Ex Parte Johnson et al

Board of Patent Appeals and Interferences

May 21, 2012

10569565 (B.P.A.I. May. 21, 2012)

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.
10/569,565 02/27/2006 Warren Thomas Johnson 2003P87068WOUS 5364
28524 7590 05/21/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
ANDERSON, DENISE R
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
05/21/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WARREN THOMAS JOHNSON,
THOMAS WILLIAM BECK, FUFANG ZHA, HUW ALEXANDER
LAZAREDES, and ZHIYI CAO
____________

Appeal 2011-002746
Application 10/569,565
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CATHERINE Q. TIMM, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 15-18, 20-36, and 38-40. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM-IN-PART.

Appeal 2011-002746
Application 10/569,565

2
Appellants claim a method of backwashing one or more membranes
(e.g., tubular filters) comprising:
removing liquid to be treated from the vessel at least partially by a
filtration operation until the liquid falls to a first level;
performing a liquid backwash of the membranes until the liquid is at a
predetermined level above the first level; and
aerating the surface of the membranes;
wherein the predetermined level provides sufficient liquid in the
vessel to immerse an upper header of the membranes during aeration (claim
15; see also claims 30 and 31).
Representative claim 15 reads as follows:
15. A method of backwashing one or more membranes in a vessel, the
method comprising:

removing liquid to be treated from the vessel until a level of the liquid
falls to a first level within the vessel below an upper level of the one or more
membranes, wherein the removal of liquid to be treated is at least partially
accomplished by a filtration operation;

suspending the removal of the liquid to be treated from the vessel
when the level of the liquid to be treated falls to the first level;

performing a liquid backwash of the one or more membranes when
the first level is reached by the removal of the liquid to be treated from the
vessel until the level of the liquid collected in the vessel comprising
backwashed liquid is at a predetermined level above said first level;

aerating a membrane surface of the one or more membranes; and

removing liquid containing fouling materials dislodged from the
membrane surface from the vessel;
Appeal 2011-002746
Application 10/569,565

3
wherein the predetermined level provides sufficient liquid in the
vessel to immerse an upper header of the one or more membranes during the
aerating of the membrane surface.

Under 35 U.S.C. § 103(a), the Examiner rejects independent claims
15, 30, and 31 as unpatentable over Zha (US 2002/0195390 A1, pub. Dec.
26, 2002) in view of Nozaki (JP 2000237548A, pub. Sep. 5, 2000; as
translated by computer) and rejects the remaining dependent claims on
appeal as unpatentable over these references alone or further in view of other
prior art of record.
The Examiner provisionally rejects claims 15-18, 20-24, 30-32, and
34 on the ground of nonstatutory obviousness-type double patenting over:
a. claims 1-3, 9-16, 24-25, 30, and 31 of copending Application No.
11/316,593,
b. claims 1-4, 6-7, 9-11, 13-15, and 18-19 of copending Application
No. 11/179,391,
c. claims 1 and 4-11 of copending Application No. 10/572,893 and
d. claims 1-5 of copending Application No. 12/096,279.
Finally, the Examiner rejects claims 15-18, 20-24, and 30-32 on the
ground of nonstatutory obviousness-type double patenting over claims 1-6 of
US Patent No. 7,018,533.
We summarily sustain the Examiner's provisional and non-provisional
obviousness-type double patenting rejections since Appellants do not contest
these rejections in the record of this appeal.

However, we cannot sustain the Examiner's § 103 rejections of the
appealed claims.
Appeal 2011-002746
Application 10/569,565

4
We are persuaded by Appellants' arguments and the § 1.132 Zha
Declaration of record that the Zha and Nozaki references contain no teaching
or suggestion of the independent claim requirements that the liquid is
removed at least partially by a filtration operation until the liquid falls to a
first level and that a liquid backwash is performed until the liquid is at a
predetermined level above the first level whereby an upper membrane
header is immersed during aeration (see, e.g., App. Br. 12-17; Decl. paras.
10-11).
The Examiner believes that paragraph [0059] and Figure 5 of Zha
teaches (or would have suggested) removing liquid by a filtration operation
to a first level and then backwashing to raise the liquid level so as to
immerse an upper header during aeration (see, e.g., Ans. Table bridging 4-5,
para. bridging 10-11). As correctly argued by Appellants, the Examiner's
belief is not supported by the Zha reference and is contrary to the Zha
Declaration evidence (see, e.g., App. Br. 13-14, 15-16). Appellants also
correctly point out that these deficiencies of the Zha reference are not cured
by Nozaki because, in Nozaki's system, liquid is removed only through a
drainage step (id. at para. bridging 13-14) and there is no upper header to be
immersed with backwashing liquid during aeration (id. at 16 last full para.).
The decision of the Examiner is affirmed-in-part.

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)(iv).
AFFIRMED-IN-PART

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