Ex Parte Murcia et al

Patent Trial and Appeal Board

Jan 3, 2019

13242014 (P.T.A.B. Jan. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/242,014 09/23/2011
124170 7590 01/07/2019
Leydig, Voit & Mayer, Ltd. (Ecolab/Nalco)
Two Prudential Plaza, Suite 4900
180 N. Stetson Ave.
Chicago, IL 60601-6731
FIRST NAMED INVENTOR
Michael J. Murcia
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
716134 (8327US01) 3339
EXAMINER
XU,XIAOYUN
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
01/07/2019 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):
chgpatent@leydig.com
ecolab_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. MURCIA and
PRASAD Y. DUGGIRALA
Appeal2018-001963
Application 13/242,014
Technology Center 1700
Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1---6, 8, 10, 11, 13, 14, and 18-24. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 In our Opinion, we refer to the Specification filed September 23, 2011
("Spec."); the Final Office Action dated March 8, 2017 ("Final Act."); the
Appeal Brief filed September 8, 2017 ("App. Br."); the Examiner's Answer
dated October 18, 2017 ("Ans."); and the Reply Brief filed December 15,
2017 ("Reply Br.").
2 Appellants identify Ecolab USA Inc. as the real party in interest. App. Br.
1.
Appeal2018-001963
Application 13/242,014
The claims are directed to methods to monitor and control a
wastewater process stream. Claim 1, reproduced below from the Claims
Appendix of the Appeal Brief, illustrates the claimed subject matter:
1. A method of detecting the amount of nonpolar
contaminants in wastewater, the method comprising:
introducing a polarity-sensitive tracer into the wastewater
to form traced wastewater;
detecting fluorescence intensity and emission wavelength
of the polarity-sensitive tracer in the traced wastewater as the
traced wastewater flows through a flow cell;
measuring turbidity of the traced wastewater via a light
scattering technique, wherein the measured turbidity is a
function of the fluorescence intensity and the emission
wavelength of the wastewater;
inferring an amount of turbidity causing contaminants in
the wastewater based on the measured turbidity;
selecting a correction factor from a series of pre-
determined correction factors, wherein the selected correction
factor corresponds to the measured turbidity;
correcting the detection of the fluorescence intensity and
the emission wavelength of the polarity-sensitive tracer
according to the selected correction factor to obtain a corrected
measured fluorometric detection; and
calculating the amount of nonpolar contaminants in the
wastewater from the corrected measured fluorometric detection.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Winslow et al.
("Winslow")
Di Cesare
us 5,400,137
WO 2007 /082376 Al
2
Mar. 21, 1995
July 26, 2007
Appeal2018-001963
Application 13/242,014
REJECTIONS
The Examiner maintains and Appellants seek review of the rejection
of claims 1---6, 8, 10, 11, 13, 14, and 18-24 under 35 U.S.C. § 103(a) as
obvious over Winslow in view of Di Cesare. Final Act. 2-7; App. Br. 3-13.
OPINION
The Examiner rejects each of the pending claims over the combination
of Winslow and Di Cesare, relying on Winslow as teaching all of the
limitations except the polarity-sensitive tracer. Final Act. 2-7. Appellants
argue the claims as a group. App. Br. 3-13. We select claim 1 as
representative; claims 2---6, 8, 10, 11, 13, 14, and 18-24 stand or fall with
claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Winslow discloses a method of detecting the
amount of nonpolar contaminants in wastewater comprising, inter alia,
detecting the fluorescence intensity in the wastewater as the wastewater
flows through an open face flow cell. Final Act. 2 ( citing Winslow Fig. 1;
col. 2, 11. 17-26; and col. 3, 11. 59---63).
Winslow's Figure 1 is reproduced below:
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Appeal2018-001963
Application 13/242,014
2 8-
@-30
w
/
FIG.
Winslow's Figure 1 is a schematic side elevation of one embodiment
of the invention disclosed. Winslow col. 3, 11. 30-31. Device 103 has a fluid
sample container 12, a dual beam light source 14, and a light sensing
detector 16. Id. at col. 3, 11. 42--44. The fluid sample container 12 has an
open upper end formed by a horizontal edge 18 defining sample surface 20.
Id. at col. 3, 11. 44--46. The sample fluid is fed to the container 12 through
inlet 24, which is sufficiently spaced below the surface 20 to prevent any
turbulence from the inflow from affecting the surface 20. Id. at col. 3, 11.
46-51. The upper end of the container 12 is surrounded by a catch basin 32
to catch the fluid flowing over the edge 18. Id. at col. 3, 11. 54--56. A water
stream is brought at constant velocity into the center of a fluid sample
3 Throughout this Decision labels to elements are presented in bold font,
regardless of their presentation in the original document.
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Appeal2018-001963
Application 13/242,014
container 12, the water rises to the top and overflows the horizontal edge 18
into catch basin 32 to form an optically smooth surface (stabilized pool) 20.
Id. at col. 3, 11. 59---64. The dual-wavelength light source 14 emits two
beams of light 38, 40 incident at an acute angle 8 on the same target portion
of the stabilized pool surface 20. Id. at col. 3, 11. 64---66. Beam 38 has a
wavelength in the ultraviolet or visible portion of the spectrum that
stimulates fluorescent emissions, for example, from dissolved and dispersed
fluorescent materials in the water stream. Id. at col. 3, 1. 67----col. 4, 1. 2.
Fluorescent emissions are stimulated at the surface of the water by incident
beam 38 and below the water surface by refracted beam 42. Id. at col. 4, 11.
6-9. Likewise, incident beam 40 is scattered by particles at the water
surface and refracted beam 44 is scattered by particles below the surface. Id.
at col. 4, 11. 9--11. Both the fluorescent emissions stimulated by beams 38
and 42 and the scattered portions of beams 40 and 44 emerge from the water
at all angles 46, 48 above the surface 20 of the stabilized pool. Id. at col. 4,
11. 12-15.
The Examiner finds that Winslow teaches an improved ( open face)
flow cell, wherein the pool surface is optically smooth and the geometry of
the flow cell (12) is fixed, such that a light traveling through from the
smooth surface (20) of the body fluid to the edge of the flow cell (12) is also
fixed, providing a fixed path length for fluorometric measurement. Final
Act. 3.
Appellants contend that path length is a critical parameter in
fluorescence intensity measurement, and that Winslow's stabilized pool
water sampler does not provide a fixed path length. App. Br. 7. Appellants
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Appeal2018-001963
Application 13/242,014
rely on the declaration of co-inventor Michael Murcia4 and three references5
provided as exhibits to the Appeal Brief. Dr. Murcia states: "flow cells
utilized in fluorescence measurements have a fixed path length, typically
around 1 cm." Murcia Deel. ,r 7. Dr. Murcia provides his opinion that the
stabilized pool water sampler described in Winslow has a path length that is
variable, not fixed. Id. ,r 8. According to Dr. Murcia, in the Winslow
sampler, path length can vary depending on both the depth of penetration
that the excitation light can reach and the refractive index of the solution
being measured. Id. The three references (Townsend, Christian, and
Turner) are cited as supporting the importance of path length in fluorometric
measurements. See App. Br. 8-9.
In response to Appellants' argument, the Examiner finds that the
water stream of Winslow is brought at constant velocity into the center of
the fluid sample container 12, meaning the water (sample) flows through the
container at a constant velocity, and the optical smooth surface 20 at the top
of tube 12 simply replaces the interface of water and tube material with an
interface of water and air. Ans. 8. The Examiner finds that in a
conventional flow cell, light travels through or reflects at the interface of the
tube material and water, thus the light path length is fixed. Id. According to
4 Declaration Under 37 C.F.R. § 1.132 of Michael J. Murcia, Ph.D. dated
October 26, 2016 ("Murcia Deel.").
5 The references provided by Appellants are (1) ENCYCLOPEDIA OF
ANALYTICAL SCIENCE 1358-1359 and 1370-1373 (Alan Townsend ed.
1995) ("Townsend"); (2) Gary D. Christian, ANALYTICAL CHEMISTRY, 3rd
ed. 406-407 (1980) ("Christian"); and (3) Technical Note: An Introduction
to Fluorescence Measurements, Revision A from Turner Designs, undated
("Turner").
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Appeal2018-001963
Application 13/242,014
the Examiner, in Winslow, the light also travels through or reflects at the
interface of air and water, meaning the light path length also is fixed. Id.
Appellants reply that light reflecting off Winslow's stabilized pool
water sampler is not measured and does not enter the detector. Reply Br. 2
( citing Winslow col. 4, 11. 19--20). Appellants' argument, however, is at
odds with Winslow's disclosure. Winslow states: "Fluorescent emissions
are stimulated at the surface of the water by incident beam 38 and below the
water surface by refracted beam 42 . ... Both the fluorescent emissions and
the scattered light are selectively detected by detector 16." Winslow col. 4,
11. 6-17.
In addition, the Murcia Declaration does not explain why depth of
penetration and refractive index of the solution being measured affect the
path length in Winslow's sampler but not in a flow cell, or why these factors
would cause path length to vary for a given solution under examination.
Under such circumstances, we find the declaration to be unpersuasive of
reversible error by the Examiner. See In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations.").
Appellants also argue: "Winslow teaches, or at least suggests, that
optical measurements of wastewater are inaccurate----or even impossible-
unless the wastewater is manipulated to be openly exposed to a light source
at an optically smooth surface." App. Br. 6. Appellants contend, therefore,
that one of ordinary skill in the art at the time of the invention would have
had no reason or motivation to combine Winslow's teaching with Di
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Cesare's, which is asserted to be directed specifically at measuring
contaminants in paper pulp. Id. at 7.
Winslow does not suggest that optical measurements of wastewater
are inaccurate or impossible with any system other than Winslow's
stabilized pool water sampler. Winslow states:
All the optical measurement techniques require a means for light
to come into contact with the water, and for transmitted,
scattered, or fluorescent light to be detected. A variety of flow
cells with optical windows or fiber optic probes are available for
this purpose. The optical windows of low cells and fiber optic
probes are subject to fouling in most waste water streams because
the suspended particles in the system . . . cling to the optical
surfaces and interfere with the transmission of light. ... Fouling
is eliminated [ with non-contact sample cells] because there is no
direct contact between the water sample and the optical surfaces.
Winslow col. 2, 11. 28--45. Winslow thus teaches an advantage in using non-
contact sample cells, such as a stabilized pool water sampler, but does not
suggest that flow cells and fiber optic probes are inaccurate or impossible to
use. Turner, one of the references provided by Appellants, indicates that
fouling of a flow cell will result in lower, inaccurate readings over time as
the cuvette becomes coated, but this can be minimized by regular cleaning.
See Turner§ 4.32.
The Examiner finds that Di Cesare teaches introducing a polarity-
sensitive tracer into wastewater and detecting fluorescence intensity and
emission wavelength of the polarity-sensitive tracer in the water. Final Act.
3. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify Winslow with
the introduction of a polarity-sensitive tracer to gain the advantage of signal
enhancement for non-polar contaminants. Id. at 4.
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Application 13/242,014
The Examiner's reasoning is sound, amounting to the skilled artisan
combining prior art elements according to known methods to yield
predictable results. See KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 401
(2007); see also Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d 1293, 1323 (Fed. Cir. 2005) ("One of ordinary skill in the art need
not see the identical problem addressed in a prior art reference to be
motivated to apply its teachings.").
We sustain the rejection of claim 1 as obvious over Winslow in view
of Di Cesare. For the same reasons as given above, we also sustain the
rejection of claims 2---6, 8, 10, 11, 13, 14, and 18-24.
DECISION
The rejection of claims 1-6, 8, 10, 11, 13, 14, and 18-24 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
9