GENERAL ELECTRIC COMPANY

Patent Trials and Appeals BoardFeb 5, 2020

14721549 - (D) (P.T.A.B. Feb. 5, 2020)

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. 14/721,549 05/26/2015 Hua Wang 279490-2 6492 6147 7590 02/05/2020 GENERAL ELECTRIC COMPANY GLOBAL RESEARCH 1 RESEARCH CIRCLE K1 - 3A59 Niskayuna, NY 12309 EXAMINER LEBRON, BENJAMIN L ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 02/05/2020 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): GRCLegal.mail@ge.com preisman@ge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HUA WANG, ZAMIR ALAM, HAREESH KUMAR REDDY KOMMEPALLI, NICK ANTONOPOULOS, JOSE LUIS PLASENCIA CABANILLAS, and KEITH PAUL BIRCH Appeal 2019-003478 Application 14/721,549 Technology Center 1700 BEFORE LINDA M. GAUDETTE, JEFFREY W. ABRAHAM, and LILAN REN, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 4–11, and 26. Final Act. 4, 13, 14, 15. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “General Electric Company.” Appeal Br. 3. Appeal 2019-003478 Application 14/721,549 2 CLAIMED SUBJECT MATTER The claims are directed to a subsurface water treatment system. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A subsurface water treatment system comprising: one or more ultrafiltration membrane units that uses ambient water as a source fluid for producing an ultrafiltrate substantially free of solid particulates having a largest dimension greater than 0.1 microns; and a backwash unit comprising an electrochemical unit, a bidirectional pump, and an ultrafiltrate storage vessel, the electrochemical unit in fluid communication with at least one of the one or more ultrafiltration membrane units for receiving at least a portion of the ultrafiltrate from the bidirectional pump, the electrochemical unit producing an aqueous solution comprising one or more hypohalous acid species, the ultrafiltrate storage vessel in fluid communication with at least one of the one or more ultrafiltration membrane units for receiving at least a portion of the ultrafiltrate from the bidirectional pump, wherein the bidirectional pump delivers the ultrafiltrate from the ultrafiltrate storage vessel to the one or more ultrafiltration membrane units in an opposite direction of flow as the source fluid during a backwash cycle, and wherein the bidirectional pump delivers at least a portion of the ultrafiltrate from the ultrafiltrate storage vessel and at least a portion of the aqueous solution from the electrochemical unit to the one or more ultrafiltration membrane units in an opposite direction of flow as the source fluid during a chemical backwash cycle. Claims Appendix (Appeal Br. 16). Appeal 2019-003478 Application 14/721,549 3 REFERENCES The prior art references relied upon by the Examiner are: Lunde 827 WO 2012/026827 Al Mar. 1, 2012 Lunde 198 Zha Kirker Kent Nupnau Babbitt Kostrzewa WO 2007/073198 Al US 2004/0232076 A1 US 2005/0077227 A1 US 2006/0065596 A1 US 2011/0139729 A1 US 2015/0104328 A1 US 2010/0051463 Al June 28, 2007 Nov. 25, 2004 Apr. 14, 2005 Mar. 30, 2006 June 16, 2011 Apr. 16, 2015 Mar. 4, 2010 REJECTIONS The Examiner rejects claims 1, 2, and 4–9 under 35 U.S.C. § 103 based on Lunde 827, Nupnau, Kent, Babbitt, and Lunde 198. Final Act. 4. The Examiner rejects claim 10 under 35 U.S.C. § 103 based on Lunde 827, Nupnau, Kent, Babbitt, Lunde 198, and Kostrzewa. Final Act. 13. The Examiner rejects claim 11 under 35 U.S.C. § 103 based on Lunde 827, Nupnau, Kent, Babbitt, Lunde 198, and Kirker. Final Act. 14. The Examiner rejects claims 11 and 26 under 35 U.S.C. § 103 based on Lunde 827, Nupnau, Kent, Babbitt, Lunde 198, and Zha. Final Act. 15. OPINION Claim 12 We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) 2 Because Appellant does not argue claims 2 and 4–9 separately, they stand or fall with claim 1. Appeal Br. 8; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-003478 Application 14/721,549 4 (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After having considered the evidence presented in this Appeal and each of Appellant’s contentions, we are not persuaded that Appellant has identified reversible error, and we affirm the Examiner’s § 103 rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. On appeal, Appellant acknowledges that Lunde 198 teaches the recited electrochemical unit. Appeal Br. 11. Appellant, however, argues that Lunde 827 teaches that the electrochemical unit is connected upstream of the membrane — which, according to Appellant, “would not be effective to backwash the membrane.” Id. From the outset, we are not persuaded by this argument because it is not based on the claim language, which does not require any particular effectiveness of the recited water treatment system. We are also not persuaded by this argument because such an attorney argument is without factual support. Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorneys’ argument is no substitute for evidence.”). Moreover, we note that the Examiner’s rejection is based on the combined teaching of Lunde 827, Nupnau, Kent, Babbitt, and Lunde 198. Appellant’s argument does not address the Examiner’s finding that Nupnau and Kent teach the recited backwash and chemical backwash. Compare Appeal Br. 11, with Final Act. 7–9; see also Ans. 17–18. Appellant’s argument also does not address the Examiner’s finding that Babbitt teaches the recited bidirectional pump. Compare Appeal Br. 11, with Final Act. 9– Appeal 2019-003478 Application 14/721,549 5 10; see also Ans. 18–19. No reversible error has therefore been identified in this aspect of the obviousness analysis. Appellant also acknowledges that “bidirectional pumps are known in the art” but argues that there is no teaching or suggestion in Kent or Babbitt that the bidirectional pump “is used during both the backwash cycle and the chemical wash cycle.” Appeal Br. 12. Appellant’s argument is not persuasive because claim 1 recites a water treatment system that includes a bidirectional pump and “the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). No reversible error has therefore been identified here. Claim 10 Appellant’s sole argument with regard to claim 10 is that Kostrzewa “adds nothing” to the rejection of claim 1. Appeal Br. 12. We sustain the rejection of claim 10 based on the reasons provided supra with regard to claim 1. Claim 11 Appellant’s sole argument with regard to the rejection of claim 11 based on Lunde 827, Nupnau, Kent, Babbitt, Lunde 198, and Kirker is that “Kostrzewa adds nothing” to the rejection of claim 1. Appeal Br. 13. We sustain the rejection of claim 11 because Kirker — not Kostrzewa is the additional reference the Examiner cites for this rejection. See Final Act. 14. We also sustain the rejection of claim 11 based on the reasons provided supra with regard to claim 1. Claims 11 & 26 Appellant’s sole argument with regard to the rejection of claims 11 and 26 based on Lunde 827, Nupnau, Kent, Babbitt, Lunde 198, and Zha is Appeal 2019-003478 Application 14/721,549 6 that Zha “adds nothing” to the rejection of claim 1. Appeal Br. 14. We sustain the rejection of claims 11 and 16 over Lunde 827, Nupnau, Kent, Babbitt, Lunde 198, and Zha based on the reasons provides supra with regard to claim 1. DECISION The Examiner’s rejections are affirmed. More specifically, DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–9 103 Lunde 827, Nupnau, Kent, Babbitt, Lunde 198 1, 2, 4–9 10 103 Lunde 827, Nupnau, Kent, Babbitt, Lunde 198, Kostrzewa 10 11 103 Lunde 827, Nupnau, Kent, Babbitt, Lunde 198, Kirker 11 11, 26 103 Lunde 827, Nupnau, Kent, Babbitt, Lunde 198, Zha 11, 26 Overall Outcome: 1, 2, 4–11, 26 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED