Ex Parte Wilson et al

Patent Trial and Appeal Board

Feb 7, 2019

13480053 (P.T.A.B. Feb. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/480,053 05/24/2012
85013 7590 02/11/2019
TraskBritt / Battelle Energy Alliance, LLC
PO Box 2550
Salt Lake City, UT 84110
FIRST NAMED INVENTOR
Aaron D. Wilson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2939-10545.l(BA-583) 1117
EXAMINER
PEO,KARAM
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
02/11/2019 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):
USPTOMail@traskbritt.com
iplegal@inl.gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte AAROND. WILSON, FREDERICKF. STEWART, and
MARK L. STONE
Appeal 2018-002 717
Application 13/480,053
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and JANEE.
INGLESE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification filed
May 24, 2012, as subsequently amended ("Spec."); Final Office Action dated May
26, 2017 ("Final"); Appeal Brief filed Sept. 25, 2017 ("Appeal Br."); Examiner's
Answer dated Nov. 17, 2017 ("Ans."); and Reply Brief filed Jan. 16, 2018 ("Reply
Br.").
Appeal2018-002717
Application 13/480,053
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's decision
finally rejecting claims 1-7, 9-20, and 26-31. Appeal Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
The invention relates to methods and systems for treating a liquid to purify
or concentrate at least one of a solvent and a solute therein by using a switchable
solvent as a draw solute. Spec. ,r 3. At the time of the invention, membrane
filtration methods using either reverse osmosis or forward osmosis were known in
the art for separation of solutes from water. Id. ,r,r 4, 5. According to the
Specification, although forward osmosis processes circumvented several
deficiencies of the reverse osmosis processes, known draw solutes for use in these
processes, such as ammonium carbonate and ammonium carbamate, were
disadvantageous in that they either required energy intensive processes, such as
reverse osmosis, to remove them from the drawn water, or produced toxic, volatile
materials that were expensive to handle. Id. f 5. The inventors are said to have
discovered an improved reverse osmosis process that is less complicated, less
dangerous, and more affordable. Id. ,r 50. The inventive process utilizes "[a]
single-phase draw solution comprising at least one of an aminium salt, an
amidinium salt, and a guanidinium salt." Id. ,r 7. Claim 1 is representative of the
inventive process, and is reproduced below.
1. A method of treating a liquid, the method comprising:
providing a feed liquid comprising at least one solvent and at least one
solute to a first side of a membrane;
2 Appellants identify Battelle Energy Alliance, LLC, as the real party in interest.
Appeal Br. 2.
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Application 13/480,053
providing a single-phase draw solution comprising one or more of an
amidinium salt, a guanidinium salt, and a tertiary aminium salt
to a second side of the membrane;
drawing the at least one solvent across the membrane and into the
single-phase draw solution through forward osmosis to form a
diluted single-phase draw solution; and
exposing the diluted single-phase draw solution to one or more of
heat, reduced pressure, and a non-reactive gas to release one or
more of CO2, CS2, and COS from the diluted single phase draw
solution and form a multiple-phase solution comprising:
a first liquid phase comprising the at least one solvent; and
a second liquid phase comprising one or more of a [sic] an
amidine compound, a guanidine compound, and a tertiary
amine compound.
Appeal Br. 39 (Claims Appendix).
The Examiner relies on the following references as evidence of
unpatentability:
McGinnis
Jessop
Cath
US 2011/0203994 Al
US 8,580,124 B2
US 2006/0144789 Al
Aug. 25, 2011
Nov. 12, 2013
July 6, 2006
The claims stand finally rejected under 35 U.S.C. § I03(a) as follows:
1. claims 1-7, 9, 10, 13-16, 18-20, and 26-31 over McGinnis in view of
Jessop; and
2. claims 11, 12, and 17 over McGinnis in view of Jessop and Cath.
The Examiner finds McGinnis discloses a method of treating a liquid using a
single phase draw solution comprising ammonium carbonate, ammonium
bicarbonate, or ammonium carbamate-a thermolytic salt solution. Final 3--4. The
Examiner finds McGinnis discloses steps of drawing a solvent from a feed liquid
(e.g., contaminated water) across a membrane, through forward osmosis, into the
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Application 13/480,053
single phase draw solution and exposing the diluted, single-phase draw solution to
heat, thereby releasing carbon dioxide from the diluted, single-phase draw solution.
Id. at 4. The Examiner finds, however, that McGinnis' method differs from the
claimed method in that McGinnis does not disclose the use of a single-phase draw
solution comprising a tertiary aminium salt and that exposing the diluted single-
phase draw solution to heat forms a multi-phase solution. Id. at 4--5.
The Examiner finds Jessop discloses a separation process comprising
forming a contaminated liquid by contacting a contaminant with a switchable
hydrophilicity solvent ("SHS"), and using CO2 as a trigger to convert the
contaminated liquid to a two phase system comprising an aqueous liquid phase and
a hydrophobic liquid phase containing the contaminant. Final 6. The Examiner
finds Jessop discloses embodiments that utilize amidinium bicarbonate or
ammonium bicarbonate solutions-thermolytic salt solutions-that fall within the
scope of the salt solutions recited in claim 1. Id. at 5. The Examiner finds "one of
ordinary skill in the art would recognize that a switchable hydrophilicity solvent is
equivalent to a thermolytic salt solution." Id. at 6. The Examiner finds one of
ordinary skill in the art at the time of the invention would have been "motivated ..
. to reduce energy requirements for separation," and would "have incorporated the
known switchable hydrophilicity solvent, as taught by Jessop, in the process of
McGinnis, since it is a known thermolytic solvent which can effectuate phase
change for separations and purify contaminants from aqueous streams." Id. The
Examiner finds the ordinary artisan would have had a reasonable expectation of
success in making the proposed substitution because McGinnis and Jessop "both
are directed towards amine[-]based solvents for aqueous separations." Id.
Appellants argue the Examiner fails to identify evidence to support a finding
that one of ordinary skill in the art would have recognized that Jessop's and
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Application 13/480,053
McGinnis' s amine-based solvents are equivalents for the specific purpose of acting
as single-phase draw solutions in a forward osmosis process. Appeal Br. 15.
Appellants argue that "at best, Jessop simply teaches that the switchable
hydrophilicity solvents taught therein can be used to separate components of a
contaminated liquid through a process wherein the switchable hydrophilicity
solvents are directly added to the contaminated liquid." Id. Appellants argue
Jes sop's process is entirely different from McGinnis' s separation process in which
amine-based solvents are used as draw solutions in a forward osmosis process. Id.
Appellants argue that although "the draw solute compounds taught by McGinnis
( e.g., ammonium carbonate, ammonium bicarbonate, and ammonium carbamate)
and the switchable hydrophilicity compounds taught by Jessop may fall within the
same generic thermolytic salt chemical family," one of ordinary skill in the art
would not recognize these compounds as equivalent for use as draw solute
compounds given "the size of the thermolytic salt chemical family, along with
significant variations in chemical structure ( e.g., substantial variations in pendant
groups) within the thermolytic salt chemical family." Id. at 16. Appellants also
argue that "substituting components in the chemical arts is generally considered to
be unpredictable" and that "not all thermolytic salts are capable of functioning as
draw solutes for a forward osmosis process." Id. at 20.
In support of their arguments, Appellants rely on the Declaration of Dr.
Aaron D. Wilson, executed November 7, 2016 ("Deel."). Appeal Br. 22. Dr.
Wilson testified that he is a named inventor in the present Application. Deel. ,r 8.
Appellants direct us to paragraphs 16 to 21 of the Declaration (Appeal Br. 22)
wherein Dr. Wilson testifies that "it is the chemical potential, or osmotic pressure,
of the water in an aqueous solution that determines the capacity of an aqueous
solution to function as a draw solution," and "it has been found that a number of
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Application 13/480,053
single-phase thennolytic salt solutions do not adjust the chemical potential of water
sufficiently to provide flux" (Deel. ,r 18). Dr. Wilson cites six different
publications in support ofhis testimony. See id. ,r,r 18-19, 21 (citing Exhibits A-
F). Dr. Wilson testifies that "the different chemical structures of the switchable
hydrophilicity compounds taught by Jessop relative to the ammonium carbonate,
ammonium bicarbonate, and ammonium carbamate taught by McGinnis render
unpredictable the ability to successfully employ [Jessop's] switchable
hydrophilicity compounds ... in the forward osmosis process taught by
McGinnis." Id. ,r 20. Dr. Wilson explains these differences in detail, with citation
to supporting evidence, in paragraph 21 of the Declaration.
In the Response to Argument section of the Answer, the Examiner finds
Appellants' arguments unpersuasive (see Ans. 13), asserting that Appellants
"ha[ ve] not provided any reasons why SHS solvents of Jessop would not be
capable of functioning as draw solutes in forward osmosis" (id. at 15). The
Examiner finds the Declaration unpersuasive because "[t]he declarant has not
provided any evidence of unexpected properties, direct, or indirect comparison of
the claimed invention with the closest prior art." Ans. 17. We also understand the
Examiner's position to be that the Declaration is unpersuasive because Dr.
Wilson's discussions regarding "chemical potential," "osmotic pressure," etc., do
not relate to limitations found in the claims. See id. ("The scope of the limitations
'chemical potential', 'osmotic pressure', ... and 'rapidly mix with water at
concentrations relevant to a forward osmosis draw solution' do not have nexus
with the claims.").
The Examiner correctly indicates that the substitution of one known element
for a known equivalent is prima facie obvious (see Ans. 14 ). See In re Mayne, 104
F.3d 1339, 1340 (Fed. Cir. 1997). However, the Examiner fails to appreciate that
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Application 13/480,053
the burden is on the Examiner to first provide evidence establishing that
compounds are well-known equivalents/or a specific purpose. See In re
Christensen, 82 F.2d 715, 716 (CCPA 1936); see also Graver Tank & Mfg. Co. v.
Linde Air Prods. Co., 339 U.S. 605, 609 (1950) ("In determining equivalents,
things equal to the same thing may not be equal to each other .... Consideration
must be given to the purpose for which an ingredient is used in a patent ... and the
function which it is intended to perform."). We agree with Appellants that the
Examiner has failed to meet the initial burden to provide sufficient evidence to
support a finding that one of ordinary skill in the art would have recognized that
Jessop's and McGinnis's amine-based solvents are equivalents for the specific
purpose of acting as single-phase draw solutions in a forward osmosis process. See
Appeal Br. 15. Therefore, because the Examiner's findings are insufficient to
support a prima facie case of obviousness, we do not sustain the rejection of
independent claim 1 or its dependent claims 2-7, 9, 13, 14, and 26-31. Nor do we
sustain the rejection of independent claim 15 and its dependent claims 16-20, or
the separate rejection of claims 11, 12, and 17, both of which are based on the
same, unsupported finding that Jessop's and McGinnis's amine-based solvents are
equivalents. See Final 10, 13.
For completeness, we add that even accepting the Examiner's findings as
sufficient to satisfy the initial burden to show that the ordinary artisan would have
recognized Jessop's and McGinnis's amine-based solvents as equivalents for use
as single-phase draw solutions, we nevertheless would reverse the Examiner's
decision to reject the claims due to the Examiner's failure to meaningfully address
Appellants' rebuttal evidence.
A finding of equivalence is a determination of fact. Proof can be made
in any form; through the testimony of experts or others versed in the
technology; by documents, including texts and treatises; and, of
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Application 13/480,053
course, by the disclosure of the prior art. Like any other issue of fact,
final determination requires a balancing of credibility, persuasiveness
and weight of evidence.
In re Ruff, 256 F.2d 590, 598 (CCPA 1958) (quoting Graver Tank, 339 U.S. at
609). To rebut the Examiner's finding that Jessop's and McGinnis's amine-based
solvents were known equivalents, Appellants provided evidence in the form of
declaration testimony supported by numerous publications. The record is devoid of
any indication that the Examiner considered the publications cited by Dr. Wilson.
Moreover, the Examiner's comments suggest the Examiner, at best, conducted a
cursory review of the declaration testimony and Appellants' arguments, and
completely failed to consider the supporting evidence. Compare, e.g., Appeal Br.
21 ("Appellant notes that the suitability of the switchable hydrophilicity solvent of
Jessop to effectuate phase change is not the issue precluding the switchable
hydrophilicity compounds of Jessop from being obvious substitutes for the
compounds taught by McGinnis in the process of McGinnis. Rather, Appellant
asserts that the uncertainty precluding one of ordinary skill in the art from finding
the switchable hydrophilicity compounds of Jessop to be obvious substitutes for
the compounds of McGinnis is the ability of the switchable hydrophilicity
compounds to function as draw solutes of a draw solution formulated to draw a
solvent across a membrane through forward osmosis.") and id. at 22 ("Appellant
is not arguing that the SHS solvents of Jessop are not capable of functioning as
draw solutes in forward osmosis. Rather, Appellant is arguing that one of ordinary
skill in the art at the time of the invention would not reasonably expect that the
SHS solvents of Jessop would be able to successfully function as draw solutes in
the forward osmosis process taught by McGinnis."), with Ans. 15 ("The applicant
has not provided any reasons why SHS solvents of Jessop would not be capable of
functioning as draw solutes in forward osmosis."); Deel. ,r,r 18-19, 21 (referencing
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Application 13/480,053
six different publications), with Ans. 16 ("The declaration does not provide
objective evidence but merely states that McGinnis and Jessop do not render the
claims obvious."); Appeal Br. 21-22 ("[T]hat switchable hydrophilicity solvents of
Jessop are thermolytic solvents does not teach or suggest the suitability of the
switchable hydrophilicity solvents to predictably function as draw solutions.
Appellant directs the Board to ,r,r (16) through (21) of Dr. Wilson's Declaration ...
[for] further discussion in this regard.") and Deel. ,r 21 ( discussing the relevance of
stoichiometric ratio of ammonia and carbon dioxide in a solution with respect to its
ability to function as a draw solution in a forward osmosis process and explaining
that the lack of at least one N-H bond in tertiary amines results in aqueous
solutions having different osmotic characteristics than those of McGinnis), with
Ans. 17 ("Mr. Wilson states that in mixtures of ammonia and carbon dioxide (with
specific stoichiometric ratios), the solubility of ammonium compounds would be
too low for the aqueous solution to efficiently function as a draw solution for many
forward osmosis processes. To be given substantial weight in the determination of
obviousness or nonobviousness, evidence of secondary considerations must be
relevant to the subject matter as claimed .... The claims are not directed towards
ammonia; furthermore, there is not a specific stoichiometric ratio claimed .... The
evidence relied upon should establish 'that the differences in results are in fact
unexpected and unobvious and of both statistical and practical significance.'").
In sum, Appellants have identified reversible error in the Examiner's
rejections of claims 1-7, 9-20, and 26-31.
REVERSED
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