Ex Parte Gaynor et al

Patent Trial and Appeal Board

Nov 2, 2017

14125179 (P.T.A.B. Nov. 2, 2017)

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.
14/125,179 12/10/2013 Scott G. Gaynor 71440-US-PCT 7198
109 7590 11/06/2017
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
ROLLAND, ALEX A
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
11/06/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT G. GAYNOR, DANIEL J. MURRAY,
H. C. SILVIS, YASMINN. SRIVASTAVA,
and JUNYAN YANG
Appeal 2017-002322
Application 14/125,1791
Technology Center 1700
Before GEORGE C. BEST, BRIAN D. RANGE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1 and 3—7. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is The Dow Chemical
Company and its affiliate, Dow Global Technologies LLC. Appeal Br. 2.
Appeal 2017-002322
Application 14/125,179
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a composite
membrane with a selective barrier or “discriminating layer” disposed upon a
porous support. Spec. 1:9—13. The membranes could be used, for example,
for water filtration. Id. at 1:34—36. Claims 1, reproduced below with
emphasis added to certain key recitations, is illustrative of the claimed
subject matter:
1. A method of making a composite membrane comprising
the steps of:
a) providing a porous support comprising a first
polymer including a plurality of repeat units each comprising at
least one structure unit; and
b) forming a porous discriminating layer upon a
surface of the porous support, characterized by:
forming a polymer blend comprising:
i) a second polymer including a plurality of
repeat units each comprising at least one
structure unit, and wherein at least 50 mole
percent of repeat units of the first and second
polymers include the same structural unit
selected from at least one of:
Formula (I): Formula (II):
and
2 In this opinion, we refer to the Final Office Action dated February 19, 2016
(“Final Act.”), the Appeal Brief filed March 22, 2016 (“Appeal Br.”), the
Examiner’s Answer dated October 7, 2016 (“Ans.”), and the Reply Brief
filed November 28, 2016 (“Reply Br.”).
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Application 14/125,179
ii) a block copolymer comprising durable
segments that form a continuous phase
with the second polymer, and fugitive
segments that form micro-domains within
the co-continuous phase; and
removing at least a portion of the fugitive segments
to yield pores having an average size of < 0.5 pm.
Appeal Br. 8 (Claims App.). Independent claim 7 is the same as claim 1
except that Formula (I) is omitted. Id. at 9.
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Koyama US 4,096,099
McCreedy et al. US 4,595,707
(hereinafter “McCreedy”)
Pacheco US 5,376,273
Kosar US 2011/0017661 Al
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1 and 3—6 under 35 U.S.C. § 103(a) as
unpatentable over Kosar in view of Pacheco and in view of Koyama. Final
Act. 3.
Rejection 2. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over
McCreedy in view of Pacheco and in view of Koyama. Id. at 5.
June 20, 1978
June 17, 1986
Dec. 27, 1994
Jan. 27,2011
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Application 14/125,179
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellants’ arguments, we
are not persuaded that Appellants identity reversible error. Thus, we affirm
the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
The Appellants present separate arguments for claims 1 and 7. We
limit our discussion to those claims. Claims 3—6 will stand or fall with
claim 1, from which they depend.
Rejection 1, claims 1 and 3—6. The Examiner rejects claim 1 as
obvious over Kosar in view of Pacheco and in view of Koyama. Final
Act. 3. The Examiner finds that Kosar teaches a method for forming
polyvinylidene fluoride (PVDF) membranes comprising a blend of PVDF
polymer and acrylic polymer where the acrylic polymer is a block
copolymer. Id. (providing citations to Kosar). The Examiner finds that
Kosar does not teach a PVDF substrate but concludes that it would have
been obvious to practice Kosar’s method on a PVDF substrate as taught by
Pacheco. Id. at 4 (providing citations to Pacheco). The Examiner finds that
Kosar does not distinguish between durable segments and fugitive segments
in the block copolymer but finds that Koyama teaches producing a porous
filter membrane with block copolymers having a durable phase and an easily
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Application 14/125,179
removable fine cylinder phase. Id. (providing citations to Koyama). The
Examiner concludes that, in view of Koyama, it would have been obvious to
practice Kosar’s method and remove a phase of the block copolymer in
order to produce uniform porosity. Id. In the Answer, the Examiner
clarifies that the block co-polymer taught by Kosar would have been used in
the manner taught by Koyama. Ans. 3.
Appellants argue that the Examiner’s rationale for combining the
teachings of Kosar and Koyama is inadequate because Kosar teaches away
from greater pore uniformity. Appeal Br. 3^4. In particular, Appellants rely
entirely on Kosar’s Figures 1 and 2 as allegedly demonstrating that Kosar’s
comparative example has better pore uniformity than the Kosar film. Id.
Appellants’ argument is not supported by a preponderance of the
evidence. Kosar is primarily concerned with resistance to caustic solutions
used for cleaning the filter. Kosar Title, 1 8. Appellants do not identify
anything from the text of Kosar that discusses pore uniformity or indicate
that less uniformity is preferred. Meanwhile, Koyama explicitly explains
why uniform filter pores are desirable. Koyama 1:10—28 (explaining that
non-uniformity may lead to clogged pores). The preponderance of the
evidence supports the Examiners position that a person of skill in the art
would have been motivated to improve Kosar by making its pores more
uniform. Ans. 2. Improving Kosar by implementing Koyama’s block
polymer to increase pore uniformity would be no more than predictable use
of prior art elements according to established function. KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
In reply, Appellants argue that it can be advantageous to have non-
uniform pores (i.e., anisotropic membranes). Reply Br. 2. The argument is
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unpersuasive, however, because Appellants present no evidence of
anisotropic membranes’ alleged advantages or supporting that, in the context
of Kosar, uniform pores would be undesirable. Cf. Estee Lauder Inc. v.
L ’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (“[Arguments of counsel
cannot take the place of evidence lacking in the record”). Moreover, even if
there were advantages to anisotropic membranes in some contexts or even if
adding uniformity reduced caustic resistance (as argued, without evidence,
by Appellants at Reply Br. 3), this does not undermine Koyama’s teachings
regarding the advantages of uniform membrane pores. Cf. Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine”).
Appellants also argue that there would be no expectation of success in
combining the teachings of Kosar and Koyama because the two processes
are “fundamentally distinct.” Appeal Br. 5. The Examiner, however,
persuasively explains that Kosar already includes a block co-polymer within
the membrane composition, and that Koyama’s method leverages the block
co-polymer to control uniformity. Ans. 3. The Examiner does not suggest
(as argued by Appellants at Reply Br. 2) literally combining the Kosar and
Koyama pore formation processes or employing Kosar’s process and then
stripping a portion of what is formed. Ans. 3. Despite the differences
between the Kosar and Koyama processes, the preponderance of the
evidence supports the Examiner’s finding that a person of skill in the art
would have had a reasonable expectation of success in employing the
Koyama’s teachings to form the block co-polymer suggested by Kosar.
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Doing so would be a predictable use of Koyama’s teaching according to its
established function. KSR, 550 U.S. at 417.
Because Appellants’ arguments do not identify reversible error, we
sustain the Examiner’s rejection of claims 1 and 3—6.
Rejection 2, claim 7. The Examiner rejects claim 7 as unpatentable as
obvious over McCreedy in view of Pacheco and in view of Koyama. Final
Act. 5. The Examiner finds that McCreedy teaches a method for forming a
composite membrane comprising a blend of polysulfone and block
copolymer as the membrane composition. Id. at 5—6 (providing citations to
McCreedy). The Examiner finds that McCreedy does not teach applying the
membrane to a polysulfone substrate but concludes that it would have been
obvious to practice McCreedy’s method on a polysulfone substrate as taught
by Pacheco. Id. at 6 (providing citations to Pacheco). The Examiner finds
that McCreedy does not distinguish between durable segments and fugitive
segments in the block copolymer but finds that Koyama teaches producing a
porous filter membrane with block copolymers have a durable phase and an
easily removable fine cylinder phase. Id. (providing citations to Koyama).
The Examiner concludes that it would have been obvious to practice
McCreedy’s method and remove a phase of the block copolymer order to
produce uniform porosity. Id. at 6—7. In the Answer, the Examiner states it
would have been obvious to substitute McCreedy’s pore formation technique
with Koyama’s technique. Ans. 3^4.
Appellants argue that there is no reason to choose polysulfone and an
additional block copolymer from McCreedy’s various teachings. Appeal
Br. 6. Appellants, however, do not dispute that McCreedy teaches
polysulfone and the block copolymer as an option and do not persuasively
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dispute the Examiner’s finding that McCreedy teaches a list of functional
equivalents. Ans. 3. Appellants’ arguments are unpersuasive because “all
disclosures of the prior art, including unpreferred embodiments, must be
considered.” In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).
Appellants also argue that the Examiner improperly combines
teachings of McCreedy and Koyama because no evidence suggests that
McCreedy’s pore formation technique is inadequate. Ans. 6. The Examiner,
however, finds that Koyama teaches a technique that is particularly
advantageous because it provides uniform porosity. Ans. 3^4; see also
Koyama 1:10-28, 1:43—58 (“The present inventors have succeeded in
preparing a porous, synthetic resin film in which each of the fine
communicating holes has uniform diameter. . .”). Thus, a preponderance of
the evidence supports the Examiner’s finding that a person of skill in the art
would have recognized that Koyama’s teachings could improve McCreedy
in the same manner they improve Koyama. KSR, 550 U.S. at 417.
Appellants further argue that the McCreedy and Koyama pore
formation techniques “are fundamentally distinct — such that one skilled in
the art would not have a reasonable expectation of success.” Appeal Br. 6.
Appellants’ argument is conclusory and does not explain why a reasonable
expectation of success is lacking. The Examiner finds that there would have
been a reasonable expectation of success in forming McCreedy’s pores with
Koyama’s technique “because Koyama’s technique is suitable for pore
formation.” Ans. 4. The Examiner further finds that McCreedy already
includes a block co-polymer and Koyama teaches a way to leverage the
block co-polymer for a high degree of control over uniformity. Id.
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Appellants do not persuasively dispute the Examiner’s findings and
instead emphasize the alleged difference between McCreedy’s crazing
process where the polymer is partially soluble in solvent but “should NOT
dissolve.” Reply Br. 3. Both McCreedy and Koyama, however, teach
partial solubility of the polymer. See, e.g., McCreedy 4:35—5:2 (explaining
how crazing means formation of the microporous structure “by the action
such as a solvent material” while the glassy polymer composition does not
dissolve); Koyama 3:24-41 (explaining that porous film is formed after
immersion in methanol solution of nitric acid). Appellants have not
persuasively explained how the two processes are different or why the nature
of McCreedy’s process would have led a person of skill in the art to expect
that substitution with Koyama’s process would not work. Rather, a
preponderance of the evidence supports the Examiner’s finding that a person
having ordinary skill in the art would have had a reasonable expectation of
success in using Koyama’s pore formation technique in conjunction with
McCreedy’s teachings.
Because Appellants’ arguments do not identify reversible error, we
sustain the Examiner’s rejection of claim 7.
DECISION
For the above reasons, we affirm the Examiner’s rejections of
claims 1 and 3—7.
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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