2020003274 (P.T.A.B. Jun. 14, 2021)

TEIJIN LIMITED

Patent Trials and Appeals BoardJun 14, 2021

2020003274 (P.T.A.B. Jun. 14, 2021)

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. 14/889,196 11/05/2015 Takao OHNO Q223107 5243 23373 7590 06/14/2021 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 900 WASHINGTON, DC 20006 EXAMINER GORDON II, BRADLEY R ART UNIT PAPER NUMBER 1773 NOTIFICATION DATE DELIVERY MODE 06/14/2021 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): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAKAO OHNO and KOUJI FURUYA Appeal 2020-003274 Application 14/889,196 Technology Center 1700 Before TERRY J. OWENS, LINDA M. GAUDETTE, and KAREN M. HASTINGS, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 4, 7, and 17. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as TEIJIN LIMITED (Appeal Br. 2). Appeal 2020-003274 Application 14/889,196 2 CLAIMED SUBJECT MATTER The claims are directed to a substrate for a liquid filter. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A substrate for a liquid filter, comprising a polyolefin microporous membrane, the polyolefin microporous membrane having a water permeation efficiency of 1.21 to 2.90 ml/min·cm2 at a pressure differential of 90 kPa, the polyolefin microporous membrane having a bubble point of 0.40 MPa to 0.65 MPa, the polyolefin microporous membrane having a compressibility of less than 15%, the polyolefin microporous membrane having a thickness of 7 to 16 µm, the polyolefin being a composition consisting of 10 to 26 mass% of an ultrahigh-molecular-weight polyethylene having a mass average molecular weight of 900,000 or more and 74 to 90 mass% of a high-density polyethylene having a mass average molecular weight of 200,000 to 800,000, and the polyolefin microporous membrane having a porosity of 50 to 60%. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Lopatin US 4,778,601 Oct. 18, 1988 Takita US 5,786,396 July 28, 1998 REJECTION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1, 2, 4, 7, 17 103 Takita, Lopatin OPINION We need address only the sole independent claim, i.e., claim 1. Appeal 2020-003274 Application 14/889,196 3 Takita teaches: “Microporous membranes are widely used in various applications such as battery separators, electrolytic capacitor separators, various filters, moisture-permeable and waterproof clothes, reverse osmosis membranes, ultrafiltration membranes, microfiltration membranes, etc.” (col. 1, ll. 10–14). The Appellant’s membrane is useful as a substrate for a liquid filter that has “excellent collection efficiency for particles of about 50 nm to 100 nm together with excellent liquid permeability, and also has stable liquid permeability for long-term use” (Spec. ¶ 14). Takita discloses a microporous polyolefin membrane comprising: (A) at least one ultrahigh molecular weight polyolefin having a weight average molecular weight of 5x105 or more (which is within the Appellant’s 900,000 or more), and (B) at least one polyolefin having a weight average molecular weight less than 5x105 (which encompasses the Appellant’s 200,000–800,000), in a weight ratio of (B)/(A) of 0.2 to 20 (which encompasses the Appellant’s 2.8–9) (col. 2, ll. 33–40). The microporous membrane has an air permeability of 5 to 170 sec/100 cc, a porosity of 35 to 95% (which encompasses the Appellant’s 50–60%), an average through- pore diameter of 0.1 to 0.5 µm (compared to the Appellant’s pore diameter which the Examiner envisages as being 0.1 µm or less (Final 6)), and a thickness of 5 to 250 µm (which encompasses the Appellant’s 7–16 µm) (col. 5, ll. 54–57). The Examiner finds that Takita discloses microporous polyolefin membrane component molecular weights, component relative amounts, porosities and thicknesses that overlap or encompass those in the Appellant’s claim 1 (Final 4–5). The Examiner concludes (Final 6): Appeal 2020-003274 Application 14/889,196 4 Based on the analysis provided supra, the structural features of Takita’s membrane (e.g., pore size, polyolefin composition, thickness, porosity, etc.) appear to be the same as Applicant’s membrane. Therefore, both membranes should have the same water permeation efficiency, bubble point, and compressibility: since both membranes have the same structural features. Lopatin teaches that for a membrane to have practical utility as a filtration medium, it must possess, in addition to its retention capability, reasonable permeability for the filtrate (col. 9, ll. 65–59), an inherent factor that can affect a membrane’s permeability is its average pore size (col. 9, ll. 62–63), there is a relationship between bubble point and pore size (col. 9, ll. 38–39), and water flow rate increases continuously with decreasing bubble point (increasing maximum pore size) when other factors are held constant (col. 10, ll. 4–7). The Examiner finds that Lopatin’s teachings would have led one of ordinary skill in the art to optimize Takita’s membrane’s water permeation efficiency and bubble point to enhance its utility as a filtration medium and permeability for filtrate (Final 7). The Examiner apparently assumes that the optimization would produce a membrane having the Appellant’s recited water permeation efficiency and bubble point. The Appellant argues, in reliance upon the Declaration of Kouji Furuya, that “even if the polyolefin microporous membrane has a similar thickness, porosity, and average pore size to those of another polyolefin microporous membrane, the time taken for the passing of pure water through the polyolefin microporous membrane varies depending on the orientation and shape of the pores, as to whether the pores are three dimensionally successive or intermittent” (Appeal Br. 10), and “even if the polyolefin Appeal 2020-003274 Application 14/889,196 5 microporous membrane has a similar thickness, porosity, and average pore size to those of another polyolefin microporous membrane, the bubble point varies depending on the orientation and shape of the pores, as to whether the pores are three-dimensionally successive or intermittent” (Appeal Br. 12– 13). The Appellant argues, in reliance upon scanning electron micrograph images, that the Appellant’s recited water permeation efficiency and bubble point are achieved by precisely controlling the membrane’s three- dimensional porous structure (Appeal Br. 15). The Examiner responds that “even if one were to assume that Appellant’s assertion were true, it still have been obvious to optimize the bubble point of the membrane of Takita in view of Lopatin in order to enhance its water permeation efficiency, utility as a filtration medium, and/or permeability for filtrate” (Ans. 8). The Examiner again does not establish that the optimization would produce a membrane having the Appellant’s recited water permeation efficiency and bubble point. The Examiner, therefore, has not set forth a factual basis that is sufficient to support a conclusion of obviousness of the Appellant’s claimed substrate. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art.”). Accordingly, we reverse the rejection. CONCLUSION The Examiner’s decision to reject claims 1–2, 4, 7, and 17 is reversed. Appeal 2020-003274 Application 14/889,196 6 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 7, 17 103 Takita, Lopatin 1, 2, 4, 7, 17 REVERSED