Ex Parte Kurth

Board of Patent Appeals and Interferences

Mar 31, 2009

11220005 (B.P.A.I. Mar. 31, 2009)

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).
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Application 11/220,005

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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.

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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:
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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).
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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
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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).
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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
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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:
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