Carl Hassler et al.

Patent Trials and Appeals Board

Nov 13, 2020

13433097 - (D) (P.T.A.B. Nov. 13, 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.
13/433,097 03/28/2012 Carl Hassler 8480-89-2 5340
22442 7590 11/13/2020
Sheridan Ross PC
1560 Broadway
Suite 1200
Denver, CO 80202
EXAMINER
ROYCE, LIAM A
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
11/13/2020 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):
e-docket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte CARL HASSLER, JOHN BURBA, and
ROBERT CABLE
________________

Appeal 2020-0013671
Application 13/433,097
Technology Center 1700
________________

Before TERRY J. OWENS, BRADLEY W. BAUMEISTER, and
BRIAN D. RANGE, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 1–3, 5–9, 11, 12, 14–21, 23–26 and 28–31. Appeal
Br. 5.
We have jurisdiction under 35 U.S.C. § 6(b). The Board conducts a
limited de novo review of the appealed rejections for error based upon the
issues identified by Appellant, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). We REVERSE.

1 Appellant identifies Secure Natural Resources LLC as the real party in
interest. Appeal Br. 1 (Appeal Brief filed June 20, 2019 (“Appeal Br.”).
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CLAIMED SUBJECT MATTER
Appellant describes the present invention as being directed to the use
of rare-earth-containing additives comprising rare earths of plural oxidation
states to remove non-metal-containing contaminants from drinking water
and aqueous streams. Spec. 3 (Specification filed Mar. 28, 2012, hereinafter
“Spec.”).
Independent claim 1, reproduced below, illustrates the subject matter
of the appealed claims:
1. A method, comprising:
(a) receiving an oxyanion-containing water, the
oxyanion-containing water comprising at least one non-metal-
containing oxyanion, wherein the at least one non-metal-
containing oxyanion comprises one or more of hypophalite (XO-
), hypochlorite (ClO-), hypobromite (Bro-), hypoidite (IO-),
halites (OXO-), chlorite (OClO-), bromite (OBrO-), halate (XO3-
), chlorate (ClO3-), bromate (BrO3-), iodate (IO3-), perhalates
(XO4-), perchlorate (ClO4-), perbromate (BrO4-), periodate (IO4-,
IO64-, I2+nO10+4n(6+n)-, where n is positive integer greater than
zero), sulfurous (SO32-), disulfurous (S2O52-), thiosulfate
(S2O32-), dithionite (S2O42-), polythionate (SnO62-),
peroxodisulfate (S2O82-), disulfate (S2O72-), trisulfate (S3O102-),
tetrasulfate (S4O132-), and pentasulfate (S5O162-); and
(b) after step (a), contacting the oxyanion-containing
water with a separate component comprising a rare earth to
remove more than 50% of the oxyanions from the oxyanion-
containing water.

STATEMENT OF THE REJECTIONS
Claims 1, 3, 5–7, 9, 11, 14–16, 18, 20, 21, 25, 26, and 28–30 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Fischmann
(Fischmann, US 2012/0024794 A1; published Feb. 2, 2012) and McNew
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(McNew et al., US 7,338,603 B1; issued Mar. 4, 2008, “McNew”). Final
Act. 6–9 (Final Action mailed Dec. 20, 2018, hereinafter “Final Act.”).
Claims 8, 17, and 31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fischmann, McNew, and Hughes (Hughes et al.,
US 2011/0297616 A1; published Dec. 8, 2011, “Hughes”). Final Act. 9–10.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fischmann, McNew, and Smith et al.
(US 2011/0168567 A1; published July 4, 2011, “Smith”). Final Act. 10–11.

DETERMINATIONS AND CONTENTIONS
The Examiner finds that Fischmann discloses a process that
corresponds to the first step of claim 1—receiving an aqueous stream that
contains oxyanion-containing stream. Final Act. 6. More specifically, the
Examiner finds that Fischmann discloses oxyanion-containing aqueous
streams comprising hypochlorite or persulfate. Id. (citing Fischmann
¶¶ 165, 175).
The Examiner finds that Fischmann discloses contacting the
oxyanion-containing stream with a separate composition to remove
substantially all of the oxyanions from the oxyanion-containing stream, but
does not teach that this separate composition contains a rare-earth element.
Final Act. 6 (citing Fischmann ¶ 171).
The Examiner finds that McNew teaches a process that uses the rare
earth element, cerium (Ce), instead of conventional sorbents to remove
oxyanions from aqueous streams. Final Act. 6 (citing McNew, col. 1, l. 25;
col. 2, ll. 58–60; col. 4, ll. 8–16).
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The Examiner concludes that it would have been obvious “to combine
the process of Fischman with the rare earth of NcNew in order to
dechlorinate the water with an alternate sorbent material [f]or the added
benefit of additional sorption of toxic materials from industrial waters.”
Final Act. 7 (citing McNew, col. 1, ll. 22–41) (emphasis omitted). The
Examiner determines, “[s]uch a modification would [have] provide[d]
predictable results [because] both Fischman and McNew have the
motivation for improving techniques of cleaning industrial wastewater.” Id.
(citing MPEP 2141.III(A) (setting forth that one rationale for supporting
obviousness rejections under 35 U.S.C. 103 is to combine prior art elements
according to known methods to yield predictable results.) (emphasis
omitted).
Appellant first argues that Fischmann does not constitute prior art.
Appeal Br. 7–12. Appellant also argues that even if Fischmann does
constitute prior art, the Examiner’s substitution of McNew’s composition
into the dechlorination process of Fischmann is improper. Appeal Br. 12–
13. We address these two arguments in the Analysis section, below.

ANALYSIS
I.
Appellant argues that the obviousness rejections are improper because
the present application claims priority back to the effective filing date of at
least March 16, 2011, a date that predates Fischmann’s provisional filing
date of March 30, 2011. See e.g., Appeal Br. 5–7. More Specifically,
Appellant contends that the present application claims priority to Hassler
(Hassler et al., US 2011/0309017 A1; published Dec. 22, 2011). Appellant
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further contends that Hassler, in turn, claims priority to two provisional
applications: US 61/323,758 (filed Apr. 13, 2010, “the ‘758 provisional”)
and US 61/325,996 (filed Apr. 20, 2010, “the ‘996 provisional,” collectively,
“the Hassler provisional applications”) and that the present application
incorporates by reference the two Hassler provisional applications. Appeal
Br. 5–6.
Appellant additionally contends,
both of the Hassler provisions incorporate by reference three
earlier non-provisional application: 12/616, 653, filed November
11, 2009 (“the ’653 application”); 12/725,114, filed March 16,
2010 (“the ’114 application”); and 12/757,788, filed April 9,
2010 (“the ’788 application”) (collectively, “the incorporated
applications”). All three of the incorporated applications define
the terms “oxyanion” and “target material-containing oxyanion”
the same way the Hassler provisionals do.
Appeal Br. 7–8 (citing ’653 application, ¶ 67; ’114 application ¶ 44;
and ’788 application, ¶ 75).
The Examiner determines that the claim of priority to the Hassler
provisionals is improper and that Fischmann, therefore, does constitute prior
art. Ans. 3–16 (Examiner’s Answer mailed Sept. 19, 2019, hereinafter
“Ans.”).
In particular, the Examiner determines that the Hassler provisionals do
not support the claimed subject matter in a manner that complies with the
written description requirement of 35 U.S.C. § 112(a) (or pre-AIA § 112,
¶ 1). Id. at 11. The Examiner explains that the ’758 provisional describes
the oxyanions generally as AxOy, with A being a metal, metalloid, or non-
metal, but that the ’758 provisional does not disclose any species of non-
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metal oxyanions other than selenium.2 Ans. 13 (citing ’758 provisional
application 4). The Examiner further determines that the ’996 provisional
discloses essentially the same subject matter as the ’758 provisional. Id.
The Examiner further determines the’653 application similarly fails to
disclose all of the Markush elements recited in independent claim 1.
Ans. 13. More specifically, the Examiner acknowledges that the
’653 application discloses oxyanion that include metals, metalloids, and non-
metals, such as selenium, fluorine, and iodine. Ans. 13. But according to
the Examiner, the ’653 application fails to disclose oxyanions that include,
inter alia, sulfur or chlorine, as claimed. Ans. 13.
Appellant does not dispute that the Hassler provisionals fail to
expressly disclose the particular Markush species that are claimed. Appeal
Br. 7–8. But Appellant argues that the Hassler provisionals do disclose a
genus of oxyanions generally. Id. at 8. Appellant contends, “the fact that
the Hassler provisionals do not define non-metal oxyanions other than
selenium oxyanions as ‘target-material containing’ oxyanions does not limit
the scope of the genus of ‘oxyanions’ generally.” Id. at 8.
Appellant further argues that in order to be afforded priority, “the
disclosure of [a] prior-filed application must provide adequate support and

2 The term “metalloid” generally refers to element of the periodic table that
are at the boundary between the table’s metal and non-metal elements.
These metalloids generally include at least bismuth, silicon, germanium,
arsenic, antimony, and tellurium, but the definition is not universally
accepted. Some sources define “metalloid” to additionally include the
radioactive elements polonium and polonium and astatine, and other sources
include selenium. Cf., e.g., https://byjus.com/questions/what-are-metalloids/
(excluding selenium) with https://www.britannica.com/science/selenium
(characterizing selenium as a metalloid).
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enablement for the claimed subject matter of the later-filed application in
compliance with the requirements of 35 U.S.C. § 112(a).” Appeal Br. 8
(citing MPEP 211.05(I)). And Appellant continues, “in assessing a
disclosure for compliance with 35 U.S.C. § 112(a) . . . ‘[w]hat is
conventional or well known to one of ordinary skill in the art need not be
disclosed in detail.’” Id. (citing MPEP § 2163(II)(A)(3)(a)).
“Appellant respectfully submits that it [was] well known to those of
ordinary skill in the art that the term ‘oxyanion’ refers to any anion
‘containing one or more oxygen atoms bonded to another element.’” Appeal
Br. 8 (citation omitted).
Appellant argues,
Any ambiguity that a person of ordinary skill in the art might
harbor about the scope of the term “oxyanion” is eliminated by
the Hassler provisionals’ disclosure of the general chemical
formula AxOyz-; such a formula, even standing alone, provides
adequate disclosure for the genus of oxyanions because, “[i]n
claims involving chemical materials, generic formulae usually
indicate with specificity what the generic claims encompass
[and] [a]ccordingly, such a formula is normally an adequate
description of the claimed genus.”
Appeal Br. 8 (citing Regents of the University of California v. Eli Lilly,
119 F .3d 1559, 1568 (Fed. Cir. 1997); and MPEP 2163(II)(A)(3)(a)).
Appellant’s arguments are unpersuasive. Appellant is correct that a
Specification does not necessarily need to disclose what is well-known and
conventional in order to satisfy the enablement prong of section 112, first
paragraph:
The enablement requirement is often more indulgent than the
written description requirement. The specification need not
explicitly teach those in the art to make and use the invention;
the requirement is satisfied if, given what they already know, the
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specification teaches those in the art enough that they can make
and use the invention without “undue experimentation.”
Amgen, Inc., v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334 (Fed.
Cir. 2003).
However, written description and enablement are separate
requirements under 35 U.S.C. § 112(a) or pre-AIA § 112, ¶ 1. Whether
oxyanions, as a class, were well known to one or ordinary skill does not
address the separate inquiry of whether the Hassler provisional applications
provide adequate the written-description to establish a claim to priority for
the presently claimed invention. “Adequate written description means that
the applicant, in the specification, must ‘convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, he or she was in
possession of the [claimed] invention.’” Agilent Techs., Inc. v. Affymetrix,
Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009) (citation omitted), reh’g en banc
denied Sept. 18, 2009.
It is well settled that “one cannot disclose a forest in the original
application, and then later pick a tree out of the forest and say here is my
invention.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1326
(Fed. Cir. 2000). Rather, the Specification must provide some guides or
“blaze marks” that disclose the claimed invention “specifically, as
something appellants actually invented.” Ariad Pharm., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1348 (Fed. Cir. 2010) (en banc).
To summarize, Appellant does not sufficiently demonstrate that any of
the references that were relied upon for priority conveys with reasonable
clarity to those skilled in the art that, as of the filing date sought, Appellant
was in possession of all of the Markush species currently claimed.
Accordingly, Appellant does not establish that the present application can
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claim priority to an effective filing date that predates the effective date of
Fischmann.
II.
We next inquire whether the Examiner has established that claim 1 is
unpatentable over the combination of Fischmann and McNew.
Appellant argues, “[t]here is no overlap between the oxyanions
removed by the processes of the present invention and the oxyanions
removed by the processes of McNew, and so McNew does not teach
removing the oxyanions of the present invention by a rare earth.” Appeal
Br. 12. Appellant further argues, “[n]othing in either Fischmann or McNew
indicates a recognition of any equivalence between the dechlorination
methods of Fischmann (i.e. treatment with sodium bisulfite or metabisulfite
and/or activated carbon) and the rare earths of McNew.” Id. at 12–13.
Appellant urges, “as a consequence of McNew’s conspicuous silence
regarding non-metal-containing oxyanions, the Examiner’s combination of
Fischmann with McNew is inapposite because nothing in McNew suggests
that the rare earths of McNew are effective to remove hypochlorite, the only
oxyanion disclosed by Fischmann.” Id. at 12.
The Examiner subsequently re-summarizes the rejection, as follows:
McNew is prior art disclosing the use of rare earth as a better
sorbent material than conventional activated carbon for treating
contaminants in water. Fishmann is prior art disclosing treating
water containing a contaminant such as hypochlorite and
removing it with a conventional sorbent material such as
activated carbon. The combination [would have been] obvious
in improving water treatment with better or alternative sorbent
materials[,] as stated in the rejection.
Ans. 17 (emphasis omitted).
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Appellant’s arguments are persuasive. The Examiner has established
that Fischmann uses activated carbon to remove the non-metal oxyanion,
hypochlorite (ClO-), from an aqueous stream. Final Act. 6. And the
Examiner has established that McNew uses oxides of rare-earth elements
(e.g., CeO2) to remove oxyanions generally. Id. And to be sure, McNew
expressly defines the term “oxyanion” broadly as “include[ing] any anion
containing oxygen in combination with one or more other elements.”
McNew, col. 2, ll. 58–60, cited in Final Act. 6.
However, McNew further explains that the invention more
specifically relates to removing oxyanions of toxic, heavy metals and their
radioactive isotopes. McNew, col. 1, ll. 7–12, 45–51, col. 2, ll. 19–28.
McNew provides examples of these metal oxyanions, including CrO4-2,
WO4-2, MoO4-2, SbO3-1, MnO4-2, UO4-2, and VO4-2. Id. col. 4, ll. 20–32.
The Examiner does not cite to any example of McNew using the
disclosed rare-earth composition to sorb non-metal oxyanions. See
generally Final Act. The Examiner has not set forth sufficient evidence or
technical reasoning to support the conclusion that one of ordinary skill
reasonably would have expected that McNew’s rare-earth compositions
would adequately sorb non-metal oxyanions, as well as metal oxyanions.
Ans. 17. The Examiner does not provide a technical basis for concluding
that McNew’s rare earths would sorb hypochlorite better than would
Fischmann’s activated carbon. See generally, Final Act.; and Ans.
The Examiner merely reasons that McNew’s rare-earth compositions
would have been obvious alternatives that provide predictable results
because “both Fischmann and McNew have the motivation for improving
techniques of cleaning industrial wastewater.” Final Act. 7 (emphasis
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omitted). But this reasoning is too sweeping. Wastewater can contain an
extremely wide range of impurities. The fact that a given composition might
remove one given impurity is insufficient to presume that the composition
will remove other impurities. And within the universe of aqueous
impurities, even the genus of oxyanions—any anion containing oxygen in
combination with one or more other elements—covers a wide range of
compositions with potentially different chemical properties.
For the reasons stated above, the Examiner has not established that it
would have been obvious to substitute McNew’s rare-earth compositions for
Fischmann’s activated-carbon sorbent. We, therefore, reverse obviousness
rejection of independent claim 1. We, likewise, reverse the obviousness
rejection of claims 3, 5–7, 9, 11, 14–16, 18, 20, 21, 25, 26, and 28–30, which
either depend from claim 1 or otherwise include similar limitations
regarding a water stream comprising non-metal-containing oxyanions.
With respect to the remaining rejections of dependent claims 2, 8, 12, 17, 19,
23, 24, and 31, the Examiner does not rely on Whitehead, Hughes, or Smith
in a manner that sufficiently cures the above-noted deficiency of the
obviousness rejection of claim 1. See Final Act. 8–11. We, therefore,
reverse the obviousness rejections of these claims for the reasons set forth in
relation to independent claim 1.

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CONCLUSION
In summary:

REVERSED

Claims Rejected 35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1, 3, 5–7, 9, 11,
14–16, 18, 20,
21, 25, 26, 28–30
103 Fischmann,
McNew

1, 3, 5–7, 9, 11, 14–
16, 18, 20, 21, 25,
26, 28–30
2, 12, 19, 24 103 Fischmann,
McNew,
Whitehead
2, 12, 19, 24
8, 17, 31 103 Fischmann,
McNew, Hughes
8, 17, 31
23 103 Fischmann,
McNew, Smith
23
Overall
Outcome
1–3, 5–9, 11, 12,
14–21, 23–26, 28–
31