Ex Parte Wang et alDownload PDFPatent Trial and Appeal BoardMay 17, 201713119829 (P.T.A.B. May. 17, 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. 13/119,829 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. 2 Appeal 2016-006985 Application 13/119,829 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 3 Appeal 2016-006985 Application 13/119,829 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 4 Appeal 2016-006985 Application 13/119,829 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. 5 Appeal 2016-006985 Application 13/119,829 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 6 Appeal 2016-006985 Application 13/119,829 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. 7 Appeal 2016-006985 Application 13/119,829 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 8 Appeal 2016-006985 Application 13/119,829 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 9 Copy with citationCopy as parenthetical citation