Ex Parte Volkov et alDownload PDFPatent Trial and Appeal BoardMay 4, 201713826856 (P.T.A.B. May. 4, 2017) Copy Citation 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. 13/826,856 03/14/2013 Andrei Alexandrovich Volkov 59902.00200 5172 20322 7590 05/08/2017 SNELL & WILMER L.L.P. (Main) 400 EAST VAN BUREN ONE ARIZONA CENTER PHOENIX, AZ 85004-2202 EXAMINER JOYNER, KEVIN ART UNIT PAPER NUMBER 1799 NOTIFICATION DATE DELIVERY MODE 05/08/2017 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): IPDOCKET @ swlaw.com chauff @ swlaw.com dgiancaterin @ swlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREI ALEXANDROVICH VOLKOV, NIKOLAY VLADISLAVOVICH AROFIKIN and ALEXANDER YURIEVICH KOLESNOV Appeal 2016-005886 Application 13/826,856 Technology Center 1700 Before CHUNG K. PAK, PETER F. KRATZ, and SHELDON M. McGEE, Administrative Patent Judges. McGEE, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) from the Examiner’s final decision to reject claims 1—3, 5, and 7—19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2016-005886 Application 13/826,856 BACKGROUND The subject matter on appeal relates to methods of killing microorganisms such as bacteria in liquid media by diffusing the liquid into droplets at a speed of about 10 m/sec or more while exposing the liquid to a speed of pressure variation of at least about 105 Pa/sec. Specification (hereinafter “Spec.”) Tflf 2, 8. Exposing liquids to such sharp pressure differentials may be combined with heating the liquid, and “destroys microorganisms, including microorganisms that are heat resistant.” Id. at 112, 7, 9. Independent claim 1 is representative and is reproduced from the Claims Appendix of the Appeal Brief: 1. A liquid product treatment method wherein liquid product is diffused into droplets while the speed of pressure change in the liquid product is approximately 105 Pa/sec or more and the speed of the droplets is about lOm/sec or more during the process of diffusion. Appeal Br. 13. DISCUSSION The Examiner rejects claims 1—3, 5, 7—17, and 19 under 35 U.S.C. § 103(a) as unpatentable over Aksenov1 in view of Camelford.2 Final Act. 1 Aksenov, et al., US 2003/0035752 Al, published Feb. 20, 2003 (hereinafter “Aksenov”). 2 Camelford, US 2,374,805, issued May 1, 1945. 2 Appeal 2016-005886 Application 13/826,856 3— 6; Ans. 2—5. The Examiner further rejects claim 18 over these references, and further in view of Herrington.3 Final Act. 6; Ans. 6. Appellants argue against the rejection of claims 1 and 2 (Appeal Br. 4— 10; Reply Br. 2—3), but do not make any separate substantive arguments against the rejection of any other claim.4 Thus, we decide the propriety of the rejections on appeal on the basis of Appellants’ arguments presented with respect to claims 1 and 2 alone. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Aksenov discloses all elements recited in claims 1 and 2, except for the “speed of pressure change” limitation recited in both claims. Final Act. 3. The Examiner relies on the disclosure of Camelford for this teaching. Id. Specifically, the Examiner finds that “Aksenov discloses a liquid product treatment method wherein the liquid product is diffused into droplets in a chamber, while the speed of the droplets is more than lOm/sec during the process of diffusion.” Id. The Examiner finds further that Camelford’s disclosure of a product being 3 Herrington, et al., US 2002/0020675 Al, published Feb. 21, 2002 (hereinafter “Herrington”). 4 We observe that Appellants allege that Camelford fails to teach certain limitations recited in dependent claims 3, 4, 8, 10, 11, 13, and 16. Reply Br. 2—3. We decline to consider such arguments because Appellants have not explained why these arguments could not have been raised in their Appeal Brief. 37 C.F.R. § 41.37(c)(l)(iv) (“Except as provided for in §§41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”); see also Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI2010) (Informative) (explaining that under the previous rules, which are similar to the current rules, “the reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). 3 Appeal 2016-005886 Application 13/826,856 introduced into a diffuser at 1000 pounds per square inch (i.e., 6.89 x 106 Pa) and then sprayed into a vessel maintained at a vacuum of approximately 29 inches of mercury (i.e., 9.82 x 104 Pa) “will produce a product with a speed of pressure change at approximately 109 Pa/sec or more.” Id. Based on these findings, the Examiner concludes that it would have been obvious to the ordinary skilled artisan at the time of the invention “to diffuse the product into droplets in the method of Aksenov while the speed of pressure change in the liquid product is approximately 109 Pa/sec or more in order to rid said product of any harmful aerobic and anaerobic microorganisms as exemplified by Camelford.” Id. at 3^4. Appellants present two main contentions in their Appeal and Reply Briefs: (1) certain claim limitations are not disclosed or suggested by Aksenov and/or Camelford (Appeal Br. 4—9; Reply Br. 2); and (2) the Examiner’s combination of these references is improper (Appeal Br. 9; Reply Br. 3). 1. Appellants ’ arguments regarding missing limitations Appellants contend in their Appeal Brief that “the speed of pressure change of 105 Pascal/sec or more recited in Claim 1, and the speed of pressure change of 109 Pascal/sec or more recited in Claim 2, are not taught or suggested in the prior art references” and proffer their own calculations to support their argument. Appeal Br. 5, 7, 8. Appellants also contend that neither Aksenov nor Camelford disclose any rate of pressure change. Id. at 6-7. The Examiner responds by providing detailed calculations and explanations regarding how Camelford’s liquid product is subjected to a pressure change of 1.67 x 1011 Pa. Ans. 10—13. The Examiner also states 4 Appeal 2016-005886 Application 13/826,856 that the pressure change “is nearly instantaneous (or at least less than 1 second” based on of Camelford’s express teaching of an “instantaneous pressure change”. Id., citing Camelford, page 1, 1:50-52. In response, Appellants agree with the Examiner’s calculations and concede “that the reference teaches a total pressure drop of 1.67 x 1011 Pa” as found by the Examiner. Reply Br. 2. Appellants maintain, however, that “Camelford does not teach any rate of pressure drop” but then fail to address the Examiner’s findings regarding Camelford’s disclosure of an “instantaneous pressure change.” Id. Rather, Appellants affirmatively state that “Applicant does not address that issue.” Id. Appellants’ arguments fail to identify reversible error. It is undisputed on this record that Camelford discloses a total pressure drop of greater than 109 Pa. The Examiner’s finding that Camelford’s pressure drop is “instantaneous[,]” inclusive of less than 1 second, is likewise undisputed.5 Thus, Appellants have not identified reversible error in the Examiner’s finding that Camelford’s liquid “is subjected to a change in pressure from positive 106 Pa to negative 104 Pa in less than one second (i.e., at least 109 5 To the extent Camelford’s “instantaneous” pressure changes (Camelford, p. 1, 1:48—2:7) are not interpreted as including “less than one second” as found by the Examiner, we determine that this language at least would have suggested to the ordinary skilled artisan that the pressure changes should be carried out very quickly for the purpose of destroying the microorganisms. See, e.g., Camelford, p.l, 1:48—2:7. In view of Camelford’s teaching, it would have been well within the ambit of such skilled artisan to select an optimum instantaneous rate of pressure change, such as that claimed, to achieve the desired objective of destroying microorganisms in the liquid product. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (holding that optimization of a result effective variable is ordinarily within the ambit of one of ordinary skill in the art). 5 Appeal 2016-005886 Application 13/826,856 Pa/less than one second).” Ans. 13. It follows, then, that the speed of pressure change limitations recited in claim 1 (“approximately 105 Pa/sec or more”) and claim 2 (“approximately 109 Pa/sec or more”) are satisfied by Camelford’s teaching. Appellants contend further that “Camelford is also entirely silent as to the speed of the droplets.” Appeal Br. 7. We discern no persuasive merit in this argument because the Examiner relies on Aksenov for this teaching. Final Act. 3, citing Aksenov 116, 117. Accordingly, Appellants’ arguments that the cited references fail to disclose one or more limitations recited in claims 1 and 2 fail to persuade us of reversible error. 2. Appellants ’ arguments regarding the improper combination of references Appellants argue that the cited references teach away from the proposed combination. Appeal Br. 9. Appellants add that “[e]ach reference solves the problem of killing microbes in different ways, so there is no additional problem solved by combining the references” and that doing so “would be redundant, expensive and one skilled in the art would not combine references to obtain no additional benefit.” Reply Br. 3. Appellants’ argument is not persuasive of reversible error. Initially, we observe that Appellants’ statements that Aksenov teaches a method for treating contaminated liquid solely by heating (Appeal Br. 9), and Camelford’s method of treating water uses only pressure {id.), are technically erroneous. To the contrary, Aksenov and Camelford, like Appellants, individually contemplate using a combination of heat and pressure in treating a liquid medium, particularly those which may contain a microorganism strain that is resistant to heat or pressure alone. See, 6 Appeal 2016-005886 Application 13/826,856 Aksenov 147; Camelford, p. 1, 2:11—13, p. 2, 2:18—21, p. 3, 2:11—12, 23— 25; Spec. 12, 7, 9. Thus, Appellants’ argument that the ordinary skilled artisan would not combine the teachings of Aksenov and Camelford because “no additional benefit” would be achieved (Reply Br. 3) is unpersuasive. Rather, as correctly determined by the Examiner (Ans. 15), a person of ordinary skill in the art considering the teachings of Aksenov and Camelford, would have known that treating a liquid product with heat and/or pressure would reasonably be expected to destroy microorganism strains, with a combination of heat and pressure being effective for destroying microorganism strains that may be resistant to treatment methods employing heat or pressure alone. Although the teachings of Aksenov and Camelford are combinable so long as there is an apparent reason to do so even without an “additional benefit,”6 the ordinary skilled artisan would have expected from the teachings of Aksenov and Camelford to realize the “additional benefit” of fewer living microorganisms in the liquid product subjected to heat and pressure as compared to individual heat or pressure treatments. Thus, we agree with the Examiner (Ans. 14—15) that neither Aksenov nor Camelford teach away or discourage from using heat and/or pressure to destroy microorganisms in liquid media. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away... if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise 6 See, e.g., KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.”). 7 Appeal 2016-005886 Application 13/826,856 discourage’ investigation into the invention claimed.” (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). SUMMARY The Examiner’s final decision to reject claims 1—3, 5, and 7—19 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 8 Copy with citationCopy as parenthetical citation