Ex Parte Aoki et al

Patent Trial and Appeal Board

Jul 16, 2018

14386224 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/386,224 09/18/2014
32628 7590 07/18/2018
KANESAKA BERNER AND PARTNERS LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314-2848
FIRST NAMED INVENTOR
Tetsuya Aoki
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.
SHI-085 4500
EXAMINER
ASDJODI, MOHAMMADREZA
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
07/18/2018 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):
office@uspatentagents.com
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TETSUY A AOKI,
TAKAHIRO KA WAKATSU, and KUNIHIRO HAYAKAWA
Appeal2017-009311
Application 14/3 86,224
Technology Center 1700
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 13-25. We have jurisdiction under 35 U.S.C. § 6(a).
We AFFIRM.
The claimed invention is directed to a method for cleaning permeable
membranes using an aqueous solution comprising monochlorosulfamic acid
having a pH of not less than 12 and less than 13, where the aqueous solution
Appeal 2017-009311
Application 14/3 86,224
contacts the permeable membrane for 2-24 hours when cleaning. Claim 13 1
is illustrative of the subject matter on appeal and is reproduced below:
13. A method for cleaning permeable membranes)
compnsmg:
contacting a permeable membrane with an aqueous
solution comprising monochlorosulfamic acid having a
concentration of 0.005 to 0.5M and an alkali agent, having a pH
of not less than 12 and less than 13, for 2 - 24 hours when
cleaning the permeable membrane by contacting the permeable
membrane with said aqueous solution.
Appellant2 (App. Br. 5, 7) requests review of the following rejections
from the Examiner's Final Action:
I. Claims 13 and 24 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Nobutoki (JP 2006-263510 A, published October 5, 2006,
and citing to an English translation made of record on July 16, 2015). 3
II. Claims 14--22 and 25 rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Nobutoki and either Labib et al. (US
6,454,871 Bl, issued September 24, 2002) or Liu (Charles Liu, Scott
Caothien, Jennifer Hayes, Tom Caothuy, Takehiko Otoyo, and Takashi
Ogawa, Membrane Chemical Cleaning: From Art to Science, Technical
Report. Pall Corporation, 2002, p. 1-25).
1 The language of claim 13 appears to state that it is the alkaline agent that
has a pH of not less than 12 and less than 13. We understand that it is the
aqueous solution that has the claimed pH. However, Appellant may wish to
consider alternate language that avoids any confusion on this matter.
2 Appellant is the Applicant "KURITA WATER INDUSTRIES LTD.", who
is also identifies as the real party in interest. App. Br. 2.
3 The Examiner withdrew the rejection of dependent claim 23 and indicated
that it is now objected to as being dependent upon a rejected base claim 13,
but would be allowable if rewritten in independent form including all of the
limitations of the base claim and any intervening claims. Ans. 4.
Accordingly, claim 23 is not before us for review on appeal.
2
Appeal 2017-009311
Application 14/3 86,224
For Rejection I, Appellant argues independent claim 13 and dependent
claim 24 together. See generally App. Br. Appellant also relies on these
arguments to address the separate rejection of claims 14--22 and 25
(Rejection II). Id. Accordingly, we select claim 13 as representative of the
subject matter before us for review on appeal for both rejections and decide
the appeal of both rejections based on the arguments made by Appellant in
support of the patentability of claim 13.
OPINION
Prior Art Rejections
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner's prior art rejections of claims 13-22,
24 and 25 for the reasons presented by the Examiner. We add the following
for emphasis.
We refer to the Examiner's Final Action for a complete statement of
the rejection. Final Act. 2-3. Briefly, Nobutoki seeks to minimize the
impact of pH on the presence of free chlorine for sterilization of an aromatic
polyamide permeable membrane by using an aqueous solution containing a
chlorine-based oxidizing agent and sulfamic acid compound. Nobutoki ,r,r
24--25, 49.
Appellant does not dispute the Examiner's finding that Nobutoki's
sulfamic acid component encompasses the use of monochloro sulfanic acid
as claimed. Final Act. 3; Nobutoki ,r,r 34--35; see generally App. Br.
Appellant, however, argues Nobutoki discloses adjusting the pH to about 5-
6 during the cleaning of the membrane, which Appellant contends it's
contrary to the claimed invention. App. Br. 5; Nobutoki ,r,r 19, 20, 51, 55.
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Appeal 2017-009311
Application 14/3 86,224
While Nobutoki discloses pH values greater than 12, Appellant asserts that
these values are associated with maintaining the stability of the chlorine-
based oxidizing agent. App. Br. 6; Nobutoki ,r 45.
We are unpersuaded by these arguments. We agree with the
Examiner that Nobutoki's Example 1, where the cleaning solution is
maintained at a pH of 5-6, does not limit Nobutoki's disclosure. Ans. 5---6.
On the contrary, Nobutoki generally discloses the use of a cleaning solution
that does not change the free chlorine concentration significantly over a wide
pH range over the alkaline range from acidic range. Nobutoki ,r,r 20, 26
("even when the pH of the water to be treated is varied by fluctuations or
accident of raw water quality, [] the free chlorine concentration in the for-
treatment water does not fluctuate greatly"). Indeed, Appellant
acknowledges in the Background of the Invention that aromatic polyamide
membranes "can be cleaned under alkaline conditions at pH 10 or above."
Spec. ,r 3. An applicant cannot defeat an obviousness rejection by asserting
that the cited references fail to teach or suggest elements which the applicant
has acknowledged are taught by the prior art. Constant v. Advanced Micro-
Devices, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) ("A statement in a
patent that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness.") and In re
Nomiya, 509 F.2d 566, 571n.5 (CCPA 1975) (A statement by an applicant
that certain matter is prior art is an admission that the matter is prior art for
all purposes).
Thus, Appellant has not pointed to error in the Examiner's
determination of obviousness.
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Appeal 2017-009311
Application 14/3 86,224
Accordingly, we affirm the Examiner's prior art rejections of claims
13-22, 24, and 25 under 35 U.S.C. § 103 (a) for the reasons presented by the
Examiner and given above.
DECISION
The Examiner's prior art rejections of claims 13-22, 24 and 25 under
35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
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
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