Ex Parte Kawakatsu et alDownload PDFPatent Trial and Appeal BoardNov 15, 201713985682 (P.T.A.B. Nov. 15, 2017) Copy Citation 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. 13/985,682 08/15/2013 Takahiro Kawakatsu SHI-078 3206 32628 7590 11/17/2017 KANFSAKA RFRNFR AND PARTNFRN FT P EXAMINER 2318 Mill Road ROYCE, LIAM A Suite 1400 ALEXANDRIA, VA 22314-2848 ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 11/17/2017 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): office@uspatentagents.com docketing @ ipfirm. com pair_lhhb @ firsttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAKAHIRO KAWAKATSU and TETSUYA AOKI, Appeal 2017-002900 Application 13/985,682 Technology Center 1700 Before TERRY J. OWENS, JULIA HEANEY, and JANE E. INGLESE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’ rejection of claims 1—6 and 12—14. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a method for improving a rejection of a permeable membrane. Claim 1 is illustrative: 1. A method for improving a rejection of a permeable membrane, comprising: passing an aqueous solution excluding an aqueous solution having a pH of 7 or less, containing a composition having an amino group and having a molecular weight of 1,000 or less through a degraded polyamide permeable membrane, Appeal 2017-002900 Application 13/985,682 wherein the composition comprises at least two compounds having (Al) a cyclic compound and a non-cyclic compound with a side chain, (A2) a cyclic compound and a non-cyclic compound without a side chain, (B) a linear-chain compound without a side chain and a branched compound including a cyclic compound with a side chain, or (C) different molecular weights from each other. The References Nakagawa Hirose Mickols Harrison Jones US 4,634,531 US 5,674,398 US 5,755,964 US 2006/0032823 Al US 2012/0046248 Al Jan. 6, 1987 Oct. 7, 1997 May 26, 1998 Feb. 16, 2006 Feb. 23, 2012 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1, 2, 6, 13, and 14 over Nakagawa in view of Mickols, claim 3 over Nakagawa in view of Mickols, Harrison and Jones, claims 4 and 5 over Nakagawa in view of Mickols and Chen, and claim 12 over Nakagawa in view of Mickols and Hirose. OPINION We affirm the rejections. The Appellants argue claims 1, 2, 6, 13, and 14 as a group and do not provide a substantive argument as to the separate patentability of the other claims (Br. 4—6). We therefore limit our discussion to one claim, i.e., claim 1. Claims 2—6 and 12—14 stand or fall with that claim. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). 2 Appeal 2017-002900 Application 13/985,682 Nakagawa discloses a semipermeable polyamide membrane treated with an aqueous solution including polyfunctional amines such as triethylenetetramine to improve the membrane’s selective separation performance and then with an aqueous solution including polyfunctional water-soluble aldehydes such as glutaraldehyde to make the membrane more durable with respect to its selective separation performance improving effect (col. 3,11. 38—49; col. 4,11. 22—33). The “improving effects for selective separation performance and its durability by the combinations of said water-soluble compounds also are observed for unused fresh membranes right after manufacture as well as for membranes which were deteriorated in selective separation performance after operation of long duration” (col. 5, 11. 13-19). Mickols teaches that “reverse osmosis and nanofiltration membranes usually have a discriminating layer fixed to a porous support” (col. 1,11. 21— 22), “it is generally the discriminating layer which determines the rejection rate, i.e., the percentage of the particular dissolved material that is rejected, and the flux, i.e., the flow rate at which solutions pass through the membrane” (col. 1,11. 27—31), and “membranes having both a high rejection characteristic for a particular substance and a high flux are desirable for most applications” (col. 2,11. 26—28). Mickols treats a crosslinked polyamide polymer discriminating layer with an amine or amine mixture and teaches that the membrane’s rejection rate and flux “may be controlled by varying the amine, the concentration of the amine, the time of contact, the temperature of the contact and the pH of the amine solution” such that “the flux is increased and the rejection rates for particular substances may be changed,” i.e., “[a]s the flux is increased, the selectivity of the membrane 3 Appeal 2017-002900 Application 13/985,682 may change, i.e., the membrane may allow univalent ions such as sodium to pass through the membrane at a higher rate while only rejecting divalent ions and organic compounds” (col. 2,1. 60 — col. 3,1. 5; col. 3,1. 56 — col. 4, 1. 4; col. 5,11. 30-33). In an example the amine solution treatment decreases the NaCl (univalent ions) rejection rate but improves the MgS04 (divalent ions) rejection rate (Table 4). An amine solution pH of about 7 to about 12 is useful, but the pH is not critical (col. 6,11. 31—39). The Appellants assert that “what Nakagawa discloses is a reaction of amino compounds and aldehyde. The rejection of the membrane may be increased but aldehyde is required (contrary to the present application)” (Br. 4). That assertion is not well taken because it is directed toward a limitation which is not in claim 1. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[Ajppellanf s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). That claim does not exclude aldehyde. The Appellants assert that “a skilled artisan in the art would not have found any reasons or motivations to look into Nakagawa, which is silent as to passing a composition comprising at least two compounds, to combine with any other references to improve a rejection of a degraded polyamide membrane” (Br. 4). Nakagawa’s disclosures of “combinations of water-soluble amines and water-soluble aldehydes” (col. 3,11. 36—37), “aqueous solutions including polyfunctional amines” (col. 3,11. 40-41) and “addition of water-soluble amines and water-soluble aldehydes” (col. 4,11. 26—27), and that “water-soluble amines would contribute to improving the selective 4 Appeal 2017-002900 Application 13/985,682 separation performance of said semipermeable membranes” (col. 4,11. 29— 31), indicate that the amines can be used in combination. Also, Nakagawa discloses that the amines can be used for improving selective separation performance of degraded polyamide membranes (col. 4,11. 22—25; col. 5, 11. 13-19). The Appellants assert that Mickols’ method decreases, not improves, the rejection rate (Br. 4—5). The Appellants’ claim 1 requires “improving a rejection.” Mickols’ method can improve “a rejection,” i.e., the rejection of divalent ions (col. 5, 11. 30-33; Table 4 (MgS04). The Appellants assert that “in Mickols, the amino compounds are used as solvents and it is thought that the amino compounds loosen the amide structures. Hence, both of the concentrations and reaction temperatures are high. These are not applicable to the present application” (Br. 5). The Appellants do not point to support for that assertion in Mickols. Arguments of counsel cannot take the place of evidence. See In re DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Also, the Appellants’ claim 1 does not exclude high concentrations or reaction temperatures. See Self, 671 F.2d at 1348. The Appellants assert that the Nakagawa/Mickols combination does not disclose a method for improving a rejection of a permeable membrane by use of the Appellants’ claim 1 ’s composition and that “although the cited references show some amino compounds, the references use the amino compounds in different purposes from each other” (Br. 5). 5 Appeal 2017-002900 Application 13/985,682 Both Nakagawa (col. 3,11. 36-41; col. 4,11. 26—31, 50-68; col. 5, 11. 13—19) and Mickols (col. 2,1. 58 — col. 3,1. 5; col. 3,1. 56 — col. 4,1. 4; col. 5,11. 30—33; Table 4) would have suggested improving a rejection of a permeable membrane by use of combinations of amines having different molecular weights. The Appellants assert that “[a] skilled artisan in the art would not have found any reasons or motivations to combine these references to attain the present application (i.e., improved rejection of a degraded polyamide membrane” (Br. 5). Nakagawa improves a rejection (improves selective separation) of a degraded polyamide membrane (col. 5,11. 13—19). For the above reasons we are not persuaded of reversible error in the rejections. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 1, 2, 6, 13, and 14 over Nakagawa in view of Mickols, claim 3 over Nakagawa in view of Mickols, Harrison and Jones, claims 4 and 5 over Nakagawa in view of Mickols and Chen, and claim 12 over Nakagawa in view of Mickols and Hirose are affirmed. It is ordered that the Examiner’s decision 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 6 Copy with citationCopy as parenthetical citation