Ex Parte Sackstein

Patent Trials and Appeals Board

Jun 6, 2019

13769395 - (D) (P.T.A.B. Jun. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/769,395 02/18/2013
85275 7590 06/10/2019
A.C. Entis-IP Ltd.
6 Raoul Wallenberg Street
Ramat Hachayal
Tel Aviv, 69719
ISRAEL
FIRST NAMED INVENTOR
Shlomo Sackstein
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.
C209-Pl307-US 7298
EXAMINER
AN,MICHAELJ
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
06/10/2019 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):
mail@entis-ip.com
ellen.boer@entis-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHLOMO SACKSTEIN 1
Appeal2018-004662
Application 13/769,395
Technology Center 1700
Before MARK NAGUMO, GEORGIANNA W. BRADEN, and
BRIAND. RANGE, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Biopuremax (2015) Ltd. ("Sackstein") timely appeals
under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending claims 1-
5, 7, 12-21, and 23-26. We have jurisdiction. 35 U.S.C. § 6(b). We affirm-
in-part.
1 The applicant under 37 C.F.R. § 1.46, and hence the appellant under
35 U.S.C. § 134, is the real party in interest, identified as Biopuremax
(2015) Ltd. (Appeal Brief, filed 5 July 2017 ("Br."), 2.)
2 Office Action mailed 4 November 2016 ("Final Rejection"; cited as
"FR").
Appeal2018-004662
Application 13/769,395
A. Introduction 3
OPINION
The subject matter on appeal relates to a method (independent
claim 1) for treating water comprising a step of electrically inducing
dissociation (i.e., "electrolysis") in electrolytic hardness reducer 1304, a step
of non-chemical disinfectant reduction5 (i.e., exposure to ultraviolet ("UV")
radiation) in nonchemical disinfectant reducer 140, and a step of reverse
osmosis ("RO") in reverse osmosis apparatus 180; and a corresponding
system (independent claim 20) for carrying out such a process.
(Spec. 2 [0005]; see Figure 4, not shown here.)
The electrolysis step is said to reduce the water hardness due to
magnesium ions (Mg2+) and calcium ions (Ca2+) by precipitating scale
[MgC03 or CaC03, respectively] at the cathode. (Id. at 4 [0010].) As a
result, sections of the water treatment system downstream of the electrolytic
hardness reducer are said to remain substantially free of scale.
(Id. at [0011].)
The '395 Specification discloses that, "[ w ]ater provided by municipal
water supply may also be treated by adding disinfectants such as free
3 Application 13/769,395, Method and system for treating water,
filed 18 February 2013. We refer to the '"395 Specification," which we cite
as "Spec."
4 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
5 Throughout the '395 Specification and claims, the term "reducing," when
applied to disinfectants, is used in the general sense of "diminishing the
quantity of," and not in the electrochemical sense of adding electrons.
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chlorine, chloramine and ozone in order to deactivate microorganisms
present in the water." (Id. at 1 [0003].) Such disinfectants are said to be
"strong oxidizing agents which may have the potential of inflicting damage
to piping and equipment used in pharmaceutical and microelectronics
industries by causing oxidation, e.g., of metals, ... and/or of membranes and
resins." (Id. at 1-2 [0004].) Although the '395 Specification appears to be
silent on the matter, the record makes clear that it was well known in the art
that "strong oxidizing agents, such as chlorine, have a deleterious effect on
certain thin film membranes, such as those used in RO units." (Atnoor, 6
col. 1, 11. 31-33.) Consistently, the '395 Specification teaches that it is
desirable to substantially remove disinfectants from water to obtain suitable
feed water for RO treatment and other oxidation-sensitive processes.
(Id. at 2 [0005].) The Specification reveals that this can be done by
providing a UV light source such as a "UV medium pressure lamp having a
wide emission spectrum." (Id. at 9-10 [0045].) Such a lamp is said to be
able to reduce "the concentration of disinfectants (e.g., free chlorine and/or
chlorine compounds) dissolved in the water ... to about 0.05 parts per
million (ppm) or less, as CaC03 equivalent."
The Specification refers to the steps of reducing water hardness and
substantially removing disinfectants as "pretreatment." (Id. at 10 [004 7].)
The pretreated water may then be processed by reverse osmosis
apparatus 180, as shown in Figure 4 (not reproduced here). 7
6 Full citation at n.12, infra.
7 According to Atnoor, "[a]s known in the art, RO can remove nearly all
contaminants from feedwater." (Atnoor, col. 10, 11. 62---63.)
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Application 13/769,395
Among the advantages of operating the water treatment system in a
"substantially chemical-reagent free manner at least with respect to the
processes of lowering water hardness and disinfectant concentration in
water" are said to be "improvement in operational reliability and cost
reduction ... with respect to equipment of treatment system 100 such as
pumps, piping, instrumentation and or controls for the production of
pretreated feed and high quality water." (Id. at 26 [0086].) In particular, the
reverse osmosis filter apparatus can be expected to have a longer useful life.
In preferred embodiments, the electrolytic hardness reducer, the UV
disinfectant reducing apparatus, and the piping ( and a storage tank, if
present), may be sanitized by running hot water through them, further
reducing biofouling and extending their useful operational life
(id. at 26 [0096]-[0098]; see also claims 2--4 (id. at 18)), as well as that of
the RO apparatus (id. at 27 [0089]).
Independent claim 1 reads:
A method for treating water received at a treatment system,
the method comprising:
reducing the hardness of the water by subjecting the
water to electrolysis by an electrolytic hardness reducer;
substantially removing disinfectant from the water by
irradiating the water with ultraviolet light by a UV
disinfectant reducer; and
subjecting the water to reverse osmosis.
(Claims App., Br. 18; some formatting, and emphasis added.)
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Application 13/769,395
Remaining independent claim 20 reads:
A water treatment system, comprising:
an electrolytic hardness reducer;
an ultraviolet disinfectant reducer
that is in fluid communication with and downstream from
the electrolysis hardness reducer; and
a reverse osmosis apparatus.
(Claims App., Br. 20; some formatting and emphasis added.)
The only required sequence of steps or elements in either independent
claim is recited in claim 20, which requires that the ultraviolet disinfectant
reducer be in fluid communication with and downstream from the
electrolysis hardness reducer. The steps recited in claim 1 need not occur in
the recited order, as illustrated by claim 5, which depends from claim 1 and
must, therefore, further limit claim 1. Claim 5 requires that water run first
through the electrolytic hardness reducer and then through the ultraviolet
disinfectant reducer for the recited reductions. Thus, claim 1 cannot be
limited to the sequence of steps required by claim 5.
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Application 13/769,395
The Examiner maintains the following grounds of rejection 8, 9 :
A[AA] 10. Claims 1, 5, 17, 18, 25, and 26 stand rejected under 35 U.S.C.
§ I03(a) in view of the combined teachings of Leung 11 and
Atnoor. 12 [Yu. 13]
Al [AAI]. Claims 2 and 3 stand rejected under 35 U.S.C. § I03(a) in view
of the combined teachings of Leung, Atnoor, and Arba. 14 [Yu.]
A2[AA2]. Claim 4 stands rejected under 35 U.S.C. § I03(a) in view of the
combined teachings of Leung, Atnoor, Arba, and Eisenhower. 15
[Yu.]
A3[AA3]. Claim 7 stands rejected under 35 U.S.C. § I03(a) in view of the
combined teachings of Leung, Atnoor, and Nyberg. 16 [Yu.]
8 Examiner's Answer mailed 13 September 2016 ("Ans.").
9 Because this application was filed before 16 March 2013, the effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
10 The square brackets indicate a parallel rejection that applies further the
additional square bracketed reference, Yu.
11 Chan Ming Leung and Hong Chua, Enhanced photocatalytic system, U.S.
Patent Application Publication 2005/0218084 Al (2005).
12 Devendra Atnoor et al., Process for removing strong oxidizing agents
from liquids, U.S. Patent No. 6,328,896 Bl (2001).
13 Yu Qing et al., Device for removing residual chlorine in water through
ultraviolet radiation, CN 202705085 (U) (2013-01-30). ["Yu" is the first
inventor's surname.]
14 John W. Arba et al., Electrodeionization device and methods of use, U.S.
Patent Application Publication 2005/0016932 Al (2005).
15 Bryan A. Eisenhower et al., Sanitary operation of a hot water heat pump,
U.S. Patent Application Publication 2006/0071090 Al (2006).
16 Eric D. Nyberg, Electrochemically assisted ion exchange, U.S. Patent
No. 5,788,826 (1998).
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Application 13/769,395
A4[AA4]. Claims 12-16 stand rejected under 35 U.S.C. § I03(a) in view of
the combined teachings of Leung, Atnoor, Horton 17, and Ruehr. 18
[Yu.]
A5[AA5]. Claim 19 stands rejected under 35 U.S.C. § I03(a) in view of the
combined teachings of Leung, Atnoor, and Elyanow. 19 [Yu.]
B[BB]. Claim 20 stands rejected under 35 U.S.C. § I03(a) in view of the
combined teachings of Leung and Atnoor. [Yu.]
Bl[BBI]. Claims 21 and 23 stand rejected under 35 U.S.C. § I03(a) in view
of the combined teachings of Leung and Atnoor. [Yu.]
BB2. Claim 2420 stands rejected under 35 U.S.C. § I03(a) in view of
the combined teachings of Leung, Yu, and Atnoor.
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
As a preliminary matter, we find the appellant, Sackstein, bases all
arguments for patentability on independent claim 1. Although independent
claim 20 is cited along with claim 1 throughout the Brief, Sackstein does not
raise distinct arguments for the patentability of claim 20, or for any of the
dependent claims.
17 Isaac B. Horton, III, Ultraviolet wastewater disinfection system and
method, U.S. Patent No. 6,403,030 B 1 (2002).
18 Thomas A. Ruehr et al., Pre-treatment reverse osmosis water recovery
methodfor brine retentate metals removal, U.S. Patent No. 8,101,083 B2
(24 January 2012)
19 Irving Elyanow et al., Water desalinization plant and system for the
production of pure water and salt, U.S. Patent Application Publication
2010/0163471 Al (2010).
20 This is the only rejection of claim 24.
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Sackstein's arguments follow sequentially the three or four major
points identified by the Examiner in the Advisory Action21 in the course of
explaining why Sackstein's arguments for patentability were not persuasive.
Sackstein adds a pair of "additional arguments." We address Sackstein' s
arguments for patentability in generally reverse order, beginning with the
arguments against a prima facie case of obviousness. On appeal, the burden
is on the Appellant to identify harmful error in the rejections. In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) ("even assuming that the examiner had
failed to make a prima facie case, the Board would not have erred in framing
the issue as one of 'reversible error.' ... it has long been the Board's
practice to require an applicant to identify the alleged error in the examiner's
rejections.").
1
Sackstein urges that a person having ordinary skill in the art would
have been discouraged from combining the teachings of Leung, Atnoor, and
Yu. According to Sackstein (Br. 15, 11. 3-9), Atnoor reports that "[t]he
results [ of an earlier study] show that uneconomically high UV dosage
requirements clearly favor treatment of trace levels of free chlorine and
chloramines rather than use of this technique as a primary means of
dechlorination." (Atnoor, col. 4, 11. 16-20.) Furthermore, Atnoor concludes,
"[f]rom an economic standpoint, the flowrates needed for the essentially
complete chlorine removal necessary for RO pretreatment were
unsatisfactory (i.e., less than 3.43 x 10-2 gpm [about 0.13 1/min])."
21 Advisory Action communicated 5 May 2017 ("Adv.").
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Application 13/769,395
(Id. at 11. 26-29.) Atnoor reports chlorine levels at various stages of the
water treatment process in Table 1 (Atnoor, col. 13) for various flow rates
and initial chlorine concentrations, reproduced below.
5.)J
5 .. :D
{ Atnoor Table 1 is shown below}
'[r\BI£ I
03)8
1.SC=
().9:5
{Table 1 shows chlorine concentrations at three points in Atnoor' s system}
Sackstein concludes, "it is readily apparent [from Atnoor, Table 1]
that only treatment with a softener following UV irradiation reduces chlorine
concentration to levels that are permissible for RO membrane feed."
(Br. 15, 11. 10-12.) Moreover, in Sackstein's view, the routineer would have
concluded from the teachings of Atnoor and Yu, "that complete removal of
disinfectants such as free chlorine using UV irradiation is a time-consuming
and sub-optimal process, and that, therefore, subjecting water to electrolysis
that is well-known to generate free radicals and other oxidant species would
have an undesirable effect of increasing the time required to subsequently
remove the disinfectant from the water using UV irradiation." (Id.
at 11. 14-18; see id. at 14, 11. 6-11.)
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Sackstein urges further that the Examiner erred harmfully in finding
an adequate motivation to combine the teachings of Leung and of Atnoor.
(Br. 15-16.) More particularly, Sackstein argues that Leung describes a
system "for enhancing production of oxidizing agents through photocatalytic
oxidation in water treated therein." (Id. at 15, 11. 18-19.) In contrast,
according to Sackstein, Atnoor describes a device that is "configured to
reduce the concentration of oxidizing agents." (Id. at 16, 11. 4-5.) Thus,
Sackstein concludes, the combination of the teachings would have rendered
Leung's system unsatisfactory for its intended use, negating motivation.
(Id. at 11. 14-17.) Similarly, Sackstein argues that Yu's teachings of
eliminating residual chlorine in water "would render Leung' s system
unsatisfactory for its intended use." (Id. at 11. 19-24.)
We are not persuaded of harmful error by this latter argument,
standing alone. Sackstein appears to overlook or misapprehend the
Examiner's point that a person having ordinary skill in the art would have
considered the purpose of each disclosed step in the references, as well as
the ultimate use of the water treated by each reference, when considering
whether to combine those teachings with appropriate, adaptations or
modifications.
However, taken in context with the first argument, the ultimate
question becomes whether it would have been obvious to couple an
electrolytic hardness reduction step with an ultraviolet disinfectant removing
step as a source of feed water to a reverse osmosis unit.
Before we address this ultimate question, we must address first the
question of what is meant by "substantially removing disinfectant from the
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Application 13/769,395
water by irradiating the water with ultraviolet light by a UV disinfectant
reducer." (Claims App., Br. 18, emphasis added.) The Examiner finds
Atnoor discloses that chlorine damages RO units (FR 4, ,r 11 ), and that
Atnoor discloses "using a UV disinfectant reducer," i.e., "(Figure 3,
irradiation unit 58 and treatment unit 72) to remove substantially all chlorine
from the liquid before entering the RO membrane (See Col. 11, lines 16-22)
to 0.01 to zero ppm (See Col. 13, Table 1, concentration of chlorine in ppm
of Softener Outlet Concentration)." (FR 4, ,r 12.) The Examiner refers
expressly to the combination of irradiation unit 58 and treatment unit 72 as a
"UV disinfectant reducer." The Examiner appears to interpret the recited
UV disinfectant reducer as open to additional, non-ultraviolet active
components. The Examiner states further, "[i]t is noted that Claim 1 and 20
recites 'substantially removing disinfectant from water by irradiating the
water' and recites broadly that any amount of disinfectant removed from
water meets the claim limitation." (Ans. 7, 11. 15-17 (emphasis added).)
Thus, the Examiner appears to interpret the phrase "substantially removing
disinfectant from the water by irradiating the water with ultraviolet light by a
UV disinfectant remover" as being met removing any amount of disinfectant
by any method that includes UV irradiation.
The presence in the preamble of claim 1 of the "open" transitional
phrase, "comprising," does not necessarily open each and every limitation
recited in the claim. The plain reading of the phrase, "substantially
removing disinfectant from the water by irradiating the water with
ultraviolet light by a UV disinfectant reducer" is that disinfectant is
substantially removed by the effects of the irradiation of the water, exclusive
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of other means of removing disinfectant. 22 The descriptions in
the '395 Specification are consistent with the UV disinfectant reducer being
strictly non-chemical. The Specification discloses, for example, "a system
and method for treating water employing a non-chemical softener ... and a
non-chemical disinfectant reducing apparatus." (Spec. 2 [0005]; 9 [0045]
( describing the embodiment shown in Figure 1 ). ) The system is said to be
"free of organic resins, so that the development of biofilm in the system's
piping and/or equipment at least in that respect may be significantly retarded
or prevented." (Id. at [0006].) Moreover, all the advantages of the system
are said to arise from the non-chemical character of these units: "water
treatment system 100 may be operable in a substantially chemical-reagent
free manner at least with respect to the processes of lowering water hardness
and disinfectant concentration in water." (Id. at 26 [0086].)
While claims during examination are to be given the broadest
reasonable interpretation, they must be read in light of the Specification. In
this case, both the "plain meaning" of the phrase in the claim and the
consistent disclosure weigh against the Examiner's broad interpretation.
The Examiner has not directed our attention to any disclosure in the
Specification or elsewhere in the record indicating that a person having
ordinary skill in the art would have thought Sackstein seeks patent coverage
22 In other words, while the claim is open-ended to other means of removing
disinfectant, the act of "irradiating the water with ultraviolet light by a UV
disinfectant reducer" has to result in "substantially removing disinfectant
from the water." This stands in contrast to, for example, a process where
chemical means remove some of a substantial portion of the disinfectant
from the water.
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including chemical means for "substantially removing disinfectant. .. by
irradiating the water with ultraviolet light."23
Atnoor makes clear that removing disinfectant by UV irradiation of
municipally treated water, except at low flow rates, e.g., 2.5 gallons per
minute (see Atnoor, Table 1 at col. 13)), does not lower the concentration of
disinfectant enough to be acceptable for further treatment by reverse
osmosis. 24 Although we do not find Sackstein's presentation of the
argument particularly clear, the Examiner has not directed our attention to
23 Whether photocatalytically enhanced UV treatment, as disclosed by
Leung, is included in or excluded from this limitation is an interpretive issue
that does not appear to have been considered thus far in detail. In the event
of further examination, the Examiner and Sackstein might find it useful to
explore whether the present language of claim 1 excludes photocatalytic
coatings, such Ti02, disclosed by Leung, or whether additional language is
necessary. Such considerations would necessarily involve detailed fact-
finding relating to the meaning of the Specification to a person having
ordinary skill in the art. Because the record is relatively undeveloped in this
regard, we neither express nor imply an opinion as to the resolution of this
issue.
24 Atnoor reveals that "[t]he apparatus of the present invention is capable of
reducing this chlorine concentration [i.e., about 1 ppm (id. at col. 5, 11. 35-
37)] to less than about 0.05 ppm, which will minimize deleterious effects for
particular applications, or in downstream equipment such as RO membranes
and the like" (id. at col. 5, 11. 36-40). Table 1, Run Number 1, shows a UV
Outlet Concentration of chlorine 0.04 ppm, i.e., less than the 0.05 ppm
chlorine concentration acceptable for RO treatment. It may also be pertinent
to consider the role of the disclosed smallest permeate capacity
(about 50 1/hr -13.2 gal/hr]; Spec 26 [0085]), more than a factor of 11 less
than the minimum flow rate described by Atnoor (2.5 gpm [= -150 gal/hr]),
in determining whether the routineer would have had a reasonable
expectation of applying successfully Atnoor' s teaching to an apparatus such
as the one disclosed by Leung.
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substantial evidence that the ordinary worker would have had a reasonable
expectation of successfully removing the additional burden of strongly
oxidizing species introduced by Leung's electro-activator 50 by UV means
alone, whether as taught by Leung or by Yu.
Thus, on the record established by the Examiner, we reverse the
rejection of claim 1. As the Examiner makes no findings regarding the
corresponding dependent claims or the further references that cure this
fundamental defect, we also reverse the rejections for obviousness of the
corresponding dependent claims.
Claim 20 stands differently because the transitional phrase
"comprising," is "open" to additional steps not recited in the claim. In re
Baxter, 656 F.2d 679, 686 (CCPA 1981) ("the term 'comprises' permits the
inclusion of other steps, elements, or materials."). Claim 20, unlike claim 1,
does not require any particular degree of reduction by the ultraviolet
disinfectant reducer. It is clear from Atnoor (as well as Yu), that wide-
spectrum ultraviolet irradiation alone is capable of decomposing chlorine
and other disinfectants and thereby reducing the amount of disinfectants to
some extent. There is no dispute, as the Examiner found (FR 17, ,r 73, that
Leung discloses UV reactor 20 in fluid communication with and
downstream from electrolytic hardness reducer 50. Leung states that the
"purifying and disinfecting actions [ of the photocatalytic reactor] include but
are not limited to the oxidation and decomposition of inorganic or organic
compound(s) antibacterial and antimicrobial activities." (Leung 2 [0017].)
Atnoor teaches that " [a] combination of lamps producing UV radiation in
both the 185 nm and 254 nm ranges has also been shown to be effective in
photooxidating organic compounds." (Atnoor, col. 4, 1. 66-col. 5, 1. 2.)
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Yu discloses that UV irradiation can be used to decompose residual chlorine,
e.g., hypochlorous acid and sodium hypochlorite. (Yu translation, 5, 11. 3-
5.) Thus, even if, counterfactually, Leung taught only microcidal uses of
UV radiation, it would have been prima facie obvious to modify Leung's
system with sources of the broader spectrum UV radiation taught expressly
by Atnoor----or sources of UV radiation appropriate to obtain the chlorine-
eliminating effects disclosed by Yu.
We are thus not persuaded by these arguments of harmful error in the
rejection of claim 20.
2
Sackstein contends the Examiner erred in discounting the time
between the disclosure of the claimed invention, the disclosure of Atnoor
(more than 11 years), and the disclosure of Leung (more than seven years).
Sackstein urges (Br. 13) that, as the court found in a similar case, "[i]f these
discoveries and advances were routine and relatively easy, the record would
undoubtedly have shown that some ordinary artisan would have achieved
this invention within months of [the applied references]. Instead this
invention does not appear for more than a decade." Leo Pharm. Products,
Ltd. v. Rea, 726 F.3d 1346, 1354 (Fed. Cir. 2013).
This argument is not persuasive with respect to claim 20, as Leo is
readily distinguished on the facts. In Leo, the court explained, "[t]he
inventors ... recognized and solved a problem with the storage stability of
certain formulations-a problem that the prior art did not recognize and a
problem that was not solved for over a decade." 726 F.3d at 1353. In the
present case, by contrast, Atnoor recognizes the problem that oxidative
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species added to municipal water for microbial control are harmful to
reverse osmosis membranes. Atnoor also teaches a method to ameliorate-
indeed, to eliminate-that problem. Thus, Atnoor would have suggested
adding a water softening unit or a metal redox unit to a water treatment
apparatus comprising, in order, an electrolysis unit, a UV-irradiation unit, as
taught by Leung. Claim 20 does not exclude the additional water softening
unit or metal redox unit, and hence would have been prima facie obvious in
view of the combined teachings of Leung and Atnoor, as well as in view of
the further teachings of Yu.
3
Finally, we tum to Sackstein's arguments that the Examiner erred in
not according persuasive weight to inventor Sackstein's two Declarations in
support of the secondary considerations of commercial success and industry
praise. In particular, Sackstein contends the Examiner erred in concluding
that the embodiments sold were not "exactly the same being claimed."
(Id. at 6.)
It is well-settled that "a nexus between the merits of the claimed
invention and evidence of secondary considerations is required in order for
the evidence to be given substantial weight in an obviousness decision."
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir. 2008)
(internal quote and citations omitted25). The court has explained that this
nexus requires that "commercial success or other secondary considerations
may presumptively be attributed to the patented invention only where the
25 Abrogation, on grounds not relevant here, recognized in Travel Sentry,
Inc. v. Tropp, 877 F.3d 1370 (Fed. Cir. 2017).
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marketed product embodies the claimed features, and is coextensive with
them." Id. at 1328 (internal quotes and citations omitted). But it is also
well-settled that other aspects of commercial success, including the level of
experience in the market, the degree of market power, evidence of industry
acceptance and copying by others, and any affidavits, must be considered
and weighed by the finder of fact. Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996). In particular, the
strength of the evidence of commercial success, such as sales, must be
supported by evidence of record. In re Huang, 100 F.3d 135, 140 (Fed.
Cir. 1996) ("Although Huang's affidavit certainly indicates that many units
have been sold, it provides no indication of whether this represents a
substantial quantity in this market."); Cable Elec. Prods., Inc. v. Genmark,
Inc., 770 F.2d 1015, 1026-27, (Fed. Cir. 1985) (finding that sales
of 5 million units represent a minimal showing of commercial success
because "[ w ]ithout further economic evidence ... it would be improper to
infer that the reported sales represent a substantial share of any definable
market").
In the present case, even accepting, arguendo, that the units sold
embody the claimed features and are coextensive with them, the declarations
provide no indication of whether the -$4,600,000 reported in sales up to the
end of 2015 (a total of five units) (Second Sackstein Declaration 4, ,r 1426),
in Israel (id. at 5, ,r 19) 6, ,r 21) represent a significant share of a definable
market. Without further evidence, it is also difficult to evaluate the
26 But the bar graph presented in ,r 19, showing sales in 2010, 2011,
and 2015, appears to show-$ 3.6 million in sales (-$0.7 + $0.6 + $2.3 =
-$3.6).
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significance of the sales of the previously sold Softener Resin and Active
Carbon System (id. at 4, ,r 17, to 5, ,r 18), and the absence of sales of that
system after the introduction of units covered by the appealed claims
(id. at 4, ,r 17). The sharp and steady decline in sales of the Softener Resin
System in the period 2006 (-$800K) though 2009 (-$200K) shown in the
bar graph (id. at 5, ,r 18) as well as the considerable variability in sales
(1998-99, 2001-2002), and the absence of reported sales in certain years
(2000, 2003-2005) indicate that other than essentially technological factors
may have played a large role in the sales. Therefore, we determine
Sackstein has failed to demonstrate a nexus between the alleged commercial
success and the rejected claims.
Additionally, it is difficult to determine the significance of the Article
of the Year, Pharmaceutical Engineering award presented to Mr. Sackstein
in 2014 (Second Sackstein Declaration, Appendix H). Even more
problematic, due to the great number of nontechnical factors involved in
business success, is the Frost & Sullivan Entrepreneurial Company of the
Year Award (2015) (Second Sackstein Declaration, Appendix I). Therefore,
we determine Sackstein has failed to demonstrate a nexus between the
alleged industry praise and the rejected claims.
Accordingly, we conclude Sackstein has not shown harmful error in
the Examiner's evaluation of the evidence supporting secondary
considerations of nonobviousness, particularly with respect to claim 20, the
rejection of which we have affirmed.
18
Appeal2018-004662
Application 13/769,395
C. Order
It is ORDERED that the rejections of claims 1-5, 7, 12-19, 25, and 26
are reversed.
It is FURTHER ORDERED that the rejections of claims 20-24 in
view of the combined teachings of Leung, Atnoor, and Yu are 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).
AFFIRMED-IN-PART
19