Ex Parte Burba et al

Patent Trials and Appeals BoardMar 27, 2019

13159179 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/159, 179 06/13/2011 John L. Burba 22442 7590 03/29/2019 Sheridan Ross PC 1560 Broadway Suite 1200 Denver, CO 80202 UNITED ST A TES OF AMERICA 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 8480-82 1948 EXAMINER VU, JAKE MINH ART UNIT PAPER NUMBER 1618 NOTIFICATION DATE DELIVERY MODE 03/29/2019 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 JOHN L. BURBA, CHARLES F. WHITEHEAD, CARL R. HASSLER, and ROBERT CABLE 1 Appeal2018-006070 Application 13/159, 179 Technology Center 1600 Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify the real-party-in interest as Secure Natural Resources LLC. App. Br. 1. Appeal2018-006070 Application 13/159, 179 SUMMARY Appellants file this appeal under 35 U.S.C. Â§ I34(a) from the Examiner's Final Rejection of claims 2, 4, 6, 18, 20-23, 26, 33, 39--42, 49, and 51-53 2 as unpatentable under 35 U.S.C. Â§ I02(b) as anticipated by Burba (US 2009/0111689 Al, April 30, 2009) ("Burba"). The claims are also rejected as unpatentable under 35 U.S.C. Â§ I03(a) as obvious over Burba and Doheny, Drugs in Our Drinking Water, WebMD Feature (2008) available at: https://www.webmd.com/a-to-z- guides/features/ drugs-in-our-drinking-water# 1 ("Doheny"). 3 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellants' invention is directed to removing physiologically active compounds from a fluid using a rare earth fixing agent. See Spec. p. 11, 11. 3-7. REPRESENTATIVE CLAIM Claim 26 is representative of the claims on appeal and recites: 26. A method, comprising: 2 Claims 1, 3, 5, 7-17, 19, 24, 25, 27-32, 34--38, 43--48, and 50 are canceled. App. Br. 12-14. 3 The Examiner withdrew the rejection of claims 2, 4, 6, 18, 20-23, 26, 33, 39--42, 49, and 51-53 under 35 U.S.C. Â§ 101 as directed to a natural product. Ans. 5-6. 2 Appeal2018-006070 Application 13/159, 179 providing a filter or monolith, comprising an insoluble rare earth fixing agent; and contacting the insoluble rare earth fixing agent with a feed stream comprising a hormone to substantially remove the hormone from the feed stream. App. Br. 13. ISSUES AND ANALYSIS We agree with, and expressly adopt, the Examiner's findings, reasoning, and conclusion that the claims are prima facie anticipated and obvious over the combined cited prior art. We address below the arguments raised by Appellants. A. Rejection of claims 2, 4, 6, 18, 20-23, 26, 33, 39--42, 49, and 51-53 under 35 U.S.C. Â§ 102(b) Issue Appellants argue that the Examiner erred by finding that Burba inherently discloses removing hormones from a feed stream. App. Br. 7-8. Analysis The Examiner finds that Burba teaches a method of providing an insoluble rare earth fixing agent, e.g., cerium (IV) oxide, and contacting the fixing agent with a feed stream to remove contaminants from the feed stream. See Ans. 3 ( citing Burba ,r,r 20, 29, 50). The Examiner finds that Burba teaches the feed stream includes portable water systems or waste water treatment systems. Id. ( citing Burba ,r 20). The Examiner finds that 3 Appeal2018-006070 Application 13/159, 179 Burba teaches the fixing agent removes chemical and biological contaminants. Id. ( citing Burba ,r,r 8, 20). The Examiner finds that "[a]lthough the reference is silent about the feed stream from portable water system or waste water treatment systems containing any hormones ... it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure." Ans. 3. The Examiner finds that "it is reasonable to conclude that the same feed stream, such as [the] potable water system and waste water treatment system, is being contacted with the same insoluble rare earth fixing agent, such as cerium oxide, by the same mode in both the instant claims and the prior art reference." Id. Therefore, the Examiner finds that practicing the method of Burba "will always" remove hormones from a water system and thus inherently anticipates the claims. Id. at 7. Appellants argue that "[ t ]he Examiner has, at most, demonstrated only that removal of hormones may occur when practicing the method of Burba." App. Br. 8. Appellants argue that hormones are not always present in all water feed streams, and therefore "[i]t is possible to treat the water feed streams of Burba without hormones being present." Reply Br. 6. As such, Appellants argue that the Examiner has not established that the missing descriptive matter is necessarily present in Burba. See id. at 5. We are not persuaded by Appellants' arguments that the Examiner erred in finding the prior art inherently anticipates the claims. The Examiner finds that Burba teaches a filter comprising an insoluble rare earth fixing agent, e.g., cerium (IV) oxide, used to remove contaminants from water feed streams. Therefore, the Examiner establishes that the prior art discloses the 4 Appeal2018-006070 Application 13/159, 179 "same article of manufacture," i.e., the same fixing agent, and that the claims merely describe the effect of passing a selected feed stream through the fixing agent. See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). "[I]f a previously patented device, in its normal and usual operation, will perform the function which an appellant claims in a subsequent application for process patent, then such application for process patent will be considered to have been anticipated by the former patented device." Id. at 1326-1327; see also Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809- 10 (Fed. Cir. 2002). Appellants appear to argue that the claims are directed to a new use of an old process. See Reply Br. 4. We are not persuaded that this is a new use of an old process. Rather, we find that the claimed process is directed to the same use, i.e., removing contaminants from water streams, and consists of the same steps as described by Burba. See Bristol-Meyers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001). "Newly discovered results of known processes directed to the same purpose are not patentable because such results are inherent." Id. Because the Examiner establishes a prima facie case of anticipation based on inherency, "the burden shifts to Appellants to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on." See In re King, 801 F.2d at 1327 (quoting In re Swineheart, 439 F.3d 210, 212-213 (CCPA 1971). Here, Appellants did not provide evidence that Burba's structure does not inherently remove the claimed contaminants from a feed stream according to its usual operation. Therefore, we are not persuaded that the Examiner erred in finding the claims anticipated. 5 Appeal2018-006070 Application 13/159, 179 B. Rejection of claims 2, 4, 6, 18, 20-23, 26, 33, 39--42, 49, and 51-53 under 35 U.S.C. Â§ 103(a) Issue 1 Appellants argue that Doheny does not provide a reason to modify Burba to remove hormones from a feed stream. App. Br. 9. Analysis The Examiner acknowledges that Burba "does not specifically teach detoxifying biological contaminants, such as hormones, such as estrogen, from the portable water system." Ans. 5. The Examiner finds Doheny "teaches the prior art is concerned about biological contaminants, such as hormones, such as estrogen, from ... drinking water, which is [a] portable water system." Ans. 5. The Examiner determines it would have been obvious to a person of ordinary skill in the art at the time the invention was made to remove hormones from a water system using Burba's method, with a reasonable expectation of success. See Ans. 5. The Examiner finds the reason to do so was the public concern about pharmaceuticals, including hormones, in drinking water. Id. Appellants argue that "Doheny does not mention rare earth fixing agents at all, and discloses only that home filtering systems, such as reverse osmosis and activated charcoal systems, may reduce the levels of some pharmaceutical drugs from drinking water (Doheny, p. 3)." App. Br. 9. As such, Appellants argue that Doheny does not "motivate one of ordinary skill in the art to modify Burba to remove hormones." Id. We agree with the Examiner that Doheny teaches the problem of pharmaceuticals in drinking water. Doheny teaches a particular problem associated with "pharmaceuticals that are synthetic hormones ... because 6 Appeal2018-006070 Application 13/159, 179 hormones work at very low concentrations in the human body." Doheny 2. Moreover, Doheny teaches existing solutions, including reverse osmosis and activated charcoal systems "will remove some pharmaceutical drugs but not all." Doheny 3 ( emphasis added). Therefore, we find that Doheny establishes a need in the art for an improved fixing agent for drinking water that will remove synthetic hormones at low concentrations. Burba teaches an improved fixing agent for removing a wide variety of biological and chemical contaminants from a water feed stream. See Burba ,r,r 23-25. That Burba does not list the term "hormone" as a specific chemical contaminant is not dispositive as, "any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,420 (2007). Given a person of ordinary skill is also a person of ordinary creativity, we find that the person of ordinary skill in the art would have recognized that Burba's fixing material had obvious uses beyond its primary purpose. See id. One such obvious use would have been to remove other synthetic chemicals, including pharmaceutical agents, such as hormones, from water feed streams. We find that using Burba's method to remove hormones in drinking water as taught by Doheny implements a predictable variation of Burba's method for removing other chemical contaminants. See id. at 417. Therefore, we are not persuaded that the Examiner erred in finding a reason to modify Burba with Doheny to remove hormones from a water feed stream. 7 Appeal2018-006070 Application 13/159, 179 Issue 2 Appellants argue that there is no reasonable expectation of success in combining Burba and Doheny. App. Br. 10. Analysis Appellants argue that "the Examiner has not provided any objective evidence or cogent technical reasoning to indicate that one of ordinary skill in the art would have a reasonable expectation of success in removing hormones from a feed stream based on the combination of Burba and Doheny." App. Br. 10. Appellants further argue that there is no known relationship between chemical warfare agents or industrial chemicals and biological contaminants. Id. Appellants argue "[a]ccordingly, the Examiner's rejection based on an 'obvious to try' rationale has 'an insufficient basis for the necessary predictability of success to sustain a rejection under section 103. "' Id. ( citing Application of Mercier, 515 F .2d 1161, 1167 (CCPA 1975)). We are not persuaded by Appellants' argument as to the Examiner's finding of a reasonable expectation of success in combining the prior art. First, we do not find the distinction between chemical and biological contaminants particularly useful as applied to "hormones." As explained by Doheny, synthetic hormones are a type of pharmaceutical drug rather than purely biological compounds. Burba teaches a method for removing a "diverse set" of biological and chemical contaminants from water feed streams. See Burba ,r,r 8, 25. We find that either of these categories would encompass "hormones" as recited by the claims. Second, the "case law is clear that obviousness cannot be avoided simply by a showing of some degree of unpredictability in the art so long as 8 Appeal2018-006070 Application 13/159, 179 there was a reasonable probability of success." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). Here Appellants have provided no evidence that removing hormones using Burba' s method would have been unpredictable in any way. Rather, we agree with the Examiner that one of ordinary skill in the art would have had a reasonable expectation of success because Burba teaches a method that removes chemical and biological contaminates from a drinking water supply. See Ans. 9. Therefore, we are not persuaded that the Examiner erred in finding a reasonable expectation of success in combining the references. Issue 3 Appellants argue that the Examiner errs in applying an "obvious-to- try" rationale. See App. Br. 9-10. Analysis Appellants argue that: [E]ven where the disclosures of the prior art may make it obvious to one skilled in the art to try various combinations of known process limitations to solve a given problem, the standard of obviousness under 35 U.S.C. Â§ 103 is not met absent some suggestion in the prior art supporting the specific combination of limitations that would result in the claimed methods. App. Br. 9. Appellants cite In re Geiger for failing to establish obviousness where "it would have been 'obvious to try' various combinations of known scale and corrosion prevention agents, including the combination recited in the appealed claims." See App. Br. 9-10 (citing In re Geiger, 815 F.2d 686, 688 (Fed. Cir. 1987). 9 Appeal2018-006070 Application 13/159, 179 We are not persuaded by Appellants' argument regarding the application of an "obvious-to-try" analysis. First, we find that Geiger is distinguishable, as our reviewing court has explained: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under Â§ 103. KSR, 550 U.S. at 421. 4 Here, the Examiner has identified a need to solve the problem of synthetic hormones in drinking water. In particular, the Examiner cites Doheny, which teaches that reverse osmosis and activated charcoal systems do not remove all pharmaceutical drugs from drinking water, particularly synthetic hormones, which work at very low concentrations. See above. Furthermore, the Examiner has identified a predictable solution to that problem, i.e., Burba's insoluble rare earth fixing agent, which removes a wide variety of biological and chemical agents from water feeds. See above. Because the Examiner has identified a need to solve a problem, as well as a finite and predictable solution to the problem, we conclude that this is the type of instance where the fact that a combination was obvious to try 4 The Court in KSR found "[t]he same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ' [ o ]bvious to try."' KSR, 550 U.S. at 421 (emphasis added). 10 Appeal2018-006070 Application 13/159, 179 shows that the combination was obvious under Â§ 103. Therefore, we are not persuaded that the Examiner erred in determining that the claims would have been obvious to a person of ordinary skill in the art at the time the invention was made. DECISION The Examiner's rejection of claims 2, 4, 6, 18, 20-23, 26, 33, 39--42, 49, and 51-53 as unpatentable under 35 U.S.C. Â§ 102(b) is affirmed. The Examiner's rejection of claims 2, 4, 6, 18, 20-23, 26, 33, 39--42, 49, and 51-53 as unpatentable under 35 U.S.C. Â§ 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 11