Abhishek Roy et al.

Patent Trials and Appeals Board

Sep 20, 2019

14146739 - (D) (P.T.A.B. Sep. 20, 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.
14/146,739 01/15/2014 Abhishek Roy 74154-US-NP 1075
156155 7590 09/20/2019
Dow DuPont
c/o DUPONT SPECIALTY PRODUCTS USA, LLC
P.O. Box 2915
974 Centre Road, Chestnut Run Plaza 721-2342
Wilmington, DE 19805
EXAMINER
ROLLAND, ALEX A
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
09/20/2019 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ABHISHEK ROY, YASUSHI MAEDA, MOU PAUL,
STEVEN ROSENBERG, and IAN A. TOMLINSON
____________

Appeal 2018-008120
Application 14/146,739
Technology Center 1700
____________

Before DONNA M. PRAISS, DEBRA L. DENNETT, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 12–162. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant is the Applicant, Dow Global Technologies LLC. According to
the Appeal Brief, the real parties in interest are DowDuPont, The Dow
Chemical Company, and their affiliates, FilmTec Corporation, and Dow
Global Technologies LLC. Appeal Brief filed March 15, 2018 (“Br.”).
2 Final Office Action entered January 1, 2018 (“Final Act.”), 1.
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STATEMENT OF THE CASE
Appellant claims a method for making a composite polyamide
membrane comprising a porous support and a thin film polyamide layer.
Independent claims 12 and 16 illustrate the subject matter on appeal and are
reproduced below with contested language italicized:
12. A method for making a composite polyamide membrane
comprising a porous support and a thin film polyamide layer,
wherein the method comprises:
i) applying an aqueous solution consisting from 2.5
to 10 wt % of a m-phenylenediamine monomer, and an
isoparaffin solution comprising from 0.01 to 3 wt % of a
trimesoyl chloride monomer to a surface of a porous support
and interfacially polymerizing the monomers to form a thin film
polyamide layer, and wherein the isoparaffin solution further
comprises:
(a) a tri-hydrocarbyl phosphate compound
represented by Formula (I):

wherein R1, R2 and R3 are independently selected from
hydrocarbyl groups comprising from 1 to 10 carbon atoms, and
wherein the tri-hydrocarbyl phosphate compound is provided in
a molar ratio of 1:1 to 3:1 with the trimesoyl chloride monomer;
and
(b) from 0.03 to 1 wt % of an acid-containing
monomer comprising a C2–C20 arene moiety substituted with at
least one carboxylic acid functional group or salt thereof and at
least one acyl halide functional group, wherein the acid-
containing monomer is distinct from the polyfunctional acyl
halide monomer; and
ii) applying an aqueous solution of nitrous acid to the
thin film polyamide layer.
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16. A method for making a composite polyamide membrane
comprising a porous support and a thin film polyamide layer,
wherein the method comprises:
i) applying an aqueous solution consisting from 2.5
to 10 wt % of a m-phenylenediamine monomer, and an
isoparaffin solution comprising from 0.01 to 3 wt % of a
trimesoyl chloride monomer to a surface of a porous support
and interfacially polymerizing the monomers to form a thin film
polyamide layer, and wherein the isoparaffin solution further
comprises:
(a) tributyl phosphate provided in a molar ratio of
1:1 to 3:1 with the trimesoyl chloride monomer; and
(b) from 0.03 to 1 wt % of an acid-containing
monomer selected from: 1-carboxy-3,5-dichloroformyl benzene
and 3-(chlorocarboynyl)benzoic [sic] acid; and
ii) applying an aqueous solution of nitrous acid to the
thin film polyamide layer.

Br. 14–15 (Claims Appendix) (emphasis added).
The Examiner maintains the rejection of claims 12–16 under 35
U.S.C. § 103(a) as unpatentable over Mickols (US 2001/0050252 Al,
published December 13, 2001) in view of Cadotte et al. (US
4,812,238, issued March 14, 1989) and Kurth et al. (US
2011/0005997 Al, published January 13, 2011) in the Examiner’s
Answer entered June 11, 2018 (“Ans.”).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 12–16 under 35 U.S.C. § 103(a) for the reasons set forth in the Final
Action, the Answer, and below.
We review appealed rejections for reversible error based on the
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arguments and evidence the Appellant provides for each ground of rejection
the Appellant contests. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (Explaining that even if the
Examiner had failed to make a prima facie case, “it has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections.”)).
Appellant presents separate arguments for each of claims 12 to 16,
which we accordingly address individually. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 12
Appellant does not dispute the Examiner’s factual findings directed to
the disclosures of the applied prior art references. Compare Final Act. 3–4,
with Br. 4–12. Nor does Appellant dispute the Examiner’s conclusion that
the method of claim 12 would have been obvious in view of the Examiner’s
proposed combination of the relied-upon disclosures in the references.
Compare Final Act. 4, with Br. 4–12. Rather, Appellant argues that
experimental examples provided in the Specification demonstrate that the
method of claim 12 yields results that would have been unexpected by one
of ordinary skill in the art at the time of the invention. Br. 9. More
specifically, Appellant argues that Example 2 demonstrates a dramatic,
unexpected improvement in membrane flux, and Examples 3 and 4
demonstrate an unexpected improvement (reduction) in salt passage (SP),
“associated with the invention.” Id.
The Examiner finds, however, that the relied-upon evidence of
unexpected results is “not commensurate in scope” with the claimed subject
matter. Final Act. 4 (citing Spec. 15–20).
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Appellant argues that “the Examiner has failed to set forth facts and
reasoning to justify the position that claim 12 is not commensurate in scope
with the proffered evidence of unexpected results.” Br. 11–12. Appellant
also argues that “the Examiner has not addressed expert testimony
specifically explaining the predictable extension of the unexpected results to
the chemical reactants and quantities as claimed.” Br. 10.
We agree with the Examiner, however, that the relied-upon evidence
of unexpected results is not reasonably commensurate with the scope of
claim 12. And Appellant does not provide persuasive evidence establishing
a trend in the relied-upon results that would allow one skilled in the art to
conclude that similar results would be obtained for the full scope of methods
of claim 12, for reasons that follow. Br. 4–12.
Example 2 describes preparing a series of membranes using various
quantities of meta-phenylene diamine and trimesoyl acid chloride, with or
without a single quantity of each of l-carboxy-3,5-dichloroformyl benzene
and tributyl phosphate. Spec. 16, l. 3–17, l. 5, Table 2-1. Example 3
describes preparing a series of membranes using various quantities of meta-
phenylene diamine, trimesoyl acid chloride, and tributyl phosphate, with and
without various quantities of l-carboxy-3,5-dichloroformyl benzene. Spec.
18, ll. 1–10, Table 3. Example 4 describes preparing a series of membranes
using various quantities of meta-phenylene diamine, trimesoyl acid chloride,
and tributyl phosphate, with and without various quantities of 3-
(chlorocarbonyl)benzoic acid. Spec. 19, ll. 1–11, Table 4.
The tri-hydrocarbyl phosphate genus recited in claim 1 is considerably
broader in scope than the single tributyl phosphate species used in Examples
2, 3, and 4. Similarly, the acid-containing monomer genus recited in claim 1
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is considerably broader in scope than the two l-carboxy-3,5-dichloroformyl
benzene species used in Examples 2 and 3, and the 3-
(chlorocarbonyl)benzoic acid species used in Example 4. In re Grasselli,
713 F.2d 731, 743 (Fed. Cir. 1983) (“With respect to appellants’ broad
claims to a catalyst with ‘an alkali metal, ’ the experiments detailed in
Friedrich III, being limited to sodium only, are not commensurate in scope,
and are, therefore, insufficient to rebut the prima facie case.”).
Furthermore, the weight percentages of m-phenylenediamine,
trimesoyl chloride, and acid-containing monomer recited in claim 12 are
considerably broader than the weight percentages of the corresponding
compounds used in Examples 2, 3, and 4. Specifically, the weight
percentage of m-phenylenediamine used in Example 2 was either 2.5, 3.5, or
4.5; the weight percentage of m-phenylenediamine used in Example 3 was
2.5, 3, or 3.5; and the weight percentage of m-phenylenediamine used in
Example 4 was 3.5. Spec. 17–19 (Tables 2-1, 3, and 4). In contrast, claim
12 recites a weight percentage of m-phenylenediamine of 2.5 to 10, which is
considerably broader than the weight percentages tested in Examples 2, 3,
and 4.
Similarly, the weight percentage of trimesoyl chloride used in
Example 2 was either 0.16, 0.20, 0.21, 0.25 0.26, or 0.30; the weight
percentage of trimesoyl chloride used in Example 3 was either 0.12, 0.13,
0.16, 0.21, 0.24, or 0.26; and the weight percentage of trimesoyl chloride
used in Example 4 was either 0.22, 0.24, 0.25, or 0.26. Spec. 17–19 (Tables
2-1, 3, and 4). In contrast, claim 12 recites a weight percentage of trimesoyl
chloride of 0.01 to 3, which is considerably broader than the weight
percentages tested in Examples 2, 3, and 4.
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Also similar, the weight percentage of the acid-containing monomer
used in Example 2 was 0.04; the weight percentage of the acid-containing
monomer used in Example 3 was either 0.03, 0.05. 0.10, 0.13, or 0.14; and
the weight percentage of the acid-containing monomer used in Example 4
was either 0, 0.01, 0.03, 0.04, or 0.08. Spec. 17–19 (Tables 2-1, 3, and 4).
In contrast, claim 12 recites a weight percentage of the acid-containing
monomer of 0.03 to 1, which is considerably broader than the weight
percentages tested in Examples 2, 3, and 4.
Thus, the weight percentages of m-phenylenediamine, trimesoyl
chloride, and acid-containing monomer used in Examples 2, 3, and 4 are not
commensurate in scope with the corresponding weight percentages recited in
claim 12 because the tested percentages do not cover the scope of the recited
ranges. In re Inland Steel Co., 265 F.3d 1354, 1365–66 (Fed. Cir. 2001)
(holding that Inland failed to overcome a prima facie case of obviousness
where “the examiner expressed concern that insufficient data had been
presented to prove the unexpectedly favorable results in the . . . claimed
antimony ranges, because Inland offered only a few data points from one
experiment comparing antimony within and below its claimed ranges.”); In
re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the
results were unexpected, Harris needed to show results covering the scope of
the claimed range. Alternatively Harris needed to narrow the claims.”).
Furthermore, amounts of m-phenylenediamine, trimesoyl chloride,
and acid-containing monomer at the endpoints of the corresponding ranges
recited in claim 12 were not tested in Examples 2, 3, and 4. Spec. 17–19
(Tables 2-1, 3, and 4). Such experimental data, as the Examiner explains
(Ans. 4), could provide an adequate basis for concluding that similar results
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would be obtained across the scope of the ranges recited in claim 12.
Consequently, the limited experimental data provided in in Examples
2, 3, and 4 does not provide an adequate basis to allow one of ordinary skill
in the art to conclude that results similar to those obtained for the tested
membranes would be obtained for the full scope of membranes prepared
according to the method of claim 12. In re Clemens, 622 F.2d 1029, 1036,
(CCPA 1980).
Although Appellant argues that “the Examiner has not addressed
expert testimony specifically explaining the predictable extension of the
unexpected results to the chemical reactants and quantities as claimed” (Br.
10), the Examiner explains in the Answer that the opinion testimony of Ian
Tomlinson, one of the inventors of the present application, provided in
Declarations dated March 27, 2017 and July 6, 2017, was given minimal
weight because it was not persuasively supported. Ans. 4.
We agree with the Examiner that the opinion at issue set forth in the
Tomlinson Declarations is not supported by objective evidence.
Specifically, paragraph 5 of the July 6, 2017 Tomlinson Declaration states:
Based upon my past experimental work in the field using various
quantities and ratios of these same monomers, and based upon
the experimental results reported by Mickols in connection with
various phosphate species, I believe the results reported in Tables
2-1, 2-1, 3 and 4 are representative of those that would be
achieved using the carbyl phosphate species and monomeric
concentration ranges set forth in claim 12. Moreover, I believe
that one skilled in the art would share this same opinion.

Paragraph 6 of the March 27, 2017 Tomlinson Declaration includes a
nearly identical statement. Mickols is the primary reference applied in the
obviousness rejection, and neither Tomlinson Declaration provides a citation
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that would allow identification of the “experimental results reported in
Mickols” referred to in the Declarations. Nor does either Declaration
discuss the “experimental results reported by Mickols” any further, much
less provide an explanation of how any such results establish that the
experimental results set forth in the cited tables of Appellant’s Specification
are representative of results that would be achieved by the full scope of the
compounds, monomers, and weight percentages recited in claim 12.
Thus, neither Appellant nor the relied-upon portions of the Tomlinson
Declarations provides any objective evidence corroborating the conclusory
opinion provided in the Declarations that one of ordinary skill in the art
would consider the experimental results set for the in Tables 2, 3, and 4 to be
representative of those that would be achieved using the monomers and
concentration ranges recited in claim 12. It follows that we give the
inherently self-interested and unsupported opinion provided in the
Declarations little to no weight. Velander v. Garner, 348 F.3d 1359, 1371
(Fed. Cir. 2003) (“[W]hat the Board consistently did was accord little weight
to broad conclusory statements that it determined were unsupported by
corroborating references. It is within the discretion of the trier of fact to give
each item of evidence such weight as it feels appropriate”); In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is
entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations”).
Considering the totality of the evidence relied upon in this appeal, a
preponderance of the evidence weighs in favor of the Examiner’s conclusion
of obviousness. We accordingly sustain the Examiner’s rejection of claim
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12 under 35 U.S.C. § 103(a).
Claim 13
Claim 13 depends from claim 12 and recites, in pertinent part,
including from 2.5 to 6 wt% of the m-phenylenediamine monomer in the
aqueous solution, and including from 0.05 to 3 wt% of the trimesoyl
chloride, and from 0.04 to 0.14 wt% of the acid-containing monomer, in the
isoparaffin solution.
Appellant argues that “the ranges set forth in claim 13 are narrower
and more closely encompass the concentrations used in the comparative
examples, and Appellant requests reversal of the rejection of claim 13 “for
the reasons set forth [] with respect to claim 12.” Br. 12.
Although the ranges recited in claim 13 are narrower than those
recited in claim 12, the weight percentages of m-phenylenediamine and
trimesoyl chloride tested in Examples 2, 3, and 4 are nonetheless not
commensurate in scope with the corresponding weight percentage ranges
recited in claim 13, because the tested percentages do not cover the scope of
the recited rages, including the endpoints of the ranges. Appellant does not
establish that the results obtained with the weight percentages tested in
Examples 2, 3, and 4 are representative of results that would be obtained by
the full scope of the weight percentages recited in claim 13.
We accordingly sustain the Examiner’s rejection of claim 13 under 35
U.S.C. § 103(a).
Claim 14
Claim 14 depends from claim 12 and recites that the tri-hydrocarbyl
phosphate compound comprises tributyl phosphate.
Appellant argues that “claim 14 sets forth the identical species used in
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the comparative examples to produce the unexpected results,” and Appellant
requests reversal of the rejection of claim 14 “for the reasons set forth with
respect to claim 12.” Br. 13.
Although claim 14 does recite the tri-hydrocarbyl phosphate species
used in Examples 2, 3, and 4, the claim does not recite the acid-containing
monomer species used in these examples. As discussed above for claim 12,
the acid-containing monomer of claim 14 (by virtue of its dependency from
claim 12) is considerably broader in scope than the acid-containing
monomer species tested in Examples 2, 3, and 4. Furthermore, as also
discussed above for claim 12, the weight percentages of the m-
phenylenediamine, trimesoyl chloride, and acid-containing monomer tested
in Examples 2, 3, and 4 are not commensurate in scope with the
corresponding weight percentages of claim 14 (by virtue of its dependency
from claim 12), because the tested percentages do not cover the scope of the
recited rages, including the endpoints of the ranges. Appellant does not
establish that the results obtained with the weight percentages and acid-
containing monomer species tested in Examples 2, 3, and 4 are
representative of results that would be obtained by the full scope of the acid-
containing monomers and weight percentages encompassed by claim 14.
We accordingly sustain the Examiner’s rejection of claim 14 under 35
U.S.C. § 103(a).
Claim 15
Claim 15 depends from claim 12 and recites that the acid-containing
monomer is selected from at least one of 1-carboxy-3,5-dichloroformyl
benzene and 3-(chlorocarbonyl)benzoic acid.
Appellant argues that “claim 15 sets forth the identical species used in
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the comparative examples to produce the unexpected results,” and Appellant
requests reversal of the rejection of claim 14 “for the reasons set forth with
respect to claim 12.” Br. 13.
Although claim 15 does recite the acid-containing monomer species
used in Examples 2, 3, and 4, the claim does not recite the tri-hydrocarbyl
phosphate species used in these examples. As discussed above for claim 12,
the tri-hydrocarbyl phosphate compound of claim 15 (by virtue of its
dependency from claim 12) is considerably broader in scope than the tri-
hydrocarbyl phosphate compound species tested in Examples 2, 3, and 4.
Furthermore, as also discussed above for claim 12, the weight percentages of
the m-phenylenediamine, trimesoyl chloride, and acid-containing monomer
tested in Examples 2, 3, and 4 are not commensurate in scope with the
corresponding weight percentages of claim 15 (by virtue of its dependency
from claim 12), because the tested percentages do not cover the scope of the
recited rages, including the endpoints of the ranges. Appellant does not
establish that the results obtained with the weight percentages and tri-
hydrocarbyl phosphate species tested in Examples 2, 3, and 4 are
representative of results that would be obtained by the full scope of the tri-
hydrocarbyl phosphate compounds and weight percentages encompassed by
claim 15.
We accordingly sustain the Examiner’s rejection of claim 15 under 35
U.S.C. § 103(a).
Claim 16
Appellant argues that “claim 16 sets forth all of the identical species
used in the comparative examples to produce the unexpected results,” and
Appellant requests reversal of the rejection of claim 16 “for the reasons set
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forth with respect to claim 12.” Br. 13.
Although (as set forth above) claim 16 does recite in pertinent part
that the isoparaffin solution comprises tributyl phosphate and an acid-
containing monomer selected from 1-carboxy-3,5-dichloroformyl benzene
and 3-(chlorocarbonyl)benzoic acid, which are the species tested in
Examples 2, 3, and 4, the weight percentage ranges of m-phenylenediamine,
trimesoyl chloride, and the acid-containing monomer selected from 1-
carboxy-3,5-dichloroformyl benzene and 3-(chlorocarbonyl)benzoic acid of
claim 16 (by virtue of its dependency from claim 12) are considerably
broader than the weight percentages of the corresponding compounds used
in Examples 2, 3, and 4, as discussed above for claim 12. Consequently, the
weight percentages of m-phenylenediamine, trimesoyl chloride, and acid-
containing monomer tested in Examples 2, 3, and 4 are not commensurate in
scope with the corresponding weight percentages of claim 16 (by virtue of
its dependency from claim 12), because the tested percentages do not cover
the scope of the recited ranges, including the endpoints of the ranges.
Appellant does not establish that the results obtained with the weight
percentages tested in Examples 2, 3, and 4 are representative of results that
would be obtained by the full scope of the weight percentages encompassed
by claim 16.
We accordingly sustain the Examiner’s rejection of claim 16 under 35
U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejection of claims 12–16 under 35 U.S.C.
§ 103(a).
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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