Ex Parte HAMAD et alDownload PDFPatent Trials and Appeals BoardMay 9, 201914048680 - (D) (P.T.A.B. May. 9, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/048,680 10/08/2013 38137 7590 05/09/2019 ABELMAN, FRAYNE & SCHWAB 666 THIRD A VENUE, 10TH FLOOR NEW YORK, NY 10017 FIRST NAMED INVENTOR Esam Zaki HAMAD 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. 213,03 l-SA348US 9565 EXAMINER SHUMATE, ANTHONY R ART UNIT PAPER NUMBER 1776 MAIL DATE DELIVERY MODE 05/09/2019 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 ESAM ZAKI HAMAD, AHMED A. BAHAMDAN, FERAS HAMAD, GARBA OLORIEGBE Y AHA YA, and W AJDI IS SAM AL-SADAT Appeal2018-006529 Application 14/048,680 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and N. WHITNEY WILSON, Administrative Patent Judges. PERCURIAM. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's rejection under 35 U.S.C. § 103(a) of claims 1, 4, 5, 7, 8, 13 and 14 as unpatentable over the combined prior art of Hamad (WO 2012/100182 Al, published July 26, 2012), and Haung (Jim Huang, et al., Carbon Dioxide Capture Using a CO2-Selective Facilitated Transport Membrane, 4 7 Ind. Eng. Chem. Res. 1261 (2008)), and of claims 1, 12 and 13 as unpatentable 1 Appellant is the Applicant, Saudi Arabian Oil Company, which is also stated to be the real party in interest (Appeal Br. 1 ). Appeal2018-006529 Application 14/048,680 over the combined prior art of Hamad, Bara (WO 2011/046661 Al, published April 21, 2011 ), and Perry (Perry's Chemical Engineers Handbook 22-38 (The McGraw-Hill Companies, Inc., 1999)). 2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. Upon consideration of the evidence of record and each of Appellant's contentions as set forth in the Appeal Brief filed May 3, 2017, we determine that Appellant has not demonstrated reversible error in the Examiner's rejections (e.g., Ans. 3-14 (mailed Aug. 23, 2017)). We sustain the rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following for emphasis. "A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective." In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). It is well settled that it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result-effective parameters. In re Boesch, 617 F.2d 272,276 (CCPA 1980); In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990) (where the difference between the claimed invention and the prior art is some range, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range). See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("In cases involving overlapping ranges, we and our predecessor court have consistently held that 2 The Examiner withdrew the rejection under 35 U.S.C. § 112 (Ans. 2, 3). 2 Appeal2018-006529 Application 14/048,680 even a slight overlap in range establishes a prima facie case of obviousness."). Appellant has not shown reversible error in the Examiner's determination that one of ordinary skill in the art, using no more than ordinary creativity, would have used a membrane transport thickness as recited in claim 1 ( or 12 or 13); and a feed/permeate pressure ratio as recited in claim 1 in the prior art membrane separation method of Hamad based on the overlapping membrane thicknesses exemplified in either one of Haung (claims 1 and 13) or Bara (claims 1, 12 and 13); and because one of ordinary skill in the art would have appreciated that the pressure ratio recited was a known result effective variable (e.g., Ans. 9; Hamad p. 10, 11. 5-12; Appeal Br. generally). Appellant also states that the CO2 removal rate shown in the Specification Figure 3 for a feed/permeate pressure ratio of 4 or greater evinces unexpected results ( e.g., Appeal Br. 6). However, the evidence depicted in Figure 3 shows simulated results (Spec. 4 ). It is well established that the burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was unexpectedly different. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d at 1330-31. Appellant has not shown reversible error in the Examiner's findings that the results relied upon by Appellant would have been predictable and expected (Ans. 9; see also Bara ,r 65). Appellant has also not shown reversible error in the Examiner's determination that the 3 Appeal2018-006529 Application 14/048,680 evidence is not commensurate in scope with the breadth of claim 1 (Ans. 10), and therefore, is not persuasive of nonobviousness. The decision of the Examiner 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 4 Copy with citationCopy as parenthetical citation