Ex Parte Kanno et al

Patent Trial and Appeal Board

Jun 16, 2016

11992590 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111992,590 03/26/2008
25944 7590 06/20/2016
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
Minoru Kanno
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.
136046 9514
EXAMINER
CLEVELAND, TIMOTHY C
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
06/20/2016 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PA TENT TRIAL AND APPEAL BOARD
Ex parte MINO RU KANNO, 1
Masahiro Kohno, Atsuo Iwasawa, and Takayuki Mokudai
Appeal2015-000142
Application 11/992,590
Technology Center 1700
Before MARK NAGUMO, and N. WHITNEY WILSON, and
JULIA HEANEY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Minoru Kanno, Masahiro Kohno, Atsuo Iwasawa, and
Takayuki Mokudai ("Kanno") timely appeal under 35 U.S.C. § 134(a) from
the Final Rejection2 of claims 1--4, 6-9, 14, 15, 20, and 21, which are all of
the pending claims. We have jurisdiction. 35 U.S.C. § 6. We reverse.
1 The real party in interest is identified as Minoru Kanno. (Appeal Brief,
filed 29 May 2014 ("Br."), 1.)
2 Office action mailed 16 December 2013 ("Final Rejection"; cited as
"FR"). Amendments proposed under 37 C.F .R. § 1.116 (18 March 2014)
were not entered by the Examiner (Advisory Action mailed 1 April 2014).
Appeal2015-000142
Application 11/992,590
A. Introduction3
OPINION
The subject matter on appeal relates to improved methods of
sterilization in which water is treated by electrolyzing an aqueous salt
solution to yield, in the anode chamber of the electrolysis cell, sterilizing
water containing hypochlorous acid at a pH of less than 3. (Spec. 1, 11. 8-
13.) The sterilizing water so-produced is said to be no different from the
result of adding hypochlorous acid and dilutee hydrochloric acid.
(Id. at 11. 14-19.) According to the '590 Specification, the inventors have
discovered that "jetting" air into (i.e., aerating) a solution of the strongly
acidic water obtained from the anodic chamber of an electrolytic cell
("anolyte"), generates "acidic electrolytic water with high concentration of
effective chlorine." (Id. at 2, 11. 20, to 3, 1. 1.) The inventors suggest that
effective-chlorine/oxygen adducts are bonded together in a molar ratio of 2: 1
and dissolved in the strongly acidic electrolytic water. (Id. at 2, 11. 1-14.)
Figure 3, reproduced on the following page, illustrates an apparatus
that carries out embodiments of the claimed process. The apparatus
comprises a reservoir 1 that is divided into an anode chamber 11 and a
cathode chamber 12 by an electrolysis diaphragm 10 that allows ionic
3 Application 11/992,590, Sterilization method and sterilization processing
apparatus, filed 26 March 2008, as the national stage under 35 U.S.C. § 371
of PCT /JP2007 /066426, filed 24 August 2007, claiming the benefit of an
application filed in Japan on 15 September 2006. We refer to the
'"590 Specification," which we cite as "Spec."
2
Appeal2015-000142
Application 11/992,590
species to transfer between the chambers. 4 (Id. at 1 7, 11. 13-15.) Reservoir 1
is filled with a 10 mM saline solution. (Id. at 19, 11. 7-8.) Electrolysis
apparatus 2 comprises anode 21 and cathode 22, and power supply 20.
(Id. at 11. 17, 11. 17-20.) A potential of 12 volts at a current of 0.8 amperes,
applied across the cell for about 15 minutes, produces a strongly acidic
electrolytic water ("anolyte")5 of about pH 2 to 4 in anode chamber 11, and a
strongly alkaline electrolytic water ("catholyte") of about pH 10 to 12 in
cathode chamber 12. (Id. at 19, 11. 12-15.)
{Spec. Fig. 3 is shown below}
20 -- 10 .. ---·~· z
l ' t (
21 ,_ .. ,:~ H----'----·l ,.- 22
11 -'<··\~I . ) ~, J _,--- 12
" ~ / /
1 - -- _w !' ·---···"' i----···-~1 '-·1 I i \
15--Jl u ll i .--- lS " /
13·-.. 1+-) \.ffi-~1--,_ 14 l•T . - I
~ t 1 '
ll 51-, ,----s I!
i I ., r-......... ---;-... ·· I i
I .• !r-----1 I .,.,. il
.. ~! ~~ ': ~ l I I I I • CJ-+/·-- ::u.: I I
42 --q .. , I! ----·-······' II'
i ~ LJ 1 ~ t ! ...; ~-i , ---1 40 30 I
4-, l / ) j
I \ ./ I
i I ~
• I {!11 1- ·.·.·-~r' ...... I ··,_._1 ---,.---->
i; 4i 1[_JI I ~1 (j
I
I .r-6 I .
I
I
{Fig. 3 shows a sterilizing apparatus}
4 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
5 We borrow the terms "anolyte" and "catholyte" from the description of a
prior art electrolysis apparatus described by prior art reference Malchesky
(full citation at n.7, infra).
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Appeal2015-000142
Application 11/992,590
The alkaline catholyte may be drained via drain 16 and valve 14 into first
wash container 3, where an object, e.g., an endoscope, may be cleansed of
contaminants such as protein that tend to coagulate under acidic conditions.
(Id. at 19, 1. 16, to 20, 1. 2.) The object may then be placed in second wash
container 4 where it is soaked in anolyte drained via drain 15 and valve 13.
Air from container 4 (or the atmosphere, if lid 41 is removed) passes through
collector pipe 51 through gas jetting apparatus 5, which may include a
heater 52, and is jetted into the anolyte via gas jetting part 50. (Id. at 20,
11. 3-22.) When hermetically sealable lid 41 is in place on second wash
container 4, chlorine gas from the anolyte can be passed through gas-jetting
apparatus 5, heated by heater 52, and jetted into the anolyte in second wash
container 4 via gas-jetting part 50. (Id. at' 18, 11. 5-17.)
When the cleaning procedure is completed, the acidic and alkaline
solutions may be drained into waste water container 6 via valves 31and41,
respectively, where they neutralize each other so they may be discarded
safely. (Id. at 20, 1. 23, to 21, 1. 9.)
Claim 1 is representative of the dispositive issues and reads:
A sterilization method comprising the steps of:
soaking an object to be treated in strongly acidic
electrolytic water of pH 2 to 4 obtained by
electrolyzing an aqueous solution of chloride and
causing air to jet in the strongly acidic electrolytic
water;
collecting a chlorine gas exhausted from the strongly
acidic electrolytic water,
the chlorine gas being heated; and
causing the collected chlorine gas to jet inside the
strongly acidic electrolytic water,
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Appeal2015-000142
Application 11/992,590
wherein
the entire jetted substance is a gas, and
the temperature of the heated chlorine gas
is 30°C to 45°C.
(Br., Claims App. A-1; some indentation, paragraphing, and emphasis
added.)
The Examiner maintains the following ground of rejection6 :
Claims 1--4, 6-9, 14, 15, 20, and 21 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Malchesky,7 Tseng,8 Koganezawa,9and Dulphy. 10
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Kanno urges the Examiner erred harmfully by failing to provide prior
art teachings supporting the conclusion that it would have been obvious to
jet air into the "strongly acidic electrolytic water," (i.e., the anolyte ).
(Br. 11-12.) Similarly, Kanno urges that the Examiner failed to provide
6 Examiner's Answer mailed 15 July 2014 ("Ans.").
7 Paul S. Malchesky, Sterilization apparatus utilizing catholyte and anolyte
solutions produced by electrolysis of water, U.S. Patent No. 5,932, 171
(1999).
8 Anthony Tseng, Electrolysis system, U.S. Patent Application Publication
2004/0045836 Al (2004).
9 Akihisa Koganezawa and Norikazu Takada, Electrolytic ozone generating
method, system and ozone water producing system, U.S. Patent
No. 6,398,928B1 (2002).
10 Herve Dulphy et al., Gaseous effluent treatment apparatus, U.S. Patent
No. 2007 /0205522 Al (2007).
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Appeal2015-000142
Application 11/992,590
such teachings regarding collecting chlorine gas from the anolyte and jetting
that gas into the anolyte. (Id. at 12, 11. 11-13.) Kanno urges still further that
the Examiner has not provided sufficient evidence to establish the
obviousness of heating chlorine gas as recited in the claimed processes.
(Id. at 12-13.)
The Examiner finds that "Tseng discloses that the collected chlorine
gas may be bubbled in the alkaline water from the cathode chamber to form
sodium hypochlorite (a hypochlorous acid precursor), combined with the
feed solution to produce a more concentrated hypochlorous acid or bubbled
with water to form hypochlorous acid (see para. [0028])." (Ans. 8, 11. 5-8.)
On this basis, the Examiner concludes that "it would have been obvious for
one of ordinary skill in the art to have directly add[ ed] the chlorine gas to the
acidic water in order to have increased the concentration of hypochlorous
acid so as to improve the cleaning process ofMalchesky." (Ans. 8, 11. 9-11.)
One difficulty with this analysis is that Tseng, in paragraph [0028],
teaches adding recovered chlorine gas either to the alkaline water from the
cathode chamber to form sodium hypochlorite, or to the feed water to the
electrolysis cell. Neither is the acidic anolyte. The Examiner's conclusion
that"[ o ]ne of ordinary skill in the art would have realized that adding the
chlorine gas to the acidic water would also produce hypochlorous acid,
which is an extremely well known sterilant" (FR 3, 11. 7-10) appears to
provide a reasonable after-the-fact explanation. This explanation, however,
begs the question, if the chlorine gas is already present in the anolyte, where
it is presumably forming hypochlorous acid, why would one remove it only
to reinject it into the solution? While one could, in general, add the
recovered chlorine gas to any component anywhere in the system, that
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Appeal2015-000142
Application 11/992,590
general capability is not a proxy for a suggestion in the prior art to add
chlorine gas to the acidic anolyte.
A second difficulty is that, aside from the implicit and incidental co-
collection of atmospheric oxygen along with chlorine gas from the anolyte,
the Examiner does not indicate what teachings in the prior art would have
suggested jetting air (oxygen) into the anolyte.
These issues raised by Kanno suffice to demonstrate harmful error in
the appealed rejection.
We therefore need not evaluate the Examiner's findings that "[t]he
heating of recirculated fluids to increase the ability of the liquid to retain
dissolved gases is disclosed by Koganezawa" (Ans. 9, 11. 2-3), and that
Dulphy teaches jetting gas back into a solution to increase contact with the
solution in order to increase the amount of gas dissolved into the solution
(id. at 11. 3-5), or the conclusion that it would therefore have been obvious to
heat the chlorine gas (id. at 11. 5-9). Nonetheless, absent a teaching or
suggestion in the prior art that heating a gas would be advantageous in a
similar process, the reasoning sounds more like a post-hoc rationalization
than a pre-ante demonstration of obviousness.
C. Order
It is ORDERED that the rejection of claims 1--4, 6-9, 14, 15, 20,
and 21 is reversed.
REVERSED
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