essentially those reasons expressed in the Answer and we add
the following for emphasis.
Rejection (a)
Independent claim 14 requires sequential reduction and oxidation
treatment of an aqueous solution containing one or more organic species
where the oxidation treatment is carried out at current density comprised
between 1 and 3 kA/m2.
The Examiner found Cong discloses a process of abatement of the
hazardous organic material chlorophenol from wastewater comprising
reduction of chlorophenol to phenol and subsequent oxidation of phenol to
low toxicity organic acids and/or C02 and H20. Final Act. 3; Cong 563-
565, 567. The Examiner found Cong does not teach that the oxidation step
is carried out at a current density of between 1 and 3 kA/m2 as required by
the subject matter of claim 14. Final Act. 4. The Examiner found
Comninellis teaches a process of removing phenol from wastewater through
anodic oxidation of phenol at a current density range of 0.5-3 kA/m2, which
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overlaps the current density range for the claimed oxidation step. 1 Final Act.
4; Cong Abstract; Comninellis Abstract, 24, 26. The Examiner determined
it would have been obvious to a person of ordinary skill in the art to modify
the process taught by Cong by applying the oxidation current density range
of Comninellis to Cong's oxidation step because Comninellis describes it as
technically reasonable for oxidation of phenols. Final Act. 4; Comninellis
26.
Appellants principally argue Comninellis does not disclose a
reduction step before oxidation, the problem with electrode fouling
associated with oxidation of the species to be abated before reduction is
completed, or suggests the combination of reduction and oxidation at a
specific current density play any role in the treatment of wastewater. App.
Br. 5. Thus, Appellants argue, absent impermissible hindsight, the
disclosure of Comninellis would discourage one skilled in the art from an
approach involving the inclusion of the oxidation step at Comninellis'
described current density because Comninellis provides no discussion of
such combination of reduction and oxidation. App. Br. 6.
We are unpersuaded by these arguments. As noted by the Examiner,
Cong was relied upon to teach the combined use of the reduction and
oxidation steps and Comninellis was cited to teach that it was known to
operate the oxidation step of phenol at the claimed current density levels.
Ans. 10. Appellants' arguments do not address the Examiner's reasons for
combining the teachings of the cited art. It is well established that
1 We note that Appellants do not dispute the Examiners finding that
Comninellis' current density of 0.05-3 A/cm2, as described in page 24,
equals 0.5-3 kA/m2.
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nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re
Keller, 642 F.2d 413, 425-26 (CCPA 1981) ("The test for obviousness ... is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art."). Thus, Appellants' arguments do not
point to reversible error in the Examiner's determination of obviousness.
While Appellants argue the process taught by Cong is impractical
from an industrial standpoint because the current density for the reduction
step of 0.012 kA/m2 is low, the Examiner aptly points out that Appellants'
claimed reduction step at a current density lower than 1 kA/m2 encompasses
Cong's disclosed reduction step. App. Br. 5; Ans. 9. Thus, Appellants have
not adequately distinguished the claimed reduction step from the one taught
by Cong.
Appellants further argue Examples 1-3 and Comparative Examples 1
and 2 in the Specification demonstrate surprising results when the reduction
step is carried at a current density not higher than 1 kA/m2 because no
fouling of the anodic surface was observed and the total content of carbon
was significantly lower than the content detected in the original waste. App.
Br. 7-8.
We are also unpersuaded by this evidence. Appellants' Examples 1-3
conduct the reduction step only at a current density of 0.6 kA/m2.
Appellants have not adequately explained why this single current density is
representative of the entire scope of current densities encompassed by the
claimed range of lower than 1 kA/m2 recited in claim 14. That is,
Appellants' showing is not commensurate in scope with the subject matter of
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claim 14. In addition, as noted by the Examiner, Appellants' proferred
showing in not against the closest prior art, Cong in this case. Ans. 11-12.
Accordingly, we affirm the Examiner's prior art rejections of claims
14--19 under 35 U.S.C. § 103(a) (Rejections (a), (c) and (d)) for the reasons
presented by the Examiner and given above.
Rejection (b)
Independent claim 21 requires that the reduction and oxidation steps
be conducted simultaneously at a current density lower than 1 kA/m2.
We refer to the Examiner's Final Action for a statement of the
rejection. Final Act. 7-8.
Appellants principally argue that one of ordinary skill in the art
reading Cong in its entirety would be led to believe that electrochemical
reduction followed by electrochemical oxidation is an effective and feasible
method and, absent impermissible hindsight, there would have been no
motivation to use Van Duin's simultaneous technique. App. Br. 10.
Appellants further argue Cong does not require the presence of micelle-
forming material and also does not provide guidance as to the current
density applied to the disclosed oxidation step while Van Duin's method is
carried out with lower energy consumption due to the presence of micelle-
forming material. App. Br. 10-11. Thus, according to Appellants, there is
no clear guidance to determine if it is feasible to operate Cong's method of
abatement using Van Duin's simultaneous reduction/oxidation technique to
obtain predictable results. Id.
We are unpersuaded by Appellants' arguments. The Examiner found
Cong discloses a process to abate chlorophenol (halogenated hydrocarbon)
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from wastewater comprising subjecting the wastewater to an electrochemical
reduction treatment and subsequently to an oxidation treatment where at
least the reduction treatment is carried out at a current density lower than 1
kA/m2. Final Act. 7-8; Cong 563-565, 567. The Examiner found Van Duin
teaches the use of simultaneous electrochemical reduction/ oxidation to treat
toxic chemical wastes including halogenated hydrocarbons as a known
technique for abatement of halogenated hydrocarbons. Final Act. 8; Van
Duin Abstract, col. 4, 11. 6-11. In fact, Van Duin teaches the use of divided
and undivided cells as known techniques for abatement of halogenated
hydrocarbons. Van Duin Examples 1--4. Thus, the Examiner provided a
reasonable basis why one skilled in the art would have modified the
abatement process of Cong by using the undivided cell taught by Van Duin
so as to allow simultaneous reduction/oxidation treatment of the wastewater.
Final Act. 8. That is, the Examiner determined that one of ordinary skill in
the art would have been led to the known technique of Van Duin with the
reasonable expectation of successfully abating halogenated hydrocarbons
from wastewater. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007) ("[W]hen a patent claims a structure [or method] already known in
the prior art that is altered by the mere substitution of one element [or step]
for another known in the field, the combination must do more than yield a
predictable result." (citing United States v. Adams, 383 U.S. 39, 50-51
(1966)); In re Fout, 675 F.2d 297, 301 (CCPA 1982) ("Express suggestion
to substitute one equivalent for another need not be present to render such
substitution obvious."); In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997)
("Because the applicants merely substituted one element known in the art for
a known equivalent, this court affirms [the rejection for obviousness].").
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Thus, on this record, Appellants have not adequately explained why one
skilled in the art would not have been capable of adapting the method of
Cong to use Van Duin' s simultaneous reduction/ oxidation treatment for
Cong's process of wastewater treatment.
While Appellants argue Van Duin' s method of abatement carries out
the electrolysis in the presence of a micelle-forming material, we note the
claim is written using the open transitional language "comprising" and, thus,
does not exclude the use micelle-forming material as part of the abatement
process. App. Br. 10; Van Duin Examples 3, 4, col. 1, 11. 30-35.
Accordingly, we affirm the Examiner's prior art rejections of claims
21-25 under 35 U.S.C. § 103(a) (Rejections (b), (e) and (f)) for the reasons
presented by the Examiner and given above.
ORDER
The Examiner's prior art rejections of claims 14--19 and 21-25 are
affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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