Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardJan 30, 201813876334 (P.T.A.B. Jan. 30, 2018) Copy Citation 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. 13/876,334 04/12/2013 Kwang-Jin Lee Q202795 8037 23373 7590 02/01/2018 SUGHRUE MION, PLLC 2100 PENNSYLVANIA AVENUE, N.W. SUITE 800 WASHINGTON, DC 20037 EXAMINER ORME, PATRICK JAMES ART UNIT PAPER NUMBER 1779 NOTIFICATION DATE DELIVERY MODE 02/01/2018 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KWANG-JIN LEE, AH REUM LEE, YONG-CHEOL SHIN, and JOON YUL YANG Appeal 2017-004834 Application 13/876,334 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s April 14, 2016 decision finally rejecting claims 1, 4-10, 14, and 15. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellants state that the real party in interest is Kolon Industries, Inc. (Appeal Br. 2). Appeal 2017-004834 Application 13/876,334 CLAIMED SUBJECT MATTER Appellants’ invention is directed to a system and method for filtration that is said to minimize filtering membrane contamination through pretreatment in a single unit (Spec. 2). According to the Specification, the claimed invention obviates any need for separate space or facilities for pretreatment (id.). Claims 1 and 10 are representative and are reproduced below from the Claims Appendix of the Appeal Brief (emphasis added): 1. A system for filtration comprising: a filtering unit providing a space for a feed water to be treated; a filtering membrane disposed in the space to treat the feed water; an air dissolving unit configured to receive a portion of a filtrate from the filtering membrane and an air, and to apply pressure to dissolve the air in the portion of the filtrate to give an air-dissolved filtrate; a nozzle connected to the air dissolving unit and configured to eject the air-dissolved filtrate from the air dissolving unit to supply fine bubbles into the feed water in the filtering unit in a way that the supplied fine bubbles rise in the feed water, wherein the fine bubbles touch the filtering membrane when rising within the feed water; and wherein the fine bubbles form a dynamic filtration layer near the water surface in the filtering unit; and a feed water supplier providing the filtering unit with the feed water through the dynamic filtration layer. 10. A method for filtration comprising: (a) producing an air-dissolved filtrate in an air dissolving unit by dissolving an air in a filtrate by applying pressure; 2 Appeal 2017-004834 Application 13/876,334 (b) ejecting the air-dissolved filtrate into a water in a filtering unit by a nozzle, to form a dynamic filtration layer at a surface of the water, the dynamic filtration layer including microbubbles having a diameter of 1 to 100 pm and nanobubbles having a diameter less than 1 jam, and the nozzle is connected to the air dissolving unit; (c) supplying a feed water into the filtering unit through the dynamic filtration layer to produce a pre-treated water; and (d) filtering the pre-treated feed water with a filtering membrane in the filtering unit to give a filtered water, wherein the filtrate of (a) is a portion of the filtered water obtained in (d). Appeal Br. 15, 17-18. REJECTIONS (1) Claims 1, 4, 10, and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hashino2 in view of Zha.3 (2) Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over Hashino in view of Zha, and further in view of Imai.4 (3) Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Hashino in view of Zha, and further in view of Fujimoto.5 2 Hashino et al., JP 2004-174302, published June 24, 2004. Hashino is a Japanese-language reference. We follow the Examiner and Appellants in relying upon and citing a translation that is of record. 3 Zha et al., U.S. Patent Pub. No. 2002/0195390 Al, published Dec. 26, 2002. 4 Imai et al., JP 07-185270, published July 25, 1995. Imai is a Japanese- language reference. We follow the Examiner and Appellants in relying upon and citing a translation that is of record. 5 Fujimoto et al., JP 10-165778, published June 23, 1998. Fujimoto is a Japanese-language reference. We follow the Examiner and Appellants in relying upon and citing a translation that is of record. 3 Appeal 2017-004834 Application 13/876,334 (4) Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hashino in view of Zha and Fujimoto, and further in view of Akimoto.6 (5) Claims 9 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hashino in view of Zha and Fujimoto, and further in view of Akimoto. Appellants’ arguments in support of claims 4-8 are directed to limitations recited in independent claims 1 and 9 (see Appeal Br. 9-13; Reply Br. 4-6). Appellants’ arguments in support of claims 14 and 15 are directed to limitations recited in independent claim 10 (see Appeal Br. 13- 14; Reply Br. 7-8). Accordingly, our discussion will focus on Rejection 1 of claims 1 and 10. DISCUSSION Rejection 1 a. Claim 1: the “air dissolving unit” and “a nozzle” Appellants do not dispute the Examiner’s findings with respect to Hashino. Rather, Appellants assert that the Examiner reversibly erred by finding that Zha teaches or suggests the limitations “an air dissolving unit configured to receive a portion of a filtrate from the filtering membrane and an air” and “a nozzle . . . configured to eject the air-dissolved filtrate from the air dissolving unit” as recited in claim 1 (see generally Appeal Br. 9-13). 6 Akimoto et al., U.S. Patent Pub. No. 2003/0038075 Al, published Feb. 27, 2003. 4 Appeal 2017-004834 Application 13/876,334 The Examiner finds that Zha’s disclosure teaches the elements of the claimed air dissolving unit and nozzle (Final Act. 3). The Examiner finds that Zha . . . relates to a filtration system and method and discloses an air dissolving unit configured to receive a portion of a filtrate from the filtering membrane and an air (Fig. 5 (note air, permeate, and combined lines below tank interpreted as air dissolving unit); []f 59]); a nozzle configured to eject the air- dissolved filtrate from the air dissolving unit (Fig. 1, item 10; [140]) (Final Act. 8 (emphasis added)). Zha’s Figure 5, which illustrates a schematic diagram of a filtration system, is reproduced below. AUTOHA TED SUCTION PROCESS FIGS Figure 5 illustrates features of a filtration system including pathways for air, backwash from a permeate tank, a pump, and membrane module 4. 5 Appeal 2017-004834 Application 13/876,334 Zha’s Figure 1, which illustrates a cross-sectional view of a membrane module, is reproduced below. Figure 1 illustrates features of membrane module 4 including hollow fiber membranes 5 and fibers 9 extending longitudinally between upper and lower potting heads 6, 7, and holes 10 uniformly distributed in potting head 7 to enable gas/air to be supplied therethrough. With respect to the issue of whether Zha teaches or suggests the disputed limitations, Appellants make the following principal arguments: (1) because Zha’s ^ 59 “clearly states that the suction (of permeate) is performed first and then aeration follows[,]” Zha does not disclose “that air and the backwash permeate are mixed in a way that the air [is] dissolved in the permeate” (Appeal Br. 11); (2) Zha further discloses that “the path through which the air for aeration is introduced into the bottom of the module 4 is different from the path through which the backwash permeate is 6 Appeal 2017-004834 Application 13/876,334 introduced into the fibre lumens” {id. at 11-12 (emphasis omitted) (citing Zha 59, 64)); (3) even assuming that both air and filtrate entered the device simultaneously through the combined flow path, “the air could not be dissolved in the filtrate because the air is not pressurized in such a degree that it can be dissolved in the water” (Appeal Br. 13); (4) “all the Examiner’s arguments made under the assumption that the tank 15 of Zha necessarily contains the filtrate after the end of the aeration and backwashing modes are flawed” because filtrate used for backwashing can no longer be considered as “filtrate” (Reply Br. 4); and (5) “any liquid existing in [Zha’s] tank 15 does not enter the air line through the holes 10 of the lower potting head 7 after the aeration and backwashing modes” {id. at 5). With regard to argument (1), we note that claim 1 defines the structure of the claimed filtration system in functional language, indicating that: (i) the air dissolving unit receives a filtrate and air to dissolve the air in the filtrate by applying pressure and (ii) the nozzle ejects the air-dissolved filtrate from the air dissolving unit. [WJhere the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). In this instance, the Examiner finds that Zha’s filtration system includes “combined flow paths for both air and filtrate that would allow 7 Appeal 2017-004834 Application 13/876,334 air to be dissolved in the filtrate” (Ans. 4 (citing Zha ^ 59)). We note that Figure 5 schematically illustrates a pump configured in line between the permeate backwash line, i.e., filtrate, and the combined flow paths for air and filtrate. Furthermore, these combined flow paths lead to plenum chamber 17 below holes 10, which the Examiner correctly finds as suggesting the claimed nozzle (see Zha ^ 64; Fig. 1). Appellants’ argument (1) fails to show that it was unreasonable for the Examiner to determine that an ordinary skilled artisan would have inferred from the applied prior art that Hashino’s filtration system, with Zha’s combined flow path for pumped air and filtrate which leads to nozzle 10, are capable of: (i) applying pressure to dissolve air in a filtrate and (ii) ejecting the filtrate containing the dissolved air via the nozzle without physically altering Zha’s specified components. In connection with argument (2), Appellants state that Zha explicitly discloses that air bubbles are introduced into module 4 between membrane fibers 97 (Appeal Br. 11 (citing Zha ^ 59)). On the other hand, Appellants note that backwash permeate is introduced through the pores of fibers 9 (Appeal Br. 11 (citing Zha ^ 59)). Appellants’ arguments are not persuasive. We note that Zha teaches that a filtrate “backwash may be used in conjunction with the [bubble scouring] removal process to assist solids removal from the membrane pores and outer surface of the membranes'''’ (Zha ^ 16 (emphasis added); see also id. 15 (explaining that gas “bubbles pass . . . between each [hollow fiber] 7 Fibers 9 are made of a plurality of hollow membrane fibers 5 (see Zha, Fig. 1;11110, 12,13,15,40). 8 Appeal 2017-004834 Application 13/876,334 membrane ... to scour the surface of said membranes.”)).8 Therefore, Appellants’ argument (2) does not identify reversible error in the Examiner’s finding that Zha suggests that both air and filtrate can enter the device simultaneously through the combined flow path and into module 4 between fibers 9. Because claim 1 uses functional language, it is appropriate to require Appellants to show that Zha’s structure could not dissolve air in a filtrate by applying pressure and ejecting the filtrate containing dissolved air via the nozzle. In re Schreiber, 128 F.3d at 1478. Appellants have not met this burden. Argument (3) is supported only by attorney argument, not factual evidence, and, therefore, is not persuasive. Arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979). Appellants’ arguments (4) and (5) are directed to the Examiner’s findings that: (i) “the tank necessarily contains filtrate after the end of the aeration and backwashing modes'''’ and (ii) “filtrate introduced into tank 15 during backwashing will flow down to the bottom of the tank and enter the combined filtrate and air line after the aeration and backwashing modes'''’ (Ans. 4 (emphasis added)). We note that the Examiner’s findings are based on an embodiment in Zha that may be operated by run[ning] suction for 15 minutes, then aeration for 2 minutes 15 seconds. After a first minute of aeration, a permeate backwash is introduced for 15 seconds. The cycle returns to suction. After several cycles, the solids in the cylinder tank 15 were 8 We further note that Zha’s claim 32 is drawn to “a filtration system . . . wherein a backwash is used in conjunction with the [gas bubble] scouring process to assist solids removal from the membrane pores and outer surface of the membranes” (emphasis added). 9 Appeal 2017-004834 Application 13/876,334 concentrated and the water in the tank 15 was drained down to remove concentrated backwash. (Zha T| 59). The Examiner’s findings in support of the obviousness of system claim 1 are based on Zha’s embodiment that uses the disclosed structure in both aeration and backwashing modes. The Examiner’s reliance on Zha’s method in such a rejection, however, is harmless because Appellants’ arguments are immaterial as to whether Zha’s structure is capable of performing the claimed functions. Therefore, Appellants have not identified reversible error in the Examiner’s determination that an ordinary skilled artisan would have reasonably inferred that Zha’s disclosed structures are capable of: (i) applying pressure to dissolve air in a filtrate and (ii) ejecting the air-dissolved filtrate via the nozzle, as encompassed by claim 1. b. Claim 10: the “nanobubbles having a diameter less than 1 pm” The Examiner finds that Zha teaches or suggest microbubbles having a diameter of 1 to 100 pm and nanobubbles having a diameter less than 1 pm (Final Act. 8 (citing Zha 59-61)). Specifically, the Examiner finds that Zha discloses holes for creating bubbles ranging in size from 10- 5,000 pm and that the hole sizes may vary depending on structural and other factors (Ans. 7 (citing Zha ^ 61)). In response, Appellants argue that there is no “disclosure, either explicitly or inherently, of the size of bubbles” (Appeal Br. 14). Appellants do not contest that Zha’s discloses holes which can create bubbles ranging in size from 10-5,000 pm, a size range which overlaps the recited ranges for the microbubbles. However, Zha’s bubble size range does not overlap the claimed nanobubble size range. In particular, the upper end 10 Appeal 2017-004834 Application 13/876,334 of the claimed nanobubble range is an order of magnitude below the bubble size range created by Zha’s holes. The only explanation offered by the Examiner as to why Zha’s disclosure would have rendered the limitation at issue obvious is that “a person of ordinary skill in the art at the time the invention was made could immediately envisage the claimed bubble size ranges wherein the size may be varied using a variety of factors” (Ans. 7). Such a bare conclusion—devoid of any additional explanation—is not persuasive in showing that Zha teaches or suggests nanobubbles having a diameter less than 1 pm. Accordingly, the Examiner has not persuasively shown that Zha would have motivated the ordinary skilled artisan to further configure Hashino’s filtration system with Zha’s nozzle to make nanobubbles as much as an order of magnitude smaller than the bubbles described in Zha. In the absence of such a showing, we reverse the rejection of claim 10 under 35 U.S.C. § 103(a) because the Examiner has not shown that each claim limitation would have been obvious. See, e.g., In re Lain, 747 F.2d 703, 705 (Fed. Cir. 1984). Therefore, we reverse the rejections of claims 10, 14, and 15 under 35 U.S.C. § 103(a).9 We affirm the rejections of claims 1 and 9 under 35 U.S.C. § 103(a).10 In the absence of arguments specific to their patentability, dependent claims 4-8 fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). 9 Dependent claims 14 and 15 recite the same limitations at issue regarding nanobubble sizes as claim 10. 10 Independent claim 9 recites the same functional limitations at issue as claim 1. 11 Appeal 2017-004834 Application 13/876,334 CONCLUSION We AFFIRM the rejection of claims 1 and 4 under 35 U.S.C. § 103(a) as unpatentable over Hashino in view of Zha. We REVERSE the rejection of claims 10 and 14 under 35 U.S.C. § 103(a) as unpatentable over Hashino in view of Zha. We AFFIRM the rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over Hashino in view of Zha, and further in view of Imai. We AFFIRM the rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Hashino in view of Zha, and further in view of Fujimoto. We AFFIRM the rejection of claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Hashino in view of Zha and Fujimoto, and further in view of Akimoto. We AFFIRM the rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over Hashino in view of Zha and Fujimoto, and further in view of Akimoto. We REVERSE the rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable over Hashino in view of Zha and Fujimoto, and further in view of Akimoto. 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)(iv). AFFIRMED-IN-PART 12 Copy with citationCopy as parenthetical citation