Ex Parte Taylor et al

Board of Patent Appeals and Interferences

Aug 7, 2009

11043351 (B.P.A.I. Aug. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GARETH P. TAYLOR,
ROBERT H. CARROLL, TONY R. VIDO, and
TIMOTHY D. PRICE
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Appeal 2009-002139
Application 11/043,351
Technology Center 1700
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Decided: August 07, 2009
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Before BRADLEY R. GARRIS, MARK NAGUMO, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-002139
Application 11/043,351

A. Introduction1
Gareth P. Taylor, Robert H. Carroll, Tony R. Vido, and Timothy D.
Price (“Taylor”) timely appeal under 35 U.S.C. § 134(a) from the final
rejection2 of claims 1-11.3 We have jurisdiction under 35 U.S.C. § 6. We
REVERSE.
The subject matter on appeal relates to a filter cartridge that is said to
be useful in a variety of applications, for example, as a membrane contactor,
in which fluids may be added or removed from a fluid sample, as a
membrane filter, or as a heat exchanger. The cartridge is formed by
embedding stacks of mats comprised of hollow fibers in a potting resin, such
that the potting resin forms peripheral walls at the edges of the stacked mats.
In the examples, this wall is formed by placing the stack in a close-fitting
housing container and spinning the structure about the major axis as the
liquid potting resin is introduced to the stack. The potting resin is forced to
the periphery, where it forms a wall. Moreover, at least one end cap of the
filter cartridge is bonded to a face of the stack.
Representative Claim 1 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
1. A hollow fiber cartridge comprises:

1 Application 11/043,351, Hollow Fiber Module, filed 26 January 2005.
The specification is referred to as the “351 Specification,” and is cited as
“Spec.” The real party in interest is listed as Celgard LLC. (Appeal
Brief 37 C.F.R. § 41.37, filed 13 May 2008 (“Br.”), 3.)
2 Office action mailed 14 December 2007 (“Final Rejection”; cited as
“FR”).
3 Remaining pending claims 12-20 have been withdrawn from
consideration. (FR 1.)
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Application 11/043,351

a stack of hollow fiber mats,
each mat having a peripheral edge portion,
said stack having a major axis and two end faces,
each said mat being substantially perpendicular to
said axis;
at least one end cap being united to one said end face;
and
a potting material
defining a wall at said peripheral edge portions of
said mats and
bonding said end caps to said stack.
(Claims App., Br. 21; paragraphing and indentation added.)
The Examiner has maintained the following grounds of rejection:4
A. Claims 1-11 stand rejected under 35 U.S.C. § 103(a) in view of
the teachings of Nichols.5
B. Claims 1-11 stand rejected under provisional obviousness-type
double patenting in view of claims 1-15 of application
Taylor 188.6
Regarding the obviousness rejection in view of Nichols, Taylor
argues, inter alia, that “Nichols does not disclose uniting an end cap to the
upper surface (12) or lower surface (13) of any of the wafers (10) or to the
ends of the stack of hollow fiber membrane mats (16).” (Id. at 12.)

4 Examiner’s Answer mailed 28 May 2008. (“Ans.”).
5 Randall W. Nichols, Hollow Fiber Separation Module and Method for the
Use Thereof, U.S. Patent 4,959,152 (1990).
6 Gareth P. Taylor and Timothy D. Price, A Membrane Contactor,
Application 11/447,188, filed 5 June 2006 (pending). Prosecution of the
188 Application subsequent to the Examiner’s Answer in this appeal has not
materially affected the merits of the rejection.
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Application 11/043,351

Moreover, according to Taylor, the Examiner has failed to show any logical
reason to modify Nichols to bond the end caps to the wafers. (Id. at 14.)
The Examiner maintains that it would have been an obvious
engineering choice for a person having ordinary skill in the art to make an
integral (one-piece) filter cartridge based on the separable (two-piece) filter
cartridge taught by Nichols by bonding the end caps to the potting walls and
end-wafers. (FR 5.) The Examiner also finds that Figure 4 of Nichols
shows an intermediate structure in which the end caps 31 and 34 are bonded
to the potted walls and that the [potting] resin also bonds to the end caps.
(Id.)
The issue dispositive of the obviousness rejection in view of Nichols
is whether the Examiner has supported the finding of motivation to modify
Nichols with a preponderance of the evidence of record.
Taylor argues that the rejection for obviousness-type double patenting
fails because the limitation in claim 1 of Taylor 188, “said hollow fibers
[that comprise membrane mats] extending from said internal chamber
through said potting material into said external chambers”7 does not
anticipate the limitation, found in appealed claims 1 and 7 of
the 351 Application, “a potting material defining a wall at said peripheral
edge portions of said mats.” (Br. 18.)
The Examiner maintains that the subject matter of the appealed claims
is anticipated by the subject matter of the claims of Taylor 188. (FR 2-3.)

7 Serial No. 11/447,188, Response filed 17 December 2008, 2 (original
claim).
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Application 11/043,351

The critical issue dispositive of the appeal as to the obviousness-type
double patenting rejection is whether a wall “at said peripheral edge portions
of said mats” is anticipated by mats in which the hollow fiber members
extend from the internal chamber through the potting material wall into the
external chamber.
B. Findings of Fact
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The 351 Specification
1. The 351 Specification describes the manufacture of an embodiment of
a filter cartridge in Figure 2, which is reproduced below:

{Figure 2 is said to show a filter cartridge in a potting housing}
2. Hollow fiber mats 42 are stacked, substantially perpendicular to major
axis A, in the cavity of housing 40 (Spec. 7), which is fitted with optional
baffles 36 (id. at 4).
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Application 11/043,351

3. In this embodiment, one end of the housing 40 is fitted with axial
port 26. (Spec. 9.)
4. The housing assembly is then closed with cap 44, and liquid potting
material is introduced while the assembly is spun about major axis A,
thereby forcing the potting liquid to the interior wall of housing 40, where it
is cured to solidity to form “wall perform [sic: preform] 46”. (Spec. 9.)
5. According to the 351 Specification, after the potting material has set,
excess material is cut from wall preform 46, leaving wall 32 in which “the
ends of the hollow fibers are opened for communication with headspace 34
[the volume in the housing surrounding the filter cartridge when in use].”
(Spec. 11.)
6. The part of housing 40 holding axial port 26 is now proximal end
cap 24, while part of cap 42 is now distal end cap 22, and potting wall 32
“unites end caps 22 and 24.” (Spec. 11.)
The Taylor 188 Application
7. Claim 1 of the Taylor 188 Application reads in most relevant part:
1. A membrane contactor comprising:
a housing having a open end and a closed end;
said closed end comprising an outlet port;
a cap being united to said open end comprising an inlet
port;
a stack of membrane mats within said housing where
each said membrane mats being spaced substantially
perpendicular to the longitudinal axis of said housing;
said membrane mats comprising a plurality of hollow
fiber members;
a potting material bonding said membrane mats to each
other and simultaneously bonding one end of said stack
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Application 11/043,351

to said closed end and bonding the other end of said stack
to said cap, thereby defining an internal chamber and at
least one external chamber within said housing;
said hollow fiber members extending from said internal
chamber through said potting material into said external
chambers . . . .

(Serial No. 11/447,188, Response filed 17 December 2008, 2 (original
claim); indentation and emphasis added.)
Nichols
8. Nichols describes, with reference
to Figure 7, right, (reproduced in part,
with extraneous labels removed), hollow
fiber separation modules 60.
9. In this module, “wafers” 10 are
stacked, one sealed against the next with
O-rings 84 (Nichols, col. 7, ll. 3-10) inside a
cylindrical module 60 that is preferably
constructed from a metal such as stainless
steel (id., col. 6, ll. 50-52).
10. The wafers 10 are further sealed
together by compression exerted on the
uppermost wafer 10B by pusher plate 94 which
is attached to throat 93 of feed port 66, through
which liquid to be treated will pass. (Nichols,
col. 7, ll. 11-25.)
{Nichols Figure 7 is said to show a filter module}
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11. As shown in Figure 4, which is reproduced below, wafers 10 are
formed from layers or mats 16 which are made from hollow fibers 18, which
have open ends 19. (Nichols, col. 4, ll. 45-51.)

{Nichols Figure 4 is said to show a wafer-forming mold}
12. The mats 16 are stacked in cavity 36 of mold 30. (Nichols, col. 5,
ll. 30-32.)
13. The bottom section 31 of mold 30 is attached spindle 32 of a
centrifuge (not shown). (Nichols, col. 5, ll. 26-28.)
14. Mold 30 is closed with top section 34 and slinger plate 35. (Nichols,
col. 5, ll. 28-29.)
15. Quick setting epoxy or wax is poured through the opening in top
section 34 while the centrifuge spins the assembly, thereby depositing
ring 38 against the inner wall 39 of mold 30, encompassing the ends of fiber
layers 16. (Nichols, col. 5, ll. 32-39.)
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16. Next, a potting resin is poured onto the turning slinger plate, resulting
in a ring 11 of potting resin. (Nichols, col. 5, ll. 39-45.)
17. After the potting resin has set, the resulting wafer 10 is removed from
the mold and first ring 38 is removed mechanically or by melting, leaving “a
plurality of hollow fiber ends entirely around the edge [15 of ring 11], . . . .
all fiber ends 19 are open to the exterior of wafer 10.” (Nichols, col. 5,
ll. 46-54.)
C. Discussion
As the Appellant, Taylor bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., In re Kahn, 441 F.3d
977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness”) (citation and internal quote omitted).
Nichols
Initially, we observe that although Taylor states that “[i]ndependent
claim 1 should be ruled upon separately from independent claim 7” (Br. 6),
Taylor does not present distinct arguments for the patentability of claim 7.
Accordingly, we shall limit our consideration to the argued limitations of
claim 1, with which all the claims stand or fall. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner concedes that Nichols does not describe uniting or
bonding an end cap to an end of the stack of hollow fiber membrane mats 16
in the separation module shown in Figure 7 or in other separation modules
described by Nichols. However, the Examiner argues that the modification
would have been obvious because such a modification could have been
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made for any reason, including making “the entire unit throw-away instead
of having a reusable housing.” (FR 5.)
The difficulty with the Examiner’s analysis is that the Examiner has
not come forward with any credible evidence that a person skilled in the
relevant arts would have had any practical reason to make the Nichols
devices disposable by making the proposed modifications. Thus, the
Examiner has not articulated reasons with some rational underpinning
showing that the proposed modifications would have been merely “the
predictable use of prior art elements according to their established
functions.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
The Examiner has not, for example, made a plausible case that a
person having ordinary skill in the art would have had any real-world reason
for making the devices described by Nichols disposable by bonding the end
caps to the stack of filtering elements. Indeed, Nichols went to considerable
efforts to make the devices reusable by providing readily replaceable
filtering elements. Nor has the Examiner shown that it would have been
sensible to bond pusher plate 94 to the uppermost wafer 10B with potting
resin, as required by claim 1.
The Examiner’s belated attempt (Ans., Response to Argument, at 8-9)
to breathe anticipation of appealed claims 1 and 7 into the intermediate
product illustrated in Nichol’s Figure 4 is not well-taken. As Taylor points
out (Reply Br. 9-10)8, the Examiner has failed to show that the upper and
lower ends of mold 30 are end caps as that term is used in claim 1. Nor has
the Examiner shown that those upper and lower ends are “bonded” to the

8 Reply Brief 37 C.F.R. § 41.41, filed 26 June 2008.
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potting resin. The general nature of a mold is that it is easily removable
from the cast object. Thus, the Examiner’s unexplained conclusion that the
“end caps” are “bonded” to the uppermost hollow fiber mat is not credible.
Obviousness-Type Double Patenting
The only limitation of the appealed claims that Taylor argues in the
provisional obviousness-type double patenting rejection is, “a potting
material defining a wall at said peripheral edge portions of said mats.” In
particular, Taylor maintains that the recitation in claim 1 of
the 188 Application, “said hollow fiber members extending from said
internal chamber through said potting material into said external chambers”
(emphasis added) does not anticipate the hollow fiber cartridge covered by
the appealed claims. (Br. 18.)
The Examiner maintains that the recitation in appealed claim 1, that
the potting resin defines a wall at the peripheral edge portion of said mats,
“does not imply that the hollow fiber ends must be cleanly shaven off the
external surface of the potted wall.” (Ans. 5.) Thus, the Examiner
maintains, the claims of the 188 Application define an invention within the
scope of the claims on appeal, and the obviousness-type double patenting
rejection should be affirmed.
Although it is well-settled that “the PTO applies to the verbiage 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,” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), it is also well
settled that account must be taken of “whatever enlightenment by way of
definitions or otherwise that may be afforded by the written description
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contained in the applicant’s specification.” Id. The enlightenment must not
result in a reading of limitations into the claims.
In the present case, the plain meaning of the claim language, “a
potting material defining a wall at said peripheral edge portions of said
mats” is that the wall ends—i.e., does not extend—past the peripheral edge
portions of the mats. The Examiner has not directed our attention to any
disclosure in the 351 Specification that indicates that a more general or
“fuzzier” meaning should be applied to these words. Accordingly, we reject
the Examiner’s gloss that the structure of the end of the wall “can include a
slight protrusion of the hollow fiber beyond the wall.” (Ans. 5.) The
Examiner’s further argument that the structure of the end of the wall “still
would not make any difference to the product for its intended purpose or
use” (id.) appears to be a belated argument for affirmance based on
obviousness, rather than on anticipation. This new argument is untimely and
it also fails for want of supporting evidence. The Examiner has not cited any
evidence of record showing that the “extending fiber” structure recited in the
claims for a membrane contactor in the 188 Application was known or
would have been obvious based on the hollow fiber cartridge structure
recited in the claims of the 351 Application on appeal.
D. Order
We REVERSE the rejection of claims 1-11 under 35 U.S.C. § 103(a)
in view of the teachings of Nichols.
We REVERSE the rejection of claims 1-11 under obviousness-type
double patenting in view of claims 1-15 of Taylor 188.
REVERSED
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