Ex Parte Holland et al

Patent Trial and Appeal Board

Jul 8, 2014

11292328 (P.T.A.B. Jul. 8, 2014)

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.
11/292,328 11/30/2005 Jennifer E. Holland A05447US (78442.17) 8012
22920 7590 07/09/2014
GARVEY SMITH NEHRBASS & NORTH, LLC
LAKEWAY 3, SUITE 3290
3838 NORTH CAUSEWAY BLVD.
METAIRIE, LA 70002
EXAMINER
ALLEN, CAMERON J
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
07/09/2014 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 JENNIFER E. HOLLAND and ROBERT S. REIMERS
____________

Appeal 2013-000475
Application 11/292,3281
Technology Center 1700
____________

Before JEFFERY T. SMITH, LINDA M. GAUDETTE, and
WESLEY B. DERRICK, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 9-22, 24-47, 52-57, 60-63, and 65 under
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is The Administrators of
the Tulane Educational Fund. App. Br. 2.
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STATEMENT OF CASE
Introduction
Appellants’ invention relates to methods of treating a fluid by
providing a nebulizer for nebulizing the fluid with an oxidizing gas, using
the nebulizer to atomize the fluid into small droplets, and treating the
atomized fluid with a radiation field. Spec. Abstract. The oxidizing gas can
be ozone. Spec. 12, l. 34 to 13, l. 3. The radiation can be ultraviolet light.
Spec. 13, ll. 20-23. Claims 9, 30, 52, and 65 are independent claims.
Claims 9 and 27 are representative of the invention and are
reproduced below from the Claims Appendix to the Appeal Brief:
9. A method of treating a fluid stream comprising the steps of:
a) providing a nebulizer having a liquid inlet and a gas inlet that
each communicate with an outlet;
b) transmitting an influent fluid flow stream to the liquid inlet;
c) transmitting an influent carrier gas stream to the gas inlet,
wherein the gas stream includes any gas that is an oxidant;
d) using the gas stream to atomize the fluid that is emitted by the
outlet, forming small droplets downstream of the outlet; and
e) treating the atomized fluid of step “d” with a radiation field.

27. The method of claim 9 wherein the cross section of the outlet is
smaller than the cross section of the gas inlet.

Applied Prior Art
The Examiner relies on the following prior art in rejecting the claims:
Noordermeer US 4,880,164 Nov. 14, 1989
Alvarez et al. (Alvarez) US 4,919,853 Apr. 24, 1990
Bloor et al. (Bloor) WO 93/01891 Feb. 4, 1993
Toda US 5,297,734 Mar. 29, 1994
Hoppe et al. (Hoppe) US 5,433,866 July 18, 1995
Sabroske et al. (Sabroske) US 5,498,374 Mar. 12, 1996
Platz et al. US 6,051,256 Apr. 18, 2000
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Arno et al. (Arno) US 6,322,756 B1 Nov. 27, 2001
Bender US 2002/0033369 A1 Mar. 21, 2002
Hunt US 6,403,245 B1 June 11, 2002
Oljaca et al. (Oljaca) US 6,601,776 B1 Aug. 5, 2003
Purdum US 2003/0194692 A1 Oct. 16, 2003
Yamamoto et al. (Yamamoto) US 2007/0004839 A1 Jan. 4, 2007

35 U.S.C. § 103 Rejections
The Examiner rejects claims 9-22, 24-47, 52-57, 60-63, and 65 as
follows:
Claims 9, 10, 14-15, 18-22, 24-26, 30, 31, 34, and 65 under 35 U.S.C.
§ 103(a) as being unpatentable over Hoppe in view of Alvarez. Ans. 3-7.
Claim 52 under 35 U.S.C. § 103(a) as being unpatentable over Hoppe
in view of Alvarez and Bloor. Id. at 7-9.
Claims 11-13, 35, 37, 39, 40, 41, 43, and 55-57 under 35 U.S.C. §
103(a) as being unpatentable over Hoppe in view of Alvarez in further view
of Purdum. Id. at 9-13.
Claims 42 and 44 under 35 U.S.C. § 103(a) as being unpatentable
over Hoppe in view of Alvarez in further view of Platz. Id. at 13-14.
Claim 53 under 35 U.S.C. § 103(a) as being unpatentable over Hoppe
in view of Alvarez and Bloor, and further in view of Hunt. Id. at 14-15.
Claims 45-47 under 35 U.S.C. § 103(a) as being unpatentable over
Hoppe in view of Alvarez and Bloor, and further in view of Yamamoto. Id.
at 15.
Claims 16-17 under 35 U.S.C. § 103(a) as being unpatentable over
Hoppe in view of Alvarez in further view of Bender. Id. at 15-16.
Claims 27-29 under 35 U.S.C. § 103(a) as being unpatentable over
Hoppe in view of Alvarez in further view of Noordermeer. Id. at 16-19.
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Claim 32 under 35 U.S.C. § 103(a) as being unpatentable over Hoppe
in view of Alvarez in further view of Arno. Id. at 19.
Claims 33 and 54 under 35 U.S.C. § 103(a) as being unpatentable
over Hoppe in view of Alvarez in further view of Sabroske. Id. at 19-20.
Claims 36 and 38 under 35 U.S.C. § 103(a) as being unpatentable
over Hoppe in view of Alvarez in further view of Oljaca. Id. at 20-21.
Claims 60-63 under 35 U.S.C. § 103(a) as being unpatentable over
Hoppe in view of Alvarez in further view of Toda. Id. at 21-22.
Appellants argue the obviousness rejection of claims 27-29 over
Hoppe, Alvarez, and Noordermeer under a separate heading. App. Br. 7.
Accordingly, we separately consider the patentability of claims 27-29.
37 C.F.R. § 41.37(c)(1)(vii). Appellants’ traversal of all other grounds of
rejection is based on their contention that the Examiner reversibly erred in
determining one of ordinary skill in the art at the time of the invention would
have been motivated to modify Hoppe in view of Alvarez. See generally id.
at 6-7. We decide the patentability of claims 10-22, 24-26, 30-47, 52-57,
60-63, and 65 on the basis of representative claim 9. See id. at 7 (arguing
claims 10-22, 24-47, 52-57, 60-63, and 65 “are believed to be patentable for
the reasons advanced in support of claim 9”).

ANALYSIS
We have reviewed the Examiner’s rejections under 35 U.S.C. § 103(a)
in light of arguments advanced by the Appellants in the Appeal Brief, but
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are not convinced of reversible error in the Examiner’s conclusion of
obviousness for the reasons expressed by the Examiner in the Answer.2
The Examiner finds Hoppe teaches treating a fluid such as water by
mixing the fluid with ozone, breaking the fluid into micron sized droplets,
and exposing the droplets to a UV source. Ans. 3 (citing Hoppe, col. 2, ll. 3,
7-14, 25-35.) Hoppe teaches a static mixing venturi device that includes a
venturi injector to ozonate the fluid, a static mixer to promote water/ozone
mixing, and a misting component to form a mist. Hoppe, col. 2, ll. 5-28.
The Examiner finds Hoppe does not disclose forming droplets by atomizing
the fluid with a gas stream. Id.
The Examiner finds Alvarez teaches a method for spraying or
atomizing a liquid using a nebulizer. Id. at 4. The Examiner finds Alvarez
can be generally applied to the spraying of water. Id. (citing Alvarez, col. 1,
ll. 12-15, 40-43; col. 2, ll. 61-62.) The Examiner determines a nebulizer
turns a liquid into a fine mist of droplets. Id. at 4. The Examiner reasons
one of ordinary skill in the art at the time of the invention would have been
motivated to modify Hoppe’s method to use Alvarez’s nebulizer in place of
Hoppe’s static mixing venturi device in order to simplify Hoppe’s method
by reducing the number of components in Hoppe’s apparatus (id. at 22-23);
namely, replacing the venturi injector, static mixer, and misting component
of Hoppe with a nebulizer. The Examiner finds the modified method of
Hoppe would “yield the expected result of producing very effective coupling

2 Rather than reiterate all arguments of the Appellants and the Examiner, we
refer to the Appeal Brief (filed March 26, 2012) and the Answer (mailed
July 3, 2012) for the respective details. We have considered in this decision
only those arguments the Appellants actually raised in their Brief. Any other
arguments Appellants could have made but chose not to make in their Brief
are deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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of the gas and liquid (mixing)” and provide sterilization/oxidation upstream
from the UV reaction. Id. at 22.
Appellants argue one of ordinary skill in the art would not have been
motivated to modify Hoppe’s method to use Alvarez’s nebulizer in place of
Hoppe’s static mixing venture device because the modified method would
not include a desired sterilization/oxidation step after the water is ozonated,
but before it is subjected to UV radiation that initiates a second sterilization
step. App. Br. 6-7. Appellants argue Hoppe first mixes water with ozone,
entraining ozone, then nebulizes the ozonated water, and finally treats it with
UV radiation, while Alvarez provides a device in which liquid is broken into
droplets by the shear of the gas after which the liquid and the gas are mixed.
App. Br. 6 (citing Hoppe Fig. 3). Appellants allege ozone entrained in water
reacts differently than ozone contacting water droplets, both when subjected
to UV radiation or not. Id. Appellants allege by modifying Hoppe’s
method, the sterilization/oxidation step with reaction between entrained
ozone and contaminants occurring prior to UV treatment would be
eliminated. Id.
We do not find Appellants’ argument persuasive. We find the
Examiner has provided a reasonable basis for finding one of ordinary skill
would have sought to simplify the method of Hoppe by using a nebulizer, as
in Alvarez, to both mix liquid and oxidant and to provide a fine mist of
droplets. Ans. 22-23. Appellants argue to the contrary, but provide no
evidence (App. Br. 6-7); they are relying solely on attorney argument.
Attorney argument cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974). Similarly, we are unpersuaded that the
Examiner erred in finding that Hoppe as modified by Alvarez would provide
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mixing upstream from the UV reaction and thus provide the
sterilization/oxidation step occurring after mixing, but before UV treatment.
Ans. 22. In arguing the modification of Hoppe with Alvarez would
eliminate the sterilization/oxidation step, Appellants allege differences
between the mist of ozonated water formed by the method of Hoppe and the
mist formed by the modified method, including that the ozone reacts
differently (App. Br. 6-7), but they provide no evidence supporting the
alleged differences.
Turning now to the rejection of claims 27-29 for obviousness over
Hoppe in view of Alvarez and Noordermeer, the Examiner finds Hoppe in
view of Alvarez does not disclose a step of providing a nebulizer having an
outlet cross section which is smaller than the gas inlet cross section as
recited in appealed claims 27 and 29 or pressurizing the gas inlet stream as
recited in claim 28. Ans. 17. The Examiner relies on Noordermeer to
establish that at the time of the invention, it was known in the art of
nebulizing to provide gas inlets larger than the orifice outlets and to
pressurize gas inlet streams, and that it would have been within the skill
level of the ordinary artisan to size the inlets and outlets so as to achieve a
desired flow. Id. at 17-18. The Examiner finds it would have been obvious
to one of ordinary skill to modify the nebulizer used in the Hoppe method, as
modified by Alvarez, to have a gas inlet sized larger than the outlet orifice as
claimed to achieve the desired size and amount of flow from the orifice. Id.
Appellants argue that the rejection of claims 27-29 over Hoppe in
view of Alvarez and Noordermeer was improper because adding a second
nebulizing step would be more costly and less efficient. App. Br. 7. This
argument is unconvincing because it fails to address the facts and reasons
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relied on by the Examiner in rejecting claims 27-29. The Examiner’s
rejection is not based on using Noordermeer’s nebulizer as contended by
Appellants. See App. Br. 7. Rather, the Examiner’s rejection is based on,
for claims 27 and 29, a finding that adjusting the sizes of the gas inlets and
outlets to change the size and amounts of flow would have been a matter of
routine optimization or, for claim 28, a finding that a nebulizer with a
pressurized gas inlet provides desired function. See Ans. 17-18, 24.
Appellants have not identified error in either finding. See Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (“[D]iscovery of an
optimum value of a variable in a known process is usually obvious.”); see
also, In re Geisler, 116 F.3d 1465, 1470 (Fed.Cir.1997); In re Boesch, 617
F.2d 272, 276 (CCPA 1980).
For the foregoing reasons, Appellants have not persuaded us of
reversible error in the Examiner’s conclusion of obviousness as to
representative claim 9 or claims 27-29.

DECISION
The Examiner’s decision rejecting claims 9-22, 24-47, 52-57, 60-63,
and 65 for obviousness is 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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

cdc