Ex Parte Ferrer et al

Patent Trials and Appeals Board

Sep 19, 2014

11832052 - (D) (P.T.A.B. Sep. 19, 2014)

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.
11/832,052 08/01/2007 Ismael Ferrer 444.18590101 5408
117798 7590 09/22/2014
Donaldson Company, Inc.
c/o Mueting, Raasch & Gebhardt, P.A.
PO Box 581336
Minneapolis, MN 55458-1336
EXAMINER
ZALASKY, KATHERINE M
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
09/22/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ISMAEL FERRER and CHUANFANG YANG
____________

Appeal 2012-012251
Application 11/832,052
Technology Center 1700
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE,
and MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 3 through 36, 38 through 44, 60, 67, 68, 71 through 79 and 81. We
have jurisdiction under 35 U.S.C. § 6.

Appeal 2012-012251
Application 11/832,052

2
Appellants’ invention is directed to a fine fiber layer. App. Br. 5.
Claim 1 illustrates the subject matter on appeal and is reproduced below:
1. A fine fiber layer comprising a fine fiber, the fine
fiber comprising a fluoropolymer comprising;
a polymer comprising tetrafluoroethylene and
hexafluoropropylene;
a polymer comprising tetrafluoroethylene and a
perfluorovinyl ether;
a polymer comprising hexafluoropropylene,
tetrafluoroethylene, and ethylene;
a polymer comprising vinylidene fluoride,
trifluoroethylene, and tetrafluoroethylene; or
a polymer comprising a fluorinated acrylic monomer,
wherein the fluorinated acrylic monomer is a fluorinated
acrylate or methacrylate;
the fine fiber comprising a fine fiber diameter of about
0.1 microns to 0.5 microns, the fine fiber layer comprising a
thickness of about 0.2 microns to about 30 microns and a basis
weight of about 0.01 grams per square meter to less than 10
grams per square meter.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Diehl US 4,765,915 Aug. 23, 1988
Trimmer US 5,202,023 April 13, 1993
Sutherland US 6,146,535 Nov. 14, 2000
Benson US 6,746,517 B2 Jun. 8, 2004
Hester US 7,114,621 B2 Oct. 3, 2006

Appeal 2012-012251
Application 11/832,052

3
Appellants (App. Br. 6) request review of the following rejections
from the Examiner’s final office action:
I. Claims 1, 3–36, 38–44, 60, 67, 68, 71–75, 77, 79, and 81 rejected
under 35 U.S.C. § 103(a) as unpatentable over Benson, Sutherland and
Hester.1
II. Claim 76 rejected under 35 U.S.C. § 103(a) as unpatentable over
Benson and Diehl or Trimmer.
III. Claim 78 rejected under 35 U.S.C. § 103(a) as unpatentable over
Benson and Santini.

OPINION
Prior Art Rejections
The dispositive issue for this appeal is: Did the Examiner err in
determining that the combined teachings of Benson, Sutherland and Hester
would have led one skilled in the art to a fine fiber comprising the claimed
fluoropolymers as required by the subject matter of independent claims 1
and 77? 2

1 The Examiner’s rejection statement in the Final Office Action and the
Answer does not include claim 79 and erroneously includes cancelled claim
80. Final Action 2; Answer 3. We note that Appellants include claim 79 as
one of the claims appealed (App. Br. 6), that the Examiner addressed claim
79 in the discussion of the rejection on pages 6–7 of the Final Office Action,
and Appellants specifically appeal this claim. Accordingly, claim 79 is
properly before us on appeal. Claim 80 is not before us on appeal because it
was cancelled by Appellants in an amendment filed April 1, 2011.
2 Appellants argue both independent claims together. See App. Br.,
generally. Accordingly, we limit our discussion to independent claim 1.
Appeal 2012-012251
Application 11/832,052

4
After review of the respective positions provided by Appellants and
the Examiner, we answer the question in the affirmative and REVERSE for
the reasons presented by Appellants.
We refer to the Examiner’s Final Office Action for a complete
statement of the rejection. Final Action 2–8.
Appellants argue Benson discloses only two fluoropolymers
(poly(vinylidene fluoride) and a copolymer of poly(vinylidene fluoride) and
hexafluoropropylene) to make fine fibers that are not Appellants’ claimed
fluoropolymers. App. Br. 11, 14; Benson col. 8, l. 43; col. 11, ll. 18, 25, 60–
62. Appellants also argue Sutherland and Hester do not disclose making fine
fibers out of fluoropolymers. App. Br. 11, 13. According to Appellants,
both Sutherland and Hester employ fluoropolymers to make hollow fibers or
microporous films, respectively, without showing how to select the claimed
fluoropolymers to make a fine fiber layer. App. Br. 12–13; Sutherland col.
5, ll. 7–35; Hester col. 2, ll. 61–63. Hester also discloses making hollow
fiber membranes. Hester col. 8, ll. 37–46. Thus, Appellants argue that the
combined teachings of Benson, Sutherland and Hester provide no guidance
on how to select the claimed fluoropolymers for the purpose of forming fine
fiber layers as required by the subject matter of independent claim 1. App.
Br. 11, 20.
We agree with Appellants that the Examiner has not carried the
burden of making out a prima facie case of obviousness. As noted by
Appellants, Benson discloses only two fluoropolymers useful for making
fine fibers. App. Br. 11, 14; Benson col. 8, l. 43; col. 11, ll. 18, 25, 60–62.
Sutherland and Hester are directed to making hollow fibers articles, which
are not fine fibers, from polymers that can include fluoropolymers
Appeal 2012-012251
Application 11/832,052

5
(Sutherland col. 5, ll. 7–35; Hester col. 8, ll. 37–46). The Examiner has not
adequately explained why one skilled in the art would modify Benson’s
teachings to make fine fibers from the fluoropolymers of Sutherland and
Hester given that the disclosures of Sutherland and Hester are not directed to
making fine fibers. The Examiner has also not adequately explained how
one skilled in the art would arrive to the claimed fluoropolymers from the
disclosures of Benson, Sutherland and Hester.
Accordingly, we reverse the Examiner’s prior art rejections of claims
1, 3–36, 38–44, 60, 67, 68, 71–75, 77, 79 and 81 under 35 U.S.C. § 103(a)
for the reasons given above and presented by Appellants.
The Examiner separately rejected claims 76 and 78 under 35 U.S.C.
§ 103 as unpatentable over Benson in view of a number of secondary
references (Rejections II and III). Final Action 8–9. However, the
additional references are not relied upon by the Examiner to overcome the
above noted deficiencies of Benson, Sutherland and Hester. Id.
Accordingly, we also reverse the Examiner’s § 103 rejections
(Rejections II and III) for the reasons given above and presented by
Appellants.
ORDER
The Examiner’s prior art rejections of claims 1, 3–36, 38–44, 60, 67,
68, 71–79 and 81 under 35 U.S.C. § 103(a) are reversed.

REVERSED

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