Ex Parte Liang et al

Patent Trial and Appeal BoardAug 7, 2018

13894018 (P.T.A.B. Aug. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/894,018 05/14/2013 Xuemei Liang 23548 7590 08/09/2018 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. 709745 6529 EXAMINER HUANG,RYAN ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 08/09/2018 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): 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 XUEMEI LIANG, BINBING HAN, and RICHARD ALAN MORRIS Appeal2017-010252 Application 13/894,018 Technology Center 1700 Before KAREN M. HASTINGS, JAMES C. HOUSEL, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellant2 filed an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1, 3, 4, 6-11, 13, 17, and 21-23. We have jurisdiction under 35 U.S.C. Â§ 6(b ). 1 Our Decision refers to the Specification filed May 14, 2013 ("Spec."); the Non-Final Office Action dated December 2, 2016 ("Non-Final Act."); Appellant's Appeal Brief filed February 24, 2017 ("Appeal Br."), the Examiner's Answer dated June 15, 2017 ("Ans."), and the Appellant's Reply Brief filed July 25, 2017 ("Reply Br."). 2 Appellant is the Applicant, Pall Corporation, which, according to the Appeal Brief, is the real party in interest. Appeal Br. 1. Appeal2017-010252 Application 13/894,018 We AFFIRM. The subject matter on appeal relates to polymeric microporous membranes (see, e.g., claim 1 ). According to the Inventors, there is a need for membranes that provide high throughput performance. Spec. ,r 1. The Inventors disclose polymeric microporous membranes including, among other things, a first porous portion having at least first and second sets of different pore structures and a second portion having a third set of controlled pore structures that is smaller than the first set. Id. ,r,r 11, 14. Independent claim 1 is illustrative and is reproduced below from the Claims Appendix of the Appeal Brief. 1. A polymeric microporous membrane comprising: (a) a first microporous surface; (b) a second microporous surface; and ( c) first and second layers integrally bonded to one another, the first layer including the first microporous surface, and the second layer comprising the second microporous surface, wherein the first layer has a first layer thickness and the second layer has a second layer thickness, and the polymeric microporous membrane has a total thickness; and (i) the first layer comprises at least first and second sets of different controlled pore structures in the first layer thickness, wherein the first and second sets of controlled pore structures are intermingled vertically and horizontally throughout the first layer thickness, the first set of controlled pore structures having a larger average pore size than the second set of controlled pore structures, wherein the first set of controlled pore structures has an average pore size in the range of from about 10 Âµm to about 60 Âµm; and (ii) the second layer comprises a third set of a controlled pore structures, wherein the third set of pore structures has a 2 Appeal2017-010252 Application 13/894,018 smaller average pore size than the first set. REJECTIONS ON APPEAL 3 I. Claims 1, 4, 6-8, 11, 13, 17, and 21-23 under 35 U.S.C. Â§ 103 as being unpatentable over Y en4 in view of Petersen; 5 and II. Claims 3, 9, and 10 under 35 U.S.C. Â§ 103 as being unpatentable over Yen in view of Petersen and further in view of Mehrabi 6 and Taki ta. 7 DISCUSSION Rejection I Claims 1, 4, 6-8, 11, 13, 17, and 21-23 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Yen in view of Petersen. Appellant argues claims 1, 4, 6, 7, 11, and 13 as a first group, claims 8, 17, 22, and 23 as a second group, and claim 21 as a third group. Appeal Br. 5-8. We separately address these groups below. 3 Claims 1, 3, 4, 6-11, 13, 17, and 21-23 were provisionally rejected over claims 1, 6-9, and 11 of application 13/894,122 in view of Yen, Petersen, and Mehrabi. Non-Final Act. 3; Ans. 4. That provisional rejection is moot because application 13/894,122 was abandoned August 10, 2017. 4 Yen et al. US 2008/0020192 Al, published January 24, 2008 ("Yen"). 5 Petersen, US 2004/0245172 Al, published December 9, 2004 ("Petersen"). 6 Mehrabi et al., US 2011/0177320 Al, published July 21, 2011 ("Mehrabi"). 7 Takita et al., US 2009/0092893 Al, published April 9, 2009 ("Takita"). 3 Appeal2017-010252 Application 13/894,018 Claims 1, 4, 6, 7, 11, and 13 The Examiner finds Yen discloses a multiplayer microporous polymeric membrane with first and second microporous surfaces having at least two layers forming the bulk of the membrane, wherein pores of the two layers have different average pore sizes that correspond to the first and third sets of controlled pore structures recited in claim 1. Ans. 3. The Examiner finds Yen does not disclose a second set of controlled pore structures in the first layer, that the average pore size of the first set of controlled pore structures is 10-60 Âµm, or that the first and second sets of controlled pore structures are intermingled vertically and horizontally. Id. The Examiner finds Petersen discloses a similar porous membrane prepared by a similar process. Id. Specifically, the Examiner finds Petersen's membrane has a primary pore structure of 1-200 Âµm sized pores and a secondary pore structure of O .1-10 Âµm sized pores, with the pore structures being vertically and horizontally intermingled. Id. The Examiner concludes it would have been obvious to modify Yen in view of Petersen because Petersen discloses the arrangement of primary and secondary pore structures provides a very high flow rate and selectivity. Id. Appellant contends it would not have been obvious to one of ordinary skill in the art to combine Yen and Petersen because they are incompatible technologies, citing the Declaration of Dr. Xuemei Liang under 37 C.F.R. Â§ 1.132, dated October 6, 2015 ("Liang Declaration"). Appeal Br. 5-6; Reply Br. 2. Specifically, Appellant argues Yen states that waves or ripples result from non-uniform filtration and/or flow characteristics and are undesirable in a membrane, mixtures containing more than 25% polymer are highly viscous and difficult to process, and mixtures containing less than 4 Appeal2017-010252 Application 13/894,018 about 2% polymer have low melt strengths and are also difficult to process, as set forth in the Liang Declaration. Appeal Br 6; Liang Declaration ,r 9- 10. Appellant asserts that Petersen discloses mixtures containing> 4 wt% and 4.1 wt% pore forming agent, which suggest high polymer concentrations around 94--96%. Appeal Br. 6; Liang Declaration ,r 11. In view of the above, Dr. Liang believes the processes of Yen, which avoids polymer concentrations greater than 25 wt%, and Petersen, which contains around 94--96 wt% polymer, are incompatible and that combining Yen and Petersen would have resulted in undesirable waves or ripples. Liang Declaration ,r 12; Appeal Br. 6-7. The Examiner responds by correctly finding that Yen's range of 2-25 wt% polymer is applicable for ultrahigh molecular weight polyethylene (UHMW-PE), Yen discloses the use of other polymers, and that Yen discloses "other weight percentages outside of this range could be used for other polymers besides UHMW-PE as could be determined by one skilled in the art." Ans. 8-9; Yen ,r,r 61, 87. Appellant argues Yen provides no teaching or guidance for how such weight percentages could be determined and does not determine a suitable range for any specified polymer besides UHMW-PE. Appeal Br. 7; Reply Br. 3--4. However, Appellant cites no evidence or persuasive technical reasoning that determining suitable weight percentages for other polymers ( e.g., those disclosed in paragraph 61 of Yen) would involve undue experimentation or otherwise be beyond the capabilities of one of ordinary skill in the art. The Examiner further finds Petersen discloses a pore-forming content of> 4% by weight as related to the polymer used, which means the polymer content of Petersen's mixture can be 0-96%. Ans. 9. Petersen discloses the 5 Appeal2017-010252 Application 13/894,018 use of> 4 wt% for the pore-forming agent, as related to the polymer used, in paragraph 17. This disclosure is acknowledged by Appellant at page 6 of the Appeal Brief. The Examiner also finds Petersen discloses the use of various polymers, such as polypropylene, which is also disclosed by Yen. Ans. 9; Petersen ,r 7; Yen ,r 61. Furthermore, the Examiner determines that the combination of Yen and Petersen discloses the limitations of claim 1 and thus would not result in waves or ripples, as argued by Appellant. Ans. 10. In view of the above, Appellant's argument appears to be based upon the premise that Yen requires a mixture of 2-25 wt% for any polymer contemplated by Yen. However, Yen only discloses a polymer content range for UHMW-PE, discloses the use of other polymers, and states that suitable polymer content ranges can be determined by one skilled in the art. Appellant does not cite evidence or provide persuasive technical reasoning that the ranges for other polymers contemplated by Yen would result in a mixture with a polymer content outside the range suggested by Petersen. Further, the Examiner has demonstrated that Petersen contemplates a wide range for its pore-forming agent and thus a wide range for polymer content. In view of the above, Appellant's argument that there would have been a lack of reason to combine Yen and Petersen because they are incompatible is unpersuasive. Moreover, there is no evidence or persuasive technical reasoning to support the conclusion that the combination of Yen and Petersen would result in waves or ripples, which appears to be based upon the premise that Yen's range of 2-25 wt% for UHMW-PE excludes the polymer contents suggested by Petersen. Appeal Br. 7; Liang Declaration ,r 12. As a result, a preponderance of the evidence in the record supports the 6 Appeal2017-010252 Application 13/894,018 Examiner's rejection of claim 1. Appellant does not argue claims 4, 6, 7, 11, and 13 separate I y from claim 1. Appeal Br. 5-7. Appellant presents new arguments arguing the limitations of the first and second sets of pore structures being intermingled vertically and horizontally, the first set of pore structures having a larger average pore size than the second set of pore structures, the first set of pore structures having an average pore size of about 10 Âµm to about 60 Âµm, and the third set of pore structures having a smaller average pore size than the first set, as recited in claim 1. Reply Br. 3, 5---6. Appellant has not shown good cause why these arguments could not have been presented in the Appeal Brief. Therefore, we will not consider the separate arguments for claim 1 newly raised in the Reply Brief. 37 C.F.R. Â§ 4I.41(b)(2). 8 Claims 8, 17, 22, and 23 For claims 8, 17, 22, and 23, Appellant cites the arguments raised above that Yen and Petersen are incompatible and thus would not provide a membrane meeting the limitations of claims 8, 17, 22, and 23. Appeal Br. 7-8. For the reasons discussed above with regard to claim 1, these arguments do not identify a reversible error. Claim 21 Claim 21 depends from claim 1 and recites "wherein the membrane comprises a polymeric polysulfone membrane." Ans. 12. 8 In the event of continued prosecution, the Examiner may wish to consider whether Yen's membrane layers would have included a distribution of pore sizes, such that various sets of pore sizes within that distribution necessarily would have existed. 7 Appeal2017-010252 Application 13/894,018 Appellant asserts that Yen specifically states its process does not use polymers suitable for immersion casting, such as polysulfone, because they are not suitable for extrusion. Appeal Br. 8; Reply Br. 4--5. Appellant's arguments are unpersuasive. The Examiner finds it is known in the art that polysulfones can be used for extrusion and cites Huang et al., Extrusion of microcellular polysulfone using chemical blowing agents, 69 J. of Applied Polymer Sci. 1753-1760 (1998) for its disclosure of extruding polysulfone to form microporous membranes. Id. Appellant does not address this finding. Moreover, Petersen demonstrates it was known in the art to use polysulfones to extrude a porous body. Petersen ,r,r 1, 4, 7, 17. Therefore, despite Yen's indication that polysulfones are not suitable for extrusion, the evidence of record demonstrates it was known in the art to extrude polysulfones. For these reasons and those set forth in the Examiner's Answer, we sustain the Examiner'sÂ§ 103 rejection of claims 1, 4, 6-8, 11, 13, 17, and 21-23. Re} ection II Claims 3, 9, and 10 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Yen in view of Petersen and further in view of Mehrabi and Takita. The Examiner finds the combination of Yen and Petersen does not disclose an additional set of controlled pore structures in a first layer, as recited in claim 3, or the multimodal pore sizes recited in claim 10. Ans. 4--5. The Examiner finds Mehrabi discloses multi- modal pore distributions for composite filter materials that satisfy the 8 Appeal2017-010252 Application 13/894,018 limitations of claims 3 and 10 (the Examiner finds Petersen discloses the limitations of claim 9). Id. The Examiner concludes it would have been obvious to one of ordinary skill in the art to have modified Yen, as modified in view of Petersen, to use the multi-modal pore distribution disclosed by Mehrabi because Takita discloses such distributions have improved mechanical strength, permeability, and adsorption. Id. Appellant contends the Examiner's rejection is based upon impermissible hindsight and the Examiner requires a showing of non- obviousness or unexpected results without providing some articulated reasoning with some rational underpinning to support a legal conclusion of obviousness. Appeal Br. 8-9; Reply Br. 5. Appellant's arguments are unpersuasive. The Examiner has articulated a reason to combine Yen, as modified by Petersen, further in view of Mehrabi based upon the advantages of multi-modal pore distributions disclosed by Takita. Therefore, the Examiner has set forth a rejection with some rational underpinning based upon the disclosures of the applied references, which supports the legal conclusion of obviousness articulated by the Examiner. Appellant further argues that in addition to Yen and Petersen being directed to different technologies, as discussed above, Mehrabi and Takita are directed to different technologies than Yen and Petersen and are therefore incompatible. Appeal Br. 9-1 O; Reply Br. 6. These conclusory arguments are insufficient to identify a reversible error because Appellant does not explain how the differences between the applied references render the combination of Yen, Petersen, 9 Appeal2017-010252 Application 13/894,018 Mehrabi, and Takita non-obvious. Appellant merely describes the processes of the applied references, states that they are different, and concludes they are incompatible. For these reasons and those set forth in the Examiner's Answer, we sustain the Examiner's Â§ 103 rejection of claims 3, 9, and 10. DECISION The decision of the Examiner is affirmed. 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). AFFIRMED 10