Ex Parte Volkov et al

Patent Trial and Appeal Board

May 4, 2017

13826856 (P.T.A.B. May. 4, 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.
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.
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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.”).
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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
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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).
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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,
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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.”).
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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
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