Ex Parte Brown et al

Patent Trial and Appeal Board

Sep 28, 2017

13430417 (P.T.A.B. Sep. 28, 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.
13/430,417 03/26/2012 Geoffrey A. Brown 41524 7589
144982 7590 10
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
SAVAGE, MATTHEW O
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
patents @ hovey williams, com
amalik @hovey williams .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFREY A. BROWN, KRISTOPHER SHELITE, and
JERRY POE
Appeal 2017-001952
Application 13/430,417
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
MONTE T. SQUIRE, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
October 14, 2015 decision finally rejecting claims 1, 4—7, 9—12, 14—17, 32, and
35—39 (“Final Act.”). We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify the real party in interest as Compass Minerals America,
Inc. (Appeal Br. 4).
Appeal 2017-001952
Application 13/430,417
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a method for regenerating ion
exchange materials in a water softening system (Abstract). The method involves
contacting an ion exchange material with an aqueous solution or dispersion
comprising ions produced from a chloride-free salt and a chelating agent (Spec.
3). Details of the claimed invention are set forth in representative claims 1 and
32, as reproduced below from the Claims Appendix:
1. A method for regenerating a water treatment ion exchange
material, comprising contacting a cation exchange material with an
aqueous regenerant solution or dispersion consisting essentially of
ions produced from a chloride-free salt and a calcium chelating
agent, said aqueous regenerant solution or dispersion produced by
dissolving said chloride-free salt and said calcium-chelating agent
in water, wherein said chloride-free salt is selected from the group
consisting of K2S04, NaHCOs, Na2S04, NaH2P04, KHCO3,
KH2P04, K2HP04, K3PCL, Na3P04, Na2CC>3, K2CC>3, and mixtures
thereof.
32. A method for regenerating a water treatment ion exchange
material, comprising contacting a cation exchange material with an
aqueous regenerant solution or dispersion comprising less than
about 3% by weight chloride ions, wherein said aqueous solution
or dispersion consists essentially of a calcium-chelating agent and
ions from chloride free salts selected from the group consisting of
K2S04, NaHCOs, Na2S04, NaH2P04, KHCOs, KH2P04, K2HP04,
K3PCL, Na3P04, Na2CC>3, K2CC>3, and mixtures thereof, said
aqueous regenerant solution or dispersion produced by dissolving
said chloride-free salts and said calcium-chelating agent in water.
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Application 13/430,417
REJECTIONS
I. Claims 1, 4—7, 9—12, 14—16, 32, and 35—38 are rejected under
35 U.S.C. § 103(a) as unpatentable over Kunin2 in view of Matsukawa.3
II. Claims 17 and 39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kunin in view of Matsukawa, and further in view of
Johnson.4
III. Claims 1, 4—7, 9—12, 14—16, 32, and 35—38 are rejected under
35 U.S.C. § 103(a) as unpatentable over Kunin in view of Koefod.5
IV. Claims 17 and 39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kunin in view of Koefod, and further in view of Johnson.
The Examiner also rejected claims 1, 4—7, 9—12, 14—17, 32, and 35—39
are rejected under 35 U.S.C. § 112, second paragraph as being indefinite.
However, these rejections were withdrawn (Ans. 2) and, therefore, are not
before us.
DISCUSSION
Rejections I. and III. The Examiner finds that Kunin discloses each
of the elements of claim 1, except that Kunin discloses the use of potassium
acetate and not one of the potassium salts set forth in claim 1 (Final Act. 3—
4, citing Kunin Abstract, 4:5—8, Example 1). The Examiner also finds that
2 Kunin et al., US 6,340,712 Bl, issued January 22, 2002.
3 Matsukawa, JP 60-255147, published December 16, 1985. Like
Appellants and the Examiner, we refer to the translation of record.
4 Johnson, US 5,232,953, issued August 3, 1993. The Examiner identifies
Johnson as US 5,232,952. However, US 5,232,952 is to Matsuda et al., and
cannot be the patent the Examiner has reference to as it contains only 4
columns and the Examiner refers to column 8 of Johnson.
5 Koefod, US 2006/0157415 Al, published July 20, 2006.
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Application 13/430,417
Kunin recites the use of a surfactant, and that a surfactant would take
Kunin’s composition outside the scope of claim 1 because of the use of the
transitional phrase “consisting essentially of’ (Final Act. 4). The Examiner
further finds that Matsukawa discloses the use of potassium sulfate for
regenerating an ion exchange material, and determines that it would have
been obvious to have substituted potassium sulfate for the potassium acetate
used by Kunin “to provide the predictable result of regenerating an ion
exchange material with potassium sulfate as taught by Matsukawa” (Final
Act. 4). With respect to Kunin’s use of a surfactant, the Examiner
determines that it would have been obvious to eliminate the surfactant if the
function associated with it were neither needed or desired {id.).
Appellants argue that the Examiner’s stated reasons for substituting
potassium sulfate as taught by Matsukawa for Kunin’s potassium acetate are
insufficient and evidence improper hindsight reasoning (Appeal Br. 12).
Appellants argue that a person of ordinary skill in the art would have
believed that use of potassium sulfate in Kunin’s process would have
resulted in undesirable scaling, as evidenced by Working Examples 6 and 7,
and acknowledged by Matsukawa in the abstract {id.). Appellants further
argue that Kunin specifically teaches that potassium acetate does not create a
scaling problem and thus, a person of ordinary skill in the art would have
had no reason to substitute potassium sulfate from Matsukawa for potassium
acetate as used in Kunin (Appeal Br. 13). As further evidence that the
proposed substitution would only be obvious in hindsight, Appellants
contend that “Kunin explicitly distinguishes the Matsukawa salts” at column
3:9—13 (Appeal Br. 14).
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Upon consideration of Appellants’ arguments and all of the evidence
of record in this appeal, we determine that Appellants have not demonstrated
reversible error in this rejection. The Examiner has correctly identified that
Matsukawa discloses the interchangeability of potassium acetate and
potassium sulfate for use in water softener, which is sufficient as a reason
for making the necessary substitution.
If the Examiner makes out a prima facie case of obviousness, as was
done with respect to this rejection, but Appellants provide rebuttal evidence,
the Board must start anew and weigh the evidence upon which the earlier
conclusion of obviousness was reached against the facts established by the
rebuttal evidence to reach a legal conclusion of obviousness or non­
obviousness. See In re Piasecki, 745 F.2d 1468, 1472—73 (Fed. Cir. 1984);
In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976).
Appellants contend that Kunin teaches that use of potassium acetate
would not result in scaling problems, while a person of ordinary skill would
have recognized that potassium sulfate would create scaling problems
(Appeal Br. 13). This argument is not persuasive because it is not supported
by the disclosure of Kunin. In particular, Appellants have not pointed to
anything in Kunin, nor have we located any disclosure, which teaches that
potassium acetate avoids known scaling problems. Appellants direct us to
Kunin at column 3, lines 9—13 for “distinguishing Matsukawa and its salts.”
Id. However, that section of Kunin merely states that “Potassium salts as
regenerants were disclosed in [Matsukawa]” and that “[i]n [Matsukawa]
potassium acetate in tablet or granular form is mentioned, but potassium
chloride is described as being ideal.” In light of the fact that Matsukawa
explicitly states that both potassium sulfate and potassium acetate may be
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used, we do not find that this passage “distinguished]” Matsukawa.
Appellants also assert that “Kunin explicitly teaches that the use of
potassium acetate did not result in scaling issues” (Appeal Br. 13).
However, the passage cited by Appellants, column 6, lines 34—36, makes no
explicit statement regarding scaling issues. Appellants also point to
Matsukawa’s statement that an oxidizer is used to remove iron rust and
scales as evidence that scaling can be a problem. However, Matsukawa does
not distinguish between the scaling problems which might be caused by
potassium sulfate versus potassium acetate.
In summary, the preponderance of the evidence of record does not
show reversible error in the Examiner’s finding that Matsukawa teaches that
both potassium acetate and potassium sulfate can be used in ion exchange
regeneration applications. Matsukawa does not distinguish between
potassium acetate and potassium sulfate and, therefore, a person of skill in
the art would have believed they could be substituted for one another. It
therefore would have been obvious to use potassium sulfate in Kunin’s
system in place of potassium acetate. A conclusion of obviousness may be
supported by a showing that the claims are directed to a process already
known in the prior art (i.e. Kunin’s process) that is altered by the mere
substitution of one element for another known in the field (i.e. potassium
sulfate for potassium acetate as shown in Matsukawa), and such
modification yields a predictable result. KSR Inti. Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007) (citing United States v. Adams, 383 U.S. 39, 40
(1966)).
With regard to Appellants’ argument that Kunin does not appreciate
the importance of the chelating agent in making the use of potassium sulfate
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possible, Kunin clearly discloses the use of potassium acetate with the
chelating agent (Kunin 2:20-30). Substituting potassium sulfate for
potassium acetate would not remove the chelating agent. Thus, even if
potassium sulfate induces increased scaling problems as compared to
potassium acetate, Kunin as modified by Matsukawa would address those
problems.
With regard to the exclusion of the surfactant recited by Kunin, we
agree with the Examiner that if the functionality of the surfactant were not
needed, it would have been obvious to remove that component. Appellants
do not challenge this finding. Appellants argue that eliminating the oxidixer
of Matsukawa would not have been obvious (Appeal Br. 19). However, the
rejection involves the modification of Kunin’s teachings, which do not recite
the use of an oxidizer. Thus, the proposed combination would not have
involved the oxidizer of Matsukawa, and there would not have been a need
to remove it.
Appellants separately argue against the rejection of claim 14, which
recites the presence of a self-sustaining body comprising the chloride-free
salt and chelating agent. Appellants argue that Kunin teaches away from the
use of such a body because it encourages the use of potassium acetate in
liquid form (Appeal Br. 21). Whether a reference teaches away from a
claimed invention is a question of fact. See In re Harris, 409 F.3d 1339,
1341 (Fed. Cir. 2005). “A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, . . . would be led in a
direction divergent from the path that was taken by the applicant.” In re
Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v.
Denso Mfg. Mich., Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)). However,
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“[t]he prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed . . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In this
instance, while Kunin does express a preference for using liquid potassium
acetate, Kunin explicitly states that it can be used in solid form (Kunin,
4:46—50). Thus, the preponderance of the evidence weighs against
Appellants’ argument that Kunin teaches away from claim 14.
With respect to Appellants’ argument that objective indicia of non­
obviousness weigh in favor of reversing the rejection of claim 1 (Appeal Br.
17—18), this argument is unpersuasive at least in part because it relies
heavily on attorney argument and not on evidence of record.
Appellants make a separate argument with respect to the rejection of
claims 17 and 39, which recite contacting the effluent with vegetation. The
Examiner finds (and Appellants do not dispute) that Johnson teaches
contacting regenerant effluent with landscaping or a lawn to enable disposal
of the effluent and irrigation of the landscape. Appellants argue that because
Kunin does not mention the possibility of using its effluent for irrigation
(despite apparent knowledge of the Johnson document) and because using a
liquid with surfactant in a sprinkler system would disrupt water flow, the
Examiner’s proposed combination would not have been obvious (Appeal Br.
27—28). This argument is not persuasive, essentially for the reasons
articulated by the Examiner at pages 5—6 of the Answer. Moreover, neither
claim 17 nor claim 39 requires the use of a sprinkler system, reciting only
that the effluent is “contacted” with the vegetation. Therefore, a person of
skill in the art could have taken Johnson’s teachings to use the effluent from
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a regeneration system to irrigate the landscape in a way which would not
involve a sprinkler system.
Rejections II and IV. Appellants present similar arguments with
respect to the rejection over Kunin in view of Koefod as they did with
respect to Kunin in view of Matsukawa. In the case of Kunin in view of
Koefod, however, the preponderance of the evidence tips in favor of non­
obviousness. In particular, Koefod does not show an art recognized
equivalence between potassium sulfate and potassium acetate, as does
Matsukawa. Thus, the preponderance of the evidence does not support a
finding that a person of skill in the art would have substituted potassium (or
sodium) sulfate from Koefod for Kunin’s potassium acetate. Therefore, we
reverse these rejections.
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CONCLUSION
We AFFIRM the rejection of claims 1, 4—7, 9—12, 14—16, 32 and 35—
38 under 35 U.S.C. § 103(a) as unpatentable over Kunin in view of
Matsukawa.
We AFFIRM the rejection of claims 17 and 39 under 35 U.S.C. § 103(a)
as unpatentable over Kunin in view of Matsukawa, and further in view of
Johnson.
We REVERSE the rejection of claims 1, 4—7, 9—12, 14—16, 32 and
35—38 under 35 U.S.C. § 103(a) as unpatentable over Kunin in view of
Koefod.
We REVERSE the rejection of claims 17 and 39 under 35 U.S.C. § 103(a)
as unpatentable over Kunin in view of Koefod, and further in view of Johnson.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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