Ex Parte Sato

Board of Patent Appeals and Interferences

Aug 18, 2009

10791829 (B.P.A.I. Aug. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SHIN SATO
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Appeal 2009-003331
Application 10/791,829
Technology Center 1700
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Decided: August 18, 2009
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Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2 and 4-7, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).

The Invention
The Appellants claim an electrodeionization apparatus. Claim 1 is
illustrative:
1. An electrodeionization apparatus comprising:

Appeal 2009-003331
Application 10/791,829

an anolyte compartment having an anode;
a catholyte compartment having a cathode;
concentrating compartments and desalting compartments
wherein the concentrating compartments and the desalting compartments are
formed between the anolyte compartment and the catholyte compartment by
arranging alternately at least one anion-exchange membrane and at least one
cation-exchange membrane;
ion-exchanger with which the desalting compartments are filled;
at least one of ion-exchanger, activated carbon, and electric conductor
which fills the concentrating compartments;
a device for introducing electrode water into the anolyte compartment
and the catholyte compartment, respectively;
a concentrated water introducing device for introducing concentrated
water into the concentrating compartments;
a device for feeding raw water into the desalting compartments to
produce deionized water; and
outlets formed at the desalting compartments for taking out the
deionized water;
wherein the outlets of the desalting compartments are connected to the
concentrated water introducing device to introduce a part of the deionized
water containing at least one of silica and boron at a lower concentration
than the raw water and obtained from the desalting compartments into the
concentrating compartments at a side near the outlets for the deionized water
of the desalting compartments;
the concentrated water introducing device makes the concentrated
water flow out of the concentrating compartment at a side near an inlet for
the raw water of the desalting compartment;
at least a part of the concentrated water flows out of the concentrating
compartments out of a circulatory system;
the desalting compartments are filled with an anion exchanger and a
cation exchanger in such a manner that anion exchanger/cation exchanger
volume ratio becomes 8/2 to 5/5; and
at least one part of the anion exchanger in the desalting compartment
is made of II type anion exchanger.

The References
Liang (Liang ‘422) 5,292,422 Mar. 8, 1994
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Liang (Liang ‘037) 6,649,037 B2 Nov. 18, 2003
The Rejections
The claims stand rejected as follows: claims 1, 2 and 4-6 under
35 U.S.C. § 102(e) or, in the alternative, under 35 U.S.C. § 103 over
Liang ‘037, and claim 7 under 35 U.S.C. § 103 over Liang ‘037 in view of
Liang ‘422.
OPINION
We reverse the Examiner’s rejections. We need to address only the
sole independent claim, i.e., claim 1. 1
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Liang discloses, or would have rendered prima facie
obvious, to one of ordinary skill in the art, an electrodeionization apparatus
capable of introducing part of deionized water obtained from desalting
compartments into concentrating compartments at a side near the outlets for
the deionized water of the desalting compartments, or 2) flowing
concentrated water out of the concentrating compartments at a side near a
raw water inlet to the desalting compartments?

Findings of Fact
Liang ‘037 discloses an electrodeionization apparatus comprising, in
one embodiment, a first stage depletion compartment (10) outlet (which

1 The Examiner does not rely upon Liang ‘422 for any disclosure that
remedies the deficiency in Liang ‘037 as to the independent claim (Ans. 5-
6).

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Application 10/791,829

corresponds to the Appellant’s desalting compartment outlet) from which the
first stage product is fed to the inlets of second stage depletion (30) and
1concentrating (40) compartments (col. 14, ll. 58-62; col. 15, ll. 9-11; Fig.
1). In another embodiment the product from a first depletion compartment
(620) is fed to the inlet of a second depletion compartment (630) within the
same module (col. 11, ll. 32-61; Fig. 13).
Analysis
The Appellant argues, regarding both of the above-mentioned
embodiments, that Liang ‘037 does not disclose or suggest feeding a portion
of the product from a depletion compartment back to the concentrating
compartment of that stage (Br. 9-11; Reply Br. 2-4).
The Examiner argues:
Figure 13 of the Liang ‘037 patent discloses the introduction of
water at a side near the outlets for the water of a desalting
compartment and the water flows out of the compartment at a side
near an inlet for the water (see figure 13 and col. 11, lines 31-61).
The material being treated in the compartments is given little or no
patentable weight in an apparatus claim. [Ans. 6]
. . .
When the entire [Liang ‘037] patent is perused and not merely
Figure 1, the invention as claimed with the placement of the inlets to
some compartments are [sic] adjacent outlets of other compartments is
clearly disclosed by Liang ‘037. Figure 13 as recited above, shows
the introduction of water from the outlet of a compartment fed to the
inlet of another compartment. Furthermore, the terms “desalting
compartments” and “concentrating compartments” as defined in the
instant claims are compartments placed between anolyte and catholyte
compartments separated by anion and cation membranes having ion
exchanger therein. The compartments shown and described in
Figure 13 read upon such an arrangement.

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Furthermore, with respect to the use of a single module as
presently claimed and argued or a [sic] two or more modules as
suggested in Figure 1, the Liang ‘037 patent teaches that one such
a modification to a single module or other plural modules would have
been possible ways to arrange the electrodeionization apparatus (see
col. 10, lines 57-65). [Ans. 7]

The Examiner has the initial burden of establishing a prima facie case
of anticipation by pointing out where all of the claim limitations appear in a
single reference. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re
King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).
The Examiner’s arguments set forth above do not explain where
Liang ‘037 discloses an apparatus capable of 1) introducing a part of the
deionized water from desalting compartments into concentrating
compartments at a side near the outlets for the deionized water of the
desalting compartments, or 2) flowing concentrated water out of the
concentrating compartments at a side near a raw water inlet to the desalting
compartments. To meet the requirements of the Appellant’s independent
claim the Liang ‘037 apparatus must have those capabilities, and the
Examiner has not established that it does so.
For the Appellant’s claimed invention to be anticipated, Liang ‘037
must lead one of ordinary skill in the art to a composition which falls within
the scope of the claim “without any need for picking, choosing, and
combining various disclosures not directly related to each other by the
teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA
1972).
The Examiner has combined the Liang ‘037 Figures 1 and 13 without
establishing a direct relation of the relied-upon features. Moreover, the
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Examiner has not identified features of those figures which, when combined,
would be capable of 1) introducing a part of the deionized water from
desalting compartments into concentrating compartments at a side near the
outlets for the deionized water of the desalting compartments, or 2) flowing
concentrated water out of the concentrating compartments at a side near a
raw water inlet to the desalting compartments.
Regarding the obviousness rejection the Examiner argues (Ans. 5):
In the alternative, the invention as a whole would have been
obvious to one having ordinary skill in the art at the time the invention
was made to modify the disclosure of the Liang patent to recycle the
water from the desalting compartment outlet to the inlet of the
concentrating compartment in the same module, because given the
disclosure of Liang one having ordinary skill in the art would find it
predictable to select from the variety of different configurations based
upon the material being treated and removed to obtain the purified
product.

As stated in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness’” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Even if, as argued by the Examiner, one of ordinary skill in the art
would have found it predictable to make selections from among the
Liang ‘037 disclosed configurations based upon the material being treated
and removed, that argument is not sufficient for establishing a prima facie
case of obviousness of the Appellant’s claimed invention. The Examiner
must provide the required articulated reasoning with rational underpinning
which shows that one of ordinary skill in the art would have been led by
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Liang ‘037 to make selections that result in the Appellant’s claimed
apparatus, and the Examiner has not done so.
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that Liang discloses, expressly or inherently, or would have
rendered prima facie obvious, to one of ordinary skill in the art, an
electrodeionization apparatus capable of introducing part of deionized water
obtained from desalting compartments into concentrating compartments at a
side near the outlets for the deionized water of the desalting compartments,
or 2) flowing concentrated water out of the concentrating compartments at a
side near a raw water inlet to the desalting compartments.
DECISION/ORDER
The rejections of claims 1, 2 and 4-6 under 35 U.S.C. § 102(e) or, in
the alternative, under 35 U.S.C. § 103 over Liang ‘037, and claim 7 under
35 U.S.C. § 103 over Liang ‘037 in view of Liang ‘422 are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

tc

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