Lee J. Monsrud et al.

Patent Trials and Appeals Board

Apr 7, 2020

12764621 - (D) (P.T.A.B. Apr. 7, 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.
12/764,621 04/21/2010 Lee J. Monsrud P10529US01-2699USU1 7720
124330 7590 04/07/2020
McKee, Voorhees & Sease P.L.C. ATTN: Ecolab Inc
801 Grand Avenue
Suite 3200
Des Moines, IA 50309
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
04/07/2020 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):
michelle.woods@ipmvs.com
patatty@ipmvs.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEE J. MONSRUD, XIN SUN, KRISTEN A. MILLS,
DOUGLASS J. PRIDEAUX, BETH E. BENSON,
KIM R. SMITH, and KEITH E. OLSON

Appeal 2019-002513
Application 12/764,621
Technology Center 1700
____________

Before JEFFREY T. SMITH, DONNA M. PRAISS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

SMITH Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8, 10–14, 17, 19, 20, 22–27, and
29–35. An Oral hearing was held on March 17, 2020.2 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. Appellant identifies the real party in interest as Ecolab USA
Inc. Appeal Br. 1.
2 A written transcript of the Oral hearing will be entered into the record
when the transcript is made available.
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STATEMENT OF THE CASE
Appellant’s invention is generally directed to apparatuses that are
capable of controlling water hardness and scale formation. (Spec. 1.)
According to the Specification, the apparatuses of the present invention do
not control water hardness by ion exchange mechanisms. (Id. at 8.) Claim 1
illustrates the subject matter on appeal and is reproduced below:
1. An apparatus for treating water comprising:
(a) an inlet for providing water to a first treatment reservoir
from a water source;
(b) a substantially water insoluble resin material loaded with a
plurality of one or more multivalent cations, wherein the
substantially water insoluble resin material is exhausted and
comprises a crosslinked acrylic acid polymer; wherein the
polymer is crosslinked at less than 8%; wherein the
substantially water insoluble resin material is pre-
conditioned to exhaustion;
wherein the substantially water insoluble resin material is
contained within the first treatment reservoir, and wherein
the substantially water insoluble resin material has a bed
depth of less than 2 feet in the first treatment reservoir; and
(c) an outlet fluidly connected to the first treatment reservoir;
and
(d) water; wherein the water passes through the inlet to the first
treatment reservoir to form a treated water source, wherein
the treated water source passes through the outlet.

Appeal Br. 29, Claims Appendix.

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The following rejections are presented for our review:3
I. Claims 1–8, 10–12, 17, 19, 20, 22–27, and 29–35 rejected under 35
U.S.C. § 103(a) as unpatentable over Smolka (US 4,120,653; Oct. 17, 1978).
II. Claims 1–8, 10–12, 17, 19, 20, 22–27, and 29–35 rejected under 35
U.S.C. § 103(a) as unpatentable over Smolka in view of the Admitted Prior
Art (as represented by Product Information Sheets for Lewatit S8528 and
Amberlite IRC 76)4.
III. Claims 13 and 14 rejected under 35 U.S.C. § 103(a) as
unpatentable over Smolka in view of the Admitted Prior Art in view of any
one of Cherney (US 4,035,257; July 12, 1977), Nagarajan (US 4,828,752;
May 9, 1989), Smith et al. (US 2009/0054287 A1; Feb. 26, 2009) and Smith
(US 2008/0287335 A1; Nov. 20, 2008).
IV. Claims 1–8, 10–14, 17, 19, 20, 22–27, and 29–35 provisionally
rejected on the ground of nonstatutory obviousness-type double patenting as
being unpatentable over claims 1–16 of copending Application No.
14/884,908 in view of Lim et al. (US 4,518,505; May 21, 1985).
OPINION
After review of the respective positions Appellant and the Examiner
provides, we AFFIRM the Examiner’s rejections under 35 U.S.C. § 103(a)

3 The complete statement of the rejection on appeal appears in the Final
Office Action. (Final Act. 5–15).
4 The Examiner relies on the portion of the Specification addressing the
evidence identified. Spec. 17, ll. 9–12.
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and on the grounds of non-statutory obviousness-type double patenting.
We add the following primarily for emphasis.
We refer to the Examiner’s Final Office Action for complete
statements of the rejections presented for review on appeal. Final Act. 6–17.
Obviousness
Appellant’s main contentions5 are that (1) the Examiner rejects the
claims based on differences regarding isolated elements and improperly fails
to provide an obviousness rationale for the claimed invention as a whole
(Appeal Br. 15–16 ); (2) Smolka fails to teach or suggest both an exhausted
ion exchange resin material and an ion exchange resin material which is pre-
conditioned to exhaustion (Appeal Br. 16–20); (3) modifying the apparatus
of Smolka to include pre-exhausted resins renders the apparatus unsuitable
for its intended purpose, i.e., ion-exchange (Appeal Br. 20–21); (4) the
Examiner’s reliance on Lewatit S8528 and Amberlite IRC 76 is based on
hindsight (Appeal Br. 21–23); (5) the Examiner failed to consider the
evidence of unexpected results based on the data in the originally filed
Specification and in the Monsrud Declaration6 (Appeal Br. 23–24).
Appellant’s arguments are not persuasive of reversible error for the
reasons the Examiner presents (Final Act 6–13; Ans. 3–20).

5 Appellant does not argue that Smolka fails to disclose a water treatment
apparatus including: an inlet for providing the water source to a treatment
reservoir; a treatment reservoir including a water treatment composition; and
an outlet for providing treated water from the treatment reservoir. (See
generally Briefs.)
6 Declaration of Lee J. Monsrud under 37 C.F.R, § 1.132 submitted Dec. 9,
2014. The arguments addressing the obviousness rejection in the Appeal
Brief generally follow the opinion expressed in this Declaration.
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The first issue to be discussed is: Does Smolka describe exhausted
resin material?
The Specification describes exhausted resin material as follows:
As used herein, the term “exhausted resin material” refers to an
ion exchange resin material that can control water hardness, but
that is incapable of performing an ion exchange function. In
some embodiments, an exhausted resin material has a surface
that is substantially loaded with a plurality of one or more
multivalent cations, and is thus unable to exchange ions with a
water source when contacted with a water source.

(Spec. 15–16.)
Smolka discloses suitable ion-exchange materials can consist of any
material. (Smolka col. 10, ll. 24–36.) Smolka in operation discloses water
flows through the apparatus contacting the ion exchange material resulting
in an exhausted exchanger. (Smolka col. 11, ll. 15–37.) The present
Specification describes, in the exemplary embodiments, the formation of
exhausted resin material (pre-conditioning) by flowing 5000 gallons of water
through the resin/reservoir systems. (Spec. 31–32.)
The fact that Smolka’s ion exchange material has reached the point of
regeneration and subsequently undergoes further modification (regeneration
process) does not negate formation of an exhausted resin. Cf. In re Mullin,
481 F.2d 1333, 1335–36 (CCPA 1973) (citing In re Herbert, 461 F.2d 1390
(CCPA 1972) (“It matters not one whit that it was intended to be and
appreciated as being an intermediate structure rather than an end use item.”);
In re Johnson, 162 F.2d 924, 928 (CCPA 1947) (“In our opinion the fact that
Braunbeck intends his flaky product [i.e., an intermediate product,] to be
reduced to flour and applicants intend the same flaky product not to be
reduced to flour does not entitle applicants to a patent on the flaky product.”)
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Appellant has not adequately explained why the ion exchange material of
Smolka that has reached the point of regeneration is different from the
exhausted resin material of the present invention.
The second issue to be discussed is: Would it have been obvious to a
person of ordinary skill in the art to utilize commercially available ion
exchange materials in Smolka’s apparatus?
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant has not disputed that commercially available ion exchange
materials, including Lewatit S8528 and Amberlite IRC 76 as described in
the present Specification, were known to persons of ordinary skill in the art.
(Spec. 17.) A person of ordinary skill in the art would have reasonably
expected that known ion exchange materials would have been useful in a
water filtering apparatus such as described by Smolka. “For obviousness
under § 103, all that is required is a reasonable expectation of success.” In
re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988).
Likewise, any argument that may be considered as a lack of
motivation or reason to combine the cited art is also unpersuasive for the
reasons given above. That is, the arguments fail to account for “the
inferences and creative steps that a person of ordinary skill in the art would
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employ.” See KSR, 550 U.S. at 418. Furthermore, the Supreme Court has
stated that it is error to “look only to the problem the patentee [or applicant]
was trying to solve.” KSR, 550 U.S. at 420; see also, In re Beattie, 974 F.2d
1309, 1312 (Fed. Cir. 1992) (“[T]he law does not require that the references
be combined for the reasons contemplated by the inventor.”); also In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Appellant’s arguments regarding the degree of cross-linking of the ion
exchange material lack persuasive merit. (Appeal Br. 22.) Appellant has
failed to explain why the commercially available ion exchange materials,
including of Lewatit S8528 and Amberlite IRC 76, utilized in the exemplary
embodiments do not have the cross-linking property required by the claimed
invention. Appellant also has not exemplified the process steps performed
on these recognized ion exchange resins to meet the required degree of
cross-linking.
The Examiner finds Smolka does not specifically teach the bed depth
as claimed. (Final Act. 7.) The Examiner concluded:
[I]t would have been obvious to an ordinary artisan at the time
the invention was made to find [] optimum dimensions and the
operation parameters of the apparatus depending from the
specific application by routine experimentation in order to
ensure proper and optimal functioning of the apparatus.
(Final Act 7.)
Appellant responds to the Examiner’s position only in the principal
brief. Appellant specifically states:
Applicant’s claims are directed to an apparatus based on the
insight and principle of operation that an exhausted resin
provides a surprising and beneficial ability to control hardness
in water without performing ion exchange. This difference
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permits the use of a different bed depth than is traditionally
used.
(Appeal Br. 15.)

Appellant further states “the Office conceded Smolka does not teach
the claimed bed depth, and argued the bed depth is obvious.” (Appeal Br.
16.)
Appellant does not direct us to any description in Smolka itself that
indicates that Smolka’s bed has a specific depth requirement. Appellant
does not provide a specific argument in the Appeal Brief or the Reply Brief
explaining why the claimed bed depth would not have been an obvious
determinable parameter to a person of ordinary skill in the art as suggested
by the Examiner. It is well settled that where patentability is predicated
upon a change in a condition of a prior art composition, such as a change in
size, concentration or the like, the burden is on the applicant to establish
with objective evidence that the change in critical, i.e., it leads to a new,
unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In
re Aller, 220 F.2d 454, 456 (CCPA 1955).
Appellant’s representative, at the oral hearing held March 17, 2020,
for the first time argues:
Smolka cannot employ such a bed depth [sic., as claimed].
We’ve provided evidence both in the specification, turning to page 16
[of the demonstrative presented at the hearing], and also in third-party
sources, specifically the GE Power and Water Processing Technology,
chapter 8 in the ion. That’s highlighted on page 16 and it’s in the
briefing.
(Hearing Transcript 10; see also Hearing Demonstrative 15–21.)
A new argument not timely presented in the Appeal Brief will not be
considered when presented at an oral hearing, absent a showing of good
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cause explaining why the argument could not have been presented in the
Appeal Brief. 37 CFR § 41.47(e); cf. Ex parte Borden, 93 USPQ2d 1473,
1477 (BPAI 2010) (informative) ) (“the reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner’s rejections, but were not.”); compare also Optivus
Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) (argument raised for the first time in the Reply Brief is considered
waived); see also 37 C.F.R. § 41.37 and § 41.41. Because the record
contains no such showing of good cause, we will not consider the new
argument raised that the oral hearing.
Appellant argues the Examiner has failed to properly consider the
rebuttal evidence. (Appeal Br. 23–26.) Appellant specifically argues:
First, it is unexpected that an exhausted resin would prevent
scale formation without performing ion exchange. This is
evidenced by Smolka which teaches non-exhausted resins are
critical and necessary. Second, it is unexpected that the claimed
polyacrylic polymer resin with low levels of cross-linking
would provide improved performance over resins having
different levels of crosslinking and prepared with different
polymers. Third, it is unexpected that the exhausted resins
transfer a residual, but detectable level of, polymer and residual
organic carbon to the water to form the treated water source,
and that the presence of these components assist in preventing
scaling. Applicant relied on evidence of those unexpected
results.
(Appeal Br. 24.)
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976). The burden of establishing unexpected results rests on
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Appellant. Appellant may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The unexpected results must be established by factual evidence, and
attorney statements are insufficient to establish unexpected results. See In re
Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Further, a showing of
unexpected results supported by factual evidence must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
We adopt the Examiner’s thorough review and explanation of the
deficiencies in Appellant’s relied upon evidence. (Ans. 15–16.) We add the
following.7
Appellant does not direct us to portions of the Specification that
acknowledge the exemplified data demonstrates unexpected results for
exhausted water insoluble resin material comprising a crosslinked acrylic
acid polymer, crosslinked at less than 8%. For example, the Specification
when discussing example 3 states “[a]s can be seen from these Figures,
relatively good results, viz. low scaling, were achieved using the IRC-76 and
Lanxess resins.” (Spec. 34.) To show unexpected results, Appellant must
not only show that the invention reflects different results than those of the
prior art, but also “that the difference actually obtained would not have been
expected by one skilled in the art at the time of invention.” In re Freeman,
474 F.2d 1318, 1324 (CCPA 1973) (citations omitted). Furthermore, it is

7 We note Appellant has not asserted that the bed depth is the basis of
unexpected results.
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not clear that the showing to which Appellant directs our attention compares
the claimed invention against the closest prior art.
We have considered the Monsrud Declaration, but do not find it
persuasive of establishing patentability of the appealed subject matter.
Although factual evidence is preferable to opinion testimony, such testimony
is entitled to consideration and some weight so long as the opinion is not on
the ultimate legal conclusion at issue. While an opinion as to a legal
conclusion is not entitled to any weight, the underlying basis for the opinion
may be persuasive. In re Chilowsky, 306 F.2d 908, 916 (CCPA 1962).
Some weight may be given to a persuasively supported statement of one
skilled in the art on what was not obvious to him (see In re Lindell, 385 F.2d
453, 456 (CCPA 1967) and In re Weber, 341 F.2d 143 (CCPA 1965)).
Here, the declarant Monsrud has provided his opinion that “[b]ecause
Smolka teaches the exhausted resin should be regenerated or replaced,
Smolka cannot be construed to teach an apparatus that employs an exhausted
ion exchange resin. Moreover, these teachings actually teach away from the
claimed invention, which intentionally uses resins that are exhausted-
incapable of performing ion exchange.” (Monsrud Declaration ¶ 17.) This
opinion lacks persuasive merit because it does not adequately address the
scope of the claimed invention that is directed to an apparatus, not a method
of using an apparatus.8

8 Whether the prior art teaches away from the claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). It is
well established that a prior art reference must be considered in its entirety,
i.e., as a whole, when determining if it would lead one of ordinary skill in
the art away from the claimed invention. W.L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). Cf. In re Susi, 440
F.2d 442, 446 n.3 (CCPA 1971) (Disclosed examples and preferred
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Appellant’s remarks with respect to the separate rejection of
dependent claims 13 and 14 do not amount to separate arguments. (Appeal
Br. 26–27). In this regard, Appellant does not assert non-obviousness based
on the additional limitations set forth in claims 13 and 14 subject to this
rejection by explaining how the additional references applied thereto by the
Examiner fail to establish the obviousness of the additional features recited
in these dependent claims. Because we do not find Appellant’s arguments
persuasive as to independent claim 1, it follows that these arguments are
unpersuasive as to claims 13 and 14. As such, Appellant’s statements are
considered to be nothing more than general allegations of patentability and
are not considered separate patentability arguments. See 37 C.F.R. §
41.37(c)(1)(vii) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”).

Obviousness-type double patenting
We summarily sustain the Examiner’s provisional rejection of claims
1–8, 10–14, 17, 19, 20, 22–27, and 29–35 on the grounds of non-statutory
obviousness-type double patenting as unpatentable over claims 1–16 of co-
pending Application No. 14/884,908 in view of Lim without further
comment, because Appellant does not contest this rejection (see Briefs
generally). 37 C.F.R. § 41.37(c)(1)(iv); see also Manual of Patent
Examining Procedure (MPEP) § 1205.02 (9th ed. Jan. 2018) (“If a ground of

embodiments do not constitute a teaching away from a broader disclosure or
non-preferred embodiments); Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d
1371, 1379–80 (Fed. Cir. 2005) (Even a “statement that a particular
combination is not a preferred embodiment does not teach away absent clear
discouragement of that combination.”).
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rejection stated by the examiner is not addressed in the appellant’s brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner’s answer.”).
Accordingly, we sustain the Examiner’s rejection of all the claims on
appeal.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 10–14,
17, 19, 20,
22–27, 29–35
103(a) Smolka
1–8,
10–14, 17,
19, 20,
22–27,
29–35

1–8, 10–14,
17, 19, 20,
22–27, 29–35
103(a)
Smolka,
Lewatit S8528,
Amberlite IRC 76
1–8,
10–14, 17,
19, 20,
22–27,
29–35

13, 14 103(a)
Smolka,
Lewatit S8528,
Amberlite IRC 76,
Cherney,
Nagarajan,
Smith ’287,
Smith ’335
13, 14
1–8, 10–14,
17, 19, 20,
22–27, 29–35
Nonstatutory double patenting
1–8,
10–14, 17,
19, 20,
22–27,
29–35

Overall
Outcome 1–8,
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
10–14, 17,
19, 20,
22–27,
29–35

TIME PERIOD FOR 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