Ex Parte Johnston-Hall et al

Patent Trial and Appeal Board

Dec 30, 2016

12973508 (P.T.A.B. Dec. 30, 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.
12/973,508 12/20/2010 Geoffrey JOHNSTON-HALE 2010P00505US 1983
56885 7590 01/04/2017
Evoqua Water Technologies LLC
U0105
Intellectual Property Department
10 Technology Drive
Lowell, MA 01851
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
01/04/2017 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):
docketing @ L ALaw .com
CKent@LALaw.com
intellectualproperty @ e voqu a. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFREY JOHNSTON-HALL,
HEINZ-JOACHIM MULLER, and DONGLIANG WANG
Appeal 2015-007330
Application 12/973,508
Technology Center 1700
Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3—9, 11, 14, 17—20, 22, 24—27, 29, 30, 32, 35—
38, and 52—55. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Evoqua Water
Technologies, LLC. Appeal Br. 3.
Appeal 2015-007330
Application 12/973,508
STATEMENT OF THE CASE
Appellants describe the invention as relating to a charged porous
polymeric membrane that could be used to remove contaminants from a
carrier fluid. Spec. 1:7—21; 5:15—22. Claim 1, reproduced below with
emphases added to certain key recitations and numbering added for ease of
reference, is the only independent claim on appeal and is illustrative of the
claimed subject matter:
1. A charged porous polymeric membrane comprising:
a porous polymeric membrane substrate consisting
essentially of [1] polymeric membrane material and [2] a first
polymer having a first functional group, said first polymer
compatible with the polymeric membrane material; and
[3] a charged polymer distinct from the polymeric
membrane material and distinct from the first polymer, the
charged polymer having a second functional group covalently
bonded to the first functional group of said first polymer and
forming a charged coating consisting essentially of the
charged polymer disposed on surfaces of the polymeric
membrane substrate.
Appeal Br.2 11 (Claims App’x).
REFERENCES AND REJECTIONS
The Examiner maintains a rejection of claims 1, 3—9, 11, 14, 17—20,
22, 24—27, 29, 30, 32, 35—38, and 52—55 under 35 U.S.C. § 102(b) as being
anticipated by Muller et al., US 2008/0214687 Al, Sept. 4, 2008 (hereinafter
“Muller”) or, in the alternative, under 35 U.S.C. § 103 as unpatentable over
2 In this decision, we refer to the Final Office Action mailed November 6,
2014 (“Final Act.”), the Appeal Brief filed March 24, 2015 (“Appeal Br.”),
the Examiner’s Answer mailed June 17, 2015 (“Ans.”), and the Reply Brief
filed August 3, 2015 (“Reply Br.”).
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Application 12/973,508
Muller in view of Charkoudian et al., US 2003/0077435 Al, Apr. 24, 2003
(hereinafter “Charkoudian”). Ans. 2.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identity the alleged error in the examiner’s rejections”)). After having
considered the evidence presented in this Appeal and each of Appellants’
contentions, we are not persuaded that Appellants identify reversible error.
We affirm the Examiner’s rejections for the reasons expressed in the Final
Office Action and the Answer. We add the following primarily for
emphasis.
Appellants do not separately argue claims 3—9, 11, 14, 17—20, 22, 24—
27, 29, 30, 32, 35—38, or 52—55. We therefore limit our discussion to claim
1. Claims 3-9, 11, 14, 17-20, 22, 2A-27, 29, 30, 32, 35-38, and 52-55
stand or fall with that claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
We first address the Examiner’s rejection of claim 1 as anticipated by
Muller. The Examiner finds that Muller teaches [1] PVdF as a polymeric
membrane, [2] PVP/VA as the first polymer, and [3] HS-100
(poly(vinylpyrrolidone/methacryl-amidopropyl trimethylammonium
chloride)) as a charged polymer. Ans. 3. The Examiner also finds that
Muller teaches “mixtures” of its proposed polymers (i.e., mixtures of [2] and
[3]). Id.', see also Muller | 61 (teaching use of PVP or HS-100 or “mixtures
thereof’). The Examiner further finds that the polymers can be added as a
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Application 12/973,508
coating. Ans. 3 (citing Muller | 66). A preponderance of the evidence
supports the Examiner’s findings of fact.
Appellants do not dispute the Examiner’s findings that Muller
discloses a charged porous polymeric member comprising components [1],
[2], and [3], but Appellants argue Muller does not describe the arrangement
of these components as recited in claim 1. See Reply Br. 5; Appeal Br. 5—6.
Appellants’ arguments are not persuasive of reversible error in the
Examiner’s finding of anticipation and conclusion of obviousness for the
reasons discussed below.
Claim 1 twice recites the transitional phrase “consisting essentially
of.” The claim term “consisting essentially of’ is used to indicate, for
example, that “the invention necessarily includes the listed ingredients and is
open to unlisted ingredients that do not materially affect the basic and novel
properties of the invention.” PPG Indus., Inc. v. Guardian Indus. Corp., 156
F.3d 1351, 1354 (Fed. Cir. 1998). Appellants bear the burden of: (1)
showing the basic and novel characteristics of their claimed invention, and
(2) establishing how those characteristics would be materially changed by
any allegedly excluded component of an applied reference. See In re
DeLajarte, 337 F.2d 870, 873-74 (CCPA 1964).
We first address claim 1 ’s recitation of “a porous polymeric
membrane substrate consisting essentially of polymeric membrane material
and a first polymer having a first functional group, said first polymer
compatible with the polymeric membrane material. . . .” The Examiner
finds this recitation is met by Muller’s [1] PVdF polymeric membrane
combined with a mixture of [2] PVP/VA and [3] HS-100. Ans. 3. The
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Application 12/973,508
Examiner finds [1] PVdF is the “polymeric membrane material” and [2]
PVP/VA is the “first polymer.” Id.
Appellants have not argued persuasively that Muller’s mixture of [2]
PVP/VA with [3] HS-100 is outside the scope of claim 1 due to the “porous
polymeric membrane substrate consisting essentially of’ recitation, because
Appellants have not established that the presence of HS-100 would
materially affect the basic or novel characteristics of the porous polymeric
membrane substrate.
We turn next to claim 1 ’s recitation of “a charged coating consisting
essentially of the charged polymer disposed on surfaces of the polymeric
membrane substrate . . . .” The analysis with respect to this recitation is
similar. The Examiner finds this recitation is met by Muller’s contemplated
mixture of [2] and [3] applied to [1]. Ans. 3 (citing Muller | 66 (teaching
that the cross linkable component “may be added as a coating . . . .”)). The
Examiner finds [3] HS-100 is the recited “charged polymer.” Id. Appellants
have not argued persuasively that Muller’s mixture of components [2] and
[3] is outside the scope of claim 1 due to the “charged coating consisting
essentially of’ recitation, because Appellants have not established that the
presence of PVP/PA would materially affect the basic or novel
characteristics of the charged coating.
The analysis above is consistent with Appellants’ Specification which
discloses that the charged polymer is preferably chemically bonded or
grafted to the first polymer to form a “water insoluble gel.” Spec. 8:21—25.
Thus, the term “coating” is used broadly in the Specification to describe a
chemical bonding or grafting of one material to another and does not require
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a visually distinct or separable coating (for example, the way one might
envision paint coating a house).
Moreover, Appellants’ Specification suggests that a coating as
claimed necessarily will form when using [1] PVdF as a polymeric
membrane, [2] PVP/VA as the first polymer, and [3] HS-100
(poly(vinylpyrrolidone/methacryl-amidopropyl trimethylammonium
chloride)) as a charged polymer. Ans. 3^4; Spec. Table 2 (indicating that
Example 2 has 25% PVdF as base membrane polymer, 10% PVP/VA as first
functional polymer, and 5% HS-100 as second functional polymer). The
preponderance of the evidence, therefore, supports the Examiner’s finding
that because Muller uses these same materials (see Ans. 3), Muller’s charged
porous polymeric membrane necessarily would possess the same structure
recited in claim 1. Appellants do not present persuasive argument or
evidence to refute this finding. See In re Best, 562 F.2d 1252, 1256 (CCPA
1977) (“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”).
Because Appellants identify no reversible error, we sustain the
Examiner’s rejection based on anticipation by Muller.
The Examiner also takes the position that claim 1 is obvious over
Muller in view of Charkoudian. Ans. 2. Appellants argue that a person of
skill in the art would not have modified Muller in view of Charkoudian.
Appeal Br. 7—8. Appellants also argue that Charkoudian does not cure the
deficiencies of Muller’s teachings. Reply Br. 7. The Examiner’s rejection,
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however, is not based on any modification of Muller and is not based on
bodily incorporation of Charkoudian. Rather, the Examiner cites
Charkoudian to further support that one of ordinary skill would have used
charged polymers to make a charged membrane as taught by Muller. Ans. 5,
7. Also, as explained above, Appellants have not identified error in the
Examiner’s analysis that would establish a deficiency of Muller.
Appellants’ arguments concerning the combination of Muller and
Charkoudian therefore do not establish Examiner error, and we sustain the
Examiner’s rejection on this alternative basis as well.
DECISION
For the above reasons, we affirm the Examiner’s rejections of claims
1, 3-9, 11, 14, 17-20, 22, 2A-27, 29, 30, 32, 35-38, and 52-55.
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
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