Ex Parte Harshman et alDownload PDFPatent Trial and Appeal BoardJul 25, 201612890050 (P.T.A.B. Jul. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/890,050 09/24/2010 56885 7590 07/27/2016 Evoqua Water Technologies LLC U0105 Intellectual Property Department 10 Technology Drive Lowell, MA 01851 FIRST NAMED INVENTOR James Vaughan Harshman 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. 2009Pl 7635US01 7536 EXAMINER STELLING, LUCAS A ART UNIT PAPER NUMBER 1773 NOTIFICATION DATE DELIVERY MODE 07/27/2016 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): docketing@LALaw.com CKent@LALaw.com intellectualproperty@evoqua.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES VAUGHAN HARSHMAN, and DAVID LEONARDO MORANO Appeal2015-000877 Application 12/890,050 Technology Center 1700 Before CHUNG K. PAK, PETER F. KRATZ, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal the Examiner's final rejection of claims 1-17 under 35 U.S.C. § 134(a). We have jurisdiction. 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. 1 Appellants identify Evoqua Water Technologies, LLC as the Real Party in Interest. App. Br. 3. Appeal2015-000877 Application 12/890,050 The Claimed Invention Appellants' disclosure relates to a method of controlling odor in a sewerage system, comprising adding an odor control composition consisting essentially of an alkaline compound and an anthraquinone to the sewerage system. Spec. 1, 11. 15-17, 2, 11. 3---6; App. Br. 3. Claims 1 and 13 are representative of the claims on appeal and are reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 11, 13) (emphasis added): 1. A method of controlling odor in a sewerage system, comprising: adding an odor control composition to the sewerage system consisting essentially of an alkaline compound and an anthraquinone. 13. A method of facilitating odor control in a water treatment system, comprising: providing an odor control composition consisting essentially of an anthraquinone and an alkaline compound to be dosed to a process stream of the water treatment system; and providing instructions to add the odor control composition to the process stream at a dosage that is sufficient to reduce an odorous species concentration measured at an outlet of the system to below a target value, and at a dosage that is less than an amount of the composition that would be required to reduce the odorous species concentration measured at the outlet of the system to below the target value if the anthraquinone and the alkaline compound were not acting synergistically. The References The Examiner relies on the following references in rejecting the claims on appeal: Miller et al., US 5,833,864 Nov. 10, 1998 (hereinafter "Miller") Hunniford et al., US 7,087,172 B2 Aug. 8, 2006 (hereinafter "Hunniford") 2 Appeal2015-000877 Application 12/890,050 ChemSpider, Abstract for anthraquinone, bJt12_~LL1Y:WW:_9-h~ill~Pi4~Lf_Q!HlCJ:t~_mif_9:l::_S1I!J_~JJJI~JJ_~_1~_2_24J:itml, (accessed July 2015). The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 13-15 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1, 2, 5-9, and 11-14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hunniford. 3. Claims 3, 4, 10, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hunniford as evidenced by ChemSpider. 4. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Hunniford in view of Miller. 5. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Hunniford and Miller as evidenced by ChemSpider. OPINION Having considered the respective positions advanced by the Examiner and Appellants in light of this appeal record, we affirm the Examiner's rejections for the reasons set forth in the Answer, which we adopt as our own. Nevertheless, we highlight and address specific findings and arguments for emphasis as follows. Rejection 1 Claims 13-15 stand rejected for lack of written description under 3 Appeal2015-000877 Application 12/890,050 35 U.S.C. § 112, first paragraph. Ans. 2. In particular, the Examiner finds that adequate written descriptive support is not provided in the Specification for the limitation: "providing instructions to add the odor control composition to the process stream at a dosage that is sufficient to reduce an odorous species concentration measured at an outlet of the system ... to below the target value if the anthraquinone and the alkaline compound were not acting synergistically" recited in claim 13. Id. at 2, 3 (emphasis added). Appellants argue that the Examiner's rejection should be reversed because the limitation is supported by the "Specification as filed." App. Br. 4, 5 (citing Spec. p. 8, ll. 1-2, p. 10, 1. 23-p. 11, 1. 1, p. 23, 11. 11-13). We disagree. The test for an adequate written description "requires an objective inquiry into the four comers of the specification from the perspective of a person of ordinary skill in the art ... [and] [b]ased on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed." Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Moreover, the "prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought." Lockwood v. American Airlines Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). A "description that merely renders the invention obvious does not satisfy the [written description] requirement." Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d at 1352 (citing Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir. 1997)). 4 Appeal2015-000877 Application 12/890,050 We are not persuaded that the "below the target value if the anthraquinone and the alkaline compound were not acting synergistically" limitation is supported by those portions of the Specification identified by Appellants in the Appeal Brief or by the Specification as a whole. Nowhere do the portions of the Specification identified by Appellants indicate below the target value occurs when the anthraquinone and the alkaline compound were not acting synergistically. As noted by the Examiner (Ans. 13, 14), the passages at pages 8, 10, 11, 23 of the Specification that Appellants rely on do not support this limitation. See Spec. p. 8, 11. 1-2 (stating that the method comprises "providing instructions to adjust the relative ratio of an amount of the at least one alkaline compound to an amount of the at least one anthraquinone ); p. 10, 1. 23-p. 11, 1. 1 (discussing control, "determining if the measured parameter is within tolerance of a target value," and that the parameter "can be ... the pH of the wastewater, the concentration of an odorous species, or both"); p. 23, 11. 11-13 (stating that "calcium nitrate with anthraquinone ... can be advantageously utilized as a treatment product for odor and corrosion control"). None of these portions of the Specification provides adequate, written descriptive support for occurrence of the below the target value if the anthraquinone and the alkaline compound were not acting synergistically limitation. The Specification as a whole also does not support this limitation. As the Examiner points out (Ans. 13, 14), although there is some support in the Specification for a synergism between an alkaline compound and anthraquinone and for providing instructions to adjust the relative ratio of the alkaline compound to an amount of anthraquinone, there is no support 5 Appeal2015-000877 Application 12/890,050 for controlling the dosage of the odor control composition to below the target value if the anthraquinone and the alkaline compound were not acting synergistically, as claimed. On the contrary, the Specification seems to suggest that all of the disclosed mixtures of anthraquinone and alkaline compounds act synergistically (see, e.g., Spec. p. 24, 11. 1-10, Table 18, p. 21, 1. 8-p. 22, 11. 1-7) and lacks adequate written descriptive support indicating that any of the mixtures of anthraquinone and alkaline compounds "were not acting synergistically," as recited in the claims. Accordingly, we affirm the Examiner's rejection of claims 13, 14, and 15 for lack of written description. Rejection 2 Appellants argue claims 1, 2, 5-9, and 11-14 as a group. We, therefore, select claim 1 as representative of this group, and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Hunniford suggests all of claim 1 ; s limitations. Ans. 4, 5 (citing Hunniford, col. 1, 11. 17-25, 29-33, 47-60, col. 8, 11. 40-50, col. 17, 11. 20-30, col. 18, 11. 43---67, Table 1 ). In particular, the Examiner finds that Hunniford teaches a method for controlling odor in a sewerage system comprising: providing an odor control composition comprising at least one alkaline and at least one anthraquinone. Id. at 4 (citing Hunniford, col. 1, 11. 17-25, col. 8, 11. 40-50, col. 17, 11. 20-30, col. 18, 11. 43---67, Table 1 ). The Examiner finds further that Hunniford teaches using both nitrate and anthraquinone together with alkaline as the odor controlling composition and that it was known in the art that nitrate could be used with anthraquinone or that anthraquinone could be used alone to suppress sulfide formation. Id. (citing Hunniford, col. 1, 11. 29-33). The 6 Appeal2015-000877 Application 12/890,050 Examiner also finds that Hunniford teaches that using alkaline in adjusting the pH results in a shift of the dissolved sulfide equilibrium thereby keeping more sulfide dissolved rather than released as hydrogen sulfide gas. Id. (citing Hunniford, col. 1, 11. 4 7---60). Based on the above findings, the Examiner concludes that it would have been obvious to a person having ordinary skill in the art at the time of the invention to "provide an odor treating composition of anthraquinone and alkaline, and lacking nitrate, in order to use the a[ n ]thraquinone alone when the use of nitrates is not desirable, and in order to still obtain the benefit of shifting the dissolved sulfide equilibrium as taught by Hunniford." Ans. 4, 5. Appellants argue that the Examiner's rejection should be reversed because "Hunniford does not contemplate a composition absent nitrates, and thus does not contemplate or [provide] motivation to create a compound consisting essentially of anthraquinone and an alkaline compound." App. Br. 5 (citing Harshman Decl.2 i-fi-15, 6). Appellants further argue that "[o]ne having ordinary skill in the art would not have been motivated to modify Hunniford to arrive at an odor control composition absent nitrates, and consisting essentially of an anthraquinone and an alkaline compound as claimed." Id. We are not persuaded by Appellants' arguments. On the record before us, the Examiner's conclusion that, based on Hunniford's teachings, it would have been obvious to one of ordinary skill in the art at the time of 2 "Harshman Deel." refers to the Declaration of James P. Harshman dated February 6, 2014 submitted by Appellants in the Evidence Appendix to the Appeal Brief. App. Br. 14--18. 7 Appeal2015-000877 Application 12/890,050 invention to arrive at the claimed odor control composition consisting essentially of an anthraquinone and an alkaline compound is supported by a preponderance of evidence and based upon sound technical reasoning. Hunniford, col. 1, 11. 17-25, 29-33, 47---60, col. 8, 11. 40-50, col. 17, 11. 20- 30, col. 18, 11. 43---67, Table 1. Contrary to Appellants' argument, Hunniford does suggest using anthraquinone with or without nitrates. As the Examiner found (Ans. 4, 16), Hunniford teaches an odor control composition comprising at least one alkaline compound and at least one anthraquinone, and that it was known in the art that nitrates could be used with anthraquinone or that anthraquinone could be used alone to suppress sulfide formation. Hunniford, col. 1, 11. 29- 33, col. 8, 11. 40-50, col. 17, 11. 20-30, col. 18, 11. 43---67, Table 1. Thus, we concur with the Examiner based on Hunniford's teachings, a person having ordinary skill in the art at the time of the invention would have recognized the ability to use anthraquinone alone and been motivated to provide an odor treating composition of anthraquinone and alkaline, with or without nitrates, with a reasonable expectation of successfully obtaining the benefit of shifting the dissolved sulfide equilibrium. Hunniford, col. 1, 11. 29-33 (disclosing that "[i]t is well known to add nitrates ... and/or anthraquinone, to sewage to suppress the formation of dissolved sulfides"), 11. 45---60 (explaining that the addition of an alkaline material "causes a shift in the dissolved sulfide equilibrium ... thereby, preventing release of hydrogen sulfide gas"). Appellants' conclusory assertions that Hunniford "does not contemplate a composition absent nitrates" and "does not contemplate or provide motivation to create a compound consisting essentially of 8 Appeal2015-000877 Application 12/890,050 anthraquinone and an alkaline compound" (App. Br. 5) are unpersuasive and insufficient to establish reversible error in the Examiner's findings and conclusion in this regard. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover, the paragraphs from the Harshman Declaration Appellants cite as support (i.e., Harshman Deel. i-fi-15, 6) are equally unpersuasive and insufficient to rebut the Examiner's conclusion because they are conclusory and lack sufficient supporting evidence (i.e., do not provide the details of the experiments allegedly conducted). More importantly, it also does not demonstrate that nitrates are detrimental to the claimed odor control composition. Id. Appellants' arguments are also unpersuasive because the term "consisting essentially of' includes not only what is specifically recited in the Appellants' claim, but also any other materials which "do not materially affect the basic and novel characteristic( s )" of the claimed composition. In re Herz, 537 F.2d 549, 551-52 (CCPA 1976) (quoting In reJanakirama- Rao, 317 F.2d 951(CCPA1963)). Appellants have the burden of showing that the additional ingredient taught by the prior art reference, i.e., nitrate, materially affects the basic and novel characteristics of the claimed invention. See In re De Lajarte, 337 F.2d 870, 873-74 (CCPA 1964). On this record, Appellants, however, have failed to meet their burden. Appellants do not identify or direct us to sufficient evidence-whether in Hunniford or elsewhere in the record-that the use of nitrates in combination with anthraquinone and an alkaline compound materially affects the basic and novel characteristics of their claimed composition. Herz, 537 F.2d at 551-52 (explaining that if an ingredient is not detrimental to the desired properties of a claimed composition, it is not considered as a 9 Appeal2015-000877 Application 12/890,050 material that materially affects the basic and novel characteristics of the claimed composition). In fact, the Specification, by virtue of disclosing nitrate as part of an odor control composition, indicates that it does not materially affect the basic and novel characteristics of the claimed odor control composition. See Spec. 12, 11. 11-13. Appellants' conclusory assertion that "a composition absent nitrates would be less effective at controlling odor" (App. Br. 5), without more, is insufficient to satisfy Appellants' evidentiary burden in this regard. De Blauwe, 736 F.2d at 705. Finally, Appellants contend that Hunniford does not contemplate a synergistic effect between the recited compounds. App. Br. 6. However, Appellants do not show that the absence of nitrates in its odor control composition imparts unexpected results relative to the composition taught by Hunniford. Id. Accordingly, we affirm the Examiner's rejection of claims 1, 2, 5-9, and 11-14 under 35 U.S.C. § 103(a) as unpatentable over Hunniford. Rejection 4 Claim 16 recites: "An odor control composition consisting essentially of anthraquinone and magnesium hydroxide." App. Br. 13 (Claims App'x). The Examiner finds that Hunniford suggests nearly all of claim 16's limitations, but that it does not "mention magnesium hydroxide." Ans. 10, 11 (citing Hunniford, col. 1, 11. 17-25, 29-33, 47---60, col. 7, 11. 50-55, col. 8, 11. 40-50, col. 17, 11. 20-30, col. 18, 11. 43---67, Table 1 ). The Examiner, however, relies on Miller for teaching this missing limitation. Id. at 11. In particular, the Examiner finds that Miller is "directed to the treatment of sewage having odors caused by hydrogen sulfide" and teaches "the use of magnesium hydroxide." Id. (citing Miller, Abstract, Title). The Examiner 10 Appeal2015-000877 Application 12/890,050 finds further that Miller teaches that "the use of magnesium hydroxide does not require special handling, and provides higher neutralizing capacity per mole than caustic soda, and does not produce hazardous by-products by reacting with sulfide." Id. (citing Miller, col. 3, 11. 55---65). Based on the above findings, the Examiner concludes that it would have been obvious to a person having ordinary skill in the art at the time of the invention "to provide magnesium hydroxide for the hydroxide in Hunniford in order to reduce special handling requirements, provide higher neutralizing capacity, and reduce hazardous byproducts as taught by Miller." Ans. 11. In response to this rejection, Appellants initially repeat the same argument that "Hunniford does not teach or suggest an odor control composition consisting essentially of an anthraquinone and an alkaline material" presented above in response to Rejection 2. App. Br. 9. We do not find this persuasive argument for the same reasons discussed above for affirming Rejection 2. Appellants further argue that the Examiner's rejection of claim 16 should be reversed because: (a) "Miller does not teach or suggest an odor control composition having an anthraquinone"; (b) "[ o ]ne having ordinary skill in the art would not have modified Hunniford with Miller"; and ( c) "even if one having ordinary skill in the art [would have been] motivated to modify the alkaline material of Hunniford with Miller ... [ t ]hey would not arrive at the composition recited by independent claim 16." Id. We do not find these arguments persuasive because Appellants fail to direct us to sufficient evidence in the record or provide an adequate technical explanation to support them. Appellants' argument regarding Miller not 11 Appeal2015-000877 Application 12/890,050 teaching or suggesting a composition "having anthraquinone" is also misplaced because, as discussed above (Ans. 11, 22), the Examiner does not rely on Miller for teaching that limitation. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425). Moreover, the Examiner's findings regarding the combined teachings of Hunniford and Miller and rationale for why one of ordinary skill would have combined the teachings of the references to arrive at Appellants' claimed invention are supported by a preponderance of the evidence and based on sound technical reasoning. Hunniford, col. 1, 11. 17-25, 29-33, 47- 60, col. 7, 11. 50-55, col. 8, 11. 40-50, col. 17, 11. 20-30, col. 18, 11. 43---67, Table 1; Miller, Abstract, Title, col. 3, 11. 55---65. That Appellants disagree with the Examiner's reason for combining the references, without more, is insufficient to establish reversible error. KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or problem known in the art can provide a reason for combining the elements in the manner claimed). Accordingly, we affirm the Examiner's rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable over the combination of Hunniford and Miller. Rejections 3 and 5 For Rejection 3, the Examiner finds that the Hunniford, as evidenced by ChemSpider, suggests of the limitations of claims 3, 4, 10, and 15. Ans. 9, 10. For Rejection 5, the Examiner finds that the combination of Hunniford and Miller, as evidenced by ChemSpider, suggests of the limitations of claim 17. Ans. 11, 12. For each of these rejections, the 12 Appeal2015-000877 Application 12/890,050 Examiner relies on the same findings regarding the teachings of the prior art and technical reasoning provided for Rejections 2 and 4, respectively, and further relies on ChemSpider as evidence "that the term anthraquinone is known in the art to refer to 9, 10 anthraquinone." Id. at 9, 12. In response to both of these rejections, Appellants argue that "ChemSpider is directed solely to 'common names and identifiers' of anthraquinone and fails to cure the deficiencies" of cited prior art and that "[ n Jo prima facie case of obviousness has been established" because the cited prior art does not, alone, or in combination with ChemSpider, teach or suggest the odor control compositions recited. App. Br. 8-10. However, for the reasons indicated supra, Appellants' conclusory arguments, without more, are unpersuasive and insufficient to establish reversible error in the Examiner's findings and analysis in this regard. De Blauwe, 736 F.2d at 705. Accordingly, we affirm the Examiner's Rejections 3 and 5 for the same reasons discussed above for Rejections 2 and 4, respectively. DECISION/ORDER The Examiner's rejections of claims 1-17 are affirmed. It is ordered that the Examiner's decision 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). AFFIRMED 13 Copy with citationCopy as parenthetical citation