SAUKAITIS, John Charles. et al.

Patent Trials and Appeals Board

Jan 28, 2020

14681585 - (D) (P.T.A.B. Jan. 28, 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.
14/681,585 04/08/2015 John Charles SAUKAITIS SP0368-US-NP 4600
23632 7590 01/28/2020
SHELL OIL COMPANY
P O BOX 576
HOUSTON, TX 77001-0576
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
01/28/2020 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):
Shelldocketing@cpaglobal.com
USPatents@Shell.com
shellusdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN CHARLES SAUKAITIS and ERIC PRECISE
____________

Appeal 2019-003611
Application 14/681,585
Technology Center 1700
____________

Before KAREN M. HASTINGS, ELIZABETH M. ROESEL, and
MICHAEL G. MCMANUS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1–5 and 10–14. Claims 1–4 and 12
were rejected under 35 U.S.C. § 103 as unpatentable over the combined
prior art of Saukaitis (US 2011/0232821 A1; published Sept. 29, 2011)
(hereinafter “Saukaitis ’821”), and Woo (US 2007/0254560 A1; published
Nov. 1, 2007), claims 5, 10, 11, 13, and 14 were rejected as unpatentable
over Saukaitis ’821, Woo, and Saukaitis ’293 (US 2009/0120293 A1;

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Shell Oil Company as the real party in
interest (Appeal Br. 2).
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published May 14, 2009) (hereinafter “Saukaitis ’293”) 2; and claim 14 was
rejected under 35 U.S.C. § 112 (b) as indefinite.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal:
1. A method for preparing a gas separation membrane system,
wherein said method comprises:
(a) depositing an initial layer of gas-selective material
onto a surface of a tubular porous support, having an axis, to
thereby provide said tubular porous support having a
gas-selective membrane layer;
(b) annealing said initial gas-selective membrane layer to
provide a first annealed gas-selective membrane layer;
(c) providing a first abraded membrane surface by
polishing said first annealed gas-selective membrane layer
using a robotic polisher providing for first controlled polishing
condition parameters with use of a belted abrading medium
defined as having a centerline and further including a structured
abrasive article comprising a backing having bonded
thereto an abrasive layer comprising a plurality of shaped
abrasive composites that comprise abrasive grains dispersed in
a polymeric binder,
wherein said first controlled polishing condition
parameters include:
a first belt speed, which is a linear rate at which a fixed
point located on the centerline of said belted abrading medium
moves relative to a starting point fixed in space on the
centerline, wherein the belt speed is in the range of from 1 to
1000 surface feet per minute (sfpm),

2 A discussion of the additional reference of Saukaitis ’293, applied to
claims 5, 10, 11, 13, and 14, is not necessary for disposition of this appeal.
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a first part speed, which is a rate of a number of turns of
said tubular porous support completes in one minute around
said axis in rpm, wherein the part speed is in the range of
from 20 to 600 rpm,
a first lateral speed, which is a linear rate at which the
centerline of said belted abrading medium and its contact point
with said tubular porous support moves in parallel with the
ground in mmps, wherein the lateral speed is in the range of
from 1 to 60 mmps,
a first contact angle, which is a position at which said
tubular porous support is held in contact at a point of contact on
said belted abrading medium, and
a first repetitions set, which is a number of full polishing
motions with said belted abrading medium; and
(d) placing a second layer of gas-selective material upon
said first abraded membrane surface to provide a first overlaid
membrane layer.

Appellant’s arguments focus on limitations common to independent
claims 1 and 5,3 except for the arguments presented for dependent claims 12
and 13 (Appeal Br. 9–17).

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, we determine that Appellant has
not demonstrated reversible error in the Examiner’s rejections (e.g., see
generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011)
(explaining the Board’s long-held practice of requiring Appellant(s) to
identify the alleged error in the Examiner’s rejection). We sustain the

3 Claim 5 in the Claims Appendix inadvertently recites “directly” in step (a);
that term is recited in dependent claim 13 (Appeal Br. 17 (Appellant offers
to cancel claim 13 if the Examiner amends claim 5 to recite “directly”)).
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rejections generally for the reasons expressed by the Examiner in the Final
Office Action and the Answer.
We add the following for emphasis.
The § 112 Indefiniteness Rejection
At the outset, we note that Appellant has not presented any arguments
regarding the Examiner’s section 112 rejection of claim 14 (see generally
Appeal Brief).
Accordingly, we summarily affirm the Examiner’s section 112
rejection of claim 14 for indefiniteness.
The § 103 Rejections
Although there are separate sections in the Appeal Brief for claims 1
and 5, the arguments are essentially the same in each section. Appellant
does not present any additional arguments regarding Saukaitis ’293 applied
in the rejection of claims 5, 10, 11, 13, and 14 (see Appeal Br. 16–17).
It has been established that the predictable use of known prior art
elements/steps performing the same functions they have been known to
perform is normally obvious, and the combination of familiar elements/steps
is likely to be obvious when it does no more than yield predictable results.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also KSR, 550
U.S. at 418 (“the [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”); see also In re Fritch, 972 F.2d
1260, 1264–65 (Fed. Cir. 1992) (a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in the art
would have reasonably been expected to draw therefrom).
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Appellant’s first argument is that the Examiner has taken an
unreasonably broad interpretation of the claim language which requires
“depositing an initial layer of gas-selective material onto a surface of a
tubular porous support” and annealing and abrading said initial layer
(Appeal Br. 8–10). The Examiner’s position is that since Saukaitis ’821
teaches that multiple layers are applied, annealed, and abraded, any layer
before a subsequent layer may be considered “an initial layer,” as claimed
(Ans. 3). The Examiner further explains that claims 12 and 13, which
require depositing the initial layer “directly” onto the tubular porous support,
would encompass depositing a layer onto a porous support that already has a
layer deposited thereon (Ans. 4).
Even assuming that Appellant’s position is correct that the claim
should be interpreted such that only the very first gas-selective layer applied
onto the tubular support is the initial layer, Appellant’s arguments are not
persuasive of reversible error in the Examiner’s obviousness position. As
pointed out by the Examiner, Saukaitis ’821 teaches that multiple layers may
be activated via abrasion/polishing, and annealed (Abstract, Saukaitis ’821
¶¶ 47, 48, 49). Notably, Saukaitis ’821 teaches that in the prior art,
activation of the porous substrate as well as each gas-selective metal layer,
inclusive of the initial layer, may include using multiple applications of
activation solution with intervening drying “and, even, annealing” steps
(Saukaitis ’821 ¶ 6). Saukaitis ’821 teaches to replace the prior art’s
chemical activation (i.e., application of an activation solution) with
mechanical activation (i.e., abrading/polishing to impose morphology) and
that each metal membrane layer, inclusive of the initial layer, should be
activated (id. ¶¶ 21, 32). Saukaitis ’821 does not, however, suggest that the
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prior art step of annealing the initial layer should be eliminated.
Accordingly, one of ordinary skill in the art would have readily inferred and
appreciated that the annealing and abrading/polishing steps of Saukaitis ’821
and/or prior art discussed therein would have been appropriate for all of the
applied gas-selective layers, including the initial layer.
Appellant’s remaining argument is that neither Saukaitis ’821 nor
Woo explicitly teach or suggest the polishing parameters recited in claims 1
and 5 (Appeal Br. 10–12). This argument is not persuasive of reversible
error for the reasons explained by the Examiner (Ans. 4, 5 (explaining that
Saukaitis ’821 paragraph 49 teaches that all of these parameters are result-
effective variables, and that the polishing system depicted in Figures 1 and 2
of Saukaitis ’821 is virtually identical to that shown in Appellant’s Figures 1
and 2)).
It is well settled that it would have been obvious for an artisan with
ordinary skill to develop workable or even optimum ranges for result-
effective parameters. In re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir. 1990);
In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454,
456 (CCPA 1955).
“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Appellant has not
adequately refuted the Examiner’s determination that the recited polishing
parameters are all known result-effective variables (no Reply Brief filed).
Accordingly, substantial evidence supports the Examiner’s obviousness
determination of the polishing parameters recited in claim 1, as well as in
claim 5.
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Accordingly, we sustain the Examiner’s section 103 rejections of
independent claims 1, 5, dependent claims 12, 13, and all other claims
dependent on claims 1 or 5 since they are not argued separately (see
generally Appeal Br.).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 12 103 Saukaitis ’821,
Woo
1–4, 12

5, 10, 11, 13,
14
103 Saukaitis ’821,
Woo, Saukaitis
’293
5, 10, 11, 13,
14

14 112 (b) Indefiniteness 14
Overall
Outcome
1–5, 10–14

TIME PERIOD FOR RESPONSE
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