Ex Parte Chu et al

Patent Trials and Appeals Board

Mar 29, 2019

13817224 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/817,224 04/01/2013 Benjamin Chu
31554 7590 04/02/2019
Carter, DeLuca & Farrell LLP
576 Broad Hollow Road
MELVILLE, NY 11747
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1339-17 PCTUS 9524
EXAMINER
FITZSIMMONS, ALLISON G
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
docket@carterdeluca.com
bpuchaczewska@carterdeluca.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN CHU, BENJAMIN S. HSIAO
HONGY ANG MA, and RAN WANG
Appeal2018-004903
Application 13/817 ,224
Technology Center 1700
Before TERRY J. OWENS, MICHAEL P. COLAIANNI,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1--41, 6-15, 19, 20, 22-27, 34,
and 35 of Application 13/817,224 under 35 U.S.C. § 103(a) (pre-AIA).
Final Act. (Mar. 20, 2017) 2-13. Appellants2 seek reversal of these
1 Claim 4 is omitted from the list of rejected claims in the Office Action
Summary but is specifically rejected in the text of the Office Action. Final
Act. 1, 6-7, 12.
2 The real party in interest is identified as The Research Foundation of State
University of New York. Appeal Br. 1.
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Application 13/817 ,224
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
BACKGROUND
The present application generally relates to microfiltration membranes
that successfully achieve high retention of bacteria and viruses as well as
toxic and/or radioactive ions. Spec. ,r 7. The membranes have a composite
structure containing a nanofiber scaffold (fiber diameters from 50 to 1000
nanometers) on a mechanically strong microfiber substrate (fiber diameters
from 1 to 100 µm). Id. ,r 8. The membrane may further include ultra-fine
nanofibers (fiber diameters from 3 to 50 nanometers). Id. ,r 8.
The Specification further teaches the introduction of positively
charged (for removal of negatively charged ions or viruses) or negatively
charged (for removal of positively charged metal ions) polymers or
molecules into the ultrafine nanofibers. Id. ,r 11.
The microfiltration membrane may further have an adhesive layer
between the substrate layer and the scaffold layer. Id. ,r,r 66-67.
Claims 1 and 34 are illustrative of the subject matter on appeal and are
reproduced below with certain language bolded for emphasis:
1. A membrane comprising
a substrate layer; and
a porous layer comprising a scaffold layer formed of a
polymer selected from the group consisting of polyolefins,
polysulfones, polyethersulfones, fluoropolymers,
polyvinylidene fluorides, polyesters, polyamides,
polycarbonates, polystyrenes, polyacrylonitriles,
poly(meth)acrylates, polyvinylacetates, polyvinyl alcohols,
polysaccharides, cellulose, chitosan, chitin, hyaluronic acid,
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Application 13/817 ,224
proteins, polyalkylene oxides, polyurethanes, polyureas,
polyvinyl chlorides, polyimines, polyvinylpyrrolidones,
polyacrylic acids, polymethacrylic acids, polysiloxanes, poly
( ester-co-glycol) polymers, poly( ether-co-amide) polymers,
cross-linked forms thereof, derivatives thereof, and copolymers
thereof, the porous layer being on at least a portion of the
substrate layer,
wherein the substrate layer, the scaffold layer, or both,
further comprise ultra-fine nanofibers having a diameter from
about 3 nm to about 50 nm and a length from about 100 nm to
about 5000 nm, and
wherein the scaffold layer, the substrate layer, or
both, further include components selected from the group
consisting of negatively charged components, positively
charged water-soluble components, and combinations thereof,
the negatively charged components selected from the group
consisting of poly(sodium 4-vinylstyrene sulfonate ),
nitrocellulose, sodium acetate, sodium benzoate, terephthalic
acid, benzene-1,3,5-tricarboxylic acid, 4-methylbenzene-
sulfonic acid, and combinations thereof, and the positively
charged water soluble components selected from the group
consisting of polyvinyl amine hydrochloride, polyvinyl
trimethylammonium chloride/bromide, poly( vinyl
tetraethylphosphonium) bromide, poly(l-vinyl-3-methyl-
imidazolium) chloride, poly( 4-vinylpyridium), poly(allylamine)
chloride/bromide, chitin, tetraalkylammonium salts, and
combinations thereof.
Appeal Br. 13-14 (Claims App.) (emphasis added).
34. A membrane comprising:
a substrate layer;
a porous layer comprising a nanofibrous scaffold layer,
the porous layer being on at least a portion of the substrate
layer; and,
an adhesive layer selected from the group consisting
of crosslinked polyvinyl alcohol and crosslinked polyethylene
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oxide, between the substrate layer and the scaffold layer,
wherein the substrate layer, the scaffold layer, or both, further
comprise ultra-fine nanofibers having a diameter from about 3
nm to about 50 nm and a length from about 100 nm to about
5 000 nm, and
wherein the scaffold layer, the substrate layer, or both,
further include components selected from the group consisting
of negatively charged components, positively charged water-
soluble components, and combinations thereof, the negatively
charged components selected from the group consisting of
poly(sodium 4-vinylstyrene sulfonate ), nitrocellulose, sodium
acetate, sodium benzoate, terephthalic acid, benzene-1,3 ,5-
tricarboxylic acid, 4-methylbenzenesulfonic acid, and
combinations thereof, and the positively charged water-soluble
components selected from the group consisting of polyvinyl
amine hydrochloride, polyvinyl trimethylammonium
chloride/bromide, poly(vinyl tetraethylphosphonium) bromide,
poly(l-vinyl-3-methylimidazolium) chloride, poly( 4-
vinylpyridium), poly( allylamine) chloride/bromide, chitin,
tetraalkylammonium salts, and combinations thereof.
Id. at 19--20 (emphasis added)
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1-3, 6-15, 19, 20, 22-27, 34, and 35 are rejected under 35
U.S.C. § 103(a) (pre-AIA) as obvious over Chu et al. 3 in view of
Chu et al. 4 Final Act. 2-8.
3 US 2008/0149561 Al, published June 26, 2008) ("Chu '561").
4 WO 2010/042647 A2, published April 15, 2010 ("Chu '647").
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2. Claim 4 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious
over Chu '561 in view of Chu '647 and further in view of
Kameoka et al. 5 Id. at 6-7.
3. Claims 1-3, 6-15, 19, 20, 22-27, 34, and 35 are rejected under 35
U.S.C. § 103(a) (pre-AIA) as obvious over Chu '561 in view of
Brownetal. 6 Id. at8-13.
4. Claim 4 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious
over Chu '561 in view of Brown and further in view ofKameoka
et al. Id. at 12.
DISCUSSION
Rejection 1. The Examiner rejected claims 1-3, 6-15, 19, 20, 22-27,
34, and 35 as obvious over Chu '561 in view of Chu '647. Final Act. 2-8.
The Examiner relied upon Chu '647 as teaching a "positively charged water-
soluble component[ ] selected from the group consisting of ... chitin" as
required by independent claims 1, 19, 34, and 35. Id. at 3; Appeal Br. 13-
14, 17, 19-21 (Claims App.).
Appellants argue that the rejection is in error. Specifically, Appellants
argue that a person of ordinary skill in the art would not have combined the
teachings of Chu '64 7 regarding the use of chitin with the teachings of Chu
'561. Appeal Br. 6-8. Appellants contend that Chu '647 "demonstrate[s] a
preference for modified cellulose nanofibers" over chitin. Id. at 7.
Chu '64 7 teaches that "[ c ]hi tin is a universal material and its
production is only less than cellulose on the earth. Chitin is a good candidate
5 US 2006/0068668 Al, published March 30, 2006 ("Kameoka").
6 US 3,894,166, issued July 8, 1975 ("Brown").
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compared to cellulose when in the form of nanofibers or dissolved in ionic
liquids for use in ultrafiltration membranes with anti-bacterial and low
fouling properties." Chu '647, 41:21-24. Appellants argue that Figure 77 of
Chu '647 "demonstrate[s] lower fouling (lower weight% increase) at lower
temperatures for wood nanofibers, cotton nanofibers, and cellulose
nanocrystals, when compared with chitin." Appeal Br. 7. Figure 77 is
reproduced below.
0 ··:l'.'i_l.":,,:·,:,·~-~--~~~~-
·· ···· ............... .
rno 100 .:101 4il1 5ila ftt mo ffl
T~~P\?~t~~ (Cl
Figure 77 is a chart showing thermal stability of polysaccharide nano fibers.
Chu '647, 15:13, 43:17-18. The thermal stability of chitin is indicated by
the rightmost line shown as alternating dots and dashes (- · -).
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). The question to be
asked is "whether the improvement is more than the predictable use of prior
art elements according to their established functions." Id. at 417. The prior
art need not "teach that a particular combination is preferred or 'optimal,' for
the combination to be obvious." In re Fulton, 391 F.3d 1195 (Fed. Cir.
2004). All embodiments taught by the prior art should be considered. See
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Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
("[ A ]11 disclosures of the prior art, including unpreferred embodiments, must
be considered." (Quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
1976))).
Here, Appellants argue that Chu '64 7 teaches a preference for other
nanofiber materials. Even if Appellants' contentions regarding Chu 64 7 's
teachings were taken as accurate, this would be insufficient to show error in
the Examiner's determination. The Examiner determined that Chu '64 7
teaches that chitin may be used as the claimed positively charged water-
soluble component. Absent a rebuttal of this finding, there is no showing of
error in the Examiner's determination that use of such component in a
membrane would have been obvious to a person of ordinary skill in the art.
We adopt the analysis of the Examiner in this regard. Answer 14--15.
Claims 3 4 and 3 5
The Examiner rejected claims 34 and 35 over Chu '561 in view of
Chu '647. Final Act 7-8. In support of the rejection, the Examiner found
that Chu '561 teaches an "adhesive layer" comprising polyvinyl alcohol as
required by claims 3 4 and 3 5. Id. at 7.
Appellants argue that such rejection is in error because Chu '561 does
not teach a separate adhesive layer. Appeal Br. 8-9. Appellants contend
that the Specification "clearly supports the presence of a separate adhesive
layer, not merely functionalizing some material from the substrate and/or
scaffold to enhance adherence of the two." Id. at 9. In support, Appellants
cite to paragraphs 66 and 67 of the Specification, reproduced below.
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Where both a nanofibrous scaffold and non-woven
microfilter substrate are present in a membrane of the present
disclosure, de-lamination can occur between the substrate and
scaffold. Thus, in some embodiments, in order to enhance the
adhesion between the substrate, such as a PET substrate, and the
scaffold, such as an electrospun PAN, it may be useful to first
coat one side of PET substrate with a solution including water
insoluble chitosan, crosslinked PV A, crosslinked polyethylene
oxide (PEO), their derivatives and copolymers to enhance
adherence of the scaffold layer to the substrate. As noted above,
water soluble materials such as PVA and PEO may be
crosslinked with known crosslinking agents, including, but not
limited to, glutaraldehyde, glyoxal, formaldehyde, glyoxylic
acid, oxydisuccinic acid and citric acid.
In one embodiment, a 0.7 wt% neutralized chitosan (Mv =
200,000 g/mol) aqueous solution may be utilized as an adhesive
layer between the substrate and scaffold. In such a case, the
chitosan or other adhesive may be applied to the substrate
utilizing methods within the purview of one skilled in the art
including, but not limited to, spraying, dipping, solution casting
and the like. Before complete drying of the chitosan coating on
the substrate, the scaffold nanofibers of PAN or PV A (from a 10
wt% in DMF) may be electrospun onto the chitosan coated layer
at about 2 kV over a distance between the spinneret and the
collector of about 10 cm, with a solution flow rate of 25
µI/minute. The fiber diameter of electrospun nanofiber scaffold
may range from about 150 nm to about 200 nm.
Spec. 66-67.
Appellant assert that these paragraphs are cited "to support the
concept of a separate adhesive layer." Reply Br. 3-4. Appellants further
contend that Paragraph 66 "clearly encompasses this adhesive layer, noting
its use in enhancing adherence between the substrate and scaffold, and
describing the use of polyvinyl alcohol and polyethylene oxide." Id. at 4--5.
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Chu '561 teaches a fibrous support comprising nano fibers where
"[t]he top and bottom layers are continuously connected by the one or
more middle layers ... and all of the layers operate as a single unit." Chu
'561 ,r 72. Chu '561 further teaches that "[i]n one particularly useful
embodiment, the middle layer, such as PAN or PV A, may be electrospun
on a substrate, such as a non-woven PET micro-filter (F02413 from
Freudenburg Nonwovens) utilizing methods known to those skilled in the
art." Id. ,r 93. Thus, Chu '561 teaches an intermediate layer of polyvinyl
alcohol (PVA) that serves to connect top and bottom layers.
During examination, claim terms must be given their broadest
reasonable construction consistent with the Specification. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). "Construing
claims broadly during prosecution is not unfair to the applicant ... because
the applicant has the opportunity to amend the claims to obtain more precise
claim coverage." See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004).
Here, the claim requires, inter alia, "an adhesive layer selected from
the group consisting of crosslinked polyvinyl alcohol and crosslinked
polyethylene oxide, between the substrate layer and the scaffold layer."
Appeal Br. 19 (Claims App.). Under the broadest reasonable interpretation,
the "adhesive layer" limitation encompasses the "middle layer" of Chu '5 61.
Accordingly, Appellants have not shown error with regard to the rejection of
claims 3 4 and 3 5.
Rejection 2. The Examiner rejected claim 4 as obvious over Chu
'561 in view of Chu '647 and further in view ofKameoka. Final Act. 6-7.
Claim 4 depends from claim 1. Appeal Br. 14 (Claims App.). Appellants
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argue that the rejection of claim 4 should be reversed for the same reasons as
set forth with regard to the rejection of claim 1. Id. at 10. As we have found
such arguments not to be persuasive with regard to claim 1, we determine
that Appellants have not shown error with regard to the rejection of claim 4
as obvious over Chu '561 in view of Chu '647 and further in view of
Kameoka.
Rejection 3.7 The Examiner rejected claims 1-3, 6-15, 19, 20, 22-
27, 34, and 35 as obvious over Chu '561 in view of Brown. Final Act. 8-13.
This rejection is duplicative of Rejection 1. Id. at 2-13. Rejection 1 relies
upon Chu '647 as teaching a "positively charged water-soluble component[]
selected from the group consisting of ... chitin." Id. at 3. Rejection 3 relies
upon Brown's disclosure of terephthalic acid as teaching the charged
component limitation. Final Act. 8-9. Appellants, however, do not offer
argument regarding the Examiner's finding that Brown's disclosure of
terephthalic acid teaches the charged component limitation. See Appeal Br.
10-11; Answer 18.
Accordingly, the rejection of claims 1-3, 6-15, 19, 20, and 22-27, as
obvious over Chu '561 in view of Brown is summarily sustained. See
MPEP § 1205.02 (Rev. 08.2017, Jan. 2018) ("Ifa ground of 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.").
7 Denominated "Rejection 2" in the Final Rejection. Final Act. 8.
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Rejection 3 is not summarily sustained as to claims 34 and 35 because
Appellants rely upon their prior arguments with regard to these claims.
Appeal Br. 11. Appellants argue that the rejection of claims 34 and 35 over
Chu '561 in view of Brown should be reversed for the same reasons as set
forth with regard to the rejection of the same claims over Chu '561 in view
of Chu '647. Id. As we have found such arguments not to be persuasive
with regard to the rejection of claims 34 and 35 over Chu '561 in view of
Chu '64 7, we determine that Appellants have not shown error with regard to
the rejection of claims 34 and 35 over Chu '561 in view of Brown.
Rejection 4. The Examiner rejected claim 4 as obvious over Chu
'561 in view of Brown and further in view of Kameoka. Final Act. 12.
Claim 4 depends from claim 1. Appeal Br. 14 (Claims App.). Appellants
argue that the rejection of claim 4 should be reversed for the same reasons as
set forth with regard to the rejection of claim 1. Id. at 11-12. As we have
found such arguments not to be persuasive with regard to claim 1, we
determine that Appellants have not shown error with regard to the rejection
of claim 4 as obvious over Chu '561 in view of Brown and further in view of
Kameoka.
CONCLUSION
The rejection of claims 1-3, 6-15, 19, 20, 22-27, 34, and 35 as
obvious over Chu '561 in view of Chu '647 is affirmed. The rejection of
claim 4 as obvious over Chu '561 in view of Chu '647 and further in view of
Kameoka is affirmed. The rejection of claims 1-3, 6-15, 19, 20, and 22-27
as obvious over Chu '561 in view of Brown is summarily affirmed. The
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rejection of claims 34 and 35 as obvious over Chu '561 in view of Brown is
affirmed. The rejection of claim 4 as obvious over Chu '561 in view of
Brown and further in view of Kameoka is affirmed.
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
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