Ex Parte Mena Mas

Patent Trial and Appeal Board

Mar 25, 2016

12710552 (P.T.A.B. Mar. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121710,552 02/23/2010
79782 7590 03/29/2016
Law Offices of Daniel L. Dawes
Dawes Patent Law Group
5200 Warner Blvd, Ste. 106
Huntington Beach, CA 92649
FIRST NAMED INVENTOR
Jacinto Fernando Mena Mas
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.
MAR2.PAU.Ol 8970
EXAMINER
HENKEL, DANIELLE B
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
03/29/2016 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):
ddawes@dawespatents.com
mdawes@dawespatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACINTO FERNANDO MENA MAS
Appeal2014-006936
Application 12/710,552
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 18 through 20 and 22 through 26.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal is directed to a photobioreactor system
that can be used for the mass production of algae. (Spec. i-fi-1 18, 19, 21.)
The photobioreactor comprises at least two receiving channels, and at least
1 Appellant identifies the Real Parties in Interest as Jacinto Fernando Mena
Mas (Appellant) and Pere MargalefValldeperez. (Appeal Brief filed
January 17, 2014 ("App. Br.") at 1.)
2 Final Office Action mailed September 3, 2013 ("Final Act.").
Appeal2014-006936
Application 12/710,552
one fluid moving device is positioned in each receiving channel. (Spec.
i-f 20, Fig. 2.) The photobioreactor also comprises a plurality of transparent
or translucent tubes that are disposed between, and directly and fluidly
coupled to, each of the receiving channels. (Id.) The photobioreactor
further comprises a dam that provides a constant hydraulic head over the
plurality of closed tubes, which functions, along with the fluid moving
devices, to circulate an aqueous solution containing algae through the tubes.
(Spec. i-fi-119, 41, 45.) The algae are exposed to a light source, carbon
dioxide, and nutrients in the transparent, closed tubes, which allows
photosynthesis to occur. (Spec. i-f 19.) Oxygen generated during
photosynthesis in the closed tubes is eliminated when the aqueous algal
solution is circulated from the tubes into a receiving channel. (Spec. i-f 22.)
Details of the appealed subject matter are recited in representative
claim 18, reproduced below from the Claims Appendix to the Appeal Brief.
18. A photobioreactor comprising:
at least two receiving channels;
a plurality of transparent or translucent tubes disposed
between the at least two receiving channels, wherein each of the
plurality of transparent or translucent tubes are directly and
fluidly coupled to each of the two receiving channels at both
ends;
at least one fluid moving device disposed within each of
the at least two receiving channels;
a dam disposed within each of the at least two receiving
channels and immediately and adjacently downstream of the at
least one fluid moving device disposed within each of the at
least two receiving channels; and
at least one type of photosynthetic organism mixed with
an aqueous solution capable of flowing through the at least two
receiving channels and plurality of transparent or translucent
tubes,
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Appeal2014-006936
Application 12/710,552
wherein the dam provides a constant hydraulic head over
the plurality of transparent and translucent tubes disposed
downstream of the at least one fluid moving device.
(App. Br. 29, Claims Appendix.)
Appellant seeks review of the Examiner's final rejection of claims 18-
20 and 22-26 under 35 U.S.C. § 103(a) as unpatentable over the disclosure
U.S. Patent Application Publication 2005/0115893 Al published in the
name of Brune et al. on June 2, 2005 (hereinafter referred to as "Brune") in
view of U.S. Patent Application Publication 2008/0153080 Al published in
the name of Woods et al. on June 26, 2008 (hereinafter referred to as
"Woods"), maintained by the Examiner in the Answer mailed on March 27,
2014 ("Ans.").
DISCUSSION
Upon consideration of the evidence on this appeal record in light of
the arguments advanced by the Examiner and Appellant, we concur with
Appellant that the Examiner has not carried the burden of establishing a
prima facie case of obviousness regarding the subject matter recited in
claims 18-20 and 22-26 within the meaning of 35 U.S.C. § 103(a).
Accordingly, we reverse the Examiner's§ 103(a) rejection of these claims
for the reasons set forth in the Appeal Brief. We add the discussion below
primarily for emphasis and completeness.
As explained by Appellant, the Examiner has not established that
there would have been an apparent reason or suggestion to modify the
applied prior art in the manner proposed so as to arrive at the claimed
invention. (App. Br. 26.) Specifically, the Examiner has not articulated an
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Appeal2014-006936
Application 12/710,552
apparent reason or suggestion that would have prompted one of ordinary
skill in the art to replace the raceways and polishing chamber of Brune's
aquaculture system for purifying wastewater, with the closed, tubular
photobioreactor for cultivating algae disclosed in Woods.
Brune discloses that the raceways and polishing chamber present in
the aquaculture system are open to the atmosphere and contain fish that
consume algae present in wastewater circulated into the chambers. (Brune
i-fi-139 and 40.) In contrast, the transparent, tubular photobioreactor disclosed
in Woods is a closed system used to cultivate algae. (Woods i170.)
Specifically, Woods discloses that the photobioreactor is closed to the
atmosphere, and contains inlets for supplying water, carbon dioxide, and
nutrients to algae present in the photobioreactor in order for photosynthesis
to occur. (Id.) On this record, the Examiner has not adequately explained,
or provided any evidence to show, why one of ordinary skill in the art
reasonably would have expected that the closed, tubular photobioreactor
disclosed in Woods for growing algae would be useful as Brune' s polishing
chamber and raceways for maintaining fish that remove algae from
wastewater. In other words, the Examiner has not demonstrated that one of
ordinary skill in the art would have replaced Brune' s polishing chamber and
raceways for removing algae with the tubular photobioreactor disclosed in
Woods that has the opposite purpose---cultivating algae.
Accordingly, on this record, we concur with Appellant that the
Examiner's evidence and explanation are not sufficient to establish a prima
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Appeal2014-006936
Application 12/710,552
facie case of obviousness of the subject matter recited in claims 18-20 and
22-26 within the meaning of 35 U.S.C. § 103(a). We therefore do not
sustain this rejection.
ORDER
In view of the reasons set forth in the Appeal Brief and above, the
Examiner's§ 103(a) rejection of claims 18-20 and 22-26 is reversed.
REVERSED
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