Ex Parte Morikawa et al

Patent Trial and Appeal Board

Feb 27, 2017

11979277 (P.T.A.B. Feb. 27, 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.
IPE-060-022 6680
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
11/979,277 10/31/2007
20374 7590 02/27/2017
KUBOVCIK & KUBOVCIK
P. O. Box 548
ANNANDALE, VA 22003
Hirofumi Morikawa
02/27/2017 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 HIROFUMI MORIKAWA, SHUJI FURUNO,
and MASAHIRO HENMI
Appeal 2014-009951
Application 11/979,277
Technology Center 1700
Before TERRY J. OWENS, PETER F. KRATZ, and JEFFREY R. SNAY,
Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s Final Rejection of claims 1—4, 6, and 9. We have jurisdiction
pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to a sewage treatment
method including, inter alia, a step of immersing a separation membrane
module into wastewater containing activated sludge, wherein the separation
membrane module includes a plurality of separation membrane elements
with each such element including, inter alia, a flat separation membrane.
The wastewater is separated into filtered water and suspended solids by
Appeal 2014-009951
Application 11/979,277
permeating through the separation membrane. Air is supplied to the surfaces
of the separation membranes of the separation membrane elements.
Each separation membrane comprises a nonwoven fabric and a porous
resin layer wherein part of the resin of the resin layer permeates into the
nonwoven fabric forming a composite layer with the fabric. The nonwoven
fabric porous resin layer and composite layer have a specified relative
thickness relationship. The pores of the resin layer surface have a specified
average pore size in the range of 0.01 to 0.2 pm at the surface and the pores
include a specified standard deviation [variation] of pore size of 0.1 pm or
less at the surface.
Appellants disclose that “[t]he average pore size and the standard
deviation are determined based on diameters of all micropores which can be
observed in a scope of 9.2 pm by 10.4 pm by scanning electron microscopy
at a magnification of xl0,000” (Spec. 4,11. 9-12). Appellants teach that a
“separation membrane satisfying such ranges exhibits both a high
permeability for a long time without clogging and a high rejection, which
means that fungus and sludge do not leak” (Spec. 9,11. 17-24).
Further details are evident from a review of claim 1, the sole
independent claim on appeal, which claim is illustrative and reproduced
below.
1. A method of sewage treatment comprising:
immersing a separation membrane module into
wastewater which includes activated sludge and is contained in
a reservoir, wherein the separation membrane module
comprises a plurality of separation membrane elements, and a
housing containing the separation membrane elements, wherein
each separation membrane element comprises a supporting
plate, a separation membrane and a filtered water outlet and
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Application 11/979,277
wherein the separation membrane is a flat membrane and is
arranged on at least one face of the supporting plate;
separating the wastewater into filtered water and
suspended solids by having the water wastewater permeate
through the separation membrane; and
having the filtered water flow toward the exterior from
the filtered water outlet,
wherein the flat separation membrane of each separation
membrane element comprises a nonwoven fabric and a porous
resin layer on at least one surface of the nonwoven fabric;
the porous resin layer comprises a resin;
a part of the resin permeates into the nonwoven fabric to
form a composite layer with the nonwoven fabric;
the porous resin layer has at its surface, pores having an
average pore size in the range of 0.01 to 0.2 pm and a standard
variation of pore sizes of 0.1 pm or less; and
the nonwoven fabric has a thickness A of from 50 pm to
1 mm, the porous resin layer has a thickness B and the
composite layer has a thickness C; and wherein the separation
membrane satisfies:
B > 0.2xA, and
C/B >0.1; and
macrovoids are present in the porous resin layer and have larger
diameters than the diameter of pores at the surface and have a
short diameter of 0.05xA or more;
and supplying air from an air diffuser to the surfaces of
the separation membranes of the separation membrane
elements.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
fshida
Pacheco
Wang
US 5,192,456
US 5,376,273
US 5,834,107
Mar. 9, 1993
Dec. 27, 1994
Nov. 10, 1998
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Application 11/979,277
The Examiner maintains the following grounds of rejection:
Claims 1—4, 6, and 9 stand rejected under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the invention.
Claims 1—4, 6, and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ishida in view of Wang and Pacheco.
We reverse the stated rejections. Our reasoning follows.
In maintaining the rejection of claims 1—4, 6, and 9 under the second
paragraph of 35 U.S.C. § 112, the Examiner urges that the claim 1 recitation
of an average pore size range and a standard variation of pore sizes range
runs afoul of the definiteness requirements of 35 U.S.C. § 112, second
paragraph because; (1) “the standard deviation [variation] would only create
a range within a range situation” given that “[t]he range of the average
diameter of the membrane itself will define the allowable variation for the
pore sizes in the membrane” and (2) “it is unclear how the standard
deviation would be applied, when the claim recites a range for the average
pore size” (Final Act. 3; claim l).1
According to Appellants, the claim 1 limitations in question furnish
two different and reasonably definite pore size limitations for the flat
separation membrane of each separation membrane element by requiring
each flat separation membrane to have a porous resin layer and requiring
that the pores at a resin layer surface of each such flat separation membrane
1 Our references to “Final Act.” herein are to the Final Office Action of
January 30, 2014, from which Office action (Final Rejection) this appeal is
taken.
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Application 11/979,277
must be such as to (1) have an average pore size falling within the average
pore size range limitation set forth in claim 1 and (2) provide for a
distribution of pore sizes for which the calculated standard variation
(deviation) of pore sizes would furnish a value within the variation of pore
sizes range claimed (App. Br. 10—13). The Declaration of Mr. Kenta Iwai
filed Dec. 30, 2013 (Iwai Decl. I) is furnished in support of Appellants’
arguments (Iwai Decl. I, Tflf 5—8).
We agree with Appellants in that the Examiner has not established,
prima facie, that the claim language, in question, renders the rejected claims
indefinite on the bases furnished by the Examiner, which are refuted by
Appellants’ arguments (App. Br. 4—14; Iwai Decl. 1,17). The Examiner’s
rebuttal position does not otherwise convey that the Examiner’s
indefmiteness rejection is founded, prima facie, on a sustainable basis (Ans.
2-6).
A long-standing test for claim indefmiteness in the examination
context under the second paragraph of 35 U.S.C. § 112 can be stated as
involving a determination as to whether the claims set out and circumscribe
a particular area with a reasonable degree of precision and particularity when
read in light of the application disclosure as they would be interpreted by
one of ordinary skill in the art. In re Moore, 439 F.2d 1232, 1235 (CCPA
1971).
Thus, claims are definite under Section 112, second paragraph if one
of ordinary skill in this art would have been reasonably apprised of the scope
of the claims, when the claim language is read in light of the specification.
See In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).
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Here, the Examiner does not articulate, in the first instance, why the
claim language in question, when read in light of the Specification from the
perspective of one of ordinary skill in the art at the time of the invention,
would not have reasonably apprised one of ordinary skill in the art of the
scope of the rejected claims. Moreover, the Examiner’s response to
arguments in the Answer does not particularly and persuasively address the
substance of Appellants’ arguments traversing the Examiner’s rejection
under the second paragraph of 35 U.S.C. § 112 as set forth in the Appeal
Brief (Ans. 2—6; see Reply Br. 2—8).
Appellants’ claim 1 provides for a determination of the standard
deviation of pore sizes for a flat separation membrane by a calculated
standard deviation value based on the particular pore size data set that a
particular flat separation membrane possesses at a surface thereof as
measured by scanning electron microscopy via observation of all the pores
thereat with a particular scope and magnification as defined by Appellants in
the Specification, which calculated value must fall within the claimed
standard variation of pore sizes range (Spec. 4,11. 9—12; 10,11. 5—8; see Iwai
Decl. 1,1 7 (pp. 3,7)). In other words, the latter methodology comprises the
basis for determining the standard deviation value of the pore sizes that
Appellants are claiming, which standard deviation value must fall within the
claimed range as would be understood from the perspective of one of
ordinary skill in the art when reading the claims in light of the subject
Specification.
On this record, we reverse the Examiner’s rejection of the appealed
claims under the second paragraph of 35 U.S.C. § 112.
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The Examiner’s obviousness rejection of claims 1—4, 6, and 9 under
35 U.S.C. § 103 over Ishida in view of Wang and Pacheco falls short in that
the Examiner fails to carry the burden to establish a prima facie case of
obviousness for reasons set forth by Appellants (App. Br. 14—31; Reply Br.
8-15).
In particular, sole independent claim 1 is drawn to a method of
treating sewage sludge wherein a particularly specified separation membrane
module is immersed into wastewater containing activated sludge for
separating the wastewater into filtered water and suspended solids by having
the wastewater permeate through a flat separation membrane that forms part
of each of the plural separation elements that, in turn, form at least a part of
the immersed separation module. Each of the plural separation elements
includes a supporting plate having a face on which its flat separation
membrane is arranged. In addition, and as indicated above, claim 1 requires
that the flat separation membrane of each separation membrane element
comprises, inter alia, a nonwoven fabric having a porous resin layer on at
least one surface of the fabric wherein the resin layer has pores of a specified
average pore size and wherein the pores have a specified standard deviation
as to the pore sizes at a surface of the resin layer. Further details of the
claimed subject matter, including the separation membrane are set forth in
claim 1, as reproduced above.
The Examiner determines that Ishida teaches a process of treating
sewage sludge using submerged membranes, including flat membranes, and
an air diffuser but fails to teach details of the membrane and membrane
material (Final Act. 5). The Examiner determines that Wang teaches a
PVdF microporous asymmetric flat membrane with a resin layer cast on a
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Application 11/979,277
porous substrate, which resin layer has a porous surface that can include an
average pore size as required by Appellants’ claim 1 (Final Act. 5). The
Examiner finds that Wang describes pores of the resin layer surface that
inherently have a standard deviation of pore sizes as required by Appellants’
claim 1 given that Wang teaches how to vary/tailor the average surface area
diameter of the membranes and the SEM pictures depicted in Figures 2b
“shows pretty uniform pores” (Final Act. 6; Ans. 7). The Examiner
determines that several other features of the flat membrane of Wang
correspond to features required by Appellants’ claim 1 and determines that
Pacheco teaches a web and/or support thickness that would have been
obvious to employ in Wang (Final Act. 7).
The Examiner relies on background information said to be present in
Wang as to certain properties of the PVdF membrane of Wang and based
thereon, the Examiner determines that “it would have been obvious to one of
ordinary skill in the art to choose the Wang membrane for use in Ishida
because Ishida does not specify a membrane and Wang shows that the PVdF
membrane has some very good qualities” (Final Act. 7).2
As further discussed below, the Examiner cites Miyashita3 and
Taniguchi4 (previously made of record) in the Examiner’s Answer as
rebuttal evidence for purposes of providing countervailing evidence that is
argued by the Examiner to refute certain arguments made by Appellants
based on additional evidence (previously made of record) that Appellants
2 Presumably he Examiner is proposing modifying Ishida by a modified
Wang, in the manner that the Examiner proposes Wang should be modified
by Pacheco.
3 U.S. Patent No. 6,325,938 B1 (Dec. 4, 2001).
4 U.S. Patent No. 6,495,041 B2 (Dec. 17, 2002).
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continue to cite to as supporting evidence in contesting the propriety of the
Examiner’s obviousness rejection (Ans. 9). However, Miyashita and
Taniguchi are not included as part of the prior art references that the
Examiner relies upon in the stated rejection for establishing a prima facie
case as to the obviousness of the claimed subject matter. Nor are the latter
references mentioned at all in the Final Action from which this appeal is
taken.
Appellants concede that Wang’s Table A discloses a membrane that
possesses an average pore size of 0.1 microns (Reply Br. 9). Appellants
argue, inter alia, that the Examiner has failed to present a prima facie case of
obviousness because the Examiner has not furnished sufficient evidence
and/or reasoning to establish that a flat membrane of Wang that includes an
average pore size within the claimed range also inherently possesses a pore
size variation at a surface of its resin layer that falls within the standard
variation (deviation) range as required by Appellants’ claim 1 (App. Br. 16—
18; Reply Br. 9—10).
We determine that Appellants’ argument indicates harm fill error in the
Examiner’s position that Wang inherently/necessarily describes a membrane
having a pore size variation as required by Appellants’ claim 1 for a
membrane of Wang that otherwise satisfies the average pore size limitation
of claim 1. The Examiner appears to employ an incorrect claim construction
for Appellants’ claim 1 in urging the inherency of Appellants’ claim 1
standard variation of pore sizes limitation based on teachings of Wang with
respect to varying the average pore size. The Examiner’s passing
characterization of Figure 2b of Wang as appearing to show “pretty uniform
pores” does not explain away what appear to be some significantly different
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Application 11/979,277
pore sizes in the microporous surface depicted in Figure 2b; moreover,
Figure 2b is disclosed as showing approximately 0.5 micron (average) pore
sizes rather than a porous surface having pores of an average size within the
ranges set forth in Appellants’ claim 1 (Final Act. 5—6; Wang, col. 7,11. 25—
30; Fig. 7).
In addition, Appellants contend that the Examiner has not established
that one of ordinary skill in the art would have been prompted, prima facie,
to choose a flat membrane of Wang (as further modified by Pacheco) and
select a resin layer surface for the membrane having an average size and
pore size variation, as required by claim 1 for use as the membrane of
Ishida’s filter membrane module in a method of treating sewage-containing
wastewater as taught by Ishida in a manner so as to correspond to the
method of claim 1, particularly upon properly considering the evidence of
record, including Appellants’ rebuttal evidence,5 anew in reaching such an
obviousness determination (App. Br. 18—25; Reply Br. 10-13; Iwai Deck II).
We concur with Appellants that the Examiner has not furnished a
sufficient factual basis to reasonably establish an apparent reason why one of
ordinary skill in the art would have been led to modify the process of Ishida
by selecting/choosing a modified membrane of Wang that satisfies all of the
limitations of filter module membrane features of claim 1 based on the
combined teachings of Ishida, Wang, and Pacheco (Final Act. 7). As argued
5 Declaration of Kenta Iwai submitted March 15, 2013 (Iwai Deck II); Ueda
et al. (Ueda), “DOMESTIC WASTEWATER TREATMENT BY A
SUBMERGED MEMBRANE BIOREACTOR WITH GRAVITATIONAL
FILTRATION”, Water Res, Vol. 33, No. 12, pp. 2888-2892 (1999);
Kishino et al. (Kishino); “Domestic Wastewater reuse using a submerged
membrane bioreactor”; Desalination 106 (1996), pp. 115—119.
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by Appellants (Reply Br. 11—13), the Examiner appears to utilize the further
teachings of Taniguchi and Miyashita for an asserted general teaching as to
the use of membranes with small pore sizes in sewage filtration without
articulating how the applied prior art would have suggested the use of a flat
separation membrane possessing all of the features of claim 1 based on the
combination of the teachings of the applied references together with the
teachings of Taniguchi and Wang. As noted above, the Examiner did not
include Taniguchi and Miyashita as part of the evidence relied upon in the
rejection statement.6
Accordingly, we reverse the Examiner’s obviousness rejection.
CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.
REVERSED
6 In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) (“Where a reference is
relied on to support a rejection, whether or not in a ‘minor capacity,’ there
would appear to be no excuse for not positively including the reference in
the statement of the rejection.”).
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