Ex Parte Fukui et al

Patent Trial and Appeal Board

Dec 19, 2016

12734335 (P.T.A.B. Dec. 19, 2016)

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.
12/734,335 07/16/2010 Takeo Fukui SHI-040 1843
32628 7590 12/21/2016
KANFSAKA RFRNFR AND PARTNFRN FT P EXAMINER
2318 Mill Road GOLIGHTLY, ERIC WAYNE
Suite 1400
ALEXANDRIA, VA 22314-2848 ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
office@uspatentagents.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKEO FUKUI, TAKAYUKI MORIBE, HITOSHI HOTTA,
and HIROSHI MORITA
Appeal 2014-008353
Application 12/734,335
Technology Center 1700
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision rejecting claims 1, 5, 8, 11, and 13—16 under 35 U.S.C.
1 Our decision refers to the Specification (Spec.) filed April 26, 2010,
Appellants’ Appeal Brief (Appeal Br.) filed April 11, 2014, the Examiner’s
Answer (Ans.) delivered June 6, 2014, and Appellants’ Reply Brief (Reply
Br.) filed July 28, 2014.
2 According to Appellants, the real party in interest is KURITA WATER
INDUSTRIES LTD. Appeal Br. 2.
Appeal 2014-008353
Application 12/734,335
§ 103(a) as unpatentable over Morita3 in view of Tanabe.4 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a system and methods for making and using
ultrapure water suitable for washing electronic components in the
semiconductor manufacturing industry. Spec. 11. Claim 1, reproduced
below from the Claims Appendix to the Appeal Brief, is illustrative of the
subject matter on appeal:
1. An ultrapure water production system, comprising:
a mixed-bed deionization apparatus having an anion-
exchange resin and a cation exchange resin,
wherein the anion-exchange resin has a boron content of
50 jig/L-anion-exchange resin in a wet condition or less, or a
leached cation amount of 100 jig/L-anion-exchange resin in the
wet condition or less, and
the cation-exchange resin has an H-type conversion rate
of 99.95% or more.
Claim 8 recites a method for producing ultrapure water using a system as
recited in claim 1. Claim 11 recites a method of washing electronic
component members with ultrapure water produced with a system as recited
in claim 1.
3 Morita et al., US 5,292,439, issued March 8, 1994 (“Morita”).
4 Tanabe et al., US 5,811,012, issued September 22, 1998 (“Tanabe”).
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Application 12/734,335
ANALYSIS
Appellants argue all the claims as a single group. Pursuant to
37 C.F.R. § 41.37(c)(iv), we select claim 1 as representative and address
Appellants’ arguments focusing on the limitations of this claim. The
remaining claims stand or fall with claim 1.
After a review of the opposing positions articulated by Appellants and
the Examiner and the evidence of obviousness adduced by the Examiner, we
determine that the Appellants’ arguments are insufficient to identify
reversible error in the Examiner’s obviousness rejection. In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we sustain the stated
obviousness rejection for substantially the fact findings and the reasons set
forth by the Examiner in the Final Office Action and in the Examiner’s
Answer. We offer the following for emphasis.
There is no dispute regarding the Examiner’s findings regarding the
teachings of Morita and Tanabe. Compare Ans. 3 with Appeal Br. 5.
Instead, Appellants contest the Examiner’s determination that the ordinary
artisan would have reduced the boron content to 50 pg/L-anion-exchange
resin in wet condition or less and the leached cation amount of 100 gg/L-
anion-exchange resin in wet condition or less, and to increase the cation-
exchange resin’s H-type conversion rate to 99.95% or more. Appeal Br. 5—
6. In particular, Appellants urge that Morita and Tanabe, alone or in
combination, are silent with regard to each of these parameters. Id.
Moreover, Appellants urge that a skilled artisan would not have been
motivated to combine Tanabe with Morita because Morita fails to show “any
relativeness and guidance for applying ‘boron’ and ‘H-type conversion rate’
to the water purification system.” Id. at 6.
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Application 12/734,335
Appellants’ arguments are not persuasive of reversible error in the
Examiner’s obviousness rejection. The Examiner acknowledges Morita fails
to teach the boron content and the leached cation amount of the anion
exchange resin, and the H-type conversion rate of the cation exchange
resin.5 Ans. 3. Nonetheless, the Examiner finds Tanabe teaches a water
purification system wherein the boron content of a boron selective anion-
exchange resin is kept low in a wet condition through regeneration with an
alkaline solution including NaOH. Id. The Examiner concludes that it
would have been obvious to use a boron selective anion-exchange resin in
Morita’s system for producing high purity water for use in the electronics
industry, where the anion-exchange resin has been regenerated by a NaOH
alkaline solution, as taught by Tanabe. Id. at 4, 9.
The Examiner finds because the Morita/Tanabe system is a mixed bed
deionization apparatus with anion and cation exchange resins, with
regeneration of the anion-exchange resin by NaOH alkaline solution for
removing boron from the resin, which is the same way Appellants disclose
for reducing boron, this system is presumed to have the boron content,
leached cation content, and H-type conversion rate as recited in claim 1,
especially given Tanabe’s disclosure of the desire and difficulty of boron
removal. Id. at 4, 9—10. In other words, the Examiner’s position is that a
skilled artisan would have desired to reduce boron content, as well as the
5 We note that the boron content and the leached cation amount are recited in
the alternative in claim 1. See Claims Appendix to the Appeal Brief (“the
anion-exchange has a boron content of 50 pg/L-anion-exchange resin in a
wet condition or less, or a leached cation amount of 100 pg/L-anion-
exchange resin in the wet condition or less” (emphasis added)).
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Appeal 2014-008353
Application 12/734,335
leached cation content, as low as possible, and to select a cation-exchange
resin having an H-type conversion approaching 100%, in order to achieve
efficient conversion and higher purity water. Id. at 10.
We note Appellants disclose that the boron content is reduced merely
by using a low boron content wash water after regeneration of the anion-
exchange resin with a NaOH solution. Spec. 48, 56, 59—65.6 Given
Tanabe’s stated desire to remove boron from water purified for the
electronics industry and the fact that both Appellants and Tanabe regenerate
the anion-exchange resin with a NaOH solution, we have no problem
concluding that one of ordinary skill in the art would have found it obvious
to have reduced the boron content of the post-regeneration wash water to as
close to zero as possible to prevent recontamination of the resin. KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (Court required an analysis
that reads the prior art in context, taking account of “demands known to the
design community,” “the background knowledge possessed by a person
having ordinary skill in the art,” and “the inferences and creative steps that a
person of ordinary skill in the art would employ.”)
Similarly, we note Appellants disclose a number of anion-exchange
resins D—I, some of which have Na cation content within the range recited in
claim 1 after washing with ultrapure water, Examples 4—7. Spec. Table 2.
6 We note also that only one embodiment actually had a boron content of 50
jig/L-anion-exchange resin, Example 1, yet three embodiments had boron
concentration of water treated of 1 ng/L or less, Examples 1, 2, and 3. Spec.
Table 1. Appellants do not disclose any difference between the anion-
exchange resins of these examples other than each is a different
commercially available anion-exchange resin. Id. at 56, 63, 64.
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Application 12/734,335
Appellants do not disclose any particular difference between these resins.
We further note Appellants merely disclose selection of a cation-exchange
resin having a H-type conversion rate of 99.95% or more, again without
specifying any particular resin. Spec. 176. The low Na cation content of
the anion-exchange resin and the high H-type conversion rate of the cation-
exchange resin are disclosed to work together to achieve very low Na cation
content water. Id. at || 79-80. Given Tanabe’s stated desire to remove
cations including Na cation from water purified for the electronics industry
(Tanabe, col. 2, Table 1) and the fact that the leached cation amount and
conversion rate are merely selections from commercially available anion and
cation exchange resins, we have no problem concluding that one of ordinary
skill in the art would have found it obvious to have selected the anion and
cation exchange resin from among those commercially available so as to
reduce the cation content, specifically the Na cation content, of the resulting
purified water. KSR, 550 U.S. at 421 (A person of ordinary skill in the art is
also a person of ordinary creativity, not an automaton.)
We turn next to Appellants’ argument that a skilled artisan would not
have been motivated to combine Morita and Tanabe as the Examiner
proposes because Morita fails to “show any relativeness and guidance for
applying ‘boron’ and ‘H-type conversion rate’ to the water purification
system.” Appeal Br. 6; Reply Br. 2—3. However, there is no dispute that
both Morita and Tanabe are directed to producing water of the highest
possible purity, or that Tanabe teaches the reduction of boron, sodium, and
other contaminating elements. While Appellants contend that the Examiner
stated that his position was “that the applied art does not teach or suggest the
recited ranges” (Reply Br. 2), we note Appellants have misquoted the
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Application 12/734,335
Examiner in that the Examiner positively stated that the applied art does
teach or suggest the recited ranges (Ans. 9). Further, although Appellants
object to the Examiner’s reference to his presumptive position, we note
Appellants have not challenged the Examiner’s findings that support the
determination that the ordinary artisan would have found it obvious to have
reduced the boron content of the anion-exchange resin wash water so as to
reduce the boron content, and selected the anion and cation exchange resins
so as to reduce Na content, in the resulting purified water.
It follows that Appellants have not identified reversible error in the
Examiner’s obviousness rejection.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Answer, the decision of the Examiner rejecting claims 1, 5, 8, 11, and
13—16 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Morita and Tanabe is affirmed.
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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