11241598 (P.T.A.B. Dec. 12, 2014)

Ex Parte Jones et al

Patent Trial and Appeal BoardDec 12, 2014

11241598 (P.T.A.B. Dec. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID CHARLES JONES and HYUN SUNG LIM ____________ Appeal 2013-001850 Application 11/241,598 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHUNG K. PAK, and CHARLES F. WARREN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s rejections of claims 15, 16, 18, 19, 21–25, 31, and 32 under 35 U.S.C. § 102(b) as anticipated by, or alternatively under 35 U.S.C. § 103(a) as unpatentable over, Schaefer et al. (WO 2004/018079 A2, published Mar. 4, 2004). We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appeal 2013-001850 Application 11/241,598 2 Appellants claim a process for removing liquid aerosols, oil and/or water from a gas stream which comprises passing such a gas stream through a coalescing filtration medium consisting of a nanofiber web of one nanofiber layer thereby removing at least a portion of the liquid aerosols, oil and/or water from the gas stream (sole independent claim 15). A copy of representative claim 15, taken from the Claims Appendix of the Brief, appears below. 15. A process for removing liquid aerosols, oil and/or water from a gas stream comprising passing a gas stream containing liquid aerosols, oil and/or water through a coalescing filtration medium consisting of a nanofiber web of one nanofiber layer of continuous, substantially polyolefin- free, polymeric nanofibers, wherein the nanofiber layer has an average fiber diameter less than about 800 nm, has a Frazier air permeability as measured by ASTM D-737 of at least 1 m3/min/m2, and has a basis weight of between about 5 g/m2 to about 100 g/m2, and removing at least a portion of said liquid aerosols, oil and/or water from said gas stream with an efficiency of at least 99.5% as measured according to CAGI ADF 400 % when challenged with a contaminant of 30 weight oil at a concentration of 10 mg/m3 and air flowing at a face velocity of 0.2 m/s across a 90 mm diameter flat oil saturated test specimen. Appellants do not present arguments specifically directed to the dependent claims under rejection (see App. Br. 4–10). Therefore, these claims will stand or fall with parent independent claim 15. The § 102 Rejection Appellants argue that the Examiner erred in finding Schaefer anticipates their claimed process wherein liquid aerosols, oil and/or water are removed from a gas stream by passing the stream through a coalescing Appeal 2013-001850 Application 11/241,598 3 filtration medium consisting of a nanofiber web of one nanofiber layer (see, e.g., App. Br. 4). We agree. The Examiner correctly finds that Schaefer discloses filtration media comprising a single layer or multiple layers of nanofiber (see, e.g., Schaefer Abst., 4–5).1 Likewise, the Examiner is correct in finding that Schaefer discloses using this filtration media for removing particulate matter from gaseous and liquid streams (id. at 7) such as filtering fine mists from air (id. at 19).1 However, the Examiner fails to identify any teaching in Schaefer which clearly and unequivocally discloses the claim 15 requirement under consideration (i.e., removing liquid aerosols, oil and/or water from a gas stream specifically by passing the stream through a single nanofiber layer specifically) without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the reference. See In re Arkley, 455 F.2d 586, 587–88 (CCPA 1972) (for a § 102 rejection to be proper, the prior art “must clearly and unequivocally disclose the claimed [subject matter] or direct those skilled in the art to the [subject matter] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference”). For this reason, we do not sustain the Examiner’s § 102 rejection. 1 These findings have not been disputed by Appellants in the record before us. Appeal 2013-001850 Application 11/241,598 4 The § 103 Rejection Appellants state that “Schaeferi s [sic, Schaefer is] not an enabling reference” (App. Br. 5). By itself, this statement is inadequate to overcome the presumption that the Schaefer printed publication is enabling. See Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) (there is no reason why printed publications should not receive a presumption of enablement). Appellants argue that “the Examiner makes a conclusory statement about obviousness while ignoring the evidence presented previously that the understanding of one of skill in the art would be that removal of aerosol by a nanoweb layer alone is not feasible” (App. Br. 7–8). This evidence is identified as the Gogins and Johnson references cited by Appellants during prosecution before the Examiner (id.). Appellants do not refer us to any disclosure in these references which is directed to Schaefer specifically and which teaches that it is not feasible to remove aerosol using a single layer of the Schaefer nanofibers specifically. For this reason, Gogins and Johnson do not undermine the above teachings of Schaefer and do not show error in the Examiner’s obviousness conclusion. Furthermore, we perceive no convincing merit in Appellants’ position that the conclusion of obviousness is conclusory. This conclusion is well supported by Schaefer’s express teachings that the filtration media may comprise a single nanofiber layer and that the filtration media may be used for filtering mists from air. In light of these teachings, one having ordinary Appeal 2013-001850 Application 11/241,598 5 skill in this art would have used Schaefer’s single nanofiber layer for filtering mists from air based on a reasonable expectation of success. Conclusion The decision of the Examiner 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). AFFIRMED cdc