Masaaki Muroi et al.

Patent Trials and Appeals Board

Nov 22, 2019

11995818 - (D) (P.T.A.B. Nov. 22, 2019)

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.
11/995,818 01/15/2008 Masaaki Muroi SHIGA7.124APC 1066
20995 7590 11/22/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
CHACKO DAVIS, DABORAH
ART UNIT PAPER NUMBER
1737
NOTIFICATION DATE DELIVERY MODE
11/22/2019 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAAKI MUROI and HIROKAZU OZAKI
Appeal 2018-009047
Application 11/995,818
Technology Center 1700

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
LILAN REN, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,2 Masaaki Muroi et al.,
appeal from the Examiner’s decision to reject claims 1, 3, and 5. Final Act.
2, 3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The record on appeal includes the Specification of January 15, 2008 as
well as the subsequent amendments (“Spec.”), the Examiner’s Final Office
Action of October 16, 2017 (“Final Act.”), Appeal Brief of March 16, 2018
(“Appeal Br.”) and the Examiner’s Answer of July 10, 2018 (“Ans.”). No
Reply Brief was filed.
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Tokyo
Ohka Kogyo Co., Ltd. Appeal Br. 3.
Appeal 2018-009047
Application 11/995,818

2
CLAIMED SUBJECT MATTER
The claims are directed to a process for producing a resist
composition, a filtering apparatus, a resist composition applicator, and a
resist composition. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A process for producing a filtered resist composition,
comprising:
a step (I) in which a resist composition is passed through
a filter (f2) equipped with a nylon membrane; and
a step (II) in which the resist composition is passed
through a filter (f1) equipped with a plurality of polyethylene
hollow fiber membranes consisting of polyethylene, which are
bundled together and housed inside a container, said plurality of
polyethylene hollow fiber membrane having a pore size of less
than or equal to 0.04μm, wherein the resist composition
comprises:
a resin component (A) that displays changed alkali
solubility at a pH of less than 7;
an acid generator component (B) that generates acid upon
exposure; and
an organic solvent (S).
REFERENCES
The prior art references relied upon by the Examiner are:
Uenishi
Muroi
US 6,379,796 B1
JP 2004-212975
Apr. 30, 2002
July 29, 2004

REJECTIONS
The Examiner rejects claims 1, 3, and 5 under 35 U.S.C. § 112 (pre-
AIA), first paragraph, as filing to comply with the written description
requirement. Final Act. 2.
Appeal 2018-009047
Application 11/995,818

3
The Examiner rejects claim 1, 3, and 5 under 35 U.S.C. § 103(a) (pre-
AIA) as being unpatentable over Muroi and Uenishi. Final Act. 3.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.”)). After having
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that Appellant has identified reversible
error, and we affirm the Examiner’s written description and obviousness
rejections for the reasons expressed in the Final Office Action and the
Answer. We add the following primarily for emphasis.
Written Description
The Examiner rejects claim 13 under 35 U.S.C. § 112 (pre-AIA), first
paragraph, because the Specification does not describe “a plurality of
polyethylene hollow fiber membranes consisting of polyethylene” as recited.
Final Act. 3. The Examiner finds that to the extent the Specification
describes a filter equipped with “a polyethylene hollow thread membrane”

3 Appellant’s arguments for the written description rejection are directed to
claims 1, 3, and 5 collectively. See, e.g., Appeal Br. 7–8. Independent claim
3 is similar to claim 1 and claim 5 depends from claim 3. We select claim 1
as representative for the written description rejection. See id.; see also 37
C.F.R. § 41.37(c)(1)(iv).
Appeal 2018-009047
Application 11/995,818

4
and that “the plural hollow thread membranes housed in a container is
described as consisting of the material polyethylene,” the Specification
describes no more than “a polyethylene hollow thread membrane.” Id.
(citing various portions of the Specification).
Appellant, on the other hand, argues that a skilled artisan would have
understood the Specification to describe “that a plurality of polyethylene
hollow fiber membranes are able to be produced only by polyethylene”
based on the Specification stating “because the filter is made from
polyethylene, the foreign matter removal performance is superior to filters
made from other materials (such as polypropylene).” Appeal Br. 7.
Appellant also argues that Specification shows a comparison between the
results of using the filters made from polyethylene with those made from
polypropylene which support the claim limitation at issue. Id.
We are, however, not persuaded that reversible error has been
identified because Appellant does not respond to the Examiner’s finding that
the Specification describes no more than “a polyethylene hollow thread
membrane” and not the claim limitation “a plurality of polyethylene hollow
fiber membranes . . . , which are bundled together and housed inside a
container,” e.g., “two or three or four or plural polyethylene hollow thread
membranes bundled together and housed in a container[.]” Ans. 7, 8 (finding
that the Specification does not describes that “the hollow thread membrane
should be plural hollow thread membranes i.e., more than one hollow thread
membrane, but conveys to a skilled artisan a filter made from
polyethylene”), 10 (finding that the portions of the Specification cited by
Appellant describe only that the filter is equipped with “a polyethylene
hollow thread membrane”).
Appeal 2018-009047
Application 11/995,818

5
By statute, this board functions as a board of review, not a de novo
examination tribunal. 35 U.S.C. § 6(b) (“The [board] shall . . . review
adverse decisions of examiners upon applications for patents . . .”). To
prevail in an appeal to this Board, Appellant must adequately explain or
identify reversible error in the Examiner’s rejection. See 37 C.F.R.
§ 41.37(c)(1) (iv) (2012); see also In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011). Given that Appellant does not respond to, and therefore does not
dispute, at least some of the Examiner’s findings in support of the written
description rejection, we discern no reversible error and sustain the rejection
as a result.
Obviousness
The Examiner rejects claim 14 under 35 U.S.C. § 103(a) (pre-AIA)
based on Muroi and Uenishi. Final Act. 3. More specifically, the Examiner
finds that Muroi teaches all the recited limitations other than “a plurality of
hollow fiber membranes bundled together and house inside a container” for
which the Examiner cites Uenishi. Id.at 4.
Appellant, on the other hand, argues that “Uenishi neither teach[es]
nor suggest[s] that the intermediate layer is composed of polyethylene.”
Appeal Br. 10 (emphasis removed). This argument is not persuasive for
multiple reasons. First and foremost, claim 1 does not recite an intermediate
layer and Appellant’s argument is unpersuasive as it is not based on the
claim language. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)

4 Appellant does not present separate arguments for the obviousness
rejection of claims 3 and 5. See, e.g., Appeal Br. 8–13. The obviousness
rejection of claims 1, 3, and 5 therefore stands or falls together. See id.; see
also 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2018-009047
Application 11/995,818

6
(holding unclaimed features cannot impart patentability to claims). Second,
other than the general statement that “Muroi fails to teach ‘the polyethylene
hollow fiber membranes consisting of polyethylene’ recited in presently
pending Claim 1 as well” (Appeal Br. 9), Appellant does not address the
Examiner’s finding with regard to Muroi. “[M]ere statements of
disagreement . . . do not amount to a developed argument.” SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006).
Third, Appellant’s argument attacks Uenishi individually and alone, rather
than considering what the combined references would have suggested to the
person of ordinary skill in the art. “Non-obviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references.” In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981)). Fourth, Appellant’s arguments do not address the Examiner’s
findings in support of the rejection. For example, Appellant argues that
“Uenishi neither teach[es] nor suggest[s] that the hollow fiber membranes
are able to be composed of only polyethylene” (Appeal Br. 11) but does not
respond to the Examiner’s finding that “Uenishi is not relied upon to
disclose a hollow fiber membrane composed only of polyethylene” (Ans.
16). We are therefore not persuaded that reversible error has been identified
in the Examiner’s findings with regard to Muroi and Uenishi.

CONCLUSION
The Examiner’s rejections are affirmed.
Appeal 2018-009047
Application 11/995,818

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DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1, 3, and 5 35 U.S.C. § 112
(pre-AIA), first
paragraph
1, 3, and 5
1, 3, and 5 35 U.S.C. § 103(a)
(pre-AIA) Muroi
and Uenishi
1, 3, and 5
Overall
Outcome
1, 3, and 5
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED