12424225 (P.T.A.B. Aug. 29, 2013)

Ex Parte Paillard et al

Patent Trial and Appeal BoardAug 29, 2013

12424225 (P.T.A.B. Aug. 29, 2013)

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. 12/424,225 04/15/2009 Herve Paillard 6170-001 1131 24112 7590 08/30/2013 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 EXAMINER GIONTA FITZSIMMON, ALLISON ART UNIT PAPER NUMBER 1777 MAIL DATE DELIVERY MODE 08/30/2013 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 PATENT TRIAL AND APPEAL BOARD ________________ Ex parte HERVE PAILLARD,1 Jerome De Benedittis, and Joseph Bonnefoy ________________ Appeal 2012-008523 Application 12/424,225 Technology Center 1700 ________________ Before BEVERLY A. FRANKLIN, MARK NAGUMO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Herve Paillard, Jerome De Benedittis, and Joseph Bonnefoy (“Paillard”) timely appeal under 35 U.S.C. § 134(a) from the final rejection2 1 The real party in interest is listed as Veolia Water Solutions & Technologies Support. (Appeal Brief, filed 15 November 2011 (“Br.”), 2.) 2 Office action mailed 13 June 2011 (“Final Rejection,”, cited as “FR”). Appeal 2012-008523 Application 12/424,225 2 of claims 15-19 and 27-30.3 We have jurisdiction under 35 U.S.C. § 6. We reverse. OPINION A. Introduction4 The subject matter on appeal relates to a method for treating the purging or cleaning effluent from a steam generating circuit. In the claimed process, the effluent contains suspended solids, organic acids, metals, and nitrogen-containing compounds at a pH of 7.0 or above. According to the 225 Specification, “the circuits may be secondary circuits in a nuclear power station, or primary circuits in a fossil fuel power station, or indeed steam circuits fitted to any other type of industrial unit.” (Spec. 1, ll. 11-14.) The claimed process comprises acidifying the effluent to dissolve the organic acids, metals, and nitrogen-containing compounds, filtering out the solids, and concentrating the effluent by reverse osmosis and evaporation to remove at least 98% of the contaminants. 3 Claims 20-26 and 31 have been withdrawn from consideration (F 1) and are not before us. 4 Application 12/424,225, Method of treating water effluent from purging or cleaning steam generator circuits, and a mobile unit enabling the method to be implemented, filed 14 April 2009, claiming the benefit of an application filed in France on 18 April 2008. The specification is referred to as the “225 Specification,” and is cited as “Spec.” Appeal 2012-008523 Application 12/424,225 3 Claim 15 is representative and reads: A method for treating a steam generator circuit purging or cleaning effluent, the method comprising: providing effluent from a purging or cleaning operation of the steam generator circuit, wherein the effluent has a pH of 7.0 or above and wherein the effluent contains suspended solids, organic acids, metals, and nitrogen-containing compounds; lowering the pH of the effluent to between approximately 5 and approximately 6.5 such that the organic acids, the nitrogen-containing compounds, and metals are dissolved within the effluent; removing suspended solids from the effluent; concentrating the effluent in a reverse osmosis unit and in an evaporator concentrator so as to produce a treated effluent; and wherein concentrating the effluent removes at least 98% of the organic acids, metals, and nitrogen-containing compounds contained in the steam generator circuit purging or cleaning effluent. (Claims App., Br. 14; some paragraphing, indentation, and emphasis added.) Claim 27, the other independent claim, is similar in the disputed limitations. The Examiner has maintained the following ground of rejection:5 Claims 15-19 and 27-30 stand rejected under 35 U.S.C. § 103(a) in view of the teachings of D’Amaddio.6 5 Examiner’s Answer mailed 2 February 2012 (“Ans.”). 6 Eugene D’Amaddio and David Norman Enegess, Liquid waste processing system, U.S. Patent 4,105,556 (1978). Appeal 2012-008523 Application 12/424,225 4 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Paillard urges the Examiner erred harmfully by failing to come forward with evidence that it would have been obvious to lower the pH of the waste-stream treated by D’Amaddio in order to dissolve the contaminants recited in claim 15. (Br. 5-6.) D’Amaddio, in Paillard’s view, adjusts the pH in order to precipitate contaminants (id., citing D’Amaddio column 2 [sic: col. 3], lines 8-18), not to dissolve them. The Examiner finds that pH of the effluent is a result-effective variable, the optimization of which would have been within the ordinary skill in the art. (Ans. 6, 1st full para.) The Examiner finds further that “when ‘adjusting to precipitate ‘certain solids’ other ‘certain solids’ may dissolve or remain dissolved in solution.” (Id. at 12, 3d full para.) The Examiner also finds that the routineer “would have very well understood that if pH adjustment can be used to precipitate solids for the filtration system then the pH can be adjusted to dissolve particles or keep them dissolved. This would all be optimized to protect the RO [reverse osmosis] membrane.” (Id. at 13, 1st full para.) The difficulty with the Examiner’s rejection is the absence of cited evidence that the routineer, implementing the teachings of D’Amaddio, would have selected a pH in the range of about 5 to about 6.5 in order to accomplish any particular goal, especially to dissolve the organic acids, nitrogen-containing compounds, and metals recited in the claims. As the Appeal 2012-008523 Application 12/424,225 5 Examiner finds, D’Amaddio does not provide that explicit teaching. Absent evidence that a pH regime between about 5 and about 6.5 would have been regarded by the routineer as useful in the process disclosed by D’Amaddio, the rejection is best characterized as being based on hindsight. This is especially so because D’Amaddio seeks to precipitate the unspecified dissolved contaminants, not to insure that they are in solution. Thus, D’Amaddio states that “[i]n addition, the chemicals can be selected to cause a chemical reaction with the dissolved solids in the liquid waste influent to cause solid precipitation.” (D’Amaddio, col. 3, ll. 9-11; emphasis added.) The Examiner appears to consider the claims to be so broad that any amount of contaminant dissolved in the water upon lowering the pH into the recited range would result in the “dissolved” condition being met. Such a broad reading is contrary to the ordinary use of the term “dissolved.” Moreover, the Examiner has not directed our attention to any credible evidence in the original disclosure indicating that Paillard intended an idiosyncratic, broader meaning of that term. Nor has the Examiner provided any evidence or analysis indicating that the 98% removal condition would have been met. The Examiner’s attempt to shift the burden of proof regarding the obviousness of these limitations to Paillard fails for lack of the required evidentiary foundation.7 It is not enough to establish that a person 7 See, e.g., In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004) (“[W]hen the prior art evidence reasonably allows the PTO to conclude that a claimed feature is present in the prior art, the evidence ‘compels such a conclusion if the applicant produces no evidence or argument to rebut it.’” (quoting In re Spada, 911 F.2d 705, 708 n.3 (Fed. Cir. 1990)) and In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (“Where . . . the claimed and prior art products are identical or substantially identical, or are produced by Appeal 2012-008523 Application 12/424,225 6 having ordinary skill in the art would have considered the claimed invention chemically and physically reasonable: few inventions are not. Moreover, while the claimed process does not necessarily require that the recited steps occur in the order recited—there are no phrases that necessarily link one step to another—the potential breadth of the claims does not constitute evidence that the claimed process would have been obvious. C. Order We reverse the rejection of claims 15-19 and 27-30. REVERSED tc identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”)