Ex Parte Wang et al

Patent Trial and Appeal Board

May 17, 2017

13119829 (P.T.A.B. May. 17, 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.
13/119,829 03/18/2011 SijingWang 2356362 4375
52082 7590 05/19/2017
General Electric Company
GE Global Patent Operation
901 Main Avenue
EXAMINER
NORRIS, CLAIRE A
3rd Floor
Norwalk, CT 06851
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
05/19/2017 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):
gpo.mail@ge.com
marie.gerrie@ge.com
lori.E.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUING WANG, STEPHEN ROBERT VASCONCELLOS, and
JIANQIU WANG
Appeal 2016-006985
Application 13/119,8291
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Primary
Examiner’s decision to reject claims 1—23 and 28—30.2 According to the
Examiner (Ans. 15), claims 24—27 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
1 The Applicants (hereinafter “Appellants”) state that the real party in
interest is “General Electric Company” (Appeal Brief filed on November 13,
2015, hereinafter “Appeal Br.,” 3).
2 Appeal Br. 7—11; Reply Brief filed on July 5, 2016, hereinafter “Reply
Br.,” 1—5; Examiner’s Answer (notice emailed on May 9, 2016), hereinafter
“Ans.,” 2—17; Non-Final Office Action (notice emailed on March 12, 2015),
hereinafter “Non-Final Act.,” 5—19.
Appeal 2016-006985
Application 13/119,829
We affirm.
BACKGROUND
The subject matter on appeal relates to methods for improving
membrane bioreactor systems, which are used to clarity wastewater from
municipal and industrial plants (Specification, hereinafter “Spec.,” Tflf 2—6).
Representative claim 1 is reproduced from page 12 of the Appeal Brief
(Claims Appendix), as follows:
1. A method of conditioning mixed liquor in a membrane
bioreactor comprising dispersing a treatment additive in the
mixed liquor, wherein said treatment additive comprises a water
soluble block copolymer.
REJECTIONS ON APPEAL
The Examiner rejected the claims as follows (Ans. 2—15):3
I. Claims 1—20, 22, and 28—30 under pre-AIA 35 U.S.C. §
103(a) as unpatentable over Liao et al.4 (hereinafter
“Liao”) and Kim et al.5 (hereinafter “Kim”); and
II. Claims 21 and 23 under pre-AIA 35 U.S.C. § 103(a) over
Liao, Kim, and Collins et al.6 (hereinafter “Collins”).
3 The Examiner withdrew the rejection of claims 24—27 under pre-AIA
35 U.S.C. § 112, second paragraph, indicating that these claims have been
canceled. Ans. 15.
4 US 5,182,331 A, issued on January 26, 1993.
5 Kim et al., “Effects of the sludge reduction system in MBR on the
membrane permeability,” 250 Desalination 601—604(2010). The
Appellants do not dispute the Examiner’s determination that Kim was
available as prior art at the time of the invention.
6 US 6,926,832 B2, issued on August 9, 2005.
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DISCUSSION
Rejection I
The Examiner rejects claims 1—20, 22, and 28—30 under § 103 over
Liao and Kim, applying each reference alternatively as a principal reference
taken in view of the other (Ans. 3—13). Because the Appellants argue these
claims together, we select claim 1 as representative of the issues discussed
below. See 37 C.F.R. § 41.37(c)(l)(iv).
The issue on appeal is whether the Appellants have identified a
reversible error in the Examiner’s articulated reason to combine Liao in view
of Kim or Kim in view of Liao. However, whether the Examiner listed Liao
as the primary reference or Kim as the primary reference is irrelevant. See
In re Bush, 296 F.2d 491, 496 (CCPA 1961) (“In a case of this type where a
rejection is predicated on two references each containing pertinent disclosure
which has been pointed out to the applicant, we deem it to be of no
significance, but merely a matter of exposition, that the rejection is stated to
be on A in view of B instead of on B in view of A, or to term one reference
primary and the other secondary.”). For the reasons discussed below, we
find the Appellants have not identified such an error.
The Examiner finds Liao discloses a method of conditioning mixed
liquor for sludge dewatering in a reactor by dispersing a water soluble block
copolymer as a treatment additive in the mixed liquor. Ans. 3. The
Examiner finds Liao does not disclose that the reactor is a membrane
bioreactor but finds Kim discloses a method of conditioning mixed liquor for
sludge dewatering in a membrane bioreactor by dispersing a polymer in the
mixed liquor as a treatment additive. Id. The Examiner concludes it would
have been obvious to replace the reactor of Liao with the membrane
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bioreactor of Kim because Kim discloses such reactors as cost effective and
stable sludge dewatering reactors. Id. Alternatively, the Examiner
concludes it would have been obvious to modify the process of Kim to
replace its polymer with the water soluble block copolymer of Liao because
Liao discloses the copolymer improves sludge dewatering. Id. at 4.
The Appellants contend it would not have been obvious to combine
the teachings of Liao and Kim. Appeal Br. 8. Specifically, the Appellants
argue that although “wastewater treatment” is mentioned in Liao’s field of
the Invention, Liao discloses use of its copolymers in a capillary suction
time (CST) device that uses chromatography paper, not a membrane. Id.
Moreover, the Appellants argue the CST device, not the beaker used in
Liao’s experiments, uses gravity thickening. Reply Br. 1—2. In view of this,
the Appellants contend Liao does not provide an enabling disclosure for
using its block copolymer with every water treatment device. Appeal Br. 9;
Reply Br. 4—5.
The Appellants further assert that the purpose of Kim’s process is to
use a membrane for sludge thickening instead of conventional solid-liquid
separation techniques, such as gravity thickening. Appeal Br. 8. The
Appellants contend it would not have been obvious to use the membrane
bioreactor of Kim in the process of Liao because Kim’s goal of developing
cost-effective sludge reduction technology with stable effluent quality “is a
statement of the goal of an experimental study, not something that would
motivate use of Kim’s system as a piece of laboratory equipment to replace
the CST used to evaluate different polymers in Liao’s tests.” Appeal Br. 9;
Reply Br. 2. The Appellants assert Kim’s process uses a large, complicated
apparatus that would be significantly more costly to build and operate than
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the beaker and CST device of Liao and thus there would have been no
reason to combine Kim and Liao. Reply Br. 2—3.
The Appellants’ arguments are unpersuasive. In a determination of
obviousness, a reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art. Merck & Co v.
Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989). As the Examiner
explains (Ans. 16), although Liao discloses the use of its water soluble block
copolymer in a test reactor, Liao also teaches the copolymer is generally
useful for water treatment, such as sludge dewatering. Liao, col. 1,11. 6—10;
col. 8,11. 52—57. Therefore, although Liao discloses the use of a beaker and
a CST device to experimentally evaluate the dewatering performance of its
water soluble block copolymer,7 one of ordinary skill in the art would have
understood that Liao discloses the copolymer is generally useful for
dewatering sludge.
Moreover, the Examiner finds Kim’s bioreactor process is an
improvement over gravity thickening processes. Ans. 15—16. The
disclosure of Kim supports the Examiner’s finding because Kim discusses
conventional thickening and dewatering processes for sludge volume
reduction, which have problems due to their large footprints, low thickening
efficiencies, and odor,8 and states its “results suggested that the sludge
reduction system using membrane bioreactor (MBR) could be applied as one
of suitable processes to overcome problems of conventional processes such
as gravity and mechanical thickening.” Kim 601, abstract. Kim further
discloses a sludge reduction system using its membrane bioreactor “can be
7 Liao col. 6,11. 56—61.
8 Kim 601, 1. Introduction.
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economical and stable due to low contaminant concentrations in effluent and
high efficiencies of the sludge reduction.” Id. at 604, 4. Conclusions.
Therefore, Kim discloses its membrane bioreactor system as an
improvement to conventional sludge reduction systems, including gravity
thickening systems.
In view of the above, one of ordinary skill in the art would have had a
reason to combine the disclosures of Liao and Kim because both references
are directed to sludge dewatering and Kim discloses advantages for its
membrane bioreactor over conventional sludge dewatering processes.
Moreover, one of ordinary skill in the art would have had a reason to modify
Kim in view of Liao because Liao discloses its water soluble copolymer is
effective for sludge dewatering and it is advantageous because it is more
tolerant to overdosing, which is not the case with commercial polymers.
Liao col. 8,11. 52—57. With regard to the Appellants’ arguments about
differences in size between Kim’s process and Liao’s experiments, a person
of ordinary skill in the art would have reasonably understood Liao’s
copolymer would have functioned when scaled up to Kim’s process in view
of Liao’s disclosure that the copolymer is generally effective for sludge
dewatering. Moreover, the Appellants do not direct us to any evidence or
persuasive technical reasoning in support of an argument that a person
having ordinary skill in the art would have expected the copolymer of Liao
would be ineffective in Kim’s process.
In view of the above, the collective teachings of Kim and Liao, as a
whole, would have rendered obvious the method of claim 1. With regard to
the Appellants’ arguments that the disclosure of Liao is non-enabling for
every water treatment device, the Appellants have not met their burden of
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demonstrating Liao is non-enabling. A reference is presumed to be
enabling. In re Sasse, 629 F.2d 675, 681 (CCPA 1980) (it is applicant's
burden to demonstrate non-enablement of a reference). That presumption is
applicable even for printed non-patent publications. In re Antor Media
Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) (“we now hold that a prior art
printed publication cited by an examiner is presumptively enabling”).
In addition, the Appellants argue it would not have been obvious to
combine Kim and Liao because they are non-analogous to each other.9
Appeal Br. 9—10; Reply Br. 3. Specifically, the Appellants assert Liao is
directed to sludge dewatering via gravity while Kim is directed to sludge
thickening using a membrane in combination with biological treatment. Id.
The Appellants further contend differences in dosage amounts of polymers
in Kim and Liao demonstrate these reference are non-analogous and one of
ordinary skill in the art would have lacked a reason to combine their
disclosures. Id. at 10.
These arguments are also unpersuasive. As discussed above, both
Kim and Liao are directed to the field of sludge dewatering. Further, Kim
discloses the use of a cation organic polymer as a coagulant,10 which reduces
the blockage of membrane pores due to increases in sludge floe size.* 11 Liao
discloses that the hydrophobic segments of its water soluble block
copolymer aggregate when in solution, which make the copolymer effective
9 The Appellants do not assert that either reference is non-analogous to the
Appellants ’ invention under either of our reviewing court’s two tests for
determining whether a reference is analogous art, and, therefore, we do not
consider it. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1380-81 (Fed. Cir. 2007).
10 Kim 602, 2.2 Analytical methods.
11 Kim 604, 3.4 Filtration resistance analysis.
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for sludge dewatering. Liao col. 2,11. 13—18. Liao further teaches its
copolymer can be used at a lower dosage than conventional materials, which
reduce cost, and the copolymer is more tolerant to overdosing. Id. at col. 2,
11. 21—27; col. 8,11. 52—57. Thus, Liao’s disclosure demonstrates its
copolymer as an effective and improved coagulant for sludge dewatering.
In addition, Liao’s disclosure of its copolymer as an improvement for
sludge dewatering would have demonstrated its effectiveness for sludge
dewatering in the process of Kim. The Supreme Court of the United States
stated:
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond [his or her] skill.
A court must ask whether the improvement is more than the
predictable use of prior art elements according to their
established functions
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007).
For these reasons, we determine Kim and Liao are analogous to each
other. Therefore, one of ordinary skill in the art would have had a reason to
combine their disclosures.
The Appellants do not argue independent claims 28 and 29 or
dependent claims 2—20, 22, and 30 separately from claim 1. Appeal Br. 10.
For these reasons and those set forth by the Examiner, we uphold the
Examiner’s rejection of claims 1—20, 22, and 28—30.
Rejection II
For claims 21 and 23, the Appellants contend Collins does not cure
the deficiencies of Liao and Kim. Id. at 11. For the reasons set forth above,
there are no deficiencies in the rejection of claim 1 that require curing by
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Collins. We therefore uphold the Examiner’s rejection of claims 21 and 23
for the same reasons as for the rejection of claim 1.
SUMMARY
Rejections I and II are affirmed. Therefore, the Examiner’s final
decision to reject claims 1—23 and 28—30 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)(l)(iv).
AFFIRMED
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