Ex Parte Rautio

Patent Trial and Appeal Board

Dec 29, 2017

12451467 (P.T.A.B. Dec. 29, 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.
12/451,467 03/04/2010 Kevin Rautio MCA-8 87 8206
42754 7590 12/29/2017
Nields, Lemack & Frame, LLC
176 E. Main Street
Suite #5
Wes thorough, MA 01581
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
12/29/2017 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 KEVIN RAUTIO
Appeal 2017-001273
Application 12/451,467
Technology Center 1700
Before MICHAEL P. COLAIANNI, MONTE T. SQUIRE, and
BRIAN D. RANGE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-001273
Application 12/451,467
Appellant appeals under 35 U.S.C. § 134(a) the final rejection of
claims 11 and 19-28. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
The appeal is directed to an ultrafiltration device having a membrane
structure comprising polysulfone or polyethersulfone membrane heat bonded
to a polyvinylidene fluoride (PVDF) substrate (Spec. 1:10-12; claim 11).
Claim 11 is illustrative:
11. An ultrafiltration device comprising a first and a
second support plate formed of polyvinylidene fluoride, the first
and second support plates each having a first surface facing
each other and a second surface opposite the first surface of
each support plate and the first and second support plate each
having at least one port formed from the first surface to the
second surface of each support plate respectively, a porous
membrane selected from the group consisting of polysulfone,
polyethersulfone, blends thereof and copolymers thereof and in
number equal to the number of the first support plates, wherein
one membrane is heat bonded to the first surface of each first
support plate along a sealing line and the first surface of the
first support plate is heat bonded to the first surface of the
second support plate in an area outside of the sealing line of the
first surface of the first support plate to which the membrane is
bonded to form a liquid tight outer seal.
Appellant appeals the following rejections:
1. Claims 23 and 24 are rejected under 35 USC § 112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 23 and 24 are rejected under 35 USC § 112, first paragraph, as
failing to comply with the enablement requirement.
3. Claims 11 and 19-28 are rejected under 35 USC § 103(a) as
unpatentable over Michalski (US 3,954,625; May 4, 1976) in view of
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Watanabe (US 4,940,562; July 10, 1990) and either Appellant’s
Admitted Prior Art (AAPA) in the paragraph bridging pages 5 to 6 of
the disclosure or Fendya (WO 2006/044712 Al; April 27, 2006).
4. Claim 11 and 19-28 are rejected under 35 USC § 103(a) as
unpatentable over Straeffer (US 2005/0279695 Al; Dec. 22, 2005) in
view of Allegrezza (US 4,824,568; Apr. 25, 1989) or Fendya.
FINDINGS OF FACT & ANALYSIS
Rejections (1) and (2): Written Description and Enablement
The Examiner finds claims 23 and 24 recite two or more additional
first and second support plates, each first support plate having a membrane
bonded to the first surface (Final Act. 3). The Examiner finds that there is
inadequate support for this arrangement in the original disclosure (Final Act.
3). The Examiner further determines that claims 23 and 24 are not enabled
for the details involved in sealing two or more additional first and second
support plates together, each first support plate having a membrane bonded
thereon (Final Act. 3). The Examiner cites In re Mayhew, 527 F.2d 1229
(CCPA 1976) for the proposition that Appellant fails to claim critical subject
matter that would enable the practice of the claimed invention. Id.
Appellant argues that the Specification describes at several locations
discussed on pages 7 and 8 of the Appeal Brief heat bonding the two or more
PVDF substrates together (App. Br. 7, 8). Appellant contends that the
Specification further discloses that multiple cassettes can be stacked upon
each other to form a suitably sized device (App. Br. 7, 8). Appellant argues
that the claims are enabled because the Specification describes how to heat
bond the PVDF substrates together, including stacking multiple cassettes
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Application 12/451,467
upon each other (App. Br. 10). Appellant argues that there is no undue
experimentation required to make or use the claimed invention. Id.
The preponderance of the evidence favors Appellant’s argument of
written descriptive support and enablement of the claimed invention. In
response to Appellant’s argument that the Specification shows that
Appellant was in possession of the subject matter of claims 23 and 24, the
Examiner finds that it is unclear from Appellant’s Figure 2 how the channels
40 will fluidically connect to the membrane because it would appear that the
channels 40 would be sealed (Ans. 3-4). The Examiner determines that
“this in itself lacks adequate support to enable the claims” (Ans. 4). It
appears that the Examiner conflates enablement and written description.
These are separate requirements of the statute with different legal standards.
Specifically, written description requires findings that demonstrate that
Appellant was not in possession of claims 23 and 24’s subject matter at the
time of filing. The Examiner’s findings that it is unclear how to heat bond
the substrates to keep the inlets and outlets open are couched in terms of
enablement, not written description. The Examiner has not shown that
claims 23 and 24 lack written descriptive support.
Regarding the enablement rejection, the Examiner finds that
Appellant’s arguments are not responsive because the rejection was based
upon the Mayhew decision and Appellant’s failure to claim critical or
essential subject matter to enable the subject matter of claims 23 and 24
(Ans. 5). Appellant responds that the Examiner has not provided any
analysis of the factors in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) to
show that undue experimentation would have been required to make or use
the claimed invention (Reply Br. 9-10). Appellant is correct that the
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Application 12/451,467
Examiner has not provided sufficient findings to support the conclusion that
claims 23 and 24 are not enabled. Appellant further points out that one of
ordinary skill in the art would know how to seal the plates to avoid blocking
inlet and outlets as shown, for example, by US Patent 5,096,582, US Patent
7,390,403, and US Patent 4,501,663 (Reply Br. 5, 8). The Examiner has not
established that undue experimentation would have been required to make or
use the subject matter of claims 23 and 24.
On this record, we reverse the Examiner’s rejections of claims 23 and
24 under 35 USC § 112, first paragraph, as lacking written description and
enablement.
Rejection (3): § 103 Michalski in view ofWatanabe and AAPA or Fendya
Claim 11
Appellant argues the combination of references fails to teach all the
claim limitations, combining the references would have changed their
functions, and the combination does not yield predictable results (App. Br.
14). Appellant contends that Michalski does not teach the specific materials
recited in the claim for the support plate and membrane (i.e., PVDF and
blends or copolymers of polyethersulfone or polysulfone) (App. Br. 14).
Appellant argues that the specific materials recited in the claim would not
have been obvious because not all material combinations would have
worked as evidenced by Exhibit A in the Evidence Appendix of the Appeal
Brief (App. Br. 14). Appellant contends that Watanabe does not teach or
suggest PVDF as the support plate or the blends or copolymers of
polysulfone and polyethersulfone as the membrane (App. Br. 14). Appellant
contends that Watanabe does not teach the number of porous membranes in
a number equal to the number of first support plates (App. Br. 14).
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Appellant argues that Watanabe teaches using two support plates with two
membranes between the support plates (App. Br. 14). Appellant further
argues that there is no factual support for the Examiner’s finding that
Watanabe’s Figure 31 shows that the two plates 52 appear to be bonded at
the junction along the circumferential edges of the plates (App. Br. 15).
Appellant contends that Watanabe does not teach sealing the support plates
one to another to form a liquid tight outer seal because the filter is within the
housing (App. Br. 15) and argues that Appellant’s AAPA on pages 5 to 6
does not remedy the failings of Watanabe and Michalski (App. Br. 16).
Appellant argues that Fendya lists a number of combinations of mesh layer
materials and membranes which list either polypropylene or polysulfone as
the mesh layer, not PVDF (App. Br. 16). Appellant argues that finding
Fendya to teach providing a sealing line that is not permeable would change
the structure and function of the Fendya’s permeable bond (App. Br. 16).
Appellant argues that the evidence contained in Exhibit A in the
Evidence Appendix of the Brief shows that not all materials can be
successfully welded together, especially dissimilar materials (App. Br. 16).
Appellant contends that the evidence in Exhibit A shows that there whether
dissimilar materials will bond to one another is unpredictable and a person
of ordinary skill in the art could not predict which materials would give a
desired result (App. Br. 17-18).
Contrary to Appellant’s arguments against Michalski, Watanabe,
AAPA and Fendya individually, the Examiner finds that the only feature of
claim 11 missing from Michalski is the material used for the membrane and
the support plate (Ans. 9). In other words, the Examiner finds that the
Michalski teaches the structure required by claim 11 with the only
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Application 12/451,467
modification required as the materials used to make the support plate and the
membrane. Therefore, the Examiner is not proposing to incorporate
Watanabe’s filter structure into Michalski’s filter as argued. Rather, the
Examiner proposes using Watanabe’s teachings regarding the use of PVDF
and polyethersulfone and polysulfone as materials used in filters as the
materials used to make Michalski’s filter. The Examiner further finds that
PVDF is common fluoropolymer used in the art and Appellant does not
specifically dispute this finding (Final Act. 5; Ans. 9). The Examiner finds
that Michalski’s first support plate 13 and second support plate 14 with a
single filter 12 between them meets the requirement that the porous
membrane in a number equal to the number of first support plates (Ans. 8).
Appellant’s arguments fail to show reversible error with the Examiner’s
rejection.
Regarding Appellant’s Exhibit A evidence in the Evidence Appendix,
the Examiner finds that the evidence is not commensurate in scope with the
claim (Ans. 11). Specifically the Examiner finds that the evidence fails
because Appellant has not shown what membrane is used in the experiments
(Ans. 11). Appellant does not respond to these findings of the Examiner in
the Reply Brief. We find that Appellant’s evidence does not indicate which
materials are used for the ultrafiltration (UF) membrane. Accordingly, it is
not possible to determine from the evidence whether the bonding of PVDF
and polyethersulfone or polysulfone would have been unpredictable as
argued.
In the Reply Brief, Appellant argues for the first time that Michalski
does not teach the first support plate is heat bonded to the first surface of the
second support plate in an area outside of the sealing line of the first surface
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Application 12/451,467
of the first support plate to which the membrane is bonded to form a liquid
seal (Reply Br. 11). Appellant contends that Michalski’s support surface 25
and projection 26 engage the peripheral portion of the filter 12 and the
plastic of the support surface flows through the mesh of the filter 12 (Reply.
Br. 11). Appellant contends that Michalski’s bonding through the filter 12
does not show that the first support plate is bonding to the second support
plate in an area outside of the sealing line bonding the membrane to form a
seal (Reply Br. 11).
Contrary to Appellant’s argument, Michalski teaches that the
cylindrical body 18 and the cylindrical part 23 of the housing halves 13 and
14 move into greater telescoping relation with plastic material flowing down
between opposed surfaces of the parts 27 and 23 to form a solid bond
between the outer surface of the cylindrical body 18 and the cylindrical part
23 as shown in Figure 4 (Michalski col. 3,11. 10-17). Michalski teaches that
the telescoping parts of housing halves 13 and 14 are heated to a bonding
temperature (Michalski col. 3,11. 3-5). In other words, Michalski’s housing
halves 13 and 14 are thermally bonded together both at the location of the
filter 12 and also outside that area where the filter bond is located.
For the above reasons, we affirm the Examiner’s § 103 rejection of
claims 11, and 19-22 over Michalski in view of Watanabe, AAPA and
Fendya.
Claims 23, 24, 25 and 28
Appellant argues that Michalski does not describe a series of filtration
elements (App. Br. 18).
The Examiner finds that the series of filtration elements does not
impart patentability because there is no structure linking the filters together
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(Ans. 6). The Examiner finds that such replication of an existing structure is
not inventive (Ans. 6).
The Examiner has not explained how Michalski’s structure would
have been modified to accommodate a series of filtration elements as
required by claims 25 and 28 (Final Act. 4-8). The Examiner’s rationale
regarding the use of multiple filters does not address how or why one of
ordinary skill in the art would have modified Michalski’s structure to have
multiple filters. On this record, the Examiner has not established that it
would have been obvious to modify Michalski to use a series of filtration
elements as required by claims 25 and 28. We reverse the Examiner’s § 103
rejection of claims 23-28 over Michalski in view of Watanabe, AAPA and
Fendya.
Rejection (4): §103 Straeffer in view of Allegrezza or Fendya
Appellant argues that Straeffer does not teach a first and second
support plate wherein the first and second support plates each having a first
surface facing each other and a porous membrane in a number equal to the
number of first support plates (App. Br. 20). Appellant contends that
Straeffer’s filter stack is not the same as a membrane (App. Br. 20).
Appellant contends that Allegrezza does not teach support plates or blends
of copolymers of polysulfone and polyethersulfone membranes bonded by
any means to a support plate (App. Br. 20). Appellant contends that
Allegrezza and Fendya fail to teach forming a sealing line between the
membrane and the plate with a liquid tight seal outside the sealing line (App.
Br. 19). Appellant argues that Straeffer bonds the filter 35 to a polymeric
framework 28 by injection molding, not heat bonding to support plates
(Reply Br. 12-14).
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Although Appellant argues that Straeffer’s polymeric frame work is
not considered a support plate, Appellant does not direct us to any definition
of “support plate” in the Specification that excludes the polymeric
framework with a bonded filter in the middle. The Examiner finds that
Straeffer’s polymeric framework 28 with filter 35 bonded thereto constitutes
a unitary structure as required by the claims (Ans. 13). The Examiner
further determines that the claims do not exclude the second plate having a
filter associated with it (Ans. 12). Appellant does not contest this finding of
the Examiner. Claim 11 uses the open-ended transitional claim language
“comprising” and merely requires that a porous membrane made of either
polysulfone, polyethersulfone, blends thereof or copolymers thereof be
present in a number equal to the number of first support plates wherein one
membrane is heated bonded to the first support plate. Claim 11 does not
preclude additional filter materials as part of the second plate.
Appellant’s argument that the filter material is not heat bonded to a
support plate fails to address the Examiner’s finding that Straeffer’s
polymeric framework with the filter injection bonded satisfies the heat
bonded limitation of claim 11 (Ans. 13, 14). The Examiner finds that heat
bonded is only a method of bonding that does not distinguish over the
injection molded/bonded structure of Straeffer. Appellant has not directed
us to a distinction between Straeffer’s injection bonding and the claimed
heat bonded structure.
The Examiner finds that Allegrezza or Fendya teach using PVDF and
polyethersulfone or polysulfone in membrane and filter materials (Final Act.
10). The Examiner further find that PVDF is a commonly used
thermoplastic fluoropolymer known for its strength and chemical resistance
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with a relatively low melt temperature (Final Act. 10). Appellant does not
dispute that finding.
Appellant’s reference to the evidence in Exhibit A as showing the
unpredictability of bonding two dissimilar materials is not commensurate in
scope for the same reasons discussed with regard to the rejection of claim 11
over Michalski in view of Watanabe, AAPA and Fendya.
Regarding claims 25 and 28, Appellant argues that Straeffer does not
teach a series of filtration elements (App. Br. 21 and 22). Regarding claim
28, Appellant argues that none of the cited references teach a cocast
ultrafiltration membrane (App. Br. 22).
The Examiner finds that Straeffer teaches a plurality of the filter
elements together forming a stack as shown in Figure 5 (Ans. 12). The
Examiner also finds that Straeffer teaches that the membrane may be formed
by casting (Ans. 13). The Examiner finds that Fendya teaches forming
ultrafiltration membranes with a particle retention size of less than 0.1
microns, the same as Straeffer (Ans. 13). The Examiner finds that Fendya’s
teaching supports that Straeffer’s filter is capable of ultrafiltration (Ans. 13).
Appellant does not dispute or otherwise show error with these specific
findings of the Examiner.
On this record, we affirm the Examiner’s § 103 rejection of claims 11,
and 19-28 over Straeffer in view of Allegrezza or Fendya.
DECISION
The Examiner’s decision 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)(l)(iv).
AFFIRMED
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