Ex Parte Whiteman

Board of Patent Appeals and Interferences

Oct 20, 2010

10395424 (B.P.A.I. Oct. 20, 2010)

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.
10/395,424 03/24/2003 G. Robert Whiteman 10185/69 4476
7590 10/21/2010
Jonathan P. Taylor, Ph.D.
Brinks Hofer Gilson & Lione
NBC Tower, Suite 3600
P.O. Box 10395
Chicago, IL 60610
EXAMINER
BARNHART, LORA ELIZABETH
ART UNIT PAPER NUMBER
1651
MAIL DATE DELIVERY MODE
10/21/2010 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 G. ROBERT WHITEMAN
__________

Appeal 2010-001533
Application 10/395,424
Technology Center 1600
__________

Before ERIC GRIMES, DONALD E. ADAMS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of reducing pollutants in wastewater. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, or for filing a request
for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from
the “MAIL DATE” (paper delivery mode) or the
“NOTIFICATION DATE” (electronic delivery mode) shown on
the PTOL-90A cover letter attached to this decision.
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Application 10/395,424

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Statement of the Case
The invention relates to “methods for growing microbes on-site at a
wastewater treatment facility, and for economically inoculating sufficient
microbes to solve various treatment problems rapidly” (Spec. 3 ¶ 0007).
The Claims
Claims 1, 2, 4, 6, 8-16, 20, 23-25, 28-30, 32-38, 40, 44-48,
55, 62-68, 96, and 98-103 are on appeal. Claim 1 is representative
and is reproduced below:
1. A method of reducing pollutants in wastewater at a
wastewater treatment plant, the method being performed on-
site at the wastewater treatment plant and comprising the
steps of:
providing an on-site system for growing of microbes
at the wastewater treatment plant, the on-site system
comprising: a main tank, an input for water, an output for a
treatment batch, a mixing apparatus, and a temperature
control apparatus;
depositing nutrient, water and an inoculum
comprising microbes into the on-site system;
growing the inoculum in the on-site system to provide
a treatment batch comprising an increased number of the
microbes; and
directly applying at least a portion of the treatment
batch, said portion containing microbes, to the polluted
wastewater, such that the microbes are not isolated,
concentrated or freeze dried between the steps of growing
and applying, and wherein the microbes reduce the
pollutants in the wastewater as measured by at least one of
biochemical oxygen demand, chemical oxygen demand,
total organic carbon, or total carbon.

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The issues
A. The Examiner rejected claims 1, 2, 4, 6, 8-16, 20, 23-25, 28-30, 32-
38, 40, 44-48, 55, 62-68, 96, and 98-103 under 35 U.S.C. § 103(a) as
obvious over Nghiem,2 Griffin,3 Battistoni,4 Botto,5 Poschmann,6 and
Whiteman7 (Ans. 4-10).
B. The Examiner rejected claims 1, 2, 4, 6, 8-16, 20, 23-25, 28-30, 32-
38, 40, 44-48, 55, 62-68, 96, and 98-103 under 35 U.S.C. § 103(a) as
obvious over Dyadechko,8 Griffin, Battistoni, Botto, Poschmann, and
Whiteman (Ans. 10-15).
C. The Examiner rejected claims 1, 2, 4, 6, 8-16, 20, 23-25, 28-30, 32-
38, 40, 44-48, 55, 62-68, 96, and 98-103 under 35 U.S.C. § 103(a) as
obvious over Prudom,9 Griffin, Battistoni, Botto, Poschmann, and Whiteman
(Ans. 15-21).
Since all three of these rejections turn on the same question, we
consider them together.
In each of the rejections, the Examiner finds that while the prior art
references do
not explicitly teach growing the inoculum on-site at the
wastewater treatment plant, making the inoculum growth
system continuous or integral with the wastewater treatment

2 Nhuan P. Nghiem, US 5,407,577, issued Apr. 18, 1995.
3 Griffin et al., US 5,449,619, issued Sep. 12, 1995.
4 Battistoni et al., US 3,635,797, issued Jan. 18, 1972.
5 Botto et al., US 5,821,112, issued Oct. 13, 1998.
6 Poschmann et al., US 4,009,119, issued Feb. 22, 1977.
7 George R. Whiteman, US 5,846,425, issued Dec. 8, 1998.
8 Dyadechko et al., US 4,822,490, issued Apr. 18, 1989.
9 Carolina M. Prudom, US 3,979,283, issued Sep. 7, 1976.
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plant per se would have been obvious at the time of the
invention. Because the method of [the prior art] depends on
the viability and activity of the microbes administered to the
wastewater, the skilled artisan would have recognized the
benefit of shortening the amount of time between log-phase
culturing (i.e., active growth) of the remediation microbes
and the addition of said microbes to the polluted wastewater.

(Ans. 7, 12-13, 18).
Appellants contend that “there is no teaching or suggestion
whatsoever in the Nghiem et al., Dyadechko et al., Prudom, and Dale et al.
references of growing inoculum of microbes on-site at the wastewater
location to obtain a treatment batch prior to applying at least a portion of that
treatment batch to the polluted wastewater” (App. Br. 26).
The issue with respect to each of the rejections is: Does the evidence
of record support the Examiner’s conclusion that growing the inoculum for
wastewater treatment on-site would have been obvious at the time of
invention?
Findings of Fact
1. Nghiem teaches that “enzyme treated wastewater was
transferred into each of two 1 liter flasks. A tannin-degrading
microorganism (Culture B) was added to flask # 1. . . . Thereafter, the flask
was placed in a 35°C. water bath. The flask was aerated and mixing was
provided by a magnetic stir bar” (Nghiem, col. 8, ll. 24-31).
2. Nghiem teaches that at “72 hours (total time), flask #1 was
reinoculated with the tanning-degrading microorganism (Culture B) and
placed in the 35°C. water bath, mixed and aerated. . . . The results showed
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that still more color was removed by the second microbial treatment”
(Nghiem, col. 9, ll. 29-45).
3. Dyadechko teaches that the “source strain Pseudomonas putida-
36 is grown on a liquid nutrient medium in the presence of hydrocarbons. . .
. Cultivation is carried out under aerobic conditions at 30° C. [T]he prepared
biomass is concentrated and dried” (Dyadechko, col. 7, ll. 29-39).
4. Dyadechko teaches that the dry composition “is recommended
for the recovery of large oil-polluted areas of bogged and water-logged
soils” (Dyadechko, col. 8, l. 68 to col. 9, l. 2).
5. Prudom teaches that “[g]enerally, the microorganism cells are
harvested after about three or four days of cultivation. A large batch vessel
or fermenter seeded with a young culture equivalent to about 2% or more of
the total capacity of the fermenter is used for producing large quantities of
the cultures” (Prudom, col. 3, ll. 35-40).
6. Prudom teaches the
degradation of DDT on a large scale is conducted in a multi-
tank installation. Less often, degradation is done in outdoor
environments. In open-water applications, it is quite feasible
to seed or disperse the microorganisms employed by means
of boats, aircraft or other vehicles as appropriate. Even
though DDT is heavier than water, degradation takes place
since the microorganisms become dispersed downward with
time to the benthic mud.

(Prudom, col. 6, ll. 10-18).
7. Prudom teaches that the “effluent material to be degraded can
be placed into large holding tanks, for example, and the mixture of
microorganisms and nutrients added thereto, whereby degradation will take
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place. . . . Stirring and aeration of the mixture inside the tank is
advantageously employed to provide a more rapid degradation” (Prudom,
col. 6, ll. 45-51).
Principles of Law
The Federal Circuit has stated that “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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), cited with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
It is improper to base a conclusion of obviousness upon facts gleaned
only through hindsight. “To draw on hindsight knowledge of the patented
invention, when the prior art does not contain or suggest that knowledge, is
to use the invention as a template for its own reconstruction— an illogical
and inappropriate process by which to determine patentability.” Sensonics,
Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L.
Gore & Assoc, v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)).
Analysis
While Nghiem, Dyadechko, and Prudom each teach biological
treatment of waste (FF 1-7), the Examiner does not identify any teaching for
“providing an on-site system for growing of microbes at the wastewater
treatment plant” as required by claim 1.
The Examiner finds that “the skilled artisan would have recognized
the benefit of shortening the amount of time between log-phase culturing
(i.e., active growth) of the remediation microbes and the addition of said
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microbes to the polluted wastewater” (Ans. 7). The Examiner also finds
that “making the inoculum growth system continuous or integral with the
wastewater treatment plant per se would have been obvious at the time of
the invention” (Ans. 7, 12-13, 18).
The Examiner finds that in “Schenck v. Nortron Corp., 713 F.2d 782,
218 USPQ 698 (Fed. Cir. 1983), the CAFC found claims to an apparatus
with integrated parts nonobvious because the prior art perceived a need for
separate parts. By contrast, in the instant case, there is no evidence that at the
time of the invention, the person of ordinary skill in the art would have
desired to prevent integration” (Ans. 7-8).
We are not persuaded. The argument that the skilled artisan would
have chosen to shorten the amount of time between log-phase growth and
addition to wastewater finds no support in the prior art, but represents
supposition by the Examiner. Dyadechko actually teaches to concentrate
and dry the biomaterial (FF 3), while neither Prudom nor Nghiem teach an
association between log phase growth and wastewater treatment (FF 1, 2, 5-
7).
We also do not find the Examiner’s argument relying upon Schenck
persuasive. Schenck points out that in
its argument that the invention here is but making integral
what had earlier been made in four bolted pieces, Nortron
seeks to limit the focus of inquiry to a structural difference
from the prior art and then to show that that difference alone
would have been obvious. That effort is not proper under the
statute, which requires that an invention be considered “as a
whole,” 35 U.S.C. § 103.

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Schenck, 713 F.2d at 785 (Fed. Cir. 1983). The Examiner makes the same
error here, in concluding that simply because no reason is given to avoid
integration, integration is necessarily obvious. As stated by the Federal
Circuit,
[o]bviousness is determined as a matter of foresight, not
hindsight. KSR did not free the PTO’s examination process
from explaining its reasoning. In making an obviousness
rejection, the examiner should not rely on conclusory
statements that a particular feature of the invention would
have been obvious. … Instead, the examiner should
elaborate, discussing the evidence or reasoning that leads the
examiner to such a conclusion.

In re Vaidyanathan, 2010 WL 2000682, * 9 (Fed. Cir. 2010) (non-
precedential).
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that growing the inoculum for wastewater treatment on-site would have been
obvious at the time of invention.
SUMMARY
In summary, we reverse the rejection of claims 1, 2, 4, 6, 8-16, 20, 23-
25, 28-30, 32-38, 40, 44-48, 55, 62-68, 96, and 98-103 under 35 U.S.C. §
103(a) as obvious over Nghiem, Griffin, Battistoni, Botto, Poschmann, and
Whiteman.
We reverse the rejection of claims 1, 2, 4, 6, 8-16, 20, 23-25, 28-30,
32-38, 40, 44-48, 55, 62-68, 96, and 98-103 under 35 U.S.C. § 103(a) as
obvious over Dyadechko, Griffin, Battistoni, Botto, Poschmann, and
Whiteman.
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Application 10/395,424

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We reverse the rejection of claims 1, 2, 4, 6, 8-16, 20, 23-25, 28-30,
32-38, 40, 44-48, 55, 62-68, 96, and 98-103 under 35 U.S.C. § 103(a) as
obvious over Prudom, Griffin, Battistoni, Botto, Poschmann, and Whiteman.

REVERSED

alw

JONATHAN P. TAYLOR, PH.D.
BRINKS HOFER GILSON & LIONE
NBC TOWER, SUITE 3600
P.O. BOX 10395
CHICAGO, IL 60610