Ex Parte Mizutani

Board of Patent Appeals and Interferences

Oct 14, 2009

10463632 (B.P.A.I. Oct. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MASARU MIZUTANI
____________

Appeal 2009-002940
Application 10/463,632
Technology Center 3600
____________

Decided: October 14, 2009
____________

Before ERIC GRIMES, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the patent applicant’s appeal from the patent
examiner’s rejection of claims 1, 3-5, and 8-23 under 35 U.S.C. §§ 102(e)
and 103(a). Jurisdiction for this appeal is under 35 U.S.C. § 6(b). The
rejections are affirmed.

Appeal 2009-002940
Application 10/463,632

STATEMENT OF THE CASE
The claims are concerned with onshore swimming pools and other
facilities supplied with deep sea water or desalinated deep sea water. Claims
1, 3-5, and 8-23 are pending and stand rejected by the Examiner as follows:
1. Claim 19 under 35 U.S.C. § 102(e) as anticipated by Max (US
6,565,715 B1, issued May 20, 2003) (Ans. 3);
2. Claims 1, 3-5, and 8-10 under 35 U.S.C. § 103(a) as obvious in
view of OSWC (Tim Kelley, OLYMPIC SALT WATER COMPANY, 6
WATER RESOURCES CENTER ARCHIVES 1-2 (1999)), Ikeda et al. (Trials of
Rearing Oyster Juveniles Utilizing Cascade System of Deep Seawater,
Translation of Proceedings of Kaiyo Shinsousui (1997)), and Nomura
(Treatment of Atopy Skin Inflammation by Deep Sea Water, 34 SEACOAST,
Translation (1995)) (Ans. 4);
3. Claims 12-14 under 35 U.S.C. § 103(a) as obvious in view of St.
Clair (St Clair Hot Salt Water Pool Redevelopment, updated 09/2002, pages
1-7), Ikeda, and Nomura (Ans. 7);
4. Claims 16, 17, and 21 under 35. U.S.C. § 103(a) as obvious in
view of St. Clair, Ikeda, and Nomura (Ans. 10); and
5. Claims 11, 15, 18, 20, 22, and 23 under 35 U.S.C. § 103(a) as
obvious in view of Max (Ans. 13).
Claims 1, 3, 11, 12, 16, 18, 19, and 20 are representative and read as
reproduced below. Other claims discussed in this decision are listed in the
Claim Appendix, beginning on page 23 of the Appeal Brief.

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1. An onshore swimming pool, comprising:
an onshore swimming pool structure;
means for collecting deep-sea water; and
means for supplying collected deep-sea water to the onshore
swimming pool structure.

3. The onshore pool of claim 1, further comprising:
a fish breeding plant;
means for treating deep-sea water drained from the onshore
swimming pool; and
means for supplying treated deep-sea water to the plant.

11. The onshore accommodation facility of claim 19, further comprising:
a hydroponic facility;
means for treating desalinated deep-sea water drained from the
onshore accommodation facility; and
means for supplying treated desalinated deep-sea water to the
hydroponic facility.

12. An onshore dining facility that includes means for collecting deep-sea
water and means for supplying the water to the dining facility.

16. An onshore beauty-shop/fitness-gymnasium facility that includes means
for collecting deep-sea water and means for supplying the water to the
facility.

18. An onshore swimming pool, comprising:
an onshore swimming pool structure,
means for collecting deep-sea water; and
means for desalinating and supplying the deep-sea water to the
onshore swimming pool structure.

19. An onshore accommodation facility, comprising:
means for collecting deep-sea water; and
means for desalinating and supplying the deep-sea water to the
onshore accommodation facility.

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20. An onshore dining facility, comprising:
means for collecting deep-sea water; and
means for desalinating and supplying the deep-sea water to the
onshore dining facility.

1. ANTICIPATION BY MAX
Claim 19 stands rejected under 35 U.S.C. § 102(e) as anticipated by
Max (Ans. 3).
Statement of the Issue
Claim 19 is to an “onshore accommodation facility” comprising a
“means for collecting deep-sea water” and “means for desalinating and
supplying the deep-sea water to the onshore accommodation facility.” The
Examiner found that Max taught a deep-sea water collecting means (pipeline
18; Ans. 3-4) and a means for desalinating and supplying deep seawater
(purification installation 30; Ans. 3-4). The Examiner did not give the
recitation of an onshore accommodation facility “patentable weight” because
it occurred in the claim preamble “where it merely recites the purpose of a
process or the intended use of a structure.” (Ans. 15.) Appellant contends
that the Examiner erred in not giving weight to the phrase “onshore
accommodation facility” (App. Br. 10), arguing that the facility is recited in
both the claim preamble and claim body and that therefore “claim 19 must
be interpreted to positively require an ‘onshore accommodation facility’ to
which [the] collected deep-sea is supplied.” (Id. at 11.)

Principles of Law
[W]here a patentee defines a structurally complete invention in
the claim body and uses the preamble only to state a purpose or
intended use for the invention, the preamble is not a claim
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limitation. See Bell Communications, 55 F.3d at 620; Kropa v.
Robie, 38 C.C.P.A. 858, 187 F.2d 150, 152, 88 USPQ 478,481
(1951).
Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997).

Findings of Fact
1. According to Max, facilities for desalinating sea water may be located
where fresh water is a premium (col. 1, ll. 48-51).
2. Max describes methods and an apparatus for desalinating water to
produce “fresh water” using a hydrate forming gas (Abstract; Fig. 1). The
installation is land-based to provide “easier” access and because “[g]as
handling and storage facilities are more practicable on shore, where there is
more space and a more secure engineering environment available.” (Col. 2,
ll. 59-63.)
3. The “purified water” from the installation can be used as “potable water”
(col. 2, ll. 49-51). Because the water is cooled, it can also be used in
“refrigeration as a basis for air conditioning” (col. 2, ll. 51-54).
4. The desalination installation has a sea water intake portion, a water
purification portion, and a post-processing and downstream usage section
(col. 3, ll. 40-45).
5. “The intake pipeline 18 preferably extends sufficiently out to sea that it
draws deep water, e.g., from the slope 20 of the continental shelf because
deep water is more pure and colder than shallow water.” (Col. 3, ll. 57-60;
Fig. 1.)
6. The sea water is pumped into the purification installation 30, purified,
and then pumped into the post-processing and downstream usage section 14
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“to bring the water to drinking water standard” (col. 4, ll. 5-9; col. 6, ll. 16-
22).
Analysis
In our opinion, the Examiner’s interpretation of claim 19 to exclude
the recited “onshore accommodation facility” as an element of the claim was
an error. Claim 19 expressly states it is an “onshore accommodation
facility” and refers to the facility in the body of the claim. This is not an
“intended use” or a “purpose,” but rather it is the specific structure to which
the claim is directed. It is therefore clear on the claim’s face that the
accommodation facility is a required element of the claim.
Although the Examiner erred in interpreting claim 19, the Examiner
reached the correct conclusion that Max anticipated the claimed subject
matter. Max states that its onshore facility is land-based to provide easier
access, storage space, and space for “a more secure engineering
environment” (FF2). We interpret the phrase “accommodation facility”
broadly to include a facility with shelter or space for a person, a limitation
satisfied by Max’s teaching of storage and engineering space. For example,
by providing “a more secure engineering environment” (FF2), the facility
would reasonably be understood to accommodate an engineering technician.
Appellant argues that an “accommodation facility” should be
narrowly interpreted based on the Specification disclosure of a hotel at a
beach (Reply Br. 3). However, the Specification does not explicitly define
“accommodation facility” to be a hotel. Rather, a “hotel” appears to be one
example of such a facility (Spec. ¶¶ 35, 89 & 119). Therefore, we decline to
interpret the phrase so narrowly.

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2. OBVIOUSNESS IN VIEW OF OSWC, IKEDA, & NOMURA
Claims 1, 3-5, and 8-10 stand rejected under 35 U.S.C. § 103(a) as
obvious in view of OSWC, Ikeda, and Nomura (Ans. 4).

Principles of Law
An obviousness “analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
In assessing a claim’s obviousness, “a court must ask whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. at 416.

Findings of Fact
OSWC publication
7. OSWC describes a company found in 1892 which constructed a
distribution system for supplying salt water from the ocean for bathing and
swimming pools because it was “thought to be pure,” avoiding the problem
with raw sewage and industrial effluent (p. 1).
8. The distribution system comprised intake pipes for removing sea water
from offshore and pipes for distributing the sea water to baths and pools (p.
1-2). The system comprised a reservoir and settling tanks for holding the
seawater (p. 1).
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Ikeda
9. Ikeda teaches that deep sea water is supplied to a hydroponic facility for
aquaculture (Ans. 9).
10. Ikeda describes collecting deep seawater to culture and rear diatoms and
oysters (p. 1). Ikeda describes a deep seawater storage tank 20 as a part of
its system (p. 2).
11. The sea water used in the culture was filtered (p. 1).
Nomura
12. According to Nomura: “There is a camp that is set up near a seaside
village for treating . . . skin inflammation which seems to be effective. The
combination of sea water, wind from the sea and the days of sunlight seems
to be effective in the treatment of this skin inflammation.” (P. 1.) Based on
this evidence, Nomura conducted research on the effect of deep sea water on
skin inflammation (p. 1-2).
13. Nomura states that deep seawater is clean and rich in nutrients (p. 7).
14. Nomura states that of 200 patients treated for skin inflammation, 63%
had “effective results” (p. 10).
15. Nomura concluded that the “research has advanced on the work using
deep sea water but a method is needed to produce effective results.” (P. 12.)

Claim 1
Statement of the Issue
Claim 1 is to an onshore swimming pool structure with a “means for
collecting deep-sea water” and “means for supplying collected deep-sea
water” to the pool. The Examiner found that the OSWC publication taught
the swimming pool (FF7), means for collecting sea-water (intake pipes;
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FF8), and means for supplying the sea-water to the pool (FF8) as in claim 1.
The Examiner found that OSWC did not teach using deep-sea water, but
found that persons of ordinary skill in the art would have had reason to use it
for its benefit in treating skin conditions as taught by Nomura (FF12-15).
Appellant contends persons of ordinary skill would not have looked to
Nomura because it is medical literature, while OSWC is related to pool
construction: “pool construction technical knowledge is unlikely to be
found in such non-analogous art” (App. Br. 13). Appellant also contends
there would have been no reasonable expectation of success because
Nomura describes only a sixty percent success rate for treating skin atopy
and concluded that additional methods were needed to produce effective
results (App. Br. 14).
Thus, the dispute is whether the Examiner erred in combining the
references and in finding a reasonable expectation of success.

Principles of Law
Although § 103 does not define what is meant by “prior art,”
this determination is frequently couched in terms of whether the
art is analogous or not, i.e., whether the art is “too remote to be
treated as prior art.” In re Sovish, 769 F.2d 738, 741 . . . (Fed.
Cir. 1985).
. . . .
Two criteria have evolved for determining whether prior
art is analogous: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved. In re
Deminski, 796 F.2d 436, 442 . . . (Fed. Cir. 1986); In re Wood,
599 F.2d 1032, 1036 . . . (CCPA 1979).
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In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992).

Analysis
The first error alleged by Appellant is that Nomura is non-analogous
art. It is well-established that there are two criteria to be applied when
determining whether a prior art reference is analogous: (1) whether the
reference is from the same field of endeavor as the claimed invention, and
(2) if the reference is not within the same field of endeavor, “whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” Clay, 966 F.2d at 658-59. When neither criterion
is met, the reference is deemed “non-analogous” and is not considered
pertinent to the § 103 determination.
In this case, the OSWC publication pertains to supplying pools and
bathing facilities with ocean sea water because it was “thought to be pure”
and avoided the problems of industrial effluent and raw sewage (FF7). As
purity is clearly a health benefit in this case, persons of ordinary skill in the
art concerned with supplying sea water to baths as taught by OSWC would
have considered Nomura’s teaching of the health benefits of sea-water for
inflamed skin (FF12) to be reasonably pertinent to the same problem and
therefore analogous prior art. Appellant characterized Nomura as “medical
literature” and OSWC as “pool construction,” but failed to appreciate that
the sea water in each instance was being supplied for a health benefit.
Moreover, Nomura specifically refers to a seaside camp (FF12), the
same type of facility as described in OSWC. Thus, both references would
have been considered reasonably pertinent to the claimed onshore swimming
pool.
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Appellant also contends that the Examiner erred because Nomura
admitted that its method had only a 60% success rate and suggested that an
effective method was still needed (App. Br. 14). Appellant contends that a
“reasonable expectation of success is further undermined by the fact that
there are no controls presented in Nomura's discussion of data, so there is no
way to tell if the soap, the pressure of washing, and/or the deep-sea water is
actually having an effect on the test subjects.” (Id.)
While Nomura stated a method “is needed to produce effective
results” (FF15), Nomura still acknowledged that the method it described was
63% effective (FF14). Because Nomura’s method was effective in more
than one-half the cases, it still worked, albeit not perfectly. A “finding that
the prior art as a whole suggests the desirability of a particular combination
need not be supported by a finding that the prior art suggests that the
combination claimed by the patent applicant is the preferred, or most
desirable, combination.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir.
2004). In other words, an invention may be suggested by the prior art and
therefore obvious, even if it is not 100% effective in achieving its purpose.
As to the argument that Nomura lacked controls, Appellant has not
presented evidence that persons of ordinary skill in the art would have
doubted Nomura’s explicit conclusions about the effectiveness of its studies.
Attorney argument is not evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). Nor can it take the place of evidence lacking in the record.
Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977).
Claim 8 was not separately argued and therefore falls with claim 1.
37 C.F.R. § 41.37(c)(1)(vii).

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Claims 3, 4, 5, 9, and 10
Claim 3 is to the swimming pool of claim 1, further comprising a fish
breeding plant and a means for treating and draining water from the pool and
supplying to the plant.
With respect to claim 3, 4, 5, 9, and 10, Appellant contends that
neither OSWC nor Ikeda
describe or suggest treating deep-sea water drained from either
a swimming pool or accommodation facility in combination
with supplying the treated water to a fish breading [sic,
breeding] plant (or other facility) as claimed. While it may be
well known to treat waste water in general, the appellant
respectfully contends that one of ordinary skill in the art of
swimming pool construction has no motivation to treat and re-
use swimming pool water for fish breading [sic, breeding],
hydroponic, or any other of the facilities recited in the claims on
appeal.
(Reply Br. 5.)
Precise teachings directed to the specific subject matter of a claim are
not required to reach a conclusion of obviousness. In this case, while there
is no express teaching of a means for supplying treated sea-water drained
from a swimming pool to one of the secondary facilities (“fish breeding
plant”) recited in the claims, the swimming pool is merely serving as a
seawater source – the same function of the deep seawater storage tank taught
in Ikeda (FF10) and reservoirs and settling tanks in OSWC (FF8). As such
element and function was known in the prior art, the ordinary skilled worker
would have recognized the swimming pool comprising a large volume of
water, could serve as a reservoir (Ans. 7). Accordingly, we are not
persuaded by Appellant’s argument.

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3. OBVIOUSNESS IN VIEW OF ST. CLAIR, IKEDA & NOMURA
Claims 12-14 stand rejected under 35 U.S.C. § 103(a) as obvious in
view of St. Clair, Ikeda, and Nomura (Ans. 7).
Findings of Fact
St. Clair
16. St. Clair describes a hot salt water pool (p. 1).
17. The pool is said to “cater for the leisure, community health and fitness
and education needs” of Dunedin City (p. 3).
18. The pool facility contains shower rooms, change rooms, and
refreshment facilities (p. 3).
19. A “holding tank” is shown in the pool photographs (p. 4).

Claim 12
Statement of the Issue
Claim 12 is to an “onshore dining facility that includes means for
collecting deep-sea water and means for supplying the water to the dining
facility.” The Examiner found that St. Clair taught a dining (“refreshment”)
facility in its swimming facility, but not deep sea-water (Ans. 7; FF18).
However, the Examiner concluded that it would have been obvious to utilize
deep sea-water in St. Clair’s facility to provide “storing live shellfish for
support of a dining facility,” as taught by Ikeda (Ans. 9).
Appellant contends that the cited references do not disclose or suggest
a means for supplying deep-sea water to a dining facility. Appellant also
contends that the Examiner erred in finding a reason to combine the
references, because:
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[S]upplying deep-sea water to a dining facility for the purpose
of storing live shellfish seems to be an unlikely motivation,
given the extreme infrastructure cost of pumping deep-sea
water compared with existing means used by restaurants for
storing live shellfish. Finally, as mentioned above, none of the
cited references describe or suggest treating deep-sea water
drained from the dining facility as claimed.
(App. Br. 16.)
The issue is therefore whether Appellant established that the
Examiner erred in concluding that it would have been obvious to have
supplied deep sea water to a dining facility in view of St. Clair, Ikeda, and
Nomura.
Analysis
The Examiner reasoned that a person of ordinary skill in the art would
have had reason to provide sea water to St. Clair’s dining facility to store
live shellfish for consumption (Ans. 9). Appellant contends that the
Examiner erred because piping water into a restaurant would be expensive
(App. Br. 16). However, Appellant did not identify a defect in the
Examiner’s reasoning. Rather, he asserts that the “extreme infrastructure
cost” would make it an “unlikely” choice.
Appellant has provided no evidence that the cost would make the
choice of piping sea water to a dining facility “unlikely.” Furthermore,
while cost might dictate whether the structure is actually produced, it would
not negate the existence of a reason for combining the disclosed elements.
In addition, and alternatively, we do not interpret the claim to require
that the water be supplied inside the dining facility. There is no language in
the claim that would require the water to be brought into the dining facility.
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Therefore, supplying water to the same site occupied by a dining facility, as
taught by St. Clair (FF18), would meet the claim limitation of “supplying the
water to the dining facility” as recited in claim 12.

Claims 13 and 14
Claims 13 and 14 depend on claim 12, and further recite that deep sea-
water “drained from the onshore dining facility” is supplied to a fish
breeding plant and fishing pond, respectively. While there is no express
teaching of a means for supplying treated sea-water drained from a
swimming pool to one of the facilities recited in the claims, the swimming
pool is merely serving as a seawater source – the same function of the deep
seawater storage tank taught in Ikeda (FF10) and holding tank in St. Clair
(FF19). As such element and function was known in the prior art, the
ordinary skilled worker would have recognized the swimming pool
comprising a large volume of water, could serve as a reservoir for water
after filtration “to remove harmful or hazardous particles” (Ans. 7).

4. OBVIOUSNESS IN VIEW OF ST. CLAIR, IKEDA, AND NOMURA
Claims 16, 17, and 21 stand rejected under 35 U.S.C. § 103(a) as
obvious in view of St. Clair, Ikeda, and Nomura (Ans. 10).

Claim 16
Statement of the Issue
Claim 16 is to an “onshore beauty-shop/fitness-gymnasium facility
that includes means for collecting deep-sea water and means for supplying
the water to the facility.” The Examiner concluded that the claim would
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have been obvious to a person of ordinary skill in the art in view of the
combined teachings of St. Clair, Ikeda, and Nomura. Appellant contends
that the cited publications do not describe the claimed “beauty-shop/fitness-
gymnasium” and the ordinary skilled worker would not have looked to
Nomura to modify St. Clair because the former is medical literature and the
latter was concerned with pool construction.
Analysis
Because Appellant takes issue with the Examiner’s finding that St.
Clair describes an “onshore beauty-shop/fitness-gymnasium,” we must first
address its meaning. The words in a claim are given their broadest
reasonable meaning as understood in the light of the Specification.
According to the Specification, “beauty shop/fitness gymnasium facilities
may include a sports gym which offers deep-sea water showers and
JACUZZI brand spas and a beauty salon” (Spec. 19: ¶ 88; emphasis added).
We understand the term “may” to indicate that the beauty shop/fitness
gymnasium facilities are permitted, but not required, to comprise a beauty
salon and gym. Consequently, we interpret the claimed “beauty-
shop/fitness-gymnasium” to mean a beauty shop only, a fitness-gymnasium
only, or both. St. Clair expressly discloses that the pool is intended to
“cater” to “fitness” needs (FF17) and therefore would reasonably be
understood to suggest fitness facilities, such as a “fitness-gymnasium.”
Appellant also challenges the combination of St. Clair with Nomura
because the publications are directed to different purposes (App. Br. 17).
This argument is not supported by the evidence. St. Clair’s salt water pool is
described as for “community health and fitness” needs (FF17). Nomura
described a “camp” in a “seaside village” that utilized sea water to treat skin
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inflammation, prompting Nomura to conduct further research on the efficacy
of sea water on skin conditions (FF12). St. Clair’s community salt water
pool with its focus on “health” needs would therefore have reasonably been
understood by the skilled worker to address the same health concerns as
Nomura’s seaside village camp.

Claims 17 and 21
Claim 17 depends on claim 16 and further comprises a fish breeding
plant. The claim also requires deep-sea water to be “drained from the
onshore beauty-shop/fitness-gymnasium facility” and supplied to the plant.
Claim 21 is similar, but includes a fishing pond, rather than a fish breeding
plant.
Appellant contends that “none of the references, alone or in
combination, describe means for treating deep-sea water drained from an
onshore beauty-shop/fitness-gymnasium facility as claimed.” (App. Br. 17.)
Precise teachings directed to the specific subject matter of a claim are
not required to reach a conclusion of obviousness. In this case, while there
is no express teaching of a means for supplying treated sea-water drained
from a “beauty-shop/fitness-gymnasium,” the latter serves as a seawater
source – the same function of the deep seawater storage tank taught in Ikeda
and reservoirs and holding tank in St. Clair. As such element and function
was known in the prior art, the ordinary skilled worker would have
recognized that any source of sea water could serve as a reservoir for another
facility.
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5. OBVIOUSNESS IN VIEW OF MAX
Claims 11, 15, 18, 20, 22, and 23 stand rejected under 35 U.S.C. §
103(a) as obvious in view of Max (Ans. 13).

Claims 18, 20, and 22
Claim 18 is to an onshore swimming pool with a means for collecting
deep sea water and a means for desalinating the sea water and supplying it to
a pool. Claims 20 and 22 are similar, but comprise a dining facility and
beauty-shop/fitness-gymnasium facility, instead of a pool.
The Examiner found that the difference between Max and claim 18 is
that Max did not describe “an onshore swimming pool structure” nor using
its desalination device to produce water for a pool. The same rationale was
applied to claims 20 and 22. Appellant contends there would have been no
motivation to have made the claimed subject matter (App. Br. 18).
The question in the rejection of claims 18, 20, and 22 boils down to
whether it would have been obvious to persons of ordinary skill in the art to
have utilized Max’s desalination device to produce water for the ordinary
uses to which water is put.
Max describes a desalination device for producing “fresh water.” The
water is described as useful for drinking water and refrigeration (FF3, 6).
There is no indication in Max that the desalinated water is limited in its use.
Rather, Max’s prime concern is with the chemistry involved in producing
the desalinated water (FF2). Using the fresh water product of Max’s
process to fill a pool (claim 18), in a dining facility (claim 20), and in a
beauty shop or fitness-gymnasium (claim 22), are ordinary ways in which
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water is consumed. There is no unpredictability in using Max’s desalination
apparatus for the precise purpose for which it is taught: to make fresh water.

Claims 11, 15, and 23
Claims 11, 15, and 23 involve draining the desalinated water from one
source (accommodation facility in claim 11; dining facility in claim 15;
beauty-shop/fitness-gymnasium in claim 23) and then supplying it to a
hydroponic facility. Max does not describe draining water from one facility
to another, but the Examiner contends that it is a “well-known expedient to
treat effluent” for use in hydroponics (Ans. 16). Appellant contends that
these “general purposes provide no particular direction or suggestion” that
would have led the ordinary skilled worker to the claimed subject matter
(App. Br. 19-20).
The claimed subject matter involves recycling water from one source
and using it in another. Appellant has not provided evidence that the
Examiner erred in finding that water recycling would have been common
knowledge to the ordinary skilled worker and a commonsense approach to
water usage. Both common knowledge and commonsense are fair game in
an obviousness analysis. The Examiner’s position is based on the type of
commonsense consideration that the Supreme Court in KSR found necessary
to prevent subject matter, which would have been obvious to a person of
ordinary skill in the art, from being withdrawn from the public domain.

SUMMARY
The anticipation rejection of claim 19 is affirmed. The obviousness
rejections of claims 1, 3-5, 8-18, and 20-23 are affirmed.
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TIME PERIOD FOR RESPONSE
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

cdc

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