Jonathan F. Hester et al.

Patent Trials and Appeals Board

Oct 9, 2019

15206659 - (D) (P.T.A.B. Oct. 9, 2019)

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.
15/206,659 07/11/2016 Jonathan F. Hester 64850US012 9061
32692 7590 10/09/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
PATEL, PRANAV N
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
10/09/2019 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 JONATHAN F. HESTER, JAMES S. MROZINSKI,
and DEREK J. DEHN
____________________

Appeal 2019-000093
Application 15/206,659
Technology Center 1700
____________________

Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
LILAN REN, Administrative Patent Judges.

REN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The record on appeal includes the Specification of July 11, 2016 (“Spec.”),
the Examiner’s Final Action of October 2, 2017 (“Final Act.”), the Advisory
Action of December 22, 2017 (“Advisory Action”), the Pre-Appeal
Conference Decision of February 20, 2018 (“Pre-Appeal Decision”), Appeal
Brief of April 2, 2018 (“Appeal Br.”), the Examiner’s Answer of July 27,
2018 (“Ans.”), and Reply Brief of September 26, 2018 (“Reply Br.”).
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Application 15/206,659

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STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134 from a rejection of claims
15–31. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

CLAIMED SUBJECT MATTER
“The present disclosure relates to porous membranes that have at least
two zones having different average pore sizes.” Spec. 1:8–9. Claims 15 and
24, reproduced below, are illustrative of the claimed subject matter:
15. A method of making a porous membrane the method
comprising:
forming a first composition in a first extruder, the first
composition comprising a first crystallizable polymer, a first
nucleating agent and a diluent, wherein the first composition has
a first concentration of the first nucleating agent, and wherein the
first extruder is operated at a first specific energy input;
forming a second composition in a second extruder, the
second composition comprising a second crystallizable polymer
and a diluent, wherein the second extruder is operated at a second
specific energy input;
coextruding the first composition and the second
composition to form a multilayer article; and
cooling the multilayer article to allow phase separation of
the diluent from the crystallizable polymers to form a porous
membrane
wherein the first specific energy input is not the same as
the second specific energy input.

2 3M Innovative Properties Company is listed as Applicant (Appellant).
Application Data Sheet of July 11, 2016. Appellant states that the “real
party in interest is 3M Company (formerly known as Minnesota Mining and
Manufacturing Company) of St. Paul, Minnesota and its affiliate 3M
Innovative Properties Company of St. Paul, Minnesota.” Appeal Br. 2.
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24. A method of making a porous membrane the method
comprising:
forming a first composition in a first extruder, the first
composition comprising a first crystallizable polyolefin
polymer, a first nucleating agent and a diluent, wherein the first
composition has a first concentration of the first nucleating
agent;
forming a second composition in a second extruder, the
second composition comprising a second crystallizable
polyolefin polymer, a second nucleating agent and a diluent,
wherein the second composition has a second concentration of
the second nucleating agent;
coextruding the first composition and the second
composition to form a multilayer article; and
cooling the multilayer article to allow phase separation of
the diluent from the crystallizable polymers to form a porous
membrane comprising a first zone and a second zone,
wherein the crystallizable polymer is the same in the first
zone and the second zone, the first zone having a first average
pore size and the second zone having a second average pore
size,
wherein the first average pore size is not the same as the
second average pore size;
wherein the first nucleating agent and the second
nucleating agent are the same or different,
wherein the first concentration and the second
concentration are the same or different, and
with the proviso that the first nucleating agent and the
first concentration are not the same as the second nucleating
agent and the second concentration.

Claims Appendix (Appeal Br. 23, 24–25).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Kaytor
Yen
US 6,171,689 B1
WO 2006/069307 A2
Jan. 9, 2001
June 29, 2006
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REJECTIONS
Claims 15–31 are rejected under pre-AIA 35 U.5.C. § 103(a) as being
unpatentable over Kaytor in view of Yen. Final Act. 5.3
Claim 27 is alternatively rejected under pre-AIA 35 U.5.C. § 103(a) as
being unpatentable over Yen. Final Act. 13.
Claim 31 is alternatively rejected under pre-AIA 35 U.5.C. § 103(a) as
being unpatentable over Yen in view of Kaytor. Final Act. 14.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant 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
identify the alleged error in the examiner’s rejections”)). After having
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that Appellant identifies reversible error,
and we affirm the Examiner’s obviousness rejections for the reasons
expressed in the Final Office Action and the Answer. We add the following
primarily for emphasis.

3 An anticipation rejection of claims 24–26 and 28–30 has been withdrawn
and therefore is not before us. Final Act. 14–15; Ans. 13.
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Claim 154
The Examiner rejects claim 15 finding that Kaytor teaches all the
recited limitations except “[a] first extruder is operated at a first specific
energy input” and “[a] second extruder is operated at a second specific
energy input” that is different from the first specific energy. Final Act. 6.
The Examiner thus turns to Yen which describes extruding membrane
solutions at different extruder screw speeds (e.g., 50 rpm and 200 rpm). Id.
Based on Yen’s statement that the “appropriate amount of shear is an
amount sufficient to form, in the extrusion apparatus, a homogeneous
solution of polymer in porogen so that membranes can be extruded which do
not contain defects” (Yen, p. 19 (cited in Final Act. 7)), the Examiner finds
that a skilled artisan would have combined Yen with Kaytor “to control
shear in order to provide sufficient mixing” to arrive at claim 15. Final Act.
7.
In the Pre-Appeal Conference Decision, the Examiner provides a
reference known as “Words of Wisdom” which provides an overview of the
twin-screw extruders used in Yen. In both the Pre-Appeal Conference
Decision and the Examiner’s Answer, the Examiner refers to Words of
Wisdom and provides calculations showing that operating the prior art twin-
screw extruder at different specific energy inputs leads to different speeds.
For example, using example 1 of Yen which describes extruding a first
membrane solution at 50 rpm and extruding a second membrane solution at

4 Appellant does not present separate arguments for the obviousness
rejection of claims 16–23 over Kaytor in view Yen. See, e.g., Appeal Br. 4–
21. These claims, therefore, stand or fall with the obviousness rejection of
claim 15. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv).
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200 rpm, the Examiner calculates the respective specific energy inputs for
these extruder speeds and tabulates them in the Answer. Ans. 15–16.
Appellant argues that the Examiner’s calculations rely on parameters
such as the horsepower and torque which are assumptions not found in Yen.5
Reply Br. 3.6 We are unpersuaded by this argument because claim 15 does
not require the first and second specific energy input to be based on a
particular parameter. All claim 15 requires is operating the extruder at two
different specific energy inputs – which is shown by the Examiner’s
calculations of the different specific energy at different prior art extrusion
speeds. Appellant’s argument that other unperformed calculations “might
result in some identical specific energy calculations for different extruders
operating at different rpms and/or HPs” (Reply Br. 4) does not identify error
in the Examiner’s finding that different specific energy inputs lead to
different extruder speeds at least in some instances in the prior art. The
Examiner’s finding is also consistent with the Specification which provides

5 Appellant raises arguments for the calculations performed in the Pre-
Appeal Conference Decision. Appeal Br. 16–17 (arguing, for example, the
calculations in the Pre-Appeal Conference Decision do not account for “the
actual horsepower, maximum screw speed, and torque of each of extruder 1
and extruder 2”). The calculations provided in the Examiner’s Answer
further refine those performed in the Pre-Appeal Conference Decision which
address these arguments. Ans. 14–16 (providing calculations based on
holding torque constant for the different extruder speeds and comparing the
specific energy using various parameters including motor horse powers, max
rpm and others). Appellant raises arguments in the Reply Brief in response
to the Examiner’s Answer which we address herein. We are not persuaded
by Appellant’s arguments regarding the calculations in the Pre-Appeal
Conference Decision for the same reason that claim 15 does not require the
specific energy to be based on any particular parameter.
6 The Reply Brief lacks page numbers and we therefore provide our own
pagination.
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that “[i]ncreasing the screw speed increases the specific energy input to the
extruder, e.g., increasing the rotations per minute (rpm).” Spec. 14:15–16.
Appellant also argues that the Examiner erred “because the term
‘specific energy’ as used in the present application encompasses more
factors than just ‘the amount of power that is being input by the motor into
each kilogram of material being processed’, which is how ‘specific energy’
was defined in the evidentiary document ‘Words of Wisdom’.” Reply Br. 4.
First and foremost, we note that an argument raised for the first time
in a Reply Brief can be considered waived if Appellant does not explain why
it could not have been raised previously. See Ex parte Nakashima, 93
USPQ2d 1834 (BPAI 2010) (informative) (explaining that arguments and
evidence not timely presented in the principal Brief will not be considered
when filed in a Reply Brief, absent a showing of good cause explaining why
the argument could not have been presented in the Principal Brief); Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly
interpreted, the Rules do not require the Board to take up a belated argument
that has not been addressed by the Examiner, absent a showing of good
cause.”). See also 37 C.F.R. § 41.41(b)(2). In this case, Appellant does not
explain why this argument about “the definition of ‘specific energy’” could
not have been raised in the opening brief which would have afforded the
Examiner an opportunity to respond to it. See Reply Br. 3.
In any event, instead of providing a definition of the “specific energy
input” recited in claim 15 Appellant merely argues that “the present
application discloses that there are numerous ways beyond the factors used
in the ‘Words of Wisdom’ calculation that impacts the energy input at which
an extruder is operated.” Id. at 4. The portion of the Specification, cited by
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Appellant, does not provide a definition of specific energy but instead states
that:
There are a number of ways of modifying the specific
energy put into an extruder. Exemplary methods include, but
are not limited to, modifying the screw speed, modifying the
extruder temperature, modifying the extruder throughput,
modifying the aggressiveness of the screw design, modifying
the extruder length/diameter (L/D) ratio, and modifying the
extruder pressure.

Spec. 14:11–15; see also Reply Br. 4 (reproducing this portion of the
Specification but citing it as Spec. 16:3–15). As noted supra, the
Specification provides that one of the ways to vary specific energy input is
by varying the screw speed which supports the Examiner’s finding that
Yen’s teaching of operating an extruder at 50 rpm and 200 rpm meets the
limitation at issue.
Appellant lastly argues that there lacks sufficient reason to combine
Kaytor and Yen because “the compositions of Kaytor contain flame
retardant additives and can also include nucleating agents for inducing
polymerization of a crystallizable polymer, whereas Yen is silent regarding
both flame retardant additives and nucleating agents” and the combination
would “not necessarily have predictable effects for forming membranes
having the compositions of Kaytor.” Appeal Br. 9–10. From the outset,
claim 15 does not exclude the presence of a flame retardant additive.
Appellant also does not elaborate on why combining Kaytor’s extrusion
process with Yen’s operation of an extruder at two different speeds would be
an unpredictable art. We are therefore not persuaded by Appellants’
conclusory assertion.
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Moreover, as the Examiner points out, both Kaytor and Yen describe
“forming two polymer solutions, sending each of the two polymer solutions
in different extruders, coextruding the polymer solutions forming layers of
polymeric membranes.” Ans. 17. Claim 15 is no more than the combination
of familiar elements according to known methods, as shown by the
Examiner, to yield the predictable product of “a porous membrane” which is
all claim 15 requires. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). We, thus, determine that the Examiner’s rationale for combining the
references is based on articulated reasoning with rational underpinning to
support the legal conclusion of obviousness. See id. at 418.
Claim 24
The Examiner rejects claim 247 finding, among others, that Yen
describes membranes that “are asymmetric in that one layer has an average
pore size different from the average pore size in a second layer” (Yen, p. 1)
which teaches the limitation “the first zone having a first average pore size
and the second zone having a second average pore size” as recited in claim
24. Final Act. 9–10.
Appellant acknowledges that Kaytor states “[m]icroporous
membranes or films have been utilized in a wide variety of applications,
such as the filtration of solids, the ultrafiltration of colloidal matter, diffusion
barriers or separators in electrochemical cells, in the preparation of synthetic
leather, and in the preparation of fabric laminates.” Appeal Br. 18 (citing
Kaytor 1:19–23). Appellant, however, argues that the Examiner erred in

7 Appellant does not present separate arguments for the obviousness
rejection of claims 26 and 27–31 over Kaytor in view Yen. See, e.g., Appeal
Br. 4–21. These claims, therefore, stand or fall with the obviousness
rejection of claim 24. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv).
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combining the references because, unlike Yen’s membrane which is used for
filtration, “[n]one of the applications noted by Kaytor involve filtering
particles, and no other motivation has been demonstrated to wish to form the
first zone and the second zone having different pore sizes for the particular
microporous articles described by Kaytor.” Id. at 10, 14.8 We are not
persuaded by this argument because it does not address the Examiner’s
rationale for combining the references, which is based on Yen’s teaching to
use varying pore sizes so that “the overall useful life of the membrane is
extended.” Yen, p. 1 (cited in Final Act. 10).
Appellant also argues that the Examiner erred in combining the
references because “there would not have been any motivation for a person
of ordinary skill in the art to have looked to the disclosure of Yen to improve
filtration properties of a microporous membrane of the disclosure of
Kaytor.” Appeal Br. 19 (emphasis omitted). Again, this argument is not
persuasive because it does not address the Examiner’s rationale to combine
based on the references being analogous as well as Yen’s teaching to extend
the useful life of the membrane. See Final Act. 10. Appellant’s argument
regarding the particular structures of the products in Yen and Kaytor does
not persuaded us otherwise for the same reason.
Moreover, as we noted supra with regard to claim 15, claim 24 is
likewise no more than the combination of familiar elements according to
known methods, as shown by the Examiner, which yields a predictable result
of a recited “porous membrane.” KSR, 550 U.S. at 416. We, thus, determine
that the Examiner’s rationale for combining the references is based on

8 Appellant raises the same argument with regard to the Examiner’s analysis
provided in the Advisory Action which we address collectively herein.
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articulated reasoning with rational underpinning to support the legal
conclusion of obviousness. See id. at 418.
Claim 25
Claim 25 depends from claim 24 and further recites “wherein the first
extruder is operated at a specific energy input, the second extruder is
operated at a second specific energy input and the first specific energy input
is not the same as the second specific energy input.”
Appellant argues that the Examiner reversibly erred in rejecting claim
25 because the calculations in the Pre-Appeal Conference Decision are
based on assumptions not found in the prior art. Appeal Br. 16–18. As we
state in footnote 5, the further refined calculations provided in the
Examiner’s Answer address these arguments based on the Pre-Appeal
Conference Decision. As with claim 15, Appellant does not identify error in
the Examiner’s finding that different specific energy inputs lead to different
extruder speeds at least in some instances in the prior art. The rejection of
claim 25 is therefore sustained.
Claims 27 and 31
Appellant argues the rejection of claim 27 over Yen and the rejection
of claim 31 over Yen in view of Kaytor under separate headings but without
specificity. Appeal Br. 21. Appellant does not address the Examiner’s
analysis rejecting claim 27 over Yen. Compare id., with Final Act. 13–14
(rejecting claim 27 as obvious in view of Yen alone). Nor does Appellant
address the Examiner’s analysis rejecting claim 31 over Yen in view of
Kaytor. Compare Appeal Br. 21, with Final Act. 13, 14. We affirm the
rejections of claims 21 and 31 for lack of identification of reversible error.
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CONCLUSION
The Examiner’s decision is affirmed.
Claims
Rejected
Basis  Affirmed Reversed
15–31 35 U.S.C. § 103(a)
(pre-AIA) over
Kaytor in view of
Yen 
15–31
27 35 U.S.C. § 103(a)
(pre-AIA) over Yen 
27
31 35 U.S.C. § 103(a)
(pre-AIA) over Yen
in view of Kaytor
31
Overall
Outcome
15–31

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED