Ecolab USA Inc.

Patent Trials and Appeals Board

Jul 30, 2020

15000919 - (D) (P.T.A.B. Jul. 30, 2020)

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.
15/000,919 01/19/2016 Lee J. Monsrud P10529US02 - 2699USD1 8697
124330 7590 07/30/2020
McKee, Voorhees & Sease P.L.C. ATTN: Ecolab Inc
801 Grand Avenue
Suite 3200
Des Moines, IA 50309
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
07/30/2020 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):
michelle.woods@ipmvs.com
patatty@ipmvs.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEE J. MONSRUD, XIN SUN, KRISTEN A. MILLS,
DOUGLASS J. PRIDEAUX, BETH E. BENSON,
KIM R. SMITH, and KEITH E. OLSON

Appeal 2019-005911
Application 15/000,919
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
DONNA M. PRAISS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–7, 11, 12, 14, and 20–30. An
Oral hearing was held on July 20, 2020.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Ecolab USA
Inc. Appeal Br. 1.
2 A written transcript of the Oral hearing will be entered into the record
when the transcript is made available.
Appeal 2019-005911
Application 15/000,919

2
STATEMENT OF THE CASE
Appellant’s invention is generally directed to apparatuses that are
capable of controlling water hardness and scale formation. (Spec. 1.)
According to the Specification, the apparatuses of the present invention do
not control water hardness by ion exchange mechanisms. (Id. at 8.) Claim 1
illustrates the subject matter on appeal and is reproduced below:
1. A method for treating water comprising:
contacting a water source with a water treatment composition to
form a treated water;
wherein the water treatment composition comprises a
substantially water insoluble resin material loaded with a
plurality of multivalent cations comprising magnesium ions,
wherein the substantially water insoluble resin is an
exhausted weak acid cation exchange resin; and
wherein the substantially water insoluble resin material is pre-
conditioned to exhaustion and provides a polyacrylate
material having a molecular weight of less than about
20,000 to the water and comprises a polymer selected from
the group consisting of an acrylic acid polymer crosslinked
with a polyvinyl aromatic composition and a methacrylic
acid polymer crosslinked with a polyvinyl aromatic
composition;
providing the treated water to a water main, automatic washing
machine, and/or manual washing machine; wherein scale
formation is reduced in the water main, automatic washing
machine, and/or manual washing machine, in comparison
with providing untreated water to the water main, automatic
washing machine, and/or manual washing machine;
wherein the treated water source comprises at least about 4 ppm
total organic carbon.

Appeal Br. 36, Claims Appendix.

Appeal 2019-005911
Application 15/000,919

3
The following rejections are presented for our review:3
I. Claims 1–2, 4–7, 11, 12, 14, and 20–30 are rejected under 35 U.S.C.
§ 112(a) as lacking enablement.
II. Claims 1–2, 4–7, 11, 12, 14, and 20–30 are further rejected under
35 U.S.C. § 112(a), as failing to comply with the written description
requirement.4
III. Claims 1–2, 4–7, 11, 12, 14, and 20–30 are further rejected under
35 U.S.C. § 112(b), as indefinite.5
IV. Claims 1–2, 4–7, 11, 12, 14, and 20–30 rejected under 35 U.S.C.
§ 103 as unpatentable over Smolka (US 4,120,653; Oct. 17, 1978) in view of
the Product Information Sheets for Lewatit S8528 and Amberlite IRC 76.

OPINION
Enablement
“Although not explicitly stated in section 112, to be enabling, the
specification of a patent must teach those skilled in the art how to make and
use the full scope of the claimed invention without undue experimentation.”

3 The complete statement of the rejections on appeal appears in the Final
Office Action. (Final Act. 2–15).
4 The Examiner has withdrawn some of the reasons for rejecting claims 1, 2,
4–7, 11, 12, 14, and 20–30 under § 112 (a). (Ans. 14–15.) However claims
1, 2, 4–7, 11, 12, 14, and 20–30 remain rejected under § 112(a) for the
reasons stated in the Answer. (Ans. 6–9.)
5 The Examiner has withdrawn some of the reasons for rejecting claims 20–
26 under § 112(b). (Ans. 14.) However claims 20–26 remain rejected under
§ 112(a) for the reasons stated in the Answer. (Ans. 10–12.)
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Application 15/000,919

4
In re Wright, 999 F.2d 1577, 1561 (Fed Cir. 1993). Whether undue
experimentation is required is the conclusion reached by weighing many
factual considerations. In re Wands, 858 F.2d 731, 736–37 (Fed Cir. 1988).
Factors to be considered include: (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention,
(5) the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
Id. These factors are illustrative, not mandatory. Streck, Inc. v. Research &
Diagnostic Sys., Inc., 665 F.3d 1269, 1288 (Fed. Cir. 2012).
The burden on the Examiner in the first instance is to “advance
acceptable reasoning inconsistent with enablement.” In re Strahilevitz, 668
F. 2d 1229, 1232 (CCPA 1982). “Thereupon, the burden would shift to
appellant to show that one of ordinary skill in the art could have practiced
the claimed invention without undue experimentation.” Id.
In rejecting claims 1, 2, 4–7, 11, 12, 14, and 20–30 under 35 U.S.C.
§ 112(a) as lacking enablement, the Examiner determines:
The claims as amended recite “wherein scale formation is
reduced in comparison with untreated water.” Such is not supported
by the original disclosure for the entire scope.
The original disclosure teaches only that the scale formation is
reduced compare[d] with the use of untreated water when the water,
which is treated by the method consisting of treating water by passing
through an apparatus comprising loaded (partially exhausted) or fully
exhausted specific resins, is used.

(Ans. 3–4, emphasis omitted.)
We do not sustain the rejection of the claims under 35 U.S.C. § 112(a)
as lacking enablement based on this reasoning.
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The Examiner also determines that not all resins provide the reduction
of scale formation and determines that not all resins within the scope of the
claims provide reduction of scale. (Ans. 4, citing Figs. 2A–B, 4A–B, 5).
We do not sustain the rejection of the claims under 35 U.S.C. § 112(a)
as lacking enablement based on this reasoning. Appellant explains that the
Examiner’s reliance on the figures is misplaced. (Appeal Br. 10–11.)
Appellant explains that the various figures depict embodiments that fall
within the scope of the claimed invention and those which do not. (Appeal
Br. 11–13.) Thus, contrary to the Examiner’s position, the claims do not
encompass resins which fail to provide scale reduction.
The Examiner determines the limitation requiring the treated water to
comprise at least about 4 ppm total organic carbon (TOC) is not properly
enabled by the claimed invention. (Ans. 5–6.) The Examiner specifically
states “it appears that the resins, which provide adequate results provide
higher TOC concentrations than the claimed 4 ppm.” (Ans. 6.)
We do not sustain this reason for rejecting the claims under 35 U.S.C.
§ 112(a) as lacking enablement. The claimed invention specifies “at least
about 4 ppm” TOC, consequently, the claimed invention comprises methods
that result in higher than 4 ppm TOC concentrations. As acknowledged
from the quote above, the Examiner recognizes the present record describes
the treated water that exceeds the minimum 4 ppm TOC required by the
claimed invention. Figure 16 depicts resins that fall within the scope of the
claim producing treated water that exceeds the minimum 4 ppm TOC
required by the claimed invention.

Appeal 2019-005911
Application 15/000,919

6
Written Descriptive Support
The test for determining compliance with the written description
requirement of 35 U.S.C. § 112(a) is whether the disclosure of the
application as originally filed reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subject matter. In re
Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). The Examiner bears the
initial burden of establishing that the original application disclosure as a
whole would not have reasonably conveyed to those skilled in the art that the
inventors had possession of the claimed subject matter at the time the instant
application was filed. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc); In re Alton, 76 F.3d 1168, 1172, 1175–76
(Fed. Cir. 1996) (citing In re Wertheim, 541 F.2d 257, 262–64 (CCPA
1976)); In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989).
In rejecting claims 1, 2, 4–7, 11, 12, 14, and 20–30 under 35 U.S.C.
§ 112(a) as lacking written descriptive support, the Examiner determines:

The claims as amended recite that the treated water
comprises at least about 4 ppm total organic carbon.
The appellants allege that the support for the referenced
limitation is provided by Figures 16, 17, 18A and [t]he
specification.
The examiner could not find the support for the
referenced limitation neither at the cited pats, nor at any other
part of the original disclosure. Figure 18A shows the
relationship between RI Response and the Retention Volume.
The referenced Figure does not show any TOC.
Figure 17 shows Light Box Score for different resins.
The referenced Figure does not show any TOC.
Figure 16 shows TOC on Chlorine Added Shake Up Test
for different resins at 0 ppm, 5 ppm and 10 ppm.
According to the specification this Figure demonstrate[s]
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7
that “the addition of chlorine did boost the TOC levels for three
out of the four resins tested”.
However, nothing in this Figure supports the referenced
limitation of “the treated water comprises at least about 4 ppm
total organic carbon”.
The fact that the addition of chlorine boosts the TOC
levels for some of the resins does not support the referenced
limitation.
The claims do not recite adding of chlorine.
(Ans. 7–8.)
In response to the Examiner’s rejection, Appellant states:
The Examiner incorrectly asserts that the claimed minimum
concentration of 4 ppm TOC does not correspond to the TOC
concentration indicated by the specification: 4 ppm is the lowest
concentration at which the claimed resins demonstrated efficacy, for
the reasons described previously. This limitation further passes the
test for the written description requirement.
(Appeal Br. 16.)
We sustain the Examiner’s rejection. As we have indicated above
when discussing the enablement rejection, the present record describes
embodiments wherein the treated water has a TOC that exceeds 4 ppm. For
example, Figure 16 depicts various exhausted resin materials with the
addition of varying levels of chlorine as described in Example 8, however,
this does not describe a treated water source having a TOC of 4 ppm that is
encompassed by the claimed invention. (Spec. 4, 30.) Appellant has not
directed us to other embodiments of the original Specification or drawings
that describe the claimed method resulting in a treated water source
possessing a TOC of 4 ppm. Appellant has not directed us to embodiments
of the original Specification that describe a special definition for the
language “at least 4 ppm” as required by the claimed invention that excludes
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Application 15/000,919

8
a treated water source having a TOC of 4 ppm.

Claims 14, 24–26
In rejecting claims 14 and 24–26 under 35 U.S.C. § 112(a) as lacking
written descriptive support, the Examiner determines the claims were
amended to recite that the contacting step comprises contacting water source
with the treatment composition at a water flow rate of about 20 to about 175
feet per minute. The Examiner specifically states:
The original disclosure merely states that “the
apparatuses of the present invention have a flow through rate of
about 5 to about 200 feet per minute, about 20 to about 175 feet
per minute, or about 50 to about 150 feet per minute”. No
disclosure of the water flow rate at “contacting” is recited.
(Ans. 9.)
We do not sustain the rejection of the claims under 35 U.S.C. § 112(a)
as written descriptive support based on this reasoning. The portion of the
Specification quoted above by the Examiner establishes the Appellant had
possession of an apparatus having a flow through rate of about 20 to about
175 feet per minute. (Spec. 15.) The Examiner has not adequately
explained how water can flow through an apparatus and not contact the
apparatus.

Indefiniteness
The Examiner determines the term “exhausted” is unclear and
therefore rejects claims 1, 2, 4–7, 11, 12, 14, and 20–30 under 35 U.S.C.
§ 112(b) as indefinite. (Final Act. 11.)
Appellant argues this rejection is erroneous because the term
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9
exhausted is not indefinite when read in light of the Specification. (Appeal
Br. 21–22.)
We do not sustain the rejection of the claims under 35 U.S.C. § 112(b)
as indefinite based on this reasoning. According to the Specification, a resin
may become exhausted when it is loaded with a plurality of multivalent
cations by a variety of methods. (Spec. 13.)

Claims 20–30
The Examiner in the Final Action rejected all of the appealed claims
as indefinite because the amendment inserting the language “wherein the
reduction of scale is in comparison with untreated water” makes the claims
indefinite. (Final Act. 11–12.) The Examiner in the Answer maintained the
rejection of claims 20–30 because Appellant did not amend independent
claims 20 and 27 in the same manner as independent claim 1. (Ans. 12.)
The Examiner specifically stated: “The appellants have not amended claims
20 and 27 to recite ‘in comparison with providing ...’ as in claim 1.” (Ans.
12.) The Examiner determined the language was unclear because it was not
understood what is referenced by “scale formation is reduced in comparison
with untreated water.” The Examiner maintained this rejection in the
Answer. (Ans. 25.)
Appellant in the principal Brief did not respond to the indefiniteness
rejection of claims 20–30. (See Appeal Br. generally.) However, Appellant
provides a response in the Reply Brief. (Reply Br. 12–15.) This argument
presented in the Reply Brief was not raised in the Appeal Brief, and is not
responsive to new arguments raised in the Examiner’s Answer. Contrary to
Appellant’s position, the Examiner merely indicated that Appellant had not
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amended independent claims 20 and 27 in the same manner that claim 1 was
amended. Appellant has not presented good cause for raising the argument
for the first time in the Reply Brief. Appellant’s argument that the Examiner
has entered a new rejection of claims 20–30 is not persuasive because the
Examiner in the Answer merely indicated the rejection should be sustained.
(Ans. 25.) Thus, in accordance with 37 C.F.R. § 41.41 (b)(2), we will not
consider this argument.

Prior Art rejection
After review of the respective positions Appellant and the Examiner
provide, we determine that Appellant has demonstrated reversible error in
the Examiner’s rejection under 35 U.S.C. § 103. We limit our discussion to
independent claim 1.
The dispositive issue for this rejection is:
Did the Examiner reversibly err in determining that Smolka alone or
in combination with Lewatit S8528 and Amberlite IRC 76 would have
described or suggested a method for treating water comprising contacting a
water source with a water treatment composition comprising an exhausted
weak acid cation exchange resin (a substantially water insoluble resin
material) as required by independent claim 1?
The issue of whether Smolka describes an apparatus comprising an
exhausted resin was decided in the affirmative in the appeal of application
US 12/764,621, Appeal 2019–002513.
Appellant argues Smolka teaches the use of resins which are removed
before they are fully exhausted and therefore Smolka never teaches the use
of exhausted resins. (Appeal Br. 27–30.) Appellant specifically states:
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Application 15/000,919

11
Smolka never teaches the use of exhausted resins; rather,
Smolka teaches the use of resins which are removed before they are
fully exhausted. In contrast, the resins claimed are pre-conditioned to
exhaustion and do not control water hardness by ion exchange
mechanisms; thus, the claimed methods [are] not obvious in view of
Smolka.
(Appeal Br. 29, emphasis omitted.)

The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
The Examiner has failed to direct us to evidence that Smolka teaches
the use of exhausted resins to treat water. The Smolka process utilizes a
filter element comprising an ion exchange resin material to soften freshwater
to obtain desired hardness. (Smolka col. 4, ll. 16–21.) Smolka in operation
discloses water flows through the apparatus contacting the ion exchange
material resulting in an exhausted exchanger. (Smolka col. 11, ll. 15–37.)
Smolka teaches the use of several ion exchanger units that, upon exhaustion
of the ion exchange material, allows for the replacement of filters
comprising exhausted resins to be performed without interrupting the
cleaning process. (Smolka col. 11, ll. 33–47.) The Examiner relies on
Lewatit S8528 and Amberlite IRC 76 to suggest suitable resin materials for
the ion exchanger and not the utilization of exhausted resin for treatment of
water.
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12
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103
rejection of all the claims on appeal.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–7, 11,
12, 14, 20–30 112(a)
Enablement
Requirement

1, 2, 4–7,
11, 12, 14,
20–30
1, 2, 4–7, 11,
12, 14, 20–30 112(a)
Written Description
Requirement
1, 2, 4–7,
11, 12, 14,
20–30

1, 2, 4–7, 11,
12, 14, 20–30 112(b) Indefiniteness 20–30
1, 2, 4–7,
11, 12, 14

1, 2, 4–7, 11,
12, 14, 20–30 103
Smolka,
Lewatit S8528,
Amberlite IRC 76

1, 2, 4–7,
11, 12, 14,
20–30

Overall
Outcome
1, 2, 4–7,
11, 12, 14,
20–30

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED