Ex Parte Muller et al

Patent Trial and Appeal Board

Jul 13, 2016

12373649 (P.T.A.B. Jul. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/373,649 01/13/2009
56885 7590 07115/2016
Evoqua Water Technologies LLC
U0105
Intellectual Property Department
10 Technology Drive
Lowell, MA 01851
FIRST NAMED INVENTOR
Heinz Joachim Muller
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.
2006Pl5510WOUS 1906
EXAMINER
ZALASKY, KATHERINE M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
07/15/2016 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):
docketing@LALaw.com
CKent@LALaw.com
intellectualproperty@evoqua.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEINZ JOACHIM MULLER,
DONGLIANG WANG, and ANDREW JOHN INGLIS
Appeal2015-002610
Application 12/373,649
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHERL. OGDEN, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 4, 11-12, 17-23, 26-32, 35, 36, 39-42, and
44--48. We have jurisdiction. 35 U.S.C. § 6(b).
We REVERSE and also enter a new ground of rejection under 37
C.F.R. § 41.50(b).
Appeal2015-002610
Application 12/373,649
STATEMENT OF THE CASE
Appellants 1 describe the present invention as providing a method of
hydrophilising a polymer membrane. Spec. 2: 17-19. The membranes could
be used, for example, in bioreactor modules. Spec. 20: 10-14. Claims 1 and
45, reproduced below, are illustrative of the claimed subject matter:
1. A method of treating a porous polymeric membrane
compnsmg:
contacting the porous polymeric membrane with a
treatment solution comprising monopersulfate, a halide salt, and
a base.
45. A method of facilitating treatment of a porous polymeric
membrane comprising:
providing a porous polymeric membrane treatment solution
comprising; [sic, : ]
a monopersulfate;
a chloride salt; and
a base.
Appeal Br. 2 12, 18 (Claims Appendix).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Chen et al.
(hereinafter "Chen")
Harttig et al.
(hereinafter "Harttig")
us 3,886,066 May 27, 1975
us 4,812,269 Mar. 14, 1989
1 According to the Appellants, the real party in interest is Evoqua Water
Technologies, LLC. Appeal Br. 3.
2 In this decision, we refer to the Final Office Action mailed May 22, 2014
("Final Act."), the Appeal Brief filed October 20, 2014 ("Appeal Br."), the
Examiner's Answer mailed November 19, 2014 ("Ans."), and the Reply
Brief filed December 9, 2014 ("Reply Br.").
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Application 12/373,649
Delcomyn et al. US 2005/0090419 Al Apr. 28, 2005
(hereinafter "Delcomyn")
Jetten et al. 3 US 2006/0237038 Al Oct. 26, 2006
(hereinafter "J etten")
Hogt et al. WO 2005/005028 Al Jan. 20, 2005
(hereinafter "Hogt")
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 2, 4, 11, 12, 17-23, 26-32, 35, 36, 39-42, and
44--48 under 35 U.S.C. § 103 as unpatentable over Jetten in view of
Delcomyn. Ans. 2.
Rejection 2. Claims 33 and 34 under 35 U.S.C. § 103 as unpatentable
over Jetten in view of Delcomyn and further in view of Hogt. Id. at 4.
Rejection 3. Claims 5-10 and 14--16 under 35 U.S.C. § 103 as
unpatentable over Jetten and Delcomyn and further in view of Harttig. Id.
at 5.
Rejection 4. Claims 37 and 43 under 35 U.S.C. § 103 as unpatentable
over Jetten and Delcomyn and further in view of Chen. Id. at 6.
ANALYSIS
Each of the Examiner's rejections is based upon the combination of
Jetten and Delcomyn. Jetten is directed to a method of cleaning food and
beverage process equipment filters. Jetten i-f 1, 2. Jetten does not disclose
using a combination of monopersulfate, a halide salt, and a base. Final
Act. 2. Indeed, Jetten discourages the use of chemicals that would result in
halogen residues because such residues are "highly undesired in equipment
3 The Examiner relies on WO 2003/095078 but provides citations to US
2006/0237038. Ans. 2.
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Application 12/373,649
used for preparing or treating beverages and other food stuffs." Jetsen il 5;
see also id. at i-f 14 (encouraging use of a "suitable halogen-free oxidising
agent"); Appeal Br. 6; Reply Br. 4--5.
Delcomyn teaches the use of a "universal decontaminant solution" for
neutralizing chemical toxicants including, for example, pesticides,
herbicides, chemical warfare agents, viruses, bacteria, spores, fungi, and
toxins. Delcomyn Abstract. Delcomyn's solution includes a
monopersulfate, halide salt, and base. Id. at i-fi-124--28; Final Act. 2-3.
Delcomyn states that its "invention is of particular importance to military
operations in which large area decontamination would be needed such as to
aircraft, tanks, carrier ships, facilities, equipment, and terrain .... "and can
be applied "to various contaminated surfaces." Delcomyn i-fi-122, 45.
Delcomyn does not, however, suggest use of its solution in combination with
a food or beverage polymeric filter. Appeal Br. 8-9.
Based on the record before us, we agree with Appellants that the
Examiner has not adequately established that a person of ordinary skill in the
art would have been motivated to use the decontaminant of Delcomyn on the
Jetten's polymeric membranes for food and beverage processing. Appeal Br.
6-10. A preponderance of the evidence supports that Delcomyn's solution
utilizing halide salt would introduce undersirable halogen residue to the
Jetten membranes. Appeal Br. 6-7. Although the Examiner finds that Jetten
teaches use of hypochlorite and hypobromite which may dissociate into
halogen residues under certain conditions (Ans. 9), Appellants persuasively
argue that this nonetheless would not provide a reason to directly introduce
Delcomyn's halide salts to food/beverage filters (Reply Br. 5). Additionally,
Delcomyn does not explicitly teach that it would remove the polyphenol
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Application 12/373,649
protein complexes which are a primary concern of Jetten. Reply Br. 4;
Jetten i-fi-18, 9, 17.
Because the record before us does not establish by a preponderance of
the evidence that a person of ordinary skill would have looked to
Delcomyn's solution to modify Jetten's membrane-cleaning, we do not
sustain the Examiner's rejection of claim 1. Likewise, we do not sustain the
rejection of dependent claims 2, 4, 11-12, 17-23, 26-32, 35, 36, 39--42, and
44 because the Examiner's rejection of each of those claims also relies upon
the combination of Delcomyn and Jetten. Moreover, the Examiner's
explanation of the additional Ho gt, Harttig, and Chen references as applied
to particular dependent claims does not cure the primary rejection's
deficiency. Final Act. 4--7.
Independent claim 45, however, has a different scope than claim 1.
Claim 45 's preamble recitation that it is a method "of facilitating treatment
of a porous polymeric membrane" and its recitation of providing a solution
that is a "porous polymeric membrane treatment solution" are statements of
use or intended purpose. Whether or not a statement of "intended purpose
constitutes a limitation to the claims is, as has been long established, a
matter to be determined on the facts of each case in view of the claimed
invention as a whole." In re Stencel, 828 F.2d 751, 754-55 (Fed. Cir. 1987);
see also C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1350 (Fed. Cir.
1998) (holding that preamble did not limit claim scope where it merely
stated intended use or purpose of the invention).
Although claim 45 is a method claim, its method essentially requires a
single step: "providing a porous polymeric membrane treatment solution."
The two membrane recitations of claim 45 reflect, at most, only the
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Appeal2015-002610
Application 12/373,649
provider's subjective expectation or intent for future use of the solution.
Appellants' claimed invention cannot be reasonably be distinguished from
prior art based solely upon intended use. Cf In re Schreiber, 128 F.3d 1473,
14 77 (Fed. Cir. 1997) ("It is well settled that the recitation of a new intended
use for an old product does not make a claim to that old product
patentable"). Thus, the recitations of claim 45 related to membranes do not
physically distinguish a method of providing a solution comprising a
monopersulfate, a chloride salt, and a base.
Delcomyn teaches providing a solution that includes monopersulfate,
chloride salt, and a base. Final Act. 2-3; Delcomyn i-fi-124--28. Based on the
claim construction above, Delcomyn teaches each limitation of claim 45.
Combination with the Jetten reference is unnecessary. Therefore, as a new
ground, we reject claim 45 under 35 U.S.C. § 102 as anticipated by
Delcomyn.
With respect to dependent claims 46-48, the Examiner finds that
Delcomyn teaches an amount of monopersulfate between 0 .1 to 40% or
more preferably between 1-20%, chloride salt between 0.1%and40%, and
base in an amount between 0.05% and 20%. Final Act. 3--4 (citing
Delcomyn i-fi-128, 32, 33). We agree with and adopt these findings of fact.
Because these ranges overlap with the recited ranges of dependent claims
46-48, we reject claims 46-48 as obvious under 35 U.S.C. § 103 in view of
Delcomyn as a second new ground. See, e.g., In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990) (affirming Board's rejection where prior art's
carbon monoxide range overlapped with claimed range and Woodruff failed
to establish criticality of claimed range).
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DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1, 2, 4, 11-12, 17-23, 26-32, 35, 36, 39-42, and 44. We enter a new ground
of rejection for claim 45 under 35 U.S.C. § 102. We enter a new ground of
rejection for claims 46-48 under 35 U.S.C. § 103.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the Appellants,
within two months from the date of the decision, must exercise one of
the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner. The
new ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is made which,
in the opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
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Application 12/373,649
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214. 01.
REVERSED; 37 C.F.R. § 41.50(b)
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