Jun Okabe et al.

Patent Trials and Appeals Board

Mar 30, 2020

14372300 - (D) (P.T.A.B. Mar. 30, 2020)

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.
14/372,300 07/15/2014 Jun Okabe NBC-14-2170/359344-007 7262
35811 7590 03/30/2020
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 5000
PHILADELPHIA, PA 19103
EXAMINER
LEBRON, BENJAMIN L
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
03/30/2020 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):
pto.phil@us.dlapiper.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JUN OKABE, YOSHIE MARUTANI, KIYOHIKO TAKAYA,
HARUTOKI SHIMURA, TAKAO SASAKI, and MASAHIRO KIMURA
____________

Appeal 2018-004696
Application 14/372,300
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, MONTÉ T. SQUIRE, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision rejecting claims 1–3 and 5–11.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Toray Industries, Inc. as the real party in
interest. Appeal Br. 1.
Appeal 2018-004696
Application 14/372,300

2
BACKGROUND
The invention relates to a composite semipermeable membrane
suitable for use for selective liquid separation, such as desalination of water.
Spec. ¶ 1. Claim 1 reads:
1. A composite semipermeable membrane comprising:
a supporting membrane having a substrate and a porous
supporting layer; and
a separation functional layer provided on the supporting
membrane,
wherein,
when any 10 cross sections of the composite
semipermeable membrane, having a length of 2.0 μm in a
membrane surface direction, are observed using an electron
microscope, an average number density of projections on the
separation functional layer, which have a height equivalent to or
higher than 1/5 of a 10-point average surface roughness of the
separation functional layer, is 10.0 projections/μm or more, in
each cross section, and an average height of the projections is
100 nm or more, and
a standard deviation of the projections in one of the cross
sections is 90 nm or less.

Appeal Br. 10 (Claims App.). Each remaining claim on appeal
depends from claim 1.
Appeal 2018-004696
Application 14/372,300

3
REJECTION2
I. Claims 1–3 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Kim and Taniguchi.
II. Claims 1–3 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Kim and Vrijenhoek.
III. Claims 5–9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Kim, Vrijenhoek, and Ghosh.
IV. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kim, Vrijenhoek, and Sasaki.

REFERENCES
Sasaki et al. US 2008/0000843 A1 Jan. 3, 2008
(“Sasaki”)

Taniguchi JP 2005–169332 July 24, 2017

Kim et al., Positron Annihilation Spectroscopic Evidence to
Demonstrate the Flux-Enhancement Mechanism in Morphology-Controlled
Thin-Film-Composite (TFC) Membrane, American Chemical Society,
Environmental Science and Technology, Vol. 39, No. 6, 1764-1770 (2005)
(“Kim”).

Vrijenhoek, et al., Influence of membrane surface properties on initial
rate of colloidal fouling of reverse osmosis and nanofiltration membranes,
Journal of Membrane Science, Vol. 188, 115–128 (2001) (“Vrijenhoek”).

2 The Examiner provisionally rejected claims 1–3, 5, 7, 9, and 11 based on
nonstatutory double patenting over U.S. Application Serial No. 14/411, 418.
A Notice of Abandonment in the ’418 application was mailed July 25, 2019.
Accordingly, the Examiner’s provisional rejection is moot.
Appeal 2018-004696
Application 14/372,300

4
Ghosh et al., Impacts of support membrane structure and chemistry on
polyamide-polysulfone interfacial composite membranes, Journal of
Membrane Science, Vol. 336, 140–148 (2009).

OPINION
Rejection I: obviousness over Kim and Taniguchi
With regard to the Examiner’s Rejection I, Appellant argues the
rejected claims as a group, focusing on claim 1. We select claim 1 as
representative; claims 2 and 3 stand or fall with claim 1. Relevant to
Appellant’s arguments on appeal, the Examiner finds Kim discloses a
desalination filtration membrane which differs from that recited in claim 1 in
that Kim is silent regarding a number average density of the provided
projections. Final Act. 4–5. Appellant does not dispute the foregoing
finding. The Examiner further finds Taniguchi recognizes in a desalination
filtration membrane that water permeability and salt retention are
simultaneously affected by the average distance between adjacent projection
apexes. Id. at 6 (citing Taniguchi ¶ 13). In light of the combined teachings
of Kim and Taniguchi, the Examiner finds that one of ordinary skill in the
art would have had a reason to optimize the average projection density in
Kim in order to achieve a desired balance of water and salt permeability. Id.
Appellant acknowledges that Taniguchi would have suggested
adjusting the projection density in Kim. Appeal Br. 5 (“The Appellant
therefore respectfully submits that, based on the teaching of Taniguchi, one
skilled in the art would enhance water permeability by making the horizontal
distance between adjacent apexes (projections) small (i.e. by making the
average number density of the projections large.)”. Appellant contends,
however, that Taniguchi also teaches that “the height of the projections is
Appeal 2018-004696
Application 14/372,300

5
preferably made small” to reduce deformation of the filter under pressure.
Id. at 3–4 (citing Taniguchi ¶ 5).
Appellant’s argument is not persuasive of reversible error. The fact
that Taniguchi additionally provides a reason for adjusting projection height
does not negate the relied-upon teaching of that water and salt permeability
may be adjusted by increasing or decreasing projection density. Appellant
does not dispute the Examiner’s finding that Kim discloses filtration
membranes having projection heights within the recited range.
Appellant also argues that Kim and Taniguchi “contain conflicting
teachings regarding the root mean square of surface roughness” (Appeal
Br. 6), but this argument is not persuasive because Appellant does not
articulate how such purportedly conflicting teachings would relate to any
error in the Examiner’s ground of rejection.
For the foregoing reasons, Appellant does not persuade us of
reversible error in the Examiner’s rejection of claims 1–3 over Kim and
Taniguchi. We sustain Rejection I.

Rejection II: obviousness of claims 1–3 over Kim and Vrijenhoek
In rejecting claims 1–3 over Kim and Vrijenhoek, the Examiner relies
on Kim as discussed in connection with Rejection I, and further finds that
Vrijenhoek “discloses that peak count (the number of projections in the area
scanned) is weakly-to-moderately negatively correlated to membrane
fouling).” Final Act. 9 (citing Vrijenhoek 120). The Examiner finds the
foregoing teaching in Vrijenhoek would have provided one skilled in the art
with a reason to adjust projection density in Kim as a result-effective
variable to achieve a desired resistance to fouling. Id. at 10.
Appeal 2018-004696
Application 14/372,300

6
Appellant argues Vrijenhoek “actually teaches that it is preferable to
increase the peak count and decrease the average roughness.” Appeal Br. 7.
(citing Vrijenhoek, Table 1). Particularly, Appellant contends that
Vrijenhoek teaches that a lower average roughness yields less fouling. Id. at
6. However, Appellant does not dispute the Examiner’s finding that
Vrijenhoek would have provided a reason to adjust peak density as a
result-effective variable for the purpose of achieving a desired fouling
resistance. The fact that Vrijenhoek also discusses a correlation between
fouling resistance and average roughness (defined by Vrijenhoek as the
average deviation of the peaks and valleys from the mean plane; Vrijenhoek
120) does not negate the relied-upon teaching correlating peak density with
fouling resistance.
For the foregoing reasons, Appellant also does not persuade us of
reversible error in the Examiner’s rejection of claims 1–3 over Kim and
Vrijenhoek. Rejection II is sustained.
Rejections III and IV: obviousness of claims 5–11
Appellant does not separately argue the Examiner’s rejection of
claims 5–11 except to rely on the arguments discussed above in connection
with claim 1. See Appeal Br. 9. Accordingly, we sustain Rejections III and
IV for the reasons given above in connection with Rejection II.

Appeal 2018-004696
Application 14/372,300

7
CONCLUSION
The Examiner’s decision rejecting claims 1–3 and 5–11 is affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3 103(a) Kim, Taniguchi 1–3
1–3 103(a) Kim, Vrijenhoek 1–3
5–9 103(a) Kim, Vrijenhoek,
Ghosh
5–9
10, 11 103(a) Kim, Vrijenhoek,
Sasaki
10, 11

Overall
outcome
1–3, 5–11

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

AFFIRMED