10577753 (B.P.A.I. Jul. 3, 2012)

Ex Parte Daines et al

Board of Patent Appeals and InterferencesJul 3, 2012

10577753 (B.P.A.I. Jul. 3, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/577,753 07/20/2006 Catherine Daines 4195-033/R8706US 2835 24112 7590 07/05/2012 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 EXAMINER STELLING, LUCAS A ART UNIT PAPER NUMBER 1778 MAIL DATE DELIVERY MODE 07/05/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte CATHERINE DAINES, JEAN-CHRISTOPHE SCHROTTER, and HERVE PAILLARD ________________ Appeal 2011-002342 Application 10/577,753 Technology Center 1700 ________________ Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and TERRY J. OWENS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002342 Application 10/577,753 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 28, 29, 31-38, 40, 41, 44-49, 55, 57, and 59-70, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a method for treating an aqueous influent containing organic matter. Claim 65 is illustrative: 65. A method of treating an aqueous influent containing organic matter, the method comprising: a. injecting an oxidizing gas into a bottom portion of a vertical oriented column reactor; b. suspending a bed of catalyst material in the column reactor to form a fluidized bed of catalyst material in the reactor wherein at least a portion of the fluidized bed is disposed in the lower portion of the column reactor; c. wherein the oxidizing gas injected into the column reactor functions to suspend the bed of catalyst material in the reactor; d. injecting the influent to be treated into the bottom portion of the column reactor where the influent is contacted with the oxidizing gas in the presence of the fluidized bed of catalyst material that promotes the oxidation reaction of organic material in the influent or promotes the adsorption of organic material by the bed of catalyst material thereby yielding treated water; e. wherein the column reactor includes an immersed membrane filtration unit disposed in the upper portion of the column reactor and where in [sic] at least a portion of the fluidized bed of catalyst material is maintained below the membrane filtration unit in the column reactor; f. after directing the influent through the fluidized bed of catalyst material and oxidizing gas in the lower portion of the column reactor, filtering at least a first portion of the treated water in the immersed membrane filtration unit disposed in the upper portion of the column reactor forming a filtered influent; g. directing the filtered influent from the reactor; Appeal 2011-002342 Application 10/577,753 3 h. bypassing the immersed membrane filtration unit with at least a second portion of the treated water such that the second portion of the treated water is non-permeated treated water; i. recirculating at least a portion of the non-permeated treated water from the upper portion of the column reactor, through a recirculation line that lies outside of the column reactor and back into the lower portion of the column reactor; and j. recirculating at least a portion of the oxidizing gas from the upper portion of the column reactor, through a gas recirculation loop disposed outside of the column reactor and back into the lower portion of the column reactor. The References Bybel US 4,076,617 Feb. 28, 1978 White US 4,081,365 Mar. 28, 1978 Mohri US 4,137,162 Jan. 30, 1979 Allen US 4,589,927 May 20, 1986 Saforo US 4,923,843 May 8, 1990 de Geus US 5,372,723 Dec. 13, 1994 Rytter US 5,407,644 Apr. 18, 1995 Cote US 5,607,593 Mar. 4, 1997 Shiota US 2001/0022290 A1 Sep. 20, 2001 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 28, 31, 33, 34, 38, 40, 44-49, 59, 64-68, and 70 over Mohri in view of Rytter, Cote, Allen, and Bybel, claims 28, 29, 32, 55, 57, 60-63, and 69 over Mohri in view of Rytter, Cote, Allen, Bybel, and Saforo, claims 35 and 36 over Mohri in view of Rytter, Cote, Allen, Bybel, and de Geus, claim 37 over Mohri in view of Rytter, Cote, Allen, Bybel, and White, and claim 41 over Mohri in view of Rytter, Cote, Allen, Bybel, and Shiota. OPINION We reverse the rejections. Appeal 2011-002342 Application 10/577,753 4 The Examiner argues that it would have been obvious to one of ordinary skill in the art to incorporate Rytter’s filter for separating hydrocarbon fuel syngas reaction product from finely divided catalyst into Mohri’s waste water treatment vessel to ensure that Mohri’s activated carbon catalyst particles are not drawn off with the treated waste water (Ans. 5-6). Establishing a prima facie case of obviousness of an invention comprising a combination of known elements requires “an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Mohri uses waste water to fluidize activated carbon particles within and between a stationary porous packed bed’s packing pieces, the upper level of the fluidized activated carbon particles being at least 5 cm below the upper level of the porous packed bed, such that the expansion of the activated carbon particles is extremely low and the activated carbon particles can be completely prevented from popping out of the waste water treatment vessel (abstract; col. 4, ll. 11-23; col. 5, ll. 24-36). Thus, the problem of Mohri’s activated carbon particles being drawn off with the treated waste water, which the Examiner uses as the basis for filtering the waste water exiting Mohri’s waste water treatment vessel (Ans. 6), does not appear to exist. The Examiner argues that in view of Mohri’s disclosure that if the upper level of the fluidized activated carbon particles is within 5 cm of the upper level of the porous packed bed the activated carbon particles undesirably fly out of the contacting container (col. 4, ll. 23-29), it would have been obvious to one of ordinary skill in the art to filter the exiting Appeal 2011-002342 Application 10/577,753 5 treated waste water to prevent the activated carbon particles from flying out of the contacting container under any circumstance (Ans. 17). The Examiner has not established that it would have been apparent to one of ordinary skill in the art to prevent Mohri’s activated carbon particles from flying out of the contacting container by filtering the exiting treated waste water rather than by using the technique disclosed by Mohri, i.e., maintaining the upper level of the fluidized activated carbon particles at least 5 cm below the upper level of the porous backed bed (col. 4, ll. 20-24; col. 5, ll. 24-36). Nor has the Examiner established that it would have been apparent to one of ordinary skill in the art to filter Mohri’s treated waste water in view of Rytter’s separation of a hydrocarbon fuel syngas reaction product from a reaction product/finely divided catalyst slurry (abstract; col. 4, ll. 48-58). The Examiner argues that in view of Allen’s recirculation of a chemical or biological reaction slurry to enable several rapid passes of the reactants before the solids in the slurry are regenerated, thereby increasing the efficiency in high flow velocity situations (col. 3, ll. 12-22), it would have been obvious to one of ordinary skill in the art to include a recirculation line in Mohri’s waste water treatment vessel to allow for multiple passes of slurry and more complete reaction at high flow volumes (Ans. 7). The Examiner has not established that one of ordinary skill in the art would have desired high flow velocity in Mohri’s waste water treatment process or would have desired to recirculate the activated carbon particles which Mohri introduces into the contacting container below the porous backed bed’s upper surface, fluidizes within and between the porous packing Appeal 2011-002342 Application 10/577,753 6 pieces, and withdraws, after becoming deteriorated, from the bottom portion of the porous packed bed (abstract; col. 5, ll. 39-44). Thus, the record indicates that the Examiner’s reliance upon Rytter and Allen is based upon impermissible hindsight in view of the Appellants’ disclosure. See 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”). Accordingly, we do not sustain the Examiner’s rejections.1 DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 28, 31, 33, 34, 38, 40, 44-49, 59, 64-68, and 70 over Mohri in view of Rytter, Cote, Allen, and Bybel, claims 28, 29, 32, 55, 57, 60-63, and 69 over Mohri in view of Rytter, Cote, Allen, Bybel, and Saforo, claims 35 and 36 over Mohri in view of Rytter, Cote, Allen, Bybel, and de Geus, claim 37 over Mohri in view of Rytter, Cote, Allen, Bybel, and White, and claim 41 over Mohri in view of Rytter, Cote, Allen, Bybel, and Shiota are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED sld 1 The Examiner does not rely upon the additional applied references for any disclosure which remedies the above-discussed deficiency in Mohri, Rytter, and Allen (Ans. 4-17).