14331856 (P.T.A.B. Jul. 11, 2018)

Ex Parte SZABO et al

Patent Trial and Appeal BoardJul 11, 2018

14331856 (P.T.A.B. Jul. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/331,856 07/15/2014 13193 7590 07/13/2018 BLG(BL) Borden Ladner Gervais LLP 1300-100 Queen Street Ottawa, ON KIP IJ9 CANADA FIRST NAMED INVENTOR Robert SZABO 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PAT 92137AW-2 2398 EXAMINER MENON, KRISHNAN S ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 07/13/2018 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): ipinfo@blg.com Water1P.mail@ge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT SZABO, GABOR BAKOS, ATTILA PALINKAS, and STEVEN KRISTIAN PEDERSEN Appeal2017-010340 Application 14/331,856 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134 the final rejection of claims 1--4 and 9--16. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). We REVERSE. Appellants' invention is directed to methods of potting hollow fiber membranes (Spec. 1 ). 1 Appellants identify the real party in interest as Zenon Technology Partnership. App. Br. 3. Appeal2017-010340 Application 14/331,856 Claims 1 and 13 are illustrative: 1. A method of producing a membrane module comprising the steps of: a) forming a bundle of hollow fiber membranes, the membranes held together by a layer of adhesive material spaced from the ends of the membranes to provide a potting region between the layer of adhesive material and the ends of the membranes; b) placing the bundle of membranes in a mold wherein the mold seals against the adhesive material to form a substantially closed cavity surrounding the potting region; c) injecting a liquid potting material into the cavity such that the potting material flows around the membranes; and, d) solidifying the potting material in a seal with the membranes. 13. A method of potting hollow fiber membranes comprising the steps of, a) forming a substantially closed cavity around a portion of the membranes near their ends; b) injecting a liquid potting material into the cavity; and, c) allowing the liquid potting material to solidify. Appellants appeal the following rejection: 1. Claims 1--4 and 9--16 are rejected under 35 U.S.C. Â§ I02(b) as anticipated by or, in the alternative, under 35 U.S.C. Â§ I03(a), as unpatentable over Mahendran et al. (US 2002/0153299 Al, published Oct. 24, 2002). FINDINGS OF FACT & ANALYSIS Appellants argue, inter alia, that Mahendran fails to teach or suggest: (i) that the mold seals against the adhesive material, as recited in claim 1; 2 Appeal2017-010340 Application 14/331,856 and (ii) injecting a liquid potting material into the cavity, as required by claims 1 and 13 (App. Br. 13; Reply Br. 3). With respect to (i), Appellants argue that there is no evidence in the record to support the Examiner's finding that Mahendran's fibers 12 closely fit or touch pan 17 (Reply Br. 2-3; Ans. 4--5). Appellants further argue that neither side ofMahendran's bundle of fibers 12 provides an adhesive material that the claimed "mold seals against" (Reply Br. 3 ( citing ,r,r 89-93, Fig. 4 ( explaining that "the adhesive on [left-most card] 15 does not contact the pan 17" and that "there is no adhesive on the right side of the right-most card 15 and so adhesive also cannot contact the right side of pan 17."))). The Examiner finds that although Mahendran's Figure 4 "shows the pan as very open and the bundle placed in its middle, in reality, the bundle must closely fit the pan, with little space between the taped bundle and the pan" (Ans. 4--5 (emphasis added)). The Examiner further finds that "[i]t is also reasonable to consider that [Mahendran's adhesive] tape layer would surround the bundle and thus touch the pan." Id. at 5. With regard to claim 1, a dispositive issue presented in this appeal is whether Mahendran discloses or suggests that fibers 12 and/or adhesive coated cards/strips 15 must closely fit or touch pan 17. We find that the Examiner has not provided a persuasive explanation as to how Mahendran discloses or would have suggested that "in reality, the bundle must closely fit the pan." Id. at 4--5. We further find that Mahendran lacks any disclosure or suggestion that adhesive tape layers on cards/strips 15 would have surrounded the bundle to such an extent that it would contact pan 17. We, therefore, agree with Appellants that the Examiner's findings 3 Appeal2017-010340 Application 14/331,856 are not supported by a preponderance of evidence in the record. Therefore, we reverse rejection 1 to claim 1. Regarding Appellants' argument (ii), the dispositive issue presented in this appeal is whether introducing, throwing in, or adding Mahendran's second liquid constitutes an "injecting" within the meaning of claim(s) 13 (and 1). Id. at 6. We begin our analysis by construing the phrase "injecting a liquid potting material" in claim( s) 13 ( and 1 ). During prosecution, the PTO gives the language of the proposed claims "the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification." In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997). Appellants describe in their Specification that molten potting material is injected into the nozzles 42 to fill the cavity 44 to complete potting the membranes 12 (Spec. 6; see also id. at Fig. 3). The Specification further discloses that "[i]njection molding of the potting material ... can be done at applied pressures in the range from 1-300 bar at temperatures from 20- 340 Â°C or 160-340 Â°C." Id. at 8; see also id. at 9 (exemplifying "injection pressures between 90 and 110 bar."). Accordingly, we construe the phrase "injecting a liquid potting material" as requiring the pressurized introduction of the liquid potting material. On the other hand, Mahendran does not disclose or suggest that any pressure is required to introduce the second ( or the first) potting liquid into pot 17 (Mahendran ,r,r 103, 104). Rather, Mahendran merely discloses passive gravity-assisted pouring of the second (and first) liquid for potting 4 Appeal2017-010340 Application 14/331,856 the bundles of fibers 12. Id. Furthermore, we agree with Appellants that "an unspecified online dictionary mentioned on page 4 of the Examiner's Answer" is not persuasive of the term's meaning as used in the claims (Reply Br. 6). Therefore, Mahendran' s teaching that liquid is poured for potting purposes cannot reasonably disclose or suggest introducing potting material under pressure. Because we find that Mahendran does not teach injecting a liquid potting material within the meaning of the claim, we reverse rejection 1 to claim 13 . We further reverse the Examiner's rejection of claims 2--4, 9-12, and 14--16 under Â§102(b) or, in the alternative, Â§103(a). 37 C.F.R. Â§ 4I.37(c)(l)(iv). DECISION The Examiner's decision is reversed. ORDER REVERSED 5