King Abdullah University of Science and Technology

Patent Trials and Appeals Board

Nov 27, 2020

2020000482 (P.T.A.B. Nov. 27, 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.
15/424,558 02/03/2017 Klaus-Viktor Peinemann 0338-362-2/2015-148-02 9721
144099 7590 11/27/2020
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EXAMINER
WEISS, PAMELA HL
ART UNIT PAPER NUMBER
1796
NOTIFICATION DATE DELIVERY MODE
11/27/2020 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS-VIKTOR PEINEMANN, JAMALIAH HANI BURABIE,
LUIS FRANCISCO VILLALOBOS VAZQUEZ DE LA PARRA

Appeal 2020-000482
Application 15/424,558
Technology Center 1700
Before JEFFREY B. ROBERTSON, CHRISTOPHER C. KENNEDY, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, 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 1–46. We have jurisdiction.
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 King Abdullah
University of Science and Technology. Appeal Br. 2.
Appeal 2020-000482
Application 15/424,558
2
CLAIMED SUBJECT MATTER
The claims are directed to methods of making a multi-layer
asymmetrical membrane and membranes produced by such methods. The
claimed methods recite a multi-step process of a) preparing a polymeric
solution via a condensation reaction of monomers using a first solvent, b)
casting the polymeric solution to form a polymeric film, c) contacting the
polymeric film with a second solvent comprising a cross-linker to form a
first layer on the top side of the polymeric film, and d) contacting the layered
polymeric film with a non-solvent to form a porous second layer on the
bottom of the polymeric film. See, e.g., Appeal Br. 26 (claim 18), 29–30
(claim 35).
Claim 18, reproduced below with the key limitation italicized, is
illustrative of the claimed subject matter:
18. A method of making a multi-layer asymmetric
membrane comprising the steps of:
(a) preparing a polymeric solution comprising one or more
polymers, said preparing step includes a condensation
reaction of monomers in a first solvent;
(b) casting the polymeric solution to form a polymeric
film;
(c) contacting the polymeric film with a second solvent
comprising a crosslinker under conditions to form a first
layer on a top side of the polymeric film, wherein the
crosslinker includes one or more functional groups that are
incorporated into the first layer, the first layer is a dense,
solvent-resistant first layer including crosslinked
polymeric chains, said contacting step includes immersing
the polymeric film for an immersion time of more than 0.1
seconds in the second solvent comprising the crosslinker
and said solvent-resistant first layer floats on a remaining
part of the polymeric film; and
Appeal 2020-000482
Application 15/424,558
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(d) contacting the polymeric film, having the dense,
solvent-resistant first layer, with a non-solvent solution
under conditions that form, by precipitation of the
remaining part of the polymeric film, a porous second
layer on the bottom of the polymeric film, the second layer
including uncrosslinked polymeric chains and not the one
or more functional groups.
Appeal Br. 26 (Claims Appendix).
STATEMENT OF THE CASE
The Examiner rejects claims 1–46 under 35 U.S.C. § 103 as
unpatentable over Boyanova (Polybenzimidazole Membranes for Organic
Solvent Nanofiltration – Formation Parameters and Applications, Imperial
College London Department of Chemical Engineering (2015)). Final Act.
3–19.
Regarding method claims 18–46, Appellant argues, inter alia, that
Boyanova does not disclose that its polymeric solution is prepared by a
condensation reaction of monomers as required by these claims. Appeal Br.
14–15; Reply Br. 8. Regarding product claims 1–17, Appellant asserts that
the claimed method of making the claimed membrane imparts structural
differences over that disclosed in Boyanova. Appeal Br. 20. Specifically,
Appellant argues that the claimed method results in structural features such
as “the first layer is dense, solvent resistant and includes polymeric chains . .
. [and] one or more functional groups,” and “the second layer includes
uncrosslinked polymeric chains . . . [but] does not include the one or more
functional groups of the first layer.” Id.
OPINION
The dispositive issue in this appeal is whether the Examiner has
established by a preponderance of the evidence that Boyanova teaches or
Appeal 2020-000482
Application 15/424,558
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suggests “preparing a polymeric solution comprising one or more polymers,
said preparing step includes a condensation reaction of monomers in a first
solvent” as recited in each independent claim 1, 18, and 35. Upon
consideration of the evidence provided in this appeal record, we determine
that the Examiner has not supported this finding with a preponderance of the
evidence and reverse the rejection. In re Oetiker, 977 F.2d 1443, 1449 (Fed.
Cir. 1992) (“In rejecting an application, factual determinations by the PTO
must be based on a preponderance of the evidence.”).
To support the finding that the claimed condensation reaction of
monomers is disclosed by Boyanova, the Examiner states that “the reference
teaches the steps with the compositional components and conditions of the
instant claims regardless of whether the same syntax is used (for example, a
polymeric solution of the claimed one or more polymers in a solvent is
expressly taught[;] as such the condensation reaction of monomers is taught,
etc.).” Final Act. 20. See also Ans. 29 (“The reference teaches step (a)
preparing a polymeric solution comprising one or more polymers in a first
solvent. Since the reference adds the claimed species of polymers2 to the
claimed solvent a condensation reaction is expected to occur.”).
The Appellant argues:
Appellant[s] understand[s] . . . the Examiner to mean that
whenever somebody mixes two monomers, inherently a
condensation reaction would take place. This is not so because
the Examiner did not prove inherency of this reaction. Note that
the initial burden is on the Examiner to provide support for a
rejection based on inherency, and not on the Applicant to prove

2 This statement is confusing because the method claims require a
condensation reaction of monomers in a solvent to prepare the polymeric
solution. Appeal Br. 26 (claim 18), 29–30 (claim 35).
Appeal 2020-000482
Application 15/424,558
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that this will not happen, as suggested by the Examiner in the
same paragraph.
Reply Br. 8.
We agree with the Appellant that the Examiner has not adequately
established inherency. The mere existence of a polymeric solution, without
more, does not reveal how that polymeric solution was prepared. Here,
Boyanova’s disclosure is informative as it evinces that at least three different
methods are known to be used in preparing polybenzimidazole, i.e., “PBI.”3
Boyanova 12–13 (discussing three different PBI synthesis methods
developed by “Vogel and Marvel,” “Choe,” and “Iwakura”). Significantly,
the claimed “condensation reaction of monomers” is not mentioned among
these methods, nor is such a reaction disclosed in the preparation of the
specific PBI relied on in the experimental portion of Boyanova. Id. at 12–
13, 31–33. While we agree with the Examiner’s statement (Final Act. 20)
that “the same syntax” of the claims need not be used in the prior art to
establish obviousness, factual findings must be supported by at least a
preponderance of the evidence. Oetiker, 977 F.2d at 1449; Ethicon v. Quigg,
849 F.2d 1422, 1427 (Fed. Cir. 1988). Here, the Examiner’s finding that
Boyanova’s polymeric solution is prepared by a process that “includes a
condensation reaction of monomers in a first solvent” is not so supported.
For this reason, we do not sustain the Examiner’s rejection of method claims
18–46.
With respect to product-by-process claims 1–17, we recognize the
principles set forth in In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985) governing

3 The Examiner relies on PBI to establish the polymeric solution of step (a)
that is then cast to form the polymeric film of step (b). Final Act. 4–6, 8–10,
15.
Appeal 2020-000482
Application 15/424,558
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the treatment of such claims. There, our reviewing court held that “[i]f the
product in the product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.” Id., 777 F.2d at 698 (emphasis
added). Here, however, the Examiner has not established that the claimed
membrane is the same as, or would have been obvious over, the membrane
disclosed by Boyanova. Rather, the Examiner relies on the rationale of In re
Best, 562 F.2d 1252 (CCPA 1977) by stating “[w]here the claimed and prior
art products are identical or substantially identical in structure or
composition, or are produced by identical or substantially identical
processes, a prima facie case of either anticipation or obviousness has been
established.” Final Act. 17, 20. Such rationale is insufficient on the current
record, however, because the Examiner has failed to establish that the
claimed and prior art membranes “are identical or substantially identical in
structure or composition, or are produced by identical or substantially
identical processes.” Best, 562 F.2d at 1255.
It is manifestly unclear on this record whether Boyanova’s process of
preparing its polymeric solution of PBI “includes a condensation reaction of
monomers.” We again emphasize Boyanova’s disclosure that PBI has at
least three ways of being synthesized, and the Examiner has not established
that such methods include a condensation reaction of monomers. Boyanova
12–13. Because the Examiner does not establish that Boyanova’s product or
process is identical or substantially identical to that claimed, we determine
that the Examiner prematurely shifts the burden to Appellant to establish that
the claimed membrane is different than that disclosed by Boyanova. Final
Act. 17–18, 20–21 (citing Best, 562 F.2d at 1255). Because of the lack of
evidence surrounding precisely how Boyanova’s “polymeric solution” of
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Application 15/424,558
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PBI is prepared, it follows that the Examiner’s finding that certain structural
aspects of the claimed membrane (e.g., functional groups in the first layer,
but not the second layer) would “necessarily form” is not supported. See
Final Act. 20 (finding that Boyanova “teaches the claimed compositional
components of polymers, solvents, non [-] solvents and the claimed steps
performed” (emphasis added)).
CONCLUSION
The Examiner’s rejection is reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–46 103 Boyanova 1–46

REVERSED