Ex Parte Limback et al

Patent Trials and Appeals Board

Mar 25, 2019

14529233 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/529,233 10/31/2014 Scott R. Limback
124330 7590 03/27/2019
McKee, Voorhees & Sease P.L.C. ATTN: Ecolab Inc
801 Grand Avenue
Suite 3200
Des Moines, IA 50309
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.
Pl0080US01 - 2986USC1 9991
EXAMINER
JAIN, SAUL
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
patatty@ipmvs.com
michelle. woods@ipmvs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT R. LIMBACK, BARRY R. TAYLOR,
KEVIN A. WUEBBEN, MARVIN C. TRULSEN, and LYLIEN TAN1
Appeal2018-002895
Application 14/529,233
Technology Center 1700
Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 11-13 and 15-17. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to methods of water treatment
and, more specifically, to chlorine capture in electrolytic cells. E.g.,
1 The Appellant is the Applicant, Ecolab USA Inc., which is also identified
as the real party in interest. See App. Br. 1.
Appeal2018-002895
Application 14/529,233
Spec. 1 :9-18; Claim 11. Claim 11 is reproduced below from page 18
( Claims Appendix) of the Appeal Brief:
11. A method for chlorine capture m an electrolytic cell,
compnsmg:
providing an electrolytic cell having an anode chamber and a
cathode chamber, wherein each of said chamber has an inlet
and an outlet;
feeding an electrolyte to the cell for providing a source of
anions and cations to the anode and cathode chambers, wherein
said electrolyte is fed via an electrolyte feed;
continuously recycling at least 40% catholyte from the cathode
chamber through the anode chamber;
providing a degassing chamber, wherein the degassing chamber
includes a reservoir between said degassing chamber's inlet and
outlet for maintaining a liquid level;
gravity feeding the catholyte from the degassing chamber
through the anode chamber; and
dispensing an output solution from the anode chamber, wherein
said output solution has an increased free chlorine
concentration as a result of recycling the catholyte through the
anode chamber; and
wherein said output solution has a pH of at least 5.5.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
1. Claims 11-13 and 17 over Bakhir (US 5,985,110, issued Nov. 16,
1999), Soloveichik (US 2007/0234900 Al, published Oct. 11, 2007), and
Hinatsu (US 2009/0229990 Al, published Sept. 17, 2009);
2. Claims 15 and 16 over Bakhir, Soloveichik, Hinatsu, and
Mortensen (US 8,110,089 B2, issued Feb. 7, 2012).
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Application 14/529,233
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner's rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
Non-Final Action dated Feb. 10, 2017 ("Office Act."), and in the Examiner's
Answer. See generally Office Act. 2-11; Ans. 2-11.
The Appellants argue the claims as a group. We select claim 11 as
representative of the claims on appeal, and the remaining claims will stand
or fall with claim 11.
In the Office Action, and of particular relevance to the issues raised
by the Appellant in this appeal, the Examiner relies on Figures 1 and 2 of
Bakhir and finds that Bakhir discloses "recycling catholyte from the cathode
chamber through a special line 10 to the anode chamber." Office Act. 4.
The Examiner makes no specific finding in the Office Action concerning the
amount, i.e., "at least 40%," of the catholyte that is recycled in Bakhir. See
generally id. The Examiner finds that Bakhir teaches that its method
"increases bactericidal activity," which "indicat[ es] increased free chlorine
concentration." Id. at 4. The Examiner makes no specific finding in the
Office Action concerning the specific pH of Bakhir's output solution but
finds that "following the method steps disclosed in the prior art would
necessarily increase the pH of the anolyte solution dispensed from the anode
chamber." Id. at 4--5.
In the Examiner's Answer, the Examiner elaborates on the rejection
and finds that Bakhir teaches embodiments in which 100% and 90% of the
catholyte are recycled. Ans. 9 ( citing Bakhir col. 5). The Examiner also
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Application 14/529,233
finds that Bakhir teaches embodiments in which the pH of the output
solution from the anode chamber is between 6.0 and 8.5. Id.
In view of those and other findings less material to the issues on
appeal, the Examiner determines that the subject matter of claim 11 would
have been obvious to a person of ordinary skill in the art. Office Act. 4--7;
Ans. 4--11.
In the Appeal Brief, the Appellant argues that the Examiner fails to set
forth a prima facie case of obviousness in the Office Action because the
Examiner does not address the "at least 40%" or the "pH of at least 5.5"
requirements of claim 11. App. Br. 9--10.
As noted above, in the Answer, the Examiner elaborates on the
rejection and specifically addresses both of those requirements. Ans. 9.
In the Reply Brief, the Appellant does not meaningfully challenge the
Examiner's specific findings, "[ a ]ssum[ es] the Office is correct," Reply
Br. 4, and maintains other arguments discussed below. On this record, we
discern no reason to reject the Examiner's finding that Bakhir's disclosure of
running 100% or 90% ofBakhir's solution from the cathode chamber to the
anode chamber teaches or suggests "continuously recycling at least 40%
catholyte from the cathode chamber through the anode chamber," as
claimed. See Bakhir col. 5. We likewise discern no reason to reject the
Examiner's finding that Bakhir's output solutions have pH values that fall
within the scope of claim 11. See id.; see also In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections .... ").
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Application 14/529,233
In the Appeal Brief, the Appellant also argues that Bakhir does not
teach a recycle system but instead teaches what "is in essence an output
valve." App. Br. 11-12.
In the Answer, the Examiner finds that Bakhir' s disclosure of
"run[ ning the whole solution] from the cathode chamber 3 into the anode
chamber 2," Bakhir at 5:33-35, constitutes "recycling ... catholyte from the
cathode chamber through the anode chamber," as required by claim 11.
Ans. 9-10.
In the Reply Brief, the Appellant does not challenge the Examiner's
specific findings, "[a] ssum[ es] the Office is correct," Reply Br. 4, and
maintains other arguments discussed below. On this record, the Appellant
has not identified reversible error in the Examiner's findings concerning the
"continuously recycling" limitation of claim 11. See Jung, 637 F.3d at 1365.
In both the Appeal Brief and the Reply Brief, the Appellant argues
that the Examiner did not adequately consider rebuttal evidence in the form
of a declaration from named inventor Barry R. Taylor. See App. Br. 11-14;
Reply Br., passim. In particular, the Appellant argues that "the claimed
amount of recycle of at least 40% catholyte ... not only provides the desired
output solution with a pH of a[t] least 5, but also results in the unexpected
correlation of increased free chlorine concentration." App. Br. 11.
Those arguments are not persuasive. As to the "correlation" between
the recycle amount and the pH, see App. Br 11, Reply Br. 3, claim 11 does
recite or require a correlation. All that is required is a recycle amount of at
least 40% catholyte, "increased free chlorine concentration," and an output
solution pH of at least 5.5. As set forth above, the Appellant does not
persuasively challenge the Examiner's findings that Bakhir discloses a
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Application 14/529,233
method comprising at least 40% catholyte recycling and an output solution
pH of at least 5.5. Nor does the Appellant persuasively contest the
Examiner's finding that Bakhir's disclosure of "increased bactericidal
activity" "in di cat[ es] increased free chlorine concentration." Act. 4.
Bakhir discloses that, "[a]s a result" of recycling "the entire volume of
the catholyte ... into the anode chamber," "the anolyte increases its biocidal
activity." Bakhir at 4:58---67. In view of the Examiner's uncontested finding
that increased bactericidal activity indicates increased free chlorine
concentration, we agree with the Examiner that Bakhir's disclosure teaches
or suggests that Bakhir' s "output solution has an increased free chlorine
concentration as a result of recycling the catholyte through the anode
chamber," as required by claim 11. The fact that Bakhir may not expressly
disclose a "correlation" between recycle amount and output solution pH
does not show reversible error in the rejection.
As to unexpected results, the burden of providing evidence to show
unexpected results rests with the Appellant. In re Huang, 100 F.3d 135, 139
(Fed. Cir. 1996). "[I]t is not enough to show that results are obtained which
differ from those obtained in the prior art: that difference must be shown to
be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972) ( emphasis in original).
The Appellant cites only paragraphs 11 and 12 of the Taylor
Declaration in support of unexpected results. App. Br. 11; Reply Br. 3.
However, those paragraphs of the Taylor Declaration do not persuasively
establish that any aspect of any result was unexpected. See Taylor
Deel. ,r,r 11, 12. The Appellant does not otherwise direct us to any evidence
of record that might indicate any results were unexpected. The attorney
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argument in the Appeal Brief is insufficient. See In re Pearson, 494 F .2d
1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the
place of evidence."); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) ("[I]t is well settled that unexpected results must be established by
factual evidence. Mere argument or conclusory statements in the
specification does not suffice." (internal quotation marks omitted)). 2
Finally, in the Reply Brief, the Appellant also argues that Bakhir's
method would "creat[ e] issues of solution stability" due to the presence of "a
substantial fraction of the free-chlorine in the form of chlorine (Cb)." Reply
Br. 4--5. That argument is not persuasive. As an initial matter, the
Appellant cites no evidence in support of the assertion that Bakhir's method
would result in solution instability. See Pearson, 494 F.2d at 1405.
Additionally, claim 1 does not include any limitations concerning solution
stability. Accordingly, even assuming Bakhir's method would create issues
of solution stability, it is not clear how that would remove the method of the
combined prior art from the scope of claim 11.
On this record, we are not persuaded of reversible error in the
Examiner's rejection of claim 11. See Jung, 637 F.3d at 1365.
2 Although not necessary to our conclusion, we also observe that, as to
correlation of cathode output and pH, the Appellant's data appears to show
that, as cathode output increases, pH increases. E.g., Taylor Deel. Figs. 1-5.
Column 5 of Bakhir indicates that, when the volume of catholyte recycled to
the anode chamber increases from 90% to 100%, pH increases from 6.5 to
8.5. See Bakhir at 5:33---60. The Appellant does not adequately explain how
Bakhir' s data is inconsistent with the alleged unexpected correlation of
cathode output and pH.
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Application 14/529,233
CONCLUSION
We AFFIRM the Examiner's rejections of claims 11-13 and 15-17.
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
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