Ex Parte Beer et al

Board of Patent Appeals and Interferences

Jun 11, 2010

10051459 (B.P.A.I. Jun. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HANS BEER, KLAUS FORESE, LOTHER KNOECHELMANN,
and DUANE B. PIECHOCKI
____________

Appeal 2010-000331
Application 10/051,459
Technology Center 1700
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Decided: June 11, 2010
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Before EDWARD C. KIMLIN, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 2, and 15-17. We have jurisdiction
pursuant to 35 U.S.C. § 6. Oral arguments were presented on June 8, 2010.

Appeal 2010-000331
Application 10/051,459

2

Appellants’ claimed invention is directed to an improved process of
making a no through flow diagnostic cellulosic membrane having a refined
surface. The standard process includes using phase inversion in an
evaporation process to prepare a feedstock membrane (crude or partially
dried membrane) from a cellulosic membrane casting solution. The
improvement involves removing filter dust impurities from this partially
dried feedstock membrane by mechanical brushing prior to drying and
during a water rinse of at least one side of the resulting feedstock membrane
(see, e.g., Spec. 3, 4, and 9-11; Fig. 3).
Claim 1, the sole independent claim on appeal, is illustrative and
reproduced below:
1. A process for producing a no-through-flow diagnostic cellulose
membrane having a refined surface, comprising the steps of:

(a) preparing a feedstock membrane from a cellulose membrane
casting solution by phase inversion in an evaporation process, and

(b) prior to drying the resulting feedstock membrane, removing filter
dust impurities by mechanical brushing while rinsing with water from at
least one side of said partially-dried feedstock membrane from which the
solvent is evaporated in the evaporation process of step (a).

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Beer 5,628,960 May 13, 1997
Hasebe 5,826,129 Oct. 20, 1998

Appeal 2010-000331
Application 10/051,459

3
Claims 1, 2, and 15-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Beer alone or, in the alternative, Beer taken in view
of Hasebe.
We reverse both prongs of the alternatively stated rejection for
substantially the reasons set forth by Appellants in the Appeal Brief (see,
e.g., App. Br. 16-19).
It is well settled that the Examiner bears the initial burden of
presenting a prima facie case of obviousness. In the present appeal, the
record reflects the Examiner has not discharged this burden, a shortcoming
which represents a dispositive issue we resolve in Appellants’ favor.
It is not disputed that Beer teaches “a process of producing a cellulose
acetate or nitrate membrane by casting directly on a film,” as found by the
Examiner (Ans. 4). However, the Examiner misreads and/or
mischaracterizes the disclosure of Beer at column 3, lines 45-54, by
asserting that this disclosure teaches “the desirability to remove dust from
the membrane prior to drying the membrane” (Ans. 4). This portion of the
disclosed Example 1 of Beer teaches a method of minimizing filter dust as
part of a formed membrane by removing non-membrane-forming substances
responsible for filter dust from some of the raw materials (cellulose
derivatives) used in preparing such a membrane. The Examiner points to no
other disclosure in Beer that is directed to removing filter dust from a
formed membrane as claimed, nor do we find any such disclosure in Beer.
Thus, Beer does not teach or suggest mechanical brushing while
rinsing after preparing a feedstock membrane from a casting solution via
phase inversion but prior to drying the membrane, as required by all of the
appealed claims (see claim 1).
Appeal 2010-000331
Application 10/051,459

4
Hasebe discloses a resist coating and development system used in
semiconductor manufacture as being part of the conventional related prior
art to Hasebe (col. 1, ll. 13-15). The prior art system described in Hasebe
includes a brush cleaning unit (2) and a rinsing unit (3) as part of the wafer
processing system (col. 1, ll. 15-19; Fig. 1). Hasebe is primarily directed to
a substrate processing system, such as a wafer processing system including a
substantially vertical rotating shaft, as an object conveying means, about
which conveying means the process chambers of the processing system are
located.
Dr. Hans Beer testifies that the presently claimed method defies the
common expectation of those skilled in the art that the membrane would be
destroyed by trying to remove dust from a crude (partially dried) membrane
(Beer Declaration, Exhibit 1, paras. 10-12).
Concerning the Examiner’s assertion about the well-known use of
brushing and/or rinsing to remove dust (Ans. 4), this assertion has not been
substantiated by the Examiner with credible evidence to show that such
well-know subject matter assertion applies in the case of removing filter dust
from a membrane prior to drying that is formed from a cellulose membrane
casting solution by phase-inversion in an evaporation process, as the here-
claimed process requires.
Moreover, the Examiner has not established that the disparate
disclosure of Hasebe would have taught or suggested mechanical brushing
while rinsing a membrane similar to the membrane as formed by Beer to one
of ordinary skill in the art at the time of the invention, much less established
that Hasebe would have taught or suggested interposing a brushing step,
Appeal 2010-000331
Application 10/051,459

5
while rinsing, for a feedstock membrane prior to drying, as required in
Appellants’ claimed process.
Consequently, we reverse the Examiner’s obviousness rejection for
failure to present a prima facie case of obviousness. Because we reverse on
this basis, we do not reach the evidence of unexpected results presented in
rebuttal in the second Declaration of Dr. Beers (App. Br., Exhibit 2).

CONCLUSION/ORDER
The Examiner’s decision to reject claims 1, 2, and 15-17 under 35
U.S.C. § 103(a) as being unpatentable over Beer alone or, in the alternative,
Beer taken in view of Hasebe is reversed.

REVERSED

PL Initial:
sld

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