Ex Parte Zhou et al

Patent Trial and Appeal Board

Feb 17, 2017

12997658 (P.T.A.B. Feb. 17, 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.
12/997,658 12/13/2010 Jinsheng Zhou 64267US005 8233
32692 7590 02/22/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
WALTERS JR, ROBERT S
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
02/22/2017 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 JINSHENG ZHOU, JONATHAN F. HESTER, DEREK J. DEHN,
DANIEL P. MEEHAN, and ROBIN E. WRIGHT1
Appeal 2015-006929
Application 12/997,658
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s rejection under 35 U.S.C. § 103 of claims 1-3, 6, 7, 9-12, 15-
19, 21, 24-28, 34-36, and 38^10 over Charkoudian,2 of claim 4 in further
view of Smith,3 of claim 8 in further view of McAllister,4 and of claims 29-
31 and 33 in further view of Wright.5 We have jurisdiction pursuant to 35
U.S.C. § 6. We REVERSE.
1 Appellants identify 3M Company as the real party in interest. App. Br. 2.
2 Charkoudian, US 2004/0185242 Al, published September 23, 2004.
3 Smith et al., US 2005/0058821 Al, published March 17, 2005.
4 McAllister et al., US 5,130,342, issued July 14, 1992.
5 Wright, US 5,891,530, issued April 6, 1999.
Appeal 2015-006929
Application 12/997,658
BACKGROUND
Appellants’ claimed invention relates to a method for forming
asymmetric membranes by applying a polymerizable species to a porous
substrate and exposing the coated porous substrate to ultraviolet radiation to
polymerize the polymerizable species. Spec. Abstract.
Claim 1—the sole independent claim—is reproduced with emphasis
below to highlight a basis on which the rejection is contested.6
1. A method of forming an asymmetric membrane
comprising:
providing a porous substrate having a first major surface
and a second major surface;
applying a polymerizable composition to the porous
substrate providing a coated porous substrate, the
polymerizable composition comprising
i) at least one polymerizable species; and
ii) at least one photoinitiator; and
exposing the coated porous substrate to an ultraviolet
radiation source having a peak emission wavelength less than
340 nm to polymerize the polymerizable species, wherein the
photoinitiator residing at the first major surface is exposed to a
greater peak irradiance of ultraviolet radiation than the
photoinitiator residing further into the thickness of the porous
substrate thus reducing the amount of polymerization within the
pores of the substrate through the thickness of the substrate,
thereby providing an asymmetric membrane, the asymmetric
membrane having a polymerized material retained within the
porous substrate, the polymerized material having a
concentration greater at the first major surface than at the
second major surface.
App. Br. (Claims Appendix) 15.
6 Claims 5, 13, 14, 20, 22, 23, 32, 37, and 41 stand withdrawn from
consideration.
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Application 12/997,658
DISCUSSION7
Having considered the Examiner’s rejections in light of Appellants’
arguments, we are persuaded that the Examiner erred in the interpretation of
claim 1 and relies on this erroneous interpretation in maintaining each of the
rejections. It follows, therefore, that we reverse the Examiner’s rejection as
to all claims. “[T]he Examiner bears the initial burden ... of presenting a
prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).
We begin our analysis by determining the scope and meaning of the
claims, giving claim terms the broadest reasonable interpretation consistent
with the Specification as they would be interpreted by one of ordinary skill
in the art. In reNTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (citing In
re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010)). In doing so,
we turn first to the claims themselves. See, e.g., Rappaport v. Dement, 254
F.3d 1053, 1059 (Fed. Cir. 2001).
The Examiner maintains that the following language
wherein the photoinitiator residing at the first major surface is
exposed to a greater peak irradiance of ultraviolet radiation than
the photoinitiator residing further into the thickness of the
porous substrate thus reducing the amount of polymerization
within the pores of the substrate through the thickness of the
substrate, thereby providing an asymmetric membrane
(Claim 1), only requires that the recited difference in peak irradiance occurs
and that the level of polymerization that occurs within the pores through the
7 We refer to the Specification filed December 13, 2013 (“Spec.”), the Final
Office Action mailed July 21, 2014 (“Final Act.”), the Appeal Brief filed
December 17, 2014 (“App. Br.”), the Examiner’s Answer mailed May 21,
2015 (“Ans.”), and the Reply Brief filed July 20, 2015 (“Reply Br.”).
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Appeal 2015-006929
Application 12/997,658
thickness of the substrate is reduced, not that the reduction is due to the
difference in the peak irradiance levels (Ans. 6-7).
Appellants contend that the claim language requires that it is the
recited difference in peak irradiance that causes the reduced polymerization
through the thickness of the membrane that provides the asymmetric
membrane. App. Br. 8, 11-12; Generally Reply Br. Appellants rely on the
plain meaning of “thus reducing” and “thereby providing” as indicating that
it is the recited reduced peak irradiance through the thickness of the
substrate that reduces the amount of polymerization and by doing so
provides the asymmetric membrane. App. Br. 11; Reply Br. Appellants’
proffered meaning of this clause mirrors the method and the mechanism by
which it achieves the desired result that is set forth in the Specification at
page 21, lines 3-23.
We are of the opinion that the language of claim 1 does require that
the reduced polymerization through the thickness of the substrate that
provides the asymmetry in the membrane is in fact caused by the difference
in the peak irradiance. In reaching this conclusion, we note that the recited
result of the precedent condition of reduced peak irradiance is set forth
within the same clause as the precedent condition. Accordingly, we discern
no proper basis for concluding the result is not required to be the result of
the reduced peak irradiance.
Turning to the prior art rejections, the Examiner relies on
Charkoudian for its disclosure of a method for forming an asymmetric
membrane comprising providing a porous substrate, applying a
polymerizable composition to the substrate, and exposing the coated
substrate to UV radiation to polymerize the polymerizable species to provide
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Application 12/997,658
an asymmetric membrane. Ans. 2—4 (citing, inter alia, Charkoudian 64-
65, 71, 73, 75, 77, 79, 96). The Examiner determines that it is inherent that
the photoinitiator at the surface being exposed to UV radiation will be
exposed to a greater peak irradiance than the photoinitiator residing further
within the thickness of the porous substrate. Ans. 2. As to the reduction of
the degree of polymerization within the pores of the substrate through the
thickness of the substrate, the Examiner relies both on this result being
inherent where the photoinitiator at the surface is exposed to a greater peak
irradiance than that residing further within the thickness of the porous
substrate (Final Act. 2, 4; Ans. 2) and on Charkoudian’s disclosure of
asymmetric membrane formation in which the degree of polymerization is
greater on the surface incident to radiation exposure (Ans. 6-7, citing
Charkoudian 94-95).
Appellants’ arguments as to the Examiner’s reliance on Charkoudian
as to the degree of polymerization varying across the thickness of the
membrane highlight the deficiencies in the rejection.
First, as manifest from Charkoudian’s disclosed use of polymerization
preventing agent (PPA) to control the degree of polymerization (see, e.g.,
Charkoudian Abstract) and the uniform polymerization observed in regions
not containing the PPA (Charkoudian ^ 39), the reduction in the degree of
polymerization within the pores of the substrate through the thickness of the
substrate is not inherent even if the levels of irradiance are inherently
reduced across the thickness of the membrane (App. Br. 11-12; Reply Br.).
In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (“Inherency . . . may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.”).
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Application 12/997,658
Second, as to the cited disclosures of asymmetric membrane
formation relied on by the Examiner, the Examiner has failed to establish
that the degree of polymerization that occurs to provide the asymmetry is the
result of the greater peak irradiance of ultraviolet radiation at the surface
than that further into the thickness of the porous substrate as we have
determined is required by claim 1. Rather, the Examiner explicitly
maintains that Charkoudian’s irradiation treatment provides the necessary
result, “even if it is a result of the use of a polymerization preventing agent,
PPA.” Ans. 6-7 (citing Charkoudian 94-95). In this cited example, the
side of the membrane directly exposed to UV light is covered with a
polyethylene sheet to prevent exposure of that side to oxygen, a preferred
PPA, which acts to lessen or prevent polymerization on the side opposite
that directly exposed to the UV light. Charkoudian 37, 94-95.
On this record, the Examiner’s articulated rejection falls short of that
necessary for a prima facie case because the requisite factual basis for the
difference in peak irradiance causing the reduced polymerization through the
thickness of the membrane to provide the asymmetric membrane is lacking.
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has
the initial duty of supplying the factual basis for its rejection. It may not. . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.”).
Finding each of the Examiner’s rejections are grounded on
Charkoudian in the manner discussed above, we are unable to sustain the
rejections.
We decline to scour the record in the first instance for facts that might
support the rejection as our primary role is review, not examination de novo.
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CONCLUSION
The Examiner’s decision rejecting claims 1—4, 6, 7-12, 15-19, 21,
24-31, 33-36, and 38^10 is REVERSED.
REVERSED
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