Ex Parte Palmer

Patent Trial and Appeal Board

Dec 18, 2017

14131451 (P.T.A.B. Dec. 18, 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.
14/131,451 04/16/2014 Ross Leslie Palmer 10147/896955 3785
23370 7590 12/20/2017
KTT PATRTrK TOWNSFND fr STOrKTON T T P
EXAMINER
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Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROSS LESLIE PALMER
Appeal 2017-001626
Application 14/131,4511
Technology Center 1600
Before DONALD E. ADAMS, TIMOTHY G. MAJORS, and
DAVID COTTA, Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
composition for a body of water. The Examiner rejected the claims on
appeal as obvious under 35 U.S.C. § 103(a) and on the ground of non-
statutory obviousness-type double patenting.
We affirm-in-part.
1 According to Appellant, the real party in interest is Zodiac Group Australia
Pty Ltd. Appellant notes that Zodiac Pool Solutions PTY LTD is the parent
company of the Zodiac Group Australia Pty Ltd. Zodiac Pool Solutions,
SASU is the parent company of Zodiac Pool Solutions PTY LTD and
Zodiac Pool Holdings, SA is the parent company of Zodiac Pool Solutions,
SASU. App. Br. 1.
Appeal 2017-001626
Application 14/131,451
STATEMENT OF THE CASE
The Specification discloses that “one major water consuming feature
of a swimming pool is the requirement to backwash the pool filtration
system to clear the filter of contaminants removed from the pool water, or to
lower the water level after a rainstorm.” Spec. 1. “Generally speaking, for
swimming pools employing an electrolytic chlorine generator, water in the
pool is required to contain about 6000 ppm of sodium chloride (NaCl) for
effective operation of the electrolytic chlorinator.” Spec. 2. However,
“[s]uch a high salt content in the backwash and rinse water renders it
unsuitable for collection and use for garden irrigation as in other grey water
conservation systems due to the gradual accumulation of sodium chloride in
the soil leading to degenerative salination of the soil.” Id. “A prior
invention . . . addresses this problem by . . . using magnesium ions produced
in an electrolytic halogenation cell in the water system . . . whereby the body
of water can be used for, for example, watering a garden as opposed to
disposal down a drain or sewer line.” Id.
The Specification discloses that “many government bodies require a
swimming pool system to have a backup system for liquid chlorine dosing.”
Id. However, “[u]se of conventional liquid chlorine in improved swimming
pool water of the sort described above would adversely alter the mineral
content in that water and prevent that water from being available for use
after backwashing or emptying of the pool.” Id. The Specification thus
states that it would be “advantageous to provide a backup mineral dosing
system which would not negate the beneficial effects of an improved
swimming pool water system. ” Id. The Specification asserts that “the
liquid compositions of the invention are therefore used to dose these
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Application 14/131,451
improved swimming pools as these compositions are not deleterious to the
balance of electrolytes in the swimming pool system.” Id. at 6.
Claims 1 and 3—13 are on appeal. Claim 1 is illustrative and reads as
follows (with emphasis added to highlight disputed limitation):
1. A composition for a body of water, the composition
comprising a solution of magnesium and potassium salts, at
least one of which is a halide salt, wherein the magnesium salt
in solution gives Mg2+ in an amount from about 6000 ppm
(w/w) to about 15000 ppm (w/w).
App. Br. 9.
The claims stand rejected as follows:
Claims 1—13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Anderson2 and Fisher.3
Claims 1 and 5—8 stand rejected on the ground of non-statutory
obviousness type double patenting over claims in Application No.
13/695,252 (“the ’252 Application”), now issued as US Patent No.
9,551,162.4
Claims 1 and 5—8 were provisionally rejected on the ground of non-
statutory double patenting as being unpatentable over claims 33, 40 and 41
of Application No. 13/880,479 (“the ’479 Application”), which has since
been abandoned. As the ’479 Application has been abandoned, this rejection
is no longer a part of this appeal.
2 Anderson et al., WO 2008/000029 Al, published Jan. 3, 2008
(“Anderson”).
3 Fisher et al., WO 99/07636, published Feb. 18, 1999 (“Fisher”).
4 Because Application No. 13/695,252 issued as US Patent No. 9,551,162,
this rejection is no longer provisional.
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Appeal 2017-001626
Application 14/131,451
OBVIOUSNESS
Anderson discloses a “method for sanitization of water in a swimming
pool or the like comprises the steps of forming, in the pool water, an
electrolyte solution containing from 1500 ppm to 9000 ppm of a soluble
magnesium halide salt.” Anderson Abstract. Anderson further discloses
“bittern,” a byproduct of harvesting NaCl from sea water by evaporation. Id.
at 9. A typical bittern solution comprises 20.5% MgCf, 6.7% MgSCE, 2.5%
NaCl, and 1.9% KC1. Id.
In finding the claimed composition obvious, the Examiner calculated
that Anderson’s magnesium halide salt concentration of 1500 ppm and 9000
ppm “can be converted to Mg2+ ion . . . [of] 383 ppm to . . . 2298 ppm.”5
Ans. 4. The Examiner further calculated that “the amount of Mg2+ ion in
bittern solution is . . . 65740 ppm.” Id. Based on these calculations, the
Examiner concluded that the “the claimed concentration range of 6000 ppm
to 15000 ppm of Mg2+ ion falls in between the concentration of Mg2+ ion at
65740 ppm in the concentrated bitten solution and the diluted electrolyte
solution having the concentration of Mg2+ ion at 383 ppm to 2298 ppm in the
swimming pool.” Id. The Examiner then concluded that the claimed Mg2+
ion concentration would have been obvious because “it would be within one
skilled artisan’s purview to utilize the well-established serial dilution
technique to prepare an electrolyte composition containing 6000 ppm to
15000 ppm of Mg2+ ion by diluting the concentrated bittern solution
containing 65740 ppm of Mg2+ion” and because “selecting a concentration
5 Appellant argues, and the Examiner does not contest, that the range recited
in Anderson “refers to the magnesium salt content whereas the present
claims refer to the magnesium ion content.” App. Br. 6.
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Appeal 2017-001626
Application 14/131,451
range for Mg2+ ion in an electrolyte composition concentrate intended for
further dilution would have been a routine optimization of the Mg2+ ion in
the serially diluted Mg2+ containing electrolyte solutions starting from the
MgCE source composition, the concentrated bitten solution.” Id. at 5.
Appellant argues that “[njeither the Final Office Action nor the
Answer provides ... an objective reason to modify the compositions
disclosed by Anderson to provide a composition comprising a magnesium
salt in solution that gives Mg2+ in an amount of from about 6000 ppm to
about 15000.” Reply Br. 2. Appellant acknowledges that Anderson
discloses a concentrated bittern and an electrolyte solution in pool water
comprising from 1,500 to 9,000 ppm magnesium halide salt. Id. Appellant
argues, however, that the Examiner “suggests diluting the bittern, not to the
concentrations taught by Anderson, but to the claimed concentration”
without articulating “any rational motivation for making that modification.”
Id. at 2—3.
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
“[T]he examiner bears the initial burden ... of presenting a prima facie case
of unpatentability.” Appellant has persuaded us that the Examiner has not
carried the burden of establishing that the claimed invention would have
been obvious over the cited art.
The low end of the claimed Mg2+ ion concentration is almost three
times the high end of the Mg2+ ion concentration in Anderson’s pool water
electrolyte solution. Anderson Abstract; Ans. 4. While the Examiner is
correct that Anderson discloses a concentrated bittern solution that could be
diluted to the claimed Mg2+ ion concentration, the Examiner has not
explained why the skilled artisan would dilute the bittern solution to the
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Application 14/131,451
claimed range rather than to the range disclosed in Anderson. Ans. 5. The
Examiner invokes “routine optimization” as a rationale for finding the
claimed range obvious. Id. However, the claimed range does not overlap
with the range disclosed in Anderson and the Examiner has not explained
why the skilled artisan would have arrived at the claimed invention through
routine optimization. In re Stepan Company, 868 F.3d 1342, 1346
(explaining that there must be “some rational underpinning explaining why a
person of ordinary skill in the art would have arrived at the claimed
invention through routine optimization,”). Accordingly, we reverse the
Examiner’s rejection of claims 1—13 as obvious.
DOUBLE PATENTING
Appellant does not address the Examiner’s rejection of claims 1 and
5—8 on the ground of non-statutory obviousness type double patenting over
claims 5—7 and 9-15, 17—22 of the ‘252 Application. We, therefore,
summarily affirm the obviousness-type double patenting rejection. See
Manual of Patent Examining Procedure § 1205.02 (“If a ground of rejection
stated by the examiner is not addressed in the appellant’s brief, that ground
of rejection will be summarily sustained by the Board.”).
SUMMARY
For the reasons set forth herein, we reverse the Examiner’s rejection
of claims 1—13 as obvious over the combination of Anderson and Fisher.
For the reasons set forth herein, and those set forth in the Examiner’s
Answer and Final Office Action, we affirm the Examiner’s rejection of
claims 1 and 5—8 on the ground of non-statutory obviousness type double
patenting over claims 5—7 and 9—15, 17—22 of the ’252 Application.
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Application 14/131,451
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-IN-PART
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