Ex Parte Lacasse

Board of Patent Appeals and Interferences

May 22, 2007

10434125 (B.P.A.I. May. 22, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MAURICE LACASSE
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Appeal 2006-2816
Application 10/434,125
Technology Center 1700
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Decided: May 22, 2007
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Before, BRADLEY R. GARRIS, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
1
Appeal 2006-2816
Application 10/434,125

This is an appeal from the Examiner’s final rejection of claims 13,
23-28, 31, 32, and 36-65. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
Appellant’s invention relates to a transportable water treatment system
using filters and ozone. Independent Claim 13 is reproduced below:
13. A water treatment apparatus to purify water coming from an
external water source as water flows in said apparatus, said water source
containing unwanted particles and/or substances and/or having high levels of
turbidity, said apparatus comprising:

a transportable housing which is adapted to be connected to said water
source;

a first filter which removes a portion of said unwanted particles from
said water source;

an ozone generator system which produces and provides ozone,

a mixer which mixes said ozone with said water source from said first
filter;

a reactor which defines an inner chamber connected to said mixer and
favors the molecular reaction of said water source from said
first filter with said ozone to remove a significant portion of
any remaining [sic] said unwanted particles and/or substances
and inactivate another portion of the left said unwanted
particles and/or substances;

a second filter which removes another portion of said unwanted
particles and/or substances from said water source from said
chamber;

a third filter, which comprises ozone resistant means and which
lowers the turbidity level and lowers said ozone in said water
source from said second filter;
Appeal 2006-2816
Application 10/434,125

a fourth filter which lower said inactivated unwanted particles and/or
substances from said water source from said third filter.

The Examiner relies on the following prior art references to show
unpatentability:
Mausgrover US 5,427,693 Jun. 27, 1995
Gastman US 5,711,887 Jan. 27, 1998
Conway US 6,348,155 B1 Feb. 19, 2002
Mori US 6,464,877 B1 Oct. 15, 2002

The Examiner made the following rejections:
1. Claims 49-62 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.1
2. Claims 13, 23-28, 31, 32, 36, 38-50, 52-62, 64, and 65 under
35 U.S.C. § 103(a) as unpatentable over Gastman in view of Conway and
Mori.
3. Claims 37, 51, and 63 under 35 U.S.C. § 103(a) as unpatentable
over Gastman in view of Conway and Mori as applied to claims 13, 36, and
49 and further in view of Mausgrover.

ISSUES
I. The Examiner contends that the claim 49 recitation “wherein
said disinfectant is absent of the purified water when said purified water
exits said apparatus” is not supported by the original Specification and
claims. Appellant contends that one of ordinary skill in the art would
understand that disinfectant is absent when the purified water exits the

1 The rejection of claim 65 under 35 U.S.C. § 112, first paragraph, has been
withdrawn. (Answer 7).

apparatus because ozone concentration is continually lowered as the water
exits the ozone resistant means. The issue for us to decide is “Would one of
ordinary skill in the art have understood Appellant’s original Specification
and claims as describing a water filtration apparatus in which water exiting
the apparatus did not contain ozone?”
For the reasons discussed below, we answer this question in the
negative.
II. The Examiner contends that it would have been obvious to one
of ordinary skill in the art at the time of the invention to have used Mori’s
ozone-resistant membrane filter in the Gastman/Conway water treatment
apparatus to achieve the invention as claimed. Appellant contends that the
Examiner has failed to explain the desirability of using Mori’s membrane
filter in the Gastman/Conway water treatment apparatus, since the filter
would be superfluous. The issue for us to decide is: “Has the Examiner
identified a reasonable basis in the prior art for using Mori’s membrane filter
in the Gastman/Conway water treatment apparatus?” If so, “Has Appellant
provided sufficient evidence to overcome the Examiner’s prima facie
showing of obviousness?”
For the reasons discussed below, we answer the first question in the
affirmative, and further determine that the Appellant has failed to overcome
the Examiner’s prima facie showing of obviousness.
Accordingly, we affirm as to all three grounds of rejection.

2

RELEVANT FINDINGS OF FACT
Specification

1) The Specification discloses a water purification system
which uses ozone as a disinfectant and includes an ultra-micro-
filtration membrane 170. The ultra-micro-filtration membrane 170
is described as comprising a water container entrance 172 opening
to thousands of vertically extending capillaries 176 which are
permeable to water. (Specification, 11).
2) Water filters out of the capillaries into the central channel
174, while the suspended particles which cause turbidity are
retained inside the capillaries 176. (Specification, 11-12). The
ultra-micro-filtration membrane 170 is thus said to “significantly
reduce the turbidity level” in the water. (Specification, 11).
3) The ozone in the water entering the ultra-micro-filtration
membrane 170 reacts with debris stuck on the capillary surfaces
176 thereby providing a level of self-cleaning to the ultra-micro-
filtration membrane 170 and reducing the remaining concentration
of ozone in the water. (Specification, 12).
4) The Specification states that in order for the self-cleaning
feature to work, the membrane must be resistant to the
ozone/disinfectant. (Specification, 12).
Gastman
5) Gastman relates to a process and transportable apparatus for
the treatment of contaminated water with ozone to produce potable
water. (Abstract, 1).
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6) In Gastman’s process, contaminated water is pumped to a
first filter (organic whirlpool separator 12) for removal of silt,
debris and other particles greater than about 70 microns.
(Gastman, col. 6, ll. 59-65).
7) The contaminated water is then pumped through a series of
columnar ozonation vessels 20 where ozone is diffused into the
water. (Gastman, col. 6, l. 65-col. 7, l. 24). The ozone is prepared
in situ in an ozone generator 86. (See col. 8, ll. 37-44).
8) Upon exiting the ozonation vessels 20, the water, containing
from about 0.5 to 8.0 mg/l of ozone is transferred to a partitioned
retention tank 40 to allow oxidation of pathogens, organic matter
and other oxidizable material. (Gastman, col. 7, ll. 25-50).
9) Water from the retention tank 40 then flows to an ultraviolet
radiation chamber 64 where it is subjected to ultraviolet radiation
to catalyze the oxidation reactions of ozone, thereby oxidizing any
residual oxidizable matter. (Gastman, col. 7, ll. 53-57). The water
is also radiated to neutralize the ozone such that water exiting the
ultraviolet radiation chamber 64 is “substantially free of ozone.”
(Gastman, col. 7, ll. 63-65).
10) After exiting the ultraviolet radiation chamber 64, the water
is pumped through a first filter 66 to remove any particulates
greater than about 10 microns in size and then pumped to an
activated carbon filter medium 68 to remove residual odor, taste
and color. (Gastman, col. 8, ll. 1-10).
11) Gastman teaches that “care should be exercised in selecting
materials of construction that come into contact with ozone or
highly ozonated water.” (Gastman, col. 15, ll. 63-65).
4
Appeal 2006-2816
Application 10/434,125

12) Gastman states that the vessels and conduits that come into
contact with ozonated water should be made of materials which are
resistant to ozone oxidation. (Gastman, col. 15, l. 65-col. 16, l. 4).
13) Gastman discloses that “the system of the invention is
extremely flexible and the process of using the system may be
tailored for a particular contaminated water.” (Gastman, col. 16, ll.
27-29). Gastman contemplates, in particular, bypassing various
vessels in the embodiment shown in Figure 1. (Gastman, col. 16,
ll. 12-47).
Mori
14) Mori discloses a water treatment process in which ozone is
added to raw water and filtered with an ozone-resistant membrane.
(Mori, col. 5, ll. 3-4)
15) Mori teaches that the concentration of ozone in the water is
preferably adjusted to a range of .05 to .3 mg/l. (Mori, claim 1).
16) Mori states that it is known in the art to use ultrafiltration
and microfiltration membranes in small scale water purification
processes because of their advantages over coagulation
sedimentation processes including a high ability to remove
impurities, germs and protozoas sufficiently, high reliability, etc.
(Mori, col. 1, ll. 47-55).
17) Mori teaches that the presence of ozone in the raw water
helps to decompose the organic substances attaching to or clogging
the membrane so that a large filtration flux can be obtained. (Mori,
col. 4, ll. 6-10).
Appeal 2006-2816
Application 10/434,125

18) Mori teaches that adding ozone to raw water is effective in
removing color and foul odor and taste. (Mori, col. 4, ll. 15-17).
19) Mori teaches that water exiting the ozone-resistant
membrane may be filtered through activated carbon and a reverse
osmosis membrane. (Mori, col. 2, ll. 62-67).
20) Mori teaches that “[w]hen the activated carbon treatment is
conducted, it is important to control the ozone concentration of the
water filtered through the ozone-resistant membrane at a low
level” to prevent the activated carbons from reacting with ozone.
(Mori, col. 7, ll. 44-48).

ANALYSIS AND CONCLUSIONS
I. Would one of ordinary skill in the art have understood Appellant’s
original Specification and claims as disclosing a water filtration apparatus in
which water exiting the apparatus did not contain ozone?
The Examiner determined that there is no supporting disclosure in the
original Specification or claims for the claim 49 recitation “wherein said
disinfectant is absent of the purified water when said purified water exits
said apparatus.” (Answer 3). Appellant maintains that the limitation “is
supported and can be readily inferred” from page 12 of the Specification
which states, inter alia, that the ultra-micro-filtration membrane lowers the
concentration of the remaining ozone in the water. (Br. 14). Appellant
asserts that one of ordinary skill in the art would understand that a reduction
in ozone concentration would continue from this point on until the water
exits the apparatus. (Br. 14). As pointed out by the Examiner, lowering the

concentration of ozone merely means that less ozone is present, not that it is
absent from the water. (Answer 7). Appellant has not provided any
evidence to show that one of ordinary skill in the art would have a different
understanding of the referenced portion of the Specification.
Accordingly, we affirm the rejection of claims 49-62 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
II. Has the Examiner identified a reasonable basis in the prior art
for using Mori’s membrane filter in the Gastman/Conway water treatment
apparatus? If so, has Appellant provided sufficient evidence to overcome
the Examiner’s prima facie showing of obviousness?
The Examiner relied on Gastman and Conway for a teaching of the
invention as claimed in independent claims 13, 36, and 49 with the
exception of a filter comprising ozone/disinfectant resistant means.2 The
Examiner relied on Mori for a teaching of Appellant’s claimed “filter which
comprises ozone resistant means and which lowers the turbidity level and
lowers said ozone in said water source” (claims 13 and 36) and claimed
“filter which comprises disinfectant resistant means and which lowers the
turbidity level and lowers said disinfectant in said water source” (claim 49).
The Examiner found that it would have been obvious to one of ordinary skill
in the art at the time of Appellant’s invention to use Mori’s ozone-resistant
membrane filter in the Gastman/Conway water treatment apparatus to gain
the numerous advantages noted in Mori. (Answer 5 (citing Mori, col. 2, ll.
30-55) and Answer 10).

2 Appellant does not dispute the Examiner’s interpretation of the claimed
“ozone resistant means” under 35 U.S.C. § 112, sixth paragraph (see Answer
4-5).
7

Appellant argues that the Examiner failed to explain the desirability of
combining Mori with Gastman and Conway. (Br. 18). Appellant also argues
that Gastman teaches away from using Mori’s ozone-resistant membrane
filter. (Br. 20). Appellant bases these arguments on the contention that
because Gastman uses a UV chamber 64 after the ozone treatment stage to
destroy any remaining ozone, the use of Mori’s ozone-resistant membrane
filter in the Gastman/Conway apparatus would be superfluous. (Br. 19-20).
Although Gastman’s UV chamber 64 neutralizes ozone in the water,
Gastman teaches that water exiting the UV chamber is only “substantially
free” of ozone (FF 9) which means that the water may still contain some
amount of ozone. Gastman notes that any vessels and conduits that come
into contact with ozonated water should be made of materials which are
resistant to ozone oxidation. (FF 11 & 12). In Mori’s process, an
improvement in filtration flux through the ozone resistant membranes is
observed with even a small concentration of ozone. (FF 15 & 17). Mori
further teaches that a low level of ozone is preferred when an activated
carbon treatment is used as a final purification step (FF 20). Thus, we are in
agreement with the Examiner that one of ordinary skill in the art would not
have been discouraged from using Mori’s ozone resistant means in
Gastman’s filtration system. Rather, we find that the facts and reasons relied
on by the Examiner establish a reasonable basis for concluding that one of
ordinary skill in the art would have been motivated to use Mori’s ozone
resistant means in Gastman’s filtration system (see Answer 5 and 10). See
KSR Int’l. v. Teleflex Inc., 127 S. Ct. 1727, 1732, 82 USPQ2d 1385, 1390
(2007)(“It is common sense that familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a
8

puzzle.”). See also, In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040,
1042 (Fed. Cir. 1992) ("As long as some motivation or suggestion to
combine the references is provided by the prior art taken as a whole, the law
does not require that the references be combined for the reasons
contemplated by the inventor.").
Appellant additionally argues that claims 36 and 49 are patentable
over the applied prior art because they recite features not present in Mori.
(Br. 24 and 25). These arguments are not persuasive since the rejection is
based on the combined teachings of the references. (See Answer 13-14).
Appellant’s Affidavit is likewise unpersuasive in overcoming the
Examiner’s prima facie showing of obviousness because it focuses on Mori,
and fails to address the facts and reasons relied on by the Examiner in
rejecting the claims (see Answer 13). For example, the affiant (i.e.,
Appellant) maintains that the apparatus of Mori cannot be modified to use
only ozone without undue experimentation. This argument does not address
the Examiner’s contention that it would have been obvious to have used an
ozone resistant membrane filter in the Gastman/Conway filtration system.
The affiant also states that he disagrees with the Examiner’s conclusion that
it would have been obvious to combine the components of the cited prior art
in the manner claimed, but does not refute the reasons relied on by the
Examiner to establish motivation to combine the reference teachings in the
manner claimed.
Accordingly, we affirm the rejection of claims 13, 23-28, 31, 32, 36,
38-50, 52-62, 64, and 65 under 35 U.S.C. § 103(a) as unpatentable over
Gastman in view of Conway and Mori for essentially those reasons set forth
in the Examiner’s Answer. Because Appellant does not present any
additional substantive arguments in response to the rejection of claims 37,
9

51, and 63 under 35 U.S.C. § 103(a) as unpatentable over Gastman in view
of Conway and Mori and further in view of Mausgrover, we also affirm this
ground of rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(i)(iv).

AFFIRMED

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