Ex Parte Reinhard

Board of Patent Appeals and Interferences

Jul 23, 2012

10763691 (B.P.A.I. Jul. 23, 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.
10/763,691 01/22/2004 Fred P. Reinhard 5413P004 7684
8791 7590 07/24/2012
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
PHASGE, ARUN S
ART UNIT PAPER NUMBER
1724
MAIL DATE DELIVERY MODE
07/24/2012 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 FRED P. REINHARD
____________

Appeal 2010-010331
Application 10/763,691
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
App
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Appeal 2010-010331
Application 10/763,691

3
exchange resins in the impurity separation system may be recycled for reuse.
Id. at 1-2, 6. Specifically, Figure 1 shows: (i) an impurity separation
subsystem 20 in the form of an ion exchange unit for removing selected
impurities such as monovalent ions (e.g., perchlorate), anions (e.g.,
arsenate), or heavy metals (e.g., Ni, Cu, Cd, or Pd) from a process solution
30 (e.g., an aqueous solution such as ground water and/or potable water) to
produce a solution 40 (filtrate) that is substantially free from the targeted
impurities; and (ii) an electrolytic membrane separation (EMS) subsystem
that receives a reject solution, which is produced during regeneration of the
ion exchange resins, from the impurity separation system. Id. at 6-8.
Claim 1, which is illustrative of the subject matter on appeal, is
reproduced below:
1. A process system comprising:
an impurity separation subsystem to remove a selected
impurity from a feed water and to produce a reject solution with
an elevated level of the selected impurity and an output
solution, the output solution being the feed water having a
substantially reduced level of the impurity; and
an electrolytic membrane separation (EMS) subsystem in
fluid communications with the impurity separation subsystem,
the EMS subsystem to receive the reject solution from the
impurity separation subsystem and an electrically conductive
solution, to transfer the selected impurity to the conductive
solution.
App. Br. 16 (Claims App’x).
Appeal 2010-010331
Application 10/763,691

4
The Examiner rejected claims 1-164 as unpatentable over Byszewski5
and claims 17-21 as unpatentable over Byszewski in view of Boateng.6 Ans.
4-13.

ISSUES7
Unless argued separately within the meaning of 37 C.F.R.
§ 41.37(c)(1)(vii), all claims subject to each ground of rejection stand or fall
together.
With respect to claim 1, the Examiner found that Byszewski describes
a system including an ion exchange unit (Figure 5, element 401),
corresponding to the Appellant’s “impurity separation subsystem,” and a
base purification unit in the form of an electrolytic membrane subsystem
(Figure 3). Ans. 4-5, 11.
The Appellant contends that the Examiner’s rejection of claim 1 is in
error because Byszewski does not disclose an impurity separation subsystem
that produces a reject solution with an elevated level of a selected impurity.
App. Br. 10. According to the Appellant, Byszewski teaches the removal of

4 The statement of the rejection identified only claims 1-13 as rejected, but it
is clear from the rejection itself that claims 14-16 are also rejected. Ans. 4;
see also Final Office Action at 2.
5 U.S. Patent 5,352,345 issued October 4, 1994.
6 U.S. Patent 5,225,054 issued July 6, 1993.
7 The Appellant raises certain procedural issues, such as whether the
Examiner has entered a new ground of rejection or whether the Examiner’s
examination throughout the prosecution complied with current practice and
procedures, in the briefs. Reply Brief filed May 17, 2010 (“Reply Br.”) at 2-
3; App. Br. 14. These issues should have been raised by way of a timely
filed petition requesting supervisory review of the Examiner’s actions.
Because we do not have jurisdiction over such matters, we do not address
them in our decision.
Appeal 2010-010331
Application 10/763,691

5
suspended solids from the fluid exiting the ion exchange unit before it is fed
into what the Examiner regards as an “EMS,” and therefore the fluid cannot
be a reject solution with an elevated level of the selected impurity, as
required by claim 1. Id.; Reply Br. 3.
The Appellant further contends that Byszewski’s “exhausted anion
exchange column 401 cannot correspond to ‘the impurity separation
subsystem . . . to produce [i] a reject solution . . . and [ii] an output solution’
as delineated in claim 1,” because it “merely produces exhausted anion
exchange regenerant 402.” Reply Br. 3; App. Br. 12.
With respect to claims 13 and 17, the Appellant argues that Byszewski
“fails to disclose at least ‘receive a brine solution . . . having an elevated
level of at least one type of impurity’ and ‘produce a resultant brine solution
that may be reused for regeneration of an ion exchange resin.’” App. Br. 12-
13.
Thus, the dispositive issues arising from these contentions are:
Does Byszewski disclose an impurity separation subsystem that
produces “a reject solution with an elevated level of [a] selected impurity,”
as required by claim 1?
Does Byszewski disclose an impurity separation subsystem that
produces a reject solution with an elevated level of a selected impurity and
an output solution of feed water having a substantially reduced level of the
impurity, as required by claim 1?
Does Byszewski describe supplying a brine solution with an increased
level of an impurity to a compartment of an EMS, as required by claim 17?

App
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10331
/763,691
no error in
ki describ
column u
the exhau
yszewski,
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igure 5 abo
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DIS
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“[e]xhaus
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Col. 2, ll.
is best u
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es the ope
6
CUSSION
iner’s reje
for regen
anion exch
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ted regene
nverted in
on of elect
64-68.
nderstood
a system i
01 and a
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ctions tha
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to fresh re
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by a revie
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t warrant r
exhauste
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l. 7, ll. 21
tions from
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inter alia,
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an
partment
:

Appeal 2010-010331
Application 10/763,691

7
Fresh anion exchange regenerant is introduced via line 400 into
an exhausted anion exchange column, 401. The exhausted
regenerant is removed via line 402 and the suspended solids are
filtered out via filtration unit, 403, and removed from the
system via line 404. The filtered, exhausted anion exchange
regenerant is fed into the base purification unit, 409, via line
408. An aqueous solution, preferably water or a base solution,
is fed into the base purification compartment, 409, via line 407.
The free base is separated via base purification, which was
depicted in detail in FIG. 3.
Col. 7, ll. 21-33. Byszewski states that pretreatment, such as micro or
ultrafiltration, of the exhausted regenerant exiting the anionic exchange unit
401 may be required to remove multivalent metals and dissolved organics,
but also teaches that “soluble organic contaminants are not usually a
problem because no anion membranes are used in the base purification units
and the concentration of multivalent metals is generally low in the spent
anion exchange regenerant.” Col. 5, l. 62 to col. 6, l. 1.
These teachings in Byszewski convince us that the Examiner was
correct in finding that pretreatment of the exhausted regenerant is not
required when no anionic membranes are used, as is the case of a base
purification unit. Ans. 8. Moreover, claim 1 reads on any impurity present
in the reject solution at any elevated level (presumably relative to the fresh
regenerant solution). Therefore, we find no persuasive force in the
Appellant’s argument that Byszewski does not disclose a reject solution with
an elevated level of a selected impurity.
We also find no persuasive merit in the Appellant’s argument that
Byszewski does not disclose an output solution of feed water having a
substantially reduced level of the impurity. As pointed out by the Examiner
on pages 9 and 11-12 of the Answer, Byszewski plainly teaches that ion
Appeal 2010-010331
Application 10/763,691

8
exchange columns are used to filter feed water, and therefore we find that it
would necessarily produce an output solution of substantially reduced levels
of impurities. Byszewski col. 1, ll. 12-33. Thus, a person of ordinary skill
in the art would have understood that regenerant solution is introduced into
Byszewski’s ion exchange column only when the ion exchange resins are
exhausted or spent. Thus, we find no difference between Byszewski’s
system and that described in the current Specification as an exemplary
embodiment of the claimed invention. Spec. 7-8.
With respect to claim 17, we find ourselves in agreement with the
Examiner’s analysis at pages 11-12, 13 of the Answer. Therefore, we adopt
them as our own.

ORDER
The Examiner’s rejections under 35 U.S.C. § 103(a) of claims 1-21
are 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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