Ex Parte Zhang et al

Patent Trial and Appeal Board

Sep 29, 2016

12544660 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/544,660 08/20/2009
94288 7590 10/03/2016
GENERAL ELECTRIC COMPANY
GLOBAL RESEARCH
ONE RESEARCH CIRCLE
BLDG. Kl-3A59
NISKAYUNA, NY 12309
FIRST NAMED INVENTOR
Anping Zhang
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.
238670-1 9770
EXAMINER
ANDERSON, DENISE R
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANPING ZHANG, RUI CHEN, and
ANTHONY JOHN MURRAY
Appeal2015-004906
Application 12/544,660
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-15. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is General Electric
Company. Br. 1.
Appeal2015-004906
Application 12/544,660
STATEMENT OF THE CASE
Appellants describe the present invention as relating to membranes for
filtration and, more particularly, to composite membrane assemblies for
filtration of biomolecules. Br. 2. Appellants state that the composite
membrane may be employed, for example, to remove viruses during the
manufacture of bio-therapeutic drug products. Id. at 3. Claim 1, reproduced
below with emphasis added, is the only independent claim on appeal and is
illustrative of the claimed subject matter:
1. A composite membrane assembly, comprising:
a porous substrate;
a filtering membrane compnsmg a plurality of pores,
wherein the filtering membrane is at least partially coupled to the
porous substrate;
a polymer membrane comprising a plurality of pores,
wherein the polymer membrane is at least partially coupled to the
filtering membrane, and wherein pores of the plurality of pores
of the polymer membrane are larger in size than pores of the
piuraiity oi pores oi the fiitering membrane; and
an interface material at least partially disposed between
the filtering membrane and the polymer membrane, wherein
the interface material is different from a material of the polymer
membrane, and wherein the interface material is disposed on at
least a portion of the filtering membrane.
Br.2 18 (Claims Appendix).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
2 In this decision, we refer to the Final Office Action mailed May 8, 2014
("Final Act."), the Appeal Brief filed October 7, 2014 ("Br."), and the
Examiner's Answer mailed January 30, 2015 ("Ans.").
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Appeal2015-004906
Application 12/544,660
Crawford et al.
(hereinafter "Crawford")
Marinaccio et al.
(hereinafter "Marinaccio")
Van Rijn
Mares-Gui a
Hong et al.
(hereinafter "Hong")
us 4,179,757
us 4,915,839
us 5,753,014
US 6,262,255 B 1
US 6,372,020 B2
Dec. 25, 1979
Apr. 10, 1990
May 19, 1998
July 17, 2001
Apr. 16, 2002
Membrane Filtration, National Drinking Water Clearinghouse, March 1999
(hereinafter "Membrane Filtration").
Yasuda and Tsai, Pore Size of Microporous Polymer Membranes, 18 J. of
Applied Polymer Sci. 805-819 (1974) (hereinafter "Yasuda").
REJECTIONS
Claims 16-21 are withdrawn pursuant to a restriction requirement.
Br. 2. The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 3, and 5-15 under 35 U.S.C. § 103 as
unpatentable over Van Rijn. Ans. 2.
Rejection 2. Claim 2 under 35 U.S.C. § 103 as unpatentable over Van
Rijn in view of Hong. Id. at 9.
Rejection 3. Claim 4 under 35 U.S.C. § 103 as unpatentable over Van
Rijn in view of Marinaccio. Id. at 11.
The Examiner cites Crawford, Yasuda, Mares-Guia, and Membrane
Filtration as evidence references. Ans. 12.
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
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Application 12/544,660
identify the alleged error in the examiner's rejections")). With respect to the
Examiner's first rejection, Appellants do not separately argue claims 3 and
5-15. Br. 5-14. We therefore focus on claim 1. 37 C.F.R. § 41.37(c)(l)(iv)
(2013). Claims 3 and 5-15 stand or fall with that claim based on the
reasoning below. Appellants also do not make distinct arguments with
respect to the Examiner's second and third rejections. Id. at 14--16. Thus,
claims 2 and 4 also stand or fall based upon Appellants' arguments for
claim 1.
After having considered the evidence presented in this Appeal and
each of Appellants' contentions, we are not persuaded that Appellants
identify reversible error, 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.
The Examiner finds that Figure 34 of Van Rijn depicts the porous
substrate, filtering membrane, and interface material recited in claim 1.
Final Act. 4--5. The filtering membrane has pores '"with a width of 20
nm."' Final Act. 4; Van Rijn 11 :41--47. The Examiner also finds that Van
Rijn teaches use of an additional polymer membrane that could comprise
polysulfone. Final Act. 4--5; Van Rijn 1239--42; 37-23. The Examiner
buttresses this finding with Crawford's teaching that polysulfone is a
biocompatible material used to make membranes. Id. at 5; see also
Crawford Title, Abstract. The Examiner finds that, based on the Yasuda
reference, the polysulfone would have pore sizes ranging from 20 nm to 220
nm. Final Act. 4; see also Yasuda Tables IV-VI. The Examiner's findings
of fact are supported by the record.
Appellants argue that the Examiner errs in equating claim 1 's recited
filtering membrane to the combination of Van Rijn's membrane layer 82 and
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Application 12/544,660
sacrificial layer 83 because the sacrificial layer "is meant to be dissolved
away" and because "two different individual layers ... cannot be fairly
equated to the filtering membrane ... where the filtering membrane is an
individual layer." Br. 8-10. We agree with the Examiner, however, that
Van Rijn teaches that not all of the sacrificial layer is dissolved prior to
formation of the filter depicted in Van Rijn's Figures 33 and 34. Ans. 16.
Van Rijn explains Figure 34 depicts its filter after sacrificial layer 83 is
removed in order to form channel like pores 85 (Van Rijn 11 :22-51 ), yet
some sacrificial layer 83 remains as indicated in Figure 34. We also agree
with the Examiner's conclusion that neither the language of claim 1 nor
anything in the Specification requires the recited filtering member to
comprise a single layer. Ans. 18. Thus, Appellants' arguments do not
establish Examiner error.
Appellants also argue that Van Rijn only suggests use of a plurality of
layers as replacing membrane layer 82 rather than being in addition to
membrane layer 82. Br. 11. We agree with the Examiner's finding,
however, that Van Rijn teaches use of multiple membrane layers. Ans. 16.
In particular, Van Rijn explains that "a plurality of accumulated membrane
layers are possible" and that "[t]he support may be provided with more than
one membrane layer." Van Rijn 12:39--44. Van Rijn also teaches that the
multiple layers may have "non-overlapping perforations (in top view)" thus
indicating that the layers are stacked in a manner consistent with the
Examiner's finding. Id. This argument therefore does not persuade us of
Examiner error.
With respect to claim 1 's recitation that "pores of the plurality of
pores of the polymer membrane are larger in size than pores of the plurality
of pores of the filtering membrane," Appellants argue that Van Rijn does not
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Application 12/544,660
teach this relationship and that the Examiner has not established reason to
combine the cited references to reach this relationship. Br. 11-12. As
explained above, however, the Examiner correctly found that Van Rijn
teaches that the material found to be the filtering membrane has 20 nm pores
and teaches that polysulfone may be utilized for the polymer membrane
layer. Final Act. 4--5. The Examiner also found, as evidenced by Yasuda,
that the polysulfone taught by Van Rijn has pores larger than 20 nm. Final
Act. 4; see also Yasuda Tables IV-VI. These findings of fact, combined,
establish polymer membrane pores larger than filtering membrane pores, and
Appellants do not persuasively dispute these findings of fact.
In other words, Van Rijn teaches a relationship between pore sizes
once one understands the pore size for polysulfone as evidenced by Yasuda.
Appellants' argument that the Examiner has not provided sufficient reason
to combine references (Br. 12) is inapposite given that Yasuda is only used
as a teaching reference to establish pore size for Van Rijn's polysulfone.
ivioreover, while Appellants argue that "cellulose layers may be formed such
that they may have pore sizes in various ranges" (Br. 11 ), Appellants do not
rebut, with argument or with evidence, Yasuda's teachings that
polysulfone's pore size may indeed vary, but the variance is almost entirely
at a size greater than 20 nm. Final Act. 4. Thus, Appellants' argument does
not establish Examiner error.
Finally, Appellants argue that Van Rijn's gap filling material-the
material that the Examiner equates to claim 1 's recited "interface
material"-is not "at least partially disposed between the filtering membrane
and the polymer membrane" as recited in claim 1. Br. 13. The Examiner,
however, correctly finds that, as depicted in Van Rijn Figure 34, groove
filling material 84 is between the filtering membrane (membrane layer 82
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Application 12/544,660
and sacrificial layer 83 with pores 85) and the polymer membrane which
would be disposed directly above the membrane depicted in Figure 34. Ans.
15, 18. We note that, in Figure 34, the lead lines going from the label for the
sacrificial layer 83 point to a dark line immediately below groove-filling
material 84. Thus, Figure 34 indicates that the groove filling material is at
least between the sacrificial layer and where the polymer membrane would
be placed. 3 See Ans. 15. Again, Appellants do not establish Examiner error.
We thus sustain the Examiner's rejection of claims 1-15.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
1-15.
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
3 In the alternative, even if there were no sacrificial layer 83 below the
groove-filling material 84, the groove filling material would nonetheless be
"partially disposed between" membrane layer 82 and the polymer
membrane. This can be understood by imagining a line starting at the left or
right side of membrane layer 82 as depicted in Van Rijn' s Figure 34 and
extending the line upwards at a 45 degree angle and through groove-filling
material 84 until it reaches the cellulose membrane disposed above the
groove-filling material 84.
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