Ecolab USA Inc.

Patent Trials and Appeals Board

Dec 23, 2021

2021000105 (P.T.A.B. Dec. 23, 2021)

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.
15/423,797 02/03/2017 Jeremy Wayne Bartels PT10652US 4675
171573 7590 12/23/2021
Stinson LLP (ChampionX)
7700 Forsyth Boulevard
Suite 1100
St. Louis, MO 63105
EXAMINER
PERRIN, CLARE M
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
12/23/2021 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):
stl.uspatents@stinson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY WAYNE BARTELS, REGAN ANDREW JONES, and
REBECCA MICHELE LUCENTE-SCHULTZ
Appeal 2021-000105
Application 15/423,797
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
DONNA M. PRAISS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
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, 3–7, and 9–20. 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(a). Appellant identifies the real party in interest as Ecolab USA Inc.
(Appeal Br. 2.)
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Application 15/423,797

2
CLAIMED SUBJECT MATTER
The claimed subject matter is generally directed to methods for
removing a polymeric hydrate inhibitor from process waste water
comprising contacting the process waste water with a high molecular weight
polymeric flocculant. (Spec. ¶ 2.) Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method for removing a polymeric hydrate inhibitor from
process waste water containing the polymeric hydrate inhibitor,
the method comprising contacting the process waste water
containing the polymeric hydrate inhibitor with a high
molecular weight polymeric flocculant, wherein the molecular
weight of the high molecular weight polymeric flocculant is
from about 100,000 Da to about 100,000,000 Da, using
viscosity molecular weight (Mv).
(Appeal Br. 10, Claims Appendix.)
The following rejection is presented for our review:
Claims 1, 3–7, and 9–20 rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Spencer (US 2012/0247972 A1,
published Oct. 4, 2012) and Sikes (US 2011/0272362 A1, published Nov.
10, 2011).
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. See 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 . . . ” citing Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential)).
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Appellant has presented arguments addressing only independent claim
1. Appellant does not present substantive arguments addressing dependent
claims 3–7 and 9–20. We select claim 1 as representative of the rejected
subject matter.
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellant, we determine
that Appellant has not identified reversible error in the Examiner’s
determination that the subject matter recited in independent claim 1 would
have been obvious to one of ordinary skill in the art within the meaning of
35 U.S.C. § 103. We are in complete agreement with the Examiner’s
reasoned analysis and application of the prior art. We add the following for
emphasis only.
The Examiner finds Spencer discloses removing kinetic hydrate
inhibitors (KHI) in produced water by treating the produced water with a
flocculant, which causes the KHI to form a floc that is removed from the
water via settling or filtering. (Final Act. 5.) The Examiner finds Spencer
does not disclose use of the claimed high molecular weight polymeric
flocculant. The Examiner finds Spencer discloses, “the use of alum and other
flocculation aids is within the scope of the coagulation methods of the
disclosure.” (Final Act. 5; Spencer ¶ 21.) The Examiner finds Sikes teaches
high molecular weight polymeric flocculants (anionic copolymers of
acrylate and acrylamide). (Sikes ¶¶ 62, 63.) The Examiner determines that it
would have been obvious to perform the method described by Spencer
utilizing flocculation aids known for water treatment. (Final Act. 5.)
The complete statement of the rejections on appeal appears in the
Final Office Action. (Final Act. 5–6).
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Appellant argues a person of ordinary skill in the art would not have
had a cogent technical reason to modify the method of Spencer to substitute
the anionic copolymers of acrylate and acrylamide of Sikes. (Appeal Br. 5.)
Appellant further argues the reasoning provided by the Examiner is general
and would not have led a person of ordinary skill in the art to modify
Spencer’s methods with the particular aids disclosed in Sikes when
considering the universe of possible flocculation aids and methods known in
the art. (Appeal Br. 5.) Appellant argues Spencer’s exemplified
embodiments would have led a person of skill in the art to utilize solvent
extraction methods due to their significantly higher effectiveness as
compared to coagulation methods. (Appeal Br. 6–7.)
Appellant’s arguments are not persuasive of reversible error in the
Examiner’s obviousness determination. Spencer is concerned with processes
for the removal of KHI from produced water which could originate from oil
or gas wells. (Spencer ¶ 14.) Spencer discloses various techniques for
removing KHI from water including chemical coagulation (e.g., use of
flocculation aids). (Spencer ¶ 8.) Spencer does not provide an exhaustive list
of flocculation aids but states “[t]he use of alum and other flocculation aids
is within the scope of the coagulation methods of the disclosure.” (Spencer
¶ 21.) Sikes teaches processes for clarification of aqueous liquids having
emulsified or suspended solids resulting from waste waters generated in
various activities including mining operations. (Sikes ¶ 48.) Sikes provides
an extensive discussion regarding suitability and factors to be considered
when utilizing anionic or cationic high molecular weight polymeric
flocculants. (Sikes ¶¶ 58–65.) A person of ordinary skill in the art would
have reasonably looked to known flocculation aids employed in water
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resulting from oil mining operations for utilization in Spencer’s coagulation
methods. Accordingly, we are of the opinion that, prima facie, one of
ordinary skill in this art routinely following the teachings of the references,
as combined by the Examiner, would have reasonably arrived at the claimed
method of removing a polymeric hydrate inhibitor from process waste water
utilizing flocculation aids encompassed by claim 1 without resort to
Appellant’s Specification. See, e.g., KSR Int’l Co. v. Teleflex Inc., 127 S. Ct.
550 US 417, 418 (2007) (“[A]nalysis [of whether the subject matter of a
claim would have been obvious] need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.”); In re Translogic Tech. Inc., 504 F.3d 1249, 1260
(Fed. Cir. 2007) (“[A] flexible approach to the [teaching, suggestion, or
motivation to combine] test prevents hindsight and focuses on evidence
before the time of invention without unduly constraining the breadth of
knowledge available to one of ordinary skill in the art during the
obviousness analysis.” (citations omitted)); In re Kahn, 441 F.3d 977, 985–
88 (Fed. Cir. 2006); 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.”); In re Sovish,
769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of
ordinary skill in the art); see also 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)).
Appellant’s representative argued:
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[A] person of ordinary skill in the art would not have had a
reasonable expectation that Sikes’ anionic copolymers of
acrylate and acrylamide would have been successful for
flocculating Spencer’s polymeric kinetic hydrate inhibitors
because the process waste water produced from an oil sands
mining operation would have been expected to have much
different physical and chemical characteristics than a process
waste water where a kinetic hydrate inhibitor would have been
used in the extraction process.
(Appeal Br. 6.)
We do not find these arguments convincing because they are not supported
by persuasive evidence. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997) (argument by counsel cannot take the place of evidence). As set forth
above, Spencer recognizes the suitability of utilizing other flocculation aids
within the scope of the coagulation methods and Sikes teaches flocculation
aids for clarification of aqueous liquids having emulsified or suspended
solids resulting from waste waters generated in various activities including
mining operations. Appellant has not directed us to evidence to support the
argument that establishes a significant unpredictability of the effectiveness
of the modified method. (See Appeal Br. 6.)
Appellant has also not directed us to evidence of unexpected results to
support the patentability of the claimed method of removing a polymeric
hydrate inhibitor from process waste water containing the polymeric hydrate
inhibitor utilizing a high molecular weight polymeric flocculant.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1,
3–7, and 9–20 under 35 U.S.C. § 103 for the reasons the Examiner presents
and we give above.

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CONCLUSION
The Examiner’s decision to reject claims 1, 3–7, and 9–20 is
sustained.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–7, 9–20 103 Spencer, Sikes 1, 3–7, 9–20

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