Ex Parte King et al

Patent Trials and Appeals Board

Jun 21, 2019

14120934 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/120,934 07/11/2014
44341 7590 06/21/2019
JOHNSON & PHUNG
ONE WEST WATER STREET, SUITE 285
ST. PAUL, MN 55107
FIRST NAMED INVENTOR
Joseph A. King
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.
6815 1858
EXAMINER
STELLING, LUCAS A
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
06/21/2019 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
Exparte JOSEPH A. KING, JOHN HILL, and
NICOLE WEULANDER
Appeal2018-008860
Application 14/120,934
Technology Center 1700
Before MICHELLE N. ANKENBRAND, Acting Vice Chief Administrative
Patent Judge, DONNA M. PRAISS, and JEFFREY R. SNAY,
Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-18 3 as indefinite, as obvious over cited prior art
references, and on nonstatutory double patenting grounds. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
1 Our Decision refers to the Specification ("Spec.") filed July 11, 2014, the
Examiner's Final Office Action ("Final") dated Nov. 8, 2017, Appellants'
Appeal Brief("Br.") filed Feb. 5, 2018 as corrected Mar. 20, 2018, and the
Examiner's Answer ("Ans.") dated July 3, 2018.
2 Appellants identify "Joseph A. King, Appellants and inventors of U.S.
Patent Application Serial Number 14/120,934" as the real parties in interest.
Br. 2.
3 Claims 19 and 20 have been withdrawn from consideration. Final Act. 2.
Appeal2018-008860
Application 14/120,934
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to methods "for extending a use life of a body of
recreational water while reducing a concentration of chlorine required to
effectively sanitize the body of recreational water." Spec. 8:6-9. According
to Appellants, it is known to treat a body of water with metallic ions (e.g.,
silver ions) to kill bacteria, but such ions have a tendency to complex and
become insoluble. Id. at 4:4--8, 5:2--4. However, if silver forms a complex
with hydantoins, it will remain soluble to a higher degree, thus retaining the
antimicrobial activity of the silver. Id. at 5:9-10. Appellants also describe
chlorine as useful for maintaining a body of water in a sanitized state and for
shocking water back into a sanitized condition. Id. at 6:25-27, 7: 1-2. High
levels of chlorine, such as those used during shocking, have the draw backs
of corroding equipment and damaging the area in the vicinity of the body of
water. Id. at 7:21-25.
According to Appellants, they have discovered that compounds
having a hydantoin ring maintained at certain concentrations interact with
metal ion donors ( e.g., silver chloride) and a halogen ( e.g., chlorine) in a
body of water to reduce the concentration of chlorine required to sanitize the
water and to extend the use life of the body of water by at least two fold. Id.
at 23:21-26, 24:1--4.
Claim 1, reproduced below from the Claims Appendix to the
corrected Appeal Brief filed March 20, 2018, is illustrative of the subject
matter on appeal ( emphasis added).
1. A method of extending a use life of a body of
recreational water while reducing a concentration of chlorine
required to effectively sanitize the body of recreational water
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Appeal2018-008860
Application 14/120,934
comprising the steps of:
adding a sanitizing concentration of total available
chlorine to the body of recreation water that is suitable for
human partial immersion in the body of recreation water with
the body of recreational water having a use life of one week
before a required shocking to reset the use life of the body of
recreational water;
adding a source of metal ions to the body of recreational
water to lower the concentration of chlorine required to
effectively sanitize the body of recreational water; and
adding to the body of recreational water an amount of 1, 3-
Dichloro-5, 5-dimethylhydantoin to maintain a concentration of
l,3-Dichloro-5,5-dimethylhydantoin effective at extending the
use life of the body of recreational water by at least 2 folds before
a required shocking of the body of recreational water while
maintaining the biocidal effectiveness of the silver ions.
Independent claim 10 recites "[a] method of maintaining spa water
suitable for human immersion during a period of at least two months without
having to shock the spa water to remove chloramines" comprising, among
other things, adding chlorine to the spa water, placing a source of silver ions
in the spa water, and adding 1,3-Dichloro-5,5-dimethylhydantoin to the spa
water to maintain chlorine at a concentration between .25 and 1.5 ppm.
Independent claim 13 recites "[a] method of extending a use life of a
body of recreational water while reducing a concentration of chlorine
required to effectively sanitize the body of recreational water" comprising,
among other things, adding chlorine to recreational water suitable for human
partial immersion and having a use life of one week before a required
shocking, adding a source of silver ions and a source of 1,3-Dichloro-5,5-
dimethylhydantoin to the water, and maintaining a concentration of silver
ions and a concentration of the source of 1,3-Dichloro-5,5-
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Application 14/120,934
dimethylhydantoin effective at extending the use life of the water by at least
two folds before a required chlorine shocking.
ANALYSIS
We review the appealed rejections for error based upon the issues
Appellants identify and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections.")). After considering the
argued claims in light of the case law presented in this Appeal and each of
Appellants' arguments, we are not persuaded of reversible error in the
Examiner's rejections.
Rejection 1: Indefiniteness
The Examiner rejects claims 1-9 and 13-18 under 35 U.S.C. § 112(b)
as being indefinite. Ans. 6-7.
As the Examiner states (Ans. 28-29), Appellants do not address the
§ 112(b) rejection. We, therefore, summarily affirm the§ 112(b) rejection
of claims 1-9 and 13-18.
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Application 14/120,934
Rejection 2: Obviousness
The Examiner rejects claims 1-18 under 35 U.S.C. § 103 as being
unpatentable over King4 and Theyson 5 for the reasons provided on pages 9-
23 of the Examiner's Answer.
Appellants argue the claims together. Br. 8-15. Therefore, we
confine our discussion to claim 1, which we select as representative. Claims
2-18 stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds King discloses a method of treating water
comprising, among other things, adding chlorine, adding a silver metal
source, and adding Dichlorodimethylhydatoin (DCDMH) to water that
would have a use life of one week before shocking is required. Ans. 9. The
Examiner finds that King does not mention that the use life of the water is
extended by at least 2 fold before a shock is required, but King's use of
chlorine, silver, and DCDMH provides an effect that enhances the
effectiveness of the combination even at low chlorine levels. Id. The
Examiner also finds that Theyson discloses a method of shock treating an
aqueous system containing halogenated 5,5-dimethylhydantoin (DMH) to
restore water and concludes it would have been obvious to increase the
intervals between shock treatments in the method of King. Id. at 9-10.
Appellants contend that the combination of King and Theyson does
not disclose the claimed method because King's chlorine concentration is
4 King et al., US 2009/0200246 Al, published August 13, 2009 ("King").
The Examiner finds the present application has an earliest effective filing
date of either July 14, 2014, or August 21, 2013. Ans. 4--5. Appellants do
not dispute this finding. Under this finding of priority, the Examiner applies
King as prior art.
5 Theyson, US 4,698,165, issued October 6, 1987 ("Theyson").
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Application 14/120,934
too low to disclose adding chlorine to a body of recreational water suitable
for human partial immersion and having a use life of one week. Br. 8-10
( citing King ,r 29). Appellants also contend that King does not disclose a
two-fold extension of use life or how long the enhanced effectiveness for a
metal ion donor would last. Id. at 12. Appellants also contend that Theyson
discloses shocking but not extending use life, and that both King and
Theyson are silent about the use life of a body of water. Br. 12-15.
Appellants' arguments do not persuade us that the Examiner
reversibly erred in rejecting the claims over the cited prior art references.
Accordingly, we sustain the Examiner's rejection for essentially those
reasons expressed in the Answer, including the Response to Argument
section, and we add the following primarily for emphasis.
King discloses a method for killing microorganisms in a body of
water that maintains an effective concentration of a metal ion donor in
soluble form in the body of water. King ,r 9. King discloses three spa tests
in which silver chloride (i.e., a source of both metal ions and chlorine) and
DCDMH (i.e., a source of both hydantoins and chlorine) were added to spa
water over the span of weeks. Id. ,r,r 19-26. King discloses that the
DCDMH includes 1,3-Dichloro-5,5-dimethylhydantoin. Id. ,r 43.
King discloses average free chlorine levels of 0.52 ppm, 0.68 ppm,
and 0.79 ppm for the three spa tests. King ,r 29. King's disclosure in
paragraph 29 supports the Examiner's finding that these chlorine
concentrations may be inadequate when chlorine is used alone, but are
sufficient when used in combination with the other additives King teaches.
Ans. 30. Therefore, Appellants' argument that King's water would not be
suitable for human partial immersion (Br. 9-10) is unpersuasive. Further,
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Application 14/120,934
although King does not disclose the use life of water explicitly, the
Examiner finds the spa water King tested would be suitable for partial
human immersion. Ans. 34 ( citing the measurements King conducted to
assess silver concentration and the amount of free chlorine in the water
(King ,r,r 28-29, Fig. 4) and the fact that bathers used the water, which
occurred in the third test that spanned a seven week period (id. ,r 25)). This
suggests that the water of the third test had a use life of one week at or near
the end of that test. Thus, Appellants' arguments that King does not disclose
or suggest a body of recreational water having a use life of one week before
a required shocking and adding a sanitizing concentration of chlorine to that
water, as recited in claim 1, are not persuasive.
The Examiner also finds the combination of King and Theyson would
have suggested extending the use life of a body of water. Ans. 31-33. King
discloses that the results of the spa tests show that the combination of
hydantoin compounds, such as DCDMH, and a metal ion donor, such as
silver chloride, enhances the concentration of metal ions in a body of water
and retains an antimicrobial activity of the metal ions in water that is
effective to kill microorganisms. King ,r,r 36, 50. In addition, King teaches
that if the concentration of metallic ions is too low, the ability to kill
microorganisms is lost. Id. ,r 5. King also discloses that the combination
results in a chlorine bank, which responds to high use demand by releasing
additional chlorine. Id. ,r,r 28-29. Thus, one reasonably would have inferred
from King's disclosure that the combination of metal ions, DCDMH, and
chlorine extends the use life of a body of water by retaining the
antimicrobial activity of metal ions and providing an additional source of
chlorine.
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Application 14/120,934
Theyson explains that the disinfection process for an aqueous system
treated with hydantoins may become overwhelmed and the water of the
system becomes unsightly and unsafe to use until the water is given a shock
treatment. Theyson, 1 :20-32, 1 :47-60. Theyson discloses that the
disinfection process can become overwhelmed due to a variety of factors,
such as level of disinfectant materials and "bather loading beyond the
capacity of the disinfectant feeder." Id. at 1 :47-52. In other words, Theyson
demonstrates it was known that the use life of a body of water depends upon
the circumstances of how that body of water is being used and maintained
and, thus, varies from situation to situation.
In view of these disclosures, it would have been obvious to one of
ordinary skill in the art to use the beneficial effects King's combination
provides to extend the use life of a particular body of water, in view of how
that body of water is being used and maintained, so the body of water
remains useful for people and the shock treatments Theyson discloses are
minimized. An obviousness analysis "need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398,418 (2007). "A person of ordinary skill is also a person of
ordinary creativity, not an automaton." Id. at 421.
For these reasons and those the Examiner provides, we uphold the
Examiner's rejection of claims 1-18 under 35 U.S.C. § 103 as obvious over
King and Theyson.
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Application 14/120,934
Rejections 3-5: Double Patenting
The first double patenting rejection is of claims 1-18 on the ground of
nonstatutory double patenting as unpatentable over claims 1-7 of U.S.
8,591,748 in view of King and Theyson. Ans. 24--25. As the Examiner
correctly finds (id. at 29), Appellants provide no arguments regarding the
propriety of this double patenting rejection. We, therefore, summarily
affirm the Examiner's non-statutory obviousness-type double patenting
rejection of claims 1-18 over claims 1-7 of U.S. 8,591,748 in view of King
and Theyson.
The second double patenting rejection is of claims 1-18 on the ground
of nonstatutory double patenting as unpatentable over the claims of U.S.
9,873,625 in view of King and Theyson. Id. at 25-26. 6 Again, Appellants
do not provide any argument regarding the propriety of this double patenting
rejection. We, therefore, summarily affirm the Examiner's non-statutory
obviousness-type double patenting rejection of claims 1-18 over the claims
of U.S. 9,873,625 in view of King and Theyson.
The third double patenting rejection is the provisional rejection of
claims 1-18 on the ground of nonstatutory double patenting as unpatentable
over the claims of Application No. 13/986,763 in view of King and Theyson.
Because the claims of Application No. 13/986,763 were amended
subsequent to the Examiner's provisional rejection, this rejection is
moot. Accordingly, we leave it to the Examiner to assess whether to make
any obviousness type patenting rejection based on the claims of Application
6 We note that U.S. Patent Application No. 13/987,929 issued as US
9,873,625 B2 on January 23, 2018. Therefore, the double patenting
rejection is no longer provisional. Accordingly, we have corrected the
Examiner's statement of rejection to reflect this fact.
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Application 14/120,934
No. 13/986,763. Cf Ex parte Jerg, 2012 WL 1375142 at *3 (BPAI 2012)
(informative) ("Panels have the flexibility to reach or not reach provisional
obviousness-type double-patenting rejections.") (citing Ex parte Moncla, 95
USPQ2d 1884 (BP AI 2010) (precedential) ).
DECISION
Upon consideration of the record, and for the reasons given above, in
the Final Office Action, and in the Examiner's Answer, the decision of the
Examiner rejecting claims 1-9 and 13-18 under 35 U.S.C. § 112(b);
rejecting claims 1-18 under§ 103; rejecting claims 1-18 on the ground of
nonstatutory double patenting over claims 1-7 of U.S. 8,591,748 in view of
King and Theyson; and rejecting claims 1-18 on the ground of nonstatutory
double patenting as unpatentable over the claims of U.S. 9,873,625 in view
of King and Theyson is affirmed.
The provisional rejection of claims 1-18 on the ground of
nonstatutory double patenting as unpatentable over claims of Application
No. 13/986,763 in view of King and Theyson is moot.
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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