Avi Efraty

Patent Trials and Appeals Board

Dec 20, 2019

13381960 - (D) (P.T.A.B. Dec. 20, 2019)

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.
13/381,960 01/02/2012 Avi Efraty 4465/10.3.1 8335
67305 7590 12/20/2019
SOROKER AGMON NORDMAN
ADVOCATES AND PATENT ATTORNEYS
8 Hahoshlim Street
P.O. Box 12425
HERZLIYA, 4672408
ISRAEL
EXAMINER
MELLON, DAVID C
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
12/20/2019 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 AVI EFRATY
Appeal 2018-003282
Application 13/381,960
Technology Center 1700
BEFORE BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
JAMES C. HOUSEL, 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, 3, and 13–16. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 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 Desalitech LTD.
Appeal Br. 3.
Appeal 2011-003282
Application 13/381,960

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:

1. An integrated system comprising:
a Brackish Water Reverse Osmosis (BWRO) unit having an inlet, a
pressurized brine outlet and a permeate outlet; and a closed circuit
desalination retrofit unit for further desalination of pressurized feed received
from said (BWRO) unit, the retrofit unit comprising:
a closed circuit comprising one or more desalination modules, each of
said desalination modules comprising a respective module inlet and a
respective module outlet, each of said desalination modules comprising one
or more membrane elements; and a closed circuit conducting line with
circulation means for recycling concentrate from the respective module
outlets to the respective module inlets of said one or more desalination
modules;
a conducting line for supply of a pressurized brine flow from said
BWRO unit to said closed circuit of said retrofit unit;
a conducting line of permeate from said retrofit unit to said inlet of
said BWRO unit, said permeate to be recycled as part of a feed source of
said BWRO unit, or to the permeate outlet of said BWRO unit for
combining with permeate produced by the BRWO unit;
a first valve means in said closed circuit conducting line of said
retrofit unit to enable flow from said respective module outlets to said
respective module inlets of said desalination modules and for discharge of
brine from said respective module outlets of said desalination modules in
said retrofit unit without stopping desalination;
a conducting line at an outlet of said desalination module to enable
discharge of brine from said closed circuit of said retrofit unit;
a sensor for measuring electric conductivity of recycled concentrate in
said closed circuit of said retrofit unit; and
monitoring and control systems to enable an automated actuation of
the integrated system and continuous closed circuit desalination of desired
recovery in said retrofit unit performed by a two-step consecutive sequential
process with closed circuit desalination experienced most of the time and
with brine discharge and fresh feed recharge occurring at a desired
desalination recovery level,
Appeal 2011-003282
Application 13/381,960

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wherein a pressurized brine flow from the BWRO unit is diverted to
the respective module inlets of the desalination modules of the retrofit unit
by a second valve means which enables supply of the pressurized brine from
the BWRO for energy saving, wherein the retrofit unit is non autonomous
and wherein the retrofit unit is activated or stopped by the second valve
means, and wherein the automated actuation of the integrated system
comprises controlling the actuation of the second valve means.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kawashima US 5,238,574 Aug. 24, 1993
Efraty US 2008/0023410 A1 Jan. 31, 2008

THE REJECTION
Claims 1, 3, and 13–16 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Kawashima in view of Efraty.
OPINION
To the extent that Appellant has presented substantive arguments for
the separate patentability of any individual claim on appeal, we will address
each separately consistent with 37 C.F.R. § 41.37(c)(1)(iv) (2017). We thus
select claim 1 as representative in this appeal.
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusion that the subject matter of
Appellant’s claims is unpatentable over the applied art. Accordingly, we
sustain the Examiner’s rejection on appeal for the reasons set forth in the
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Application 13/381,960

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Final Office Action and in the Answer, and affirm, with the following
emphasis.
Appellant argues that Kawashima teaches salt water reverse osmosis
(SWRO) systems, and that such systems are completely different from
brackish water reverse osmosis systems (BWRO) for the reasons stated on
page 7 of the Appeal Brief. Appellant concludes that thus Kawashima does
not suggest a BWRO system as claimed. Appeal Br. 8.
We are unpersuaded by this argument for the reasons provided by the
Examiner on page 3 of the Answer. Therein, the Examiner explains that
Appellant’s claims are device claims, and therefore the material worked
upon (i.e., the type of water) is not a claim limitation. We agree.
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). The Examiner also states that Appellant indicates that recovery
and feed aspects are different between SWRO and BWRO, but states that
this fails to show that the actual structure (i.e. the membrane module) is
structurally or patentably distinct. The Examiner states that because SWRO
is capable of processing higher salt content water, it is further capable
of processing water of lower salt content as well. The Examiner further
states that Appellant’s arguments regarding the particular water treated and
the recovery rates are not commensurate with the scope of the claims. We
agree and note that such arguments are unpersuasive of reversible error
because they are not grounded on limitations that appear in the claims. In re
Hiniker Co., 150 F.3d 1362, 1368–1369 (Fed. Cir. 1998); In re Self, 671
F.2d 1344, 1348 (CCPA 1982).
Appeal 2011-003282
Application 13/381,960

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Appellant further argues that Kawashima is not properly considered
analogous art. Appeal Br. 8. However, we agree with the Examiner’s
response made on page 4 of the Answer. Therein, the Examiner states that
Appellant’s invention relates to improved performance of reverse osmosis
systems, and that Kawashima also involves the same field of endeavor
(reverse osmosis systems). Kawashima, Abstract and Title. The Examiner
also states that Kawashima is further considered to be reasonably pertinent
to the instant invention as it is directed towards reverse osmosis systems and
improvements thereto. Ans. 4.
On page 8 of the Appeal Brief, Appellant admits that the use of
SWRO membranes in BWRO systems is allowed to enable a higher salt
rejection, but asserts that the use of BWRO membranes in SWRO systems is
not practical due to different pressure ratings. Appellant then states that the
use of a low pressure RO membrane in the two-stage RO unit by Kawashima
having an inlet feed >40,000 ppm is unclear. Appellant submits that a two-
stage RO design requires that the pressure at inlet to the second stage will be
at the level of the pressurized brine of the first stage (or higher if a booster
pump is utilized), whereas, the inlet pressure to the second stage in
Kawashima disobeys this requirement by implementing use of its “pressure
reducing means.” Appellant provides an example on pages 8–9 of the
Appeal Brief to show that the second stage in Kawashima is not possible.
Appeal Br. 9. Appellant concludes that accordingly, Kawashima can be said
to teach only a single-pass SWRO through a complex ineffective design
without an energy recovery device (ERD). We are unpersuaded by these
arguments, and agree with the Examiner’s stated response made on page 5 of
the Answer. Therein, the Examiner states that Appellant relies solely on
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attorney arguments, and that there is no persuasive evidence, such as a
corresponding declaration or other expert evidence supporting this position.
The Examiner also states that the argument is an effort to show that the
Kawashima patent is inoperative, and such argument is insufficient to
provide evidence of inoperability. We agree, and note that every patent is
presumed valid (35 U.S.C. 282), and that presumption includes the
presumption of operability (Metropolitan Eng. Co. v. Coe, 78 F.2d 199
(D.C. Cir. 1935). The Examiner also states that Kawashima teaches a range
of pressures appropriate for the first stage (40–70 bar, col. 3, ll. 30-45; note
that 1 bar is approximately equal to 1 kg/cm2g) and for the second stage (30–
70 bar, col. 4, ll. 49–56). The Examiner finds that Kawashima thus teaches
ranges of pressures within which points exist which make for an operable
system. The Examiner also states that Appellant has not shown that
Kawashima is inoperable or that membrane (12) would produce no permeate
for all disclosed operational ranges. Ans. 5. Appellant does not dispute
these findings. See generally Appeal Br.
Appellant also argues that BWRO system features are well known to
one skilled in the art so there is no point in elaborating further on the
systems and further that the BWRO is not the essence of the invention.
Appeal Br. 9. We agree with the Examiner that the claims do not
sufficiently specify the structure of the BWRO system to distinguish that
aspect (the BWRO unit) from the applied art. Ans. 4.
Appellant further argues that Efraty’s Figure 2a requires a pressurized
stream whereas Kawashima teaches using pressure reducing means (16)
prior to module (12), and thus Efraty’s module would not be able to operate
and therefore the combination would result in an inoperable device. Appeal
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Br. 11. We agree with the Examiner’s response that Kawashima’s element
(16) is a pressure reducing means not a pressure eliminating means, and thus
there is still operational pressure on the outlet side of element (16). Ans. 4–
5. The Examiner finds that Kawashima expressly teaches the low pressure
membrane’s particular feed pressure parameters (30–70kg/cm2g) which is
approximately 30–70 bar (col. 4, ll. 49–56 for example) and further indicates
the pressure reducing means (16) is a pressure reducing (not eliminating)
valve or a restriction orifice or the like (col. 4, ll. 57–60). The Examiner
states that thus Kawashima provides pressure to element (12) for operation.
We agree.
Appellant also argues that Kawashima’s pressure reducing means (16)
disables proper operation of any standard RO system. Appeal Br. 13. This
is further not found to be persuasive for the same reasons discussed, supra.
Appellant argues that the combination of Kawashima and Efraty
cannot provide the non-autonomous aspect since Efraty is autonomous.
Appeal Br. 10–11. This is not found persuasive for the reasons provided by
the Examiner on pages 6–7 of the Answer, which we adopt as our own.
Appellant also argues there is no motivation to combine the applied
art, and that there is a teaching away. Appeal Br. 13. We are unpersuaded
by such argument for the reasons provided by the Examiner on pages 7–8 of
the Answer.
Appellant discusses counterpart applications that have been granted
by foreign patent offices. This is not persuasive. We agree with the
Examiner’s response on page 8 of the Answer because foreign patent office
determinations do not affect prosecution concerning United States patent
law.
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Application 13/381,960

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In view of the above, we affirm the rejection.
CONCLUSION
We affirm the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 13–16 103 Kawashima, Efraty 1, 3, 13–16

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