Ex Parte Scherson et alDownload PDFPatent Trial and Appeal BoardDec 12, 201613778710 (P.T.A.B. Dec. 12, 2016) 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. 13/778,710 02/27/2013 Daniel A. Scherson GOJ.174.DIV 1153 26360 7590 12/12/2016 Renner Kenner Greive Bobak Taylor & Weber Co., LPA First National Tower, Suite 400 106 South Main Street Akron, OH 44308-1412 EXAMINER THOMAS, CIELP ART UNIT PAPER NUMBER 1754 MAIL DATE DELIVERY MODE 12/12/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL A. SCHERSON, JACKSON W. WEGLIN and WILFRED J. HEMKER Appeal 2015-006013 Application 13/778,710 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1—6. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2015-006013 Application 13/778,710 Independent claim 1 reads (emphasis added to highlight disputed limitations): 1. An electrolytic device for the generation of hypohalous acid in aqueous solutions, the device comprising: an anolyte chamber having an inlet for receiving an aqueous solution containing halide ions therein, the anolyte chamber having an exterior wall and a solid anode contained within the anolyte chamber providing for the oxidation of the halide ions to provide an anolyte effluent of hypohalous acid in aqueous solution; a catholyte chamber having an inlet for receiving an aqueous electrolyte, wherein the catholyte chamber is defined by at least one exterior wall of the device or a portion of at least one exterior wall of the device comprising a gas permeable cathode, the cathode having a hydrophobic surface for receiving oxygen from outside the catholyte chamber and a hydrophilic surface allowing for reduction of dioxygen; and an ionomeric membrane for partitioning the anolyte chamber from the catholyte chamber; wherein the anolyte chamber further includes an outlet including a pH control for determining and regulating the pH of the exiting anolyte effluent to between about 4 and 9. The Examiner maintains the following rejections: (a) claims 1—3 and 6 rejected under 35 U.S.C. § 103(a) as unpatentable over Miyashita (US 5,997,717, issued December 7, 1999), Uno (US 6,547,947 Bl, issued April 15, 2003), Ang (US 4,673,473, issued June 16, 1987) and Kindred (US 2006/0076248 Al, published April 13, 2006), (b) claim 4 rejected under 35 U.S.C. § 103(a) as unpatentable over Miyashita, Uno, Ang, Kindred, Marais (US 6,878,287 Bl, issued April 12, 2005) and Popov (US 2001/0022273 Al, published September 20, 2001), and 2 Appeal 2015-006013 Application 13/778,710 (c) claim 5 rejected under 35 U.S.C. § 103(a) as unpatentable over Miyashita, Uno, Ang, Kindred, Joshi (US 2008/0264778 Al, published October 30, 2008) and Krafton (US 6,881,320 Bl, issued April 19, 2005). For Rejection (a), Appellants present arguments for independent claim 1 and relies on the same arguments in addressing claims 2, 3 and 6. App. Br. 8—9. For Rejection (c), Appellants also rely on these arguments in addressing the separate rejection of claim 5 and do not address or further distinguish the additionally cited secondary references based on the additional limitations of the respectively rejected claims. Id. at 10. Accordingly, we select claim 1 as representative of the subject matter before us for review on appeal. Claims 2, 3, 5 and 6 stand or fall with claim 1. Appellants do present separate arguments for Rejection (b) that will be addressed separately. ANALYSIS Rejections (a) and (c) We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we determine that a preponderance of the evidence supports the Examiner’s § 103 rejection of representative independent claim 1 (Rejection (a)). Accordingly, we will sustain ah of the Examiner’s rejections for essentially those reasons expressed in the Answer and we add the following for emphasis. Independent claim 1 requires an electrolytic device comprising a catholyte chamber defined by at least one exterior wall of the device or a portion of at least one exterior wall of the device comprising a gas permeable cathode. 3 Appeal 2015-006013 Application 13/778,710 We refer to the Examiner’s Final Action for a statement of the rejection. Final Act. 3—5.1 Appellants argue Uno teaches a permeable cathode with its back side separating the electrolysis chamber from an oxygen supply chamber but does not disclose the permeable cathode defines at least one exterior wall of Uno’s device. App. Br. 7; Uno Figure 1, col. 7,1. 66—col. 8,1. 42. Appellants also argue that Ang’s gas permeable cathode, while serving as an exterior wall of a catholyte chamber, is designed to receive carbon dioxide, and not oxygen. App. Br. 8; Ang col. 2,11. 38—60. Thus, Appellants argue the combined teachings of Miyashita, Uno and Ang would not have led one skilled in the art to the claimed electrolytic device. App. Br. 7—9. We are unpersuaded by these arguments. The Examiner found, and Appellants do not dispute, that Miyashita discloses a dual chamber electrolytic device for the generation of hypohalous acid in aqueous solutions that differs from the claimed electrolytic device in that Miyashita’s catholyte chamber does not comprise a permeable cathode as part of an exterior wall. Final Act. 3^4; App. Br. 7—8; Miyashita Figure 3, col. 13,1.1— col. 14,1. 22. The Examiner found Uno discloses as known to use a permeable cathode as a back wall (not an exterior wall) separating an electrolysis chamber from an oxygen supply chamber in a process for the generation of hypohalous acid in aqueous solutions. Final Act. 4; Uno Figure 1, col. 3,1. 26-40, col. 4,11. 39-41; col. 7,1. 66—col. 8,1. 41. The Examiner also found Ang discloses as known an alternate technique and 1 A discussion of Kindred is unnecessary for disposition of this rejection. Appellants did not contest the Examiner’s reliance on this reference for its stated teachings. See Appeal Brief, generally. 4 Appeal 2015-006013 Application 13/778,710 electrolytic device configuration where the back side of a permeable cathode forms an exterior wall of an electrolytic device that is exposed to a gas flow. Final Act. 5 (RP 39); Ang Figures 1—2, col. 1,1. 66-col. 2,1. 60. The Examiner determined one skilled in the art would have been capable of modifying the electrolytic device of Miyashita to incorporate the gas permeable cathode of Uno and to use it as an exterior wall of a catholyte chamber in view of the above noted disclosures. Final Act. 4—5. Thus, the Examiner provided a reasonable basis to combine the cited art to arrive to the claimed invention. Id. Appellants’ arguments do not adequately address the Examiner’s reasons for combining the teachings of the cited art. Appellants have not adequately explained why one skilled in the art would not have been capable of arriving at the claimed electrolytic device from the teachings of the cited references, ft is well established that nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425—26 (CCPA 1981) (“The test for obviousness ... is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Thus, Appellants’ arguments do not point to reversible error in the Examiner’s determination of obviousness. Cf. In reMayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) (“Because the applicants merely substituted one element known in the art for a known equivalent, this court affirms [the rejection for obviousness].”); In re Font, 675 F.2d 297, 301 (CCPA 1982) (“Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.”). 5 Appeal 2015-006013 Application 13/778,710 Accordingly, we affirm the Examiner’s prior art rejections of claims 1—3, 5 and 6 under 35 U.S.C. § 103(a) (Rejections (a) and (c)) for the reasons presented by the Examiner and given above. Rejection (b) Dependent claim 4 requires a recirculation loop for recirculating product back to the anolyte chamber when the product does not meet the desired pH requirements. We refer to the Examiner’s Final Action for a statement of the rejection. Final Act. 6—7. Appellants argue the apparatus of Marais sends catholyte effluent back into the anode chamber and anolyte effluent back into the cathode chamber, but does not teach sending the combined effluents back into the anolyte chamber as claimed in claim 4. App. Br. 9; Marais col. 9,11. 25—33. We are unpersuaded by Appellants’ arguments for the reasons presented by the Examiner. Ans. 9. Moreover, as noted by the Examiner, Marais recognizes that recirculation of streams can be used to optimize the quality of the output stream in terms of the antimicrobial effect and pH. Final Act. 6—7; Marais col. 9,11. 5—54. Appellants have not adequately explained why one skilled in the art would not have been capable of adapting the device of Miyashita so as to incorporate a recirculation stream, as taught by Marais, to ensure that the output product meets a desired pH target. Accordingly, we affirm the Examiner’s prior art rejection of claim 4under 35 U.S.C. § 103(a) (Rejection (b)) for the reasons presented by the Examiner and given above. 6 Appeal 2015-006013 Application 13/778,710 ORDER The Examiner’s prior art rejections of claims 1—6 are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 7 Copy with citationCopy as parenthetical citation