Ex Parte Bigeonneau et al

Patent Trial and Appeal BoardAug 31, 2017

12305305 (P.T.A.B. Aug. 31, 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. 4195-071 3137 EXAMINER FITZSIMMONS, ALLISON GIONTA ART UNIT PAPER NUMBER 1778 MAIL DATE DELIVERY MODE 12/305,305 06/12/2009 24112 7590 08/31/2017 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 Didier Bigeonneau 08/31/2017 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 DIDIER BIGEONNEAU, RENAUD SUBLET, HERVE SUTY, and WAYNE EWANS Appeal 2016-002986 Application 12/305,3051 Technology Center 1700 Before JEFFREY T. SMITH, DONNA M. PRAISS, and MERRELL C. CASHION, JR., Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellants timely request2 reconsideration of our Decision3 affirming the 35 U.S.C. § 103(a) rejections of claims 57, 62, and 63. 1 The real party in interest is Veolia Water Solutions & Technologies Support. 2 Request for Rehearing filed August 21, 2017 (“Request”). 3 Decision on Appeal mailed June 20, 2017 affirming the 35 U.S.C. § 103(a) rejections of claims 55 and 57—70 (cited henceforth as “Op.”). Appeal 2016-002986 Application 12/305,305 Appellants repeat the argument from the principal brief that there would be no reason for a person of ordinary skill in the art to inject oxygen scavengers into Mandrin’s gas stream. Appellants assert that the Board and the Examiner have not (1) appreciated Mandrin’s effectiveness for removing oxygen concentration in the gas stream and (2) provided an explanation as to why a person of ordinary skill in the art would have been motivated to inject oxygen scavengers into the Mandrin gas stream. (Request 2; see also App. Br. 6-7). Contrary to Appellants’ position, Mandrin’s effectiveness for removing oxygen concentration in the gas stream does not detract from the person of ordinary skill in the art’s knowledge of other suitable techniques for removing oxygen concentration in a gas stream. The prior art cited by the Examiner establishes that a wide variety of techniques for extracting oxygen from water are known to persons of ordinary skill in the art. (See Mandrin, cols. 1—4). “[Wjhen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSRInt'l Co. v. Teleflex Inc., 550 U.S. 368, 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)); see also In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.”). Further contrary to Appellants’ position, it is not necessary to physically incorporate Accepta’s teaching that deoxidation can be accomplished by introducing oxygen scavengers into Mandrin’s system to render obvious the claimed invention. “The test for 2 Appeal 2016-002986 Application 12/305,305 obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). A person of ordinary skill would have reasonably expected that removing oxygen concentration in the gas stream could have been accomplished by utilizing a combination of the known techniques. CONCLUSION Based on the foregoing, Appellants’ Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making changes to the final disposition of the rejections therein. This Decision on the Request for Rehearing incorporates our Decision, mailed June 20, 2017, and is final for the purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). DENIED 3