SELECTO, INC.

Patent Trials and Appeals Board

Sep 28, 2020

15839365 - (D) (P.T.A.B. Sep. 28, 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.
15/839,365 12/12/2017 Ehud LEVY 707000-01018 3762
35161 7590 09/28/2020
DICKINSON WRIGHT PLLC
1825 EYE ST., NW
SUITE 900
WASHINGTON, DC 20006
EXAMINER
PEO, JONATHAN M
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
09/28/2020 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):
dwpatents@dickinsonwright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EHUD LEVY

Appeal 2019-006718
Application 15/839,365
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
JANE E. INGLESE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1, 4–12, and 15–20.2 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—i.e., “SELECTO, INC.” (Application Data Sheet filed
December 12, 2017 at 6), which is also identified as the real party in interest
(Appeal Brief filed April 19, 2019 (“Appeal Br.”) at 2).
2 See Appeal Br. 5–15; Reply Brief filed September 11, 2019 (“Reply Br.”)
at 1–2; Final Office Action entered September 14, 2018 (“Final Act.”) at 5–
27; Examiner’s Answer entered July 12, 2019 (“Ans.”) at 4–26, 28–33.
Appeal 2019-006718
Application 15/839,365

2
I. BACKGROUND
The subject matter on appeal relates to a method for removing lead
from water containing total organic carbon (“TOC”) and total
trihalomethane (“TTHM”) and to a fluid purification system for use in such
a method (Specification filed December 12, 2017 (“Spec.”) ¶¶ 2, 155;
Abstract). Representative claim 1 is reproduced from the Claims Appendix
to the Appeal Brief, as follows:
1. A method of removing lead from water comprising the
steps of:
contacting the water with a fluid purification system,
comprising:
a first fluid purification media comprising a first rigid
porous purification block, comprising:
a longitudinal first surface;
a longitudinal second surface disposed inside the
longitudinal first surface; and
a porous high density polymer disposed between the
longitudinal first surface and the longitudinal second surface;
a second fluid purification media, comprising a pleated
fibrous, nonwoven fabric disposed adjacent to the first surface of
the first fluid purification media, the second surface of the first
purification media, or both wherein the fibrous nonwoven fabric
of the second fluid purification media is folded to form a plurality
of pleats and comprising an active material disposed on, among,
or in the pleated, fibrous, nonwoven fabric, and wherein:
the longitudinal first surface has a first transverse
dimension;
the longitudinal second surface is an inner surface
having a second transverse dimension;
the ratio of the first transverse dimension to the
second transverse dimension is in the range of 1.2 to 3.5, and the
difference between the first transverse dimension and the second
transverse dimension is the thickness of the porous purification
block;
a third fluid purification media, comprising a second rigid
porous purification block having a longitudinal outer surface and
Appeal 2019-006718
Application 15/839,365

3
a longitudinal inner surface, wherein the longitudinal inner
surface is disposed transversely outside the longitudinal first
surface of the first fluid purification media and defining a
transverse gap therebetween, or wherein the longitudinal outer
surface is disposed inside the longitudinal second surface of the
first fluid purification media, and defining a transverse gap
therebetween;
a fourth fluid purification media comprising particles of a
fluid purification material disposed in the transverse gap; and
removing the lead from the water also containing at least
one of TOC and TTHM.
(Claims App. 1–2).
II. REJECTIONS ON APPEAL3
The claims on appeal stand rejected under pre-AIA 35 U.S.C. § 103(a)
as follows:
A. Claims 1, 4–10, 12, and 15–204 as unpatentable over Taylor et
al.5 (“Taylor”), VanderBilt et al.6 (“VanderBilt”), Rinker et al.7

3 The Examiner states that a rejection under 35 U.S.C. § 112, ¶ 2, of claims
9 and 12, as set forth in the Final Action (Final Act. 3–4), has been
withdrawn following entry of an Amendment filed November 27, 2018
(Ans. 26–27; Advisory Action entered December 17, 2018).
4 The Examiner lists only claims 1, 6, 7, 12, 15, 16, and 19 as rejected in the
statement of the rejection but mentions claims 1, 4–10, 12, and 15–20 in the
body of the rejection (Ans. 4, 15; Final Act. 5, 16). Because the Appellant
understands claims 1, 4–10, 12, and 15–20 to be rejected on this ground
(Appeal Br. 5), the Examiner’s error is harmless.
5 US 2006/0043024 A1, published March 2, 2006.
6 US 4,753,728, issued June 28, 1988.
7 US 2006/0000763 A1, published January 5, 2006.
Appeal 2019-006718
Application 15/839,365

4
(“Rinker”), Levy,8 Smith et al.9 (“Smith”), Tepper et al.10
(“Tepper”), and Hong;11 and
B. Claim 11 as unpatentable over the same references identified
above further in view of Beswick et al.12 (“Beswick”).
(Ans. 4–26, 28–33; Final Act. 5–27).
III. DISCUSSION
REJECTION A
1. Grouping of Claims
Although the Appellant provides various arguments or comments
under separate sub-headings for claim 1, claims 4–11 (claim 11 not being
subject to Rejection A),13 claim 12, and claims 15–20, the Appellant relies
on the same arguments for claims 1, 4–10, 12, and 15–20 (Appeal Br. 5–14).
Therefore, we confine our discussion of this rejection to claim 1, which we
designate as representative pursuant to 37 C.F.R. § 41.37(c)(1)(iv). Claims
4–10, 12, and 15–20 stand or fall with claim 1.

8 US 2006/0207925 A1, published September 21, 2006.
9 US 6,136,189, issued October 24, 2000.
10 US 2007/0175196 A1, published August 2, 2007.
11 US 6,106,725, issued August 22, 2000.
12 US 2008/0047902 A1, published February 28, 2008.
13 For claims 4–11, the Appellant states that the rejection as to these claims
should be reversed “for at least the reasons given [for claim 1] and in [the]
Appellant’s prior responses, which are incorporated . . . by reference”
(Appeal Br. 9). A similar statement is offered for claims 15–20 (id. at 13).
But the Appellant’s prior responses do not offer any separate arguments for
claims 4–11 or 15–20 (Reply filed November 27, 2018 at 10; Reply filed
June 11, 2018 at 10–11).
Appeal 2019-006718
Application 15/839,365

5
2. The Examiner’s Position
The Examiner finds that Taylor describes a method for removing
contaminants, such as lead, from water using a filtration system that includes
a porous composite carbon block (Ans. 4–5; Final Act. 5–6). The Examiner
acknowledges multiple differences between Taylor’s method and the subject
matter recited in claim 1, but relies on various other references to resolve
these differences and conclude that a person having ordinary skill in the art
would have combined the references in the manner claimed by the Appellant
(Ans. 5–11; Final Act. 6–12).
3. The Appellant’s Contentions
The Appellant does not dispute the Examiner’s findings regarding
Taylor, VanderBilt, Rinker, Levy, Smith, and Tepper (Appeal Br. 5–14).
Nor does the Appellant contest the Examiner’s reasons in support of
combining these references (id.). Rather, the Appellant’s principal argument
is that Hong, which is cited to establish the obviousness of applying the
method suggested by the prior art references to remove lead from water that
also contains TOC and TTHM, discloses “phosphate mineral” and “solid
carbonate mineral,” which “are each entirely absent from [the Appellant]’s
claimed fluid purification system” (id. at 7). The Appellant urges that the
Examiner “fails, therefore, to provide sufficient reasoning to support a
conclusion that the claimed combination would [have been] obvious to a
person having ordinary skill in the art and in view of the cited references”
and that “[s]uch reasoning to combine is only present in [the Inventor]’s own
[S]pecification” (id.). According to the Appellant, “[t]he fluid purification
system of claim 1 provides new and unexpected results that render the
claimed combination unobvious over the cited prior art” (id. at 8) (citing the
Appeal 2019-006718
Application 15/839,365

6
Appellant’s published application, US 2018/0099878 A1, published April
12, 2018, ¶¶ 175–76; see also Spec. ¶¶ 154–55).
4. Opinion
We have fully considered the Appellant’s arguments but do not find
them persuasive to identify reversible error in the Examiner’s rejection. In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
As the Examiner finds (Ans. 4–5; Final Act. 5–6), Taylor teaches that
water filtration systems based on carbon in the form of porous composite
carbon blocks that include activated particles (e.g., activated carbon) and
binders are effective to remove contaminants such as lead from water
(Taylor ¶¶ 20–23, 26, 38). Similarly, Hong teaches that many organic
compounds in water react with chlorine disinfectant to form toxic
compounds such as trihalomethanes (“THM”), which the EPA regulated
down to 80 ppb (Hong col. 3, ll. 16–44). To remove these contaminants as
well as other pollutants such as lead, Hong discloses a filtration system that,
like Taylor, is also based on activated carbon but further contains a mineral
matrix comprising hydroxylapatite (i.e., a phosphate mineral) and a slightly
soluble calcium carbonate (i.e., carbonate minerals) (id. at col. 4, ll. 10–14,
26–33, 51–54; col. 5, ll. 25–26).
Given these teachings, we discern no error in the Examiner’s reliance
on Hong to show that the water to be treated by Taylor’s method, when
disinfected with chlorine, would reasonably be expected to contain organic
compounds (TOC) and trihalomethanes (TTHM) in addition to other
contaminants such as lead (Ans. 11; Final Act. 12). Moreover, as the
Examiner points out (Ans. 29–30), Hong, like Taylor, is also concerned with
filtration media including activated carbon to remove lead from water, and
Appeal 2019-006718
Application 15/839,365

7
claim 1 does not limit the purification media in the “first rigid porous
purification block” to any particular material (Claim App. 1). Under these
circumstances, we find no reversible error in the Examiner’s articulated
motivation for combining Taylor and Hong (Ans. 29–30), which is that a
person having ordinary skill in the art would have reasonably expected that
when Hong’s filtration media based on activated carbon and matrix minerals
are implemented as the filtration media in Taylor’s porous composite carbon
block based on activated carbon, the resulting system would be effective in
reducing not only lead in chlorine-disinfected water but also toxic
compounds such as TTHM. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007) (“[W]hen a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.”);
id. at 417 (“[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.”).
As for secondary considerations (i.e., unexpected results), the
Appellant relies on certain descriptions in the Specification (Spec. ¶¶ 154–
55; published Application ¶¶ 175–176) (Appeal Br. 8). According to the
Appellant, “‘a porous purification block as a first fluid purification media
and a fibrous nonwoven fabric disposed as a second fluid purification media
inside the first fluid purification media’ ‘is surprisingly more effective at
removing lead, including fine lead particulates, than are commercially
available carbon block filters’” (id. (quoting Spec. ¶ 154)) (emphasis
omitted). As the Examiner observes (Ans. 30), the Appellant does not direct
Appeal 2019-006718
Application 15/839,365

8
us to objective evidence (e.g., back-to-back comparative tests against the
closest prior art) that would support the allegation of unexpected results.
Therefore, the argument fails. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) (“‘Mere argument or conclusory statements in the specification does
not suffice.’” (Internal citation omitted)).
For these reasons, and those well-stated by the Examiner, we uphold
the Examiner’s rejection as maintained against claim 1.
REJECTION B
Regarding claim 11, the Appellant summarizes what Beswick teaches
and adds that “[a]lthough the filters of Hong and/or Beswick et al. may be
used for a similar purpose as the claimed fluid purification, namely
removing lead from water, they do so using different materials and in
different ways” (Appeal Br. 14–15). Then, in a conclusory fashion, the
Appellant argues that “[i]t would not, therefore, [have been] obvious for a
person having ordinary skill in the art to combine Hong, Beswick et al., and
the six other cited prior art references, to arrive at the claimed method” (id.
at 15).
We find the Appellant’s argument unpersuasive for the same reasons
discussed above with respect to Rejection A. Merely pointing out what a
reference discloses, which is coupled with a skeletal argument that the prior
art references would not have rendered the claimed subject matter obvious to
a person having ordinary skill in the art, does not constitute an argument for
separate patentability of a claim. In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
Appeal 2019-006718
Application 15/839,365

9
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”).

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–10, 12,
15–20
103(a) Taylor, VanderBilt,
Rinker, Levy, Smith,
Tepper, Hong
1, 4–10, 12,
15–20

11 103(a) Taylor, VanderBilt,
Rinker, Levy, Smith,
Tepper, Hong, Beswick
11
Overall
Outcome
1, 4–12, 15–
20

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

AFFIRMED