Ex Parte Friese et al

Patent Trial and Appeal BoardAug 8, 2017

13653375 (P.T.A.B. Aug. 8, 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. 13/653,375 10/16/2012 David D. Friese 096583-0123/8022.U S00 4397 108547 7590 08/10/2017 McDermott Will & Emery LLP 500 North Capitol Street NW Washington, DC 20001 EXAMINER ORME, PATRICK JAMES ART UNIT PAPER NUMBER 1779 NOTIFICATION DATE DELIVERY MODE 08/10/2017 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): mweipdocket @ mwe. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID D. FRIESE and RYAN S. OVERSTREET Appeal 2016-003966 Application 13/653,375 Technology Center 1700 Before PETER F. KRATZ, N. WHITNEY WILSON, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—26. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We cite to the Specification (“Spec.”) filed October 16, 2012, amended January 9, 2013 and April 14, 2014; Final Office Action (Final Act.) dated July 17, 2014; Appellants’ Appeal Brief (“Br.”) dated March 16, 2015, supplemented May 21, 2015; and Examiner’s Answer (“Ans.”) dated October 8, 2015. 2 Appellants identify Me Wong Environmental Technology as the real party in interest. Br. 1. Appeal 2016-003966 Application 13/653,375 BACKGROUND The subject matter on appeal relates to hollow-fiber membrane biofilm reactors for use in water treatment. Spec. 12. Claim 1 is illustrative and reproduced from the Claims Appendix of the Appeal Brief as follows: 1. A membrane biofilm reactor module, comprising: a perforated core tube, having an interior which is in communication with a liquid influent port and a source of sparging gas, and a plurality of gas-permeable hollow fibers, each having an exterior surface, an interior surface that defines an inner lumen, a first open end, and a second open end which is in communication with a source of reagent gas, wherein the hollow fibers are interwoven with warp fibers to form one or more hollow fiber membrane sheets, wrapped around said core tube to form adjacent facing layers, and a plurality of substantially parallel, rectangular spacer elements positioned between said adjacent facing layers of hollow fiber membrane sheets, effective to maintain open flow channels between said adjacent facing layers; wherein said parallel spacer elements are either (i) unconnected to each other throughout their central regions, comprising 95% or more of the length of the spacer elements; or are (ii) connected to each other by transverse elements, where the average height of the transverse elements is less than that of the spacer elements, and is about 1 mm or less, and the average spacing between adjacent transverse elements is about 2.5 mm or more. 2 Appeal 2016-003966 Application 13/653,375 REJECTIONS3 The Examiner maintains the following grounds of rejection: I. Claims 1—4, 6—11, and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cho (EP 1270063 A2; pub. Jan. 2, 2003), Cote (US 2002/0020666 Al; pub. Feb. 21, 2002), Bradford (US 7,311,831 B2; iss. Dec. 25, 2007), Beppu (US 2008/0190836 Al; pub. Aug. 14, 2008), and Shelby (US 2009/0314713 Al; pub. Dec. 24, 2009). II. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Cho, Cote, Bradford, Beppu, Shelby, and Larsen (US 2008/0156718 Al; pub. Jul. 3, 2008). III. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Cho, Cote, Bradford, Beppu, Shelby, and Schneider (US 4,814,079; iss. Mar. 21, 1989). IV. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cho, Cote, Bradford, Beppu, Shelby, Tanaka (US 2002/0150756 Al; pub. Oct. 17, 2002) and Hou (US 2004/0013819 Al; pub. Jan. 22, 2004). V. Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cho, Cote, Bradford, Beppu, Shelby, and Banner (US 4,758,341; iss. Jul. 19, 1988). 3 The Examiner additionally rejects claims 1—26 on the basis of non- statutory double patenting as unpatentable over certain claims in U.S. Application Serial No. 13/056,303 (“the ‘303 application”). Final Act. 27— 33. The ‘303 application became abandoned on June 7, 2016. Thus, the double patenting rejection is moot. 3 Appeal 2016-003966 Application 13/653,375 VI. Claims 18 and 20-22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cho, Cote, Bradford, Beppu, Shelby, and Rubas (US 7,686,868 B2; iss. Mar.30, 2010). VII. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Cho, Cote, Bradford, Beppu, Shelby, Rubas and Shin (US 2009/0165576 Al; pub. Jul. 2, 2009). VIII. Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cho, Cote, Bradford, Beppu, Shelby, Rubas, and Husain (US 6, 702,944 B2; iss. Mar.9, 2004). IX. Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cho, Cote, Bradford, Beppu, Shelby, Rubas, and Haq (US 6,702,941 Bl; iss. Mar.9, 2004). DISCUSSION A dispositive issue in this appeal is whether the Examiner’s finding that Cote provides a reason to add a reagent gas source in communication with Cho’s hollow fibers constitutes reversible error. Claims 1 and 20 are the sole independent claims on appeal. Each of those claims recites, inter alia, “a plurality of gas-permeable hollow fibers, each having ... a second open end which is in communication with a source of reagent gas.'” (Emphasis added). The Examiner finds that Cho discloses a plurality of gas-permeable hollow fibers, Final Act. 129, but that “Cho does not disclose . . . hollow fibers having a second open end which is in communication with a source of reagent gas,” id. 130. The Examiner finds that Cote teaches use of a reagent gas to support growth of biomass on membranes. Final Act. 176 (citing Cote 174). The Examiner concludes 4 Appeal 2016-003966 Application 13/653,375 that “it would have been obvious to use the gas disclosed by Cote [in Cho] to support the growth of a biomass . . . Id. H 36, 80. Appellants contend that the Examiner erred in finding that one skilled in the art would have viewed the relied-upon teaching in Cote as a reason to modify Cho. SeeBrAO. We agree. Cho discloses a “contactor for degassing a liquid.” Cho 1 8. In use, entrained gas diffuses from a shell-side liquid to the lumen side of a hollow fiber membrane. Id. 117. The Examiner fails to point to evidence in Cho or elsewhere in the record that suggests use of biomass or a biofilm in diffusion-based liquid degasification. Nor does the Examiner provide any other reason why one skilled in the art would connect Cho’s hollow fiber diffusion membranes to a source of reagent gas. For the foregoing reasons, we are persuaded that the Examiner has not set forth a factual basis sufficient to support a determination that it would have been obvious to add a source of reagent gas to Cho’s membrane filter. Accordingly, we do not sustain Rejection I. Because each of Rejections II— IX is premised on the same deficiency, and does not cure that deficiency, those rejections also are not sustained. DECISION The Examiner’s decision rejecting claims 1—26 is reversed. REVERSED 5