Ex Parte Wallace

Patent Trial and Appeal Board

Aug 30, 2017

13965540 (P.T.A.B. Aug. 30, 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.
13/965,540 08/13/2013 Paul Steven Wallace ENVO:0004 7402
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7590 08/30/2017
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EXAMINER
Water Minerals Company, LLC
P.O. Box 692289
GURTOWSKI, RICHARD C
Houston, TX 77269-2289 ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
08/30/2017 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 PAUL STEVEN WALLACE
Appeal 2016-008284
Application 13/965,540
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appeal 2016-008284
Application 13/965,540
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A system comprising:
a desalination system comprising:
a reverse osmosis system configured to receive a first
brine stream comprising minerals and to produce a second brine
stream and first desalinated water stream from the first brine
stream, wherein the second brine stream comprises the minerals
from the first brine stream;
a mineral removal system disposed downstream from and
fluidly coupled to the reverse osmosis system, wherein the
mineral removal system is configured to receive the second
brine stream and to capture the minerals from the second brine
stream to generate a second desalinated water stream;
a power production system comprising an engine
configured to provide power to the desalination system,
wherein the power production system does not include
combined cycle power production; and
a heating system disposed between the reverse osmosis
system and the mineral removal system, wherein the heating
system is configured to heat the second brine stream upstream
of the mineral removal system, and the power production
system provides heat to the heating system to heat the second
brine stream.
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Appeal 2016-008284
Application 13/965,540
Appellant1 requests review of the following rejections from the
Examiner’s Final Action (App. Br. 5—6):
I. Claims 1—4, 12, 13, and 18—20 rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Oklejas (US 6,139,740, issued October
31, 2000) and Burrows (US 4,752,389, issued June 21, 1988).
II. Claims 14 and 15 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oklejas, Burrows, and Shapiro (US 2011/0147195 Al,
published June 23, 2011).
III. Claim 5 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oklejas, Burrows, and Shapiro.
IV. Claim 6 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Okleias, Burrows, and Barba (US 3,763,014, issued
October 2, 1973).
V. Claims 7—9 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oklejas, Burrows, and Sephton (US 6,254,734 Bl, issued
July 3, 2001).
VI. Claim 10 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oklejas, Burrows, and Taylor (US 2007/0267874 Al,
published November 22, 2007).
VII. Claim 11 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oklejas, Burrows, and Sadhukhan (US 4,315,402, issued
February 16, 1982).
VIII. Claims 16 and 17 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oklejas, Burrows, Shapiro, and Seliber (US 3,724,229,
issued April 3, 1973).
1 Enviro Water Minerals Company, Inc. is identified as the Applicant of
Application No. 13/965,540. Enviro Water Minerals Company, Inc. is also
identified as the real party in interest. App. Br. 2.
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Appeal 2016-008284
Application 13/965,540
Appellant presents arguments only for the rejections of independent
claims 1 and 18 (Rejection I) and of independent claim 14 (Rejection II)
under 35 U.S.C. § 103(a). See generally Appeal Brief. Appellant does not
present separate arguments for dependent claims 2—4, 12, 13, 15, 19, and 20,
also rejected on at least one of the grounds noted above. Id. Further,
Appellant relies on the arguments presented when discussing the
independent claims to address the respective separate rejections of
dependent claims 5—11, 16, and 17. Id. Accordingly, we select independent
claims 1, 14, and 18 as representative of the subject matter before us for
review on appeal. Claims 2—13, 15—17, 19, and 20 stand or fall with their
respective independent claims.
OPINION
Prior Art Rejections
Independent Claims 1 and 18
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s rejection of representative claims 1
and 18 for the reasons presented by the Examiner. We add the following for
emphasis.
Both claims 1 and 18 are directed to a desalination water processing
system that provides for a heating system disposed between a reverse
osmosis system and a mineral removal system to heat a second brine stream
upstream of the mineral removal system. Claim 18 further requires a
temperature control system.
The Examiner finds Oklejas discloses a desalination system that
differs from the claimed invention in that Oklejas does not disclose a heating
system as claimed. Final Act. 3; Oklejas Abstract, Figure 3; col. 6,1. 61—col.
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Application 13/965,540
7,1. 28. The Examiner, however, finds Oklejas discloses that temperature of
the water being treated is an important factor in desalination performance.
Final Act. 3; Oklejas col. 5,1. 57—col. 6, 1.9. The Examiner further finds
Burrows discloses a water purification system that purifies water via reverse
osmosis where the water purification system includes a heat exchanger
upstream of reverse osmosis unit to improve the operational efficiency of the
reverse osmosis unit. Final Act. 3; Burrows Abstract, col. 2,11. 14—31, col.
6,11. 1—16. The Examiner determines it would have been obvious to one of
ordinary skill in the art to modify the power production system and mineral
removal system of Oklejas by incorporating the heating system of Burrows
upstream of the mineral removal system because the arrangement would
improve the operational efficiency of the mineral removal system. Final
Act. 3-A; Burrows, col. 2,11. 14—31.
For the temperature control system of claim 18, the Examiner further
relies on Burrows disclosure of a temperature control system to control the
temperature of the liquid via a temperature sensor and control 84. Final Act.
5—6; Burrows col. 6,11. 17—33.
Appellant argues the heat transfer module 52 of Burrows is powered
by a conventional 12-volt DC transformer 64 that plugs in to a conventional
household AC power supply while Oklejas’ electric motor 102 is configured
to be operatively connected to the impulse turbine 103. App. Br. 10; Reply
Br. 2—3. According to Appellant, it is unclear how the heat transfer module
52 of Burrows could be powered by the electric motor 102 or other
components of the multistage reverse osmosis system of Oklejas if the heat
transfer module 52 is adapted to plug into a conventional household AC
power supply and not any kind of electric motor. App. Br. 10; Reply Br. 3.
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Application 13/965,540
Appellant further argues even if Oklejas could be modified to include the
heat transfer module 52 of Burrows, the impulse turbine 103 would merely
power the heat transfer module 52 and not provide heat to the heating system
as recited in claim 1. App. Br. 10—11; Reply Br. 3.
We are unpersuaded by these arguments for the reasons presented by
the Examiner. Ans. 13. Appellant’s arguments are premised on bodily
incorporation and do not adequately address the Examiner’s reason for
combining the cited art. It is well established that the obviousness inquiry
does not ask “whether the references could be physically combined but
whether the claimed inventions are rendered obvious by the teachings of the
prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en
banc); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference”).
As the Examiner notes, Oklejas discloses that temperature of the
water being treated is an important factor in desalination performance. Final
Act. 3; Oklejas col. 5,1. 57—col. 6, 1.9. Oklejas specifically recognizes that
temperature fluctuation of the feed stream (brine stream (sea water)) to the
reverse osmosis device impacts the permeate output and quality. Ans. 12;
Oklejas col. 5,1. 57—col. 6, 1.9. As recognized by Appellant, Oklejas
discloses controlling the membrane pressure to mitigate the temperature
fluctuations of the feed stream. App. Br. 13; Reply Br. 4; Oklejas, col. 5,
line 57—col. 6, line 4. That is, Oklejas discloses maintaining the temperature
of the brine at a temperature that will yield a desired permeate output
through the reverse osmosis device. This is also suggested by Burrows’
disclosure that warming the feed stream (tap water) to the reverse osmosis
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Application 13/965,540
device improves operational efficiency of the reverse osmosis device. Final
Act. 3^4; Burrows col. 6,11. 1—9.
Moreover, the rejection presented by the Examiner is based on
incorporating the heating means of Burrows into the desalination process of
Oklejas. Final Act. 3^4; Ans. 2. A person of ordinary skill in the art
desiring to effectively heat the brine fed into a reverse osmosis would have
been capable of using any combination of heating systems and techniques
that are known for that purpose, such as those disclosed by the cited art, with
a reasonable expectation that the brine would be adequately heated to
improve the operational efficiency of the reverse osmosis device. KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”). In re O’Farrell, 853 F.2d 894, 904
(Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a
reasonable expectation of success.”). In doing so, one skilled in the art
would have been reasonably capable of providing the appropriate power
sources for the respective heating systems and techniques selected. Thus,
Appellant has not adequately explained why one skilled in the art, using no
more than ordinary creativity, would not have been capable of adapting the
heating system of Burrows for use in the desalination system of Oklejas.
KSR, 550 U.S. at 421 (“[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.”); see In re Sovish, 769 F.2d 738, 743
(Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the
art); In reBozek, 416 F.2d 1385, 1390 (CCPA 1969).
Appellant argues the cited art does not teach or fairly suggest
positioning a heating system between the reverse osmosis system and the
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Application 13/965,540
mineral removal system as recited in claim 1 and generally recited in claim
18. App. Br. 11. Therefore, Appellant maintains that a person having
ordinary skill in the would not be motivated to modify Oklejas with Burrows
in the manner proposed by the Examiner because positioning a heating
system between the reverse osmosis chambers 104, 112 is not taught or
fairly suggested by the cited references. App. Br. 11—12; Reply Br. 4.
We find these arguments also unavailing for the reasons presented by
the Examiner. Ans. 13—14. As the Examiner notes, both Oklejas and
Burrows recognize the beneficial impact of warming a fluid upstream of a
reverse osmosis device, namely improved operational efficiency. Ans. 13—
14; Oklejas col. 5,1. 57—col. 6,1. 9; Burrows col. 6,11. 1—9. Given this
guidance, Appellant has not adequately explained why one skilled in the art
would not have placed Burrows heating means upstream of the second
reverse osmosis device 112, which would be between the first reverse
osmosis device 104 and the second osmosis device 112 (the mineral removal
system) of Oklejas.
Appellant argues Oklejas fails to teach or fairly suggest adjusting the
flow rates such that a first flow rate of the second desalinated water stream is
greater than or equal to approximately 80 percent of a second flow rate of
the second brine stream as recited in claim 18. App. Br. 12—13; Reply Br. 5.
We are also unpersuaded by this argument for the reasons presented
by the Examiner. Ans. 14. Moreover, Oklejas discloses regulating the
flowrate of permeate by controlling the rate of feed flow. Oklejas col. 5,11.
35—56. Thus, the permeate output is recognized as a result-effective variable
and modifying this amount to attain a desired amount of product would have
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Application 13/965,540
involved routine skill in the art. See In re Boesch, 617 F.2d 272 (CCPA
1980) (discovering an optimum value of a result effective variable involves
only routine skill in the art).
Accordingly, we affirm the Examiner’s rejection of claims 1—4, 12,
13, and 18—20 under 35 U.S.C. § 103(a) as well as the separate rejections of
claims 5—11 for the reasons presented by the Examiner and given above.
Independent Claim 14
Claim 14 is directed to a desalination system that requires a
temperature control system comprising a first heat exchanger for heating a
second brine stream with a second desalinated water stream where the
temperature control system controls a temperature of the second brine
stream at least partly by selectively directing the second desalinated water
stream to bypass the first heat exchanger. That is, claim 14 requires a
temperature controller that controls the heat provided by a heat exchanger by
having the heat source stream bypass the heat exchanger.
The Examiner relies on Shapiro to teach as a known technique to
selectively control the heat transfer through a heat exchanger by having a
heat source stream bypass the heat exchanger. Final Act. 11; Shapiro 127.
Appellant argues Shapiro’s temperature controller does not control the
three way valve. App. Br. 20. Appellant also argues Shapiro fails to teach
or fairly suggest that the flash tank 184 is any kind of a heat exchanger as
contended by the Examiner. App. Br. 19—20; Reply Br. 8.
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Appeal 2016-008284
Application 13/965,540
We have considered Appellant’s arguments but are unpersuaded for
the reasons presented by the Examiner. Ans. 16. Appellant’s arguments do
not address the Examiner’s stated position that Shapiro discloses a better
way to implement temperature control of a heat exchanger by having heat
source streams bypass the heat exchanger to selectively control the heat
transfer as needed. Final Act. 11; Ans. 16. Appellant has not adequately
explained why one skilled in the art would not have been capable of
adapting the technique of Shapiro to the heat exchanger/module from the
combined teachings of Oklejas and Burrows to selectively control the
heating of the second brine as desired. Final Act. 11.
Accordingly, we affirm the Examiner’s rejection of claims 14 and 15
under 35 U.S.C. § 103(a) as well as the separate rejection of claims 16 and
17 for the reasons presented by the Examiner and given above.
ORDER
The Examiner’s rejections of claims 1—20 under 35 U.S.C. § 103(a)
are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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