Ex Parte Hessing et alDownload PDFPatent Trial and Appeal BoardApr 25, 201311859026 (P.T.A.B. Apr. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/859,026 09/21/2007 Jacko Hessing 05032-00142 3835 22910 7590 04/26/2013 BANNER & WITCOFF, LTD. 28 STATE STREET SUITE 1800 BOSTON, MA 02109-1701 EXAMINER LIGHTFOOT, ELENA TSOY ART UNIT PAPER NUMBER 1715 MAIL DATE DELIVERY MODE 04/26/2013 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 JACKO HESSING, WILLEM JOHANNES VAN BAAK, and AKIRA KASE ____________________ Appeal 2012-001587 Application 11/859,026 Technology Center 1700 ____________________ Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and LINDA M. GAUDETTE, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1-9 under 35 U.S.C. § 103(a) as obvious over Zhang1 and Chapman2.3 We have jurisdiction under 35 U.S.C. § 6(b). 1 Zhang et al., US 5,236,588, patented Aug. 17, 1993. 2 Chapman et al., US 3,880,763, patented Apr. 29, 1975. 3 Appellants state that they “note the double patenting rejections and will file appropriate terminal disclaimers.” (Br. 3.) Because Appellants do not contest the rejections, we do not reach them. Appeal 2012-001587 Application 11/859,026 2 We AFFIRM. The claims are directed to a method of making a microporous membrane. Claim 1 is illustrative: 1. A process for making a microporous membrane comprising the steps of: providing a mixture of at least one type of curable compound and a solvent, wherein the concentration of the at least one type of curable compound is between 20 and 80 weight percent and wherein at least 30 weight percent of said solvent is water; applying said mixture to a support; curing said curable compound mixture by exposure to radiation for less than one second, thereby causing phase separation between the crosslinked curable compound and the solvent; and removing said solvent by drying and/or washing the resulting microporous membrane. (Claims App’x at Br. 15.) Because Appellants do not argue any claim apart from the others, pursuant to 37 C.F.R. § 41.37(c)(1)(vii), we select claim 1 as representative for resolving the issues on appeal. OPINION At the outset, we note that the Examiner is not applying Chapman to show the obviousness of modifying the process of Zhang. The Examiner is relying upon Chapman for further details of Chapman’s own process. Zhang is relied upon only to the extent Zhang teaches Chapman’s process. The Examiner finds that Zhang teaches the “freezing method” of Chapman in the Background of the Invention and Comparative Example 6 Appeal 2012-001587 Application 11/859,026 3 (Ans. 4). According to Zhang, Chapman (JP 107,062/1974) teaches an asymmetric membrane formed from a covalently cross-linked vinyl polymer (Zhang, col. 1, ll. 42-45). According to Zhang, in the method of Japanese Laid Open Patent Publication No. 107,062/1974, as this asymmetric membrane was prepared by exploiting the freezing of a solvent (hereinbelow described as a "freezing method"), the thickness of a layer with a smaller pore diameter than that of the other parts in the thickness direction of the membrane (hereinbelow described as a dense layer) was 50 micrometers or greater, and this resulted in the filtering rate being very low; and the pore diameter of a layer with a larger pore diameter than that of either part in the thickness direction of the membrane, (hereinbelow described as a "porous supporting layer") and resulted in a membrane with insufficient membrane strength. This is not practical. (Zhang, col. 2, ll. 15-28.) Zhang’s invention is meant to solve problems found in the prior art of Chapman and others. In reference to Zhang’s own process, Zhang states that “in comparison with a freezing method, a high flux based on a thin dense layer, a high pressure-resistant strength resulting from a not-too-large pore diameter in a porous supporting layer, and a high production speed, can be realized.” (Zhang, col. 8, l. 67 to col. 9, l. 3.) Zhang’s dense layer desirably has a thickness of 5 micrometers or less (col. 7, ll. 8-9). If the thickness is greater, filtration is extremely slow (col. 7, ll. 9-10). The pores of the dense layer are 0.0005-0.020 micrometers in diameter (Zhang, col. 7, ll. 29-32). When the pore diameters are 0.0005-0.015 micrometers in diameter, the membrane has a molecular weight cut-off ability and can separate polymer substances, low molecular weight substances, or ions dissolved in a solvent, from the solvent (Zhang, col. 7, ll. 32-37). Appeal 2012-001587 Application 11/859,026 4 Chapman’s method, in contrast, forms a thicker 50 µm or greater dense layer (Zhang, Comp. Ex. 6 at col. 14, ll. 60-64; Chapman, Ex. 1 at col. 4, ll. 2-4). Zhang evaluated the filtration capability of the membrane of Comparative Example 6, i.e., Chapman’s membrane, by passing a 0.3% aqueous solution of polyethylene glycol with a molecular weight of 50,000 through the membrane (Zhang, col. 10, ll. 52-60). As pointed out by Appellants, the Comparative Example 6 membrane did not allow “a polyethylene glycol aqueous solution to pass through, even under a filtration pressure of 3 Kg/cm2.” (Zhang, col. 14, l. 67 to col. 15, l. 2.) Appellants contend that their claims are directed to (1) an aqueous process for making (2) a microporous membrane (3) using phase separation, and that the claims are not obvious over Zhang and Chapman because Zhang’s Comparative Example 6 process did not produce an operable microporous membrane (Br. 3-4), and Chapman’s process does not use phase separation (Br. 4). There is no dispute that the method of Zhang’s Comparative Example 6, which is an embodiment of the Chapman process, is an aqueous process (Br. 5). The relevant issues are: 1. Is the membrane created by Zhang in Comparative Example 6 a “microporous membrane” as required by claim 1? 2. In the process of Comparative Example 6/Chapman, is there “phase separation between the crosslinked curable compound and the solvent” as further required by claim 1? Issue 1 In order to resolve the first issue, we must first determine the meaning of “microporous membrane” as that phrase is used in claim 1. Appeal 2012-001587 Application 11/859,026 5 The Specification does not define “membrane.” According to Dictionary.com, a membrane can be “any thin pliable sheet of material.” Webster’s Ninth New Collegiate Dictionary (Merriam-Webster ed. 1986), contains a similar definition: “a thin, soft pliable sheet or layer, esp. of animal or plant origin.” According to Dictionary.com, the word originates from Latin membrāna, skin covering a part of the body, from membrum member, and the meaning “thin layer of skin, tissue covering a limb or organ” is attested from c.1600. According to the Specification: a membrane is referred to as "microporous" if it contains a substantial amount of pores preferably having a diameter of between 0.001 and 2.0 µm. More preferably the majority of the pores of the microporous membrane of the invention have a size of between 0.003 and 1.0 µm and even more preferably between 0.01 and 0.7 µm. There is no preference for the pore shape. The pores can be spherical or irregular or a combination of both. Preferably, the pores are inter-connected as this will contribute to a quick solvent absorption and a high flux. (Spec. 10:14-21.) During examination, "claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Therefore, we determine that the broadest reasonable interpretation consistent with the Specification for “microporous membrane” is a thin, pliable sheet of material having a substantial amount of pores preferably having a diameter between 0.001 and 2.0 µm. Appeal 2012-001587 Application 11/859,026 6 The membrane of Chapman, as formed in Comparative Example 6 of Zhang, has an upper face of 50 µm thickness with pores of 0.01 µm diameter, and therefore, is a “microporous membrane” within the meaning of Appellants’ claims. While Zhang discloses that the microporous membrane of Comparative Example 6 was unable to filter a solution of polyethylene glycol, there is no requirement that a “microporous membrane” have the ability to filter polyethylene glycol solutions. Chapman describes the membranes as useful for filtration of sea or brackish water (Chapman, col. 1, ll. 5-22). The operability of the membrane is dependent on various factors including the affinity of the membrane for the component being separated. The fact that the specific membrane formed in Comparative Example 6 was not able to filter the polyethylene glycol solution, does not provide evidence that the microporous membrane is inoperable for all separations (Ans. 11-12). In fact, there is no requirement that the microporous membrane necessarily be operable for any specific intended use of filtration. Nor does the evidence support Appellants’ argument that the lack of polyethylene glycol solution filtering confirms that the membrane is not microporous (Br. 6). Both Zhang and Chapman describe the membrane as porous (Zhang, Comp. Ex. 6; Chapman, Ex. 1). Zhang observed the pores using an electron microscope (Zhang, col. 14, ll. 55-60). Appellants further contend that Zhang teaches away from Chapman’s method (Br. 6-7). “[I]n general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). While the “teach away” test is a Appeal 2012-001587 Application 11/859,026 7 useful general rule, care must be taken not to adopt it in the abstract. Gurley, 27 F.3d at 553. “Although a reference that teaches away is a significant factor to be considered in determining unobviousness, the nature of the teaching is highly relevant, and must be weighed in substance.” Id. While Zhang teaches away from using the specific Comparative Example 6 membrane to filter polyethylene glycol solutions, we cannot say that Zhang teaches away from using the broader scope of Chapman’s teachings of forming asymmetric microporous membranes for use in, for instance, desalinating sea or brackish water (Chapman, col. 1, ll. 5-22). With regard to Appellants’ unpredictability argument (Br. 7-10), the references provide guidance on how to select the monomers, solvents, and process parameters to obtain the asymmetric microporous membrane. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Appellants have not presented convincing evidence that forming the microporous membrane was either outside of the skill of the ordinary artisan or that Appellants have obtained an unexpected result. To the extent that Appellants are arguing that the Chapman process is non-enabled, a reference is presumed to be enabling. Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990); In re Sasse, 629 F.2d 675, 681 (CCPA 1980). Appellants have not met their burden in showing that the Chapman process, in fact, is not enabling for making a microporous membrane. Issue 2 Appellants also contend that Chapman does not teach using phase separation to produce the membrane, but instead Chapman teaches just the opposite (Br. 4-5; Br. 10-11; Br. 12). According to Appellants, this is Appeal 2012-001587 Application 11/859,026 8 because the inert fluid, i.e., the solvent, must dissolve both the monomers and the resulting polymer (id.). Appellants’ claim requires a step of “curing said curable compound mixture by exposure to radiation for less than one second, thereby causing phase separation between the crosslinked curable compound and the solvent” as recited in claim 1. As pointed out by the Examiner, Chapman teaches the inert liquid, i.e., the solvent, solubilizes both the monomer and polymer “in order to get a homogeneous gel” (Ans. 12). This gel is a pre- polymer solution, i.e., a “curable compound mixture” in accordance with claim 1, and is cured by exposing it to UV radiation. As further pointed out by the Examiner, curing this pre-polymer gel results in a solid polymer (Ans. 12-13). The insert fluid is removed from the solid polymer membrane in its liquid state (Chapman, col. 2, ll. 22-24). There is phase separation between the liquid inert fluid and the polymer as the polymer solidifies. Appellants have not persuaded us of a reversible error in the Examiner’s finding that phase separation occurs in the process of Chapman. CONCLUSION We sustain the Examiner’s rejection. DECISION The Examiner’s decision is affirmed. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED sld Copy with citationCopy as parenthetical citation