Ex Parte KurthDownload PDFBoard of Patent Appeals and InterferencesMar 31, 200911220005 (B.P.A.I. Mar. 31, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte CHRISTOPHER J. KURTH ____________ Appeal 2009-0182 Application 11/220,005 Technology Center 1700 ____________ Decided:1 March 31, 2009 ____________ Before CHUNG K. PAK, CATHERINE Q. TIMM, and JEFFREY T. SMITH, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1 through 10 and 14 through 21, all of the claims 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-0182 Application 11/220,005 2 pending in the above-identified application. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. The subject matter on appeal is directed to “a method for preparing a reverse osmosis membrane having improved flux properties comprising treating a starting reverse osmosis membrane with an ammonium salt comprising: 1) a cation…; and 2) a suitable anion other than nitrate, borate, or perchchlorate….” (Spec. 2, ll. 13-20). Details of the appealed subject matter are recited in representative claims 1 and 17 reproduced below: 1. A method for preparing a reverse osmosis membrane having improved flux properties comprising treating a starting reverse osmosis membrane with an ammonium salt comprising: (1) a cation selected from trimethylbenzylammonium, dibutylammonium, tripropylammonium, hexylammonium, ethylammonium, triethanolammonium, trimethylammonium, dimethylammonium, dipropylammonium, diisopropylethylammonium, triethylammonium, tetraethylammonium, or diethylammonium; and (2) a suitable anion other than nitrate, borate, or perchlorate; and optionally drying to provide the reverse osmosis membrane having improved flux properties. 17. A method for preparing a reverse osmosis membrane having improved flux properties comprising treating a starting reverse osmosis membrane with an ammonium salt comprising: (1) a cation selected from tfimethylbenzylammonium, dibutylammonium, tripropylammonium, hexylammonium, ethylammonium, triethanolammonium, trimethylammonium, dimethylammonium, dipropylammonium, diisopropylethylammonium, triethylammonium, [tetraethylammonium,] or diethylammonium and (2) subjecting the reverse osmosis membrane to a post treatment. Appeal 2009-0182 Application 11/220,005 3 The prior art references relied upon by the Examiner are: Ikeda EP 0 474 370 A1 Mar. 11, 1992 Jons US 5,876,602 Mar. 2, 1999 The Examiner rejected the claims on appeal as follows: 1) Claims 1 through 8, 14 through 18, and 20 under 35 U.S.C. § 102(b) as anticipated by the disclosure of Ikeda; 2) Claims 9, 10, and 21 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of Ikeda; and 3) Claim 19 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Ikeda and Jones. The Examiner’s §§ 102(b) and 103(a) rejections are based on the Examiner’s finding that Ikeda teaches treating a starting reverse osmosis membrane with the claimed particular ammonium salt within the meaning of 35 U.S.C. § 102(b). However, Appellant does not agree with the Examiner’s finding that Ikeda teaches such treatment. ISSUE Has Appellant shown that the Examiner reversibly erred in asserting that Ikeda teaches treating a starting reverse osmosis membrane with the claimed particular ammonium salt to prepare a reverse osmosis membrane having improved flux properties within the meaning of 35 U.S.C. § 102(b)? FINDINGS OF FACT The Factual Findings set forth below are supported by a preponderance of the evidence: Appeal 2009-0182 Application 11/220,005 4 1. Ikeda teaches a reverse osmosis cross-linked polyamide membrane having improved flux properties (p. 3, ll. 20-55). 2. Ikeda teaches a process for preparing such membrane, which comprises forming a composite semipermeable membrane via the interfacial polycondensation reaction using an aqueous solution containing a polyfunctional amine and an organic solution containing a polyfunctional acid halide and contacting the resulting composite semipermeable membrane with a quaternary reactive compound having one or more quaternary nitrogen atoms and a functional group (reactive with the composite semipermeable membrane) (p. 6, l. 47 to p. 7, l. 53). 3. Ikeda exemplifies immersing a composite semipermeable membrane with a preferred quaternary reactive compound, i.e., glycidyltrimethylammonium chloride solution, to prepare a reverse osmosis membrane having improved flux properties (p. 9, ll. 35-56, Examples 1 and 2, p. 10, ll. 5-14, Example 3, and p. 7, ll. 31-36.) 4. Ikeda not only teaches preparing a preferred quaternary reactive compound, i.e., glycidyltrimethylammonium chloride, with an epoxy functional group, but also teaches forming other quaternary reactive compounds using other functional groups, such as aziridine group, halogenated alkyl group, amino group, carboxylic group, halogenated carbonyl group, hydroxyl group, episulfide group and the like (p. 4, l. 37 to p. 5. l. 52). 5. Ikeda does not mention contacting its composite semipermeable membrane with the claimed ammonium salt (pp. 1-10). Appeal 2009-0182 Application 11/220,005 5 6. The Examiner has not shown that the quaternary reactive compound taught by Ikeda specifically corresponds to the claimed ammonium salt within the meaning of 35 U.S.C. § 102(b). (p. 4, l. 37 to p. 5. l. 52). 7. Ikeda, in reference to a known treatment of a reverse osmosis membrane, teaches (p. 3, ll. 1-5) that: To promote the electrolyte rejection by the cross-linked polyamide membrane at a high pH, it has been proposed to coat the membrane with a quaternary ammonium salt (Japanese Laid-Open Patent Application (Kokai) No. 2-2827). However, with this membrane, since the quaternary ammonium salt is only attached to the cross-linked polyamide membrane by electrostatic force, the quaternary ammonium salt is gradually removed from the membrane if the reverse osmosis operation is continued for a long time. 8. Ikeda does not identify the type of the quaternary ammonium salt employed in Japanese Laid-Open Patent Application (Kokai) No. 2-2827. 9. The Examiner does not refer to any teaching in Japanese Laid-Open Patent Application (Kokai) No. 2-2827, which is said to show the claimed ammonium salt. 10. The Examiner relies on Jons to show only the claimed post treatment of composite polyamide reverse osmosis membranes with hypochlorite ions, to enhance their flux properties as required by claim 19 (Ans. 4-5; see also abstract and col. 2, ll. 33-52). PRINCIPLES OF LAW Under 35 U.S.C. § 102(b), anticipation is established only if “each and every element as set forth in the claim is found, either expressly or inherently, described in a single prior art reference.” Verdegall Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). The prior Appeal 2009-0182 Application 11/220,005 6 art reference must identify each and every element as set forth in the claim “with sufficient specificity to constitute a description thereof within the purview of 35 U.S.C. § 102[(e)].” In re Schaumann, 572 F.2d 312, 315 (CCPA 1978). As stated in In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972): [F]or the instant rejection under 35 U.S.C. § 102(e) to have been proper, the [prior art] reference must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures…. Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a determination of: (1) the scope and content of the prior art; (2) the differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) secondary considerations, if any. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). According to KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41 (2007): [A]nalysis [of whether the subject matter of a claim would have been obvious] need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Nevertheless, "rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR at 1741-42, quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Appeal 2009-0182 Application 11/220,005 7 The burden is on Appellant to identify reversible error in the appealed § 103 rejection. Cf. In re Kahn, 441 F.3d 977, 985-986 (Fed. Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii). ANALYSES AND CONCLUSIONS Ikeda states that Japanese Laid-Open Patent Application (Kokai) No. 2-2827 describes treating a reverse osmosis membrane with a quaternary ammonium salt to improve its flux properties. However, Ikeda does not identify the type of the quaternary ammonium salt employed in Japanese Laid-Open Patent Application (Kokai) No. 2-2827. Nor does Ikeda teach contacting its composite semipermeable membrane with the claimed ammonium salt. Ikeda only teaches contacting its composite semipermeable membrane with a quaternary reactive compound. The Examiner has not shown that the quaternary reactive compound taught by Ikeda is one of the claimed ammonium salts. Accordingly, we concur with Appellant that the Examiner reversibly erred in asserting that Ikeda teaches treating a starting reverse osmosis membrane with the claimed particular ammonium salt to prepare a reverse osmosis membrane having improved flux properties within the meaning of 35 U.S.C. § 102(b). As is apparent from the record, Ikeda does not identify each and every element as set forth in claims 1 and 17 “with sufficient specificity to constitute a description thereof within the purview of 35 U.S.C. § 102(b).” Schaumann, 572 F.2d at 315 As to the Examiner § 103 rejections, the Examiner has not proffered any articulated reasoning, much less some rational underpinning, as to why one of ordinary skill in the art would have been led to treat a starting reverse osmosis membrane with the claimed particular ammonium salt. KSR at Appeal 2009-0182 Application 11/220,005 8 1741-42, quoting In re Kahn, 441 F.3d at 988. As indicated supra, Ikeda does not teach contacting or treating a composite semipermeable membrane with the claimed ammonium salt. Accordingly, we determine that the Examiner has not established a prima facie case of obviousness within the meaning of 35 U.S.C. § 103(a). ORDER In view of the foregoing, the decision of the Examiner is reversed. REVERSED PL Initial: sld VIKSNINS HARRIS & PADYS PLLP P.O. BOX 111098 ST. PAUL, MN 55111-1098 Copy with citationCopy as parenthetical citation