Ex Parte CARPENTER et al

Patent Trial and Appeal Board

Jan 25, 2019

14096289 (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/096,289 12/04/2013 Gregory S. CARPENTER
23548 7590 01/29/2019
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.
712450 3333
EXAMINER
MCCULLOUGH, ERIC J.
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
01/29/2019 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
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 GREGORY S. CARPENTER, MUNAF TINWALA,
and STANLEY W. KIDD
Appeal2018-003637
Application 14/096,289
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant (Pall Corporation) appeals under 35 U.S.C. § 134(a)
from the Examiner's rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The claims are to a microporous polymeric membrane, a method for
making the membrane, and a method for using the membrane to remove
undesirable material from a fluid. Claim 1, which claims the membrane, is
illustrative:
1. A microporous polymeric membrane comprising
(a) a first surface, comprising a microporous surface,
Appeal2018-003637
Application 14/096,289
(b) a second surface comprising a microporous surface;
and
( c) a microporous bulk between the first surf ace and the
second surface;
wherein the membrane has a machine direction and a
cross machine direction, and the first surface has a plurality of
parallel channels in the machine direction, wherein the channels
have side walls and bottom walls, the side walls comprising
rough surfaces, the rough surfaces having an Ra in the range of
from about 4.5 µin to about 19.0 µin.
Antoniou
Harttig
Wilson
Salinaro
The References
US 6,365,395 B 1
US 2003/0121841 Al
EP O 259 109 A2
WO 01/61042 A2
Apr. 2, 2002
July 3, 2003
Mar. 9, 1988
Aug. 23, 2001
S.S. Madaeni, Effect of Surface Roughness on Retention of Reverse Osmosis
Membranes, 11 J. Porous Materials 255-63 (2004) (hereinafter Madaeni).
Colin Hobbs et al., Effect of surface roughness on fouling of RO and NF
membranes during filtration of a high organic surficial groundwater,
J. Water Supply: Res. & Tech. -AQUA 559-70 (2006) (hereinafter Hobbs).
The Rejections
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
claims 1-11, 13, 14, and 16-20 over Wilson in view of Salinaro, Madaeni,
and Hobbs; claim 12 over Wilson in view of Salinaro, Madaeni, Hobbs, and
Antoniou; and claim 15 over Wilson in view of Salinaro, Madaeni, Hobbs,
and Harttig.
OPINION
We reverse the rejections. We need address only the independent
claims (1, 11, 15). Those claims require membrane channel sidewall surface
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Appeal2018-003637
Application 14/096,289
roughness Ra of about 4.5 µin to about 19.0 µin. To meet that claim
requirement the Examiner relies upon the combined disclosures of Wilson,
Salinaro, Madaeni, and Hobbs (Ans. 3-9).
Wilson discloses a polymeric porous membrane having spaced
grooves about 0.5-100 mils wide and deep on its surface (p. 7, 11. 47-50, 54--
58; p. 10, 11. 8-9).
Salinaro discloses a polymeric smooth porous membrane having a
surface roughness average (Ra) less than about 800 nm (31.5 µin) (p. 4, 11. 3,
23-24; p. 5, 11. 6-8).
Madaeni discloses two polymeric thin film composite membranes,
one having a smooth surface and the other having a rough surface (Abstract).
Hobbs discloses a polymeric thin film composite membrane having a
rough surface (Abstract).
The Examiner finds that 1) Salinaro, Madaeni, and Hobbs indicate
that membrane surface roughness is a result effective variable, and
2) "membrane sidewalls (and bottom) are membrane filtration surfaces"
(Ans. 5, 11 ). The Examiner states that "Salinaro, Madaeni and Hobbs are
relied upon only as evidence that it would have been obvious to optimize the
roughness, not to use their specific, stated roughness" (Ans. 11 ).
The Examiner does not establish that the applied references would
have indicated to one of ordinary skill in the art that membrane channel
sidewall surface roughness is a result effective variable or would have led
such a person to a membrane channel side wall surface roughness Ra within
the range required by the Appellant's claims.
Thus, the Examiner has not set forth a factual basis sufficient to
support a conclusion of obviousness of the Appellant's claimed invention.
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Appeal2018-003637
Application 14/096,289
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art."). Accordingly, we reverse the rejections.
DECISION
The rejections under 35 U.S.C. § 103(a) of claims 1-11, 13, 14, and
16-20 over Wilson in view of Salinaro, Madaeni, and Hobbs; claim 12 over
Wilson in view of Salinaro, Madaeni, Hobbs; and Antoniou, and claim 15
over Wilson in view of Salinaro, Madaeni, Hobbs, and Harttig are reversed.
The Examiner's decision is reversed.
REVERSED
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