Ex Parte Takahashi et alDownload PDFPatent Trial and Appeal BoardNov 16, 201713786647 (P.T.A.B. Nov. 16, 2017) 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. 13/786,647 03/06/2013 Tamami TAKAHASHI EBARAl-50723 1061 116 7590 11/20/2017 PFARNF fr GORDON T T P EXAMINER 1801 EAST 9TH STREET PATEL, PRANAV N SUITE 1200 CLEVELAND, OH 44114-3108 ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 11/20/2017 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): patdocket@peame.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAMAMI TAKAHASHI, MASANORI GOTO, and KAZUAKI MAEDA Appeal 2017-003162 Application 13/786,647 Technology Center 1700 Before GEORGE C. BEST, DONNA M. PRAISS, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1—6 of Application 13/786,647 under 35 U.S.C. § 103(a) as obvious. Final Act. (Nov. 4, 2015) 4—9. Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we AFFIRM. 1 Appellant is the Applicant, Ebara Corp., which, according to the Appeal Brief, is the real party in interest. Appeal Br. 2. Appeal 2017-003162 Application 13/786,647 BACKGROUND The present application generally relates to a system for desalinating seawater and an energy recovery apparatus which is preferably used in the seawater desalination system. Spec. 1. Claim 1 is representative of the pending claims and is reproduced below: 1. An energy recovery apparatus for exchanging pressure energy between concentrated seawater discharged from a reverse-osmosis membrane-separation apparatus and a part of seawater to be treated by the reverse-osmosis membrane- separation apparatus in a seawater desalination system for producing fresh water from the seawater by supplying the seawater to the reverse-osmosis membrane-separation apparatus to separate the seawater into fresh water and concentrated seawater, said energy recovery apparatus comprising: a cylindrical chamber having a space for containing concentrated seawater and seawater therein, said cylindrical chamber being installed such that a longitudinal direction of said cylindrical chamber is placed in a vertical direction; a concentrated seawater port provided at a lower part of said cylindrical chamber for supplying and discharging the concentrated seawater; a seawater port provided at an upper part of said cylindrical chamber for supplying and discharging the seawater; a first perforated plate and a second perforated plate provided at a concentrated seawater port side in said cylindrical chamber, said second perforated plate being placed more distant from said concentrated seawater port than said first perforated plate; and a third perforated plate and a fourth perforated plate provided at a seawater port side in said cylindrical chamber, said fourth perforated plate being placed more distant from said seawater port than said third perforated plate; 2 Appeal 2017-003162 Application 13/786,647 wherein said first perforated plate, said second perforated plate, said third perforated plate, and said fourth perforated plate are arranged to meet one of the following three requirements: an open area ratio of each of said first perforated plate and said third perforated plate is in the range of 45 to 60%; an open area ratio of each of said second perforated plate and said fourth perforated plate is in the range of 45 to 60%; and a distance between said first perforated plate and said second perforated plate and a distance between said third perforated plate and said fourth perforated plate are not less than 0.5 times of an inner diameter of said cylindrical chamber. Appeal Br. 14 (Claims App.). REJECTIONS On appeal, the Examiner maintains the following rejection: Claims 1—6 are rejected under 35 U.S.C. § 103(a) as obvious over Takahashi et al. (WO 2010/131765 Al,2 published Nov. 18, 2010) (hereinafter “Takahashi”) in view of Nowobilski (US 5,298,226, issued Mar. 29, 1994). Final Act. 4-9. DISCUSSION The Examiner rejected claims 1—6 as obvious over Takahashi in view of Nowobilski. Final Act. 4—9. Appellant provides argument regarding claims 1, 3, 4, and 6. We first address claim 1. 2 The Examiner refers to US 2012/0061309 Al; Mar. 15, 2012 as an English language equivalent of WO 2010/131765. We follow this practice for purposes of the present decision. 3 Appeal 2017-003162 Application 13/786,647 Claim 1 In rejecting claim 1, the Examiner determined that Takahashi teaches all elements of the claim other than the open area ratio of the perforated plates and the distance between perforated plates. Id. at 7. The Examiner further determined that Takahashi and Nowobilski indicate that the open area ratio of the perforated plates and the distance of the plates from each other are result-effective variables. The Examiner additionally determined that it would have been obvious for a person of ordinary skill in the art to optimize the open area ratio and placement of the plates to achieve uniform fluid flow. Id. at 8—9. Appellant argues that the foregoing is in error on several bases. First, Appellant argues that the Examiner has not established that “distance to inner diameter ratio” is a result-effective variable. Appeal Br. 6—7. The limitation at issue provides that the plates are separated by “a distance . . . not less than 0.5 times of an inner diameter of said cylindrical chamber.” Appeal Br. 14 (Claims App.). A particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 620 (CCPA 1977). “A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Here, the Examiner determines that the claimed “distance” is a result-effective variable. Final Act. 8. We concur. For a given diameter of the chamber, a person of skill in the art would know to arrange the perforated plates at a distance so as to 4 Appeal 2017-003162 Application 13/786,647 achieve uniform fluid flow. Takahashi || 127 (“flow regulators 29a, 29b, 29c and 29d for regulating flow of the fluid when the fluid flows into the respective space SI, S2 are provided”), 128 (“adjacent porous plates are away from each other at a predetermined distance”). Accordingly, the Examiner has made a prima facie case of obviousness in regard to the “distance” limitation. In general, an applicant may overcome a prima facie case of obviousness by establishing “that the [claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997) (alteration in original) (citation omitted). “It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice.” In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (quoted with approval in In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995)). Here, Appellant does not argue that the claimed distance (0.5 times the inner diameter) is critical. Rather, Appellant argues that it has not been shown to be result-effective. The claimed ratio, however, is merely an alternative way to express the claimed distance, which is a result-effective variable. Accordingly, Appellant has not shown error in this regard. Second, Appellant argues that the Examiner “has failed to provide sufficient evidence that ‘open area ratio’, as defined by the written description, was recognized in the prior art as a result-effective variable.” Appeal Br. 7. In support of such point, Appellant asserts that the teachings of Takahashi are directed to the “porosity” of the porous plates, which has not been shown to be equivalent to the claimed “open area ratio.” Takahashi 5 Appeal 2017-003162 Application 13/786,647 teaches that “[a] porosity with respect to an entire area of the plate can be calculated by a diameter of a hole and a pitch between holes in the perforated plate.” Takahashi 1130. Similarly, the Specification teaches that “[t]he ratio of the area of holes with respect to an entire area of the perforated plate (open area ratio) is calculated by an array of holes, the diameter ())dh of the small hole h, and the pitch p between the two adjacent holes.” Spec. 13. Thus, both teach that porosity and open area ratio are determined by the number and size of apertures. In view of such teachings, Appellant has not shown error in the Examiner’s finding that Takahashi’s teachings regarding porosity are applicable to the claimed open area ratio. In further support of its argument that the “open area ratio” is not a result-effective variable, Appellant argues the ratio of claim 1 relates to a perforated plate as a whole, while the open area described in Nowobilski is related to only a section of the plate. Appeal Br. 7—8. It is correct that Nowobilski teaches that the arrangement of holes in the perforated plate may be varied by region of the plate. Answer 8. Nowobilski teaches to have increased porosity in the outer section of the distributor plate in order to achieve a more uniform overall distribution. Nowobilski 3:47-4:49, Figs. 3 A—C, 4A—C. Nowobilski further teaches that the size of the perforations is selected “to uniformly distribute the fluid with the minimum pressure loss in fluid velocity.” Nowobilski 4:56—58. This is similar to Takahashi’s teaching that a “numerical value of the porosity is selected so that the porous plate does not cause a great pressure loss and has an excellent flow- regulating function.” Takahashi^ 130. Thus, Nowobilski’s teaching to vary the porosity for certain regions of the perforated plate (distributor) does not 6 Appeal 2017-003162 Application 13/786,647 suggest error in the Examiner’s finding that the open area ratio (porosity) was recognized in the art as a result-effective variable. Third, Appellant argues that, even if the limitations relating to the distance and location of the perforated plates are recognized as result- effective variables, they are not recognized as result-effective “for the same purpose of the claimed ratio.” Appeal Br. 8. As above, the claimed ratio (a separation distance greater than 0.5 the diameter) is not the variable at issue. The variable at issue is the claimed “distance.” Further, Appellant argues that “[cjlaim 1 is directed to the optimum ranges of open area ratios and distance to inner diameter ratio of an energy recovery apparatus for suppressing the mixing of concentrated seawater and regular seawater in a chamber due to turbulent flow diffusion by reducing the non-dimensional standard deviation of the flow velocities.” Appeal Br. 9. That is, “variation of the flow velocities is eliminated,” i.e., uniformity is increased. Spec. 20. Both Takahashi and Nowobilski teach that flow should be uniform rather than turbulent. Takahashi || 127—130, 133 (seawater is regulated “so as to flow uniformly”), 161 (“uniform flow can be formed downstream of the porous plate”) (emphasis added); Nowobilski 3:11—19 (“The present invention lies in the recognition that an improved uniform fluid velocity can be achieved across the entire or substantially entire cross- section of a process vessel. . . [by] arranging at least one particularly designed perforated plate fluid distributor in a particular manner in the process vessel.” (emphasis added)). Accordingly, we determine that the references and the Specification each teach that the structure and placement of the perforated plates affect the uniformity of fluid flow. 7 Appeal 2017-003162 Application 13/786,647 Fourth, Appellant makes a similar argument with regard to the open area ratio limitation. Appeal Br. 9—10. In this regard, Appellant offers as follows: the claimed invention is directed to the optimum range of open area ratios of an energy recovery apparatus for suppressing the mixing of concentrated seawater and regular seawater in a chamber due to turbulent flow diffusion by reducing the non- dimensional standard deviation of the flow velocities. Neither Takahashi nor Nowobilski recognize open area ratio as being result-effective for the specific purpose of the subject invention. Appeal Br. 10 (internal citations omitted). That is, the present application is directed toward uniform flow. For the reason set forth above, we determine that both Takahashi and Nowobilski teach that flow should be uniform rather than turbulent. Fifth, Appellant argues that “it would not have been a matter of routine experiment to provide the open area ratios or distance to inner diameter ratio recited in independent claim 1.” Appeal Br. 11. In regard to the open area ratio, Takahashi teaches that “[a] numerical value of the porosity is selected so that the porous plate does not cause a great pressure loss and has an excellent flow-regulating function.” Takahashi 1130 (emphasis added). Similarly, Takahashi teaches that “the adjacent porous plates are away from each other at a predetermined distance.” Id. 1128 (emphasis added). Nowobilski teaches that “the total open area on each section of the perforated plate fluid distributor (5 and 7) is a function of the location of a nozzle or inlet pipe, the diameter of the nozzle or inlet pipe, the location of the distributor, the location of a fixed bed and the diameter of a vessel.” Nowobilski 4:6—11 (emphasis added). Thus, both cited references 8 Appeal 2017-003162 Application 13/786,647 indicate that the porosity and location of the plates (distributors) are determined as a matter of experimentation. “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (citations omitted). Here, Appellant has not produced evidence indicating the optimization of the variables is not within the skill of the art. Attorney argument in this regard is insufficient. Estee Lauder, Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (an argument made by counsel in a brief does not substitute for evidence lacking in the record). In view of all of the foregoing, Appellant has not shown error in the Examiner’s determination that claim 1 is obvious. Claim 3 Appellant argues that claim 3 is similar to claim 1 but is narrower as it “recites the same three requirements directed to open area ratio and distance to inner diameter ratio recited in claim 1, except that claim 3 requires all three requirements to be met as opposed to just one.” Appeal Br. 12. Appellant otherwise relies upon its arguments presented in regard to claim 1. We find such arguments unpersuasive for the reasons set forth above. Claims 4 and 6 Claim 4 depends from claim 1 and further requires that the distance between the perforated plates is “in the range of 0.5 to 0.8 times of the inner diameter of said cylindrical chamber.” Appeal Br. 15 (Claims App.). Claim 6 depends from claim 1 and further requires that the distance between the perforated plates is “not less than 0.5 times of an inner diameter of said 9 Appeal 2017-003162 Application 13/786,647 cylindrical chamber” (this limitation is included in claim 1 in the disjunctive). Id. at 14. Appellant relies upon its arguments submitted in regard to claim 1 in support of the patentability of claims 4 and 6. For the reasons set forth above, the arguments are found unpersuasive. CONCLUSION The rejections of claims 1—6 as obvious over Takahashi in view of Nowobilski are 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). AFFIRMED 10 Copy with citationCopy as parenthetical citation