Ex Parte ShigaDownload PDFPatent Trial and Appeal BoardMar 7, 201713148789 (P.T.A.B. Mar. 7, 2017) Copy Citation 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 tfarrell@oblon.com 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 2 Appeal 2015-001173 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. 3 Appeal 2015-001173 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). 4 Appeal 2015-001173 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 5 Appeal 2015-001173 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 6 Appeal 2015-001173 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” 7 Appeal 2015-001173 Application 13/148,789 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 8 Appeal 2015-001173 Application 13/148,789 “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 9 Appeal 2015-001173 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). 10 Appeal 2015-001173 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 11 Copy with citationCopy as parenthetical citation