Ex Parte Allen

Patent Trial and Appeal Board

Aug 5, 2016

12859107 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/859, 107 08/18/2010
21999 7590 08/05/2016
KIRTON MCCONKIE
Key Bank Tower
36 South State Street, Suite 1900
SALT LAKE CITY, UT 84111
FIRST NAMED INVENTOR
Stephen D. Allen
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.
14260.26 7287
EXAMINER
NORRIS, CLAIRE A
ART UNIT PAPER NUMBER
1778
MAILDATE DELIVERY MODE
08/05/2016 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 STEPHEN D. ALLEN
Appeal2016-006088
Application 12/859, 107
Technology Center 1700
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1--4, 8-13, and 15-19 of
Application 12/859,107 under 35 U.S.C. § 103(a) as obvious. Final Act.
(April 16, 2015). 1 Appellant2 seeks reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 On July 14, 2014, a Petition to Make Special was granted based upon the
inventor's age. We, therefore, take up this appeal out of tum.
2 Water Solutions, Inc. is identified as the real party in interest. Appeal
Br. 3.
Appeal2016-006088
Application 12/859, 107
BACKGROUND
The '107 Application describes methods for treating contaminated
water obtained from gas wells. Spec. i-f 2. Prodigious amounts of
contaminated water can be produced from wells that have been stimulated
by hydraulic fracturing. Id. i-f 5 (estimating that a single company in a single
location can produce almost 3,000,000 gallons of contaminated water per
day).
Claim 1 is representative of the '107 Application's claims and is
reproduced below:
1. A method for treating contaminated water resulting from
hydraulic fracturing of a gas well, the method comprising:
providing the contaminated water comprising one or
more of flow back water or frac' ed well water, the
contaminated water comprising total dissolved solids (TDS) of
at least about 19,700 mg/L;
ensuring that the pH of the contaminated water is
between about 7 .2 and about 7. 7;
adding an inorganic coagulant and a polymer to the
contaminated water selected to increase a size of contaminants
and particulates in the contaminated water and to form non-
tacky and non-deforming flocculent particles having a diameter
in the range from about 20 microns to about 150 microns;
ensuring that the inorganic coagulant has an initial
concentration in the contaminated water between about
100 mg/Land about 425 mg/L;
ensuring that the polymer has an initial concentration in
the contaminated water between about 5 mg/L and about
200 mg/L;
using a microfilter membrane to remove the flocculent
particles from the contaminated water, wherein the
contaminated water is passed through the microfilter membrane
at a back pressure less than about 20 psi, and wherein the
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contaminated water is treated at a rate of at least 7 50 gallons per
square foot of microfilter membrane, per day; and
periodically backwashing the microfilter membrane to
remove collected flocculent particles.
Appeal Br. 25 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1--4, 8-11, 13, and 15-19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Allen3 and
Lombardi. 4 Final Act. 3; Answer 3.
2. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Allen, Lombardi, and Hassick. 5 Final Act. 12;
Answer 12.
3. Claims 1--4, 8-11, 13, and 15-19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Lombardi, Allen,
and Smith. 6 Final Act. 15; Answer 15.
4. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Lombardi, Allen, Smith, and Hassick. Final
Act. 28; Answer 28.
3 US 6,428,705 Bl, issued August 6, 2002.
4 US 2007/0102359 Al, published May 10, 2007.
5 US 4,800,039, issued January 24, 1989.
6 US 2002/0096472 Al, published July 25, 2002.
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DISCUSSION
Appellant presents four arguments for reversal of the rejections
maintained by the Examiner. See Appeal Br. 15-23. In particular,
Appellant argues that the Examiner has not established that (1) a person
having ordinary skill in the art would have had a reasonable expectation of
success in combining Allen and Lombardi, id. at 18-20; (2) a skilled artisan
would expect at least some degree of predictability in combining Allen and
Lombardi, id. at 20-22; (3) a person having ordinary skill in the art would
have had a reasonable expectation of success in combining Allen, Lombardi,
and Hassick, id. at 22-23; and (4) a person having ordinary skill in the art
would have had a reasonable expectation of success in combining Allen,
Lombardi, and Smith, id. at 23.
We note that Appellant's Appeal Brief does not specify to which
rejection each of these arguments applies. In so doing, Appellant's Appeal
Brief fails to comply with our rules, which require that "[e]ach ground of
rejection contested by appellant must be argued under a separate heading,
and each heading shall reasonably identify the ground of rejection being
contested (e.g., by claim number, statutory basis, and applied reference, if
any)." 37 C.F.R. § 41.37(c)(l)(iv) (2014). Due to this failure, we are forced
to try to infer which arguments apply to which ground of rejection. As we
discuss each of Appellant's arguments, we shall state the particular grounds
of rejection to which we believe that argument applies.
We also note that Appellant has not argued for reversal of any of these
four rejections with respect to the limitations recited in any particular claim.
See Appeal Br. 15-23. Unless otherwise noted, we limit our discussion to
independent claim 1 with the understanding that our analysis applies with
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equal force to independent claims 11 and 12 and to all of the dependent
claims on appeal.
Appellant's Argument 1. Appellant argues
The Office has failed to show that a skilled artisan would
have a reasonable expectation of success in combining a
process for removing trace metals and suspended solids from
wastewater containing trace amounts of metals, suspended
solids, and low concentrations of dissolved solids as disclosed
by Allen, with a process for removing dissolved solids from
hydraulic fracturing wastewater containing high levels of
dissolved solids, as disclosed by Lombardi. Instead, the Office
has erroneously asserted that the process disclosed in the Allen
patent is not limited to any specific type of wastewater, but that
the process claimed in the Allen patent may be applied to any
wastewater, "generated from petroleum industry to remove
heavy metals and other types of contaminants from the
wastewater; and the method can be applied to wastewater
containing a large amount of solid contaminants." See Office
Action, Items 4, 6, 21, 30, and 32.
Appeal Br. 18.
Considered as a whole, Appellant's argument seems to be focused
upon the Examiner's analysis as set forth in Rejections 1 and 2. In
particular, Appellant only cites arguments made by the Examiner in
Rejection 1. In an abundance of caution, however, we shall assume that
Appellant intends for this argument to apply to all four of the grounds of
rejection set forth in the Final Action.
For the reasons set forth below, we find this argument to be
persuasive with respect to Rejections 1 and 2, but do not find it to be
persuasive with respect to Rejections 3 and 4.
Rejections 1 and 2. In rejecting claim 1, the Examiner found that
Allen describes each of the claim's limitations except for the requirement
that the contaminated water comprises "one or more of flow back water or
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frac' ed well water, the contaminated water comprising total dissolved solids
(TDS) of at least about 19,700 mg/L," Final Act. 4--5, and the requirement
that the flocculent particles that are formed are non-deforming, id. at 5. The
Examiner further found that Lombardi describes the treatment of
contaminated water having a TDS content of 35,000 mg/L provided from
hydraulic fracturing of a gas well. Id. at 4--5.
The Examiner further states that
Applicant argues that it is erroneous for the Examiner to
declare that the Allen Patent is not limited to any specific type
of wastewater but that Allen Patent's method may be applied to
any wastewater "generated from petroleum industry to remove
heavy metals and other types of contaminants from the
wastewater.["] Applicant further argues that the Allen Patent is
limited to very specific types of wastewaters, none of which
include contaminated water containing total dissolved solids of
at least about 19,700 mg/L. The Examiner asserts that the
method of Allen et al. is directed towards a process for
removing contaminants from large volumes of wastewater
generated from many operations including petroleum
operations (see Allen et al: col. 3 lines 51-55; and col. l lines
35-40-note that wastewater generated from "petroleum
operations" is just an example). In addition, the method of
Allen et al. is not limited to a specific type of large volumes of
wastewater, the method can be applied to wastewater generated
for example from petroleum industry to remove heavy metals
and other types of contaminants from the wastewater; and the
method can be applied to wastewater containing a large amount
of solid contaminants (see Allen et al: col. 1 lines 50-53; and
col. 12 lines 4-7).
Final Act. 33-34; see also Answer 33-34.
The Examiner's position is not persuasive. Allen describes processes
being useful for removing suspended solids from wastewater. E.g., Allen
col. 1, 11. 50-53 (recognizing harm caused by wastewater containing large
amounts of suspended solids); col. 2, 11. 62---65 (stating that micro filtration
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methods can be used to remove heavy metals and suspended solids from
wastewater); col. 7, 11. 8-17; see also Reply Br. 4---6. As Appellant argues,
Allen only has a single example that expressly reports the effect of Allen's
method on the TDS content of the wastewater stream. See Appeal Br. 19-20
(discussing Example 7 of Allen).
In sum, the Examiner has not demonstrated why a person having
ordinary skill in the art would have had a reasonable expectation that Allen's
method could be used successfully to treat flow back water and/or frac'ed
well water having a TDS content at least about 19,700 mg/L. We, therefore,
cannot sustain Rejections 1 and 2.
Rejections 3 and 4. In Rejections 3 and 4, the Examiner relied upon
Lombardi as a base reference that describes or suggests most of claim 1 's
limitations. See Final Act. 15-20. The Examiner relies upon Allen's
description of the particular diameter of the floes, id. at 1 7; the use of a
polymeric flocculent, id. at 18; the initial concentration of the inorganic
coagulant, id. at 18-19; the flow rate and back pressure used in the process,
id. at 19; and the use of periodic backwashing to clean the filter membranes
id. at 19-20.
For the reasons set forth below, Appellant's arguments do not
persuade us of reversible error in Rejections 3 and 4.
As the Examiner found, Lombardi describes sets of the unit operations
for treating aqueous effluents and logic for designing and effecting the
treatment of such effluents. Lombardi Abstract. In particular, Lombardi
describes unit operations that are useful for the treatment of aqueous effluent
containing both suspended solids and dissolved solids. See id. i-fi-172-73,
79-80. Lombardi describes the use of flocculation and coagulation to
remove suspended solids. Id. i172.
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In sum, Lombardi describes methods that are effective for removing
organics, suspended solids, and total dissolved solids from an aqueous
effluent stream. The Examiner effectively relies upon Allen as providing
evidence that it is possible to operate the particular steps described in
Lombardi's processes in a manner consistent with the process of claim 1 and
successfully treat an effluent stream comprising backflow and frac' ed well
water. Appellant's arguments do not provide any evidence or reason why
the Examiner's reliance upon Allen in this manner is incorrect.
Appellant's Argument 2. Appellant argues:
The Office has failed to show that a skilled artisan would
expect at least some degree of predictability in combining or
modifying the process for suspended solids disclosed by Allen
with the process for dissolved solids disclosed by Lombardi to
create a process to treat high TDS water as claimed in the
instant application and as required by M.P.E.P. 2143.02 II.
Furthermore, the Office has failed to properly consider the Rule
132 Declaration of Stephen Allen presenting evidence that there
was not reasonable expectation of success in combining Allen
and Lombardi. Instead, as described above, the Office has
simply alleged that Allen discloses a, "method [that] can be
applied to wastewater containing a large amount of solid
contaminants" and then surmised that, "one with ordinary skill
in the art would have found it obvious to modify the
contaminated water taught by Allen et al. by replacing it with
the contaminated water of Lombardi et al. which is provided
from hydraulic fracturing of a gas well in the method of Allen
et al. because while the method of Allen et al. can be applied to
large volumes of wastewater that contain a large amount of
solids generated from petroleum operations to remove heavy
metals and various organic and inorganic contaminants." See
Office Action, Items 4, 6, 21, 30, and 32.
A skilled artisan would not find a degree of predictability
to combine a suspended solids process (e.g. Allen) with a
dissolved solids process (e.g. Lombardi) to create a process for
treating high dissolved solids. Moreover, as described above, a
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skilled artisan would recognize that the process of Allen is
ineffective for treating dissolved solids. Therefore a skilled
artisan would realize that combining Allen with Lombardi
would not yield predictable results.
Appeal Br. 20-21.
Appellant's argument with regard to the predictability of results
provided by the combination of Allen and Lombardi only pertains to
Rejections 1 and 2, in which the Examiner proposes modifying Allen's
process by using it to treat Lombardi's backflow and frac' ed well water
having high TDS content. The substance of Appellant's arguments do not
apply to Rejection 3 and 4.
With respect to Rejections 1 and 2, we find Appellant's arguments
regarding the predictability of results persuasive. Thus, we do not sustain
Rejections 1 and 2.
Appellant's Argument 3. Appellant argues that a person having
ordinary skill in the art would not have had a reasonable expectation of
success in combining Allen, Lombardi, and Hassick. Appeal Br. 22-23.
Because the Examiner relied upon Hassick only in rejecting claim 12, this
argument only pertains to Rejections 2 and 4.
In rejecting claim 12, the Examiner relies upon Hassick as describing
the use of the inorganic coagulant aluminum chlorohydrate and the organic
polymeric flocculent epi/dma in a ratio between about 6 to 1 and about 10 to
1.7 Final Act. 14--15; 29-30.
7 We note that Allen discloses the use of inorganic coagulants, including
aluminum chlorohydrate, and polymeric flocculants, including epi/dma, in
ratios between 1: 1.2 and 50: 1. See Allen col. 4, line 43---col. 5, line 12; col.
12, 11. 39-56 (using aluminum chlorohydrate as an inorganic coagulant).
Hassick, therefore, is a cumulative reference.
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Appellant argues:
[T]he Office has failed to show that a skilled artisan would have
a reasonable expectation of success in applying the treatment
chemistry disclosed by Hassick to the instantly claimed process
drawn to treating contaminated water comprising total
dissolved solids of at least about 19,700 mg/L. The Office
asserts in Items 35 and 78 that Hassick may be combined with
Allen and/or Lombardi, yet the office fails to present any
evidence or reasons that the Hassick treatment chemistry may
be successfully used to treat contaminated water comprising
total dissolved solids (TDS) of at least about 19,700 mg/L.
Appeal Br. 22.
Appellant's argument is not persuasive. As discussed above,
Lombardi describes the use of inorganic coagulants and flocculants to
remove suspended solids from the waste stream having a TDS level in
excess of 19,700 g/L. Lombardi i-fi-172-73. In view of this disclosure, the
Examiner was justified in finding that a person having ordinary skill in the
art would have had a reasonable expectation of success in combining the
teachings of Lombardi, Allen, and Hassick. Appellant has not provided
sufficient evidence or argument to demonstrate that the Examiner reversibly
erred by so finding.
Appellant Argument 4. Appellant argues that a person having
ordinary skill in the art would not have had a reasonable expectation of
success in combining Allen, Lombardi, and Smith. Appeal Br. 23. This
argument only pertains to rejections in which the Examiner relied upon
Smith-i.e., Rejections 3 and 4.
In Rejections 3 and 4, the Examiner relied upon Smith as describing
the development of floes to a desired size for removal as an optimization
matter. E.g., Final Act. 17 (citing Smith i17).
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Appellant argues that the Examiner's reliance upon Smith is
misplaced because Smith deals with the development of proper-sized floes
for removal of suspended solids by settling rather than by microfiltration.
Appeal Br. 23.
We are not persuaded by Appellant's argument. The Examiner relies
upon Smith for its description of methods for varying floe size. A person of
ordinary skill in the art at the time of the invention would have known that if
floe size can be optimized for one purpose-suspended solids removal by
settling-floe size also can be optimized for a different purpose-in this
case, microfiltration. Although the two separation methods may have
different optimal size particles, a person of ordinary skill in the art, being a
person of ordinary creativity, would understand that the principle of floe size
optimization could be applied to either method.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1--4,
8-13, and 15-19 of the '107 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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