Ex Parte Ferrer et alDownload PDFPatent Trial and Appeal BoardSep 19, 201411832052 (P.T.A.B. Sep. 19, 2014) Copy Citation 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. 11/832,052 08/01/2007 Ismael Ferrer 444.18590101 5408 117798 7590 09/22/2014 Donaldson Company, Inc. c/o Mueting, Raasch & Gebhardt, P.A. PO Box 581336 Minneapolis, MN 55458-1336 EXAMINER ZALASKY, KATHERINE M ART UNIT PAPER NUMBER 1777 MAIL DATE DELIVERY MODE 09/22/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ISMAEL FERRER and CHUANFANG YANG ____________ Appeal 2012-012251 Application 11/832,052 Technology Center 1700 ____________ Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and MICHAEL P. COLAIANNI, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1, 3 through 36, 38 through 44, 60, 67, 68, 71 through 79 and 81. We have jurisdiction under 35 U.S.C. § 6. Appeal 2012-012251 Application 11/832,052 2 Appellants’ invention is directed to a fine fiber layer. App. Br. 5. Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A fine fiber layer comprising a fine fiber, the fine fiber comprising a fluoropolymer comprising; a polymer comprising tetrafluoroethylene and hexafluoropropylene; a polymer comprising tetrafluoroethylene and a perfluorovinyl ether; a polymer comprising hexafluoropropylene, tetrafluoroethylene, and ethylene; a polymer comprising vinylidene fluoride, trifluoroethylene, and tetrafluoroethylene; or a polymer comprising a fluorinated acrylic monomer, wherein the fluorinated acrylic monomer is a fluorinated acrylate or methacrylate; the fine fiber comprising a fine fiber diameter of about 0.1 microns to 0.5 microns, the fine fiber layer comprising a thickness of about 0.2 microns to about 30 microns and a basis weight of about 0.01 grams per square meter to less than 10 grams per square meter. The Examiner relied on the following references in rejecting the appealed subject matter: Diehl US 4,765,915 Aug. 23, 1988 Trimmer US 5,202,023 April 13, 1993 Sutherland US 6,146,535 Nov. 14, 2000 Benson US 6,746,517 B2 Jun. 8, 2004 Hester US 7,114,621 B2 Oct. 3, 2006 Appeal 2012-012251 Application 11/832,052 3 Appellants (App. Br. 6) request review of the following rejections from the Examiner’s final office action: I. Claims 1, 3–36, 38–44, 60, 67, 68, 71–75, 77, 79, and 81 rejected under 35 U.S.C. § 103(a) as unpatentable over Benson, Sutherland and Hester.1 II. Claim 76 rejected under 35 U.S.C. § 103(a) as unpatentable over Benson and Diehl or Trimmer. III. Claim 78 rejected under 35 U.S.C. § 103(a) as unpatentable over Benson and Santini. OPINION Prior Art Rejections The dispositive issue for this appeal is: Did the Examiner err in determining that the combined teachings of Benson, Sutherland and Hester would have led one skilled in the art to a fine fiber comprising the claimed fluoropolymers as required by the subject matter of independent claims 1 and 77? 2 1 The Examiner’s rejection statement in the Final Office Action and the Answer does not include claim 79 and erroneously includes cancelled claim 80. Final Action 2; Answer 3. We note that Appellants include claim 79 as one of the claims appealed (App. Br. 6), that the Examiner addressed claim 79 in the discussion of the rejection on pages 6–7 of the Final Office Action, and Appellants specifically appeal this claim. Accordingly, claim 79 is properly before us on appeal. Claim 80 is not before us on appeal because it was cancelled by Appellants in an amendment filed April 1, 2011. 2 Appellants argue both independent claims together. See App. Br., generally. Accordingly, we limit our discussion to independent claim 1. Appeal 2012-012251 Application 11/832,052 4 After review of the respective positions provided by Appellants and the Examiner, we answer the question in the affirmative and REVERSE for the reasons presented by Appellants. We refer to the Examiner’s Final Office Action for a complete statement of the rejection. Final Action 2–8. Appellants argue Benson discloses only two fluoropolymers (poly(vinylidene fluoride) and a copolymer of poly(vinylidene fluoride) and hexafluoropropylene) to make fine fibers that are not Appellants’ claimed fluoropolymers. App. Br. 11, 14; Benson col. 8, l. 43; col. 11, ll. 18, 25, 60– 62. Appellants also argue Sutherland and Hester do not disclose making fine fibers out of fluoropolymers. App. Br. 11, 13. According to Appellants, both Sutherland and Hester employ fluoropolymers to make hollow fibers or microporous films, respectively, without showing how to select the claimed fluoropolymers to make a fine fiber layer. App. Br. 12–13; Sutherland col. 5, ll. 7–35; Hester col. 2, ll. 61–63. Hester also discloses making hollow fiber membranes. Hester col. 8, ll. 37–46. Thus, Appellants argue that the combined teachings of Benson, Sutherland and Hester provide no guidance on how to select the claimed fluoropolymers for the purpose of forming fine fiber layers as required by the subject matter of independent claim 1. App. Br. 11, 20. We agree with Appellants that the Examiner has not carried the burden of making out a prima facie case of obviousness. As noted by Appellants, Benson discloses only two fluoropolymers useful for making fine fibers. App. Br. 11, 14; Benson col. 8, l. 43; col. 11, ll. 18, 25, 60–62. Sutherland and Hester are directed to making hollow fibers articles, which are not fine fibers, from polymers that can include fluoropolymers Appeal 2012-012251 Application 11/832,052 5 (Sutherland col. 5, ll. 7–35; Hester col. 8, ll. 37–46). The Examiner has not adequately explained why one skilled in the art would modify Benson’s teachings to make fine fibers from the fluoropolymers of Sutherland and Hester given that the disclosures of Sutherland and Hester are not directed to making fine fibers. The Examiner has also not adequately explained how one skilled in the art would arrive to the claimed fluoropolymers from the disclosures of Benson, Sutherland and Hester. Accordingly, we reverse the Examiner’s prior art rejections of claims 1, 3–36, 38–44, 60, 67, 68, 71–75, 77, 79 and 81 under 35 U.S.C. § 103(a) for the reasons given above and presented by Appellants. The Examiner separately rejected claims 76 and 78 under 35 U.S.C. § 103 as unpatentable over Benson in view of a number of secondary references (Rejections II and III). Final Action 8–9. However, the additional references are not relied upon by the Examiner to overcome the above noted deficiencies of Benson, Sutherland and Hester. Id. Accordingly, we also reverse the Examiner’s § 103 rejections (Rejections II and III) for the reasons given above and presented by Appellants. ORDER The Examiner’s prior art rejections of claims 1, 3–36, 38–44, 60, 67, 68, 71–79 and 81 under 35 U.S.C. § 103(a) are reversed. REVERSED mls Copy with citationCopy as parenthetical citation