GAMBRO LUNDIA AB

Patent Trials and Appeals Board

Jul 30, 2021

2020005665 (P.T.A.B. Jul. 30, 2021)

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.
15/538,533 06/21/2017 Ulrich BAUER 52759-266947 2804
23643 7590 07/30/2021
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
LAU, JASON
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
07/30/2021 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ULRICH BAUER, REINHOLD BUCK, JUERGEN GRAF,
HELMUT HILDWEIN, BERND KRAUSE, MARKUS STORR, and
ARND WOCHNER
Appeal 2020-005665
Application 15/538,533
Technology Center 3700
Before DANIEL S. SONG, CHARLES N. GREENHUT, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 12–14, and 21–26. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Gambro Lundia
AB. Appeal Br. 2.
Appeal 2020-005665
Application 15/538,533

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CLAIMED SUBJECT MATTER
The claims are directed to a continuous process for preparing
permselective hollow fiber membranes. Claim 1, the sole independent claim
before us is reproduced below:
A continuous process for preparing permselective hollow fiber
membranes comprising subjecting the hollow fiber membranes
to a two-stage drying and tempering treatment, wherein the two-
stage drying and tempering treatment comprises drying the
hollow fiber membranes by applying a temperature in the range
of from 210 to 280°C to the outer surface of the hollow fiber
membranes for a time in the range of from 1 to 4 seconds; and
subsequently tempering the hollow fiber membranes by applying
a temperature in the range of from 180 to 200°C to the outer
surface of the hollow fiber membranes, for a time in the range of
from 2 to 5 seconds.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bluma US 2,468,585 Apr. 26, 1949
Yen US 4,902,456 Feb. 20, 1990
Kools US 2003/0209486 A1 Nov. 13, 2003
Nemser US 2012/0097612 A1 Apr. 26, 2012
Krause (“Menda”) WO 2013/034611 A1 Mar. 14, 2013
REJECTIONS
1. Claims 1–4, 12–14, and 24–26 are rejected under 35 U.S.C. § 103 as
being unpatentable over Menda in view of Nemser, Yen, and Kools.
2. Claims 21–23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Menda, in view of Nemser, Yen, and Kools, and further in
view of Bluma.
Appeal 2020-005665
Application 15/538,533

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OPINION
The Examiner relies on Menda, which was acknowledged as prior art
by Appellant (Spec. 2), as disclosing the basic process claimed albeit
without the particular drying stages and times recited in claim 1. Final Act.
2–4. The Examiner cites Nemser as demonstrating that drying time is a
variable known to affect pore size, which in turn affects the quality,
permeability, and separability of the membrane. Final Act. 3. The Examiner
cites Yen as demonstrating that a tempering process was known to “‘set the
characteristic of the membrane.’” Final Act. 3. The Examiner cites Kools as
demonstrating that it was known to optimize temperature and time to
produce a desired pore size and gradient. Final Act. 3. Based on these
findings the Examiner reasons:
It would have been obvious to a person skilled in the art at
the time of effective filing of the application to modify Menda to
further comprise a subsequent tempering step of tempering the
hollow fiber membranes by applying a temperature in the range
of from 180 to 200.degree. C. to the outer surface of the hollow
fiber membranes, for a time in the range of from 2 to 5 second.
The motivation to combine is so that the final product has the
desired pore shape, pore size, pore gradient, and other desired
characteristics. The shape, size, and pore gradient affect the
permeability and the separation/filtration characteristic and
ability of the membrane.
Final Act. 4.
There is sufficient evidence here, and no real dispute, that drying and
tempering times would have been expected by the skilled artisan to be result
effective variables for the general reasons stated by the Examiner. However,
the record lacks evidence or explanation illustrating any particular known or
predictable relationships between the variables and the results they effect.
Appeal 2020-005665
Application 15/538,533

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Further, while the Menda, Nemser and Yen references may include example
temperatures approaching or falling within the recited temperature ranges
(see citations at Final Act. 3–4), those references teach drastically different
drying times. Appeal Br. 6–10. The Examiner does not actually cite a drying
time in Kools, but Appellant acknowledges there is at least one example
having some overlap with the range recited. However, Appellant also points
out, that process, arguably not even a drying process in Kools, is carried out
at a drastically different temperature from the range recited. Appeal Br. 10;
Reply Br. 6.
It is often remarked that “it is not inventive to discover the optimum
or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454,
456 (CCPA 1955) (cited at MPEP 2144.05(II)(A)). However, according to
MPEP 2144.05(II)(B) (discussing In re Stepan, 868 F.3d 1342, 1346 (Fed.
Cir. 2017)):
In order to properly support a rejection on the basis that an
invention is the result of “routine optimization”, the examiner
must make findings of relevant facts, and present the
underpinning reasoning in sufficient detail. The articulated
rationale must include an explanation of why it would have been
routine optimization to arrive at the claimed invention and why
a person of ordinary skill in the art would have had a reasonable
expectation of success to formulate the claimed range.
(Emphasis added).
Here, neither the cited evidence nor the Examiner’s explanation
clearly articulates why it would have been obvious to arrive at the specific
combinations of temperatures and times actually recited. It may be accepted
that drying stages, including times and temperatures will certainly have
some influence as to the aspects of the membrane described by the
Appeal 2020-005665
Application 15/538,533

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Examiner. However, the Examiner does not cite sufficient evidence, or
articulate a sufficient explanation, as to why attempting to control such
results would actually cause a process to arrive at, or even approach, the
recited ranges, particularly where the recited combination of drying times
and temperatures depart so drastically from those of the cited prior art. On
the record presently before us there is insufficient evidence or explanation to
conclude that a skilled artisan would have had a reasonable expectation of
success in formulating a process exhibiting the combination of ranges
recited in claim 1.
Accordingly, we do not sustain the Examiner’s rejection on the
grounds presently before us.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 12–14,
24–26
103 Menda, Nemser,
Yen, Kools
1–4, 12–14,
24–26
21–23 103 Menda, Nemser,
Yen, Kools,
Bluma
21–23
Overall
Outcome
1–4, 12–14,
21–26

REVERSED