Ex Parte Lim et al

Patent Trial and Appeal Board

Feb 16, 2017

13121006 (P.T.A.B. Feb. 16, 2017)

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.
13/121,006 03/25/2011 Fui Wen Lim HGF-004 4738
11395 7590 02/16/2017
JWIP & Patent Services, LLC
670 Depot Street, PO Box 1265
Easton, MA 02334
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
02/16/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FUI WEN LIM, ANDREW GUY LIVINGSTONE, and
ANDREW TIMOTHY BOAM1
____________

Appeal 2016-003231
Application 13/121,006
Technology Center 1700
____________
Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejection of claims 1–182 under 35 U.S.C. § 103(a) as unpatentable over
applicant’s admitted prior knowledge (hereinafter “admitted prior art”), in
view of Buecher et al. (US 2002/0070158 A1, published June 13, 2002;

1 MEMBRANE EXTRACTION TECHNOLOGY LTD is identified as the
real party in interest. App. Br. 3.
2 We note that claims 2, 10, and 17 were canceled November 20, 2014, thus
we treat this rejection as pertaining to appealed claims 1, 3–9, 11–16, and
18.
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Application 13/121,006
2
hereinafter “Buecher”) or Bikson et al. (US 4,877,421, issued Oct. 31, 1989;
hereinafter “Bikson”), and further in view of Rendall (US 3,864,289, issued
Feb. 4, 1975), or Lauf et al. (US 5,721,286, issued Feb. 24, 1998; hereinafter
“Lauf”). Final Rej. 2, Ans. 2.
We have jurisdiction under 35 U.S.C. § 6. We AFFIRM.
Representative claim 1 is the only claim independent claim before us
on appeal and is reproduced from page 20 of the Appeal Brief (Claims
App’x.) as follows:
A process for manufacturing membrane modules comprising a
polymeric membrane, a feed spacer, a permeate spacer, a
permeate tube, and end caps, the process comprising the steps of:
(a) applying an adhesive containing one or more polarisable
bonds to the polymeric membrane;
(b) positioning the polymeric membrane in its desired location
within the membrane module to produce a green membrane
module ensemble; and
(c) applying microwave radiation to the green ensemble to cure
the adhesive.

Because Appellants have argued all claims as a group, we select and
decide this appeal on the basis of claim 1 alone. 37 C.F.R. §41.37(c)(1)(iv).
We sustain the § 103(a) rejection advanced in this appeal based on the
findings of fact, conclusions of law, and rebuttals to arguments well
expressed by the Examiner in the Final Action and in the Answer. The
following comments are added for emphasis.
We begin by pointing out that Appellants make several erroneous
assertions regarding the scope of the claimed invention. Specifically, we
note Appellants’ statements that “the membranes of the present invention []
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3
are not affected by microwaves,” (App. Br. 10) and the “claimed process
comprises positioning a polymeric membrane in the desired location with
uncured adhesive that is then cured by the use of microwaves that do not
affect the membrane” (id. at 16).
“It is a bedrock principle of patent law that the claims of a patent
define the invention to which the patentee is entitled the right to exclude.”
Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d
1111, 1115 (Fed. Cir. 2004) (emphasis added). As that principle applies
even in district courts, it also holds true in patent prosecution, where claims
are given their broadest reasonable interpretation consistent with the
remainder of the Specification. In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007).
In the claimed process, there is no limitation requiring the polymeric
membranes to be unaffected by microwaves as Appellants urge. Rather,
each recitation of a “polymeric membrane” in the claim is silent regarding
the membrane’s susceptibility to damage by microwaves. Nor does the
claim specify the chemical makeup of the membrane itself (e.g., its
polarizable bond content, which, according to Appellants, could impact how
the membrane is affected by microwaves. (Spec. 3, 4)). Thus, because
Appellants’ claim 1 reads on a process for manufacturing membrane
modules comprising polymeric membranes that would be affected by
microwaves, we find each of Appellants’ contentions (App. Br. 10, 16;
Reply Br. 8, 12) to the contrary unavailing. In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”).
We are also unpersuaded by Appellants’ contentions that the
Examiner confuses the claimed membrane modules with the spiral wound
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sheaths disclosed in Buecher. App. Br. 7–9, 12, and 16–18; Reply Br. 5.
The Examiner relies on a combination of admitted prior art and other
references, including Buecher, to formulate the rejection. Final Rej. 2, Ans.
2. Specifically, the Examiner finds that “[a]pplicant admits in page 1 [of the
Specification] that spiral wound membranes and use of epoxy in making
spiral wound membranes are well known.” Final Rej. 2. The Examiner also
finds that Buecher
teaches spiral wound membranes and the method of making them
as known in [0003–0006]. Buecher at [0006] teaches that [the]
spiral wound membrane module is finished with tape winding or
a GFP (glass-fiber reinforced plastic). Buecher teaches an
improvement in the spiral wound membrane by winding a sheath
on the exterior of the wound membrane pack.

Ans. 3–4.

Thus, the Examiner makes at least two separate findings that
membrane modules such as spiral wound membranes were known in the
prior art at the time of the invention: one based on admitted prior art, and
one based on Buecher’s disclosure. The Examiner furthermore distinguishes
between Buecher’s spiral wound membranes and the sheath that is wound
around the “wound membrane pack.” Id. at 4. Thus, we are not persuaded
that the Examiner has “a complete fundamental misunderstanding of spiral
wound membranes” as alleged by Appellants. (App. Br. 16).
Rather, we note that Appellants do not address, and thus do not reveal
error in, the Examiner’s findings regarding the membrane modules
manufactured by the claimed process. Instead of directly addressing the
Examiner’s findings, Appellants reproduce Figures 1 and 2 of EP0963783,
which Appellants allege is “the corresponding European application [] of
Buecher,” (App. Br. 7) and contend that “the spiral winding of the sheath
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Application 13/121,006
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element [in Figure 2] . . . does not equate it to the membrane [in Figure 1]
over which it is placed.” Id. at 8. Appellants then address the Bikson,
Rendall, and Lauf references separately –– but, notably, not the admitted
prior art relied on by the Examiner –– and then state that “the Examiner has
failed to provide even one element of the claimed invention.” Id. at 11.
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Because
Appellants do not address the rejection as set forth by the Examiner, but
rather present an incomplete and piecemeal attack of the art relied upon
(App. Br. 7–11; Reply Br. 8–14), Appellants’ arguments fail to reveal error
in the obviousness conclusion.
We are also not persuaded that the Examiner erred reversibly in view
of Appellants’ allegations that the Examiner made conflicting statements
during prosecution. Specifically, Appellants note that the Examiner
erroneously stated that “polyimides [] are in fact affected by microwave”
(Final Rej. 4), and then later corrected this statement in an Advisory Action
to read “[de Meuse] does not teach that polyimides [] are in fact affected by
microwave.” (Adv. Act.3 2). App. Br. 14–15. Appellants then urge that the
“suggested typographical error would seem to have the effect of eliminating
the Examiner’s pending rationale for the rejection.” Id. at 16.

3 Advisory Action mailed June 1, 2015.
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We are not persuaded. First, we reiterate that the claims are not
limited to the manufacture of membrane modules containing polyimide
membranes specifically, or membranes that are not affected by microwaves
generally. Further, we note that the Examiner’s statement regarding
polyimides was not a factual finding that was “relied heavily” upon as
Appellants contend. Id. at 14. Rather, the Examiner was merely responding
to Appellants’ argument regarding an unclaimed feature of the membranes
(e.g., the impact of microwaves on the membrane material), and pointing out
that “polarizable bonds” –– which are part of the claimed adhesive –– “are
affected by microwave[s].” Final Rej. 4. Thus, we determine that the
conflicting statements made by the Examiner regarding polyimide
membranes are of no moment.
Finally, we discern no persuasive merit in Appellants’ contentions
regarding the disclosure of adhesives in Buecher and their inapplicability to
the claimed membrane modules. (Reply Br. 9–12). Specifically, Appellants
contend that “the Examiner’s comment that ‘[t]he adhesive will [further]
cure when exposed to microwave’ [] has no basis” because “[a]t the outset, it
must be established that adhesive, in general, can be present in a cured or an
uncured state.” Id. at 9. Appellants provide no scientific evidence to
support this proposition, however. Furthermore, Appellants’ position is at
odds with Appellants’ own Specification (“[s]uitable adhesive for
fabricating a membrane module . . . must have a pot life (the time that it
takes for the adhesive to cure sufficiently . . . ) greater than the time it takes
to apply the glue lines and form the membrane module” (Spec. 2, emphasis
added); “[t]o maximi[z]e the properties of adhesives requires that they are
left for a period of time prior to use for their properties to fully develop – i.e.
curing” (Spec. 3, emphasis added), and several of their appealed claims
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(“wherein the adhesive requires heating at temperatures above 40 deg.C to
fully cure” (claim 3, emphasis added); and “wherein the adhesive requires
greater than 0.1 hour to fully cure” (claim 8, emphasis added)). Appellants’
contentions regarding the curing of the adhesive on the “inner components
of the membrane module” (Reply Br. 11–12) are likewise unavailing
because they are directed to limitations not recited in the claims. Notably,
the claims do not require a specific location of the adhesive other than its
application “to the polymeric membrane.” In re Self, 671 F.2d at 1348.
Thus, for the reasons given by the Examiner and emphasized above,
Appellants fail to show that the Examiner erred in rejecting claims 1, 3–9,
11–16, and 18 under 35 U.S.C. § 103(a).

SUMMARY
The Examiner’s rejection under 35 U.S.C. § 103(a) 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