Ex Parte DENK et al

Board of Patent Appeals and Interferences

Jan 13, 2003

08929108 (B.P.A.I. Jan. 13, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

Paper No. 40

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte VIKTOR DENK and ULRICH GANS
__________

Appeal No. 2002-0952
Application No. 08/929,108
___________

ON BRIEF
___________

Before PAK, DELMENDO, and JEFFREY T. SMITH, Administrative
Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2002) from the examiner’s final rejection of claims 36 through
39, 41, 42, 44, and 45, which are all of the claims pending in
the above-identified application.
The subject matter on appeal relates to “a method for
raising the filtrate throughput in a crossflow membrane filter
in a filter module of a filtration plant during the filtration

Appeal No. 2002-0952
Application No. 08/929,108

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of beer.” Further details of this appealed subject matter are
recited in representative claim 45, the only independent claim
on appeal, reproduced below:
45. A method for raising the filtrate throughput
in a crossflow membrane filter in a filter module of a
filtration plant during the filtration of beer by
releasing a covering layer built up on a filter
membrane from the filter membrane, wherein beer is
passed through the filter membrane from an unfiltrate
side of the membrane to a filtrate side of the
membrane thereby building up a cake of materials on
the unfiltrate side of the membrane and thereby
creating a transmembrane pressure over the filter
membrane, the method comprising the steps of:
a) interrupting the flow of beer through the
filter membrane;
b) separating the filter module from the
filtration plant;
c) removing the beer from the filter module
while maintaining circulation of the beer in the
plant;
d) introducing into the filter module an agent
for dissolving chemical bonds between the cake of
materials and the membrane;
e) maintaining said agent within the filter
module in a concentration, at a temperature and for a
time sufficient to loosen the cake of materials from
the membrane without completely dissolving the cake of
materials;
f) back flushing the membrane with rinsing
liquid from the filtrate side to the unfiltrate side
of the membrane to remove the cake of materials from
the membrane and into the filter module;
g) removing the cake of materials from the
filter module;
h) connecting the filter module with the
filtration plant;
i) resuming the flow of beer through the filter
membrane; and
j) repeating steps a) to i) in the same
filtration run.

Appeal No. 2002-0952
Application No. 08/929,108

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The examiner relies on the following prior art reference as
evidence of unpatentability:
Daoud 4,844,932 Jul. 4, 1989
Claims 36 through 39, 41, 42, 44, and 45 on appeal stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Daoud.
(Examiner’s answer mailed May 18, 2001, paper 37, pages 3-7.)
We reverse this rejection.
Daoud describes a method for preparing wort from malted
grain comprising the steps of mashing the malted grain to
provide a spent grain/wort mash and separating the wort from the
spent grain. (Column 2, lines 64-68.) According to Daoud
(column 2, line 68 to column 3, line 7), the separation step
involves a barrier filtration method accomplished by flowing the
spent grain/wort mash across the surface of a wort-permeable
filter element having a pore diameter in a range of from 10.0 to
100.0 µm to permit wort (but not spent grain) to pass as
filtrate through the filter in a direction transverse to the
direction of the flow. Daoud further teaches (column 3, lines
8-13):
It will be usually necessary, from time to time,
to reverse the flow of filtrate through the filter to
flush from the surface of the filter element which is
in contact with the mash such particulate matter
within the mash as has become resident on said surface
or is clogging the pores of the filter.

Appeal No. 2002-0952
Application No. 08/929,108

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Additionally, Daoud teaches (column 3, lines 38-41):
It is anticipated that it will be possible to clean
such filters, in between brewing runs, by using the
same sorts of detergent (acid or alkali), as are
presently used on other items of brewing equipment.
[Emphasis added.]

The appellants point out that Daoud’s method differs from
the invention recited in the appealed claims in that (1) the
prior art method is directed to the filtration of wort, as
distinguished from beer, and (2) the prior art method does not
repeat steps a) to i) in the same filtration run as recited in
step j) of appealed claim 45. (Appeal brief filed Dec. 6, 2000,
paper 33, pages 3-4.)
With respect to the first difference, the examiner takes
the position that “it would be obvious to apply the cleaning
methods taught by Daoud to beer filtration process” because
“Daoud even states that ‘the separation of solids from the wort
by cross-flow or other conventional filtration methods is not
different from that encountered in the filtration of...beer.’”
(Answer, page 8; quoting Daoud’s column 5, lines 29-32.)
Regarding the second difference, the examiner holds:
While Daoud mentions using basic or acidic
cleaning solutions at the end of the filtration run,
he is silent as to their use during the filtration
run. Appellants essentially claim a continuous
filtration method whereby the filter module is
isolated during the filtration of beer, the filter is
cleaned and then the beer [sic] resumes its
Appeal No. 2002-0952
Application No. 08/929,108

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processing. As such, courts have held that those in
the art are motivated in the art to convert batch
processes to continuous process by well known means.
In re Korpi, 73 U.S.P.Q. 229 (1947). It is therefore
considered that those in the art would find it obvious
to continuously filter by using the well known means
known in the cited prior art. Lastly, it is noted
that the claimed steps are not required to occur in
the order in which they are recited. (Answer, page 6.)

We cannot agree with the examiner’s analysis and
conclusion. Appealed claim 45 expressly requires steps a)
through j) to be performed and repeated “in the same filtration
run.” In this regard, the present specification makes it clear
to one skilled in the relevant art that the phrase “during the
filtration” or “same filtration run” refers to a single
filtration run and not a series of discrete filtration runs
performed continuously. (Page 6, line 24 to page 8, line 14;
page 12, line 9 to page 15, line 18.) Although Daoud states
that it is possible to clean the filters with a detergent (acid
or alkali) in between brewing runs (column 3, lines 38-41), the
examiner has not identified any teaching, suggestion, or
motivation in the prior art that would have led one of ordinary
skill in the art to perform such cleaning in combination with
back flushing in the same filtration run.
For these reasons, we hold that the examiner has not made
out a prima facie case of obviousness within the meaning of 35
Appeal No. 2002-0952
Application No. 08/929,108

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U.S.C. § 103(a). In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984).
The decision of the examiner to reject appealed claims 36
through 39, 41, 42, 44, and 45 under 35 U.S.C. § 103(a) as
unpatentable over Daoud is reversed.
REVERSED

Chung K. Pak )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Romulo H. Delmendo )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Jeffrey T. Smith )
Administrative Patent Judge )

rhd/vsh
Appeal No. 2002-0952
Application No. 08/929,108

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