Junichi Takahashi

Patent Trials and Appeals Board

Sep 19, 2019

15038813 - (D) (P.T.A.B. Sep. 19, 2019)

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.
15/038,813 05/24/2016 Junichi TAKAHASHI KUN-003 1685
32628 7590 09/19/2019
KANESAKA BERNER AND PARTNERS LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314-2848
EXAMINER
GERIDO, DWAN A
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
09/19/2019 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):
docketing@ipfirm.com
office@uspatentagents.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JUNICHI TAKAHASHI
____________

Appeal 2019-000347
Application 15/038,813
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 6–10 of Application 15/038,813
under 35 U.S.C. § 103 as obvious. Final Act. 1, 2 (Dec. 18, 2017).
Appellant1 seeks reversal of the rejection pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we reverse.

1 Kurita Water Industries Ltd. is identified as the applicant and the real party
in interest. Br. 2.
Appeal 2019-000347
Application 15/038,813
2
BACKGROUND
The ’813 Application describes methods for: (i) measuring the
residual chlorine concentration in water; and (ii) reducing or preventing
staining by a chlorine-concentration-measuring reagent. See Spec. ¶¶ 1, 2;
Fig. 1.
Claims 6 and 8 are representative of the ’813 Application’s claims and
are reproduced below from the Claims Appendix to the Appeal Brief
(emphasis added):
6. A method for measuring chlorine concentration,
comprising:
mixing a chlorine-concentration-measuring composition
comprising an aromatic sulfonic acid-based polymer or a salt
thereof and a color reagent for detection of chlorine with
water; and
determining a free residual chlorine concentration from
change in color generated by the color reagent.
8. A method for reducing or preventing staining by a
chlorine-concentration-measuring reagent, comprising:
mixing a chlorine-concentration-measuring composition
comprising an aromatic sulfonic acid-based polymer or a salt
thereof and a color reagent for detection of chlorine with
water;
suppressing adhesion of reagent-derived precipitates
during color reaction; and
dispersing a staining component into an aqueous system,
as the polymer is adsorbed on a surface thereof.
Br. 9 (Claims App.).
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REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 6 and 8–10 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Mitsumoto2 and Fujita.3
Final Act. 2;4 Answer 3.
DISCUSSION
Appellant argues for the reversal of the obviousness rejection of
claims 6 and 8–10 on the basis of limitations present in independent claims 6
and 8. See generally Br. 6–8. We select claims 6 and 8 as representative.
Accordingly, we limit our discussion to claims 6 and 8.
In rejecting claims 6 and 8, the Examiner relied on Mitsumoto, which
discloses a color reagent for measuring the residual chlorine concentration in
water. Final Act. 2–3 (citing Mitsumoto ¶¶ 13–41). The Examiner found
that Mitsumoto describes each limitation of the claim, but does not teach or
suggest adding the claimed aromatic sulfonic acid-based polymer to
Mitsumoto’s color reagent and water. Final Act. 2–3.
The Examiner found that Fujita teaches a method of adding an
aromatic sulfonic acid polymer to a water system for inhibiting chlorine’s
corrosive effects therein. Final Act. 3 (citing Fujita 2:37–39, 4:16–38). The

2 US 2007/0072305 A1, published Mar. 29, 2007.
3 US 5,820,763, issued Oct. 13, 1998.
4 The Examiner’s statement of the rejection in the Final Office Action
included claim 7. See Final Act. 1, 2. Appellant, however, canceled claim 7
by Amendment filed Sept. 28, 2017. Accordingly, we view the Examiner’s
inclusion of claim 7 in the rejection as a clerical error.
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Application 15/038,813
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Examiner found Fujita teaches that the aromatic sulfonic acid polymer
provides a protective film on the surfaces of a water system’s metal
components. Final Act. 3 (citing Fujita 2:37–39).
The Examiner determined that the ordinarily skilled artisan would
have recognized from the protective film’s corrosion protection properties
that the film would also prevent staining component deposition on and
precipitate adhesion to “the surface of the components of the water system
of Fujita.” Adv. Act. 2. The Examiner concluded that it would have been
obvious to a person of ordinary skill in the art at the time of the invention “to
modify Mitsumoto[,] wherein an aromatic sulfonic acid polymer is added to
the sample water in order to provide a protective film on the surfaces of
metal components as taught by Fujita.” Final Act. 3 (emphasis added).
Appellant argues that Mitsumoto’s invention is directed to attaining a
coloring reagent composition for measuring residual chlorine concentration,
which is capable of preventing crystallization at 5°C. Br. 6. Appellant
further argues that, even assuming Fujita’s polymer film would have
prevented deposition of staining components and precipitate adhesion,
[t]here is no reason or motivation for a skilled artisan to look
into Fujita (a low molecular weight polymer including aromatic
sulfonic acid polymers for inhibiting corrosion) and pick up
aromatic sulfonic acid polymers to apply to the composition for
measuring residual chlorine concentration of Mistumoto [sic,
Mitsumoto] (for increasing solubility of the coloring reagent at
low temperatures and preventing crystallization).
Id. at 7. In particular, Appellant contends “the mere fact that Fujita shows
aromatic sulfonic acid polymers does not lead to the conclusion that a skilled
artisan would combine Mitsumoto and Fujita and attain the method of the
present application.” Id.
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We are persuaded by Appellant’s arguments because the Examiner’s
proposed modification assumes that Mitsumoto disperses a staining
component into an aqueous system having metal surfaces therein. Our
review of Mitsumoto finds no basis for the Examiner’s assumption.
The Examiner implicitly presumes that Mitsumoto’s color reagent for
measuring the residual chlorine concentration circulates in a chlorinated
water system similar to Fujita’s. See Final Act. 2–3; Adv. Act. 2; Answer 3–
4. The Examiner found that Mitsumoto teaches “a composition for
measuring residual chlorine concentration in water systems.” Answer 3
(citing Mitsumoto ¶ 4). The Examiner, however, has not shown that this
color reagent composition contacts metal surfaces in Mitsumoto’s water
system. The Examiner’s relied-upon passage only discloses that a chlorine
agent circulates through Mitsumoto’s exemplary water systems. See
Mitsumoto ¶ 4 (describing that “[a] chlorine agent such as sodium
hypochlorite is added to domestic water such as city water or well water, or
to pool water.”).
We find Mitsumoto only discloses that, in an automatic residual
chlorine concentration measurement device, the color reagent “composition
is added to the sample water got from a water system being monitored.”
Mitsumoto ¶ 54 (emphasis added); see also id. ¶¶ 7–9, 55. Essentially,
Mitsumoto’s continuous measurement method includes an initial “step of
sampling water,” followed by the step of “adding a coloring reagent” to the
sample water. Id. ¶ 7; see also id. ¶ 8. The Examiner has not found, nor can
we identify, any disclosure that Mitsumoto’s water aliquot comprising a
color reagent is introduced back into the water system. Thus, the
Examiner’s presumption is unreasonable that Mitsumoto’s color reagent for
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Application 15/038,813
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detection of chlorine circulates through a water system having metal
surfaces therein.
The Examiner found that “Mitsumoto also teaches the composition
comprising a surfactant for preventing contamination of an optical
measurement cell . . . in an aqueous system.” Answer 3 (citing Mitsumoto
¶ 50); see also Mitsumoto ¶¶ 13, 54. Mitsumoto’s disclosure, however, only
suggests that this water system’s optical measuring cell is constructed from a
clear or transparent material, such as plastic, glass, or quartz.5 See, e.g.,
Spec. ¶ 12.
On these facts, the Examiner reversibly erred in finding that
Mitsumoto’s color reagent for detection of chlorine is utilized in a water
system similar to Fujita’s, which includes metal surfaces that are susceptible
to corrosion from chlorine. See, e.g., Fujita 1:13–16. Therefore, the
Examiner has not established that the ordinary skilled artisan would have
been motivated to combine Mitsumoto’s color reagent for detection of
chlorine with Fujita’s aromatic sulfonic acid-based polymer. See, e.g., KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to
identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does.”); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;

5 Along with an automatic residual chlorine concentration measurement
device, Mitsumoto additionally describes a portable measurement device or
a simpler manual measurement kit for on-site use. Mitsumoto ¶ 7. Such
devices or kits suggest that they are similarly made of plastic, glass, or
quartz materials.
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instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”).
In the absence of a reasoned explanation why the ordinarily skilled
artisan would have modified Mitsumoto’s composition, the Examiner has
engaged in impermissible hindsight in concluding that the applied prior art
renders claims 6 and 8 obvious. In re Rouffet, 149 F.3d 1350, 1358 (Fed.
Cir. 1998) (“hindsight” is inferred when the specific understanding or
principal within the knowledge of one of ordinary skill in the art leading to
the modification of the prior art in order to arrive at appellant’s claimed
invention has not been explained); In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“A rejection based on section 103 clearly must rest on a
factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art”).
In view of the foregoing, we reverse the Examiner’s rejection of
claims 6 and 8–10. 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
For the reasons set forth above, we reverse the § 103 rejection of
claims 6 and 8–10 of the ’813 Application.
REVERSED