Ex Parte Stouffer et al

Patent Trial and Appeal Board

Dec 20, 2016

12741623 (P.T.A.B. Dec. 20, 2016)

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.
12/741,623 05/06/2010 Mark R. Stouffer 63210US004 8788
32692 7590 12/22/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
SAVAGE, MATTHEW O
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
12/22/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK R. STOUFFER and MOSES M. DAVID
Appeal 2015-007310
Application 12/741,623
Technology Center 1700
Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 4—10, 13, and 15. We have jurisdiction.
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is 3M Company and
its affiliate 3M Innovative Properties Company. Appeal Br. 4.
Appeal 2015-007310
Application 12/741,623
STATEMENT OF THE CASE
Appellants describe the invention as relating to a liquid filtration
media (for use, for example, in home water filtration) that utilizes plasma-
treated binder particles in conjunction with sorptive media. Spec. 1:2—19;
3:12—22. Claim 1, reproduced below with emphases added to certain key
recitations, is the only independent claim on appeal and is illustrative of the
claimed subject matter:
1. A filtration media comprising:
an adsorptive media comprising activated carbon mixed
with plasma-pre-treated, hydrophilic, polymeric
binder particles,
wherein the surfaces of the plasma-pre-treated,
hydrophilic, polymeric binder particles are oxidized
and comprise silicon oxides;
wherein the activated carbon comprises particles having
an average particle size in the range of 45 to 175 micron
(80 x 325 mesh) or 75-295 micron (50 x 200 mesh); the
binder particles comprise ultra high molecular weight
polyethylene comprising particles having an irregular,
convoluted surface; and the activated carbon is present
in an amount in the range of 50 to 85% by weight and the
polyethylene binder is present in an amount in the range
of 10 to 30 % by weight.
Appeal Br.2 14 (Claims Appendix).
2 In this decision, we refer to the Final Office Action mailed August 25,
2014 (“Final Act.”), the Appeal Brief filed February 25, 2015 (“Appeal
Br.”), the Examiner’s Answer mailed June 1, 2015 (“Ans.”), and the Reply
Brief filed July 31, 2015 (“Reply Br.”).
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Appeal 2015-007310
Application 12/741,623
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Hughes et al.
(hereinafter “Hughes”)
David et al.
(hereinafter “David”)
Yeh et al.
(hereinafter “Yeh”)
Rinker et al.
(hereinafter “Rinker”)
Takeo
US 2004/0168972 Al
US 2005/0181198 Al
US 2005/0211635 Al
US 2006/0000763 Al
JP 04243543 A
Sept. 2, 2004
Aug. 18, 2005
Sept. 29, 2005
Jan. 5, 2006
Aug. 31, 1992
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 4, 6—10, 13, and 15 under 35 U.S.C. § 103 as
unpatentable over Rinker in view of Takeo, David, and Hughes. Final
Act. 2.
Rejection 2. Claim 5 under 35 U.S.C. § 103 as unpatentable over
Rinker in view of Takeo, David, and Hughes and further in view of Yeh. Id.
at 5.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After having
considered the evidence presented in this Appeal and each of Appellants’
contentions, we are not persuaded that Appellants identify reversible error,
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Appeal 2015-007310
Application 12/741,623
and we affirm the Examiner’s rejections for the reasons expressed in the
Final Office Action and the Answer. We add the following primarily for
emphasis.
Rejection 1, claims 1,4, 10, 13, and 15
The Examiner rejects claims 1, 4, 6—10, 13, and 15 under 35 U.S.C.
§ 103 as unpatentable over Rinker in view of Takeo, David, and Hughes.
Final Act. 2. Appellants do not separately argue claims 4, 10, 13, or 15. We
therefore first assess claim 1. Claims 4, 10, 13, and 15 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner finds that Rinker discloses filtration media including
activated carbon mixed with polymeric binder materials having average
particle sizes and activated carbon by weight as recited in claim 1. Final
Act. 2. The Examiner finds that Takeo teaches that plasma treatment of the
binder particles increases absorption efficiency and determines that it would
have been obvious to treat Rinker with plasma to improve efficiency. Id.
at 3. The Examiner also finds that David discloses that “providing a
hydrophilic polyethylene filter component including oxidized polyethylene
and silicon oxide is known in the art” and that one of skill in the art could
have predictably substituted the David’s polyethylene including silicon
oxide for the polyethylene of Takeo. Ans. 4. Finally, the Examiner finds
that Hughes teaches an analogous filter with binder particles having an
irregular convoluted surface and determines that it would have been obvious
to modify the Rinker/Takeo filter to include particles with an irregular
surface in order to provide a decreased pressure drop. Final Act. 3^4. A
preponderance of the evidence supports the Examiner’s findings and
conclusion.
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Appeal 2015-007310
Application 12/741,623
Appellants argue that Rinker and Takeo cannot be properly combined
because Takeo has a coarser mesh than Rinker. Appeal Br. 7. The
preponderance of the evidence, however, supports that a person of ordinary
skill in the art would have been motivated to plasma treat the Rinker filter in
order to increase absorption efficiency (Final Act. 3; Takeo 1 5) without
bodily incorporating Rinker’s particular mesh size. In re Keller, 642 F.2d
413, 425 (CCPA 1981) (“The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference . . . Appellants’ argument that a person of skill in the
art working with Rinker would not also consider the teachings of Takeo
because Takeo presents a coarser filter (Reply Br. 3) is unpersuasive because
both references are from the same field of endeavor and are therefore
analogous prior art. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Appellants also argue that David cannot be properly combined
because Takeo “already solved the problem of hydrophilicity” and because
David deals with porous articles as-made rather than treatment of binder
particles. Appeal Br. 8—9; Reply Br. 3^4. The preponderance of the
evidence, however, supports the Examiner’s finding that David teaches that
polyethylene filter components including oxidized polyethylene and silicon
oxide were known in the art. Ans. 4; David Tflf 83—89. Use of David’s
material in the Rinker/Takeo filter is thus obvious because it is no more than
predictable use of a prior art element according to its established function.
KSRInt 7. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
We therefore sustain the Examiner’s rejection of claims 1, 4, 10, 13,
and 15.
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Appeal 2015-007310
Application 12/741,623
Rejection 1, claim 6
Claim 6 recites “[t]he filtration media of claim 1, wherein the
polymeric binder particles are present in an amount in the range of 10 to 20
% by weight of the media.” Appeal Br. 14 (Claims App’x). The Examiner
determines that this limitation is obvious because Rinker discloses a range of
5-50% binder by weight which encompasses the claimed range. Ans. 5—6;
Rinker | 59.
Appellants argue that Rinker’s disclosure of 5 to 50% fails to reflect
the advantageous choice reflected in claim 6. Appeal Br. 6. The
overlapping ranges, however, are sufficient to establish obviousness. Iron
Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004)
(“[W]here there is a range disclosed in the prior art, and the claimed
invention falls within that range, there is a presumption of obviousness.”);
see also In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“even a slight
overlap in range establishes a prima facie case of obviousness”). Appellants
can rebut a prima facie case of obviousness by establishing “that the
[claimed] range is critical, generally by showing that the claimed range
achieves unexpected results relative to the [closest] prior art range.” In re
Peterson, 315 F.3d at 1330 (internal quotes and citations omitted). Here,
however, Appellants provide no evidence or reasoning as to why claim 6’s
claimed range is critical or unexpected. Moreover, Appellants do not
persuasively rebut the Examiner’s finding that selection of any point within
Rinker’s range would have been a matter of routine optimization. Ans. 5—6.
We thus sustain the Examiner’s rejection of claim 6.
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Appeal 2015-007310
Application 12/741,623
Rejection 1, claims 7, 8, and 9
Claims 7, 8, and 9 recite improved properties as compared to non­
plasma treated particles. In particular, the claims recite “increased cyst
capacity,” “increased volatile organic component capacity,” and “increased
beam strength” respectively. Final Act. 14—15 (Claims App’x). The
Examiner finds that the filter material suggested by the prior art would have
the same structure, composition, and be produced in the same manner and
would thus have these same recited properties. Ans. 6.
Appellants argue that the prior art does not recognize these properties
and that the properties are unexpected. Appeal Br. 9—11. Appellants,
however, establish no error in the Examiner’s findings that these properties
would result from the identical composition as suggested by the prior art.
See Ex parte Obiaya, 227 USPQ 58, 59 (BPAI 1985) (“The fact that
appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious.”). New
recognition of properties does not make an otherwise obvious composition
patentable. See Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed.
Cir. 1999) (“[T]he discovery of a previously unappreciated property of a
prior art composition, or of a scientific explanation for the prior art’s
functioning, does not render the old composition patentably new to the
discoverer.”) Moreover, Appellants have not established unexpected results
that would rebut a prima facie case of obviousness in this instance because
the results cited do not compare a product commensurate in scope with
claims 7, 8, or 9 with the closest prior art. We thus sustain the Examiner’s
rejection of claims 7, 8, and 9.
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Application 12/741,623
Rejection 2, claim 5.
Claim 5 recites “[t]he filtration media of claim 1, wherein the
polymeric binder particles further comprise an anti-microbial agent grafted
thereto.” Appeal Br. 14 (Claims App’x). The Examiner rejects claim 5 as
obvious over Rinker in view of Takeo, David, and Hughes and further in
view of Yeh. Final Act. 5.
Appellants argue that the combination of references is improper
because there is no motivation to modify Rinker according to David. Appeal
Br. 12. As explained above, this argument does not identify Examiner error.
Appellants also argue that the application describes “unforeseen
benefits” of plasma treating and then grafting an anti-microbial agent. Id.
The Examiner finds, however, that the improved performance Appellants
rely upon is based, at least in part, upon a number of factors not positively
recited in claims 1 and 5. Ans. 7. Appellants do not persuasively dispute
this finding, and the finding is supported by a preponderance of the
evidence. Thus, to the extent Appellants are arguing unexpected results, the
results presented are not commensurate with claim scope. In re Greenfield,
571 F.2d 1185, 1189 (CCPA 1978) (“objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support.”) (internal quotes and citation omitted).
Moreover, the Examiner finds that this property would be latent in the
composition as suggested by the prior art. Ans. 7. Appellants identify no
comparison with the closest prior art which might refute this finding. We
thus affirm the Examiner’s rejection of claim 5.
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Appeal 2015-007310
Application 12/741,623
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims 1,
4—10, 13, and 15.
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
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