Mark R. Stouffer

Patent Trials and Appeals Board

Nov 1, 2019

14387601 - (D) (P.T.A.B. Nov. 1, 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.
14/387,601 09/24/2014 Mark R. Stouffer 68112US008 4497
32692 7590 11/01/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
SAVAGE, MATTHEW O
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
11/01/2019 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 MARK R. STOUFFER1
________________

Appeal 2018-008382
Application 14/387,601
Technology Center 1700
________________

Before MARK NAGUMO, MONTÉ T. SQUIRE, and
SHELDON M. MCGEE, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
3M (“Stouffer”) timely appeals under 35 U.S.C. § 134(a) from the
Final Rejection2 of all pending claims 1–8 and 18–20. We have jurisdiction.
35 U.S.C. § 6. We reverse.

1 The applicant under 37 C.F.R. § 1.46 (Application Data Sheet,
filed 24 September 2014), and hence the appellant under 35 U.S.C. § 134, is
the real party in interest, identified as 3M Innovative Properties Company
(“3M”) (Appeal Brief, filed 4 May 2018 (“Br.”), 1).
2 Office Action mailed 18 January 2018 (“Final Rejection”; cited as “FR”).
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OPINION
A. Introduction3
The subject matter on appeal relates to liquid filtration systems
comprising a powdered ion exchange resin immobilized by a polymeric
binder. In a preferred embodiment described by the ′601 Specification,
pulverized4 particles of ion exchange resins are contacted with a polymeric
binder comprising ultrahigh molecular weight polyethylene (“UHMWPE”).
(Id. at 3 [0013].) The mixture is heated to form a heat-treated matrix, and
the heat-treated matrix is compressed to form a radial flow (id. at [0018])
filtration block, which is placed in a housing to form the filtration system
(id. at [0013]). In a more preferred embodiment, the average particle size
diameter of the pulverized ion exchange resin is about 50 to about 250 μm.
(Id. at 2 [0008].) Preferably, the UHMWPE binder is in the form of particles
having “an irregular, convoluted surface” (id. at 6 [0032]5), and an average
particle size in the range of 10 to 120 μm. (Id. at 6 [0033].) The
Specification suggests that “compression aids in forming point-to-point
bonds between the pulverized resin and binder particles.” (Id. at 4 [0020].)

3 Application 14/387,601, Composite ion exchange media for liquid
filtration systems, filed 24 September 2014 as the national stage under
35 U.S.C. § 371 of PCT/US2013/029502, filed 7 March 2013, claiming the
benefit of 61/620,618, filed 5 April 2012. We refer to the
“′601 Specification,” which we cite as “Spec.”
4 The Specification states that “[r]eference to ‘pulverized’ or ‘pulverized
form’ means that a resin bead has been mechanically ground to a size and
shape smaller than its original.” (Spec. 5 [0023].)
5 The Specification reports that such particles are described by Hughes et
al., U.S. Patent No. 7,112,272 (see n.11, infra, for a complete citation).
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According to the Specification, with radial flow of water through the
block filter, the kinetics of calcium and magnesium reduction can be
increased significantly, with significantly less pressure drop, and higher
equilibrium concentration capacity for hardness reduction, as compared to
conventional commercially available bead resins packed in a loose bed.
(Id. at 3–4 [0018].) Such commercial ion exchange resin beads reportedly
have an average diameter of 0.6–0.9 mm [600–900 μm]. (Spec. 1 [0004].)
The Specification speculates that the smaller pulverized ion exchange
particles provide “increase[d] access to ion exchange sites in the interior of
particles.” (Id. at 4 [0018].) Moreover, expected problems of increased
pressure drop due to smaller ion exchange resin particles (id. at 2 [0005])
and swelling of those particles (id. at [0006]) are said to be avoided
(id. at [0010]).
Sole independent claim 1 is representative and reads:
A block comprising a filtration matrix comprising
a polymeric binder that immobilizes a pulverized powder
of an ion exchange resin;
the polymeric binder and the pulverized powder of the ion
exchange resin having point-to-point bonds in the block
formed by a mold compression step of the filtration matrix;
the polymeric binder present in an amount in the range
of 10% to 40% by weight and
the pulverized powder of the ion exchange resin present
in an amount of 50% to 90% by weight;
the pulverized powder of the ion exchange resin having
an average particle size in the range of about 50 to
about 250 micron;
wherein the ion exchange resin comprises a cation
exchange resin, an anion exchange resin, a chelating
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exchange resin, a biologically-related ion exchange resin,
or combinations thereof; and
wherein water passes radially through the block.
(Claims App., Br. 12; formatting added in conformity with
37 C.F.R. § 1.75(i) (2017) (“Where a claims sets for a plurality of elements
or steps, each element or step of the claim should be separated by a line
indentation.”).)
The Examiner maintains the following grounds of rejection6, 7:
A. Claims 1–8 and 18–20 stand rejected under 35 U.S.C.
§ 112(2).
B. Claims 1, 4, 6–8, and 18 stand rejected under 35 U.S.C.
§ 103(a) in view of the combined teachings of Yao8 and
Iwamoto.9
B1. Claims 2, 3, and 19 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Yao, Iwamoto, and
Stouffer ′298.10

6 Examiner’s Answer mailed 26 June 2018 (“Ans.”).
7 Because this application was filed before 16 March 2013, the effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
8 Li Yao et al., Immobilized ion exchange materials and processes for
making the same, U.S. Patent Application Publication 2003/0062311 A1
(2003).
9 Junjiro Iwamoto, Apparatus for producing deionized water, U.S. Patent
No. 6,334,941 B1 (2002).
10 Mark R. Stouffer and Eric C. Pemberton, Filter medium and water
filtration system including the same, U.S. Patent Application Publication
2011/0042298 A1 (24 February 2011).
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B2. Claim 5 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Yao, Iwamoto, and Hughes.11
B3. Claim 20 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Yao, Iwamoto, and
Stouffer ′572.12
B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Rejection A: indefiniteness
The Examiner holds (FR 2) that claim 1 and all dependent claims are
indefinite in the recitation, “the ion exchange resin comprises . . . a
biologically-related ion exchange resin” (emphasis added), because “it is
uncertain as to what scope of materials is implied by” that term. (Ans. 3.)
Stouffer responds that the term would have been recognized by
persons having ordinary skill in the art, given the examples provided in the
Specification, paragraph [0043], and as further evidenced by the consistent
use of that term by Yao [see Yao at 3 [0041], col. 2, line 1, and lines 29–33
(identical to Spec. 8 [0043]) and lines 33–41 (tracked closely by the text of
Spec. [0044] and [0045]).
Indefiniteness, as a subset of claim construction, is a question of law.
The definiteness requirement of 35 U.S.C. § 112, second paragraph (now

11 Douglass E. Hughes and Rich Buhler, Liquid and gas porous plastic filter
and methods of use, U.S. Patent Application Publication 2004/0168972 A1
(2004) (issued as U.S. Patent No. 7,112,272 B2 on 26 September 2006).
12 Mark R. Stouffer and Moses M. David, Liquid filtration systems, U.S.
Patent Application Publication 2010/0243572 A1 (2010).
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codified at 35 U.S.C. § 112(b)) requires that a claim “inform those skilled in
the art about the scope of the invention with reasonable certainty. . . . while
recognizing that absolute precision is unattainable.” Nautilus, Inc. v. Biosig
Instruments, Inc., 572 US 898, 910 (2014). In the present case, particularly
because the term “biologically-related ion exchange resin” appears to be a
term of art known to practitioners, the Examiner must articulate why the
meaning of that term would have been uncertain to the extent that a such a
person would have been unable to determine whether a given ion exchange
resin was or was not within the scope of the claim. For example, if a resin is
a cationic, an anionic, or a chelating ion exchange resin, it is within the
scope of the claim, even if it cannot be classified with certainty as a
“biologically-related resin.” Not having articulated such a circumstance, we
hold that the term “biologically-related ion exchange resin,” though broad,
has not been shown to render the claim as a whole indefinite. See, e.g., In re
Miller, 441 F.2d 689, 693 (CCPA 1971) (“[b]readth of a claim is not to be
equated with indefiniteness, as we have said many times.”)
The rejection of claims 1–8 and 18–20 for indefiniteness on this basis
is reversed.
Claims 7 and [8] read:
The block of claim 1, wherein the filtration matrix is effective to
provide
an increased hardness reduction
[lower pressure drop]
as compared to a comparative bed media that comprises
an ion exchange resin in bead form that is not
immobilized by a binder.
(Claims App., Br. 13.)
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The Examiner holds that the term “comparative bed media” renders
claims 7 and 8 indefinite for the additional reason that “it is unclear as to
what structure is implied.” (FR 2, last para.)
Stouffer responds that the Examiner errs harmfully in not considering
the entire claim, which requires that the comparative bed media comprise
“an ion exchange resin in bead form that is not immobilized by a binder.”
While the claims are broad—they do not, for example, specify the
state of the polymer binder, or even require, at least expressly, that the
polymer binder be in particulate form and be sintered with the pulverized ion
exchange resin particles—breadth is not indefiniteness. Miller, 441 F.2d
at 693. Again, the Examiner has not adequately explained why the claim as
a whole is so uncertain that the routineer could not determine a “comparative
bed media” to serve as a reference for a block according to claim 1. Nor has
the Examiner articulated further issues that might give more weight to the
present indefiniteness analysis.
Accordingly, we reverse the rejection of claims 7 and 8 for
indefiniteness.
Rejections B, B1–B3: obviousness
The Examiner finds that “Yao et al[.] fail to specify the ion exchange
as being a pulverized powder” (FR 4, ll. 2–3), but that “Iwamoto discloses
making an analogous filtration matrix (see lines 29–31 and 47–51 of col. 4)
using particles of an ion exchange resin that have been pulverized so as to
have a particle size ranging from 50–2000 microns.” (Id. at ll. 3–6.) The
Examiner finds further that “particles at the lower end of the particle size
ranges disclosed by Yao et al[.] and Iwamoto can be considered a powder”
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(Id. at ll. 6–8, citing Yao [0048] and Iwamoto, col. 3, ll. 51–55.) The
Examiner concludes that “[i]t would have been obvious to have substituted a
pulverized powder of an ion exchange resin as disclosed by Iwamoto for the
powder of an ion exchange resin as employed by Yao et al in order to
provide the predictable result of providing a powdered ion exchange resin
as taught by Iwamoto.” (FR 4, ll. 8–11 (emphasis added).)
Review of the passages in Iwamoto cited by the Examiner indicates
that the Examiner has not directed our attention to probative evidence
supporting teachings by Iwamoto of pulverizing ion exchange resins.
Rather, those passages at best appear to teach small particles, e.g., 50–
300 μm, that might be considered powders. Nonetheless, Stouffer points
out, with commendable candor, that Iwamoto mentions that ion exchange
particles, if not synthesized so as to have an average particle size in the
above mentioned range [50–2000 μm, or, more preferably, from 300
to 1000 μm], may be pulverized to provide the desired particle size. (Br. 6,
last para., citing Iwamoto col. 3, ll. 65–67.) However, as Stouffer
emphasizes (id.), Iwamoto teaches that of all the various forms the ion
exchange particles may take, “a spherical shape is particularly preferable
since it provides an excellent water permeability” (Iwamoto col. 4, ll. 1–5).
Similarly, as Stouffer points out (Br. 6, 1st full para.), Yao teaches that
substantially spherical polyolefin (binder) particles (made by underwater
pelletizing (Yao [0051])) that have “smooth edges, tend to sinter evenly over
a well defined temperature range to provide a final product with desirable
mechanical properties.” (Yao 5 [0053].)
While we hesitate to say that the combination proposed by the
Examiner would “undermine the teachings of both Yao and Iwamoto”
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(Br. 7, ll. 1–2), or produce a product “unsatisfactory for its intended
purpose” (id. at ll. 3–4), Yao’s express preference for “smooth, substantially
spherical particles” (Yao 5 [0055]) is clear. See also id. at [0053]
(explaining how spherical polyolefin particles “allows for the efficient
packing of polyolefin and ion exchange particles, which also tend to be
spherical.” (emphasis added)). As Yao teaches, “[p]olyolefin particles made
using cryogenic grinding are likewise preferably thermal fined to ensure
smooth edges, and are then screened to ensure a proper average size,” while
particles made by underwater pelleting “typically provide[] smooth,
substantially spherical particles” that do not need thermal fining and
screening prior to use. (Yao 5 [0055].) In this context, the weight of the
evidence is that the suggestion to use pulverized ion exchange particles is at
best very weak.
Moreover, the Examiner has not addressed sufficiently the allegations
of unexpected results reported in the Specification regarding the increased
kinetics of calcium and magnesium reduction, the reduced pressure drop,
and the higher equilibrium capacity for hardness reduction exhibited by the
inventive monoliths compared to beds of loose resin material in bead form.
(Spec. 3–4 [0018]; and the Examples at 9 [0048]–11 [0061].) As Stouffer
points out (Reply 7, last para.), the Examiner has not explained the basis for
the assumption that pulverized ion exchange resins––which Stouffer asserts
would be non-spherical (id.)––would have been expected to serve as a
satisfactory substitute for the smooth, substantially spherical particles
preferred by Yao. Although, as noted supra, the claims are broad, and the
experimental results limited, the Examiner has not come forward with
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substantial evidence and analysis demonstrating any substantial reason to
doubt the proffered data or explanations.
Weighing the weak case advanced in favor of prima facie obviousness
against the evidence that the cited prior art had no positive reason to
combine pulverized ion exchange resins with binder resins, and no
reasonable expectation of providing any of the benefits disclosed by
Stouffer, we conclude that Stouffer has demonstrated harmful error in the
legal conclusion of obviousness of claim 1.
The Examiner makes no findings regarding the remaining references
or the limitations of the dependent claims that cure the defects of the
principal rejection.
We therefore reverse the rejections for obviousness.
C. Conclusion
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 18–20 112(2) 1–8, 18–20
1, 4, 6–8, 18 103(a) Yao, Iwamoto 1, 4, 6–8, 18
2, 3, 19 103(a) Yao, Iwamoto, Stouffer ′298 2, 3, 19
5 103(a) Yao, Iwamoto, Hughes 5
20 103(a) Yao, Iwamoto, Stouffer ′572 20
Overall
Outcome 1–8, 18–20
REVERSED