Ex Parte IkunoDownload PDFPatent Trial and Appeal BoardMar 29, 201613138248 (P.T.A.B. Mar. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/138,248 07/22/2011 32628 7590 03/31/2016 KANESAKA BERNER AND PARTNERS LLP 2318 Mill Road Suite 1400 ALEXANDRIA, VA 22314-2848 FIRST NAMED INVENTOR Nozomu Ikuno 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. SHI-052 7958 EXAMINER DRODGE, JOSEPH W ART UNIT PAPER NUMBER 1778 NOTIFICATION DATE DELIVERY MODE 03/31/2016 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): office@uspatentagents.com docketing@ipfirm.com pair_lhhb@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NOZOMU IKUNO Appeal2014-007630 Application 13/138,248 Technology Center 1700 Before ROMULO H. DELMENDO, JULIA HEANEY, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant 1 appeals from the Examiner's final rejection of claims 2-5, 7 and 8. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b ). For the reasons set forth below, we AFFIRM. 1 Appellant identifies Kurita Water Industries Ltd. as the real party in interest. App. Br. 2. Appeal2014-007630 Application 13/13 8,248 The Claimed Invention Appellant's disclosure relates to a method for treating organic-matter- containing water by using a slime-controlling agent and further comprising an activated-carbon-treating step and a reverse-osmosis-membrane- separation step. Amended Spec. if 1; App. Br. 2. Claims 7 and 8 are representative of the claims on appeal and are reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 10-11): 7. A method for treating organic-matter-containing water, compnsmg: a slime-controlling-agent-adding step of adding a slime- controlling agent comprising a combined chlorine agent produced from a chlorine-based oxidizer and a sulfamic acid compound to organic-matter-containing water in a concentration of the combined chlorine between 1 and 50 mg-Cb/L; an activated-carbon-treating step of treating with activated carbon the organic-matter-containing water having undergone the slime-controlling-agent-adding step to inhibit proliferation of viable cells in an activated carbon device; and a reverse-osmosis-membrane-separation step of passing the organic-matter-contammg water having undergone the activated-carbon-treating step through a reverse osmosis membrane separation device, to prevent biofouling and a decrease in flux due to an attachment of organic matter onto a membrane surface in a reverse osmosis membrane separation device[]. 8. The method for treating organic-matter-containing water according to Claim 7, further comprising: a hardness-component-removing step of decreasing hardness by passing the organic-matter-containing water having undergone the activated-carbon-treating step through a cation- exchange device; a scale inhibitor-adding step of adding five-fold excess by weight or more of a scale inhibitor per calcium ion contained in the organic-matter-containing water having undergone the hardness-component-removing step to the organic-matter- 2 Appeal2014-007630 Application 13/13 8,248 containing water having undergone the hardness component- removing step; and a pH-adjusting step of adjusting pH of the organic- matter-containing water to be injected into the reverse osmosis membrane separation device of a later step to 9.5 or more by adding an alkali to the organic-matter-containing water before, after, or at the same time as the scale inhibitor-adding step. The References The Examiner relies on the following prior art in rejecting the claims on appeal: Owen et al. (hereinafter "Owen") Arba et al. (hereinafter "Arba") Al-Samadi Husain et al. (hereinafter "Husain") Hughes us 3,170,883 Feb.23, 1965 US 6,398,965 B 1 June 4, 2002 US 6,461,514 Bl Oct. 8, 2002 US 2003/0057155 Al Mar. 27, 2003 US 7, 186,344 B2 Mar. 6, 2007 3 Appeal2014-007630 Application 13/13 8,248 The Rejections On appeal, the Examiner maintains2 the following rejections: 1. Claims 2-5, 7 and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hughes in view of Owen and Arba. 3 2. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Hughes in view of Owen and Arba, as applied to claim 7, 4 and in further view of Al-Samadi. OPINION 1. Rejection of Claims 2-5, 7 and 8 under 35 US.C. § 103 (a) over Hughes in view of Owen and Arba Appellant argues claims 2-5, 7 and 8 as a group. We, therefore, select claim 7 as representative of this group, and the remaining claims stand or fall with claim 7. 37 C.F.R. § 41.37(c)(l)(iv) (2013). The Examiner finds that the combination of Hughes, Owen, and Arba teaches all the limitations of claim 7. Ans. 2-5. The Examiner finds Hughes discloses a "method for treating water including waste water, drinking water and water for cooling towers." Ans. 2 (citing Hughes, col. 1, 11. 22--40, col. 8, 11. 4--28, col. 10, 11. 52---64). The 2 The Examiner has withdrawn the rejection of claims 2-5, 7 and 8 on the ground of non-statutory obviousness-type double patenting as unpatentable over claims 1, 4 and 9 of co-pending Application No. 12/733,397 due to the terminal disclaimer filed February 7, 2014. Ans. 2. 3 The Husain reference has been omitted from the summary statements of rejection because it is no longer relied upon by the Examiner as part of the prior art combination for this rejection. Ans. 2. 4 We have corrected the Examiner's summary statement of the rejection at page 5 of the Answer to reflect Appellant's cancellation of claims 6 and 9. App. Br. 3. 4 Appeal2014-007630 Application 13/13 8,248 Examiner further finds that Hughes' disclosed method "includes [an] initial sterilization treatment by adding chlorine-based oxidizers in a pre-treatment unit, followed by treatment in a block filter that may comprise adsorbents comprising forms of carbon and activated charcoal to remove hardness ions, microbiological contaminant[ s ], particulate contaminants and residual chlorine-containing oxidizers." Id. at 2-3 (citing Hughes, col. 6, 11. 4--19, col. 6, 11. 20-37, col. 7, 11. 15-22, col. 7, 11. 5-21 ). The Examiner finds that although Hughes teaches an initial sterilization treatment comprising chlorine-based oxidizers, Hughes does not teach the specific sterilizing composition comprising both a chlorine-based oxidizer and a sulfamic acid compound, as recited in claim 7. Ans. 3. The Examiner, however, relies on Owen for teaching that limitation. Id. In particular, the Examiner finds Owen discloses "a sterilizing composition comprising the claimed chlorine-based oxidizer and sulfamic acid compounds utilized to treat water, especially for swimming pool and cooling tower applications to control bacteria and slime.'' Id. (citing Owen, col. 1, 11. 22--43). The Examiner finds that the combination of Hughes and Owen teaches the majority of claim 7's limitations, but that it does not specifically teach the use of an "activated type carbon," as claimed. Ans. 3. The Examiner, however, relies on Arba for teaching that limitation. Id. In particular, the Examiner finds that "Arba teaches [the] initial addition of chlorine-containing sterilization agents followed by passage of a water feedstream through [an] activated carbon filter and feedstream, water softener and downstream reverse osmosis unit." Id. at 4 (citing Arba, Example 1, cols. 13, 14). Additionally, the Examiner finds that Arba "suggests to include or substitute activated carbon for the carbon/activated 5 Appeal2014-007630 Application 13/13 8,248 charcoal disclosed by Hughes, since such form of carbon is effective for substantially removing the residual chlorine, such that the downstream reverse osmosis membrane is not damaged or degraded." Id. at 3 (citing Arba col. 2, 11. 40-47, col. 7, 11. 54--56, col. 7, 1. 67---col. 8, 1. 3). Appellant argues that one of ordinary skill in the art would not have been led to "consider adding sulfamic acid compounds" with the chlorine addition for sterilization because Owen's teaching regarding sulfamic acid as maintaining an effective chlorine residual in the water for lengthy treatment periods contradicts Arba's teaching regarding the intended quick chlorine removal due to the risk of damage to the downstream membranes. App. Br. 6-7. We are not persuaded by Appellant's argument. First, based on the record before us, we find that the Examiner's analysis and findings regarding the teachings of the cited prior art references are well-supported by the record and based upon sound technical reasoning. Indeed, as the Examiner found (Ans. 2-5) the combination of Hughes, Owen, and Arba teaches all of claim 7' s limitations. Hughes, col. 1, 11. 22--40, col. 8, 11. 4--28, col. 10, 11. 52---64, col. 6, 11. 4--19, col. 6, 11. 20-37, col. 7, 11. 15-22, col. 7, 11. 5-21; Owen, col. 1, 11. 22--43; Arba, col. 2, 11. 40-47, col. 7, 11. 54--56, col. 7, 1. 67---col. 8, 1. 3, Example 1, cols. 13, 14. Second, Appellant's argument that Owen's teaching regarding chlorine-based oxidizers and sulfamic acid compounds contradicts Arba's teachings regarding chlorine removal is unpersuasive because Appellant fails to identify sufficient evidence or provide an adequate technical explanation to support it. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). As the Examiner found (Ans. 6) and contrary to Appellant's argument, in light of Owen's and Arba's teachings (Owen, col. 1, 11. 22--43; 6 Appeal2014-007630 Application 13/13 8,248 Arba, col. 7, 11. 52-54 and col. 7, 1. 67---col. 8, 1. 3), the effect of the sulfamic acid in stabilizing the chlorine would not have been expected to result in the passage of any significant amount of chlorine beyond the pretreatment, adsorbent-containing module of Hughes onto the membrane module. Indeed, as the Examiner also found (Ans. 6) and Appellant does not challenge, Hughes teaches the removal of chlorine prior to its passage through the membrane modules and other downstream locations and further, Hughes suggests that the addition of the chlorine-based oxidizer occurs somewhere upstream of, and/or previous in time to passage of the cooling tower circulating water through the pretreatment adsorbent-containing module. Hughes, col. 6, 11. 7-15. Appellant's argument, without more, is insufficient to establish reversible error in the Examiner's findings in this regard. Appellant argues that the Examiner's rejections should be reversed because substituting Arba's activated carbon for the carbon/activated charcoal disclosed by Hughes would result in "some amount of chlorine'' compounds passing through the pretreatment module with potential damage to the downstream membranes. App. Br. 5. This argument is not well-taken because it misconstrues the teachings of the prior art. In particular, as noted by the Examiner (Ans. 7), the discussion in Arba that Appellant relies on for the argument regarding "chlorine compounds passing through" (Arba, col. 7, 1. 50---col. 6, 1. 3) refers to situations where chloramine compounds are found in the feedwater used for sterilization and slime removal -and not "chlorine, per se," as Appellant argues. Contrary to Appellant's argument, the prior art combination relied upon in the Examiner's rejection teaches the use of chlorine rather than chloramine for treatment of cooling tower systems. Hughes, col. 1, 11. 22- 7 Appeal2014-007630 Application 13/13 8,248 40, col. 8, 11. 4--28, col. 10, 11. 52---64; Arba, col. 7, 11. 50-54. Moreover, Appellant does not provide evidence sufficient to show that Arba teaches away from the claimed invention or that the combination of prior art references as found by the Examiner renders the claimed invention inoperable. Appellant argues the Examiner's rejection should be reversed because the claimed invention concerns allowing the "sterilization process per se to actively continue beyond the activated carbon filtering stage." App. Br. 7 (citing Amended Spec. i-f 58). We find this argument unpersuasive because it is based on limitations that do not appear in the claim. See In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993). As noted by the Examiner (Ans. 7), none of the claims recite or require any degree of continued sterilization beyond the activated carbon treating step, with claim 7 providing only that the sterilization occur upstream of or prior to the activated carbon treating step. Accordingly, based on the findings and reasoning provided by the Examiner (Ans. 2-5), which we adopt as our own, and for the reasons discussed above, we affirm the Examiner's rejection of claims 2-5, 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Hughes in view of Owen and Arb a. 2. Rejection of Claim 8 under 35 USC§ 103(a) over Hughes in view of Owen and Arba as applied to Claim 7, and in further view of Al-Samadi The Examiner finds the combination of Hughes, Owen, Arba, and Al- Samadi teaches all the limitations of claim 8. Ans. 2-5. Appellant argues the Examiner's rejection of claim 8 should be reversed because the Examiner has failed to establish a prima facie case of obviousness based on 8 Appeal2014-007630 Application 13/13 8,248 the combination of Hughes, Owen, Arba, and Al-Samadi. App. Br. 4, 8. In particular, Appellant argues that the Examiner has failed to establish why, based on the teachings of the prior art, one of ordinary skill would have been led to Al-Samadi and would have combined the teachings of Al-Samadi with the teachings of the other cited prior art references to arrive at the claimed invention. Id. at 8. We agree with Appellant's argument regarding the evidentiary support for the prior art combination as found by the Examiner for rejecting claim 8. Based on the record before us, we are not persuaded the Examiner has established by a preponderance of the evidence that a person of ordinary skill in the art would have combined the references in the manner claimed. As noted by Appellant (App. Br. 8), the Examiner does not provide a sufficient rationale or technical reasoning explaining why, in light of the teachings of the cited prior art references, one of ordinary skill would have combined Hughes, Owen, and Arba with Al-Samadi to arrive at the claimed • , • ~1 -r-i • ' r- 1 • 1 • A. 1 n 1 •' • 1 • • 1 1 mvenuon. l ne 1::1,Xammer s nnamgs regaramg A1-~ama01 s m01v10ua1 teachings (Ans. 5, 8) do not adequately explain why one of ordinary skill in the art would have been led or motivated to combine these teachings with the teachings of Hughes, Owen, and Arba to arrive at the claimed method. Moreover, the Examiner's assertion (Ans. 5) that claim 8 is "unpatentable" over the combination of Hughes, Owen, Arba, and Al- Samadi, without more, is insufficient to sustain the Examiner's obviousness rejection. In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (holding "rejections on obviousness grounds cannot be sustained by mere conclusory statements"). 9 Appeal2014-007630 Application 13/13 8,248 Accordingly, we reverse the Examiner's rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over Hughes in view of Owen and Arba, as applied to claim 7, and in further view of Al-Samadi. DECISION/ORDER The Examiner's rejection of claims 2-5, 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Hughes in view of Owen and Arba is affirmed. The Examiner's rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over Hughes in view of Owen and Arba, as applied to claim 7, and in further view of Al-Samadi is reversed. It is ordered that the Examiner's decision is affirmed. AFFIRMED 10 Copy with citationCopy as parenthetical citation