Ex Parte Sayer et alDownload PDFPatent Trial and Appeal BoardMay 9, 201713293586 (P.T.A.B. May. 9, 2017) 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. 13/293,586 11/10/2011 CHERYL SAYER 707265 5394 23548 7590 05/11/2017 LEYDIG VOIT & MAYER, LTD 700 THIRTEENTH ST. NW SUITE 300 WASHINGTON, DC 20005-3960 EXAMINER PATEL, PRANAV N ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 05/11/2017 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 @ ley dig. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHERYL SAYER, SYLVIA MESSIER, and JAMES COVINO Appeal 2016-004389 Application 13/293,5861 Technology Center 1700 Before CATHERINE Q. TIMM, CHRISTOPHER L. OGDEN, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1— 20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify Pall Corporation as the real party in interest. Appeal Br. 1. 2 In our Opinion, we refer to the Final Action electronically delivered on April 22, 2015 (“Final Act.”); the Advisory Action electronically delivered on June 25, 2015 (“Adv. Act.”); the Appeal Brief filed November 5, 2015 (“Appeal Br.”); and the Examiner’s Answer electronically delivered on February 25, 2016 (“Ans.”). Appellants did not file a Reply Brief. Appeal 2016-004389 Application 13/293,586 The claims are directed to fluid treatment assemblies. Claim 1, reproduced below with disputed terms highlighted, is illustrative of the claimed subject matter: 1. A fluid treatment assembly comprising: at least one fluid treatment unit including a permeable fluid treatment medium having a feed side and a permeate side; a feed inlet and a feed passage extending from the feed inlet to the feed side of the permeable fluid treatment medium; a permeate outlet and a permeate passage extending from the permeate side of the fluid treatment medium to the permeate outlet; first and second end pieces, each closes off fluid passages of an adjacent fluid treatment unit, wherein each fluid treatment unit is positioned between the first and second end pieces and wherein each of the first and second end pieces is formed from a nonmetallic material and has a flexural modulus of at least about l .5*106psi; and a retainer extending between the first and second end pieces and arranged to press the at least one fluid treatment unit and the first and second end pieces against one another, wherein the retainer extends between the first and second end pieces along the at least one fluid treatment unit and a distance between the outer periphery of the retainer and the outer periphery of a fluid treatment [unit] is less than or equal to about 0.25 inch (six millimeters). Appeal Br. 9 (Claims App’x). 2 Appeal 2016-004389 Application 13/293,586 REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Esmond US 3,585,131 Connors, Jr. US 2007/0056894 A1 (“Connors”) Gagnon et al. US 2008/0135499 A1 (“Gagnon”) REJECTIONS The Examiner rejects claims 1—20 under 35 U.S.C. § 103(a) as obvious over Gagnon in view of Esmond and Connors. Final Act. 3. OPINION Claims 1 and 12 are the only independent claims. Both claims require first and second end pieces formed from a nonmetallic material having a flexural modulus of at least about 1.5 xlO6 psi. The Examiner acknowledges that Gagnon does not teach that the end pieces are formed from a nonmetallic material. Final Act. 5. Gagnon does not disclose any particular material for use as end pieces in its fluid treatment assembly. See generally Gagnon. The Examiner finds that Esmond teaches a fluid treatment assembly built to withstand high pressure wherein the first and second end plates are formed from glass filled polycarbonate resins, a nonmetallic material, and that it is well known in the art that glass filled polycarbonate has a flexural modulus of 8x 105. Final Act. 6. The Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the end pieces June 15, 1971 Mar. 15,2007 June 12, 2008 3 Appeal 2016-004389 Application 13/293,586 of Gagnon with the nonmetallic end pieces of Esmond to enable the fluid treatment assembly to withstand high pressure. Id. The Examiner finds that Connors discloses a fluid treatment assembly with end plates made from a variety of materials, including polyketones (PEEK). Id. PEEK has a flexural modulus of 0.56 to 3.4><106 according to the Examiner. Id. The Examiner concludes that modifying Gagnon with the teachings of Esmond and Connors would result in a fluid assembly having end plates that meet the claim language; the modification would have been obvious to allow the fluid treatment assembly to withstand high pressure required in filtration applications. Id. at 7. An annotated version of Figure 1 of Appellants’ application is reproduced below: Figure 1 is a representative view of a fluid treatment assembly. Spec. 19. Claim 1 also requires 4 Appeal 2016-004389 Application 13/293,586 a retainer extending between the first and second end pieces and arranged to press the at least one fluid treatment unit and the first and second end pieces against one another, wherein the retainer extends between the first and second end pieces along the at least one fluid treatment unit and a distance between the outer periphery of the retainer and the outer periphery of a fluid treatment [unit] is less than or equal to about 0.25 inch (six millimeters). Appeal Br. 9 (Claims App’x). The retainer is defined in the Specification as the compression rod assembly, including the compression rod and fastener. Spec. 120. The compression rod may be located in a manner which positions the compression rod within or in close proximity to the outer periphery of the adjacent fluid treatment unit or manifold to reduce the bending forces acting at or near the edge of each nonmetallic end piece. Id. The Examiner acknowledges that Gagnon does not disclose the limitation of “a distance between the outer periphery of the retainer and the outer periphery of a fluid treatment [unit]3 is less than or equal to about 0.25 inch (six millimeters).”4 Final Act. 7. However, the Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the distance to the claimed range to provide both alignment and compression. Id. The Examiner finds that the distance is a result effective variable whose optimization involves only ordinary skill in the art. Id. at 7—8. 3 The lack of the word “unit” after “fluid treatment” in claim 1 appears to be a typographical error. Claim 12, which has a similar limitation regarding the retainer, supports that claim 1 should read “fluid treatment unit.” 4 The Examiner states that the distance is less than or equal to about 0.125 inch, rather than the claimed 0.25 inch. Final Act. 7. However, this appears to be a typographical error which is harmless in this matter. 5 Appeal 2016-004389 Application 13/293,586 Appellants argue that none of the references would lead one of ordinary skill in the art to the claimed distance between the outer peripheries of the retainer and fluid treatment unit. Appeal Br. 7. Appellants state that, by providing end pieces having a flexural modulus of about 1.5xlO6 psi or more and a retainer spaced from the fluid treatment unit by a distance of about 0.25 inch or less, fluid treatment assemblies embodying the invention are self-contained and do not require further compression by an external holder, e.g., by a mechanical or hydraulic press. Id. at 4. We find that all of the references are silent regarding any positioning of a retainer or compression rod relative to the outer periphery of a fluid treatment unit. The Examiner has not provided a recognition in the prior art that a property is affected by the variable (distance between the outer peripheries of the retainer and the fluid treatment unit), thus we determine that the Examiner has not shown the variable was recognized as result- effective. See In re Antonie, 559 F.2d 618, 620 (CCPA 1977) (holding that where a parameter was not recognized to be a result-effective variable is an exception to the rule that discovery of an optimum value of a variable in a known process is normally obvious). Consequently, the Examiner has not shown that it would have been obvious to modify the distance. We find that the Examiner erred in determining claim 1 to be obvious over the cited references. The Examiner likewise erred regarding obviousness of claims 2—20. DECISION For the above reasons, the Examiner’s rejection of claims 1—20 is reversed. 6 Appeal 2016-004389 Application 13/293,586 REVERSED 7 Copy with citationCopy as parenthetical citation