Ex Parte Harshman et al

Patent Trial and Appeal Board

Jul 25, 2016

12890050 (P.T.A.B. Jul. 25, 2016)

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