PRODOSE SARL

Patent Trials and Appeals Board

Jun 23, 2021

2021000800 (P.T.A.B. Jun. 23, 2021)

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.
15/026,769 04/01/2016 Morou Boukari 7394-0007 4707
466 7590 06/23/2021
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD
11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
LEE, DOUGLAS
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
06/23/2021 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):
pair_nixon@firsttofile.com
ptomail@nixonvan.com
yandtpair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOROU BOUKARI
Appeal 2021-000800
Application 15/026,769
Technology Center 1700
Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9. We have jurisdiction under
35 U.S.C. § 6(b).
A telephonic hearing in this appeal was held on June 8, 2021. Due to
technical difficulties, a transcript of the hearing is not available.
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as PRODOSE SARL. Appeal
Br. 2.
Appeal 2021-000800
Application 15/026,769

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal and is
set forth below:
1. A method for treating, for cleaning purposes, pipes of a
drinking water system of an aircraft, wherein the system includes
at least one storage tank and a plurality of pipes offering a
plurality of water inlet and outlet points, the method comprising:
- a first operation configured to liquefy a greasy layer of
biofilms thereby exposing bacteria of the biofilms, the first
operation comprising injection of high-temperature water at
between fifty and one hundred degrees Celsius into the system
for treatment purposes,
- draining the water of the first injection,
- a second operation configured to kill bacteria exposed by
the first operation and to disintegrate the biofilms, the second
operation comprising injection of cold water not exceeding thirty
degrees Celsius, associated with a chemical treatment product
comprising a chlorinated product or hydrogen peroxide,
- draining the water of the second injection,
- a third operation configured to remove the chemical
treatment product by rinsing, the third operation comprising a
single injection of high-temperature water at between fifty and
one hundred degrees Celsius,
- draining the high-temperature water injected in the third
operation,
wherein the chemical treatment product and the
temperature of the high-temperature water of the third operation
are configured to be complimentary such that the chemical
treatment product is removed upon contact with the high-
temperature water, and
wherein the single injection of the third operation is the
only rinsing operation of the method for treating and is not
followed by a second or additional rinsing step.
Appeal 2021-000800
Application 15/026,769

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kling US 2,259,644 Oct. 21, 1941
Anderson US 5,405,452 Apr. 11, 1995
Hsueh US 2006/0169645 A1 Aug. 3, 2006
Boukari ’924 WO 2010/142924 A2 Dec. 16, 2010
Boukari ’645 WO 2012/168645 A1 Dec. 13, 2012
Konosu JP 08157885 June 18, 1996
FedEx Aircraft Maintenance Work Card, Potable Water Supply System
(Apr. 18, 2011) (“FedEx Work Card”).
REJECTIONS
1. Claims 1–3, 6, 7 and 9 are rejected under 35 U.S.C. § 103 as being
unpatentable over Boukari ’924 in view of Hsueh, Anderson, Kling and the
FedEx Work Card.2
2. Claims 4 and 5 are rejected under 35 U.S.C. § 103 as being
unpatentable over Boukari ’924 in view of Hsueh, Anderson, Kling, and the
FedEx Work Card as to claim 1 above, and further in view of Boukari ’645.
3. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable
over Boukari ’924, in view of Hsueh, Anderson, Kling and FedEx Work
Card, as to claim 1 above, and further in view of Konosu.
OPINION
Appellant does not present any substantively distinct arguments for
the Examiner’s second or third rejection or for any dependent claims. See
Appeal Br. passim. Therefore, consistent with the provisions of 37 C.F.R.

2 Provided as Exhibit A in Applicant’s Affidavit dated September 19, 2018.
Appeal 2021-000800
Application 15/026,769

4
§ 41.37(c)(1)(iv) (2019), we limit our discussion to claim 1, and all other
claims on appeal stand or fall together with claim 1.
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the appealed rejections essentially for the reasons
provided by the Examiner in the record, with the following emphasis.
Rejections 1–3
We refer to the Examiner’s statement of the rejection set forth on
pages 2–6 of the Final Office Action. In response thereto, Appellant first
argues that the rejection relies on the inherency doctrine which requires
necessity and inevitability. Appeal Br. 5–6. Appellant argues that the
standard for establishing inherency should not be conflated with the standard
for showing obviousness. Applicant contends that the Office has not shifted
the burden to Applicant to rebut inherency because the Office has not
satisfied its initial burden of showing, through some evidence or sound
technical reasoning, that each of the efficacy elements that narrow the claims
necessarily arises. Appeal Br. 7. Appellant also submits that the Examiner’s
application of inherency principals is not sufficiently circumscribed because
it does not address whether a person of ordinary skill in the art would have
expected to obtain the claimed treatment efficacy. Appeal Br. 7–13.
Appeal 2021-000800
Application 15/026,769

5
In response, the Examiner validly points out that Appellant does not
dispute that the applied art discloses a first operation comprising injection of
high-temperature water at 60°C–90°C, draining the water of the first
injection, a second operation comprising injection of cold water not
exceeding 30°C, associated with a chemical treatment product comprising a
chlorinated product or hydrogen peroxide, draining the water of the second
injection, and a third operation configured to remove the chemical treatment
product by rinsing, the third operation comprising an injection of high-
temperature water at 60°C–90°C. The Examiner states that therefore it is
understood that the applied art was properly relied upon for disclosing the
claim limitations. Ans. 3. We agree.
The Examiner then states Appellant’s arguments are directed to
whether the rejections properly apply the inherency doctrine. Specifically,
the Examiner points out that Appellant argues that the rejection (1) does not
disclose that the first hot water operation would necessarily liquefy a greasy
layer of biofilms, (2) that the second cold water operation would necessarily
kill the bacteria exposed by the first operation and disintegrate the biofilms,
(3) that the chemical treatment product and the temperature of the high-
temperature water of the third operation are configured to be complimentary
such that the chemical treatment product is removed upon contact with the
high-temperature water, and (4) that a single rinse would necessarily be
sufficient to exclude further rinsing. Ans. 3. The Examiner next states that
Appellant argues that the Office has not shifted the burden to Appellant to
rebut. Ans. 4.
Appeal 2021-000800
Application 15/026,769

6
In response, the Examiner explains how, for each of the first, second,
and third operations, Appellant’s own Specification indicates how the
respective operation has the claimed associated effect. Ans. 4–6.
As an example, the Examiner states that claim 1 recites that the first
operation comprises “injection of high-temperature water at between fifty
and one hundred degrees Celsius into the system for treatment purposes.”
Ans. 4. The Examiner explains that, as discussed in the rejection of claim 1,
the applied art discloses a first injection of high-temperature water at
between 60°C–90°C. Id. The Examiner states that Appellant’s own
Specification discloses that a hot water injection has the effect of liquefying
the organic or greasy matter that will be removed Spec. p. 4, ll. 7–10. Ans. 4.
As such, the Examiner submits that because the applied prior art discloses
the first hot water injection at a temperature within the recited temperature
range, and because Appellant’s own Specification discloses that a hot water
injection within that temperature range has the effect of liquefying the
organic or greasy matter that will be removed, the Examiner has shown that
a step strictly within all the structural and non-functional elements of the
first operation necessarily and inevitably results in liquefying a greasy layer
of biofilms. Ans. 4.
We agree with the Examiner’s stated positon as summarized, supra.
We thus are not persuaded by Appellant’s arguments that the Examiner does
not show that a step strictly within all the structural and non-functional
parameter elements of a respective operation necessarily and inevitably
results in the respective associated effect (as an example, the liquefying a
greasy layer of biofilms in connection with the first operation). Appeal Br.
7–8.
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Application 15/026,769

7
For the same reasons, we are not persuaded by Appellant arguments
that the Examiner’s position insufficiently circumscribes use of inherency in
an obviousness rejection as lacking consideration of expectedness of the
claimed efficacy as argued on pages 8–13 of the Appeal Brief. Therein,
Appellant discusses several court cases related to inherency principles, and
we are unpersuaded by this line of argument. As stated, supra, the Examiner
has sufficiently shown how a step strictly within all the structural and non-
functional elements of each claimed operation necessarily and inevitably
results in the claimed associated effect. In the Reply Brief, Appellant argues
that the Examiner’s reliance upon the teachings of Appellant’s own
Specification in making this showing is improper for the reason stated
therein. We disagree. See In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir.
2009) (“Even if no prior art of record explicitly discusses the [limitation],
[applicants’] application itself instruct that [the limitation] is not an
additional requirement imposed by the claims on the [claimed invention],
but rather a property necessarily present in [the claimed invention]”); In re
Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (“This is not a case where the
Board relied on an unknown property of prior art for a teaching. Rather,
Maloney’s express teachings render the claimed controlled release
oxymorphone formulation obvious, and the claimed ‘food effect’ adds
nothing of patentable consequence.”).
In view of the above, we affirm each rejection.
CONCLUSION
We affirm the Examiner’s decision.
Appeal 2021-000800
Application 15/026,769

8
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 6, 7, 9 103 Boukari ’924,
Hsueh, Anderson,
Kling, FedEx
Work Card
1–3, 6, 7, 9
4, 5 103 Boukari ’924,
Hsueh, Anderson,
Kling, FedEx
Work Card,
Boukari ’645
4, 5
8 103 Boukari ’924,
Hsueh, Anderson,
Kling, FedEx
Work Card,
Konosu
8
Overall
Outcome
1–9
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED