Jonathan M. Dietz

Patent Trials and Appeals Board

Oct 23, 2019

13970242 - (D) (P.T.A.B. Oct. 23, 2019)

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.
13/970,242 08/19/2013 Jonathan M. Dietz 275806.113_Div 8884
42161 7590 10/23/2019
MEYER UNKOVIC & SCOTT LLP
535 Smithfield Street
Suite 1300
Pittsburgh, PA 15222-2315
EXAMINER
HUANG, RYAN
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
10/23/2019 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 JONATHAN M. DIETZ
__________

Appeal 2018-002464
Application 13/970,242
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
N. WHITNEY WILSON, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 1–6, 8–17, and 29–32. Claims 21–28 are also
pending but have been withdrawn from consideration. A hearing was held on
August 29, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant identifies the real party in interest as Jonathan M. Dietz.
Appeal Brief dated August 17, 2017 (“Appeal Br.”), at 3.

Appeal 2018-002464
Application 13/970,242

2

The Appellant’s invention is said to relate to a method for treating iron-
contaminated fluid, such as mining-related discharge, groundwater, surface water,
and industrial waste streams. Spec. ¶ 3. The method is said to oxidize and remove
ferrous iron from the iron-contaminated fluid and produce an effluent substantially
free of iron. Spec. ¶ 3.
Representative claim 1 is reproduced below from the Claims Appendix to
the Appeal Brief. The limitations at issue are italicized.
1. A Sequential Batch Reactor method of removing ferrous iron
from an iron-containing fluid comprising the method steps of:
a. filling a tank with the iron-containing fluid;
b. introducing activated iron solids into the tank;
c. mechanically aerating the iron-containing fluid within the tank
sufficiently to ensure adequate oxygen for ferrous iron oxidation;
d. mechanically mixing the iron-containing fluid within the
tank to maintain the activated iron solids in suspension;
e. oxidizing ferrous iron in a heterogeneous ferrous iron
oxidation process,
wherein the activated iron solids are used as a catalyst,
wherein the heterogeneous ferrous iron oxidation process
creates additional activated iron solids;
f. resuspending the activated iron solids and the additional
activated iron solids to maintain the heterogeneous iron
oxidation process, wherein the additional activated iron solids
are used as a catalyst;
g. controlling a duration of steps c through f to achieve
heterogeneous ferrous iron oxidation of ferrous iron in the iron-
containing fluid;
h. collecting activated iron solids within the tank; and
i. decanting a substantially iron-free supernatant fluid from the tank.
Appeal Br. 11.
Appeal 2018-002464
Application 13/970,242

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The Examiner maintains the following grounds of rejection on appeal:
(1) claims 30 and 32 under 35 U.S.C. § 112(d) as not further limiting the
subject matter of the claim from which it depends; and
(2) claims 1–6, 8–17, and 29–32 under 35 U.S.C. § 103 as unpatentable
over Hedin2 in view of Gurol et al.3 with evidentiary support from Schlegel et al.4
B. DISCUSSION
1. Rejection (1)
The Examiner states that claims 30 and 32 “simply recite the definition or
characteristic property of ‘activated iron solids’ known to one of ordinary skill in
the art” and thus “do not further limit the claimed invention.” Ans. 7;5 see also
Final Act. 2, 8.6
On appeal, the Appellant does not address the Examiner’s rejection. See
Ans. 7 (noting that the Appellant did not address the rejection of claims 30 and 32
under 35 U.S.C. § 112(d) in the Appeal Brief). Therefore, the rejection of claims
30 and 32 under 35 U.S.C. § 112(d) is sustained.
2. Rejection (2)
The Examiner finds Hedin discloses a method for removing iron oxides from
iron-contaminated water. Final Act. 3. The Examiner finds “HEDIN is deficient
in the instantly claimed steps of (b) introducing activated iron solids; (f)
resuspending the activated iron solids and additional activated iron solids; and

2 US 5,954,969, issued September 21, 1999 (“Hedin”).
3 US 5,755,977, issued May 26, 1998 (“Gurol”).
4 US 2002/0053547 A1, published May 9, 2002 (“Schlegel”).
5 Examiner’s Answer dated October 30, 2017.
6 Final Office Action dated November 18, 2016.
Appeal 2018-002464
Application 13/970,242

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(g) controlling a duration of steps c through f.” Final Act. 3. The Examiner,
however, relies on Gurol to cure those deficiencies. Final Act. 4.
The Examiner finds Gurol discloses heterogeneous catalytic oxidation7 using
iron oxide catalysts (i.e., corresponding to step (b) in claim 1) that are recycled for
further use as catalysts (i.e., corresponding to step (f) in claim 1). Final Act. 4.
The Examiner also finds Gurol teaches that the heterogeneous process can be
controlled for a period of time (i.e., corresponding to step (g) in claim 1). Final
Act. 4.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art “to use the heterogeneous catalytic oxidation process with activated
iron oxides as taught by GUROL in the treatment process of removing iron oxides
from iron-contaminated water as taught by HEDIN” (Final Act. 4) for the
following reason:
GUROL discloses that heterogeneous catalytic oxidation provides
advantages over conventional homogeneous reactions in that the
activated catalyst does not have to be as frequently renewed (c3/1-11)
and the iron oxide catalysts are substantially insoluble in the
contaminated aqueous medium being treated, which ensures the
longevity and continued function of the catalyst (c4/15-28).8
Final Act. 4 (emphasis added).

7 A heterogeneous catalysis reaction is a catalytic reaction in which the catalyst is
one phase, i.e., a solid phase, and the medium being treated is a different phase,
e.g., a gas stream or aqueous medium. Gurol, col. 2, l. 67–col. 3, l. 4. A
homogeneous catalysis reaction, on the other hand, is a catalytic reaction in which
the catalyst and the medium being treated are a single phase, e.g., a solubilized
catalyst used to treat an aqueous medium, where the catalyst must be continually
renewed. Gurol, col. 3, ll. 7–11.
8 The Examiner also relies on Schlegel as evidence that iron oxides were known to
be used as catalysts for purifying water and removing undesirable contaminants.
Final Act. 4.
Appeal 2018-002464
Application 13/970,242

5

Referring to column 3, lines 1–11 of Gurol, the Appellant argues that “Gurol
teaches the benefits as applied to a catalytic reaction” (Appeal Br. 7) and “does not
suggest an advantage over ‘conventional homogeneous reactions’” (Appeal Br. 8)
as found by the Examiner. See Gurol, col. 3, ll. 4–8 (disclosing that “[t]he use of
the particulate mineral oxide catalyst in a heterogeneous catalysis oxidation
provides efficient performance over extended periods of operation, in contrast to
use of a homogenous catalysis reaction” (emphasis added)).
The Appellant argues that “Hedin, in contrast, teaches a homogeneous iron
oxide removal process that does not use catalysts.” Appeal Br. 8. More
specifically, the Appellant argues that in Hedin’s method, iron oxide precipitates
and settles on a liner of a collection basin. Appeal Br. 8. The Appellant argues
that “the collection basins do not rely on a catalyst for precipitation of the iron
oxide since there is not [a] mechanism described to introduce, maintain, or
recirculate a catalyst in the collection basin.” Appeal Br. 8. Thus, the Appellant
argues that the benefits of using a solid catalyst in Hedin’s method are non-
existent. Appeal Br. 8.
In response, the Examiner states:
[B]ecause HEDIN teaches the use of bicarbonate to precipitate iron
oxide from solution and that this bicarbonate has to be constantly
added to reach sufficient precipitation levels, one of ordinary skill in
the art would have found obvious that the use of a solid, renewable
catalyst, such as the goethite catalyst taught by GUROL, would be
advantageous in providing (1) efficient performance and more
importantly, (2) improve the precipitation process by replacing a
consumable ingredient (i.e., bicarbonate) with a renewable catalyst
(i.e., iron oxide catalyst).
Ans. 9.
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Application 13/970,242

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The Appellant argues that “the Examiner does not provide citations to Hedin
where repeated bicarbonate dosing or the consumption of bicarbonate is taught.”
Reply Br. 2.9 To the contrary, the Appellant argues that “bicarbonate is used in the
Hedin process to buffer the wastewater stream, but it is not consumed, such as in a
reaction.” Reply Br. 2. In that regard, the Appellant argues:
Hedin teaches a bicarbonate pretreatment assembly only for situations
where the contaminated water does not meet the preferred treatment
criteria. (Hedin: col. 4, lines 25-29). That is, there are situations
where bicarbonate is not added in the process taught by Hedin.
Therefore, it is unclear how the bicarbonate would be consumed or
what benefits would accrue by replacing bicarbonate with the catalyst
taught by Gurol.
Reply Br. 2. The Appellant’s argument is supported by the record.
Additionally, the Examiner contends:
[W]hile GUROL . . . teaches the use of iron oxide catalysts in
heterogeneous catalysis, GUROL nevertheless discloses said catalyst
is useful in precipitating iron oxides from solution. Thus, to one of
ordinary skill in the art, such as those who desire to purify iron-
contaminated aqueous solutions as in HEDIN and in the claimed
invention, would not have been dissuaded from at least considering
the use of solid iron oxide catalysts to also precipitate soluble iron
from aqueous solution.
Ans. 9 (emphasis added).
In Hedin’s method, iron oxide is precipitated from iron contaminated mine
waters. See, e.g., Hedin, col. 3, ll. 30–32; id., at col. 5, ll. 61–64. To the extent
that one of ordinary skill in the art “would not have been dissuaded from at least
considering the use of solid iron oxide catalysts”10 in Hedin’s method, that

9 Reply Brief dated January 2, 2018.
10 Ans. 9 (emphasis added).
Appeal 2018-002464
Application 13/970,242

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rationale does not explain why one of ordinary skill in the art would have modified
Hedin’s method in the first place.
In this case, the Examiner has failed to establish that Hedin’s method uses a
catalyst to precipitate iron oxide from iron contaminated mine waters or that
bicarbonate must be continuously added in Hedin’s method to reach sufficient
precipitation levels. Thus, on this record, the Examiner has failed to establish that
the advantages of heterogeneous catalytic oxidation over a homogeneous catalytic
reaction disclosed in Gurol would have motivated one of ordinary skill in the art to
use activated iron oxides in Hedin’s method as proposed. For that reason, the
obviousness rejection of claims 1–6, 8–17, and 29–32 is not sustained.
C. CONCLUSION
The Examiner’s decision is affirmed-in-part.

Claims
Rejected
35 U.S.C. § Rejection(s)/Basis Affirmed Reversed
30, 32 112(d) Claims not further
limited
30, 32
1–6, 8–17,
29–32
103 Hedin, Gurol,
Schlegel
1–6, 8–17,
29–32
Overall
Outcome
30, 32 1–6, 8–17,
29, 31

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART