Ex Parte Hoek et al

Patent Trial and Appeal Board

Nov 3, 2016

11364885 (P.T.A.B. Nov. 3, 2016)

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.
11/364,885 02/27/2006 Eric M. V. Hoek 04034.004US1 8752
53137 7590 11/07/2016
VIKSNINS HARRIS & PADYS PLLP
7851 Metro Parkway
Suite 325
Bloomington, MN 55425
EXAMINER
ROLLAND, ALEX A
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
11/07/2016 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC M. V. HOEK, YUSHAN YAN, and
BYEONG-HEON JEONG
Appeal 2015-005034
Application 11/364,885
Technology Center 1700
Before TERRY J. OWENS, JULIA HEANEY, and AVELYN M. ROSS,
Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 41—52. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Decision below we refer to the Specification filed February 27, 2006
(Spec.), the Final Office Action mailed March 20, 2014 (Final Act.), the
Appeal Brief filed November 19, 2014 (Appeal Br.), the Examiner’s Answer
mailed February 3, 2015 (Ans.), and the Reply Brief filed April 3, 2015
(Reply Br.).
2 Appellants identify the real party in interest as The Regents of the
University of California. Appeal Br. 2.
Appeal 2015-005034
Application 11/364,885
STATEMENT OF CASE
The claims are directed to methods of making nanocomposite membranes
for use as reverse osmosis membranes. Claims Appendix at Appeal Br. 16.
Claim 41, reproduced below, is illustrative of the claimed subject matter:
41. A process for preparing a reverse osmosis membrane,
comprising:
(A) providing, on the surface of a porous support
membrane, a composition comprising:
(a) a polyamine;
(b) a polyfunctional acyl halide; and
(c) nanoparticles; and
(B) interfacially polymerizing the polyamine and the
polyfunctional acyl halide on the surface of the porous support
membrane in the presence of the nanoparticles to form a reverse
osmosis membrane comprising (i) the porous support membrane
and (ii) a crosslinked film comprising a polyamide matrix and
nanoparticles within the polyamide matrix.
Id.
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 41, 44-46, 48, and 49 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Cadotte ’3443
in view of Hasse.4 Final Act. 3.
B. Claim 42 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cadotte ’344 in view of Hasse and
in further view of Cadotte ’897.5 Id. at 5.
3 John E. Cadotte, US 4,277,344, issued July 7, 1981 (“Cadotte ’344”).
4 Hasse et al., US 6,626,980 B2, issued September 30, 2003 (“Hasse”).
5 Cadotte et al., US 4,765,897, issued August 23, 1988 (“Cadotte ’897”)
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Application 11/364,885
C. Claim 43 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cadotte ’344 in view of Hasse and in
further view of Koo.6 Id. at 6.
D. Claim 47 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cadotte ’344 in view of Hasse and in
further view of Wang.7 Id. at 6.
E. Claim 50—52 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cadotte ’344 in view of Hasse and
in further view of Hachisuka.8 Id. at 7.
F. Claims 41, 44, 45, 48, and 49 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Cadotte ’344
in view of Waite.9 Id. at 7.
Appellants seek our review of rejections A—F, but focus their
discussion solely on independent claim 41. Appeal Br. 7. Appellants do not
present any argument for claims 42—52 separate from what is argued for
independent claim 41. Id. at 10-14. We therefore focus our discussion
below on claim 41 (Rejections A and F) to resolve the issues on appeal.
OPINION
Rejection A — Obviousness
The Examiner rejects claim 41 as obvious over Cadotte ’344 in view
of Hasse. Final Act. 3. The Examiner finds that Cadotte ’344 “teaches a
method for making a reverse osmosis membrane with good salt rejection and
6 Koo et al., US 6,015,495, issued January 18, 2000 (“Koo”).
7 Wang et al., US 6,824,689 B2, issued November 30, 2004 (“Wang”).
8 Hachisuka et al., US 6,413,425 Bl, issued July 2, 2002 (“Hachisuka”).
9 Waite et al., US 5,102,547, issued April 7, 1992 (“Waite”).
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Application 11/364,885
flux characteristics” that includes the claimed process steps. Id. The
Examiner acknowledges that Cadotte ’344 does not teach the presence of
nanoparticles {id.), but finds that Hasse teaches a method for manufacturing
a membrane with nanoscale molecular sieve particles dispersed therein to
separate components of gas mixtures: “[t]he membrane is preferably a
continuous phase of polyamide (col. 8, line 12) with nanoscale molecular
sieve particles dispersed therein (col. 7, lines 12—25) supported on a porous
substrate (col. 8, lines 65—67).” Id. The Examiner reasons that it would
have been obvious to one skilled in the art at the time to modify the method
of Cadotte ’344 to include nanoscale molecular sieve particles to “improve
the permeability and/or selectivity performance of gas separation
membranes.” Id. at 4.
Appellants argue that the combination of references presented by the
Examiner fails to show “interfacially polymerizing the polyamine and the
polyfimctional acyl halide on the surface of the porous support membrane in
the presence of the nanoparticles to form a reverse osmosis membrane” as
required by the claims. Appeal Br. 10. According to Appellants, “[wjhile
Cadotte relates to interfacial polymerization, Cadotte is silent with respect to
nanoparticles, and is silent regarding interfacial polymerization in the
presence of nanoparticles” and “[wjhile Hasse describes incorporation of
nanoparticles into membranes by thermal deposition processes, Hasse is
absolute silent with respect to formation of membranes via interfacial
polymerization.” Id. Thus, say Appellants, the references fail to teach all
elements of the claims. Id.
Appellants’ arguments have not identified reversible error by the
Examiner. The crux of Appellants’ argument is that neither reference
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teaches both nanoparticles and interfacial polymerization in the presence of
nanoparticles. Appeal Br. 10. Appellants’arguments attack the teachings of
Cadotte ’344 and Hasse individually and fail to address the combined
teachings as presented by the Examiner. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Rather, “[t]he test for obviousness is what
the combined teachings of the references would have suggested to those
having ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981). Thus, Appellants have failed to establish reversible error by the
Examiner.
Rejection F— Obviousness
The Examiner rejects claim 41 as obvious over Cadotte ’344 in view
of Waite. Final Act. 8. In addition to the Examiner’s findings with respect
to Cadotte ’344 (see supra 3^4 and Final Act. 8), the Examiner finds that
“Waite teaches a method for forming an anti-fouling semipermeable
membrane” using interfacial polymerization and “oligodynamic bioactive
(biostatic and/or biocidal) fine particle moieties are incorporated into the
polymer membrane (abstract).” Id. at 8. The Examiner rationalizes that one
skilled in the art at the time of invention would have found it obvious to
modify the method of Cadotte ’344 to “incorporate oligodynamic bioactive
fine particles into the polymer precursor solution because Waite states that it
is suitable to do so when forming an RO membrane and because doing so
inhibits the multiplication of microorganisms that foul and clog the
membrane.” Id.
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Appellants contend that “the cited references fail to legally establish
interfacially polymerizing the polyamine and the polyfimctional acyl halide
on the surface of the porous support membrane in the presence of the
nanoparticles to form a reverse osmosis membrane as recited in claim 41.”
Appeal Br. 11. Appellants urge that “[wjhile Cadotte relates to interfacial
polymerization, Cadotte is silent with respect to nanoparticles, and is silent
regarding interfacial polymerization in the presence of nanoparticles” and
while “Waite relates to the preparation of membranes incorporating
nanoparticles by nonsolvent induced phase separation (i.e., a solvent casting
technique)[,] Waite ... is silent with respect to incorporation of
nanoparticles during polymerization, and further fails to establish
incorporation of nanoparticles during interfacial polymerization.” Id. In
addition, Appellants argue that the nanoparticles of Waite are “incorporated
into the support layer via solution casting techniques” and not through an
interfacial casting process as claimed. Id.
Appellants do not convince us of reversible error. Consistent with
Appellants’ argument for Rejection A above, Appellants argue that because
neither Cadotte ’344 nor Waite individually teach both nanoparticles and
interfacial polymerization in the presence of nanoparticles, the combination
fails to suggest Appellants’ invention. Again, Appellants are attacking the
references individually and not for what the combination suggests to one
skilled in the art. Merck & Co., 800 F.2d at 1097. Moreover, Appellants’
argument that the nanoparticles of Waite are incorporated through a solution
casting technique and not interfacial polymerization fails to address the
rejection as presented. The Examiner relies upon Waite to teach
incorporation of nanoparticles within a membrane and not for the method of
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preparing the membrane. Final Act. 8. Moreover, and as the Examiner
explains:
Waite also teaches adding the particles to film forming and/or
precursor components (col. 4, lines 24—33). It is the position of
the Examiner that these precursor components track to the
precursor components used in interfacial polymerization and
monomer casting discussed later in Waite (col. 5, lines 22—30)
and discussed more completely in Cadotte (the polyamine in
aqueous solution and the polyfunctional acyl halide in non-polar,
organic solution are the precursor components for forming a
polyamide; see Cadotte, col. 14, line 59—col. 15, line 28).
Id. at 3. Accordingly, Appellants’ arguments fail.
We have considered Appellants’ remaining arguments and do not find
them persuasive. We therefore affirm the Examiner’s rejections.
Motivation to Combine the References
Appellants also argue that “no case of obviousness has been made
because there is no legally sufficient motivation to combine the references”
and that the Examiner “selectively modifies Cadotte with Hasse and/or
Waite in an attempt to establish all elements of the claims.” Appeal Br. 12.
According to Appellants, appropriate consideration was not given to the
declaration by Mr. Rick Lesan, dated December 12, 2013 (“Lesan Deck”),
where Mr. Lesan testified that “a person of ordinary skill would not have
expected interfacial polymerization on a porous support in the presence of
nanoparticles to create a useful, workable RO [or reverse osmosis]
membrane.” Id. at 13. Appellants urge that Mr. Lesan’s testimony rebuts
the prima facie case of obviousness because “a person of ordinary skill
would have expected the resulting membrane to have surface defects caused
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Application 11/364,885
by uneven distribution of nanoparticles” and thus “would be inoperative as
an RO membrane.” Id.
Appellants’ arguments are not persuasive of error by the Examiner.
The Lesan Declaration is directed toward a discussion of the Winey
reference—a reference not relied upon by the Examiner in making his
rejections. According to the Examiner, “the Winey reference was made of
record ... to show that, in fact, there is a reasonable expectation of success
of nanoparticles becoming entrained within a polymer formed by interfacial
polymerization.” Ans. 4. The Lesan Declaration focuses upon the method
of Winey—“removing the polymer as it forms or conducting the
polymerization under strong agitation”—which would not produce a
membrane suitable for reverse osmosis operations because agitation would
result in “surface defects caused by uneven distribution of the
nanoparticles.” Lesan Decl. 1 8. However, the Examiner did not propose
using the method of Winey in combination with Cadotte ’344 and Hasse
and/or Waite to produce the membrane as claimed. Therefore, on this
record, Appellants have not adequately shown that the skilled artisan would
have understood that the combinations, as presented by the Examiner, would
prove unsuccessful in preparing reverse osmosis membranes.
CONCLUSION
The Examiner did not err in rejecting claim 41, and claims depending
therefrom, over Cadotte ’344 and Hasse and/or Waite.
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Application 11/364,885
DECISION
For the above reasons, the Examiner’s rejection of claims 41—52 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)(1).
AFFIRMED
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