Ex Parte Logan

Patent Trial and Appeal Board

Sep 21, 2016

12765192 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121765, 192 04/22/2010 Bruce Logan
25006 7590 09/23/2016
DINSMORE & SHOHL LLP
900 Wilshire Drive
Suite 300
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.
PST-45402/36 8926
EXAMINER
JAIN, SAUL
TROY, MI 48084 ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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):
docket@patlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE LOGAN
Appeal2015-004973
Application 12/765,192
Technology Center 1700
Before: CHRISTOPHER C. KENNEDY, JULIA HEANEY, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-10, 12-15, and 27-28. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 In our Decision below we refer to the Specification filed April 22, 2010
(Spec.), the Final Office Action appealed from mailed February 28, 2014
(Final Act.), the Appeal Brief filed August 8, 2014 (Appeal Br.), the
Examiner's Answer mailed January 28, 2015 (Ans.), and the Reply Brief
filed March 30, 2015 (Reply Br.).
2 Appellant identifies the real party in interest as The Penn State Research
Foundation, the assignee of the instant application. Appeal Br. 1.
Appeal2015-004973
Application 12/765,192
STATEMENT OF CASE
The claims are directed to desalination methods. Spec. i-f 2.
Specifically, the invention teaches a desalination process for wastewater
treatment that includes generating an electronic potential between the anode
and cathode using anodophilic bacteria. Id. at 4. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A desalination process, comprising:
providing a system for desalination, comprising a reaction
chamber having a wall defining an interior of the reaction
chamber and an exterior of the reaction chamber; an anode at
least partially contained within an anode compartment of the
reaction chamber; a plurality of anodophilic bacteria disposed in
the anode compartment; a cathode at least pmlially contained
within a cathode compartment of the reaction chamber, wherein
the cathode is an air cathode; a conductive conduit for electrons
in electrical commw 1 ication with the anode and the cathode; a
saline material compartment disposed between the anode
compartment and the cathode compartment; a first anion
selective barrier disposed between the saline material
compartment and the anode compartment such that anions
moving from the saline material compartment traverse the first
anion selective barrier to a compartment adjacent an anion
selective barrier and cations are substantially prevented from
moving from the saline material compartment to the
compartment adjacent an anion selective barrier; and a first
cation selective barrier disposed between the saline material
compartment and the cathode compartment to a compartment
adjacent a cation selective barrier such that cations moving from
the saline material compartment traverse the first cation selective
barrier and anions are substantially prevented from moving from
the saline material compartment to the compartment adjacent a
cation selective barrier;
introducing a material oxidizable by an oxidizing activity
of the anodophilic bacteria;
incubating the material oxidizable by the anodophilic
bacteria under oxidizing reactions conditions such that electrons
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Application 12/765,192
are produced and transferred to the anode, generating a potential
between the anode and cathode; and
introducing a saline material into the saline material
compartment.
Claims Appendix at Appeal Br. 7.
REJECTIONS
The Examiner made the following rejections:
A. Claims 1-10, 12-13, 15, and 27-28 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Hamano3 in
view of Logan. 4 Final Act. 3.
B. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hamano in view of Logan and further
in view of Beatty. 5 Id. at 13.
Appellant seeks our review of Rejections A-B. Appellant presents
argument directed to independent claim 1 and provides no additional
argument as to claims 2-10, 12-15, and 27-28 separate from what is argued
for claim 1. Appeal Br. 5---6. Therefore, we focus our discussion below on
claim 1 (Rejection A) to resolve the issues on appeal.
OPINION
The Examiner rejects claim 1, among others, as unpatentable over
Hamano in view of Logan. Final Act. 3. The Examiner finds that Hamano
3 Toshikatsu Hamano, US 5,376,250, issued December 27, 1994 (hereinafter
"Hamano").
4 Bruce Logan, US 8,277,984 B2, issued October 2, 2012 (hereinafter
"Logan").
5 John C. Beatty, III, US 4,105,534, issued August 8, 1978 (hereinafter
"Beatty").
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Application 12/765,192
teaches a desalination process with a system having each of the claim
limitations except
a plurality of anodophilic bacteria disposed in the anode
compartment, that the cathode is an air cathode, introducing a
material oxidizable by an oxidizing activity of the anodophilic
bacteria, and incubating the material oxidizable by the
anodophilic bacteria under oxidizing reaction conditions such
that electrons are produced and transferred to the anode and
potential is generated between the anode and the cathode.
Id. at 6. The Examiner finds that Logan teaches a microbial fuel cell having
a similar reaction chamber that includes anodophilic bacteria in the anode
compartment as well as a gas cathode. Id. at 6-7. The Examiner further
finds that Logan teaches
introducing a material oxidizable by an oxidizing activity of the
anodophilic bacteria, and incubating the material oxidizable by
the anodophilic bacteria under oxidizing reaction conditions such
(see column 4, lines 64-67) [, as well as] ... oxidizing reaction
conditions are such that electrons are produced and transferred to
the anode (see column 1, lines 42-47), generating a potential
between the anode and the cathode (see column 9, lines 62-63).
Id. at 6. The Examiner concludes that the person of ordinary skill would
have reason to "use the apparatus taught by Hamano to practice a process
similar to the process taught by Logan for generating electric current by the
oxidation of organic matter by anodophilic bacteria placed in the anode
chamber" because it would have been recognized "that the advantage of the
modification would be to achieve desalination with reduction or elimination
of [an] external power requirement." Id. 7-8.
Appellant presents several arguments in opposition to the Examiner's
conclusion of obviousness. First, Appellant contends that taking the
teachings of Hamano as a whole, would lead one skilled in the art away from
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Application 12/765,192
the claimed invention. Appeal Br. 4. Specifically, Appellant notes that the
teachings of Hamano require "introducing 'water containing hardly soluble
salts' into two electrodialysis blocks, a first block including cation exchange
membranes and monovalent anion selective membranes and a second block
including anion exchange membranes and monovalent cation selective
membranes." Id. Therefore, according to Appellant, the fact that Hamano
made changes to "conventional electrolysis methods and apparatus to
overcome the disadvantages thereof must also be considered in an analysis
of whether one of skill in the art would find it obvious to modify the
Hamano et al. reference in view of the cited Logan reference." Id.
We disagree with Appellant's contention that Hamano teaches away
from the combination. "A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant." In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The teachings of a reference that
arguably teaches away from a claimed feature must be weighed alongside
the teachings of a cited reference that teaches the propriety of employing
that feature. Para-Ordnance Mfg., Inc. v. SGS Imps. Int'!, Inc., 73 F.3d
1085, 1090 (Fed. Cir. 1995).
Here, Hamano discusses problems with conventional electrodialysis
processes where "hardly soluble salts" are present in the saline material.
Hamano, col. 1, 11. 10-25 and 45---60. Specifically, when "hardly soluble
salts," such as calcium sulfate, are present, these salts often precipitate out
"on the surface and at the inside of the cation exchange members and the
anion exchange membranes facing the concentrating cells of the
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electrodialysis apparatus." Id. at 11. 45-52. Consequently, the ion exchange
membranes may be destroyed and the electronic resistance of the
electrodialysis apparatus, as a whole, is reduced. Id. at 11. 52-59. However,
and as the Examiner notes, while "Hamano solves the problem of
precipitation of 'hardly soluble salt' Hamano does not preclude or teach
away from treating water that does not have 'hardly soluble salts."' Ans. 19.
Therefore, we find no reversible error in the Examiner's findings and
conclusions.
Second, Appellant notes that Hamano teaches a solution that
"require[ s] a use of two electrodialysis 'blocks,' each containing a specified
combination of membranes, i.e. a first block including cation exchange
membranes and monovalent anion selective membranes and a second block
including anion exchange membranes and monovalent cation selective
membranes." Appeal Br. 4. Thus, Appellant argues, the combination of
Hamano and Logan would not achieve the instant invention because
Hamano "require[s] circulation of material to be desalinated through both of
the two described electrodialysis 'blocks' in order to achieve their goal of
preventing precipitation of a 'hardly soluble salt' onto the surface and on the
inside of the ion exchange membranes." Id. at 4-5.
On this record, Appellant has not apprised us of reversible error by the
Examiner. As the Examiner aptly explains, "the method taught by Hamano
would allow desalination of water, whether it contains 'hardly soluble salts'
or not, and the apparatus taught by Hamano would also be capable of
desalinating water that does not contain 'hardly soluble salts."' Ans. 19-20.
Moreover, the Examiner finds that several embodiments of Hamano do not
require two electrodialysis blocks. Id. at 20. Appellant does not dispute the
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Examiner's finding, and we therefore adopt this finding as fact. Cf Jn re
Kunzmann, 326 F.2d 424, 425 n.3 (CCP A 1964) ("Since appellant has not
shown this finding to be clearly erroneous, we accept it as fact.").
Third, Appellant presses that "Hamano et al. are abiotic and therefore
do not include living organisms" and that "modification of an inorganic
chemical process to include living organisms is neither simple not obvious."
Appeal Br. 5; see also Reply Br. 1. As a result, one of skill in the art "would
not find a suitable basis for expectation that combination with the Hamano et
al. reference would work and it is only with hindsight that the present
assertion of obviousness is made." Appeal Br. 5.
Without more, we find no reversible error. As the Examiner finds,
"Logan clearly teaches how to modify a similar inorganic chemical process,
i.e., the process to generate hydrogen, to include living organisms (see
Logan, the whole document and column 9, line 58 to column 10, line 31)."
Ans. 21. The Examiner also finds that the ion permeable barriers in Hamano
are similar to the barriers of Logan and therefore concludes that "one of
ordinary skill ... would have had a reasonable expectation of success of the
method of Hamano modified by introducing anodophilic bacteria in the
anode chamber." Id. Appellant does not dispute these factual findings
which we also accept as fact. Kunzmann, 326 F.2d at n.3. Thus, the
Examiner's conclusion, based on these factual findings, adequately supports
a conclusion of obviousness.
And lastly, Appellant argues that there exists no reasonable
expectation of success in the combination of Hamano and Logan because
Hamano contains a plurality of alternately arranged cation exchange
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membranes and anion exchange membranes but Logan includes only one ion
exchange membrane. Appeal Br. 5. Appellant argues that
one of skill in the art, understanding that the cited Logan
reference describes and shows generation of protons at the anode
and their passage to the cathode where they combine with
electrons and oxygen to form water, would have no reasonable
expectation that such a process would be possible in the
apparatus and method of Hamano et al. since no means of
passage of protons from the anode to cathode appears possible.
Appeal Br. 5. This is because an "impermeable barrier is present between
the two electrodialysis "blocks" described and shown in Figure 1 of Hamano
et al." Id. And, Appellant urges that even if the barrier is not impermeable,
the environment of Hamano will be changed and "one of skill in the art
would have expected that exposure to the reaction conditions of Hamano
would have significant consequences on living organisms, producing a non-
physiological environment and decreasing or eliminating the metabolic
functions of the bacteria critical for function of the system." Reply Br. 2.
Appellant's argument is not persuasive of reversible error. As the
Examiner explains, a person skilled in the art would understand that the
number of permeable membranes is immaterial "so long as there is a path for
movement of the ions between the anode and the cathode of an electrolytic
cell and the electrical circuit is completed." Ans. 22. The Examiner also
aptly finds that the "blocks" are not impermeable and that the partition
"inherently must be an ion conducting partition in order for the
electrodialysis apparatus of Fig. 1 to operate." Ans. 23. Again, these
findings are not challenged by Appellant and we therefore adopt them as
fact. Kunzmann, 326 F.2d at n.3.
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We are also unconvinced by Appellant's contention that the reaction
conditions of Hamano "would have significant consequences on living
organisms, producing a non-physiological environment and decreasing or
eliminating the metabolic functions of the bacteria critical for function of the
system." Reply Br. 2. Appellant provides no evidence supporting this
assertion which is based instead on unsubstantiated attorney argument. Such
attorney argument has low probative value. See In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997). Attorney argument is not evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974); see also Estee Lauder Inc. v.
L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) ("Counsel's argument
cannot take the place of evidence lacking in the record."). Nor can such
argument take the place of evidence lacking in the record. Meitzner v.
Mindick, 549 F.2d 775, 782 (CCPA 1977).
Moreover, the use of a known element according to its established
function to yield a predictable result-i.e., anodophilic bacteria to generate
current-typically does not result in nonobvious subject matter. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007) ("The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results."); see also id. at 416 ("[W]hen
a patent claims a structure already known in the prior art that is altered by
the mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result."). For reasons set
forth above, Appellant's arguments do not persuade us otherwise in this
case. Therefore, we affirm the Examiner's rejection.
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CONCLUSION
The Examiner did not err in rejecting claims 1-10, 12-15, and 27-28.
DECISION
For the above reasons, the Examiner's rejection of claims 1-10, 12-
15, and 27-28 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)(l).
AFFIRMED
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