Ex Parte Ikuno

Patent Trial and Appeal Board

Mar 29, 2016

13138248 (P.T.A.B. Mar. 29, 2016)

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-
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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
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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.
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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
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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;
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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-
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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
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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").
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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
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