Ex Parte Vuong

Board of Patent Appeals and Interferences

Jul 16, 2012

11607158 (B.P.A.I. Jul. 16, 2012)

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.
11/607,158 12/01/2006 Diem Xuan Vuong LBCIT.75321 9708
27629 7590 07/17/2012
FULWIDER PATTON LLP
6060 CENTER DRIVE
10TH FLOOR
LOS ANGELES, CA 90045
EXAMINER
FORTUNA, ANA M
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
07/17/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DIEM XUAN VUONG
____________

Appeal 2010-005608
Application 11/607,158
Technology Center 1700
____________

Before TERRY J. OWENS, PETER F. KRATZ, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 35-45. We have jurisdiction pursuant to
35 U.S.C. § 6.

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Application 11/607,158

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Appellant’s claimed invention is directed to a system for desalination
of seawater of a total dissolved solids content of 35,000 mg/l or more using
functionally specified nanofiltration membranes in first and second
desalination stages to provide a first stage permeate that has a total dissolved
solids content of no more than twelve percent compared with the seawater
dissolved solids content and a second stage permeate having specified lower
dissolved solids content (paras. 0026 - 0029). The Specification discloses
that sodium and chloride monovalent ions account for more than 85 percent
of the seawater dissolved solids content (para. 0006). According to
Appellant, the seawater can be desalinated by selecting an appropriate series
of high performance nanofiltration membranes that remove both divalent
and monovalent ions (Spec. paras. 0035 -0037). For example, five high
performance nanofiltration membranes are connected together to form each
stage of the desalination system (Spec. 0036).
Claim 35 is illustrative and reproduced below:
35. A system for desalinating seawater, comprising: a pump
configured for delivering filtered seawater having a total dissolved solids
content of not less than 35,000 mg/1 feed at a pressure of not more than 600
psi from a supply of seawater to a first desalination stage;
the first desalination stage consisting of one or more nanofiltration
membranes arranged in series, said first desalination stage producing a first
permeate and a first retentate, where the first permeate has a total dissolved
solids content of no more than twelve percent compared with a total
dissolved solids content of seawater immediately prior to entering said first
stage desalination operation;
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a fluid channel linking said first desalination stage to a second
desalination stage and communicating said first permeate from said first
desalination stage to said second desalination stage without further reduction
in the total dissolved solids content of said first permeate; and
the second desalination stage configured to receive said first permeate
consisting of one or more nanofiltration membranes arranged in series, said
second desalination stage producing a second permeate and a second
retentate, where the second permeate has a total dissolved solids content of
no more than 500 mg/1.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Voutchkov US 6,946,081 B2 Sep. 20, 2005
Awerbuch US 6,783,682 B1 Aug. 31, 2004
Al-Samadi US 6,113,797 Sep. 5, 2000
Sugawara US 6,083,670 Jul. 4, 2000
Bass US 6,132,618 Oct. 17, 2000

Claims 35, 36, 40-42, and 44 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Mavrov. Claims 35, 36, 40-42, and 44 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Mavrov.1
Claims 35-45 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Voutchkov in view of Awerbuch. Claims 35-37, 40-42, 44, and 45
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Al-
Samadi. Claims 35-37 and 41-44 stand rejected under 35 U.S.C. § 103(a)

1 At page 5 of the Answer, the Examiner inadvertently includes cancelled
claims 30-34 as rejected claims.
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as being unpatentable over Sugawara. Claims 35-37 and 40-44 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Bass.
We reverse the stated rejections. Our reasoning follows.
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984).
Here, the Examiner, in maintaining the stated rejections, overstates the
teachings of the applied references and has not given appropriate weight to
all of the claim limitations, including the desalination stages having nano-
filtration membranes that are constructed so as to reduce the total dissolved
solids content of treated seawater having a solids content not less than
35,000 mg/l ultimately to a second stage permeate having a total dissolved
solids content of 500mg/l or less, as required by sole independent claim 35.
The Examiner appears to premise the anticipation rejection over
Mavrov on conjecture rather than carrying the burden to reasonably establish
that Mavrov describes subject matter that the rejected claims read on. The
Examiner has not shown that the nano-filtration stages in the cited portions
of Mavrov, which were designed for treating process water from food
industry sources, such as from bottle washing machines, were constructed in
a manner such that Mavrov’s filtration stages would have reasonably been
expected to be capable of; that is, inherently capable of, treating seawater
having a solids content not less than 35,000 mg/l therein in a manner so as to
produce second stage permeate having a total dissolved solids content of
500mg/l or less (Ans. 3, 4, 12, and 13). In this regard and as argued by
Appellant, the recited functional characteristics of the claimed system for
desalinating seawater, as specified in claim 35, constitute physical
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limitations as to the claimed structures used for the desalination in the
system of claim 35 (Br. 5). The Examiner has not reasonably established
that the cited filtration stages in figure 4 of Mavrov are necessarily
constructed so as to have the requisite characteristics to desalinate seawater
of a solids content and to the extent required by independent claim 35 based
on the asserted intended use argument and the Examiner’s supposition as to
the capability of the filtration stages of Mavrov (Ans. 3-5, 12 and 13).
As regards the additional obviousness rejection over Mavrov, the
Examiner has not proffered a reasonable explanation of any modifications to
the filtration stages of Mavrov that would have been suggested to one of
ordinary skill in the art based on the teachings of Mavrov, which
modifications would have resulted in a system that corresponds to that
claimed by Appellant (see Br. 6). Rather, the Examiner appears to speculate
that NF-90 type membranes could have been employed in Mavrov for
presumably not only treating low-contaminated food process water streams
as Mavrov is concerned with, but, for treating seawater having a solids
content as specified in Appellant’s claim 35. The Examiner has not
substantiated that any known NF-90 type membrane structures would have
been recognized by one of ordinary skill in the art as being suitable for
Mavrov’s system and that use of any such NF-90 type membranes in
Mavrov would have resulted in a filtration system that possessed the
desalination capacities required by Appellant’s desalination stages2

2 For example, Appellant discloses the use of a particular Dow Filmtec
model membrane (NF90-4040) of an eight inch diameter size and having a
400 square foot membrane area that is spirally wound into a cartridge,
wherein a series of five such membranes are used in each filtration stage
(Spec., paras. 0035 and 0036). The Examiner has not furnished evidence
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It follows that we reverse the anticipation and obviousness rejections
over Mavrov.
In each of the additional obviousness rejections over any of Al-
Samadi, Sugawara, Bass, or Voutchkov taken with Awerbuch, the Examiner
has likewise under-accounted for the structural limitations imposed on the
claimed system components based on the functionality specified for the
system of independent claim 35 and has presented insufficient evidence
and/or rationales that are unavailing for establishing a sustainable
obviousness rejection in each of these additional obviousness rejections.
As argued by Appellant, Al-Samadi teaches that nano-filtration
membranes generally lack capacity for removing monovalent ions from
water (Br. 8 and 9; Al-Samadi, col. 5, l. 60 - col. 6, l. 20). Al-Samadi
discloses that the processes described therein relates to the treatment of
natural and industrial water streams in a manner to minimize the volume of
reject water (col. 7, ll. 45-51 and col. 11, ll. 52-58). Given these disclosures
of Al-Samadi, the Examiner has not reasonably articulated why one of
ordinary skill in the art would have been led by the teachings of Al-Samadi
to modify the treatment system thereof to include nanofiltration stages for
treating seawater that have the structure to carry out the recited functions
required by claim 35. In this regard, the Examiner’s citation to a passing
reference in the background portion of the disclosure of Al-Samadi relating
to the possible return of large concentrate volumes generated by reverse
osmosis and/or nanofiltration, if used, in their current form, in seawater

establishing that such a membrane was commercially available at the time of
the invention and that it would have been obvious for one of ordinary skill in
the art to have selected such a series of membranes for use in each of the
stages of Mavrov for treating food industry wastes.
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desalination coupled with a general assertion as to the knowledge of the
skilled artisan does not explain why one of ordinary skill in the art would
have been led to construct a series of nanofiltration stages having the
physical structures required to be capable of carrying out the particular
functions as specified in claim 35 given the totality of the disclosure of Al-
Samadi (Ans. 9-10; Al-Samadi, col. 1, ll. 39-62).
Concerning the obviousness rejection over Sugawara, the Examiner
relies on an intended use assertion and has not carried the burden to establish
that the nano-filters taught or suggested by Sugawara for treating photoresist
development waste have the capabilities for treating seawater as specified in
independent claim 35 (Ans. 10-11; Sugawara, col. 14, ll. 46-68 and col. 15,
ll. 1-46). As regards the Examiner’s reference to the NF-90 membrane
referred to in column 3 of Sugawara, we note that the Examiner has not
established that use of any such NF-90 type membranes referred to by
Sugawara would have resulted in a filtration system that possessed the
desalination capacities required by Appellant’s desalination stages.
As for the obviousness rejection over Bass, which latter reference is
concerned with alkali metal silicate solution purification, the Examiner notes
that Bass teaches using pumps to pressurize a system that employs two
nanofiltration membranes and asserts that one of ordinary skill in the art
would have been led to select an appropriate membrane (Ans. 11-12).
However, the Examiner appears to have bypassed the physical constraints
placed by the functional limitations of claim 35 on the nanofiltration
membranes employed in the desalination stages and has not established that
such selection would have led an ordinarily skilled artisan to the outfitting of
a two stage nano-filtration system of Bass with a series of nano-filtration
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membranes having the capabilities for desalinating seawater, as argued by
Appellant (Br. 10-11).
Finally and with regards to the Examiner’s obviousness rejection over
a proposed combination of Voutchkov with Awerbuch, the Examiner
appears to rely on Voutchkov for teaching desalination of seawater using
reverse osmosis or nanofiltration membranes and on Awerbuch for teaching
the use of a series of high performance nano-filtration membranes (Ans. 6-
8). However, as argued by Appellant, Voutchkov generally employs
reverse osmosis in the seawater desalination system and Awerbuch uses ion
selective membrane filtration for hardness reduction together with reverse
osmosis (or thermal desalination) (Br. 6-8; Voutchkov, col. 1, ll. 50-59;
Awerbuch, col. 3, l. 64-col. 4, l. 28).3
The Examiner has not discharged the burden to establish that
Awerbuch in combination with Voutchkov suggests using a specific
combination of nano-filtration stages having nanofiltration membranes that
possess the capabilities for reducing seawater dissolved solids content to a
level as required by the membranes used in the desalination stages required
by independent claim 35. Rather, the Examiner’s rejection is premised on
inadequately supported assertions and conjecture made with respect to the
teachings of the applied references.
Consequently, the Examiner has not established that the applied
references in each of the separately presented obviousness rejections

3 Voutchkov indicates that a desalination technique other than one that
employs reverse osmosis may be employed (col. 2, ll. 40-44). However, the
Examiner has not established that Voutchkov teaches or suggests using high
performance nano-filtration membranes in at least two stages, as required by
appealed claim 35.
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instructs or suggests to one of ordinary skill in the art implementing a
modification of their respective disclosed systems that would have resulted
in a system corresponding to Appellant’s claim 35 system so as to fulfill the
Examiner’s burden of presenting a prima facie case of obviousness.
In this regard, “rejections 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” being asserted. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007)). After all, rejections based on § 103(a) must rest on a factual
basis with these facts being interpreted without hindsight reconstruction of
the invention from the prior art. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967).
On this record, we likewise reverse all of the additional obviousness
rejections maintained by the Examiner.

ORDER
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

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