Ex Parte Nagghappan et al

Board of Patent Appeals and Interferences

Jun 18, 2012

12127100 (B.P.A.I. Jun. 18, 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.
12/127,100 05/27/2008 LNSP Nagghappan 5952-082 7842
24112 7590 06/19/2012
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
DRODGE, JOSEPH W
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
06/19/2012 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 LNSP NAGGHAPPAN and ROBERT P. HELWICK
____________

Appeal 2011-000623
Application 12/127,100
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-20 both on the ground of nonstatutory
obviousness-type double patenting, and under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
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We AFFIRM.1
Appellants’ invention is directed to a method for wastewater treatment
having a first and second reverse osmosis systems, the first reverse osmosis
system fluidly connected to a wastewater influent source having a pH less
than about 3.5, the second reverse osmosis system fluidly connected
downstream of the first reverse osmosis system, and an alkali source
disposed to introduce alkali downstream of the first reverse osmosis system
and upstream of the second reverse osmosis system to raise the pH of the
influent source prior to reaching the second reverse osmosis system (Spec.
[0004]).
Claim 1, representative of the three independent method claims on
appeal, reads as follows:
1. A method of removing contaminants from an influent
wastewater stream, the method comprising:

a. initially chemically adjusting a pH of the influent
wastewater stream to less than about 3.5 or maintaining the pH
of the influent stream at less than about 3.5;

b. after initially adjusting or maintaining the pH of the
influent wastewater stream, directing the wastewater to a first
reverse osmosis system and removing contaminants from the
wastewater;

c. directing the wastewater from the first reverse osmosis
system to a second reverse osmosis system and removing
contaminants from the wastewater; and

1 Our decision makes reference to Appellants’ Brief (Br.) filed May 17,
2010, and the Examiner’s Answer (Ans.) mailed July 2, 2010.
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d. adjusting the pH upwardly after the wastewater has
been subjected to treatment in the first reverse osmosis system
and prior to treatment in the second reverse osmosis system.

The references listed below are relied upon by the Examiner as
evidence of obviousness-type double patenting and/or obviousness:
Pittner 4,574,049 Mar. 4, 1986
Al-Samadi 5,501,798 Mar. 26, 1996
Yamasaki 5,707,514 Jan. 13, 1998
Liang 6,649,037 B2 Nov. 18, 2003
Nagghappan 7,438,817 B2 Oct. 21, 2008

The Examiner rejects claims 1-20 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1-29 of
Nagghappan.
Under 35 U.S.C. § 103(a), the Examiner rejects claims 1-20 as
unpatentable over Liang in view of Yamasaki.
Additionally under 35 U.S.C. § 103(a), the Examiner rejects claims 1-
20 as unpatentable over Pittner in view of Al-Samadi.

ANALYSIS
We note that Appellants do not separately argue the double patenting
rejection, and plan to file a suitable terminal disclaimer (Br. 5).
Accordingly, we summarily affirm this rejection for the reasons expressed in
the Answer.
With regard to the above § 103(a) rejection over Liang in view of
Yamasaki, we sustain this rejection only as applied to claims 1-3, 7, 8, 10-
12, 15, 19, and 20 for the reasons expressed in the Answer with the
comments below added for emphasis. However, we will not sustain the
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rejection as applied to claims 4-6, 9, 13, 14, and 16-18 for the reasons
discussed hereafter.
With regard to the above § 103(a) rejection over Pittner in view of
Al-Samadi, we sustain this rejection as applied to claims 1-20 for the reasons
expressed in the Answer with the comments below added for emphasis.

The § 103 Rejection over Liang in view of Yamasaki
The Examiner found that Liang discloses a process for removing
contaminants from a water stream comprising initially adjusting and
maintaining the water stream pH to a low level below 4.0 (or less than about
3.5)2, directing the water stream to a first reverse osmosis system, adjusting
the water stream pH upwardly, and then directing the water stream to a
second reverse osmosis system (Ans. 6). In addition, the Examiner found
that Liang discloses initial treatment of the water stream with a mixed bed or
similar type ion exchanger system upstream of the first reverse osmosis
system, and that the pH adjustment is both an electrical and chemical
process (id.). The Examiner also found that Liang allows for use of added
chemicals to supplement pH adjustment (id.).
The Examiner conceded that Liang differs from the claimed invention
in that Liang’s water stream, while being a feed stream to a semiconductor
manufacturing facility, is not a wastewater stream (id. at 7). Nonetheless,
the Examiner found that Yamasaki discloses a process for the treatment of
wastewater from a semiconductor manufacturing facility for reuse, the

2 Appellants have raised no argument with regard to the Examiner’s finding
that Liang meets the claim limitation that pH is adjusted to less than about
3.5.
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process comprising ion exchange, pH adjustment and at least two reverse
osmosis systems in series to remove contaminating ions and reactants
including fluorides (id.). The Examiner concludes that it would have been
obvious to have used the Liang process for treating recycled wastewater
from the semiconductor manufacturing facility, since Yamasaki discloses
similar treatment steps including reverse osmosis systems in series are
efficient in removing contaminants from a wastewater feed stream (id.).
Appellants argue that Liang does not teach removing fluorides, or the
formation of hydrofluorosilicic acid, during the treatment process (Br. 6-7).
Appellants point out that Liang’s stream includes silica, but not fluorides,
whereas Yamasaki’s stream includes fluorides, but not silica (id. at 9-10).
Appellants argue there is no evidence that Liang’s process would remove
fluorides since the size of reverse osmosis system filters and membranes
vary and Liang’s reverse osmosis systems are designed to remove silicates
and borates (id. at 13). As such, Appellants contend there is no reason to
direct Yamasaki’s wastewater stream to be treated according to Liang’s
process (id. at 7-8).
These arguments are unpersuasive for the reasons expressed by the
Examiner (Ans. 11-15). As the Examiner points out, the claims do not
require the formation of hydrofluorosilicic acid, but instead require adjusting
the pH to less than about 3.5, thereby “promoting conditions that would
favor [its] formation” (id. at 11). We note independent claim 1 fails to
recite any particular contaminant to be removed from the water, and
independent claim 8 only recites removal of fluorides. Only claim 7 recites
removal of fluorides and silica from influent wastewater, but fails to require
that the influent wastewater actually has these contaminants.
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Even assuming arguendo that claim 7 requires an influent wastewater
stream having fluoride and silica contamination, the Examiner points out
that Appellants misconstrue the rejection (id. at 13). The Examiner states
that the rejection utilizes Liang’s treatment process for treating wastewater
to be recycled that is mixed with fresh make-up water as suggested by
Yamasaki (id.). Such a stream to be treated would contain both fluorides
from the fresh make-up stream as well as silica from the wastewater (id.).
Further, the Examiner found that “[s]emiconductor processing would
necessarily result in some amount of silica contaminant in [Yamasaki’s]
recycled water.” (Id.). In this regard, the Examiner further stated that “both
Liang and Yamasaki have the same objective of preparation of purified
water for use in manufacturing of semiconductors, and commonly may
employ two or more reverse osmosis membranes in series, in combination
with other treating devices” (id. at 12). Thus, it would have been within the
skill of the ordinary artisan to have adjusted the system parameters to
remove the desired contaminants. Appellants’ contention that there is no
reason to use Liang’s process to treat Yamasaki’s waste stream fails to
address this reasoning.
With regard to Appellants’ argument that Liang's reverse osmosis
systems are only capable of removing silicate and borate type ions which
ions are much larger than fluoride ions, and thus not being capable of also
removing smaller fluoride ions, we agree with the Examiner that such
argument is speculative. As the Examiner found, “Liang is silent as to the
relative pore size of membranes or sizes of contaminants that may be
removed.” (Ans. 14). Also, neither Yamasaki nor Appellants’ Specification
disclose membrane pore sizes. Further, Appellants do not dispute that the
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selection of the appropriate membrane pore sizes was within the capabilities
of a person of ordinary skill in the art. Thus, we “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ”, and find a person of ordinary skill in the art would have overcome
those difficulties with their level of skill. KSR Int’l Co. V. Teleflex Inc., 550
U.S. 398, 418 (2007); see also id. at 421 (“A person of ordinary skill is also
a person of ordinary creativity, not an automaton.”).
Appellants also argue that neither Liang nor Yamasaki disclose an
influent wastewater stream that includes phosphates and sulfates as required
by claims 4, 9, 13, 153, and 16 (Br. 14, 16, 18, 21). The Examiner responds
by submitting “that the[se] references do teach presence of phosphates and
sulfates” (Ans. 14). However, the Examiner fails to cite to any particular
disclosure of phosphates in either Liang or Yamasaki, nor do we find any.
As these claims positively require that the influent wastewater stream
contain phosphates to be removed as contaminants in Appellants’ process,
we cannot sustain the rejection of these claims in the absence of a

3 We note claim 15 recites that “the wastewater includes calcium, ammonia
and phosphates or metals”. By virtue of the use of both the “and” and the
“or” conjunctions in the same grouping without an intervening comma or
other appropriate grammatical signal, this claim requires us to interpret the
meaning of this grouping. Looking first to the body of claim 15, we find
that the claim recites conditioning the wastewater prior to the first reverse
osmosis system to favor formation of phosphoric acid and ammonium ions,
whilst reducing scaling due to calcium phosphate, and conditioning the
wastewater after the first reverse osmosis system to favor formation of
phosphate ions. Claim 15 mentions “metals” only in the above grouping
recitation. As such, we interpret claim 15 to require the wastewater to
include calcium, ammonia and phosphates, and may optionally include
metals. This interpretation is consistent also with Appellants’ Specification
and arguments (Spec. [0003], [0019], [0022]; Br. 16-17).
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substantiated finding by the Examiner that such is actually taught or
suggested in the applied prior art. Accordingly, we reverse the rejection of
claims 4, 9, 13, 15, 16, and their dependent claims under 35 U.S.C. § 103
over Liang in view of Yamasaki.4

§ 103 rejection over Pittner in view of Al-Samadi
The Examiner found that Pittner discloses a process for removing
contaminants from a municipal water supply stream including initially
adjusting and maintaining the stream pH to a level below 4.0, directing the
acidic stream to a first reverse osmosis system, thereafter adjusting the
stream pH upwardly and then directing the alkaline stream to a second
reverse osmosis system (Ans. 9). The Examiner again concedes Pittner
differs from the claimed invention in that Pittner’s influent water stream is
not a wastewater stream (id.). Nonetheless, the Examiner found that Al-
Samadi discloses a process for the treatment of either a municipal water
supply or wastewater, the process comprising pH adjustments and a reverse
osmosis system to remove contaminating ions and reactants including
fluorides (id.). The Examiner concludes that it would have been obvious to
have used the Pittner process for treating wastewater, since Al-Samadi
discloses similar treatment steps including reverse osmosis systems in series

4 We note that Appellants argue that Liang removes ammonia in the
electrodeionization device, not in the reverse osmosis system (Br. 16-17).
As each of the claims that recite that the wastewater includes ammonia also
requires that the wastewater includes phosphates, we need not address the
adequacy of this argument in view of our reversal of this rejection over these
claims.
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are efficient in removing contaminants from either a municipal water supply
or a wastewater source (id.).
Appellants argue that Pittner does not disclose a step of reducing the
pH to less than about 3.5, or wherein this pH adjustment is done chemically
(Br. 24-26, 29, 31). Appellants assert that “Pittner only describes adjusting
the pH of the water to less than 4” (Br. 24, 29, 31). Moreover, Appellants
assert that “Pittner does not describe chemically adjusting the pH”, but “only
makes a broad statement that the pH may be adjusted” (id.).
These arguments are unpersuasive for the reasons expressed by the
Examiner (Ans. 15). The Examiner found that Pittner’s disclosure of
reducing the pH to “about 4 or lower is deemed to read on ‘less than about
3.5’” (id.). To reinforce the Examiner’s finding, we note that Pittner
indicates that the preferred embodiment is to adjust the pH below 4. The
claims recite “less than about 3.5” (Claims 1, 7, and 8) (emphasis added).
Appellants do not argue the Examiner’s finding that “less than about 3.5”
overlaps with Pittner’s “below 4” range is erroneous. Pittner’s pH range is
only slightly broader than and fully encompasses the narrower pH range
recited in the claims. We conclude that a prima facie case of obviousness
has been made out in this case. In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range establishes a
prima facie case of obviousness.”).
Thus, the burden properly shifted to the Appellants to establish that
the claimed range, i.e., “less than about 3.5,” is critical. In re Woodruff, 919
F.2d 1575, 1578 (Fed. Cir. 1990). However, the Appellants do not direct us
to any evidence establishing that the claimed range is in fact critical.
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The Examiner also found that “[a]ny of the pH adjustments in Pittner
may be done chemically” (Ans. 15; directing our attention to Pittner, col. 6,
ll. 9-12). Appellants’ argument that Pittner fails to disclose chemically
lowering the pH prior to the first reverse osmosis system ignores this
finding, and the clear teaching in Pittner in support of this finding.
Accordingly, we find no error in the Examiner’s finding that Pittner reads on
the step of chemically adjusting the pH to at least about 3.5.
Appellants also argue that the Examiner has failed to provide a reason
to direct Al-Samadi’s wastewater through Pittner’s process (Br. 32).
Appellants assert that “[m]erely because both Al-Samadi and Pittner have
reverse osmosis systems does not mean that the wastestreams treated in
these systems are interchangeable.” (Id.). As to the presence of phosphates
in Pittner’s influent stream, Appellants assert that “nothing in Pittner
describes a wastestream having phosphates or phosphoric acid” (id. at 25).
Appellants assert that “Al-Samadi specifically describes that any phosphates
will precipitate onto the reverse osmosis membrane”, rather than being
removed in a second reverse osmosis system (id. at 26). Likewise,
Appellants state that there is no evidence that Pittner would remove
phosphates in the second reverse osmosis system (id.).
Again, we are not persuaded of reversible error in the Examiner’s
findings or obviousness conclusion. The Examiner did not merely find that
Pittner and Al-Samadi share the use of reverse osmosis systems in the
treatment of water. The Examiner also pointed out that Al-Samadi discloses
that such treatment processes may be applied to remove contaminants from
either municipal water or wastewater (Ans. 16). Since Pittner discloses a
process for removing contaminants from municipal water using reverse
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osmosis systems, Pittner and Al-Samadi share common objectives (id.).
Both disclose treatment of municipal water, and Al-Samadi suggests that
wastewater may also be similarly treated. We find this sufficient reasoning
to support the Examiner’s conclusion that it would have been obvious to one
of ordinary skill in the art to have used Pittner’s process to remove
contaminants from a wastewater stream as suggested by Al-Samadi.
With regard to the presence of phosphates, the Examiner found that
Al-Samadi’s wastewater stream includes phosphates, as well as calcium,
sulfates, silica, fluorides and metals (Ans. 15-16). Further, the Examiner
concluded that the claims do not require the presence of phosphates but
rather merely recite creating conditions favorable to the formation of
particular species meant for removal at each reverse osmosis stage (Ans. 16).
There is no dispute that Pittner creates conditions favorable to the formation
of the claimed species. In this regard, we note that Pittner performs the
same pH adjustments recited in the claims (id. at 16-18). The Examiner also
found that one would inherently expect the first reverse osmosis system of
Pittner to remove less than 100% of any contaminant in the water stream,
thereby requiring the second reverse osmosis system to remove the
remainder of those contaminants (id. at 16-17). The Appellants have not
directed us to any error in this finding.
Appellants argue that neither Pittner nor Al-Samadi teach the process
of claim 7, wherein fluoride and silica are removed in stages, in which
hydrofluorosilicic acid is formed and removed in the first stage, and then the
remaining fluoride and silica are removed as ions in the second stage (id. at
30). Appellants point out that Pittner’s stream includes silica, but not
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fluorides (Br. 28). As such, Appellants contend that Pittner and Al-Samadi,
even if combined, would not result in the claimed process (id. at 30).
These arguments also are not persuasive of reversible error. As
addressed by the Examiner, the process recited in the claims requires
lowering the pH of the influent stream before the first reverse osmosis
system, and then raising the pH of the stream before passing it through the
second reverse osmosis system (Ans. 16-17). The Examiner’s proposed
combination would treat Al-Samadi’s wastewater stream in Pittner’s process
(id. at 9-10). Pittner’s process performs the pH adjustments recited in the
claims (id.). In adjusting the pH, conditions favoring formation of
hydrofluorosilicic acid before the first reverse osmosis system and
conditions favoring formation of fluoride and silica ions before the second
reverse osmosis system are inherently created (id. at 16). In doing so,
removal of the contaminants in the stream would inherently occur in stages.
Appellants do not contest the Examiner’s inherency findings.
Based on the foregoing, the preponderance of the evidence supports
the Examiner’s conclusion of obviousness.
Accordingly, we sustain the Examiner’s rejection as to appealed
claims 1-20 under 35 U.S.C. § 103(a) as being unpatentable over Pittner in
view of Al-Samadi.
The decision of the Examiner on these claims is affirmed.

Conclusion
The decision of the Examiner rejecting claims 1-20 on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
1-29 of Nagghappan is summarily affirmed.
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The decision of the Examiner rejecting claims 1-20 under 35 U.S.C.
§ 103(a) as unpatentable over Liang in view of Yamasaki is affirmed only as
to claims 1-3, 7, 8, 10-12, 15, 19, and 20, but reversed as to claims 4-6, 9,
13, 14, and 16-18.
The decision of the Examiner rejecting claims 1-20 under 35 U.S.C.
§ 103(a) as unpatentable over Pittner in view of Al-Samadi 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)(iv).
AFFIRMED

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