Ex Parte Shiga

Patent Trial and Appeal Board

Mar 7, 2017

13148789 (P.T.A.B. Mar. 7, 2017)

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.
13/148,789 11/17/2011 Seiki Shiga 384593US99PCT 4796
22850 7590 03/09/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
NGUYEN, JOHN P
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
03/09/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket @ oblon. com
oblonpat @ oblon. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEIKI SHIGA1
Appeal 2015-001173
Application 13/148,789
Technology Center 1600
Before ERIC B. GRIMES, ULRIKE W. JENKS, and RACHEL H.
TOWNSEND, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to an active
hydrogen generator, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Specification states that “[i]n recent years, active hydrogen-
dissolved water containing a large amount of active hydrogen as compared
with conventional drinking water, has attracted attention since the active
1 Appellant identifies the Real Party in Interest as Shiga Functional Water
Laboratory Corporation. (Appeal Br. 1.)
Appeal 2015-001173
Application 13/148,789
hydrogen-dissolved water reduces active oxygen in the living body and is
highly effective in the promotion of human health.” (Spec. 12.)
The Specification states that a known “method for producing active
hydrogen-dissolved water . . . involves allowing drinking water to react with
magnesium metal.” {Id. 13.) The Specification also states that adding
calcium sulfate suppresses the generation of a magnesium hydroxide film on
the surface of the magnesium and prolongs its activity. {Id. 1 6.)
Furthermore, the active hydrogen obtained by the decomposition
of hydrogen molecules goes back to the molecular state of
hydrogen in a short time. Thus, the inventors found a method of
making active hydrogen that has been generated by the
decomposition of molecular hydrogen as a result of the contact
with a hydrogen molecule dissociative adsorption catalyst, to be
present in active hydrogen-dissolved water at a high
concentration for a long time.
{Id. 127.)
Claims 8, 10, 13—16, 18—26, and 28—34 are on appeal. Claim 8 is
illustrative and reads as follows:
Claim 8: An active hydrogen generator, comprising:
water;
a hydrogen molecule dissociative adsorption catalyst decomposing
hydrogen into an active hydrogen; and
a catalyst holding vessel holding the hydrogen molecule dissociative
adsorption catalyst, magnesium metal and at least one calcium compound
selected from the group consisting of calcium sulfate anhydride, calcium
sulfate hemihydrate, and calcium sulfate dehydrate, wherein the catalyst
holding vessel is submerged in the water, and
wherein the hydrogen molecule dissociative adsorption catalyst
comprises at least one catalyst selected from the group consisting of
palladium, platinum, rhodium, ruthenium, zinc, zirconium, titanium,
hafnium, vanadium, niobium, tungsten, iron, ruthenium oxide, rhodium
oxide, copper oxide, zinc oxide, zirconium oxide, silicon dioxide, titanium
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Application 13/148,789
oxide, hafnium oxide, aluminum oxide, vanadium oxide, niobium oxide,
tungsten oxide, and iron oxide.
In response to an election-of-species requirement, Appellant elected
calcium sulfate anhydride as the calcium compound and zirconium oxide as
the catalyst. (Restriction/Election Response filed Feb. 12, 2013.)
The claims stand rejected as follows:
Claims 8, 10, 13-16, 18-22, 26, and 28-31 under 35 U.S.C. § 103(a)
based on Yoshiro,2 Hristovski,3 and Shiga4 (Final Act.5 3) and
Claims 23—25 and 32—34 under 35 U.S.C. § 103(a) based on Yoshiro,
Hristovski, Shiga, Yokosawa,6 and Clarke7 (Final Act. 7).
DISCUSSION
The Examiner has rejected claims 8, 10, 13—16, 18—22, 26, and 28—31
as obvious based on Yoshiro, Hristovski, and Shiga. The Examiner finds
that Yoshiro teaches an apparatus for making hydrogen-dissolved water
comprising a container of water having magnesium in a covering member
submerged in it. (Final Act. 3.) The Examiner finds that Yoshiro does not
teach including zirconium oxide but Hristovski teaches “metal oxide
2 Yoshiro et al., JP 2004/243151, published Sept. 2, 2004.
3 Kiril Hristovski et al., Selecting metal oxide nanomaterials for arsenic
removal in fixed bed columns: From nanopowders to aggregated
nanoparticle media, 147 J. of Hazardous Materials 265-274 (2007).
4 Shiga, US 2008/0311225 Al, published Dec. 18, 2008.
5 Office Action mailed Sept. 24, 2013.
6 Yokosawa et al., US 2005/0000915 Al, published Jan. 6, 2005.
7 Clarke et al., US 6,383,395 Bl, issued May 7, 2002.
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Application 13/148,789
nanomaterials for arsenic removal in packed bed columns.” (Id. at 3 4.)
The Examiner finds that Shiga teaches a hydrogen-dissolved water generator
containing water, a case filled with magnesium, and a case filled with
gypsum (calcium sulfate). (Id. at 4.)
The Examiner concludes that it would have been obvious
to incorporate zirconium oxide and calcium sulfate anhydride
into a covering member (vessel) comprising [] magnesium as
hydrogen generating material wherein the covering member is
placed inside a container containing water to create hydrogen
dissolved water (water with active hydrogen) for drinking ... [in
order to] obtain a hydrogen dissolved water generator [ ] that
further removes arsenate (contaminant which is found in water
from water systems around the world) by including zirconium
oxide and enhance the efficacy of the hydrogen dissolved water
generator by including . . . gypsum.
(Id. at 5.)
We agree with the Examiner that the references support a prima facie
case of obviousness. Yoshiro describes a device for generating hydrogen in
drinking water. (Yoshiro 16.) The device includes magnesium contained
within a “covering member” that is placed into a water container. (Id. at
11 6, 8.) The device has through-holes that allow water and hydrogen to
pass. (Id. 119, 10.) However, the holes have a “pore diameter which does
not pass the solid” (id. 19) so that “a solid can be prevented from being
mixed with the hydrogen dissolved water” (id. 110). In another
embodiment, the covering member has “window part[s]” (id. 120) and
includes a “bag body” that “can be formed with textile fabrics or a
nonwoven fabric, and the texture (equivalent to a through-hole) 18 is finely
set as the degree [to] which the . . . magnesium hydroxide solid 14 does not
pass” (id. 119).
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Application 13/148,789
Hristovski describes “arsenate removal [from water] by aggregated
metal oxide nanoparticle media in packed bed columns” using sixteen
commercial nanopowders. (Hristovski 265, abstract.) Hristovski states that
the nanopowders had particle diameters between 2 nm and 80 nm. {Id. at
262, Table 1.) Hristovski states that “[t]he screening single-dose batch
experiments suggested that most nanopowders removed >90% of the
arsenate for almost all water matrices under the given conditions. TiC>2,
ZrC>2, Fe2C>3 and NiO performed best.” {Id. at 272, left col.; see also id. at
268—269 (describing screening single-dose batch experiments) and Fig. 2
(bar graph depicting results of screening single-dose batch experiments with
tap water, ground water, surface water, and 10 mM NaHCCf buffered
nanopure water).)
Hristovski also states that “[s]ince TiC>2 was the best performing metal
oxide in the nanopowder experiments, commercially available nanoparticle
aggregates containing TiC>2 were obtained for further study of arsenate
adsorption.” {Id. at 267, right col.) Hristovski does not describe the size of
the aggregates but states that “the nanoparticle aggregates were separated
from the suspension by filtration through an 0.2 pm nylon membrane filter.”
{Id.) Hristovski states that its results “suggest that the TiC>2 [nanoparticle]
aggregates remove arsenate as well or better than TiCh nanopowder.” (Id. at
270, right col.)
Shiga discloses an active hydrogen-dissolved water generator. (Shiga
11.) Shiga states that a chemical reaction between magnesium metal and
drinking water causes the formation of a magnesium hydroxide layer on the
metal that inhibits the generation of active hydrogen. {Id. at H 9—10.) Shiga
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Application 13/148,789
discloses that “the formation of a magnesium hydroxide layer on the
magnesium metal surface can be greatly reduced by adding a sulfate ion
derived from calcium sulfate (gypsum)” to the water. {Id. 114.)
We agree with the Examiner that it would have been obvious to
modify the device disclosed by Yoshiro by adding calcium sulfate along
with the magnesium, because Shiga teaches that the calcium sulfate will
prevent inhibition of active hydrogen generation. We also agree with the
Examiner that it would have been obvious to include ZrCE in the device,
because Hristovski teaches that ZrCE removed over 90% of the arsenate
from tap and surface water. Hristovski also teaches that TiCE nanoparticle
aggregates remove arsenate as well or better than a TiCE nanopowder, so a
skilled artisan would reasonably expect that aggregates of ZrCE would also
successfully remove arsenate from water.
Hristovski provides a reason to include ZrCE in Yoshiro’s device,
because it teaches that
[m]any community water systems and private wells in North
America and around the world have arsenic concentrations
exceeding 10 pg/L, the maximum contaminant level (MCL)
promulgated by the US EPA, European Union (EU) and World
Health Organization (WHO). Regulatory pressure to reduce
arsenic levels has spurred the development of technologies that
economically remove arsenic from drinking water [ ] during
municipal treatment or in single dwelling, point of use
applications.
(Hristovski 266, bridging paragraph.)
Appellant argues that Hristovski describes a fixed bed column that
maximizes contact between water and a bed of adsorbent as the water flows
through, whereas Yoshiro’s device allows water to flow through its side
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Application 13/148,789
walls and is not designed to maximize contact of the water with the material
inside the device. (Appeal Br. 10.) Appellant argues that a skilled artisan
would not have any expectation of success in combining the two devices:
“For example, modifying Yoshiro according to Hristovski may form a
device containing an implement in which upstream-downstream axial flow is
severely impeded by the formation of a plug at an upstream-most point.”
(Mat 10-11.)
This argument is unpersuasive. The rejection is not based on
physically combining the devices disclosed by Yoshiro and Hristovski, but
on incorporating the zirconium oxide disclosed by Hristovski into Yoshiro’s
device. (See Final Act. 7.) “Claims may be obvious in view of a
combination of references, even if the features of one reference cannot be
substituted physically into the structure of the other reference.” Orthopedic
Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983). Here,
both of the prior art devices are based on contacting water with a solid
material—magnesium metal in Yoshiro’s device, zirconium oxide in
Hristovski’s. The fact that one device is based on prolonged contact via
holes in the side walls and the other is based on a single pass of water
through a fixed bed would not lead a skilled artisan to doubt that they could
be successfully combined to produce a single device that both generates
active hydrogen and removes arsenic from water.
Appellant also argues that the holes in Yoshiro’s device permit water
in but do not allow its catalyst out, whereas Hristovski’s device contains
nanoparticles and using them in Yoshiro’s device “would result in loss of
substantial amounts of the arsenic-removal material through the holes”
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because the nanoparticles will pass through the pores of Yoshiro’s device.
(Appeal Br. 11—12.)
This argument is also unpersuasive. As the Examiner has pointed out,
Yoshiro describes an embodiment of its device that includes a “covering
member (a bag body), which comprises pores (paragraph [0009]), that
allows water to pass freely but does not allow solids inside to pass
(paragraph [0024]).” (Ans. 5.) Yoshiro states that the bag body “can be
formed with textile fabrics or a nonwoven fabric, and the texture (equivalent
to a through-hole) 22 is finely set as the degree which the aforementioned
magnesium hydroxide solid 14 does not pass.” (Yoshiro 124.) Hristovski
discloses that TiC>2 aggregates can be removed from suspension in water
(and therefore, retained separate from the water) using a nylon filtration
membrane (Hristovski 267, right col.), and that the aggregates remove
arsenate as well or better than a nanopowder {id. at 270, right col.).
“The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art.” In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991). Here, the combined teachings of
Yoshiro and Hristovski would have suggested using a nylon membrane as
the bag body in Yoshiro’s device so that ZrCF aggregates could be retained
in the device and effectively remove arsenic from drinking water. Retention
of the arsenic-absorbing aggregates in the device would also alleviate
concerns {see Reply Br. 4—5) of toxicity resulting from the particles
themselves.
Finally, with respect to this rejection, Appellant argues that the
devices of Yoshiro and Hristovski operate on different principles, and
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“includ[ing] an arsenic adsorbent-type device in the Yoshiro hydrogen-
dissolve[d] water system makes no sense. The Yoshiro device is designed to
improve the health of an individual by adding hydrogen to drinking water in
a bottle.” (Appeal Br. 12—13.) Appellant asks:
How could an arsenic-containing water composition or an
arsenic-containing water storage device be marketed? Would the
manufacturer or distributor notify consumers that the water that
went into the bottle contained arsenic - but never mind because
the consumer should trust the manufacturer to provide an arsenic
adsorbent that removes unhealthy arsenic?
(Id. at 13.)
This argument is also unpersuasive. Removing arsenic from water
makes it less toxic, and therefore more healthy, as evidenced by Hristovski’s
disclosure that various health agencies around the world set “maximum
contaminant levels” for arsenic in water. (Hristovski 266, right col.)
Appellant’s argument that arsenic-containing water could not be marketed,
with or without an arsenic-absorbing device in it, is not germane because the
claimed device is not limited to bottled water intended to be sold. Claim 8
also reads on a system for removing arsenic and generating active hydrogen
in tap water, and Hristovski discloses that “[m]any community water
systems and private wells” contain excessive levels of arsenic. (Id.)
With respect to the second ground of rejection, the Examiner finds
that Yokosawa teaches using a porous case containing a functional agent for
improving water quality, and suggests that the case can be made of
polyethylene. (Final Act. 7.) The Examiner finds that Clarke provides
evidence that polyethylene is a porous plastic. (Id.) The Examiner
concludes that it would have been obvious take the components made
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Application 13/148,789
obvious by Yoshiro, Hristovski, and Shiga and place them into a porous
polyethylene case based on Yokosawa’s teaching that doing so would allow
water to enter and exit while confining the functional agents. (Id. at 7—8.)
We agree with, and adopt, the Examiner’s fact-finding and
conclusion.
Appellant argues that combining Yoshiro with Yokosawa suffers from
the same problem as combining it with Hristovski: “Again, those of skill in
the art would have no basis for turning to a water pollution device to modify
the Yoshiro device which instead functions to add hydrogen to drinking
water. Adding hydrogen to drinking water is entirely different than
removing a contaminant from polluted water.” (Appeal Br. 13.)
This argument is unpersuasive for the reasons discussed above with
respect to Hristovski. In addition, the Examiner relies on Yokosawa only as
a basis for concluding that it would have been obvious to use polyethylene to
make the device suggested by Yoshiro, Hristovski, and Shiga.
SUMMARY
We affirm the rejection of claim 8, under 35 U.S.C. § 103(a) based on
Yoshiro, Hristovski, and Shiga. Claims 10, 13—16, 18—22, 26, and 28—31
fall with claim 8 because they were not argued separately. 37 C.F.R.
§ 41.37(c)(l)(iv).
We affirm the rejection of claim 23 under 35 U.S.C. § 103(a) based on
Yoshiro, Hristovski, Shiga, Yokosawa, and Clarke. Claims 24, 25, and 32—
34 fall with claim 23 because they were not argued separately. 37 C.F.R.
§ 41.37(c)(l)(iv).
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Application 13/148,789
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
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