G. Whiteman

Patent Trials and Appeals Board

Oct 30, 2020

2019006725 (P.T.A.B. Oct. 30, 2020)

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.
12/640,913 12/17/2009 G. Robert Whiteman 19864.00027 (ABS-9) 9626
112619 7590 10/30/2020
Belvis Law
P.O. Box 11317
Chicago, IL 60611
EXAMINER
MOSS, NATALIE M
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
10/30/2020 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):
docket@belvislaw.com
gbelvis@belvislaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte G. ROBERT WHITEMAN
____________

Appeal 2019-006725
Application 12/640,913
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
TAWEN CHANG, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2019-006725
Application 12/640,913

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Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals2 from Examiner’s
decision to reject claims 157–164 (App. Br. 2; see also Non-Final Act.3 2).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
Appellant’s disclosure relates to “applications for treating wastewater,
and more particularly to biological processes for removing pollutants from
wastewater” (Spec.4 ¶ 7). Appellant’s only independent claim, claim 157, is
reproduced below:
157. A method of reducing an amount of treatment chemicals
required to maintain an effluent stream from a wastewater
treatment plant at a predetermined level of a pollutant within
permit requirements, the method comprising:
a) determining an amount of a treatment chemical used
to treat wastewater in a wastewater treatment plant to
remove a pollutant from the wastewater, whereby the
amount of the pollutant is reduced to a predetermined

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies “Dr. G. Robert Whiteman and
Advanced Biological Services, Inc.” as the real party in interest (Appellant’s
March 18, 2019 Appeal Brief (Appeal Br.) 2).
2 Appellant calls attention to Applications 12/640,861 and 12/044,293
(Appeal Br. 2). On September 19, 2019 the Office received Appellant’s
Notice of Appeal in Application 12/640,861. A Decision, affirming
indefiniteness and obviousness rejections, was entered into Application
12/044,293, see Ex parte Whiteman, 2020 WL 1922480 (PTAB 2020),
which now stands abandoned. In addition, we note that a Decision,
reversing the obviousness rejections of record, was entered into related
Application 10/395,424, see Ex parte Whiteman, 2010 WL 4138392 (BPAI
2010).
3 Examiner’s May 17, 2018 Non-Final Office Action.
4 Appellant’s December 17, 2009 Specification.
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Application 12/640,913

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level of the pollutant in an effluent stream leaving the
wastewater treatment plant;
b) providing an on-site system for growing of microbes
at the wastewater treatment plant;
c) depositing inoculum, nutrient, and water into the on-
site system, wherein the inoculum comprises microbes
selected to degrade the pollutant; wherein the
microbes in the inoculum are not isolated,
concentrated or freeze dried;
d) growing the inoculum in the on-site system to provide
a treatment batch comprising an increased number of
the microbes, the growing comprising heating and
mixing the inoculum in the on-site system; whereby
the treatment batch has a concentration of microbes
that is at least 100 times larger than a concentration of
microbes in the inoculum; and, directly applying at
least a portion of the treatment batch to the waste
water in the wastewater treatment plant; thereby
degrading the pollutant;
e) wherein, the determined amount of the treatment
chemical can be reduced by 25% without increasing
the predetermined level of the pollutant in the effluent
stream leaving the wastewater treatment plant.
(Claims Appendix 1–2.)

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Grounds of rejection before this Panel for review:
Claims 157, 158, 162, and 163 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Nghiem,5 Leitch,6
Webster’s,7 and Greville.8
Claims 159 and 164 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Nghiem, Leitch, Webster’s, Greville,
and Pillai.9
Claims 160 and 161 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Nghiem, Leitch, Webster’s, Greville,
and Mehta.10
Because all three rejections on this record turn on the same issue, we
consider them together.

ISSUE
Does the preponderance of evidence on this record make obvious the
growth of an inoculum, comprising microbes selected to degrade a pollutant,
in an on-site system at a wastewater treatment plant?

5 Nghiem, US 5,407,577, issued Apr. 18, 1995.
6 Leitch et al., A new chemically-defined medium for Bacillus subtilis (168)
NCIMB 12900, 22 Letters in Applied Microbiology 15–20 (1996).
7 Although Examiner relies on the “Merriam Webster Dictionary,” Examiner
does not identify a citation for this document (see e.g., Non-Final Act. 3;
Examiner’s July 11, 2019 Answer (Ans.) 3).
8 Greville, How to Select a Chemical Coagulant and Flocculant, Alberta
Water & Wastewater Operators Association 22th Annual Seminar 1–24
(1997).
9 Pillai, Flocculants and Coagulants: The Keys to Water and Waste
Management in Aggregate Production, Stone Review 1–6 (1997).
10 Mehta, US 5,877,113, issued Mar. 2, 1999.
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ANALYSIS
Nghiem discloses that “[c]olor removal from the effluent streams of
paper mills continues to be a problem within the pulp and paper industry,”
where “[i]t is necessary that these downstream wastewaters be treated for
color removal prior to discharge into public waterways” (Nghiem 1:18–22;
see also id. at 2:28–29 (“[P]ressure to remove color comes primarily from
state environmental agencies”); Ans. 3 (citing Webster’s definition of the
term “pollutant”) (Examiner finds “the color that Nghiem removes from
water is interpreted to be a pollutant”)). Thus, Examiner relies on Nghiem to
disclose:
A process for removing color from a pulp and paper wastewater
which comprises the . . . steps: (A) treating the wastewater with
an enzyme which is capable of oxidizing at least a portion of
the color forming components of the wastewater; and (B)
treating the wastewater subsequent to the enzyme treatment of
step (A) with a tannin-degrading microorganism capable of
degrading at least a portion of the oxidized color forming
components.
(Nghiem, Abstract; see generally Ans. 3–7.)
Examiner recognizes that Nghiem exemplifies its process using a
series of flasks in a laboratory setting (see generally Ans. 4; see also
Nghiem 7:63–9:56). Examiner reasons, however, that Nghiem “reads on a
waste water treatment plant,” because:
Webster[’s] defines a plant as a workshop for the manufacture
of a particular product, or the total facilities available for
production. Example 2 of Nghiem discloses a method of
treating wastewater that comprises the use of multiple
containers. The location/laboratory, including the containers,
used by Nghiem to treat wastewater is broadly interpreted to

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read on a location or facility for making a product (hence,
treated wastewater).
(Ans. 4.) In this regard, Examiner reasons that “[b]ecause microorganisms
are added to . . . [a liter] flask [comprising wastewater], it is broadly
interpreted to read on an on-site system as recited in step b” of Appellant’s
claimed invention (id.). Examiner further reasons that because Nghiem adds
a microbial “inoculum and nutrients” to the flask, Nghiem “is interpreted to
read on ‘depositing inoculum and nutrient into the on-site system’ as recited
in step c” of Appellant’s claimed invention (id.). We are not persuaded.
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims their broadest
reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art. On this record, Appellant
discloses large and small scale fermentation systems, capable of growing
microorganisms for use with wastewater treatment plants, that have tank size
ranges from 250–1000 gallons (see e.g., Spec. ¶ 86; see id. at Table 3).
Thus, we agree with Appellant’s contention that Examiner’s interpretation of
a “waste water treatment plant to be a flask in a lab” is not consistent with
Appellant’s Specification or the interpretation those of ordinary skill in this
art would apply to the term on this record (see Appeal Br. 6; see also Reply
Br. 2 (Appellant contends that “Examiner has provided no rational or legal
basis to support the assertion that one of skill in the wastewater treatment
arts, when reading the Speciation [sic] as a whole, would consider the claim
term ‘wastewater treatment plant’ to be a flask.”)). See Ex parte Whiteman,
2010 WL 4138392 *3 (BPAI 2010) (“While Nghiem . . . teaches biological
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treatment of waste . . . Examiner does not identify any teaching for
‘providing an on-site system for growing of microbes at the wastewater
treatment plant’”).
Examiner’s reliance on Leitch,11 Greville,12 Pillai,13 and Mehta14 fails
to make up for the foregoing deficiency in Nghiem (see Ans. 6–12).
Thus, Examiner failed to establish an evidentiary basis to support a
conclusion that Nghiem, Leitch, Webster’s, and Greville, with or without
Pillai or Mehta, teach the growth of an inoculum, comprising microbes

11 Examiner relies on Leitch to disclose “bacterial cultures . . . grown at
37ºCelsius (heating) using a medium that comprises ‘water’, NH4Cl and
KH2PO4,” that “cultured cells enter an exponential growth phase after
several hours of culture,” and culturing bacteria for 24 hours (Ans. 7–8
(citing Leitch, Abstract, 19:Table 2, and 19:right column, first full
paragraph)).
12 Examiner relies on Greville to disclose that alum and ferric sulphate are
known coagulants (Ans. 6 (citing Greville 4:right column, second
paragraph)).
13 Examiner relies on Pillai to teach that “typical flocculants include a long
chain hydrocarbon. These polymers consist of several (poly) repeating units
(mer) and have molecular weights varying from 5 to 20 million” (Ans. 10
(citing Pillai 3:left column).
14 Examiner relies on Meata to teach:
[A] solid form composition that is used for water treatment
(Abstract). The art teaches said composition may comprise
Bacillus Subtilis (Column 1, lines 63-65). Said composition
may comprise growth accelerators, including vitamins, proteins
and amino acids (Column 2, lines 43-53). These components
are broadly interpreted to be nutrients. The art teaches
encapsulation in gelatin (Example 2). The art teaches the
disclosed composition overcomes the drawbacks of prior art
water treatment compositions, which include difficulty in
dissolution and in treating bodies of water with large surface
areas (column 1, lines 27-40).
(Ans. 11.)
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selected to degrade a pollutant, in an on-site system at a wastewater
treatment plant (see e.g., See Ex parte Whiteman, 2010 WL 4138392 *3
(Although “Ngheim . . . teach[es] treatment of waste . . ., Examiner does not
identify any teaching for ‘providing an on-site system for growing of
microbes at the wastewater treatment plant’”)).
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to make
obvious the growth of an inoculum, comprising microbes selected to degrade
a pollutant, in an on-site system at a wastewater treatment plant.
The rejection of claims 157, 158, 162, and 163 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Nghiem, Leitch,
Webster’s, and Greville is reversed.
The rejection of claims 159 and 164 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Nghiem, Leitch, Webster’s, Greville,
and Pillai is reversed.
The rejection of claims 160 and 161 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Nghiem, Leitch, Webster’s, Greville,
and Mehta is reversed.

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Application 12/640,913

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
157, 158,
162, 163
103(a) Nghiem, Leitch,
Webster’s, Greville
157, 158,
162, 163
159, 164 103(a) Nghiem, Leitch,
Webster’s, Greville,
Pillai
159, 164
160, 161 103(a) Nghiem, Leitch,
Webster’s, Greville,
Mehta
160, 161
Overall
Outcome
157–164

REVERSED