Ex Parte Hartmann

Board of Patent Appeals and Interferences

Sep 29, 2008

10512508 (B.P.A.I. Sep. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte EDUARD HARTMANN
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Appeal 2008-3391
Application 10/512,508
Technology Center 1700
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Decided: September 29, 2008
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 11, 13-19, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appellant’s invention is directed to a solution to the problem of fiber
buildup when using a cross-flow filtration device to filter a liquid (e.g. fruit
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and vegetable juices) to remove suspended solids (e.g., fibers) (Spec. 1, ¶
[0001], Spec. 2, ¶ [0007]. According to Appellant, “[t]he actual goal of the
invention is to reduce the buildup of these clumps of fibers on the front ends
of the filtration modules 1 completely, if possible” (Spec. 3, ¶ [0015]).
Claim 11, the sole independent claim on appeal, reads as follows:
11. An apparatus for cross-flow filtration of a liquid
carrying fibers, the apparatus comprising:
a plurality of liner filtration modules arranged in parallel,
said modules having respective front ends with respective front
surfaces which are aligned in a linear direction extending
transversely of said linear filtration modules; and
a flow distribution manifold connected to said front ends
and arranged so that a flow having a flow velocity in said linear
direction is present in said manifold at the front ends of all of
said modules, wherein said manifold is designed so that said
flow velocity is constant at the front ends of all of said modules.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cosentino 5,162,101 Nov. 10, 1992

The Examiner rejected the claims as follows: (i) claims 11, 13, 14,
21, and 22 under 35 U.S.C. § 102(b) as anticipated by Cosentino; and (ii)
claims 15-19 under 35 U.S.C. § 103(a) as obvious over Cosentino (Ans. 4-
8).
ISSUES
Has Appellant demonstrated error in the Examiner’s determination
that claims 11, 13, 14, 21, and 22 are anticipated by Cosentino; specifically,
has the Examiner met the initial burden of establishing that the hollow fibers
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50 disclosed by Cosentino would have been capable of meeting the claimed
function of “cross-flow filtration of a liquid with fibers”?
Has Appellant demonstrated error in the Examiner’s determination
that claims 15-19 are unpatentable over Cosentino?

PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Inherent anticipation of a
claim feature cannot be based on possibilities or probabilities; the mere fact
that a certain thing may result from a given set of circumstances is not
sufficient. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). In relying upon
a theory of inherency, the Examiner has the initial burden to provide a basis
in fact and/or technical reasoning to reasonably support a finding that the
alleged inherent characteristic necessarily flows from the teachings of the
applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1463-64 (BPAI 1990).
A patent applicant is free to recite features of an apparatus either
structurally or functionally, i.e., by what it does. See, e.g., Schreiber, 128
F.3d at 1477. Further, if a prior art device includes the structural limitations
set forth in a claim and is capable of performing the intended use as recited
in the preamble, then it meets the claim. Id. (anticipation rejection affirmed
based on BPAI’s factual findings that the prior art oil can dispenser would
be capable of dispensing popcorn as required by the claim). Where an
apparatus is claimed functionally rather than structurally and the PTO has
reason to believe that a functional limitation is an inherent characteristic of
the prior art, it possesses the authority to require the applicant to prove that
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the subject matter shown to be in the prior art does not possess the
characteristic. Schreiber, 128 F.3d at 1478.

FINDINGS OF FACT

1. Cosentino teaches a device having a blood oxygenator and heat
exchanger of the “outside perfusion type” wherein oxygen is
passed through the bores of hollow fibers while blood is flowed
past the outside of the hollow fibers (Abstract; col. 1, ll. 29-32).

2. Cosentino describes that each fiber 50 is a “membrane designed
for gas exchange” (col. 5, ll. 30-35), and that the fibers are
“liquid impermeable” (col. 5, ll. 35-36; emphasis provided).
Carbon dioxide gas is transferred out of the blood via these
hollow fibers (col. 1, ll. 14-22).

3. Cosentino does not explicitly state that the apparatus is “for
cross-flow filtration of a liquid carrying fibers” as recited in the
preamble of appealed claim 11; nor does Cosentino explicitly
describe the hollow fibers 50 as “filtration modules” as recited
in the body of claim 11.

ANALYSIS
Appellant contends that the gas permeable/liquid impermeable hollow
fibers 50 (or the liquid impermeable hollow tubes 96 which carry a heat
exchange media) of Cosentino “do not qualify as filtration modules because
no filtration takes place in these hollow fibers”. (App. Br. 4-5). Appellant
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also contends that the preamble statement in claim 11 “serves to define the
structure of the linear filtration modules in terms of what they do, i.e., they
filter fibers out of a liquid passing through them” (App. Br. 7; see also Reply
Br. 2-3). The Examiner states that “[f]iltering liquid carrying fibers is
intended use, which the apparatus of the reference is capable of.” (Ans. 4).
The Examiner further responds that “claim 11 does not recite any structure
related to the ‘well known’ ‘filtering’ aspect as alleged in the argument”
(Ans. 8). The Examiner also asserts (Ans. 10):
The membrane [that is, each hollow fiber 50 of Cosentino] is a
hydrophobic microporous membrane. Given sufficient pressure
to overcome the bubble point of the membrane for the liquid, or
a liquid that is different, such as liquids other than blood, this
membrane would permeate the liquid, and would function as
intended in claim 11.
(Ans. 10).
The Examiner’s position is not well taken. The dispositive issue is
whether, as noted above, the Examiner has met the initial burden of
establishing that the hollow fibers 50 disclosed by Cosentino would have
been capable of meeting the claimed function of “cross-flow filtration of a
liquid with fibers”.
Cosentino discloses an oxygenation process wherein oxygen gas is
transferred into blood flowing over gas permeable, liquid impermeable
hollow fibers, and carbon dioxide gas is transferred out of the blood via
these hollow fibers (Facts 1 and 2). However, other than conjecture or
speculation, the Examiner has not directed us to any evidence or persuasive
technical reasoning to substantiate the assertion that Cosentino’s gas
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permeable, liquid impermeable fibers are capable of filtering a liquid
containing fibers as required by claim 11 (Fact 3)1.
We agree with the Appellant that the preamble of claim 11 “defines
the structure of the linear filtration modules in terms of what they do, i.e.,
they filter fibers out of a liquid passing through them” (App. Br. 7). It is not
apparent how a gas permeable, liquid impermeable membrane would have
been capable of filtering fibers out of a liquid. In our view the Examiner is,
at best, improperly relying on the mere possibility that under certain
conditions, the apparatus of Cosentino would have been capable of
performing the claimed function of cross-flow filtration of a liquid with fiber
particles. Oelrich, 666 F.2d at 581. See also MEHL/Biophile Int’l Corp. v.
Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (inherency may not be
established by mere probabilities or possibilities).
Because the Examiner has not relied on any additional references to
make up for the difference between Cosentino and the claimed subject
matter as discussed above, we cannot uphold either of the Examiner’s
rejections.
CONCLUSION
On this record, for the foregoing reasons and those stated in the Brief
and Reply Brief, we determine that Appellant has shown error in the
Examiner’s determinations that: (i) claims 11, 13, 14, 21, and 22 are

1 Remarks made by the Examiner (Ans. 11) regarding the obviousness of the
claimed invention using the teachings of Cosentino in combination with
Appellant’s admitted known cross-flow filters are not on point, since such a
rejection has not been made by the Examiner. We note that WO 00/03794
A1 (see also family member US 6,495,046 B1) exemplifies a prior art cross-
flow filtration system as discussed by Appellant (Spec. 1, ¶ [0004]).
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anticipated by over Cosentino; and (ii) claims 15-19 are unpatentable over
Cosentino.

DECISION
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

PL Initial:
sld

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