KURITA WATER INDUSTRIES LTD.

Patent Trials and Appeals Board

Sep 2, 2020

14906419 - (D) (P.T.A.B. Sep. 2, 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.
14/906,419 01/20/2016 Nozomu IKUNO SHI-105 7083
32628 7590 09/02/2020
KANESAKA BERNER AND PARTNERS LLP
2318 MILL ROAD
SUITE 1400
ALEXANDRIA, VA 22314-2848
EXAMINER
FITZSIMMONS, ALLISON GIONTA
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
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office@uspatentagents.com
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NOZOMU IKUNO
____________

Appeal 2019-005751
Application 14/906,419
Technology Center 1700
____________

Before MAHSHID D. SAADAT, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 and 5–7, which are all the claims
pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Kurita
Water Industries LTD. Appeal Br. 2.
2 Claim 4 has been canceled.
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Application 14/906,419

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STATEMENT OF THE CASE
Introduction
Appellant’s disclosure is directed to a method and apparatus “for
removing boron from raw water in order to produce ultrapure water.” Spec.
¶ 22. Claim 1 is illustrative of the invention and reads as follows:
1. A method for treating water containing boron,
comprising:
passing water containing boron in a concentration of 10
to 100 μg/L through a high-pressure reverse osmosis membrane
device, thereby obtaining a boron-reduced water containing
boron in a concentration of 0.5 – 8 μg/L;
passing the boron-reduced water subsequently through a
regenerative ion-exchange device, thereby obtaining a boron-
removed water containing boron in a concentration of < 1 ng/L;
and
passing the boron-removed water through a
nonregenerative ion-exchange device,
wherein the water fed to the high-pressure reverse
osmosis membrane device has a pH of 5 to 8,
the high-pressure reverse osmosis membrane device has a
pure water permeate flux of 0.6 to 1.3 m3/m2/day under an
effective pressure of 2.0 MPa at 25°C, and
the high-pressure reverse osmosis membrane device has a
NaCl rejection of 99.5% or more where the NaCl rejection is a
rejection determined at 25°C under an effective pressure of 2.7
MPa using an aqueous NaCl solution having a NaCl
concentration of 32000 mg/L.

The Examiner’s Rejections
Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Arba et al. (US 6,398,965 B1; issued June 4, 2002) and E.
H. Ezechi et al. (Boron in Produced Water: Challenges and Improvements:
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Application 14/906,419

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A Comprehensive Review, 12 J. Applied Sciences 402–415, 2012). See Final
Act. 3–4.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Arba, Ezechi, and Tanabe et al. (US 5,833,846; issued
Nov. 10, 1998). See Final Act. 4–5.
Claims 5–7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Arba. See Final Act. 5–6.

ANALYSIS
We disagree with Appellant’s arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken (Final Act. 3–6) and (ii) the Answer (Ans. 7–11) to the extent
they are consistent with our analysis below.
Claims 1 and 2
The Examiner finds Arba discloses (1) A method of treating water
containing boron, comprising; (2) passing water through a high-pressure
reverse osmosis membrane; (3) passing water through regenerative ion-
exchange device (electroionization); (4) passing water through a
nonregenerative ion-exchange device (polisher unit that functions as a mixed
bed deionization). Final Act. 3 (citing Arba Figs. 2B, 70–74; col. 4, ll. 18–
20; col. 8, ll. 15–30, 53–64; col. 9, ll. 13–21; col. 10, ll. 27–30). The
Examiner finds Arba does not teach or suggest NaCl rejection percentage of
the membrane but asserts “the manner in which the membrane will perform
under these testing conditions is a function of the membrane which is
directly related to the properties of the membrane” because “[w]hen the
structure recited in the reference is substantially identical to that of the
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Application 14/906,419

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claims, claimed properties or functions are presumed to be inherent.” Final
Act. 3–4 (citing In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) and
Manual of Patent Examining Procedure “MPEP” § 2112.01, I.). The
Examiner further relies on Ezechi as disclosing reverse osmosis,
regenerative ion-exchange, and the recited boron concentrations. Final Act.
4 (citing Ezechi pp. 3/19, 4/19, 11/19). According to the Examiner, one of
ordinary skill in the art would have modified Arba with the reverse osmosis
and regenerative ion-exchange with similar method and apparatus of treating
water disclosed by Ezechi’s integrated system. Final Act. 4.
pH Argument
Appellant contends the Examiner erred because the pH level in the
reverse osmosis (RO) unit “is maintained to be higher than 7.” Appeal Br. 7.
With respect to Ezechi, Appellant argues the reference discloses that the pH
of water supplied to the RO membrane is about 10.5, which is higher than
the recited range. Id.
The Examiner responds by stating “Arba et al. teach in the abstract
that pH of feed water to the water treatment unit is maintained above about 7
or below about 7 (abstract; col. 3, lines 54-67; col. 4, lines 52-57) to target
specific basic or acidic components” and concludes that the disclosed PH “is
about 7 which is included in the 5-8 pH range.” Ans. 8. The Examiner
further explains that Ezechi was not relied upon as disclosing the recited pH
range, but for its teachings of the reverse osmosis, regenerative ion-
exchange, and the boron concentration. Ans. 9.
We agree with the Examiner that Arba discloses a first treating unit
wherein the pH of the feedstream is below about 7 and above about 7 in a
second treating unit. Arba Abstract; col. 3, ll. 54–68. Contrary to
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Appellant’s challenge to Arba and as further stated above by the Examiner, a
pH of above 7 is within the recited pH range of 5–8. See Appeal Br. 7;
Reply Br. 4. Based on the cited portions of the reference, the Examiner has
shown that Arba maintains the pH between “below about 7” and “above
about 7” and in a specific example between about 7 and 8. See Arba col. 13,
ll. 5–8.
High Pressure Reverse Osmosis (RO) Argument
Appellant further contends the Examiner erred because “the RO
membrane used in Example 1 of Arba is categorized in a low pressure RO
membrane based on the operation pressure, contrary to the present
application.” Id. Appellant relies on the exhibits submitted with the Appeal
Brief. For example, Appellant’s “Arba’s Example 1” exhibit is a product
specification for 4820HR cartridge, produced by Fluid Systems, Inc., of
Arba’s RO system which is mentioned in column 14, lines 33–40. Appellant
further asserts Arba’s RO membrane has an operating pressure of 1.55–3.1
kPa, “which falls in the low-pressure type RO on Table 1 on EXHIBIT (5),”
whereas the RO membranes discussed in exhibits 1–4 and 9 are high
pressure membranes, similar to the claimed RO membrane. Appeal Br. 9
The Examiner responds by pointing out “The RO membranes of
EXHIBITS (1), (2), (3), (4) have the equivalent pressure as the present
application.” Ans. 9. The Examiner further explains that Arba’s membrane
is a high-pressure RO membrane because its operating pressure is similar to
the value disclosed by Appellant as a high-pressure RO membrane. Ans. 9–
10. According to the Examiner, absent a specific definition for “high-
pressure reverse osmosis membrane device,” the relative pressure can
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indicate whether the RO membrane is a high-pressure membrane or not.
Ans. 10.
We agree with the Examiner that the filed exhibits describe an RO
membrane having an operating pressure similar to that of Appellant’s
disclosed membrane, which Appellant identifies as a high-pressure RO
membrane. We also agree with the Examiner that Appellant’s Specification
includes no precise definition or description for a high-pressure RO
membrane. In that regard, we also rely on Appellant’s recited pressure of
2.0 MPa and the description of such membrane in the Appeal Brief stating
“[t]he effective pressure of the reverse osmosis membrane device is set at
2.0 MPa.” Claim 1; Appeal Br. 6 (citing Spec. ¶ 20).
The exhibits identified by Appellant indicate the typical operating
range of the membrane is 225–450 psi with a maximum operating pressure
of 600 psi. That is, Arba uses a membrane having an operating range of
about 1.6–3.1 MPa and a maximum operating pressure of about 4.5 MPa.3
As a result, the operating range of the membrane disclosed in Arba
encompasses the value disclosed by Appellant for a high-pressure
membrane. It is well settled that the disclosure of a range in the prior art
which substantially overlaps a claimed range is generally sufficient in and of
itself to render the claimed range prima facie obvious. See In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 262
(CCPA 1976); In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974). Even
without complete overlap of the claimed range and the prior art range, a
minor difference shows a prima facie case of obviousness. Haynes Int’l v.
Jessop Steel Co., 8 F.3d 1573, 1577 n.3 (Fed. Cir. 1993).

3 The conversion is based on 1 MPa = 145 psi.
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With respect to Appellant’s discussion of EXHIBIT (5), we note that
Appellant’s Specification is the source of defining the claim terms, such as
high-pressure RO membrane. The definitions provided in Appellant’s
EXHIBIT (5) notwithstanding, as discussed above, Appellant’s Specification
describes the claimed high-pressure RO membrane as one operating under
an effective pressure of 2.0 MPa. Spec. ¶ 26; see also Appeal Br. 6.
Boron Concentration Argument
Appellant contends the Examiner erred because Ezechi fails to
disclose the recited Boron concentration. Appeal Br. 10. The Examiner
relied on page 2/19 of Ezechi as disclosing methods of water treatment for
removing high concentration of Boron, which is described at Boron
concentration of about “26-28 ppm.” Final Act. 4. The Examiner further
responds by explaining Ezechi provides a process for treating water with
elevated Boron levels, which in combination with Arba’s teachings, would
achieve the recited levels. See Ans. 9.
We are unpersuaded of Examiner error. Appellant has not identified
error in the Examiner’s specific findings that providing water treatment for
Boron-containing water that includes the recited high-pressure RO
membrane and the specific pH levels would produce similar results as
Appellant’s disclosed water treatment, including “obtaining a boron-reduced
water containing boron in a concentration of 0.5 – 8 µg/L.” Claim 1. That
is, consistent with Appellant’s Specification, passing water through an
arrangement similar to the recited RO membrane would achieve the claimed
purpose or the specific boron concentration.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1 and dependent claim 2.
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Application 14/906,419

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Remaining Claims
Appellant argues the patentability of claims 3 and 5–7 based on the
same arguments raised with respect to claim 1 rejection. See Appeal Br. 10.
We, therefore, sustain the Examiner’s obviousness rejections of those
claims.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2 103 Arba, Ezechi 1, 2
3 103 Arba, Ezechi,
Tanabe
3
5–7 103 Arba 5–7
Overall
Outcome
1–3, 5–7

FINALITY AND 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED