Ex Parte Johnson

Patent Trial and Appeal Board

Jun 27, 2013

11866958 (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/866,958 10/03/2007 Leonard Johnson 36414-0001 8132
38051 7590 06/28/2013
KIRK HAHN
14431 HOLT AVE
SANTA ANA, CA 92705
EXAMINER
FORTUNA, ANA M
ART UNIT PAPER NUMBER
1779
MAIL DATE DELIVERY MODE
06/28/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte LEONARD JOHNSON
______________

Appeal 2012-002090
Application 11/866,958
Technology Center 1700
_______________

Before CHARLES F. WARREN, TERRY J. OWENS and
DONNA M. PRAISS, Administrative Patent Judges.

PER CURIAM.
DECISION ON APPEAL
Applicant appeals to the Board from the final rejection of claims 1,
3-5, 11-15 and 21-26 under 35 U.S.C. § 103(a): claims 1, 3-5, 11-15 and
21-26 over Voutchkov (US 6,946,081 B2), claims 1, 12 and 13 over
Studhalter (US 4,391,102), claims 4 and 5 over Studhalter and Prueitt (US
7,021,900 B2), and claims 1, 3 and 13-15 over Wheatley (US 4,176,057).1
App. Br.1, 4, 7; Ans. 3, 5, 8, 9, 10. We have jurisdiction. 35 U.S.C.
§§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2010).
We affirm the decision of the Primary Examiner.

1 The Examiner has withdrawn the grounds of rejection under 35 U.S.C.
§ 112, first and second paragraphs. Ans. 3.
Appeal 2012-002090
Application 11/866,958
2
Appellant's arguments are directed to independent claim 1 and thus
the dependent claims stand or fall therewith. 37 C.F.R. § 41.37(c)(1)(vii)
(2010).
OPINION
We are of the opinion Appellant’s arguments do not establish that a
preponderance of evidence in the totality of the record weighs in favor of the
nonobviousness of “[a] method to economically deliver freshwater obtained
by a desalination process to a distant location and discharge concentrate and
warm water effluent at an environmentally beneficial location” encompassed
by claim 1. App. Br. 17 (Claim App’x). In this respect, we are in agreement
with the Examiner’s analysis of the evidence in Voutchkov, Studhalter,
Prueitt and Wheatley, and the findings of fact and conclusions of law stated
in the Answer, to which we add the following for emphasis with respect to
Appellant’s arguments in the Briefs.
There is no dispute Voutchkov would have disclosed to one of
ordinary skill in the art that a desalination system will more efficiently and
economically produce fresh water from saline feed water when the
desalination system, employing a reverse osmosis membrane that is highly
efficient when high temperature feed water is employed, is co-located with a
thermal generating facility, which heats the feed water. Voutchkov, e.g.,
abstract. Appellant contends that the difference between the method of
claim 1 and that of Voutchkov is the claim steps of locating the desalination
process at least 50 miles from the thermal generating facility and the saline
feed water source, transporting heated saline feed water through a water
transportation line to the desalination system, and discharging concentrate,
that is, brine, produced during production of freshwater at least 50 miles
Appeal 2012-002090
Application 11/866,958
3
from the thermal generating facility. App. Br. 11; Reply Br. 4. According
to Appellant, Voutchkov, along with other references, in disclosing the co-
location of the desalination system and the thermal generating facility
teaches away from separating the system and the facility as specified in
claim 1. Appellant further contends that “[t]he absence of a remote or
satellite desalination facility anywhere in the World demonstrates the
inability of anyone to develop an economical method to solve the
environmental issues and still be able to have a successful commercial
operation.” App. Br. 12-13, 14 (citing Johnson Decl.2 ¶¶ 5-10, Exhibits
I-III).
Appellant’s contentions do not convince us of error in the Examiner’s
position. As the Examiner points out, one of ordinary skill in the art would
have known that the art recognized steps of heating saline water, producing
freshwater therefrom, and treating the co-produced brine in an economically
and environmentally beneficial way are not dependent on the distance
between the desalination system and the thermal generating facility. Ans.
12-14. Thus, Voutchkov’s recognition that efficiencies and economies can
be obtained in co-locating the desalination system and the thermal
generating facility as opposed to transporting heated water under pressure
any distance between the two locations does not amount to a teaching away
from the method of claim 1. See, e.g., In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004) (explaining “[t]he prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or

2 Declaration Under 37 C.F.R. § 1.132 of Appellant Leonard Johnson
executed January 01, 2011, and filed February 14, 2011.
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Application 11/866,958
4
otherwise discourage the solution claimed”).
We also agree with the Examiner’s finding that, contrary to
Appellant’s contention, Johnson Declaration Exhibits II and III establish that
it was known in the art that environmental problems can be caused by co-
locating the desalination system and the thermal generating facility in
environmentally sensitive areas, such as in the coastal zone, and thus that it
is not novel to locate a desalination process some distance from the coast,
and may not be economical to do so because of the costs associated with
transporting the heated feed water. Ans. 14-15.
We are not persuaded otherwise by Appellant’s unsupported
contentions in the Reply Brief with respect to the possible economic and
environmental benefits of the method of claim 1. Reply Br. 4-10.
Accordingly, on this record, we affirm the grounds of rejection of
claims 1, 3-5, 11-15 and 21-26 under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is 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)(1)(iv).
AFFIRMED
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