Ex Parte Bauerle et al

Patent Trial and Appeal Board

Dec 13, 2017

13369774 (P.T.A.B. Dec. 13, 2017)

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.
13/369,774 02/09/2012 Ulrich Bauerle GOTZF 232 1336
2555 7590 12/15/2017
KREMBLAS & FOSTER
7632 SLATE RIDGE BOULEVARD
REYNOLDSBURG, OH 43068
EXAMINER
GRABER, KARA M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
12/15/2017 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):
officeactions @ohiopatent.com
info@ohiopatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ULRICH BAUERLE and JOACHIM GEORGI
Appeal 2017-005258
Application 13/369,774
Technology Center 1700
Before CHUNG K. PAK, TERRY J. OWENS, and JANE E. INGLESE,
Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 6—9, 11, and 132. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Eviola S.A. Appeal Brief
filed October 10, 2016 (“App. Br.”), 2.
2 Claims 1—5 stand withdrawn from consideration. Final Office Action
entered May 16, 2016 (“Final Act.”), 2.
Appeal 2017-005258
Application 13/369,774
STATEMENT OF THE CASE
Appellants claim a method for purification of oil-contaminated water.
App. Br. 7-A. Independent claim 6 illustrates the subject matter on appeal
and is reproduced below:
6. A method for purification of oil-contaminated water, the
method consisting of the following steps:
a) Feeding the oil-contaminated water in a depression
(22), wherein a first partial separation of the oil-
contaminated water into oil components (24, 25) and oil
content-reduced water (28) is carried out;
b) Draining off the oil content-reduced water (28) from the
depression (22);
c) Adding a precipitant (27) to the oil content-reduced
water (28) directly as the oil content-reduced water is
drained from the depression (22) in the immediately
preceding step and introduced in the immediately
following step into an ultrafdtration device (29);
d) After adding the precipitant, introducing the oil content-
reduced water (28) into the ultrafiltration device (29)
producing a drift within the ultrafiltration device (29)
by which the oil content-reduced water (28) is guided to
be passed along the membrane (30), the ultrafiltration
device having a membrane (30) made of polymers for
ultrafiltration;
e) Separating the oil content-reduced water (28) using the
membrane (30) into an oil-enriched phase (31) and a
clearwater phase (33);
f) Draining off the clearwater phase (33) and reverting the
oil-enriched phase (32) into the depression (22).
App. Br. 16 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action and maintains the rejections in the Answer entered December 16,
2016 (“Ans.”):
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Application 13/369,774
I. Claims 6—9, 11, and 13 under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter that Applicants regard as the invention;
and
II. Claims 6—9, 11, and 13 under 35 U.S.C. § 103(a) as
unpatentable over Stewart (US 2009/0204419 Al; published August 13,
2009) in view of Wilf (Mark Wilf, Membrane Types and Factors Affecting
Membrane Performance, Advanced Membrane Techs. Stanford U. (2008)
http://web.stanford.edu/group/ees/rows/presentations/Wilf.pdf (“Wilf’)) and
Fiessinger (US 4,485,018; issued November 27, 1984).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we affirm the Examiner’s rejection of
claims 6—9, 11, and 13 under 35 U.S.C. § 112, second paragraph for the
reasons set forth in the Final Action, the Answer, and below, and we reverse
the Examiner’s rejection of claims 6—9, 11, and 13 under 35 U.S.C. § 103(a)
for the reasons set forth in the Appeal Brief and below.
Rejection I
The Examiner finds that recitation of “the membrane” in lines 13—14
of claim 6 lacks antecedent basis. Final Act. 2—3. Appellants acknowledge
that “the [Ejxaminer has a valid point,” and provide proposed amendments
in Appendix B of their Appeal Brief to address this rejection. App. Br. 14,
18. In the Answer, “the [Ejxaminer acknowledges correction in the
proposed amendments.” Ans. 10 (emphasis omitted). However, because the
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Application 13/369,774
Examiner does not confirm entry of Appellants’ proposed amendments, we
procedurally affirm this rejection.
Rejection II
We need only consider claim 6 because the remaining claims on
appeal include all the limitations of claim 6.
The Examiner finds that Stewart discloses a method of purifying oil-
contaminated water that includes the step of feeding contaminated water into
a tank (depression) where a first separation occurs, draining the oil content-
reduced water from the tank (depression), adding an iron-chloride
precipitant to the oil content-reduced water in a coagulation tank, and
feeding the oil-content reduced water from the coagulation tank to a
micro filter (ultrafiltration device). Final Act. 3^4 (citing Stewart || 2, 31—
34, 38; Fig. 1). The Examiner finds that “Stewart does not teach that
precipitant is dosed directly as the water is drained from the depression and
introduced to the ultrafiltration device,” and the Examiner relies on
Fiessinger to address this feature. Final Act. 3^4.
The Examiner finds that Fiessinger discloses two different
embodiments for introducing iron-III-chloride into an aqueous stream. Final
Act. 3 (citing Fiessinger col. 2,1. 62—col. 3,1. 51; Figs. 1, 2). The Examiner
finds that the first embodiment involves introducing water and iron-III-
chloride into a tank, while the second embodiment involves combining water
and iron-III-chloride within a pipe by dosing iron-III-chloride directly into
the pipe. Final Act. 3—5 (citing Fiessinger col. 2,1. 62—col. 3,1. 3; col. 3,11.
8-46; Figs. 1, 2). The Examiner determines that because Fiessinger thus
“recognizes the equivalency of adding a precipitant in a tank and directly
adding a precipitant in a pipe in the field of water purification,” it would
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Application 13/369,774
have been obvious to one of ordinary skill in the art at the time of
Appellants’ invention “to replace the precipitant added in a tank, as taught
by Stewart, with the direct precipitant dosing of Fiessinger.” Final Act. 4.
However, Stewart discloses a method for removing water from an
oil/water mixture recovered from oil and gas wells that first involves
subjecting oil/water mixture 2 to a separation process in “API” separator unit
3. Stewart || 2, 8, 22, 31; Fig. 1. As discussed above, the Examiner finds
that this process corresponds to feeding oil-contaminated water into a
depression, wherein a first partial separation of the oil-contaminated water
into oil components and oil content-reduced water is carried out, as recited
in claim 6. Final Act. 3. Stewart discloses sending water generated by
separator unit 3, referred to as “production water 4,” to aeration tank 5.3
Stewart || 31, 43; Fig. 1.
Stewart discloses that aerated production water 6 generated by
aeration tank 5 can optionally be sent through an organic walnut shell filter 7
to remove paraffins and asphaltenes. Stewart || 35, 36; Fig. 1. Stewart
discloses that organic walnut shell filter 7 can optionally be preceded by a
dissolved air flotation unit (DAF), or alternatively, instead of utilizing a
DAF unit, filtered production water 8 exiting walnut shell filter 7 can be
conveyed to coagulant mix tank 9, where iron chloride coagulant is added to
filtered production water 8. Stewart || 37—39; Fig. 1. Stewart discloses that
pretreated flow 10 exiting coagulant mix tank 9, or flow exiting organic
walnut shell filter 7 in circumstances where coagulant mix tank 9 is not
3 Although the Examiner finds that Stewart discloses that the aeration tank is
optional (Final Act. 3), we find no such disclosure in the reference, which
we advise the Examiner and Appellants to consider in the event of further
prosecution of this application.
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utilized, passes to concentration tank 11. Stewart || 38; Fig. 1.
Stewart discloses feeding solution 12 exiting concentration tank 11
into ceramic microfiltration unit 13, where it passes over microfiltration
membranes. Stewart || 38, 41, 43; Fig. 1. Stewart discloses that clean,
filtered water that permeates through the membranes, referred to as
“permeate steam 14,” contains little or no oil or heavy metals. Stewart 143.
Stewart discloses circulating solution unable to permeate through the
microfiltration membranes, referred to as “concentrate stream 15,” back into
concentration tank 11, and then sending concentrate stream 15 from
concentration tank 11 back into ceramic microfiltration unit 13. Stewart |
43; Fig. 1.
As set forth above, claim 6 requires the recited method of purifying
oil-contaminated water to consist of, inter alia, adding a precipitant to the
oil content-reduced water directly as the oil content-reduced water is drained
from a depression in the immediately preceding step and introduced in the
immediately following step into an ultrafiltration device. “‘[CJlosed’
transition phrases such as ‘consisting of are understood to exclude any
elements, steps, or ingredients not specified in the claim.” AFC Indus., Inc.
v. Cardinal IG Co., 239 F.3d 1239, 1244-45 (Fed. Cir. 2001); see also In re
Gray, 53 F.2d 520, 521 (CCPA 1931) (use of the claim term “consists” is
limited to the claim’s enumerated alloy metals without other elements).
As Appellants correctly argue, if Fiessinger’s process of directly
adding a precipitant to a pipe were substituted for Stewart’s coagulant mix
tank 9 as the Examiner proposes, flow 10 exiting such a pipe would
nonetheless still pass through Stewart’s concentration tank 11 before
entering Stewart’s ceramic microfilter 13. App. Br. 11—12; Stewart H 38,
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Application 13/369,774
41, 43; Fig. 1. The Examiner does not directly respond to Appellants’
argument raising this issue. Ans. 8—9. Nor does the Examiner provide any
rationale or reasoning for why one of ordinary skill in the art would have
eliminated a concentration tank from Stewart’s process, particularly when
Stewart discloses using the concentration tank to receive a concentrate
stream recirculated from the micro filtration unit.4 Accordingly, the
Examiner fails to establish that the combined teachings of Stewart and
Fiessinger would have suggested adding a precipitant to oil content-reduced
water directly as the oil content-reduced water is drained from a depression
in the immediately preceding step and introduced in the immediately
following step into an ultrafiltration device, as required by claim 6.
We accordingly do not sustain the Examiner’s rejection of claims 6—9,
11, and 13 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejection of claims 6—9, 11, and 13 under
35 U.S.C. § 112, second paragraph, and reverse the Examiner’s rejection of
claims 6—9, 11, and 13 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
4 In the event of further prosecution of this application, we advise the
Examiner and Appellants to consider Stewart’s Example, which does not
appear to utilize a concentration tank. Stewart || 59—64.
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