Ex Parte HAMAD et al

Patent Trials and Appeals Board

Jun 17, 2019

14048680 - (D) (P.T.A.B. Jun. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/048,680 10/08/2013
38137 7590 06/17/2019
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
06/17/2019 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 1
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 REQUEST FOR REHEARING
This is in response to a Request for Rehearing ("Req. Reh'g"), dated
May 31, 2019, of our Decision, mailed May 9, 2019 ("Decision"), wherein
we affirmed the Examiner's§ 103(a) rejections of all appealed claims.
We have reconsidered our Decision, in light of Appellant's comments
in the Request for Rehearing, and we find no error in the disposition of the
§ 103(a) rejections. We have reviewed the arguments, which solely relate to
the issue of unexpected results, set forth by Appellant in the Request.
However, we remain of the opinion that the subject matter of the claims is
properly rejected and unpatentable under 35 U.S.C. § 103(a).
1 According to Appellant, the real party in interest is Saudi Arabian Oil
Company. See Appeal Br. 1.
Appeal2018-006529
Application 14/048,680
Appellant contends that it "is not understood" why the CO2 removal
rate shown in Figure 3 did not present unexpected results (Reg. Reh'g 2).
Appellant also states "it is simply not possible to determine what the closest
'prior art' is" and it is not understood why the evidence is not commensurate
in scope with the claims (id.).
This argument is not persuasive of any error in our Decision. As
previously determined by the Examiner and this Board, Appellant fails
to address, much less explain with any degree of specificity, how the
Specification evidence is commensurate in scope with the breadth of the
claims on appeal (Ans. 10; Decision 4).
Notably, Appellant does not explain how the Specification examples
of a "theoretical membrane of the simulation" tested at two coating
thicknesses is commensurate in scope with claim 1 that requires no specific
material, no specific membrane area, no specific CO2 permeability, and no
C02/N2 selectivity (compare to, e.g., Spec. ,r,r 32, 36; see also Spec. ,r 8).
See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035 (CCPA 1980); In re Greenfield, 571 F.2d 1185, 1189
(CCPA 1978) ("Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for 'it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support.' In re Tiffin, 448 F .2d
791, 792 (CCPA 1971)").
Finally, contrary to Appellant's statement that it "is not understood"
why the CO2 removal rate depicted in Fig. 3 does not appear to be
unexpected, the Examiner explained that "a linear relationship is a
predictable relationship, especially in light of' the applied prior art (Ans. 9,
2
Appeal2018-006529
Application 14/048,680
10, explaining that Hamad teaches using whatever pressure gradient is
needed for maximum CO2 flux over prolonged periods of continuous
operation of the vehicle).
Further, at page 3 in our Decision, we noted Bara at paragraph 65,
which teaches that use of "just 20 mol% free RTIL [i.e., room temperature
ionic liquids] in the cationic polymeric membrane yields a stable composite
material with a CO2 permeability increase of approximately 400% with a
33% improvement to C02/N2 selectivity". This illustrates that it was known
that the use of specific materials for the FT membrane greatly increase its
effectiveness. It also evinces that a facilitated transport membrane as used in
the method of claim 1 may greatly increase CO2 permeability.
Appellant has not identified the closest prior art and provided a
comparison of the claimed invention with that prior art. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). On the record of this
appeal, Appellant has failed to carry the burden of showing unexpected
results which are commensurate in scope with claim 1. See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972) ("[T]he burden of showing unexpected
results rests on he who asserts them.").
Accordingly, no persuasive merit is present in Appellant's argument
that the claimed method was nonobvious in light of evidence proffered in the
Specification and argued by Appellant (Req. Reh'g 2).
Thus, we decline to modify our decision affirming the Examiner's
§ 103(a) rejections of the appealed claims.
In conclusion, based on the foregoing, Appellant's Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making changes to the final disposition of the rejection therein.
3
Appeal2018-006529
Application 14/048,680
This Decision on the Request for Rehearing incorporates our
Decision, and is final for the purposes of judicial review. See 37 C.F.R.
§ 41.52 (a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(v).
DENIED
4