Ex Parte Nagghappan

Patent Trial and Appeal Board

Nov 20, 2014

12904286 (P.T.A.B. Nov. 20, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/904,286 10/14/2010 LNSP Nagghappan 5958-043 5606
24112 7590 11/21/2014
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
WARDEN, JILL ALICE
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
11/21/2014 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 LNSP NAGGHAPPAN
____________________

Appeal 2013-001210
Application 12/904,286
Technology Center 1700
____________________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
BRIAN P. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2013-001210
Application 12/904,286

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This is in response to Appellant’s March 21, 2014 Request for
Rehearing (“Req.”) of our Decision (“Dec.”) mailed January 22, 2014,
wherein we affirmed the Examiner’s rejection1 of (i) appealed claims 17 and
23–48 under 35 U.S.C. § 103(a) as obvious over Tao2 in view of
Scheurman3 and Ballard,4 and (ii) appealed claim 19 as obvious over Tao in
view of Scheurman and Ballard and further in view of Garbutt.5
Appellant first questions our affirmance of the Examiner’s rejection of
dependent claims 24, 37, and 46 at pages 9 and 10 of our Decision. (Req. 1–
3). Appellant argues that our decision is improper because we sustained the
Examiner’s finding that “adding lime to increase pH greater than 11
increases alkalinity in Tao’s warm lime unit.” (Req. 1) (capitalization
removed). According to Appellant,
It appears that the examiner confused pH and alkalinity. These
are not the same and because pH is increased does not mean
that total alkalinity is increased. . . . Applicant believes that the
examiner equated pH and alkalinity and that was the basis for
concluding that Tao increased total alkalinity in the warm lime
softening unit. It appears that the Board affirmed that finding.
Respectfully, that is error.
(Id. at 1, 2). We disagree.
Representative claim 24 depends from independent claim 23. Claim
23 recites a chemical softening process including, in step a., “removing a
majority of the hardness from the feedwater stream by mixing a first alkaline

1 Examiner’s Answer filed August 20, 2012 (“Ans.”).
2 Tao et al., “Conversion of Oilfield Produced Water Into an
Irrigation/Drinking Quality Water,” SPE 26003 (1993) (“Tao”).
3 US 6,059,974 to Scheurman et al. issued May 9, 2000 (“Scheurman”).
4 US 7,048,852 B2 to Ballard et al. issued May 23, 2006 (“Ballard”).
5 US 5,879,562 to Garbutt issued March 9, 1999 (“Garbutt”).
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reagent with the feedwater stream,” and, in step b., “mixing a second
alkaline reagent with the feedwater stream and raising the pH of the
feedwater stream to above 10.5.” (App. Br. 14, 15). Claim 24, referring
back to the language of step b., recites “wherein . . . the method includes
substantially increasing total alkalinity of the feedwater stream, and
thereafter reducing total alkalinity in the reverse osmosis unit.” (Id. at 16)
(emphasis added).
Appellant’s application (“Spec.”) describes the recited chemical
softening process steps using lime in step a. as the first alkaline reagent,
which “neutralizes the bicarbonate alkalinity of the feed water and removes
calcium carbonate hardness,” and caustic in step b. as the second alkaline
reagent, which “removes magnesium hardness present in the feed water and
raises the pH of the feed water. The pH of the feed water is raised to above
10.5.” (Spec. ¶ 25). “Total alkalinity of the feed water is actually increased
during the chemical softening process . . . .” (id. ¶ 35). Applicant’s
description of steps a. and b. does not specify or distinguish between the
relative contributions of lime (Ca(OH)2) and caustic (NaOH) to the increases
in pH and total alkalinity. (Id. ¶¶ 25, 30, 35). Lime and caustic, however,
would add substantial concentrations of calcium (Ca 2+ ), carbonate (CO32-)
and hydroxide (OH-) ions to the feedwater stream (Scheurman 4:43–60;
Ballard 3:39–51), not only to neutralize bicarbonate alkalinity and remove
hardness compounds, but also to raise pH substantially from 7.5 to 11.4,
with a concomitant substantial increase in total alkalinity (Spec. ¶¶ 25, 30
(Table 1), 35; Ballard 3:39–51).
First, we observe Appellant’s Request for Rehearing relies on attorney
argument but does not contain citations to the prior art of record or the
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patent application in support of its assertions of error. Second, Appellant’s
argument does not address the specific citations in our Decision and the
Examiner’s Answer. For example, Appellant’s request does not address that
the Examiner’s rejection, and our affirmance, were based on the
combination of Tao, Scheurman, and Ballard. Dec. 6–9 (citing Ans. 4–8).
In our Decision we recognized and agreed with the Examiner’s
reasoning that it would have been obvious to one of ordinary skill to modify
Tao’s process by adding Scheurman’s use of mixing reactors and a second
alkaline reagent (caustic) to Tao’s warm lime chemical softening process, to
drive pH above 11 in the same manner disclosed in Appellant’s patent
application. (Dec. 5–8). Moreover, Appellant recognizes that alkalinity is a
measure of not only the concentration of bicarbonate and carbonate ions, but
also includes the concentration of hydroxide ions (OH-) in water. (Req. 2).
Lime (Ca(OH)2) and caustic (NaOH) will contribute calcium, carbonate, and
hydroxide ions in solution. (Scheurman 4:43–63). As the Examiner
indicated, the prior art teaches that lime (Tao 572) and other alkaline
reagents such as caustic (Scheurman 4:44–53; Ballard 3:39–51) when added
in sufficient amounts will substantially increase pH from about pH 8 (Tao
577, Table 1) to higher than pH 11 (Tao 572; Scheurman 4:44–53; Ballard
3:39–51). (Ans. 6–8). This will necessarily result in an increase in total
alkalinity in the same manner as described in Appellant’s application. (Ans.
8; Spec. ¶¶ 25, 30, 35) (see In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999) (“To establish inherency, the extrinsic evidence ‘must make clear that
the missing descriptive matter is necessarily present in the thing described in
the reference.’”)). In short, there was no confusion of pH and alkalinity.
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Appellant argues that “inherency was not addressed” (Req. 2), but the
Examiner’s Answer clearly articulated his reasoning: “Tao specifically
teaches substantially increasing the total alkalinity of the feedwater stream
via the addition of lime.” (Ans. 8). The Examiner may not have used the
word inherent or its variants in finding that Tao satisfies Appellant’s claimed
function of substantially increasing total alkalinity. Nevertheless, it is fair
and reasonable to characterize the Examiner’s finding as based on inherency
because the finding is grounded on the inherent capability of Tao’s warm
lime method to raise total alkalinity substantially, particularly when raising
pH substantially from pH 8 to above pH 11 using an alkaline reagent. This
is more particularly so when Tao’s warm lime process is modified to add a
second alkaline reagent, caustic (Scheurman 4:43–51; Ballard 3:39–51), to
drive pH and total alkalinity substantially higher, as described in Appellant’s
patent application. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(“[T]he PTO carries its procedural burden of establishing a prima facie case
when its rejection satisfies 35 U.S.C. § 132, in ‘notify[ing] the applicant . . .
[by] stating the reasons for [its] rejection, or objection or requirement,
together with such information and references as may be useful in judging of
the propriety of continuing the prosecution of [the] application.’ 35 U.S.C.
§ 132.”). “That section ‘is violated when a rejection is so uninformative that
it prevents the applicant from recognizing and seeking to counter the
grounds for rejection.’ Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir.
1990).” Jung, 637 F.3d at 1362.
Appellant has not established the Examiner’s rejection is so
uninformative that it has prevented Appellant from recognizing the ground
of rejection as based on inherency. To the contrary, Appellant understood
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the Examiner’s position as one of inherent disclosure, arguing in its Reply
Brief that “Alkalinity is Not Inherently Increased in Tao’s Warm Lime
Softener.” (Reply Br. 3). For these reasons, we determine that the Examiner
has satisfied the notice requirement of 35 U.S.C § 132 by reasonably
notifying Appellants that the Examiner’s rejection is based on not only Tao’s
explicit description of the warm lime softening process, particularly as
modified by the teachings of Scheurman and Ballard, but also Tao’s inherent
capability of performing the claimed function of substantially increasing
total alkalinity. This record reinforces our above determination that
Appellant has been reasonably notified that the Examiner’s rejection is
based on the inherent as well as explicit disclosure of Tao as required by
35 U.S.C. § 132.
Appellant further argued in its Reply Brief, under the heading of non-
inherency, that Tao does not specify how much lime and magnesium
chloride are added to the warm lime unit, such that “[i]f there is substantial
magnesium, the magnesium will react with hydroxide from the lime and
precipitate out of solution, resulting in no increase in pH or alkalinity.”
(Reply Br. 3–4) (emphasis added). Appellant essentially reprises this
argument in its Request for Rehearing. (Req. 2, 3). This argument is
speculative and without citation to support in the record. (Id.). Moreover,
Appellant’s argument is not consistent with the teaching of Tao. If there is
no increase in pH then one is not following Tao, which, like Applicant’s
Specification (Spec. ¶¶ 25, 30, 35) teaches adding enough lime (and caustic
(Scheurman 4:43–51; Ballard 3:39–51)) to increase pH substantially, from
about pH 8.0 (Tao 577, Table 1) to above pH 11. The result is to add
substantial carbonate and hydroxide ions in solution, thereby substantially
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increasing pH and total alkalinity of the feedwater stream, as described in
Appellant’s patent application. (Spec. ¶¶ 25, 30, 35).
Appellant further argues that the Board erred by affirming the
Examiner’s finding that Tao’s warm lime process would have removed “a
majority of the hardness” from the feedwater stream during the chemical
softening process. (Req. 3–6). Appellant again relies on attorney argument,
and raises a new argument,6 without citation to the prior art of record or
Appellant’s patent application. We will not consider the new argument,
which was raised for the first time in Appellant’s request for rehearing. 37
C.F.R. § 41.52(a)(1); Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir.
1998); In re Kroekel, 803 F.2d 705, 708–09 (Fed. Cir. 1986); Ex parte
Hindersinn, 177 USPQ 78, 80 (Bd. App. 1971). We have considered
Appellant’s other arguments, but we remain unpersuaded. Therefore, we
decline to change our Decision. (Dec. 5–9).

DECISION
For the above reasons, we have considered Appellant’s Request for
Rehearing but decline to change our Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

6 Appellant argues that one cannot assess hardness removal by the Tao
method because “Tao presents no mass balance studies. . . . [I]t seems
certain that a mass balance would be required, which would take into
account the water chemistry of the feed.” (Req. 4). This argument was not
raised in either Appellant’s Appeal Brief (App. Br. 5–8) or Reply Brief
(Reply Br. 2–4).
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DENIED
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