Ex Parte CARPENTER et al

Patent Trials and Appeals BoardJan 25, 2019

14096289 - (D) (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/096,289 12/04/2013 Gregory S. CARPENTER 23548 7590 01/29/2019 LEYDIG VOIT & MA YER, LTD 700 THIRTEENTH ST. NW SUITE 300 WASHINGTON, DC 20005-3960 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 712450 3333 EXAMINER MCCULLOUGH, ERIC J. ART UNIT PAPER NUMBER 1773 NOTIFICATION DATE DELIVERY MODE 01/29/2019 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): DCpatent@leydig.com Chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY S. CARPENTER, MUNAF TINWALA, and STANLEY W. KIDD Appeal2018-003637 Application 14/096,289 Technology Center 1700 Before TERRY J. OWENS, JAMES C. HOUSEL and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant (Pall Corporation) appeals under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). The Invention The claims are to a microporous polymeric membrane, a method for making the membrane, and a method for using the membrane to remove undesirable material from a fluid. Claim 1, which claims the membrane, is illustrative: 1. A microporous polymeric membrane comprising (a) a first surface, comprising a microporous surface, Appeal2018-003637 Application 14/096,289 (b) a second surface comprising a microporous surface; and ( c) a microporous bulk between the first surf ace and the second surface; wherein the membrane has a machine direction and a cross machine direction, and the first surface has a plurality of parallel channels in the machine direction, wherein the channels have side walls and bottom walls, the side walls comprising rough surfaces, the rough surfaces having an Ra in the range of from about 4.5 Âµin to about 19.0 Âµin. Antoniou Harttig Wilson Salinaro The References US 6,365,395 B 1 US 2003/0121841 Al EP O 259 109 A2 WO 01/61042 A2 Apr. 2, 2002 July 3, 2003 Mar. 9, 1988 Aug. 23, 2001 S.S. Madaeni, Effect of Surface Roughness on Retention of Reverse Osmosis Membranes, 11 J. Porous Materials 255-63 (2004) (hereinafter Madaeni). Colin Hobbs et al., Effect of surface roughness on fouling of RO and NF membranes during filtration of a high organic surficial groundwater, J. Water Supply: Res. & Tech. -AQUA 559-70 (2006) (hereinafter Hobbs). The Rejections The claims stand rejected under 35 U.S.C. Â§ I03(a) as follows: claims 1-11, 13, 14, and 16-20 over Wilson in view of Salinaro, Madaeni, and Hobbs; claim 12 over Wilson in view of Salinaro, Madaeni, Hobbs, and Antoniou; and claim 15 over Wilson in view of Salinaro, Madaeni, Hobbs, and Harttig. OPINION We reverse the rejections. We need address only the independent claims (1, 11, 15). Those claims require membrane channel sidewall surface 2 Appeal2018-003637 Application 14/096,289 roughness Ra of about 4.5 Âµin to about 19.0 Âµin. To meet that claim requirement the Examiner relies upon the combined disclosures of Wilson, Salinaro, Madaeni, and Hobbs (Ans. 3-9). Wilson discloses a polymeric porous membrane having spaced grooves about 0.5-100 mils wide and deep on its surface (p. 7, 11. 47-50, 54-- 58; p. 10, 11. 8-9). Salinaro discloses a polymeric smooth porous membrane having a surface roughness average (Ra) less than about 800 nm (31.5 Âµin) (p. 4, 11. 3, 23-24; p. 5, 11. 6-8). Madaeni discloses two polymeric thin film composite membranes, one having a smooth surface and the other having a rough surface (Abstract). Hobbs discloses a polymeric thin film composite membrane having a rough surface (Abstract). The Examiner finds that 1) Salinaro, Madaeni, and Hobbs indicate that membrane surface roughness is a result effective variable, and 2) "membrane sidewalls (and bottom) are membrane filtration surfaces" (Ans. 5, 11 ). The Examiner states that "Salinaro, Madaeni and Hobbs are relied upon only as evidence that it would have been obvious to optimize the roughness, not to use their specific, stated roughness" (Ans. 11 ). The Examiner does not establish that the applied references would have indicated to one of ordinary skill in the art that membrane channel sidewall surface roughness is a result effective variable or would have led such a person to a membrane channel side wall surface roughness Ra within the range required by the Appellant's claims. Thus, the Examiner has not set forth a factual basis sufficient to support a conclusion of obviousness of the Appellant's claimed invention. 3 Appeal2018-003637 Application 14/096,289 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 rejections. DECISION The rejections under 35 U.S.C. Â§ 103(a) of claims 1-11, 13, 14, and 16-20 over Wilson in view of Salinaro, Madaeni, and Hobbs; claim 12 over Wilson in view of Salinaro, Madaeni, Hobbs; and Antoniou, and claim 15 over Wilson in view of Salinaro, Madaeni, Hobbs, and Harttig are reversed. The Examiner's decision is reversed. REVERSED 4