Ex Parte Zha et al

Board of Patent Appeals and Interferences

Feb 3, 2012

10572893 (B.P.A.I. Feb. 3, 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.
10/572,893 03/20/2006 Fufang Zha 2003P87075WOUS 2949
28524 7590 02/06/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
02/06/2012 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 FUFANG ZHA, HUW ALEXANDER LAZAREDES,
and ZHIYI CAO
________________

Appeal 2011-001783
Application 10/572,893
Technology Center 1700
________________

Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
RAE LYNN P. GUEST, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 4-11, and 24-28.
We have jurisdiction under 35 U.S.C. § 6(b).
Claim 4 is illustrative:
4. A method of filtering solids from a liquid suspension comprising:

immersing filtration membranes in the liquid suspension;

filtering the liquid suspension through pores in walls of the filtration
membranes;
Appeal 2011-001783
Application 11/572,893

2
producing a liquid permeate within lumens of the filtration
membranes;

drawing off liquid permeate from the lumens;

withdrawing the permeate from the lumens and through a manifold
and a valve;

periodically suspending the filtration process;

isolating the lumens, the manifold, a gas inlet, and a portion of piping
when the filtration process is suspended, the lumens, the manifold, and the
portion of piping upstream of the valve during filtration, wherein the lumens,
the manifold, and the portion of piping consist of those through which
permeate is withdrawn;

directing liquid permeate present in the isolated manifold and portion
of piping into the lumens through a first end of the filtration membranes and
through a second end of the filtration membranes; and

applying a gas at a pressure below a bubble point of the filtration
membranes to the liquid permeate to displace at least some of the liquid
permeate through the pores in the walls of the filtration membranes in a
direction opposite to that of filtration, the gas not penetrating into the
membrane pores.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 3):
Sunaoka 5,209,852 May 11, 1993
Smith 5,403,479 Apr. 04, 1995
Kopp 5,643,455 Jul. 01, 1997
Cote 2001/0052494 A1 Dec. 20, 2001
Bartels 2003/0150807 A1 Aug. 14, 2003
Nobuyuki (JP ‘769)1 JP 11-076769 Mar. 23, 1999

                                                            
1 We considered the translation of JP ‘769 of record.
Appeal 2011-001783
Application 11/572,893

3
Appellants’ claimed invention is directed to a method of filtering
solids from a liquid suspension using a filtration system that includes a
vessel, a membrane module, piping, and a manifold. The filtration
membranes are immersed in the liquid suspension and the suspension is
filtered through pores in walls of the filtration membranes. A liquid
permeate is produced within lumens of the membranes and liquid permeate
is drawn from the lumens through a manifold and a valve. The process is
periodically suspended wherein the lumens, manifold, a gas inlet, and a
portion of piping are isolated whereby liquid permeate present in the isolated
members is directed into the lumens through first and second ends of the
filtration membranes. A gas at a pressure below a bubble point of the
membranes is applied to the liquid permeate to displace at least some of the
permeate through the pores in the walls of the membranes in a direction
opposite to that of filtration. The gas does not penetrate into the membrane
pores during the backwashing.
Appealed claims 1, 4-11 and 24-28 stand provisionally rejected on the
ground of non-statutory obviousness-type double patenting as being
unpatentable over the process claims of the co-pending application listed on
page 4 of the Examiner’s Answer. Since Appellants do not contest this
rejection but offer to provide a terminal disclaimer once the appealed claims
are found allowable, we will sustain the Examiner’s rejection, perforce.
Appealed claims 1, 4-11 and 24-28 also stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Smith,
Sunaoka, Kopp, Cote and JP ‘769.
Appellants have not separately argued any particular claim on appeal.
Since the Examiner has determined that independent claim 4 is broader in
Appeal 2011-001783
Application 11/572,893

4
scope than independent claim 1, and this has not been contested by
Appellants, all the appealed claims stand or fall together with claim 4.
We have thoroughly reviewed each of Appellants’ arguments for
patentability, as well as the declaration evidence relied upon in support
thereof. However, we are in complete agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s § 103 rejection for essentially
those reasons expressed in the Answer, which we incorporate herein, and we
add the following primarily for emphasis.
There is apparently no dispute that Smith evidences that it was known
in the art to backwash a membrane filtration system with liquid permeate at
pulsed flow and low pressure (see col. 11, l. 21 et seq.). Smith also teaches
that it was known in the art to backwash and clean filter membranes with
liquid permeate and gas at low pressure in order to distend the membrane
and dislodge foulant particles trapped in the pores (see col. 8, ll. 39-48). As
for the claimed isolation step, we agree with the Examiner that isolating the
filtration system from the filtrate collection area or tank is implicit in Smith
when introducing gas and a cleaning chemical into the lumen. Furthermore,
while Smith does not expressly teach that the filtrate collection tank is
isolated from the lumens, manifold, gas inlet and a portion of the piping, we
are convinced that it would have been obvious to one of ordinary skill in the
art to use either the permeate/filtrate in the collection tank or only the
permeate in the isolated portions of the system to backwash and clean the
filter membranes. We are confident that a chemical engineer of ordinary
skill in the art would need to resort to no more than routine experimentation
Appeal 2011-001783
Application 11/572,893

5
to determine the optimum amount of permeate to effect the desired level of
membrane cleaning.
We also agree with the Examiner that it would have been obvious for
one of ordinary skill in the art to direct the permeate backwash through both
the first and second ends of the filtration membranes in order to effect a
uniform cleaning. In addition, Kopp teaches that it was known in the art to
use air in the lumen below the bubble point to flush water from the lumen
and above the bubble point for effective air-back flush while agitating the
membrane (see col. 3, l. 27 - col. 4, l. 50). Also, Cote provides evidence that
it was known in the art to apply backwash through both ends of the filter
membranes.
Appellants’ arguments and the declaration of Dr. Zha, one of the
present inventors, center upon the non-obviousness of modifying the process
of Smith with features of the other references, or modifying the other applied
references with the features of Smith, on the basis that to do so would go
against the stated goals of the references. However, it is well settled that it is
not required for a finding of obviousness under § 103 that the features of one
reference be bodily incorporated into that of another reference. Rather, the
proper test is what the collective teachings of the applied prior art would
have reasonably suggested to one of ordinary skill in the art. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981); In re Griver, 354 F.2d 377, 381
(CCPA 1966); In re Billingsley, 279 F.2d 689, 691 (CCPA 1960). In the
present case, we concur with the Examiner that the collective teachings of
the applied prior art establish the obviousness of the claimed method of
filtering solids from a liquid suspension with filtration membranes whereby
the membranes are cleaned by backwashing with liquid permeate isolated in
Appeal 2011-001783
Application 11/572,893

6
the lumens, manifold, and a portion of the piping along with a gas applied at
a pressure below the bubble point of the membranes applied through both a
first and second end of the membranes. We note that Appellants have
proffered no objective evidence that methods within the scope of claim 4 or
the other independent claims, for that matter, produce results that would
have been considered truly unexpected by one of ordinary skill in the art. In
re Merck & Co., 800 F.2d 1091, 1099 (Fed. Cir. 1986); In re Klosak, 455
F.2d 1077, 1080 (CCPA 1972).
We have weighed the evidence of the Zha Declaration and the
evidence for commercial success set forth in the Biltoft Declaration against
the evidence of obviousness presented by the Examiner. In our judgment,
the declaration evidence is of limited probative value and does not outweigh
the evidence of obviousness represented by the applied prior art. The Zha
Declaration, in large part, presents opinions on the non-obviousness of the
claimed filtration method vis-á-vis the applied prior art. Such opinions are
of limited value inasmuch as they present opinions on the ultimate legal
conclusion of obviousness. Cable Electronic Products v. Genmark, 770
F.2d 1015, 1025 (Fed. Cir. 1985); In re Grunwell, 609 F.2d 486, 491 (CCPA
1979). The probative value of the Zha Declaration’s opinions on
obviousness is further diminished by the fact that Dr. Zha is one of the
present inventors and is, therefore, hardly a disinterested party. Also, the
declarant’s opinions seem to be limited to the non-obviousness of claim 1
whereas all the appealed claims stand or fall together with claim 4 (see, for
ex., Zha Decl., para. 31 summary).
We also agree with the Examiner that the Biltoft Declaration
concerning commercial success does not outweigh the evidence of
Appeal 2011-001783
Application 11/572,893

7
obviousness. It is fundamental that an applicant, to demonstrate the
commercial success of a claimed invention, must submit some factual
evidence that demonstrates a nexus between the reported sales and the
claimed invention, e.g., an affidavit from a purchaser explaining that the
product was purchased due to the claimed features. In re Huang, 100 F.3d
135, 140 (Fed. Cir. 1996). In the present case, there is no evidence that
purchases of cleaning systems within the scope of appealed claim 4, as well
as the other independent claims, were due to specific features of the claimed
invention, such as using permeate only present in the isolated system rather
than in a collection tank. Also, the reported increase in operating efficiency
of approximately 1% in systems operating in accordance with claim 1 falls
within the realm of statistical error, and Appellants have not established that
such an increase in operating efficiency of 1% has commercial and practical
significance in the art.
Paragraph 13 of the Biltoft Declaration states that the market share for
filtration systems sold by Siemens Water Technologies Corp. which perform
according to the method recited in claim 1 is approximately 25%. However,
the figure has little meaning without the proper context, i.e., what was the
market share of the assignee’s filtration systems prior to the system
according to claim 1. Also, the reported increase of sales by 500% since the
year the claimed system was introduced is meaningless in the absence of the
actual number of systems sold. For instance, an increase of 500% may
represent an increase of from 2 units to 10 units. Furthermore, Appellants’
have not demonstrated what, if any, influence advertising, marketing and
license agreements had on the sales data. Also, Appellants have not
demonstrated that improvements in the system over the years, which are not
Appeal 2011-001783
Application 11/572,893

8
recited but are within the scope of the appealed claims, have not contributed
to the increase in sales. In addition, Appellants have not established that
other features of the system which are not specified in the appealed claims,
such as the configuration or material of the membranes, are not a component
of the asserted commercial success. Finally, as correctly stated by the
Examiner, the declaration makes no reference to methods within the scope
of claim 4 on appeal, with which all the appealed claims stand or fall.
As a final point, as noted above, Appellants base no argument upon
objective evidence of unexpected results.
In conclusion, we have weighed the evidence of non-obviousness
proffered by Appellants and the evidence of obviousness presented by the
Examiner, and it is our judgment that the Examiner’s evidence of
obviousness outweighs Appellants’ evidence of non-obviousness.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
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)(1)(iv).
AFFIRMED

ssl