Ex Parte Harp et al

Patent Trial and Appeal BoardOct 22, 2018

13273926 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/273,926 10/14/2011 Gary P. Harp 157177 7590 10/24/2018 Greenberg Traurig, LLP (GORE) 500 Campus Drive, Suite 400 P.O. Box677 Florham Park, NJ 07932 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. 181429-015000/US (MI/346) CONFIRMATION NO. 5620 EXAMINER ORME, PATRICK JAMES ART UNIT PAPER NUMBER 1779 NOTIFICATION DATE DELIVERY MODE 10/24/2018 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): GOREIPMAIL@gtlaw.com clairt@gtlaw.com laffm@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARY P. HARP and MARC SCHROETER Appeal2018-000397 Application 13/273,926 Technology Center 1700 Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and LILAN REN, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from the Primary Examiner's final decision to reject claims 1-12, 14--33, and 35--42. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. Based on new facts and reasons, we also enter a new ground of rejection below. 37 C.F.R. Â§ 41.50(b). 1 The Appellants identify the real party in interest as "W. L. Gore & Associates GmbH" (Appeal Brief filed March 21, 2017 ("Br.") at 2). 2 Br. 4--15; Final Office Action entered October 25, 2016 ("Final Act.") at 3-21; Examiner's Answer entered July 25, 2017 ("Ans.") at 2-16. Appeal2018-000397 Application 13/273,926 I. BACKGROUND The subject matter on appeal relates to a process for separating a polar liquid (e.g., water) from a non-polar liquid mixture (e.g., middle distillate fuels such as diesel fuel, jet fuel, kerosene, and other types of fuel) and to a multilayer porous composite that is used in such a process (Specification filed October 14, 2011 ("Spec.") at 1, 11. 8-13; 30, 11. 6-14 (original claim 38)). Representative claim 38 is reproduced from the Claims Appendix to the Appeal Brief (Br. 21 ), as follows: 3 8. A process for separating an immiscible polar liquid from a nonpolar organic liquid mixture comprising the steps of: (a) providing a porous filter media layer; (b) filtering said mixture with said porous filter media such that the mixture is cleaned to have fewer than 1300 particles/ml >4Âµm, fewer than 320 particles/ml > 6Âµm, and fewer than 20 particles/ml > 14Âµm; ( c) providing a hydrophobic microporous layer; and ( d) subsequent to said filtering step, using said hydrophobic microporous layer to remove the polar liquid from said cleaned organic liquid mixture at a separation efficiency of at least 55%. II. REJECTIONS ON APPEAL On appeal, the Examiner maintains a rejection under pre-AIA 35 U.S.C. Â§ I03(a) of claims 1-12, 14--16, 32, 33, and 38--40 as unpatentable over Wiese3 in view ofDillon4 and Kasten5 (Ans. 2; Final Act. 10-17). 6 3 US 2006/0163175 Al, published July 27, 2006. 4 US 5,922,166, issued July 13, 1999. 5 US 3,368,681, issued February 13, 1968. 6 The Examiner discusses claims 19-27 and 30 in the rejection (Final Act. 13) but does not list them as rejected in the statement of the rejection (id. at 10). 2 Appeal2018-000397 Application 13/273,926 The Examiner also maintains four other rejections under 35 U.S.C. Â§ 103(a) of claims 17, 18, 28, 29, 31, 35-37, 41, and 42 as unpatentable over these same references in view of four other references cited alternatively (Ans. 2; Final Act. 17-21 ). III. DISCUSSION The Examiner finds: "Wiese discloses a process for separating water from a water/diesel fuel mixture" (Final Act. 10). The Examiner finds that Wiese' s process differs from the process recited in claim 3 8 in that "a hydrophobic microporous layer" is not used to remove water from the disclosed water/diesel mixture at a water separation efficiency of at least 55% (id.). Regarding Dillon, the Examiner finds that the reference discloses separating two phases using a hydrophobic microporous layer (id.). Regarding Kasten, the Examiner finds that the reference discloses separating water from a water/diesel fuel mixture at a water separation efficiency of at least 55% (id.). After determining that a person having ordinary skill in the art would have combined Wiese and Dillon by using Dillon's hydrophobic microporous layer in Wiese, the Examiner concludes further "[i]t would have been further obvious to combine the process disclosed by Wiese and Dillon with the second filtration layer disclosed by Kasten because, according to Kasten, the use of a second layer increases the overall efficiency of the filter" (id. at 11 ). The Appellants dispute the Examiner's finding that Wiese teaches separating water from a water/ diesel mixture by pointing out that Wiese does not remove water but instead discloses purification of waste oil containing soot particles (Br. 5; see also id. at 4 ("Wiese does not remove water, but instead removes soot particles")). The Appellants also point out that "Dillon 3 Appeal2018-000397 Application 13/273,926 fails to teach ... removing water from a water/diesel stream" (id. at 6). The Appellants urge, therefore, that "[ t ]here is no reason ... why a coalescing water remover [in the context of a fuel filter for a motor vehicle] of Kasten would be combined with the filter of Wiese and/or Dillon" (id. at 8). We agree with the Appellants that the Examiner's rejection is not well-founded. Contrary to the Examiner's erroneous finding that Wiese discloses removing water from a water/ diesel fuel mixture, Wiese describes a process for purifying waste oil (i.e., used mineral or synthetic oil) by removing particulates that impart a dark color and "smelly components" that give the oil "a strong rotten and burnt smell" (i.e., soot and hydrogen sulfide) (Wiese ,r,r 1-2, 20-21 ). Dillon teaches using microporous polytetrafluoroethylene (PTFE), which is resistant to heat and chemical degradation, as a filtration material, but this reference, too, does not describe removing water (Dillon, col. 1, 11. 11--43). Therefore, the Examiner's rejection fails to articulate a sufficient reason with some rational underpinning to support the conclusion that a person having ordinary skill in the art would have combined Kasten's teachings about separation of water from fuel with the unrelated teachings found in Wiese and/or Dillon. The Examiner attempts to justify the rejection with a finding that "Wiese relates to removing particles from oil without respect to the type of particles removed" and that, in Wiese, "the composition of the particles may vary" (Ans. 3). The Examiner, however, does not direct us to any evidence to establish that water is necessarily present in Wiese' s waste oil or that, if 4 Appeal2018-000397 Application 13/273,926 water is present, the levels are such that a person skilled in the art would have been prompted to implement water removal or separation. 7 Because no prima facie case of obviousness has been established, we do not sustain any of the Examiner's rejections. IV. NEW GROUND OF REJECTION Although we have agreed with the Appellants as to the Examiner's rejections, we enter a new ground of rejection under 35 U.S.C. Â§ 103(a) against claim 38 over Kasten. 8 37 C.F.R. Â§ 4I.50(b). Kasten describes a process for separating coalesced water from fuel in a water discharge device used in the sump of a fuel filter, wherein the device includes, inter alia, a non-hydrophobic filter element 70 and hydrophobic element 50 (Kasten, col. 1, 11. 11-20; col. 2, 11. 38-54; Fig. 2). Kasten teaches that, in operation: the fuel-water mixture enters inlet port 32; passes through the non-hydrophobic filter element 70, which has pores that are smaller than the holes of the hydrophobic element 50 and sized to prevent clogging of the hydrophobic element 50; and then comes into contact with the hydrophobic element 50, where water droplets will coalesce and fall through at the bottom of the housing 38 (id. at col. 4, 11. 10-32). According to Kasten, the hydrophobic element 50 is a pleated, fine-weave TEFLON 7 In the Final Action, the Examiner refers to Hutchins et al. ("Hutchins"; US 4,437,986, iss. Mar. 20, 1984) in an attempt to establish that "fuel contains 'water particles"' (Final Act. 4, citing Hutchins col. 1, 11. 42-50, 60). As the Appellants point out (Br. 5), Hutchins is not included in the statement of the rejection and, therefore, we need not consider it. In any event, Wiese discloses waste oil-not diesel fuel as disclosed in Hutchins. 8 In the event of further prosecution, we leave it to the Examiner and the Appellants to consider the unpatentability of the other claims on similar grounds over Kasten or Kasten in view of other references. 5 Appeal2018-000397 Application 13/273,926 (PTFE)-coated screen or porous element, which will permit flow of fuel therethrough but prevent flow of coalesced water (id. at col. 3, 11. 43-52; col. 4, 11. 10-42). Although Kasten does not describe the pore or hole sizes for the non- hydrophobic filter element 70 and the hydrophobic element 50, a person having ordinary skill in the art would have understood from Kasten's disclosure that the pore and hole sizes are result-effective variables that affect particulate removal and water droplet coalescence. Therefore, a person having ordinary skill in the art would have arrived-through nothing more than routine optimization-suitable pore sizes for the non-hydrophobic filter element 70 (e.g., 4 Âµm absolute (100% removal)), which pore sizes are disclosed as "smaller than the holes of the hydrophobic element 50" (id. at col. 4, 11. 16-17), to prevent clogging in the hydrophobic element 50. Similarly, a person having ordinary skill in the art would have arrived at suitable hole sizes for the hydrophobic element 50 to facilitate optimum coalescence. In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) ("'[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."' (quoting In re Aller, 220 F.2d 454,456 (CCPA 1955))). We do not find the Appellants' proffered evidence (Declaration Under 37 C.F.R. Â§ 1.132 of Gary Harp, Ph.D. ("Harp Deel."), who is one of the inventors) sufficient to weigh in favor a conclusion of nonobviousness. Inventor Harp states that today's advanced fuels have "fine water emulsion contamination problems," and that Kasten's "coarse filter" would be unable to filter fine particles to the purity levels as specified in the claims and would thus cause clogging in the coalescing mechanism (Harp Deel. ,r 8). 6 Appeal2018-000397 Application 13/273,926 Referring to Comparative Examples 4--9 and Table 4 in the Specification (Spec. 19, 11. 2-20, 1. 29; 20, 11. 8-29), the Inventor alleges that Kasten's system is similar to commercially-available water separators known as "Mahle KL490" (Comparative Example 4) and "Mahle KL228" (Comparative Example 5), which exhibited unacceptably low water separation efficiencies (Harp Deel. ,r,r 9-12). The problem with the Declaration, however, is that Kasten does not limit the particulate filtration rating to a "coarse" value. The Inventor fails to explain why a person having ordinary skill in the art would have been unable to size the pores of Kasten's non-hydrophobic filter element 70 to a suitable size to prevent clogging in the coalescer (hydrophobic element 50) and fails to identify evidence that a person having ordinary skill in the art would have considered the results to be unexpected. Indeed, the Mahle devices do not appear to be representative of Kasten's device because Kasten reports water separating efficiencies in excess of 90% (Kasten col. 4, 1. 68---col. 5, 1. 10). Moreover, the working examples in the Specification are not reasonably commensurate in scope with the claims, in particular claim 38, in which the liquids may be any polar liquid and any non-polar liquid and the filtration and separation media may be made of any material. For these reasons, we hold that the subject matter recited in claim 38 would have been obvious to a person having ordinary skill in view of Kasten. We designate our decision as including a new ground of rejection because we have relied on additional facts and reasoning in support of the obviousness conclusion. Our new ground of rejection designation preserves the procedural safeguards that must be afforded to the Appellants. In re 7 Appeal2018-000397 Application 13/273,926 Stepan Co., 660 F.3d 1341, 1346 (Fed. Cir. 2011) ("Had the Board labeled its rejection as a new ground of rejection, Stepan could have reopened prosecution to address the newly-alleged deficiencies in its Declaration with the examiner."); In reLeithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) ("Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner."). 37 C.F.R. Â§ 4I.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 4I.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner .... (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record .... V. SUMMARY The Examiner's rejections are not sustained. We enter a new ground of rejection under 35 U.S.C. Â§ 103(a). 8 Appeal2018-000397 Application 13/273,926 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). REVERSED; 37 C.F.R. Â§ 4I.50(b) 9