Ex Parte Haslam et al

Patent Trial and Appeal Board

Jun 28, 2016

12130029 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/130,029 05/30/2008 Jeffery J. Haslam
24981 7590 06/30/2016
Lawrence Livermore National Security, LLC
LA WREN CE LIVERMORE NA TI ON AL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
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.
IL-11462 3173
EXAMINER
FRIDAY, STEVEN A
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
llnl-docket@llnl.gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte JEFFREY J. HASLAM, WILLIAM L. BOURCIER,
and KEVIN C. O'BRIEN
Appeal2015-000469
Application 12/130,029
Technology Center 1700
Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
JULIA HEANEY, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-000469
Application 12/130,029
Appellants appeal under 35 U.S.C. § 134 the final rejection of claim 4.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
Appellants' invention is directed to an apparatus for removal of
contaminants from fluid and more particularly to a hybrid approach for
selective removal of contaminants from fluid (Spec. i-f 2).
Claim 4 is illustrative (italics added):
4. An apparatus for reducing the concentration of arsenic in water
containing the arsenic wherein the water is in a concentrate water stream and
a diluent water stream and wherein the concentrate water stream has a first
portion and a second portion and the diluent water stream has a first portion
and a second portion and
wherein the concentration of the arsenic is increased in the
concentrate water stream by transfer from the diluent water stream,
consisting of
an anode;
a cathode;
a voltage source connected to said anode and to said cathode;
a controller connected to said voltage source for turning said voltage
source on and off and cycling said voltage source;
a layered stack of membranes between said anode and said cathode,
said layered stack of membranes
consisting of
a multiplicity of anion permeable nanoporous membranes positioned
between said anode and said cathode, and multiplicity of anion permeable
membranes including individual anion permeable membranes having anion
membrane nanopores;
a multiplicity of cation permeable nanoporous membranes positioned
between said anode and said cathode, said multiplicity of cation permeable
membranes including individual cation permeable membranes having cation
membrane nanopores,
said layered stack of membranes between said anode and said cathode
formed into a first anion-cation pair of a first individual anion permeable
nanoporous membrane and a first individual cation permeable nanoporous
membrane;
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said layered stack of membranes between said anode and said cathode
formed into a second anion-cation pair of a second individual anion
permeable nanoporous membrane and a second individual cation permeable
nanoporous membrane;
the first portion of the concentrate water stream being directed into a
first concentrate water stream flow channel between said first anion-cation
pair of a first individual anion permeable nanoporous membrane and said
first individual cation permeable nanoporous membrane;
the second portion of the concentrate water stream being directed into
a second concentrate water stream flow channel between said second anion-
cation pair of a second individual anion permeable nanoporous membrane
and second individual cation permeable nanoporous membrane,
said layered stack of membranes between said anode and said
cathode formed into a third anion-cation pair of a third individual anion
permeable nanoporous membrane and a third individual cation permeable
nanoporous membrane;
said layered stack of membranes between said anode and said cathode
formed into a fourth anion-cation pair of a fourth individual anion permeable
nanoporous membrane and a fourth individual cation permeable nanoporous
membrane;
the first portion of the diluent water stream being directed into a first
diluent water stream flow channel between said third anion-cation pair of a
third individuai anion permeabie nanoporous membrane and said third
individual cation permeable nanporous membrane;
the second portion of the diluent water stream being directed into a
second diluent water stream flow channel between said fourth anion-cation
pair of a fourth individual anion permeable nanoporous membrane and said
fourth individual cation permeable nanoporous membrane;
a first layer of arsenic ion specific ion exchange resins packed
between said third individual anion permeable nanoporous membrane and
said third individual cation permeable nanoporous membrane, said first layer
of arsenic ion specific ion exchange resins located in said first diluent water
stream flow channel; and
a second layer of arsenic ion specific ion exchange resins packed
between said fourth individual anion permeable nanoporous membrane and
said fourth individual cation permeable nanoporous membrane, said second
layer of arsenic ion specific ion exchange resins located in said second
diluent water stream flow channel;
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Application 12/130,029
wherein said first and second arsemc 10n specific ion exchange resins
within said first and second diluent water stream flow channels are specific
for arsenic and wherein the concentrate of the arsenic is increased in the
concentrate water stream by the arsenic being transferred from the water
containing the arsenic in the diluent water stream as it flows through said
first and second diluent water stream flow channels and wherein said first
and second arsenic ion specific ion exchange resins within said first and
second diluent water stream flow channels are specific for arsenic to remove
arsenic to achieve a concentration of five ppb arsenic.
Appellants appeal the following rejections 1:
1. Claim 4 is rejected under 35 U.S.C. § 112, second paragraph, as
failing to point out and particularly claim the subject matter applicant
regards as the invention.
2. Claim 4 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the enablement requirement.
3. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Tessier (US 6,149,788 issued Nov. 21, 2000) in view of Wilson (US
2005i0252857 Al pubiished Nov. 14, 2005), Zhao (US 2007i005691 l
Al published Mar. 15, 2007) and Garcia (US 6,72,822 B2 issued Apr.
2004).
FINDINGS OF FACT & ANALYSIS
Rejection (1 ): 35 U.S.C. § 112, i-f 2
Appellants argue that claim 4 recites clearly an apparatus having an
arrangement of membranes for reducing the concentration of arsenic in
1 The Examiner withdrew the 35 U.S.C. § 112, first paragraph, rejection of
claim 4 for lack of written description (Ans. 3).
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Application 12/130,029
water (App. Br. 18). Appellants' mapping of claim 4 to Appellants' Figure
1 A embodiment indicates that the first anion-cation pair ( 106-107) and the
third anion-cation pair ( 106-107) share a cation permeable nanoporous
membrane 107 (App. Br. 21-22). Appellants contend that claim 4 requires
only 5 membranes, not 8 membranes as the Examiner interprets claim 4
(Reply Br. 4 ).
Claim 4 recites, in relevant part:
... said layered stack of membranes between said anode and said
cathode formed into a first anion-cation pair of a first individual
anion permeable nanoporous membrane and a first individual cation
permeable nanoporous membrane;
said layered stack of membranes between said anode and said
cathode formed into a second anion-cation pair of a second individual
anion permeable nanoporous membrane and a second individual
cation permeable nanoporous membrane;
said layered stack of membranes between said anode and said
cathode formed into a third anion-cation pair of a third individual
anion permeable nanoporous membrane and a third individual cation
permeable nanoporous membrane;
said layered stack of membranes between said anode and said
cathode formed into a fourth anion-cation pair of a fourth individual
anion permeable nanoporous membrane and a fourth individual
cation permeable nano porous membrane; ....
(Claim 4, emphasis added).
The claim requires a stack of membranes that is composed of four anion-
cation pairs. Each of the anion-cation pairs as recited in claim 4 consists of
an individual anion permeable nanoporous membrane and an individual
cation nanoporous membrane. Accordingly, the plain meaning of the claim
includes a layered stack of membranes made of four anionic membranes and
four cationic membranes that are paired together.
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Although Appellants contend that the claim should be read as limited
to the embodiment depicted in Appellants' Figure 1 a so that one of the
cationic membranes is shared between two anion-cation pairs, the broadest
reasonable interpretation of the claim does not support that claim
interpretation. The plain language of the claim does not recite, for example,
that the "first individual cationic permeable nanoporous membrane" is the
cationic membrane for the "third anion-cation pair." Even if the claim is
read in light of the Specification, the Specification discloses that "the
invention is not limited to the particular forms disclosed" (Spec. i-f 10). In
other words, the claim is not limited solely to the five membrane
embodiment described in the Specification and shown in Figure IA where
membranes are shared between anion-cation pairs.
With this claim construction in mind, we determine the Examiner has
established that one of ordinary skill in the art would not understand what is
being claimed when the claim is read in light of the Specification.
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986). As found by the Examiner, the claim's eight membranes
forming four anion-cation membrane pairs would form seven effluent
streams, not four (i.e., two concentrate and two diluent streams) as recited in
the claim (Final Act. 5). In other words, the claim is indefinite because it is
unclear how the membranes are paired and connected to form the
concentrate and diluent streams as recited in the claims.
On this record, we affirm the Examiner's § 112, i-f 2, rejection of claim
4.
Rejection (2): 35 U.S.C. § 112, i-f 1, Enablement
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Appellants argue that the "SUivHvIARY OF THE CLAiivIED
SUBJECT MATTER" section of the Brief fully describes the apparatus
recited in claim 4 and provides sufficient information to fully enable the
practice of the invention as recited in claim 4 (App. Br. 16). Appellants
contend that the claims require four anion-cation membrane pairs, which
Appellants map to include only five membranes as shown in Appellants'
Figure IA (App. Br. 16-17). Appellants contend that no undue
experimentation is required to make or use the claimed invention (App Br.
18).
The Examiner's conclusions regarding the lack of enablement of
claim 4 are located on pages 3-4 of the Final Action. The Examiner finds
that the prior art teaches that concentrate flow streams are formed between
alternating cation and anion permeable membranes (Final Act. 3-4). The
Examiner finds that the claim requires pairs of anion-cation membranes but
provides no direction on how to arrange the membranes such that
concentrate and dilute streams flow between each pair and the next,
particularly where they must be separate pairs of membranes (Final Act. 4 ).
The Examiner concludes that undue experimentation would be required to
make and use the claimed invention. Id.
Based on our claim construction discussed above with regard to the 35
U.S.C. § 112, i-f 2 rejection, we conclude, for the same reasons as the
Examiner notes at pages 3 to 4 of the Final Action, that undue
experimentation would be required to make and use the claimed invention.
Appellants provide no guidance on how to structure the apparatus with pairs
of anion-cation membranes so that concentrate and diluent streams flow
between each pair and the next pair of anion-cation membranes. In our view
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undue experimentation would be required to make and use the claimed
invention. On this record, we affirm the Examiner's § 112, i-f 1, rejection as
lacking enablement.
Rejection (3): 35 U.S.C. § 103(a)
The Examiner's findings and conclusions regarding the combined
teachings of Tessier, Wilson, Zhao, and Garcia are located on pages 5 to 8 of
the Final Action.
Appellants neither dispute that the combined teachings of Tessier,
Wilson, Zhao and Garcia teach all the limitations of claim 4, nor the
Examiner's reason for combining the teachings of the references (App. Br.
24-28). Rather, Appellants argue that the "extra" features taught by Tessier,
Wilson, Zhao and Garcia are excluded by the "consisting of' transitional
claim language in claim 4. Id. Appellants contend that Tessier teaches
using an electrolyte solution, electrolyte flow streams 3 6 and 3 8, electrolyte
discharges 60 and 62, inert salt, storage vessel 45, and metering pump 47,
which are excluded from the claimed invention by the closed claim language
"consisting of." (App. Br. 25-26).
The Examiner finds that Tessier's electrolyte solution, electrolyte
flow streams 36 and 38, electrolyte discharges 60 and 62, inert salt, storage
vessel 45, and metering pump 47, are directed to either the material worked
upon by the apparatus or are sub-components which form the claimed
elements (Ans. 7). The Examiner finds that the claim is directed to an
apparatus with structural features recited, which the Examiner copies and
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underlines in the Answer (Ans. 7-10). The Examiner finds that Tessier's
electrolyte solution, electrolyte flow streams 36 and 38, electrolyte
discharges 60 and 62, and inert salt are elements that do not contribute to the
apparatus' structure but are components of the material worked upon by the
apparatus (Ans. 10-11 ). Appellants do not dispute this finding. Instead,
Appellants merely reiterate their position that the electrolyte solution,
electrolyte flow streams 36 and 38, electrolyte discharges 60 and 62, and
inert salt are extra elements excluded by the claim (Reply Br. 8).
Claim 4 is an apparatus claim and Appellants do not dispute the
Examiner's finding that the underlined portions of the copied claim on pages
7-10 of the Answer are the structural features of the claim. The transitional
phrase "consisting of' limits the claim to only the recited structural features
but does not exclude other elements that are not part of the claimed
invention (e.g., the material worked upon). Norian Corp. v. Stryker Corp.,
363 F.3d 1321, 1331-32 (Fed. Cir. 2004) ("While the term 'consisting of
permits no other chemicals in the kit, a spatula is not part of the invention
that is described.").
Regarding the metering pump 47 and storage vessel 45, the Examiner
finds that the claim is directed to an electrodeionization apparatus as is the
invention in both claim 4 and Tessier (Ans. 11 ). The Examiner finds that the
pump and storage vessel work in conjunction with the apparatus but are not
considered extra elements of the apparatus itself (Ans. 11-12).
While Appellants maintain that the pump and storage vessel are extra
elements excluded by the claim language, Appellants do not provide any
response to the Examiner's finding that claimed invention is directed to an
electrodeionization apparatus such that the pump and storage vessel are not
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extra elements of claimed invention because they work in conjunction with
the device (Reply Br. 9). In other words, the pump and storage vessel in
Tessier are not excluded because they are not part of the claimed invention.
Norian, 363 F.3d at 1331-32. Moreover, we note that Tessier describes a
Figure 1 embodiment that does not include a pump and storage vessel. So,
these features are not necessarily part of every embodiment in Tessier.
Appellants argue that Wilson, Zhao and Garcia include extra elements
that are excluded by the closed claim language "consisting of' (App. Br. 27-
28). The Examiner is not proposing to bodily incorporate all of Wilson's,
Zhao's or Garcia's features into Tessier's apparatus. Rather, the Examiner
proposes using certain teachings of the references (i.e., Wilson's nanoporous
membranes, Zhao's ion exchange membrane, or Garcia's controller) in
Tessier's apparatus. Moreover, the Appellants' argued extra features of
Zhao and Garcia are related to limitations that are part of the ion exchange
resin or controller as required by the claims. In other words, the claims do
not exclude having these additional features as part of the broadly recited ion
exchange resins or controller connected to the voltage source for turning the
voltage source on and off and cycling the voltage source.
On this record, we affirm the Examiner's§ 103 rejection over Tessier
in view of Wilson, Zhao, and Garcia.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
ORDER
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AFFIRl\rIED
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