10485701 (B.P.A.I. Jan. 30, 2008)

Ex Parte Marcus

Board of Patent Appeals and InterferencesJan 30, 2008

10485701 (B.P.A.I. Jan. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte R. KENNETH MARCUS ____________ Appeal 2008-0749 Application 10/485,701 Technology Center 1700 ____________ Decided: January 30, 2008 ____________ Before EDWARD C. KIMLIN, JEFFREY T. SMITH, and LINDA M. GAUDETTE, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1, 3-7, 10 and 11. Claims 2, 8, 9, and 12-18 stand withdrawn from consideration as being directed to a non-elected invention. Claim 1 is illustrative: 1. An apparatus, comprising: a fluid conduit having a first end and a second end disposed opposite said first end; Appeal 2008-0749 Application 10/485,701 a device for moving fluid through said conduit, said device being connected to said first end of said conduit; an instrument disposed at said second end of said conduit and configured for detecting species in a fluid moving through said conduit; and a plurality of polymer fibers disposed within said conduct between said first end and said second end, each said fiber being configured with a plurality of co-linear channels along the entire length of the surface of each said fiber, each said channel being defined by the opposed interior surfaces of a pair of opposed walls of said fiber, wherein at least substantial portions of the interior surfaces of the walls defining the channels of said fibers are exposed for direct contact with analyte species carried in a fluid moving through said conduit. The Examiner relies upon the following references in the rejection of the appealed claims: Cussler 5,160,627 Nov. 3, 1992 Coughlin 5,277,821 Jan. 11, 1994 Baurmeister 6,270,674 B1 Aug. 7, 2001 Rohrbach 6,656,360 B2 Dec. 2, 2003 Appealed claims 1, 3-7, 10 and 11 stand rejected under 35 U.S.C. Â§ 112, first paragraph, description requirement. Claims 1, 3-5, 7 and 11 stand rejected under 35 U.S.C. Â§ 102(e) as being anticipated by or, in the alternative, under 35 U.S.C. Â§ 103(a) as being unpatentable over Rohrbach. The appealed claims also stand rejected under 35 U.S.C. Â§ 103(a) as follows: (a) claim 6 over Rohrbach in view of Cussler, (b) claims 10 and 11 over Rohrbach in view of Baurmeister, and (c) claim 10 over Rohrbach in view of Coughlin. 2 Appeal 2008-0749 Application 10/485,701 Appellant's claimed invention is directed to an apparatus for separating an analyte from a liquid containing the analyte based on chemical interactions between the analyte and the surface of polymer fibers. The polymer fibers which are disposed within a conduit for the analyte- containing solution comprise a plurality of co-linear channels along the entire length of the fibers. The channels are defined by opposed interior surfaces of the fiber's walls such that substantial portions of the interior surfaces of the walls are exposed for direct contact with the analyte in the solution. We have thoroughly reviewed the respective positions advanced by Appellant and the Examiner. In so doing, we find ourselves in agreement with Appellant that the Examiner's rejections are not sustainable. Accordingly, for essentially those reasons expressed in the Principal and Reply Briefs on appeal, the Examiner's rejections are reversed. Concerning the Examiner's Â§ 112, first paragraph, rejection, it is the Examiner's position that the original Specification fails to provide descriptive support for the claim language "wherein at least substantial portions of the interior surfaces of the walls defining the channels of said fibers are exposed for direct contact with analyte species carried in a fluid moving through said conduit." The basis for the Examiner's finding is that "[t]here is no support for excluding uses not involving direct contact" (Ans. 3, penultimate para.). However, the claim language at issue is not a negative limitation and the Examiner has not established that Appellant's original Specification would not reasonably convey to one of ordinary skill in the art that applicant had possession of the claimed feature at the time of filing the present application. We agree with Appellant that "there is no requirement 3 Appeal 2008-0749 Application 10/485,701 for an Applicant for a Patent to provide specific support in the written description for excluding that which is not found in a claim" (Reply Br. 4, last para.). We now turn to the Examiner's Â§ 102 rejection over Rohrbach. As stressed by Appellant, Rohrbach discloses a filter comprising fibers that have liquid disposed in the channels for extracting metals from another liquid. Since the fibers of Rohrbach comprise channels that are filled with liquid, they do not meet the claim limitation of having substantial portions of the interior surfaces of the walls defining the channels being exposed for direct contact with an analyte species. The presence of liquid in the channels of Rohrbach's fibers preclude the walls of the channels being exposed for direct contact with the analyte. The Examiner makes the erroneous finding that the claim language at issue is a statement of intended use, implying that the apparatus of Rohrbach comprises hollow fibers before the extraction liquid fills the channels. However, as set forth by Appellant in the Reply Brief, the fibers of Rohrbach are filled with liquid before they are incorporated into the filter apparatus. Rohrbach teaches how the channels of the fibers are filled with liquid before insertion into the apparatus (see col. 7, ll. 40 et seq.), and the reference Examples clearly illustrate that the fibers are filled with liquid before becoming part of the filter apparatus. We also do not agree with the Examiner's reasoning that "[s]ince the metal extractant liquid contains the metal analyte and contacts the fiber, the metal analyte would necessarily contact the fiber" (Ans. 7, first para., last sentence). We find that the ultimate presence of the analyte in the extraction liquid does not meet the claim requirement for the interior surfaces of the 4 Appeal 2008-0749 Application 10/485,701 fiber walls being exposed for direct contact with the analyte species carried in the flowing fluid. As for the Â§ 103 rejection over Rohrbach, the Examiner has not advanced a convincing rationale why it would have been obvious for one of ordinary skill in the art to modify the liquid-liquid extraction apparatus of Rohrbach in order to arrive at the claimed apparatus. The Examiner's additional citation of Cussler, Baurmeister and Coughlin does not remedy the basic deficiency of Rohrbach discussed above. In conclusion, based on the foregoing, we are constrained to reverse the Examiner's rejections. REVERSED cam JAMES M. BAGARAZZI DORITY & MANNING P O BOX 1449 GREENVILLE, SC 29601-1449 5