Ex Parte Dannenmaier et al

Board of Patent Appeals and Interferences

Mar 12, 2010

10708774 (B.P.A.I. Mar. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JUERGEN DANNENMAIER,
MANFRED PIRNER, and
HERMANN JOSEPH GOEHL
__________

Appeal 2009-003549
Application 10/708,774
Technology Center 1700
___________

Decided: March 12, 2010
___________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-003549
Application 10/708,774

2
A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1-6, 10-12, 14-16, 19-24, 36, 38, and 39.1 We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A filter device comprising a housing, said housing
enclosing at least two fluid filtration compartments, each
filtration compartment comprising at least one filter membrane
having a first surface and a second surface, said first surface of
each filter membrane being in fluid communication with at least
one fluid flow port, said second surface being in fluid
communication with at least one fluid flow port, adjacent
filtration compartments being separated from each other by an
internal wall, said housing comprising at least two
longitudinally extending shell portions, one of said
longitudinally extending shell portions of the housing
describing less than one half of the perimeter of said housing.

Br., Claims Appendix (emphasis added).2
The following Examiner’s rejections are before us on appeal:
(1) Claims 1, 4, 5, 16, and 19-24 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Gross.3
(2) Claims 6 and 10-12 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Gross.

1 Claims 7-9, 13, 17, 18, 25-35, 37, and 40-43 are also pending but have been
withdrawn from consideration. Final Office Action dated January 18, 2007,
at 1.
2 Appeal Brief dated September 10, 2007.
3 US 5,882,516 to Gross et al. issued March 16, 1999.
Appeal 2009-003549
Application 10/708,774

3
(3) Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gross.
(4) Claims 14, 15, 36, 38, and 39 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Gross and Pope.4
B. ISSUES
The Appellants separately address the patentability of claims 1, 2, 6,
10-12, and 14. Thus, the issues on appeal are:
(1) Have the Appellants identified reversible error in the
Examiner’s finding that Gross describes a housing comprising at least two
longitudinally extending shell portions wherein one of the shell portions
describes less than one half of the perimeter of the housing, as recited in
claim 1?
(2) Have the Appellants identified reversible error in the
Examiner’s conclusion that Gross renders obvious a shell portion describing
less than one third of the perimeter of the housing, as recited in claim 2?
(3) Have the Appellants identified reversible error in the
Examiner’s determination that Gross anticipates or renders obvious a
housing comprising two shell portions “joined together along at least two
longitudinal seams,” as recited in claim 6?
(4) Have the Appellants identified reversible error in the
Examiner’s determination that Gross anticipates or renders obvious the
subject matter recited in claims 10-12?
(5) Have the Appellants identified reversible error in the
Examiner’s conclusion that the combination of Gross and Pope renders
obvious a housing comprising two shell portions wherein one shell portion

4 US 2003/0102264 A1 to Pope et al. published June 5, 2003.
Appeal 2009-003549
Application 10/708,774

4
has a different refractive index than the other shell portion, as recited in
claim 14?
C. FINDINGS OF FACT
1. Gross
Gross Figure 1, reproduced below, illustrates a dialyzer. Gross 2:49-
51.

Gross Figure 1 depicts a dialyzer.
Gross discloses that the dialyzer:
comprises a cylindrical and an elongated housing 12, which is
sealed at the ends by covers 14 and 16. The elongated housing
is subdivided by a separating wall 18 into two modules 20 and
22. Modules 20 and 22 are both delimited, on the one hand, by
the separating wall and the outer wall of housing 12 and, on the
Appeal 2009-003549
Application 10/708,774

5
other hand, by sealing compounds 24 and 26, which seal off
housing 12 at the extremity.

Gross 2:61-3:2.
2. Pope
Pope discloses a filter device 100. In one embodiment of the
invention, the filter device is a dialyzer. Pope, para. [0006].
Pope discloses:
The Filter Device 100 of the present invention utilizes
molded parts, including Housing 102 and Flange Caps 106,
made with a polypropylene homopolymer that possess
comparable general characteristics to the polycarbonate used in
the molded components of the Fresenius Hemoflow series of
dialyzers, but is considerably less expensive. The choice of
materials for the dialyzer are heavily dependent upon the
manufacturing processes employed. Though the optical
property of the polypropylene homopolymer is significantly
more “hazy” compared to polycarbonate, the blood and
dialysate compartments are still readily visible to technicians.

Pope, para. [0020].
D. ANALYSIS
1. Issue (1)
The Appellants argue that Gross does not show or suggest “at least
two longitudinally extending shell portions, one of said longitudinally
extending shell portions of the housing describing less than one half of the
perimeter of said housing,” as recited in claim 1. Br. 10.
Referring to Gross Figure 1, the Examiner found:
[T]he internal wall (18) divides the shell of the cartridge in to
[sic] two compartments. The compartment on the left,
identified as (22) is distinctly smaller than the compartment on
the right, identified as (20). If one were to draw a cross-section
of the picture above, one could clearly see that the perimeter of
Appeal 2009-003549
Application 10/708,774

6
the shell portion (22) would be smaller than the perimeter of the
shell portion (20).

Ans. 11.5
The Examiner’s position is reasonable based on the record before us.
That is, the teachings of Gross establish that the wall 18 divides the housing
12 into two portions, i.e., a first portion which surrounds a portion of the
module 20 and a second, smaller portion which surrounds a portion of the
module 22. Gross 2:61-3:2, Fig. 1.
The Appellants also argue that “[i]n Gross, the fiber filters would be
inserted from an end of the tubular housing, not laid into one of the
elongated longitudinally extending shell portions as would be possible in the
claimed invention.” Br. 10.
It is of no moment that the method used to insert the fiber filters in
Gross may be different than the Appellants’ method. The issue on appeal is
whether Gross describes the filter device recited in claim 1. Significantly,
the Appellants have failed to direct us to any language in claim 1 that
distinguishes the claimed filter device from the dialyzer disclosed in Gross.
See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“the name of
the game is the claim”).
2. Issue (3)
Claim 6 depends from claim 1 and recites that “said longitudinally
extending shell portions are joined together along at least two longitudinal
seams.” Br., Claims Appendix.
The Appellants argue that Gross does not show any kind of seams.
App. Br. 11. The Examiner appears to recognize as much. Ans. 5

5 Examiner’s Answer dated October 11, 2007.
Appeal 2009-003549
Application 10/708,774

7
(indicating that Gross does not disclose how the shell portions are joined
together to form the housing). Nonetheless, the Examiner directs our
attention to the Figures of Gross and explains that “the partition wall (18)
has to be joined to the tubular wall 12 of the shell, which requires at least
two longitudinal joints along the length of the shell.” Ans. 5.
Gross does not describe how the wall 18 is joined to the housing 12.
However, to the extent that there may be a joint between the wall 18 and the
housing 12, claim 6 requires the shell portions of the housing to be “joined
together along at least two longitudinal seams.” The Examiner has failed to
explain why a joint between the wall 18 and the housing 12 satisfies this
limitation in claim 6.
The Examiner also argues that the subject matter of claim 6 would
have been obvious “because welded tubes are well known.” Ans. 11.
However, the Examiner has failed to explain why one of ordinary skill in the
art would have used a welded tube having at least two seams in the dialyzer
of Gross, especially where, as pointed out by the Appellants, fluid integrity
is critical. See Br. 11.
For the reasons set forth above, we are constrained to reverse the
Examiner’s rejection of claim 6.
3. Issue (4)
Claim 10 depends from claim 1 and recites:
said internal wall comprises a first part and a second part, said
first part being attached to a first longitudinally extending shell
portion and said second part being attached to a second
longitudinally extending shell portion, said first part having a
free edge and said second part having a free edge, said free
edges being configured to join to each other.

Appeal 2009-003549
Application 10/708,774

8
Claim 11 depends from claim 10, and claim 12 depends from claim 11. Br.,
Claims Appendix.
The Appellants argue that Gross does not disclose or render obvious
the subject matter of claims 10-12. Br. 11-13.
Significantly, the Examiner has failed to direct us to any portion of
Gross which describes the subject matter of claims 10-12. For example, the
Examiner has failed to identify the free edges of the first and second parts of
the internal wall 18 in Gross and explain why these free edges are
“configured to join to each other” as recited in claim 10.6
Likewise, the Examiner has failed to explain why the teachings of
Gross render obvious the subject matter of claims 10-12.
For these reasons, we are constrained to reverse the Examiner’s
rejection of claims 10-12.
4. Issue (2)
Claim 2 depends from claim 1 and recites that “one of said
longitudinally extending shell portions describes less than one third of the
perimeter of said housing.” Br., Claims Appendix.
The Examiner explains:
[T]he size of the shell would depend on the size of the filter to
be accommodated, which would depend on the quantity of fluid
to be processed, and one of ordinary skill in the art could
optimize this size for the intended purpose. Discovery of an
optimum value of a result effective variable in a known process
is ordinarily within the skill of the art. In re Boesch and Slaney,

6 We recognize that the phrase “configured to join to each other” does not
require that the free edges actually be joined. See Ans. 12. Nonetheless, the
edges must have some cooperating structure that renders them capable of
being joined to each other.
Appeal 2009-003549
Application 10/708,774

9
205 USPQ 215 (CCPA 1980); In re Antonie, 559 F.2d 618, 195
USPQ 6 (CCPA 1977) . . . .

Ans. 6.
The Appellants argue that it is impossible to derive the limitations of
claim 2 by “optimization” because:
these limitations refer to the separate shell portions, not to the
modules or chambers that hold the filters. In the preferred
embodiment, for instance, (e.g., Fig. 4 or Fig. 5), each shell
portion forms part of both modules or chambers. This is not an
express requirement of these claims, but it demonstrates that the
examiner’s argument that the size of the filter would lead one to
the claims by mere optimization is simply wrong.

Br. 14.
Significantly, the Appellants’ argument is based on limitations
admittedly not recited in claim 2. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (arguments based on limitations not appearing in the claims
fail at the outset). That is, claim 2 does not require each shell portion to
form a portion of both filtration compartments 2 and 3, as illustrated in the
Appellants’ Figures 4 and 5. Rather, claim 2 encompasses a housing
comprising two shell portions, as illustrated in Gross Figure 1, where each
shell portion surrounds a separate filtration compartment. Thus, on this
record, we agree with the Examiner that it would have been within the skill
of the ordinary artisan to adjust the sizes of the shell portions in Gross based
on the optimum sizes of the filtration compartments or modules (20, 22).
5. Issue (5)
Claim 14 depends from claim 1 and recites:
wherein one of said longitudinally extending shell portions has
a first refractive index and another of said longitudinally
extending shell portions has a second refractive index, said first
Appeal 2009-003549
Application 10/708,774

10
refractive index being different from said second refractive
index.[7]

Br., Claims Appendix.
Claim 15 depends from claim 14 and recites that one of the shell
portions is comprised of polycarbonate and the other shell portion is
comprised of polypropylene.8 Br., Claims Appendix.
The Examiner contends:
Pope teaches that both polypropylene and polycarbonate can be
used for making the dialyzer shell, with polycarbonate being
better for visibility, whereas polypropylene is cheaper (see
paragraph 20). It would be obvious to one of ordinary skill in
the art at the time of invention to use the teaching of Pope in the
teaching of Gross to have either, or a combination, of
polypropylene and polycarbonate. One would use
polycarbonate over polypropylene for the parts that require
transparency, such as the part of the shell where blood flows
through the membrane, so that any blood leak is clearly visible,
and polypropylene for others to reduce the cost.

Ans. 7.
The Appellants argue that the prior art does not teach a housing
comprising two shell portions having different optical properties or
refractive indices. Br. 14-15.

7 Similarly, claim 36 recites a filter device comprising a housing having at
least two longitudinal extending shell portions wherein one of the shell
portions has a different optical property than the other shell portion. Claim
38 depends from claim 36 and recites that the optical property is a refractive
index. Br., Claims Appendix.
8 Claim 39 depends from claim 38 and also recites that one of the shell
portions is comprised of polycarbonate and the other shell portion is
comprised of polypropylene. Br., Claims Appendix.

Appeal 2009-003549
Application 10/708,774

11
Indeed, Pope does not disclose a dialyzer shell comprising a
combination of materials. Pope discloses that the housing is molded from a
single homopolymer, i.e., polypropylene, and indicates that polycarbonate
has been used in the molded components of other dialyzers. Pope, para.
[0020]. Thus, it is unclear on this record why the teachings of Pope would
have suggested fabricating the shell portions of Gross from a combination of
materials. At best, Pope teaches forming the housing from one of
polypropylene or polycarbonate.
We recognize that economic factors may motivate one of ordinary
skill in the art to make improvements in the art. However, the Examiner has
failed to explain why the cost of fabricating the housing of Gross from two
different materials would be less than the cost of fabricating the housing
from a single material, such as polycarbonate. Pope does not provide any
guidance on the matter. Pope merely suggests that forming a housing from
one material (i.e., polypropylene) is cheaper than forming a housing from
another material (i.e., polycarbonate). Pope, para. [0020].
For the reasons set forth above, we are constrained to reverse the
Examiner’s rejection of claims 14, 15, 36, 38, and 39.
E. DECISION
The rejection of claims 1, 4, 5, 16, and 19-24 under 35 U.S.C.
§ 102(b) as anticipated by Gross is affirmed.
The rejection of claims 6 and 10-12 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Gross is reversed.
The rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as
unpatentable over Gross is affirmed.
Appeal 2009-003549
Application 10/708,774

12
The rejection of claims 14, 15, 36, 38, and 39 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Gross and Pope is
reversed.
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-IN-PART

PL Initial:
sld

Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland OH 44114-3108