Aqua Bank CO., LTD.Download PDFPatent Trials and Appeals BoardMay 22, 202014760448 - (D) (P.T.A.B. May. 22, 2020) 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. 14/760,448 09/16/2015 Takashi TAKEHARA PK4421048 1918 105857 7590 05/22/2020 NOVICK, KIM & LEE, PLLC 3251 OLD LEE HIGHWAY SUITE 404 FAIRFAX, VA 22030 EXAMINER KOLB, NATHANIEL J ART UNIT PAPER NUMBER 2856 NOTIFICATION DATE DELIVERY MODE 05/22/2020 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): docket@nkllaw.com skim@nkllaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TAKASHI TAKEHARA ____________ Appeal 2019-004446 Application 14/760,448 Technology Center 2800 ____________ Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and JANE E. INGLESE, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge INGLESE. Opinion Dissenting filed by Administrative Patent Judge SMITH. DECISION ON APPEAL Appellant1 requests our review under 35 U.S.C. § 134(a) of the Examiner’s decision to finally reject claims 1 and 2.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Aqua Bank CO., LTD. as the real party in interest. Appeal Brief filed June 21, 2018 (“Appeal Br.”) at 3. 2 Final Office Action entered July 20, 2017 (“Final Act.”) at 1. Appellant cancelled claims 3 and 4 in an amendment filed May 31, 2018. Appeal 2019-004446 Application 14/760,448 2 CLAIMED SUBJECT MATTER Appellant claims a method of measuring a concentration of hydrogen only dissolved in an aqueous solution for drinking using gas chromatography. Appeal Br. 5–6. Claim 1, the sole pending independent claim, illustrates the subject matter on appeal, and reads as follows: 1. A method of measuring a concentration of hydrogen only dissolved in an aqueous solution for drinking using gas chromatography, the method comprising: a gas control process for selecting a carrier gas having a predetermined difference in thermal conductivity from hydrogen and controlling a flow rate of the carrier gas; a sample introduction process for preparing an aqueous solution sample and introducing the prepared aqueous solution sample into the carrier gas, which functions as a mobile phase, wherein the preparation of the aqueous solution sample comprises injecting a desired amount of the aqueous solution into a vessel, an inside of which is maintained in a vacuum state, to thereby perform gas and liquid separation and collecting a gas-phase portion as the aqueous solution sample to be introduced; a separation process for separating hydrogen only from the aqueous solution sample on a basis of equilibrium in adsorption and distribution between the aqueous solution sample introduced in the mobile phase and a stationary phase of a column; a detection process for detecting the separated hydrogen only using a thermal conductivity detector; and a data processing process for processing the detected data. Appeal Br. 13 (Claims Appendix) (emphasis added). Appeal 2019-004446 Application 14/760,448 3 REJECTION The Examiner maintains the rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over Taylor3 in view of Williams,4 Kang,5 and Mancini6 in the Examiner’s Answer entered July 26, 2018 (“Ans.”). FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions, we reverse the Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 103(a), for reasons set forth in the Appeal Brief and below. Claim 1 requires the recited method of measuring a concentration of hydrogen only dissolved in an aqueous solution for drinking using gas chromatography to comprise, in part, a separation process for separating hydrogen only from an aqueous solution sample on a basis of equilibrium in adsorption and distribution between the aqueous solution sample introduced in a mobile phase and a stationary phase of a column, and a detection process for detecting the separated hydrogen only using a thermal conductivity detector. The Examiner finds that Taylor discloses an apparatus and method for measuring the concentration of a gas using gas chromatography that includes preparing a sample and introducing the prepared sample into a carrier gas, separating a sensed gas from the sample on the basis of equilibrium in adsorption and distribution between the sample introduced in a mobile phase 3 Taylor et al., US 3,097,518, issued July 16, 1963. 4 Williams et al., US 3,922,904, issued December 2, 1975. 5 Kang et al., 1:11 Medical Gas Research (2011). 6 Mancini et al., US 5,979,554, issued November 9, 1999. Appeal 2019-004446 Application 14/760,448 4 and a stationary phase of a column, and detecting the separated gas using a thermal conductivity conductor. Final Act. 3 (citing Taylor col. 1, ll. 9–13; col. 3, ll. 5–40; col. 4, ll. 40–58; col. 5, ll. 1–27). The Examiner finds that Taylor “does not teach that the sample is hydrogen dissolved in an aqueous solution.” Final Act. 4. The Examiner finds, however, that Williams discloses measuring hydrogen dissolved in water using nitrogen as a carrier gas. Final Act. 4 (citing Williams col. 2, ll. 20–29). The Examiner concludes that one of ordinary skill in the art would have been motivated at the time of Appellant’s invention to use Taylor’s gas chromatography apparatus to measure hydrogen separated from water because Kang discloses that hydrogen dissolved in water is used medicinally, and, therefore, “the precise amount of hydrogen dissolved in consumed water needs to be known for such medical research to be meaningful.” Final Act. 4 (citing Kang Abst.; p. 2). On the record before us, however, the Examiner does not articulate reasoning having rational underpinning that explains why one of ordinary skill in the art would have combined the relied-upon disclosures of Taylor and Williams in the manner required by claim 1, for reasons expressed by Appellant and discussed below. Williams discloses an apparatus and method for stripping dissolved gasses from water, and detecting the presence and amount of a particular gas, such as hydrogen, in the stripped gas using a thermal conductivity cell. Williams col. 1, ll. 29–39, 63–66. Williams discloses that the stripping process involves continuously bringing thin films of water containing dissolved gasses into contact with a moving gas, such as nitrogen. Williams Appeal 2019-004446 Application 14/760,448 5 col. 2, ll. 11–19. Williams explains that during this process the moving gas displaces the dissolved gases in the liquid, thus separating the dissolved gasses from the liquid. Williams col. 2, ll. 11–19, 26–29. Williams discloses that the moving gas then serves as a carrier that conveys the stripped gases to a thermal conductivity cell for detection of a particular gas in the stripped gases. Williams col. 2, ll. 20–24. Taylor discloses an apparatus and method for qualitatively and quantitatively analyzing a large number of individual components in a gas mixture using “an arrangement of chromatographic columns and conductivity cells.” Taylor col. 1, ll. 9–13, 38–52. Taylor discloses that the method involves injecting a sample gas mixture to be analyzed into carrier gas 16 at sample inlet 12. Taylor col. 2, ll. 36–44; Fig. 1. Taylor discloses that the carrier/sample gas mixture passes through drying tube 13, and then passes into silica gel column 14. Taylor col. 2, ll. 44–46; Fig. 1. Taylor discloses that certain component gases in the sample pass quickly through silica gel column 14 at substantially the same rate, such as oxygen, nitrogen, carbon monoxide, and methane, while other gases, such as carbon dioxide, ethylene, and acetylene, flow through silica gel column 14 at differing, slower rates, resulting in separation of each of such gases. Taylor col. 2, ll. 44–50; col. 3, ll. 5–9; Fig. 1. Taylor discloses that the gases that flow quickly through silica gel column 14 (oxygen, nitrogen, carbon monoxide, and methane) pass to molecular sieve column 15, which separates each of such gases due to their differing flow rates through the column. Taylor col. 2, ll. 68–72; Fig. 1. Taylor discloses that each gas separated by molecular sieve column 15 flows past sample thermistor 20, which sends a signal to a recording device proportional to the quantity of each gas, while each gas Appeal 2019-004446 Application 14/760,448 6 separated by silica gel column 14 flows past sample thermistor 19, which also sends a signal to a recording device proportional to the quantity of each gas. Taylor col. 2, l. 72–col. 3, l. 3; col. 3, ll. 13–18; Fig. 1. As discussed above, the Examiner asserts that one of ordinary skill in the art would have been motivated at the time of Appellant’s invention to use Taylor’s system to measure hydrogen separated from water because Kang discloses that hydrogen dissolved in water is used medicinally. Final Act. 4. As Appellant points out (Appeal Br. 9), however, the Examiner does not identify any disclosure in Taylor of using the system described in the reference to separate only hydrogen from water, and to quantitate only the separated hydrogen, as recited in claim 1. Williams—rather than Taylor— discloses an apparatus and method for stripping gasses, including hydrogen, from water, and quantitating stripped hydrogen using a thermal conductivity cell. The Examiner does not provide any explanation whatsoever in the Final Action for why one of ordinary skill in the art would have used Taylor’s system, rather than Williams’ system, to separate only hydrogen from water, and to quantitate only the stripped hydrogen, as required by claim 1. Nor does the Examiner identify any disclosure in Taylor indicating that Taylor’s system could actually be used to separate only hydrogen from an aqueous solution, as Appellant also points out. Appeal Br. 9. In response to Appellant’s argument that “one of ordinary skill in the art would not have been motivated to combine Taylor with Williams” (Appeal Br. 8), the Examiner asserts in the Answer that because Taylor and Williams both teach analyzing a mixture of gases using a thermal conductivity detector “their teachings can be combined.” Ans. 3. Appeal 2019-004446 Application 14/760,448 7 The Examiner, however, does not explain why—and how—one of ordinary skill in the art would have combined the relied-upon disclosures of Taylor and Williams to arrive at a separation and detection process as recited in claim 1 that involves separating only hydrogen from an aqueous solution and detecting only the separated hydrogen. Simply because the ordinarily skilled artisan could have combined Taylor and Williams, absent a reason to have actually made the combination, any result of such combination would not have been legally obvious, because “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of the prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (It is well settled that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Although the Dissent submits that “[a] person of ordinary skill in the art would have reasonably expected that the hydrogen/nitrogen gas combination [of Williams] would have been suitable for analysis utilizing gas chromatography such as disclosed by Taylor,” the record before us is bereft of any such combination proposed by the Examiner. As discussed above, the Examiner does not propose combining Williams and Taylor as indicated by the Dissent. In fact, the Examiner does not provide any actual explanation in the Final Action (or the Answer) of how the Examiner proposes combining Williams and Taylor. Final Act. 4; Ans. 3–4 (indicating that Taylor and Williams’ teachings “can be combined” while acknowledging that “what WILLIAMS ends up analyzing is a mixture of Appeal 2019-004446 Application 14/760,448 8 gases.”) The Examiner does not indicate which disclosures of Taylor and Williams would be included in a proposed combination of the references, and how such disclosures could be combined so as to render obvious a process as recited in claim 1. Furthermore, Williams does not disclose a “hydrogen/nitrogen gas combination” as proffered by the Dissent. Rather, as discussed above, Williams discloses displacing “gases” that are dissolved in a liquid, such as water, from the liquid using a carrier gas, such as nitrogen, and conveying the stripped “gases” via the carrier gas to a thermal conductivity cell for detection of a particular gas in the stripped gases, such as hydrogen. Williams col. 2, ll. 11–29 (“[d]issolved gases in the film are displaced by the moving gas . . . the moving gas phase serves as the carrier gas for conveying the stripped gases to the detector unit. The mixture of carrier gas and stripped gases are passed continuously into the detector.”) (emphasis added); see also col. 1, ll. 30–39 (“continuous monitoring of separated gases to detect the presence of a determined gas . . . stripping dissolved gases rapidly in a single pass); col. 1, l. 32–36, 66–col. 2, l. 2 ([a]nother object of this invention is to provide an efficient apparatus which is capable of rapidly stripping the gases from a liquid sample and analyzing the discharged gas content for a particular gas”). Neither the Examiner nor the Dissent identifies any disclosure in Williams of stripping hydrogen only from water. As indicated above, the Examiner acknowledges in the Answer that “what WILLIAMS ends up analyzing is a mixture of gases.” Ans. 3. And Taylor also does not disclose separating hydrogen only from an aqueous solution sample, but discloses separating a gas mixture into individual components, as discussed above. Appeal 2019-004446 Application 14/760,448 9 Thus, even if the Examiner had proposed combining Williams and Taylor as the Dissent asserts, such a combination would not result in a process that involves separating hydrogen only from an aqueous solution sample, as required by claim 1. On this appeal record, the Examiner does not provide sufficient reasoning having rational underpinning to support a conclusion that one of ordinary skill in the art would have combined the relied-upon disclosures of Taylor and Williams so as to arrive at a separation and detection process as required by claim 1.7 We, therefore, do not sustain the Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 103(a). CONCLUSION Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2 103(a) Taylor, Williams, Kang, Mancini 1, 2 REVERSED 7 We need not address the Examiner’s reliance on Kang and Mancini for disposition of this appeal. Appeal 2019-004446 Application 14/760,448 10 SMITH, Administrative Patent Judge, dissenting. I respectfully dissent from the reversal of the rejections of claims 1 and 2 under 35 U.S.C. § 103(a) as specified in the appealed rejection. Upon consideration of the evidence of record, and for essentially the reasons set out by the Examiner in the Answer and Final Rejection, I believe the Examiner’s §103(a) rejection is well founded. I add the following: The present record discusses conventional methods for measuring the concentration of dissolved hydrogen is based on oxidation reduction potential wherein all the materials of the solution have an influence on the oxidation reduction that is measured and as a result it is not clear that the concentration of only hydrogen dissolved an aqueous solution is appropriately determined because the sum of the oxidation power in the reduction power of all materials contained in the aqueous solution is measured. Spec. ¶¶ 4–5. To address this problem, the Specification discloses the object of the present invention is to provide a method of separating hydrogen from an aqueous solution using gas chromatography and measuring the concentration of the separated hydrogen. Spec. ¶ 7. With the object of avoiding utilizing oxidation reduction potential to determine the hydrogen content and water, claim 1 recites a method of measuring a concentration of hydrogen dissolved in an aqueous solution for drinking using gas chromatography to comprise, in part, a separation process for separating hydrogen from an aqueous solution sample on a basis of equilibrium in adsorption and distribution between the aqueous solution sample introduced in a mobile phase and a stationary phase of a column, and a detection process for detecting the separated hydrogen using a thermal conductivity detector. As set forth by the Examiner, the cited prior art does Appeal 2019-004446 Application 14/760,448 11 not suggest determining the concentration of hydrogen dissolved in an aqueous solution that requires utilizing the oxidation reduction potential. The Examiner finds Kang discloses hydrogen dissolved in water was used medicinally. Final Act. 4 (Kang Abst.; p. 2). This is similar to the discussion appearing in the background of the present Specification. Spec. ¶2. Kang examined whether the use of hydrogen-supplemented water, improved quality of life in cancer patients receiving radiotherapy. Kang Abst. The Examiner finds Kang establishes the importance/need of determining the amount of hydrogen dissolved in consumed water. Final Act. 4. The Examiner finds Taylor discloses an apparatus and method for measuring the concentration of a gas using gas chromatography that includes preparing a sample and introducing the prepared sample into a carrier gas having a predetermined difference in thermal conductivity from the sensed gas. Final Act. 3 (Taylor col. 5, ll. 7–26, 57–65). The Examiner finds Taylor discloses separating the sensed gas from the sample on the basis of equilibrium in adsorption and distribution between the sample introduced in a mobile phase and a stationary phase of a column, and detecting the separated gas using a thermal conductivity conductor. Final Act. 3 (Taylor col. 1, ll. 9–13; col. 3, ll. 5–40; col. 4, ll. 40–58). The Examiner finds that Taylor “does not teach that the sample is hydrogen dissolved in an aqueous solution.” Final Act. 4. The Examiner finds, Williams discloses measuring hydrogen dissolved in water using nitrogen as a carrier gas that has a predetermined difference in thermal conductivity from the hydrogen gas to be sensed. Final Act. 4 (Williams col. 2, ll. 20–29; col. 4, ll. 16–28). Appeal 2019-004446 Application 14/760,448 12 The Examiner concludes that it would have been obvious to use Taylor’s gas chromatography apparatus to measure hydrogen separated from consumable water because that Kang establishes the importance/need of determining the hydrogen dissolved in water that is used medicinally. Final Act. 4 (Kang Abst.; p. 2). The Examiner cites Mancini for describing a process and apparatus for gas and liquid separation and collecting a gas phase treatment/processing. Final Act. 4 (Mancini paragraph bridging cols. 6 and 7). Appellant argues initially Kang is non-analogous art. Appeal Br. 7. Whether a prior art reference is analogous is a question of fact. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). The determination that a reference is from non-analogous art is two-fold. First it must be determined if the reference is within the field of the inventor’s endeavor. If the reference is not within the field of the inventor’s endeavor, it must be determined whether the reference is reasonably pertinent to the particular problems with which the inventor was involved. See In re GPAC Inc., 57 F.3d 1573, 1577 (Fed. Cir. 1995). In the present case, I agree with Appellant that Kang is not directed to methods for measuring the content of hydrogen in drinking water. Appeal Br. 7. However, Kane establishes the need for determining the content of hydrogen in drinking water administered to cancer patients. Kang Abst.; p. 2. Consequently, Kane is reasonably pertinent to the problem addressed by the present invention which is the need for determining the content of hydrogen in drinking water. Appeal 2019-004446 Application 14/760,448 13 Appellant’s argument that one of ordinary skill in the art would not have been motivated to combine the teachings of Taylor with the Williams is without persuasive merit. As set forth above, Taylor discloses an apparatus and method for measuring the concentration of a gas using gas chromatography wherein the gas to be analyzed is placed in a carrier gas having a predetermined difference in thermal conductivity. Williams describes measuring hydrogen dissolved in water using nitrogen as a carrier gas that has a predetermined difference in thermal conductivity from the hydrogen gas to be sensed. Williams col. 2, ll. 20–29. A person of ordinary skill in the art would have reasonably expected that the hydrogen/nitrogen gas combination would have been suitable for analysis utilizing gas chromatography such as disclosed by Taylor. See, e.g., KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result”); In re Siebentritt, 372 F.2d 566, 567–68 (CCPA 1967) (express suggestion to interchange methods which achieve the same or similar results is not necessary to establish obviousness); see also In re Kahn, 441 F.3d 977, 985- 88 (Fed. Cir. 2006); In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable expectation of success.” (citations omitted)); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“ [T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”) Appeal 2019-004446 Application 14/760,448 14 Appellant’s argument (Appeal Br. 9–10) that Mancini is non- analogous art is not persuasive as for the reasons presented by the Examiner in the Answer. Ans. 4. In conclusion, for the reasons stated above and those presented by the Examiner, I would sustain the obviousness rejection of claims 1 and 2. I therefore dissent. Copy with citationCopy as parenthetical citation