Ex Parte Sayer et al

Patent Trial and Appeal Board

May 9, 2017

13293586 (P.T.A.B. May. 9, 2017)

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).
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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
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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
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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.
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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.
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Appeal 2016-004389
Application 13/293,586
REVERSED
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