The California Institute of Technology

Patent Trials and Appeals Board

Dec 1, 2020

2020002947 (P.T.A.B. Dec. 1, 2020)

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.
14/048,163 10/08/2013 Michael R. Hoffmann 00016-087001 7386
26138 7590 12/01/2020
Joseph R. Baker, APC
Gavrilovich, Dodd & Lindsey LLP
4370 La Jolla Village Drive, Suite 303
San Diego, CA 92122
EXAMINER
FRIDAY, STEVEN A
ART UNIT PAPER NUMBER
1795
MAIL DATE DELIVERY MODE
12/01/2020 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. HOFFMANN, ASGHAR ARYANFAR,
KANGWOO CHO, CLEMENT A. CID, DAEJUNG KWON, and YAN QU
Appeal 2020-002947
Application 14/048,163
Technology Center 1700
Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
JOHN A. EVANS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

The Appellant2 appeals under 35 U.S.C. § 134(a), from the
Examiner’s decision finally rejecting claims 1, 2, 4–9, 13, 14, 16, 19, 20, and
29–39.3 A telephonic hearing was held on November 19, 2020.

1 This Decision includes citations to the following documents: Specification
filed (“Spec.”); Final Office Action dated Dec. 19, 2018 (“Final Act.”);
Appeal Brief filed Sept. 11, 2019 (“Appeal Br.”); Examiner’s Answer dated
Jan. 16, 2020 (“Ans.”); and Reply Brief filed Mar. 11, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as California
Institute of Technology. Appeal Br. 3.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2020-002947
Application 14/048,163

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We REVERSE.
CLAIMED SUBJECT MATTER
Claims 1 and 9, reproduced below, are illustrative of the claimed
subject matter:
1. A self-contained wastewater treatment system lacking a
connection to a municipal wastewater treatment system,
comprising:
a controller having
at least one controller input port to receive input
signals representing one or more of data and instructions
and
one controller output port to provide control
signals as output;
an electrochemical cell comprising
at least one anode,
at least one cathode,
a liquid input port that receives treated input in
liquid form,
a liquid output port that delivers output in liquid
form, and
a gas output port that delivers output in a gaseous
form,
wherein the electrochemical cell further comprises
an anode electrical terminal and
a cathode electrical terminal, and
wherein the operating voltage of the
electrochemical cell is controlled by using the
controller;

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a gas storage tank that receives and stores gaseous output
from the electrochemical cell;
a liquid holding tank that receives and stores liquid
output from the electrochemical cell;
an electrical power source that is not connected to an
electrical grid, wherein the electrical power source provides
electrical power to the electrochemical cell via the anode
electrical terminal and the cathode electrical terminal, and
wherein the electrical power source comprises at least one input
terminal that can receive control signals from the controller;
at least one input port which comprises
a toilet that can receive an input of manmade
waste, wherein the manmade waste comprises urine
and/or feces; and
a septic holding tank having
a controlled output connection to the liquid input
port of the electrochemical cell, wherein the septic
holding tank receives the input from the toilet, and holds
the received input for treatment by anaerobic digestion,
wherein the septic holding tank further comprises
a settling tank which allows for the
collection of solids, wherein a portion of the
treated input can be transferred to the
electrochemical cell via the liquid input port of the
electrochemical cell;
wherein the controller is in communication with and can
control the electrochemical cell, the gas storage tank, the liquid
holding tank[,] the electrical power source and the septic
holding tank.
Appeal Br. 24–26 (emphasis added).
9. A wastewater treatment process, comprising the steps of:
providing a self-contained wastewater treatment system
of claim l;
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receiving into the septic tank an input of wastewater
comprising manmade waste from the toilet, wherein the
manmade waste comprises urine and/or feces;
treating the wastewater in the septic tank by settling and
anaerobically digesting the manmade waste in the wastewater to
produce treated water;
transferring a portion of the treated wastewater to the
electrochemical cell so that the treated wastewater is in contact
with the at least one anode and the at least one cathode of the
electrochemical cell;
disinfecting the treated wastewater with reactive chlorine
species generated from the electrochemical cell; and
recovering the disinfected treated wastewater in the
liquid holding tank, and/or recovering a gaseous product
generated from the electrochemical cell in the gas storage tank.
Id. at 27–28.
Claims 19 and 20 also are independent and recite “self-contained
wastewater treatment system[s].” Id. at 29–32.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Krause US 4,292,175 Sept. 29, 1981
Ovshinsky US 2007/0054158 A1 Mar. 8, 2007
Matousek ’913 US 2010/0122913 A1 May 20, 2010
Kershaw US 2011/0229780 A1 Sept. 22, 2011
Matousek ’704 US 2011/0226704 A1 Sept. 22, 2011
Fresnel US 2012/0055871 A1 Mar. 8, 2012
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Application 14/048,163

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Ann T. Lemley & Linda P. Wagenet, Water Treatment NOTES,
Terminology for onsite sewage treatment systems, Cornell University
Cooperative Extension 1–6 (Nov. 1991, updated Dec. 2005).
Marshall Brain, How Toilets Work, HowStuffWorks.com (Apr. 1,
2000), available at http://home.Howstuffworks.com/toilet.htm.
Hyunwoong Park et al., Solar-Powered Electrochemical Oxidation of
Organic Compounds Coupled with the Cathodic Production of Molecular
Hydrogen, 112 J. Phys. Chem. A 7616–26 (2008).
Xiaoli Xu et al., A Study on All-Weather Flexible Auto-Tracking
Control Strategy of High-Efficiency Solar Concentrating Photovoltaic
Power Generation System, 2010 Second WRI Global Congress on
Intelligent Systems, IEEE Computer Society 375–78 (2010).
Michael Rogers, Caltech Scientist Awarded Grant to Develop Solar-
Powered Sanitation System, Caltech (July 19, 2011).
REJECTIONS
The claims stand rejected as follows:
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1, 2, 4–8, 19, 20 103(a) Matousek ’913, Rogers, Kershaw,
Matousek ’704, as evidenced by
Lemley
32 103(a) Matousek ’913, Rogers, Kershaw,
Matousek ’704, Prakash, as evidenced
by Lemley
Prakash US 2013/0075335 A1 Mar. 28, 2013
Fresnel WO 2010/102418 A2 Sept. 16, 2010
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Claims Rejected 35 U.S.C. § Reference(s)/Basis
29, 37, 38 103(a) Matousek ’913, Rogers, Kershaw,
Matousek ’704, Park, as evidenced by
Lemley
9, 13–16, 33, 34,
39
103(a) Matousek ’913, Rogers, Kershaw,
Matousek ’704, Fresnel, as evidenced
by Lemley, Brain (claim 33 only)
35

103(a) Matousek ’913, Rogers, Kershaw,
Matousek ’704, Fresnel, Krause, as
evidenced by Lemley
36 103(a) Matousek ’913, Rogers, Kershaw,
Matousek ’704, Ovshinsky, Xu, as
evidenced by Lemley
1, 2, 4–9, 13–16,
19, 20, 33, 34, 39
103(a) Matousek ’913, Rogers, Kershaw,
Matousek ’704, Fresnel, as evidenced
by Lemley, Brain (claim 33 only)
32 103(a) Matousek ’913, Rogers, Kershaw,
Matousek ’704, Fresnel, Prakash, as
evidenced by Lemley
29, 37, 38 103(a) Matousek ’913, Rogers, Kershaw,
Matousek ’704, Fresnel, Park, as
evidenced by Lemley
35 103(a) Matousek ’913, Rogers, Kershaw,
Matousek ’704, Fresnel, Krause, as
evidenced by Lemley
36 103(a) Matousek ’913, Rogers, Kershaw,
Matousek ’704, Fresnel, Ovshinsky,
Xu, as evidenced by Lemley

OPINION
The Appellant’s arguments in support of patentability of the appealed
claims are based on limitations common to independent claims 1, 19, and 20.
See generally Appeal Br. 12–22; see also Ans. 29. The Appellant also argues
in support of patentability of claim 9. See generally Appeal Br. 15–16. The
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Examiner rejected claims 1, 19, and 20 as unpatentable over Matousek ’913,
Rogers, Kershaw, and Matousek ’704, as evidenced by Lemley. See Final
Act. 2–6. The Examiner also rejected claims 1, 19, and 20, as well as claim
9, over the same combination of references in view of Fresnel. Id. at 9–11,
15–21.

Claims 1, 19, and 20
We turn first to the Examiner’s rejection of claims 1, 19, and 20 as
unpatentable over Matousek ’913, Rogers, Kershaw, and Matousek ’704, as
evidenced by Lemley. Claims 1 and 20 recite: “the septic holding tank
further comprises a settling tank which allows for the collection of solids,
wherein a portion of the treated input can be transferred to the
electrochemical cell via the liquid input port of the electrochemical cell.”
Appeal Br. 25, 32. Claim 19 recites a similar limitation, but specifies that the
electrochemical cell is a “photoelectrochemical cell.” Id. at 28. The
Appellant argues that the Examiner reversibly erred in finding that Matousek
’913’s wastewater collection tank 12 meets these limitations. See Appeal Br.
13.
The Appellant argues that Matousek ’913 describes tank 12 as a
mixing tank, and does not disclose or suggest modifying Matousek ’913’s
system by configuring tank 12 as a settling tank. Id. at 14. The Appellant
contends that tank 12 is designed to hold a homogeneous blend of a
macerated slurry, and there is no indication that tank 12 has a structure that
would facilitate separation and collection of solids. Id. The Appellant further
argues that mixing and maceration is a key principle of Matousek ’913’s
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system, and modifying Matousek ’913’s tank 12 to function as a settling
tank would change the principle under which Matousek ’913’s system was
designed to operate. Id. at 18–19.
The Appellant’s arguments are persuasive of reversible error in the
Examiner’s conclusion of obviousness.
The Examiner asserts that “[t]he claimed function[s] of the septic tank
include[] receiving input and holding the received input,” and the
“[A]ppellant has not shown that the prior art device (a tank) is incapable of
performing the[se] claimed functions.” Ans. 29–30. The claims, however,
are not limited to a settling tank. Rather, the settling tank is one of several
components that make up the claimed “self-contained wastewater treatment
system.” See Appeal Br. 24–26, 29–32 (claims 1, 19, 20).
As argued by the Appellant (see, e.g., Appeal Br. 14), in Matousek
’913’s system, tank 12’s intended purpose is to receive wastewater and
continuously mix a macerated slurry stream with the wastewater to form a
homogeneous blend (Matousek ’913 ¶ 21). The system includes electrolytic
cell 16, which is designed to receive the homogeneous blend from tank 12
and contact it with an oxidizing agent source, and electrocoagulation cell 18,
which is designed to flocculate or agglomerate suspended, solid particles in
the oxidized slurry produced in electrolytic cell 16. Id. ¶¶ 23, 30. Matousek
’913’s system also includes settling tank 22, which receives the
agglomerated solids and allows them to settle. Id. ¶¶ 35, 36.
The Examiner has not explained sufficiently why the ordinary artisan
would have reconfigured Matousek ’913’s system such that a settling tank,
rather than a mixing tank, receives the incoming wastewater slurry. In
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particular, the Examiner has not fully addressed the Appellant’s argument
that reconfiguring tank 12 to function as a settling tank, rather than a mixing
tank, would have necessitated substantial reconstruction and redesign of
Matousek ’913’s entire system, and would have changed the basic principle
under which Matousek ’913’s system was designed to operate. See Appeal
Br. 18–19; see generally Ans. 29–32. There can be no motivation to
combine the teachings of references if to do so would render the prior art
invention being modified unsatisfactory for its intended purpose. In re Ratti,
270 F.2d 810, 813 (CCPA 1959); see also In re Gordon, 733 F.2d 900, (Fed.
Cir. 1984) (explaining that the mere fact that the prior art could be so
modified would not make the modification obvious unless the prior art
suggested the desirability of the modification).
For the above reasons, we do not sustain the rejection of claims 1, 19,
and 20 as unpatentable over Matousek ’913, Rogers, Kershaw, and
Matousek ’704, as evidenced by Lemley.

Claims 1, 9, 19, and 20
The Examiner rejected claims 1, 9, 19, and 20 as unpatentable over
Matousek ’913, Rogers, Kershaw, Matousek ’704, and Fresnel, as evidenced
by Lemley. See Final Act. 2–6. As to claims 1, 19, and 20, the Examiner
relies on the same findings discussed above, but additionally cites Fresnel
for an explicit teaching of using aerobic and anaerobic digestion in a settling
tank to treat wastewater prior to electrolytic treatment. Final Act. 19. The
Examiner found that the ordinary artisan would have modified Matousek
’913’s system “to include a settling tank for anaerobically digesting and
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settling the waste as taught by Fresnel because this allows production of a
treated input with organic matter removed before further treatment in the
production of technical water.” Id.
The Examiner’s citations to Fresnel fail to cure the above-noted
deficiencies in the Examiner’s proposed reconfiguration of Matousek ’913’s
system to use a settling tank rather than a mixing tank to receive an
incoming wastewater slurry. See Appeal Br. 2; Reply Br. 5–6. Accordingly,
we do not sustain the rejection of claims 1, 19, and 20, nor do we sustain the
rejection of claim 9 which recites a step of “providing a self-contained
wastewater treatment system of claim l.”

Claims 2, 4–7, 13, 14, 16, and 29–39
Claims 2, 4–7, 13, 14, 16, and 29–39 depend from claims 1, 9, or 20.
See Appeal Br. 26–28, 32–34. The Examiner does not cite to disclosure in
any additional references relied on in rejecting these claims that cures the
above-noted deficiencies in the Examiner’s rejections of claims 1, 9, and 20.
Accordingly, we also sustain the rejections of claims 2, 4–7, 13, 14, 16, and
29–39.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 2, 4–8, 19,
20
103(a) Matousek ’913,
Rogers, Kershaw,
Matousek ’704,
Lemley
1, 2, 4–8,
19, 20
32 103(a) Matousek ’913,
Rogers, Kershaw,
32
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
Matousek ’704,
Prakash, Lemley
29, 37, 38 103(a) Matousek ’913,
Rogers, Kershaw,
Matousek ’704,
Park, Lemley
29, 37, 38
9, 13–16, 33,
34, 39
103(a) Matousek ’913,
Rogers, Kershaw,
Matousek ’704,
Fresnel, Lemley,
Brain
9, 13–16,
33, 34, 39
35 103(a) Matousek ’913,
Rogers, Kershaw,
Matousek ’704,
Fresnel, Krause,
Lemley
35
36 103(a) Matousek ’913,
Rogers, Kershaw,
Matousek ’704,
Ovshinsky, Xu,
Lemley
36
1, 2, 4–9,
13–16, 19,
20, 33, 34,
39
103(a) Matousek ’913,
Rogers, Kershaw,
Matousek ’704,
Fresnel, Lemley,
Brain
1, 2, 4–9,
13–16, 19,
20, 33, 34,
39
32 103(a) Matousek ’913,
Rogers, Kershaw,
Matousek ’704,
Fresnel, Prakash,
Lemley
32
29, 37, 38 103(a) Matousek ’913,
Rogers, Kershaw,
Matousek ’704,
29, 37, 38
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
Fresnel, Park,
Lemley
35 103(a) Matousek ’913,
Rogers, Kershaw,
Matousek ’704,
Fresnel, Krause,
Lemley
35
36 103(a) Matousek ’913,
Rogers, Kershaw,
Matousek ’704,
Fresnel,
Ovshinsky, Xu,
Lemley
36
Overall
Outcome:

1, 2, 4–9,
13, 14, 16,
19, 20, 29–
39
REVERSED